# Hotchkiss v. Greenwood/Dissent Woodbury

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United States Supreme Court
52 U.S. 248
Hotchkiss v. Greenwood
Mr. Justice WOODBURY dissented.
I feel obliged to dissent from my brethren in this case. It is chiefly, however, in regard to the manner in which some of the facts were submitted to the jury; but, involving as it does an important principle in the practice under our patent system, it may be useful to explain the grounds of my dissent.
It is agreed, that in July, 1841, John G. Hotchkiss and two others obtained a patent for what they described as 'a new and useful improvement in making door and other knobs of all kinds of clay used in pottery, and of porcelain.'
The first question of law which arises on the record is, whether the patent covered merely the knob, the bulbous handle, or included also the shank or spindle, and the mode of fastening it to the handle.
The charge of the judge at the trial, as drawn up in the exceptions, seems to have proceeded on the ground that the patent and invention covered both the knob and mode of fastening. Whether this was a correct construction does not, however, seem to be very material, when we consider the instructions given to the jury in other respects; and that they were equally applicable to the bulbous handle alone, or the handle with its dovetail hollow, or the handle and the shank combined.
If both parties acquiesced below in the idea that the patent was not only for such a knob, but the combination of such a knob with the shank in the mode described, and the charge was predicated on that view, it is, perhaps, not allowable here to take a different position.
In order to understand clearly what is deemed objectionable in the course pursued below, it may be noticed that the chief grounds of objection to the patent thus construed below seem to have been, that the invention was not original, nor of a character to be patentable.
The statement in the bill of exceptions is in some respects obscure. But the substance of the instruction on this, as set out there, is, that if the invention had been made before or was now confined, 'so that the knob of clay or porcelain is the mere substitution of one material for another,'-'the material being in common use and no other ingenuity or skill being necessary to construct the knob than that of an ordinary mechanic acquainted with the business,-the patent is void,' &c.
The counsel for the plaintiffs next requested the court to proceed further, and charge the jury, that, 'if the said knob of clay or porcelain so attached were an article better and cheaper than the knob theretofore manufactured of metal or other materials, the patent was valid.' But the court did not give any such instruction. In this, I think, was the chief error. From the record I feel bound to believe that evidence was offered on both sides as to the originality and utility of the knob, and its mode of combination with the shank. It would seem, then, to have been the duty of the court below to instruct the jury, that it was their province to decide not only on which side the evidence preponderated, but if the invention was cheaper and better than what preceded it, that protection should be given to it as patentable.
In either view, considered as an invention of the knob alone, or the knob and handle combined, the chief question is still the same, whether proper instructions as to its being patentable, and all the proper instructions which the circumstances required, were given.
Now, on the point as to the invention being patentable, the direction virtually was to consider it not so, if an ordinary mechanic could have made or devised it; whereas in my view the true test of its being patentable was, if the invention was new, and better and cheaper than what preceded it. This test, adopted by the Circuit Court, is one sometimes used to decide whether the invention for which a patent has been obtained is new enough or distinguished enough from a former invention to prevent it from being an infringement, and to justify a new patent for it, and not, as here, whether it is valuable or material enough per se to be protected by any patent.
Whenever the kind of test adopted below is used otherwise than to see if there has been an infringement or not, it is to ascertain whether the invention is original or not, that is, whether it is a trifling change and merely colorable or not. Webster on Sub. Mat. 25; Curtis on Patents, §§ 6, 7; 2 Gallis. C. C. 51; 1 Mason, C. C. 182. But it is impossible for an invention to be merely colorable, if, as claimed here, it was better and cheaper; and hence this last criterion should, as requested by the plaintiffs, have been suggested as a guide to the jury.
Then, if they became convinced that the knob in this case, by its material, or form inside, or combination with the shank, was in truth better and cheaper than what had preceded it for this purpose, it would surely be an improvement. It would be neither frivolous nor useless, and, under all the circumstances, it is manifest that the skill necessary to construct it, on which both the court below and the court here rely, is an immaterial inquiry, or it is entirely subordinate to the question, whether the invention was not cheaper and better. Thus, some valuable discoveries are accidental rather than the result of much ingenuity, and some happy ones are made without the exercise of great skill, which are still in themselves both novel and useful. Such are entitled to protection by a patent, because they improve or increase the power, convenience, and wealth of the community.
Chancellor Kent has truly said (2 Kent's Comm. 371), 'The law has no regard to the process of mind by which the invention was accomplished, whether the discovery be by accident or by sudden or by long and laborious thought.' See also Earle v. Sawyer, 4 Mason, C. C. 1, 6; Crane v. Price, Webster's Pat. Cases, 411.
In this last case, Chief Justice Tindall goes quite as far as Chancellor Kent, and says: 'In point of law, the labor of thought or experiment and the expenditure of money are not the essential grounds of consideration on which the question whether the invention is or is not the subject-matter of a patent ought to depend. For if the invention be new and useful to the public, it is not material whether it be the result of long experiments and profound research, or whether by some sudden and lucky thought or mere accidental discovery.'
So in Earle v. Sawyer, 4 Mason, 1, the doctrine settled is, that 'a combination, if simple and obvious, yet if entirely new, is patentable. And it is no objection to it, that up to a certain point it makes use of old machinery.' And Justice Story says, in so many words: 'It is of no consequence whether the thing be simple or complicated, whether it be by accident or by long, laborious thought, or by an instantaneous flash of the mind, that it was first done.' 'The law looks to the fact, and not the process by which it is accomplished.' (p. 6.)
It is thus apparent to my mind that the test adopted below for the purpose to which it was applied, and which has just been sanctioned here, has not the countenance of precedent, either English or American; and, at the same time, it seems open to great looseness or uncertainty in practice.
But it has been urged here, that this invention was merely applying clay and porcelain to a new purpose, and that merely a new purpose, in our patent system, is not entitled to protection. 2 Story, 190, 412; Losh v. Hague, Webster Pat. Cas. 207; Curtis on Patents, 87. The meaning of this rule, however, as eviscerated from all the cases is, that the application of an old machine or old composition of matter before patented to a new object, or what is termed a double use, does not entitle one to a patent connected with this new object; because then there is no new machinery or new combination of old parts, as in merely applying a patent grist-mill to a new purpose of grinding plaster.
But it is entirely different if you apply an old earth, or old mechanical power, or old principle in physics, to a new object. There is then a new form adopted, or a new combination for the purpose. And though the elementary material be old, or the elementary principle operating be old, it being difficult to discover a new substance or new elementary principle, yet there is a new shape and consistency and use given, or a new modus operandi, which, if cheaper and better, benefits the world and deserves protection and encouragement.
If these are the effects, however small the skill or ingenuity required to imitate them, they are not excluded from the aid of the laws by either principles or precedents. They are not mere double uses of a previous machine or composition; but a double or additional form or composition of an article for a new purpose.
There is a new manufacture, as here of clay into knobs, or knobs with a dovetail hollow combined with a shank. The books are full of such slight changes in structure, composition, or mode of application, which were novel, and better in their results, and therefore upheld, and were not and could not be regarded merely as the application of an old machine to new purposes. Beside the new material and the new mode of fastening, when the results as here are considerably improved, they suffice to make the invention patentable. (Webster on the Sub. Matter, 29, 30.) These are then all required by the strictest law, viz. 'diversity of method' and 'diversity of effect.' Phillips on Patents, 122.
Here, the new material for a knob, instead of former materials, was more durable than wood, was cheaper than iron, and very beautiful to the eye, instead of looking coarser. Its structure to receive a dovetailed shank and secure it by fused metal, rather than by a hole through and a screw at the end, appears to have been highly important; and if embraced in the patent, as was probably considered in the court below, furnished an additional reason for instructing the jury to consider whether the knob in controversy was not cheaper and better than what preceded it.
The precedents are quite full on this, and some of them in all respects nearly in point. Similar to this was the hot blast, substituted for the cold in making iron, and a patent for it upheld. Neilson's Case, Webster, P. C. 14. The blast was still air, but in a different condition, leading to new and useful results. So the use of the flame of gas to finish cloth rather than the flame of oil. Webster, P. C. 99. So steel plates used instead of copper in engraving. Kneass v. Schuylkill Bank, 4 Wash. C. C. 9, 11. That very closely resembles the present case.
So pit-coal, substituted for charcoal in making iron, has been deemed patentable (Webster, P. C. 14); and anthracite for bituminous coal (273.) There are also some strong opinions beside these decisions in favor of a change in metal for an instrument being alone sufficient for a patent, if more useful or cheaper. See Webster on Sub. Matter, 25, note, and Curtis on Patents, § 8. (Phillips on Patents, 134, if there be any contrivance connected with it.) Indeed, why should it not be sufficient? A new mode of operating or a new composition to produce better results is the daily ground for a patent. All which the act of Congress itself requires is that the invention be for 'any new and useful improvement on any art, machine, manufacture, or composition of matter,' &c. 5 Stat. at Large, p. 119, § 6. Must it not then be considered such an improvement, if operating with new materials both cheaper and more durable?
Who cannot realize that, since the improved modes of cutting, boring, and shaping, the substitution of iron for wood in many manufactures might not often be a gain in strength and durability, quite beyond any difference in expense, and be justly patentable? Who, too, would not deem it material to gain by the use of wood or leather, or a cheap metal, instead of gold and silver, for some manufacture or mechanical purpose, when it can be done with increased benefit as well as cheapness. And why is not he a benefactor to the community,and to be encouraged by protection, who invents a use of so cheap an earth as clay for knobs, or in a new form or combination, by which the community are largely gainers?
On the whole case, then, it seems to me that justice between these parties, as well as sound legal principle, requires another trial on instructions upon some points omitted, and instructions in some other respects different in law from what were given in this instance at the first trial.
This work is in the public domain in the United States because it is a work of the United States federal government (see 17 U.S.C. 105).
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