The Pacific commercial advertiser. [volume] (Honolulu, Hawaiian Islands) 1885-1921, 1893-09-25

30 il tue pdLSDldDlS ltI proven lOAll'
or even q substantially different old
form, of one element Is u-ed with the
other elements of the combination,
there will be no infringement, for
the combination will not be the
same There IS substituted for one
element another element which Is
substantially different,-so different,
indeed, rs to be, If a patent Is taken
| out for it, the exclusive property OF
| its patentee. To constitute infringe
ment. the same elements must be
used combined in the same way
! the combination must be the same.
The principle or mode Of operation
may be the same and yet there may
| be no infringement, for II one ele
ment, though utterly useless, Is
omitted or substantially changed,
the combination will be different
The question therefore is not whe-
| Their the Young device is a mere i'm
provement upon the Dyer device,
| embodying the same principle, but
whether the combination Is the same
or different. In other words, IS the
spiral rib to be regarded as only col
| orabIy different from, or as only a
iHeCHdbiCdi CT uL'dJSHI lCi thc ICLSi
tudinal rib. or not?
In Gould VS.. Rees, ID Wall, 187,
the lower court had instructed the
| jury "that the omission of one Of the
elements and the substitution of
another mechanical device to per
! form the same function will not
avoid Infringement The Supreme
| Court of the United States held this
/ to be erroneous, and stated the law
| to be that "an alteration in a pa
! tented combination which merely
substitutes another old ingredient
for one of the ingredients in the
patented combination is an infringe
ment of the patent, if the substitute
performs the same function and was
| well known at the date of the pa
tent as a proper substitute for the
omitted ingredient, but the rule IS
otherwise If the ingredient substi-
tuted was a new one, or performs a
substantially different function, or
was not known at the date of the
plaintiffs patent as proper sub
stitute for the one omitted from his
patented combination" In other
words, there is no infringement, If
the substituted ingredient, though
old and well known, performs sub
stantialIy different function. or if,
though old and we'll known, it per
forms the same function but was not
well known as proper substitute for
the omitted ingredient. See also
Rowell VS. Lindsay, IL G., 1868 (G
Fed Rep, 300, and the cases there
cited
In the present case a spiral was
substituted for longitudinal rib. Il
is claimed by the defendant that the
spiral rib performs substantially diff
ferent functions, such as the giving
of more divided, uniform and scat
tering feed, the bringing Of more
uniform strain on the gears, and the
more effectual prevention of q rush
of air into the furnace. From the
specification and an inspection of
the models, it does not appear clear
ly how rush of air into the furnace
is more efectually prevented; there
would apparently be more uniform
strain on the gears, but this would
seem to be but an incidental and
unimportant advantage; and there
would seem to be more divided, uni
form and scattering feed, but this
also would seem to be but slight
advantage, inasmuch as the rolls are
small and the ribs not very far apart,
and there would be nearly continu
Gus uniform feed in either case, and
as the fuel in either case falls In but
single line and is not scattered
over the whole floor Of the furnace.
| There is nothing to show the fact Or
| the advantage Of these differences in
| the effects of the devices in actual
working. The Court can only make
differences from the differences in
| the descriptions and models. The
| fact of the existence or the advan
tages of these differences in actual
working, or the contrary, If proved
by competent evidence, would go far
to show whether the spiral rib does
or does not perform substantially
different functions. So, the question
as to whether the spiral rib, though
a we'll known thing In itself, is or Is
not we'll known as proper substitute
for the longitudinal rib, might per-
haps easily be settled by evidence.
But there is unfortunately no evl-
dence on either of these points. The
case, though depending largely upon
facts, which are not agreed upon, but
which should have been either agreed
upon or proved by proper evidence,
is left to the Court to settle upon
rules of law. 1t is rule of law that
the burden of proof upon a question
of infringement lies upon the party
alleging infringement. In this case,
there IS nothing to show that the
spiral rib is a we'll known substitute
for the longitudinal rib, or that it per-
forms substantially the same func
tions, but, on the contrary, the two de
vices would appear from an inspection
of the models to work at least to some
extent in different ways, and the fact
that the Commissioner of Patents,
after an investigation, reported in
favor of a patent for the Young de
vice, and that a patent was accord
ingly issued, affords a presumption
in favor of the defendants claim
that the spiral rib either does per-
form substantially different func-
tions or was not we'll known sub
stitute for the longitudinal rib. 1t
is not necessary that the second in
vention should be an improvement
upon the first or do its work in g