In charging the jury,
NELSON, Circuit Justice,remarked as follows:
The first thing which it is necessary to understand, and "without a knowledge of which we can make no advance towards a proper settlement of the controversy between the parties, is the precise improvement which the patentee claims he has discovered. In other words, what has Buck invented in connection with the cooking-stove, as it existed before the date of his patent?
There is a radical difference of opinion on this branch of the case between the counsel who are engaged in the trial, and it is not at all surprising that there should be such difference, as the description given by the patentee is exceedingly obscure and difficult to comprehend. The question, however, is one of law, and one that the court is bound to determine, in order to give to the jury a guide by which to apply the facts in the case. The settlement of this question depends on a construction of the language of the patentee.
It will be seen, on reference to the specification, that the patentee describes particularly a cooking-stove, which, on the evidence in the case, there can be no doubt is what has been called throughout the trial the Hathaway stove. He specifies the flues of that stove, the two downward flues on the back at each corner, the side flues under the bottom to the fiont, and then the return flue through the centre. He describes also the flue or chamber in front of the stove, in connection with the side and centre flues; also the extension of the oven under the hearth; and then he undertakes to separate and distinguish from the general description which he has given of the Hathaway stove, the flues and the extended oven, &c., the part which he claims he has discovered, which was before unknown and not in public use. He names certain parts which he repudiates as not being within his invention, and then specifies the precise thing which he claims to have discovered and for which he applies for a patent.
The construction of the claim' on which the court have agreed is this, that the invention of the patentee is a combination of the extension of the oven under the hearth of the stove, and the flues as described by him, with the flue or fire-chamber in front of the stove, formed by the two front plates. I am free to say that my own indiviuual impressions are, that the patentee intended to claim the extended oven, and also a combination of the extended oven and the several flues he has particularly described, with the flue or chamber in front of the stove. But I have concurred with my learned associate íd the construction which we have adopted for the purposes of this trial, with a view to enable the jury to reach the questions of fact involved in the case, intending, if the construction we have agreed on is erroneous, to give the defendant the benefit of the error.
The novelty, therefore, which is essential to sustain the patent, consists in the combination of which >ve have spoken. Our con*554struction excludes the idea altogether, that Buck was the inventor of the extended oven. It excludes also the idea that he was the inventor of the several flues which he has described — the side flues, the return flue, and the flue in front But, whether the extended oven or the flues which he has described are new or old, his claim is for the combination of the extended oven and the several flues with the flue or fire-chamber in front of the stove. Without going into the evidence, we may say in general terms, that the extended oven and the reverberating fluos wore before combined. That combination is found in the B atkaway stove, cast in Painesville, Ohio, as early as the fall of 1837, and again cast at Lockport, N. Y., in the spring of 1838; and, in the summer of 1838, a stove containing that combination was put up at Palmyra, N. Y., at a public house. We may say, therefore, that a combination of the extended oven with the reverberating flues, was discovered before the invention of Buck. We call your attention to lilis fact for the purpose of stripping the case of irrelevant p atter.
The real point of novelty in the case, on the construction we have given to the patent and on the evidence is, if any, in bringing together, in connection with this previous combination of the extended oven and reverberating flues, the element of a flue or fire-chamber in front. The combination of the extended oven and reverberating flues, meaning the side flues and the centre flue, was old; but it is claimed on the part of the patentee, that he has brought into connection with this old combination, another element, the flue in front, making, as he claims, a new combination, of which he is the first discoverer and for which his patent has been issued. If that element was never before used in combination with the extended' oven, and the patentee was the original inventor of it, then in our view it is a new combination, and, if useful, patentable. It is insisted on the part of the defendant, that the patentee, in respect to this combination, has claimed more than he invented; that he has claimed things which he did not invent, with those which he did; that the old cannot be separated from the new, where both are described in the patent; and that, therefore, the patent is void. The position taken by the defendant’s counsel is this, that the combination of the side and centre flues with the extension of the oven was old, being found in the Hathaway stoves at Paines-ville, Lockport, and Palmyra, and that the patentee should not have claimed it in his patent; that he should have confined his claim to the combination of the fire-chamber with the extended oven; that then he would have set up a claim to the very thing which he insists he has discovered; that, as he has incorporated in his claim the combination of the extended oven with the reverberating flues, he has claimed too much; and that, therefore, the patent is void. We are inclined to think that this view is not well founded, and that, if the combination of the fire-chamber in front with the extended oven and flues is new, it is the subject of a patent. In a patent for a combination, where the novelty of the invention consists in the combination, it is altogether immaterial whether the elements forming the combination are new or old. All may be old; but, if they are brought together in a combination which was never before known and practically produces a new and useful result, it is a patentable subject. If then, looking at all the elements of which the combination consists, the bringing together of the extended oven, the side and centre flues, and the open chamber, for the purpose of improving the stove as it existed at the time, was new and produces a useful result, it is, as a whole, a new combination, and the proper subject of a patent.
Assuming, for the purposes of this trial, that this view of the claim is the sound one, the next question, and one of fact belonging to the jury to determine, is, whether or not Buck was the first and original inventor of this improvement. If he was, then, in the view we have taken, the patent is valid, and secures to him the exclusive right to the benefit of his improvement. If he was not, then the patent is void and no right can be set up under it
It is insisted on the part of the defendant, that this combination was before known and in public use, and that Buck is not entitled to the merit of having first discovered it. On the part of the plaintiffs it is claimed that he was the first discoverer, and that he is entitled to the enjoyment of the fruits of it. This question will depend, mainly, if not altogether, on a consideration of the stoves which have been produced in the course of the trial, and of which descriptions have been given by the witnesses on the part of the defendant, and of the testimony of the experts who have been examined. It is claimed by the defendant that the Hathaway stove with the double oven contained an open flue in front of the oven. In that stove, however, there were no reverberating flues. It is claimed, also, that the Burnell stove contained the combination; likewise the Stewart stove; and the Hoxie stove.
It is also insisted by the defendant that, assuming the combination claimed by the patentee not to have existed in any stove in public use, still Buck was not the inventor of the combination, but that it belonged to Crowell. On the part of the plaintiffs it is insisted, that the Hathaway stove with the double oven, the Burnell stove, the Stewart stove, and the Hoxie stove, are altogether different in construction, combination, operation, and effect, from the stove or the improvement invented by the patentee. A specimen of each of these stoves, either a stove in use or a model not in dispute, has boon *555exhibited- in court. You have had an opportunity to examine them ior yourselves. You have heard the testimony of the witnesses, and of the skilful experts, and, on this evidence and your examination, it is for you to determine, whether or not this combination of Buck’s, as we have expounded it to you, was new or not. It is a question of fact which it is your province to examine and settle. There are some general principles, however, which may assist in guiding your deliberations on the evidence, to which we will briefly call your attention.
[NOTE. Por other cases involving this patent, see Buck v. Gill, Case No. 2,080.]A formal difference between the combination of Buck and any previous combination is not patentable, and involves no skill, ingenuity, or mind. It is simply a difference in mechanical construction. In order to be patentable, the change must be substantial, as contradistinguished from formal. The new article must be different from the article on which it is claimed to be an improvement, not only in its mechanical contrivance and construction, but in its practical operation and effect in producing the useful result. Then it is not formal. Then it requires mind, ingenuity, labor, time, and expense. Keeping in view this distinction between a formal change and a substantial change, you will take up the evidence on both sides, the stoves claimed to contain the improvement, the witnesses, the experts, the explanations and arguments of counsel, and it will be for you to determine whether the combination claimed to have been invented by the patentee was new, or whether it existed before. If it was new and is useful, then it is a patentable subject, and the patent is valid. If it was not new, but old, then the patent is void.
If you shall come to the conclusion that the patent is valid, as embracing a new combination, then the next question will be, whether or not the defendant has appropriated the combination of the patentee to his own use in the manufacture of his stoves. Two of the defendant’s stoves have been produced in court. One is produced by himself, and is conceded to have been manufactured by him. You have had an opportunity to examine it in connection with the Buck stove. The same doctrine that we laid down on the first question of fact, in respect to distinguishing the combination of Buck from any previous combination, is equally applicable to this branch of the case. A formal change on the part of the defendant will not distinguish his stove from the Buck stove. That would be an evasion. The change must be substantial. It must be a difference in the mechanical structure, in the physical existence of the thing, and also in its practical operation and effect in producing the result; and it will be for you, on examining the construction of the two stoves, and the testimony of the experts and the other witnesses, to determine whether the stove of the defendant embraces the combination of the patentee or not. If it does, then it is 'made in violation of the patent. If it does-not, then it is no violation, and the defendant is entitled to your verdict.
If you should come to the conclusion that the patent is valid, and that the defendant is guilty of violating it, the next question will be as to the amount of damages. On this-branch of the case there is no contradiction. It is admitted by the defendant that he has manufactured one hundred of his stoves. Tt appears that the profits derived from the manufacture of the Buck stove are two-dollars or two dollars and a half for each stove. The rule which is to govern on the question of damages is, to give the actual damages; not vindictive or exemplary damages, but the actual loss sustained, which will be the ordinary profits the patentee derives from the sale of his stoves. It will be for you, on the evidence in the case, to-say what shall be the amount of the recovery.
The jury found a verdict of $200 for the plaintiffs.
[From 1 Fish. Pat. Rep. 251.]