(charging the jury). The patentee’s description of his invention sets it forth with great particularity and clearness, and models have been produced which render it perfectly intelligible. After describing the various parts of this machine, the patentee closes, as is usual, with a specification of the particular things which he claims to have invented.
The first is, the segment slides, acted on by springs, in combination with the platen and hopper, constructed and arranged as described in the specification. The object of this contrivance is, to close the slot in the end of the press which was before open, and through which the shaft of the press moves, in order to prevent the mortar from being pressed out of the aperture. The patentee next claims the combination of the carriage E, suspended at its rear end in the frame, with the connecting-rods and shaft for free>-ing the machine from obstructions. He claims, also, the construction of the carriage E so as to free itself from dirt — meaning all the parts used by him, in the construction of this carriage, to effect the purpose intended —that is, to free it from dirt, which seems to have been a difficult thing in these machines; and he claims, also, the carriage E, thus arranged, in combination with the movable carriage F, constructed in the mode pointed out in the specification. These are the things he claims, each of which he supposes to be an improvement on all prior machines in use.
As to the first claim, the defendant insists that, whether original or not, the contrivance is destitute of utility, and could not be carried into practical effect, and was abandoned by the patentee immediately. The defendant’s counsel assume the fact to be proved, and then insist that, as this claim is invalid, either from want of originality or utility, the whole patent becomes void. This is a question of law for the court to decide. It is argued by the defendant that, in order to have saved the patent, the pat-entee should have disclaimed this part of his patent, under the 7th and 9th sections of the act of March 3, 1837 (5 Stat. 193, 194) and that, as he has failed to make this disclaimer and to record it, this suit cannot be maintained and the whole patent is void. Though there is some evidence going to *283show that this contrivance may be new, and may not have been used before, yet, perhaps, the weight of it is that it is useless or could not be operated. I have examined the provisions of the statute, and am of opinion that this suit may be maintained, under the two sections referred to, notwithstanding a disclaimer of the first claim has hot been made or recorded; but the plaintiff will not be entitled to costs. The provision in the 9th section, that no costs shall be recovered unless a disclaimer of all that part of the thing patented which is claimed without right, is entered before the commencement of the suit, certainly shows that the action may be maintained for other parts of what is patented. If the disclaimer was entered in the patent office before the suit was instituted, the .plaintiff recovers costs in the usual way, independently of any question of disclaimer. But if, in the progress of the trial, it turns out that a disclaimer ought to have been made as to part of what is claimed, the plaintiff may recover, but will not be entitled to costs.
Another question arises under the 9th section — whether there has been unreasonable negligence or delay in entering a disclaimer, That is a question which goes to the right of action. If the delay shows great negligence, the jury may say that the patent is void. The provision in question applies only in the case where the part claimed by the pat-entee, of which he is not the inventor, is a material and substantial part of the thing patented.' A disclaimer is necessary, therefore, only where the thing claimed without right is a material and substantial part of the machine invented. The question as to the disclaimer in this case is, therefore, of no importance in the determination of the rights of the parties, unless the slides and springs claimed in the first claim are described as a material and essential part of the machine, or unless they were introduced into the description through the wilful default of the plaintiff, or with intent to de fraud or mislead the public. If you find that these slides and springs are not essential to the machine, and were not introduced into the patent through such wilful default or intent to defraud or mislead the public, the want of a disclaimer in regard to them affords no ground for invalidating the patent.
As to the second claim. If tlie carriage E, which is one part of the combination as arranged by the patentee, is a new and useful improvement, the combination of that with tlie connecting-rods and shaft, for letting it down and freeing it from obstructions, will be maintained, though the latter may be old. Because, one part of tlie combination being new, the uniting that with an old contrivance makes the combination necessarily a new one.
I pass now to the third claim, and to the real point in controversy. The arrangement of jhe carriages E and F is a distinct and Independent claim — a material and substantial one — and one without which the substratum of the invention would fail. This brings the case very much to the point, whether the carriage E, constructed as it is described in the specification, is of itself a new improvement, in view of the carriages which had been in use prior to the invention of the plaintiff. It is necessary that it should be new, in order to uphold the third claim; and that, if maintained, will uphold the second. The question is one of fact. A great deal of evidence has been given on both sides, all bearing on the point; and, except that there are some legal principles bearing on the question of fact, and as to which the court may aid you, it is a question which must be determined by the good sense and sound judgment of the jury. Of course, the question is not, whether the plaintiff’s was the first bed or carriage that had ever been used; because, it is admitted that carriages and beds had before been used. But the question is, whether the plaintiff’s carriage, as constructed by him, is a substantial improvement, for the purpose for which it is used, on all previous carriages. A formal change, such as a change in proportions, a mere change of form, or a different shape, is not a change within tlie meaning of the law. An improvement upon an old contrivance, in order to be of sufficient importance to be the subject of a patent, must embody some originality, and something substantial in the change producing a more useful effect and operation. And, in determining this question, the jury have a right to take into consideration, in connection with the change, the result which has been produced. Because, the result, if greatly more beneficial than it was with the old contrivance, reflects back, and tends to characterize, in some degree, the importance of the change.
I do not agree with the counsel for the defendant, that the carriage E, as constructed by the patentee, is to be regarded as embracing a combination of materials, within the doctrine of the patent law, and that, unless the defendant has taken the whole of the combination, he is not liable. My opinion is, that that principle does not apply.
If the carriage E, as constructed by the plaintiff, is not a substantial improvement upon all previous constructions, he is not entitled to recover. But, if you arrive at the conclusion that that carriage is a substantial improvement upon all previous constructions, then the question is, whether the carriage used by the defendant is identical with that of the plaintiff. If it is, it is an infringement, and the plaintiff is entitled to recover.
The rule of law as to damages, when an infringement is made out, is, to give to the plaintiff the actual loss which he has sustained, and nothing more. Exemplary or *284vindictive damages cannot be given. If tbe damages are insufficient, there is a provision of. law authorizing the court to treble them. The plaintiff is entitled, if his case is made out, to the profits on all the machines sold by the defendant.
The jury found a verdict for the plaintiff for $1,000 damages.3
A motion for a new trial in this ease was subsequently made before Judges Nelson and Betts, on the ground of alleged errors in the charge, but it was denied!