delivered the opinion of the court..
Jones, as assignee of four several patents for a new and useful improvement in preserving Indian corn, brought his action against Clark, the original defendant, alleging infringements of the same. These patents were issued to Isaac Wins-low,'and were as follows: viz., No. 34,928, dated April 8,1862, “ for a new and useful improvement in preserving Indian corn; ” No. 35,274, dated May 13, 1862, “for a new and useful improvement in preserving green corn;h No. 35,346, dated May 20, 1862, and No. 36,326, dated Aug. 26,1862.
The two patents last above mentioned were declared and adjudged by the court below to be void; and from this judgment no appeal has been taken. They are no longey elements in the case before us, and are dismissed from further consideration.
The patent first mentioned is for an article of manufacture,— a result. The second one is for a process by which a result is obtained. The first is the more full, and embraces all that is contained in the second.
The first objection made to the patents is the want of novelty. It is contended that they were anticipated by the Appert process embodied in the Durand patent of 1810; also by the patent of Gunter of 1841, and by that of Wertheimer of 1842. It is *180au elementary proposition in patent law, that, to entitle a plain-. tiff- to recover for the violation of a patent, he must be the original inventor, not only in relation to the United States, but to other .parts of the world. Even if the plaintiff did not know that the discovery had been made before, still he cannot re-' cover if it has been in use or, described in public prints, and if he be not in truth the original inventor. Dawson v. Follen, 2 Wash. C. C. 311; Bedford v. Hunt, 1 Mas. 302.
Durand’s patent is described in his specification, enrolled in the English Court of Chancery, as based “ upon an invention communicated to him by a certain foreigner, residing abroad, of the manner of preserving aniihal food, vegetable food, and other perishable articles, a long time from perishing or becoming useless.”
In-describing the nature of the invention and the manner in which the same is to be performed, he says, —•
“ First, I place the said food or articles in bottles ,pf glass, pottery, tin, or other metals or fit materials, and I close the aperture so as •completely to cut off or exclude all communication with the external air; ” and he describes the various means of effecting that purpose.
“ Second, When the vessels are thus charged' and' well closed, I place them in a boiler, each separately surrounded with straw or wrapped .in a coarse cloth, or otherwise defended from striking . against each other. I fill the boiler so as to cover the vessels with . cold water, which I gradually heat to • boiling, and continue, the ebullition for a certain time, which must depend upon the nature .of the substances included in the vessels, and the size of the vessels, and other obvious circumstances which will be readily apprehended by the operator. Vegetable substances are to be put into the vessel in a raw or crude state, and animal substances .partly or half cooked, although these may also be put in raw.”
The specification then declares that the inventor did avail himself of the application of heat by placing the vessel in an oven,- stove, steam-bath, or other fit situation for gradually and uniformly raising the temperature and suffering it to cool again, and that as the choice of the consumer or nature of the said food or other articles may render preferable, leave the aperture of the vessel, or a small portion thereof,, open until the effect of'the *181heat shall have taken place, at which period the same is to be closed.
The points following are embraced in this patent: — . ■
1. It is for the purpose of preserving for a long time -animal or vegetable food. ' -
2. The articles thus to be preserved are to be placed in tin or other vessels, so arranged as to exclude communication with the external air.
3. An aperture may be left in the vessel, at the choice of the operator, until the effect of the heat shall have taken place, when it is to be closed.
4. The vessels thus prepared áre placed in a boiler filled with cold water, which is heated to .'a boiling- point, which boiling shall be continued for such time as shall be required by the ■ substances contained in the vessels.
5. Although a water-bath is preferred, the inventor declares that he avails himself of heat through an oven, stove, steam-bath, or any other situation fit for gradually raising the temperature and suffering it to cool again.
6. Vegetables are to be put into* the vessels in a raw or crude state; animal substances raw or partly cooked.
7. The invention is general in its terms, embracing all vegetables and all animal substances capable of being thus dealt with.
Winslow’s patent of April 8, 1862, No. 34,928, is declared to be for an improvement in preserving Indian corn in the greenstate.
The letters-patent declare .-that the first “ success of the inventor was obtained" by the following process: The kernels, being removed from the cob, were immediately packed in cans hermetically sealed, so as to prevent the escape of the natural aroma of the corn or the evaporation of the milk or other juices of the same. I then submitted the sealed cans and their contents to boiling or steam heat for about four hours. . . . By this method of cooking, green corn in the vapor of its juices, the ends of the cans are bulged out. Strong’cans aré required, and dealers are likely to be prejudiced against corn thus put up. I. recommend the following method: Select a superior quality of green corn in the natural state; remove the kernels from the *182cob by means of a curved and gauged knife, or other suitable •means; then pack in cans, hermetically seal the cans,-expose them to steam dr boiling heat for about an hour and a half; tlen puncture, seal while hot, and continue the heat for about two hours, and a half.” At the close, the inventor says that what he claims to secure by the patent is the new article of manufacture; namely, Indian corn preserved in the green state-without drying, the kernels being removed from the cob, hermetically sealed, and heated as described.
Let us now state the points embraced in this, the plaintiff’s patent, and compare them with the points heretofore stated as .included in the Durand patent.
■ 1. Winslow’s declared object is the preservation of Indian corn in the' green state.
Durand’s is for preserving Indian corn not only, but all vegetable substances in their raw or crude state.
2. Winslow-recommends removing the kernels from the cob before the process of preservation'is commenced, placing the kernels in cans, sealing them, and exposing them- to heat.
Durand, not limiting himself -¿o the article of corn, provides that the articles to be preserved shall be placed in cans, and subjected to heat in the same manner, He does not stipulate or recommend that the- article shall be first removed from the cob, the vine, the twig, or whatever may be the natural support of the vegetable to be preserved, as the corn from the cob, the pea from its pod, the grape or the tomato from its vine, the peach from its steip, the berry from its stalk. Neither does he recommend that it shall not be so removed. His process embraces the- article in whatever form it may be presented. It is for the preservation of raw- or crude or. uncooked vegetables in whatever form they may be presented, and necessarily includes a case where they have been previously removed from their natural- support. A prior removal from the stalk would be the natural, and, in- many cases, a necessary proceeding.
3; Winslow directs that the kernels shall be subjected to the heat for a period of about one and a half hours before puncturing, and for about two- and a half hours after the puncturing. The .double"use of the word “ about.” indicates that the time is not to be considered as precisely -specified.
*183Durand directs that the boiling shall continue for such length of time as shall be required by the particular substances contained in the vessel. Corn, pease, tomatoes, peaches, berries, asparagus, may very likely require great difference in the time in which the heat shall be applied to.produce the required effect. In each case, that is to be the measure of the time.
4. Winslow says other modes may be adopted so long as hermetical- sealing and the use of heat are so managed as to secure the aroma and fresh flavor and prevent putrefaction.
Durand declares that he intends to include in his patent heat through an oven, stove, steam, or any other situation by which the temperature is gradually raised and suffered to cool again.
The same idea is put forth at the close of Winslow’s specification, where he declares that what he claims by his patent is the manufacture of Indian corn in its green state, the kernels being removed from the cob, hermetically sealed, and heated.
We are of the opinion that the substance of all that is found in Winslow’s patent had, nearly half á century before he obtained his patent, been put forth in Durand’s patent. If Du-rand’s patent were now in force in this country, and a suit brought upon it. against Jones, the claimant under Winslow, for an infringement, the right to recover could not be resisted. Durand would show a patent intended to effect the same' purpose,— to wit, the preservation of' vegetables for a long time; employing the same process, — to wit, the effect of heat upon vegetables placed in a metallic vessel, the gradual cooling of the same, hermetically sealed after puncture to allow the escape of gases. This is also Winslow’s process.
To constitute an infringement, the thing used by the defendant must be such as substantially to embody the patentee’s mode of operation, and thereby to attain the same kind of result as was reached by his invention. It is not necessary that thé defendant should employ the plaintiff’s invention to as good advantage as he employed it, or that the result should be the same in degree; but it must be the same in kind. Winans v. Denmead, 15 How. 330.
To infringe a patent, it .is not necessary that the thing patented should be adopted in every particular. If the patent is adopted substantially by the defendants, they are guilty of *184infringement. Root v. Ball, 4 McLean, 177; Alden v. Deney, 1 Story C. C. 336.
In an action for infringement, the first question is, whether the.machine used by the defendant is substantially, in its principle and mode of operation, like the plaintiff’s. If so, it is an infringement to use' it. Howe v. Abbott, 2 Story C. C. 190; Parker v. Haunth, 4 McLean, 370.
If he has taken, the same plan and applied it to the same purpose, notwithstanding he may have.varied the process of the application, his manufacture will be substantially identical with that of the patentee. ' Cur.tis, sect. 312.
Erskine, J., says, in Walter v. Potter, Webs. Pat. Cas. 585, 607, the question 'of infringement depends upon whether the plan which the defendant has employed is in substance the same as the plaintiff’s, and whether all the differences which have, been' introduced are not differences in circumstances not material, and whether it is not in substance and effect a colorable, evasion of the plaintiff’s patent.
When a party has invented, some mode of carrying into effect • a law of natural science ór a rule of practice, it is the application of that law dr rule which constitutes the peculiar feature of 'the invention. He is entitled to protect himself from all other modes.of making the same application; and every question of infringement will present the question, whether the different mode, be- it better or worse, is in substance an appli- . cation of the same principle. Curtis, sect. 320.
- It is said, however, that a distinction exists in -this, — that Winslow’s patent provides that the corn shall be removed from thé -cob before the process begins, and that Durand does not specify-this idea. If this be conceded, it does not alter the case. Although he may preserve Indian corn by removing it from the cob more advantageously than by letting it remain ■ on the-'cob, he does it by using the Durand process. He still applies Durand’s process of heating, puncturing, and cooling, and no more, takes the practice out of Durand’s patent than if he-should specify that pears or peaches would be the better' .preserved if their outer coating should be first removed, or that meat could the better be preserved if the bones were .previously extracted. Whether the' improvement or combination could be the subject of a patent, it is not material to consider.
*185It is said again, that “ instead of packing the kernels in the vessels selected for the purpose, in their crude state, as suggested in the English patent, the process patented by the assignor , of the plaintiff directs that the kernels should'be'cut from the cob in a way which leaves a large part of the hull oh the cob, and breaks open the kernels, liberating the juices, to use the language of the patentee, and causing the milk and other juices of the corn to flow out and surround the kernels' as they are packed in the cans, in such á mode that the juices form the liquid in which the whole is cooked, when the. cans are subjected to the bath or boiling water.”
This argument is based upon an error in fact. There is no such language in the patent. The sole expression of the patent is to provide, .first, that the corn shall be removed from the cob; and, second, that it shall be subjected to heat in vessels hermeti-. cally sealed. Thus Winslow recites that difficulty had been encountered by him in preserving the corn upon'the cob. This produced ah insipid article; and accordingly he says, “ My first success was obtained by the following process: The kernels, being removed from the cob, were immediately packed in cans and hermetically sealed, so as to prevent the escape of the aroma, and submitted to heat,” &c. There is not a word in the patent to the effect that the kernels shall be cut off in a particular, way, or that a large part of. the hull shall be left oh the cob, nor, indeed, that the kernels shall be cut off at all. It is simply provided that the corn shall be removed from the cob. The means are not specified.
Farther on, the patentee, Winslow, says, “I recommend the following method.” This is not of the substance of the patent. A recommendation is quite different from a requirement; The latter is a demand, an essential, a necessity. The former is a choice or preference between different modes or subjects, and is left to the pleasure or the judgment of the operator. ' He may adopt it. He will do well if he does... But he may reject it, and still accomplish his object by means of the patent.
The principle is this: The omission to mention in the specification something which contributes only to the degree of benefit, providing the apparatus would work beneficially and ' be worth adopting without it, is- not fatal, while the omission *186of what is known to be necessary to tbe enjoyment of tbe invention is fatal. Curtis, sect. 248.
An excess of description. does not injure the patent, unless tbe addition be fraudulent. Id. sect. 250.
. Accordingly, when tbe inventor says, “ I recommend tbe following method,” be does not thereby constitute such method a portion of bis patent.' His patent may be infringed, although tbe party does not follow bis recommendation, but accomplishes the same end by another method.
But tbe patentee does not even recommend that tbe kernels shall be cut off in such manner that a large portion of tbe bull shall remain upon tbe cob, nor does be distinctly recommend tbe cutting off of tbe kernels in any manner. His recommendation is simply that tbe kernels be removed by any convenient and suitable method. His language is, “ I recommend tbe following method: Select a superior quality of sweet corn in tbe green state, and remove tbe kernels from tbe cob by means of a curved and gauged knife or other suitable means.” Any means that are suitable for removing tbe kernels, whether by knife or any other method, are within this language.
That tbe simple removal of tbe corn from the cob, before it is subjected to beat, without reference to cutting it off in such manner as to leave a portion of tbe bull on tbe cob, or without reference to cutting at all, is tbe claim of Winslow’s patent, is clearly shown by another consideration.
. Tbe first patent of Winslow and bis second patent, as stated in the opinion of tbe court below, are intended to effect tbe same purposes; tbe one being a patent for the article, tbe other for tbe process by which tbe article is produced. “ Both patents (it is there said) may be considered together, as all tbe proofs applicable to one apply equally to tbe other; and tbe positions taken in argument are tbe- same in both, without an exception.”
Now, it is quite significant of tbe intent of tbe claimant, and of tbe meaning of tbe first patent, that bis second patent, which is for tbe process, and would properly be‘ more specific as to every essential mode, makés no claim that. tbe com shall be removed from the cob by cutting, much less that it should be cut in any particular manner, or with a view to any particular *187effect. After describing bis disappointment in the result when he merely cooked the corn, and in attempting to preserve it when packed, without removal from the cob, or where it was removed after having been boiled on the cob^he says, “FinallyI adopted the process of removing the corn from the cob, packing the kernels in cans, hermetically sealing the same, then boiling the cans, until the corn contained therein became completely,cooked.” The word “cutting” is not to be found in this patent. Remov.al from the cob before commencing the preservation, without reference to the manner or means,.except only that they should be suitable, is the plain intent of both patents. In this respect they are identical with each other, and are not inconsistent with Du-rand’s patent.
The discovery in question has been of immense benefit to mankind. By means of food preserved in a compact and nutritious form, protected from its natural tendency to decay, deserts are traversed, seas navigated, distant regions explored.' It is less brilliant, but more useful, than all the inventions for the destruction of the human race that have ev^r, been known. It is to France that the honor of this discovery belongs, and to Appert, a French citizen. It does not belong to America or to Winslow. Appert’s process presents all that we now know upon the subject. It contains absolutely every thing of value that is contained in Winslow’s patent.
Other grave questions are presented by the record before us. We are satisfied, however, to place our decision upon the ground that the want of novelty in the patents of Winslow is fatal to the plaintiff’s right of recovery. We do not discuss the other questions.
The decree must be reversed, and a decree ordered in favor of . the defendant below.