Blake v. San Francisco

delivered the opinion of the court.

This is an appeal from a decree dismissing a bill filed by the appellant to restrain the infringement by the appellees of reissued letters patent granted to the appellant, as the assignee of original letters patent issued to Thomas H. Bailey. The original patent was dated February 9, 1864, and the reissue September 18, 1877. They were for “ a new and improved valve for the water cylinders of steam fire engines and other pump cylinders.” The specification, which was substantially the same in both patents, stated that previous to the invention therein described the only valve used to reheve the pressure upon fire hose to prevent them from bursting was one operated by hand. To obviate the defects of such a valve, the inventor applied, at some point between the engine or pump and the hose nozzle, a valve which opened automatically by the pressure in the hose or the pump cylinder, so as to discharge an additional stream, and thereby relieve the pressure.

The specification then minutely described an automatic relief or safety valve, and added: “ To enable the valve to be screwed down to bring all practical pressure upon the pump and hose in a trial of an engine, there is a hole dl drilled through the upper part of the screw-cap D and valve stem d, when the valve is down in its seat, for the reception of a pin, by the insertion of which the valve stem and cap can be connected rigidly, so that by slightly turning the cap the valve may be screwed down close to its seat.”

The reissued patent contains ty7o claims, the second of which only is found in the original. They are as follows:

1. The combination, with a pump cylinder and hose of a fire engine of an automatic relief valve, arranged relatively thereto, substantiallv as snecified.

The answer of the defendants denied, infringement, denied that Bailey was the original inventor of the devices described in his patent, and averred that his alleged invention had been in notorious public use many years before the application of a patent therefor by Bailey.

The appellant does not contend that the appellees infringe the first claim of the reissued patent. He bases his demand for relief on the alleged infringement of the second claim only.

We think that the proper construction of this claim is that it covers an automatic valve in combination with a contrivance consisting of a pin-hole and pin, by which the valve may be raised from its seat, so as to leave the valve hole permanently open, or by which the valve may be rigidly closed upon its seat, making a closed or plug valve.

The evidence shows that Bailey was not the first to conceive the idea of ,a device for opening or closing rigidly an automatic valve.' The same thing had been done by means of wedges and screws and other devices. He cannot, therefore, cover by his patent all the devices for producing this result, no matter what their form or mode of operation. The claim must be confined to the specific device described in the specification and claim, namely, a pin-hole and pin. If this construction of the claim be adopted, it is clear that no infringement is shown, for the appellees do not use a pin-hole and pin for holding their valve open or closed, but a screw, sleeve or cap;. and, therefore, one of the elements of the combination, covered by the second claim of appellant’s patent, is wanting in the device used by the appellees. Prouty v. Ruggles, 16 Pet. 336 . See also Rowell v. Lindsay, ante, page 97, and cases there cited.

But if it be contended that the device covered by the second claim of the appellant’s patent is infringed, simply by the use of an- automatic relief valve, which can be converted at will into an open or closed valve, the evidence in the record is abundant

Upon this state of facts it was plain that the mere employment by the defendant of the old and well-known automatic safety valve afforded no ground upon which,,to base the relief prayed for in the appellant’s bill. Appellant’s counsel, therefore, disclaimed any right to the exclusive use of an automatic safety valve, and said: “ We do not claim the valve any further than in this combination with a steam fire engine.”

If it be conceded, therefore, that the second claim of appellant’s patent covered the use of an automatic relief valve applied to a steam fire engine and hose, the question is presented whether the appellant’s patent thus construed is valid.

“It is settled,” says Mr. Justice Gray, speaking for the court, “by many decisions of this court . . . that the application of an old process, or machine, to a similar or analogous subject, with, no change in the manner of application; and no result substantially distinct ■ in its nature, will not sustain a patent, even if the new form of result has not before been contemplated.” ■ Pennylvania Railroad Co. v. Locomotive Truck Co., 110 U. S. 490 , and cases there cited.

It follows from this principle that, where the public has acquired in any way the right to use a machine or device for a particular purpose, it has the right to use it for,all the like purposes to which it can be applied, and no one can take out a patent to cover the application of the device to a similar purpose.

If there, is any qualification of this rule, it is that if a new

It is no answer to this to assert that the application of a relief valve to a portable steam fire engine is the invention of a new combination. . There was no- invention : the combination was already in public use on steamships. The application of the valve to a similar use on land was not a new combination or a new invention.

We are of opinion, therefore, that construing his patent as the appellant has been compelled by the testimony to do, Bailey invented nothing but the pin-hole and' pin mentioned in his specification, and this is not used by the appellees.

The decree of the Circuit Cov/rt is affirmed.