U.S. Supreme Court Slawson v. Grand Street R. Co., 107 U.S. 649 (1883)
Slawson v. Grand Street Railroad Company
Decided April 23, 1883
107 U.S. 649
APPEAL FROM THE CIRCUIT COURT OF THE UNITED
STATES FOR THE EASTERN DISTRICT OF NEW YORK
1. It is the duty of the court to dismiss a suit brought to restrain the infringement of letters patent where the device or contrivance for which they were granted is not patentable, although such defense be not set up.
2. The invention described in reissued letters patent No. 4240, granted to Jolm B. Slawson, Jan. 24, 1871, is not patentable, as it is confined to putting in the ordinary fare box used on a streetcar an additional pane of glass opposite to that next the driver, so that the passenger can see the interior of the box. The letters are therefore void.
3. Letters patent No. 121,920, granted to Elijah C. Middleton, Dec. 12, 1871, are void. The fare box, the headlight of the car, and the reflector are the elements of the contrivance described in the specification and claim for lighting the interior of the box at night, and they are old. What is covered by the letters is not patentable, as it is simply making in the top of the box an aperture through which the rays of the headlamp are turned by means of a reflector.
This was a suit brought by John B. Slawson against the Grand Street, Prospect Park, and Flatbush Railroad Company to restrain the infringement of two patents, one granted to him as inventor and the other held and owned by him as an assignee.
The one first mentioned is a reissue, No. 4240, dated Jan. 24, 1871. The invention therein described is an improvement in fare boxes for receiving the fares of passengers in omnibuses and streetcars.
The specification describes the ordinary fare box used in streetcars and omnibuses, consisting of two apartments, the one directly above the other. This well known contrivance, the specification declares, was so arranged that the passenger deposited his fare in an aperture in the top of the upper apartment. It fell upon and was arrested by a movable platform, which constituted at the same time the bottom of the upper apartment and the top of the lower. This platform turned on an axis acted on by a lever. When turned, the fare fell into the lower apartment, which was a receptacle for holding the fares accumulated during the trip. Upon withdrawing the lever, the platform resumed its horizontal position, ready to
arrest the next fare deposited. The upper apartment had a glass panel on the side next the driver, so that he could see the fares as they were deposited by the passengers. This contrivance enabled the passenger to pay his own fare, and furnished a place of safe deposit for it, so that it could not be abstracted by the driver. It enabled the driver to scrutinize the fare after it was deposited by the passenger, and see that it was the proper amount and in genuine coin or tickets before it was passed into the general receiving box. The improvement described in the patent consisted in the insertion of a glass panel on that side of the upper apartment of the box next to the inside of the car or omnibus, and opposite to the glass panel next the driver, so that when the fare was temporarily arrested in the upper apartment, the passenger could see and examine it before it was passed into the lower or receiving apartment. The specification declared:
"By this means, disputes and contentions are prevented as to the sufficiency of the amount deposited to pay the fare or as to the genuineness of the money or tickets used for that purpose. It also enables the passenger, when he has unintentionally deposited more than the amount of his fare, to call the attention of the driver to that fact, so that he, should the passenger require the difference to be paid back to him, may report the case to the proprietor or his agent on reaching the end of the route, who will then pay the difference to the passenger, who, for this purpose, must ride to the office at the end of the route."
The claim of the patent was thus stated:
"A fare box having two compartments, into one of which the fare is first deposited and temporarily arrested, previously to its being deposited in the other, when the former is provided with openings, covered or protected by transparent media or devices, so arranged that the passengers can see through one and the driver or conductor through the other, in the manner substantially as and for the purposes set forth."
The other patent set up in the bill of complaint was granted to Elijah C. Middleton, assignee of James F. Winchell, and by the former assigned to complainant. It bore date December 12, 1871. It also was for an improvement in fare boxes. The specification declared as follows:
"This improvement relates to the mode of illuminating
the interior of a fare box in street railway cars or other vehicles, when used during the night, and it consists in the construction of the fare box with suitable openings and reflectors, arranged and adapted to receive light from the ordinary headlamp placed above the fare box, instead of requiring a separate lamp to illuminate it as heretofore."
The specification then described the improvement substantially thus:
The ordinary fare box, consisting of two apartments, one above the other, is constructed with an orifice in the top of the upper department, said top forming the floor of the lamp chamber. The orifice is closed with a sheet of glass to prevent any access to the fare box by that way. Immediately above the orifice there is placed in the roof of the lamp chamber a reflector in such an oblique position that will cause the light which falls upon it to be thrown through the orifice into the upper apartment of the fare box, in which the fare is temporarily deposited. The claim was stated as follows:
"Lighting the interior of a fare box at night by light obtained from the headlamp of the car thrown by a reflector I through an opening H in the headlamp box, into the chamber for the temporary detention of the fare for inspection, substantially in the manner and for the purpose set forth."
The answer denied infringement of either of the improvements described in the letters patent, denied that the persons therein named as the first inventors of said improvements were in fact the first inventors thereof, and averred that said improvements had been in public use and on sale in this country for more than two years before the applications for patents therefor were respectively made.
Upon final hearing, the circuit court dismissed the bill on the ground that the improvements described in the patents were void because they did not embody invention within the meaning of the patent laws. From this decree the complainant has appealed to this Court.
MR. JUSTICE WOODS delivered the opinion of the Court.
The appellant insists that the dismissal of a bill because the inventions described in the patents were not patentable, when no such defense was set up in the answer, is of doubtful propriety, and is a practice unfair to the complainants. The practice was sanctioned by this Court in the case of Dunbar v. Myers, 94 U. S. 187 . In that case, the defense set up in the answer was want of utility in the patented invention, that the patentees were not the first inventors, &c.; The circuit court rendered a decree for the complainant for a large sum. When the case came to this Court, the decree was reversed with directions to the court below to dismiss the bill on the ground, not set up in the answer, that the improvement described in the patent sued on did not embody or require invention and was not patentable, and the patent was therefore void.
"We think this patent was void on its face [because the improvement described therein was not patentable], and that the court might have stopped short at that instrument and, without looking beyond it into the answers and testimony sua sponte, if the objection was not taken by counsel, well have adjudged in favor of defendant."
We think the practice thus sanctioned is not unfair or unjust to complainants in suits brought on letters patent. If letters patent are void because the device or contrivance described therein is not patentable, it is the duty of the court to dismiss the cause on that ground whether the defense be made or not. It would ill become a court of equity to render money decrees in favor of a complainant for the infringement of a patent which the court could see was void on its face for want of invention. Every suitor in a cause founded on letters patent should therefore understand that the question whether his invention is patentable or not is always open to the consideration of the court, whether the point is raised by the answer or not.
We have considered the alleged improvements described in letters patent set out in complainant's bill, and agree with the conclusion reached by the circuit court that neither of them
involves invention, and that both the letters patent are therefore void.
A glance at the specification and claim of the patent granted to the complainant Slawson shows that the invention described therein consists simply in the placing, in the ordinary fare box used on streetcars and omnibuses, of a glass panel opposite to the glass panel next the driver, usually inserted in such boxes. The patent does not cover the fare box; it does not cover the insertion in the side of the fare box next the driver of a glass panel, nor a combination of these two elements. It consists merely in putting an additional pane of glass in the fare box opposite the side next the driver, so that the passengers can through it see the interior of the box. Such a contrivance does not embody or require invention. It requires no more invention than the placing of an additional pane of glass in a showcase for the display of goods, or the putting of an additional window in a room opposite one already there. It would occur to any mechanic engaged in constructing fare boxes that it might be advantageous to insert two glass panes, one next the driver and the other next the interior of the car. But this would not be invention within the meaning of the patent law. Hotchkiss v. Greenwood, 11 How. 248; Phillips v. Page, 24 How. 164; Dunbar v. Myers, ubi supra. It is not a combination of the fare box having one glass panel with an additional glass panel, but is a mere duplication of the glass panel. Doubtless a fare box with two glass panels, arranged as described in the patent, is better than a fare box with only one. But it is not every improvement that embodies a patentable invention. This rule was fairly illustrated in the case of Stimpson v. Woodman, 10 Wall. 117, in which it was held that where a roller in a particular combination had been used before without particular designs on it, and a roller with designs on it had been used in another combination, it was not a patentable invention to place designs on the roller in the first combination, and that such a change, with the existing knowledge in the art, involved simply mechanical skill, which is not patentable.
In Brown v. Piper, ubi supra, it was said that when the invention was simply the application by the patentees of an old
process to a new subject, without any exercise of the inventive faculty and without the development of any idea which could be deemed new and original in the sense of the patent law, it was not patentable, and it was held that the application of a process for preserving meats and fruit, which had previously been used for preserving other perishable substances, was not patentable.
"The design of the patent laws is to reward those who make some substantial discovery or invention which adds to our knowledge and makes a step in advance in useful arts. It was never their object to grant a monopoly for every trifling device, every shadow of a shade of an idea which would naturally and spontaneously occur to any skilled mechanic or operator in the ordinary progress of manufactures."
And it was held that the placing of a screw for dredging at the stem of a screw propeller, when the dredging had been previously accomplished by turning the propeller stern foremost and dredging with the propelling screw, was not a patentable invention.
These authorities, and others that might be cited, are adverse to the appellant's case and clearly show that the contrivance covered by the patent issued to him does not embody a patentable invention.
The same authorities apply with equal force to the patent for lighting the interior of the fare box at night by using the headlight of the car for that purpose. The elements of the contrivance -- namely, the fare box, the headlight, and the reflector -- are all old. What is covered by the patent is simply the making of an aperture in the top of the fare box and turning the rays of the headlamp through it into the box by means of a reflector. In other words, it is the turning of the rays of light to the spot where they are wanted by means of a reflector and taking away an obstruction to their passage. The facts of general knowledge of which we take judicial notice teach us that devices similar to this are as old as the use of reflectors. Taylor's Ev., sec. 4, note 2; Brown v. Piper, ubi supra. The new application of them does not involve invention. We are of opinion that there
was nothing patentable in the contrivance described in the second patent.
The result of our views is that the decree of the circuit court was right and must be