Le Roy v. Tatham
55 U.S. 156, 14 L. Ed. 367 (1852)
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Rule of Law:
An inventor cannot obtain a patent for a combination of machinery that is not itself novel by claiming the invention's novelty lies in its application of a newly discovered scientific principle. The patent claim itself defines the invention, and if an inventor claims a combination of machinery, the novelty of that specific combination must be established.
Facts:
- John and Charles Hanson discovered a new property of lead: when recently solidified and under heat and extreme pressure, it would perfectly reunite after being separated.
- Prior to this, the 'Burr' machine for making lead pipe used a long, moving core attached to a piston, which was prone to warping and creating defective pipes.
- Using their discovery, the Hansons improved upon the Burr machine by designing a fixed, short core held in place by a 'bridge' near the die.
- In the Hansons' process, solid lead was forced by a piston through the bridge, where it separated, and then perfectly reunited in a chamber before passing through the die around the fixed core.
- This new process produced a wrought lead pipe of superior quality, strength, and uniformity, which could be made in any length and at a lower price.
- The Hansons assigned their invention to H.B. and B. Tatham, who were later joined by G.N. Tatham.
- The Tathams obtained a patent that specifically claimed 'the combination of the following parts... the core and bridge, or guide-piece, with the cylinder, the piston, the chamber and the die, when used to form pipes of metal, under heat and pressure...'
Procedural Posture:
- The Tathams (plaintiffs) sued Le Roy, Smith, and Lowber (defendants) in the U.S. Circuit Court for the Southern District of New York, alleging patent infringement.
- Defendant Lowber permitted a default judgment to be entered against him.
- At a jury trial for the remaining defendants, the judge instructed the jury that the invention's originality consisted not in the novelty of the machinery, but in bringing a newly discovered principle into practical application.
- The jury returned a verdict in favor of the plaintiffs, the Tathams.
- The defendants, Le Roy and Smith, appealed to the United States Supreme Court, arguing that the trial court's instructions to the jury were erroneous.
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Issue:
Is a patent for a combination of machinery valid if the claimed combination itself is not novel, but is merely a new application of a newly discovered natural principle?
Opinions:
Majority - Mr. Justice McLean
No, a patent for a combination of machinery is not valid if the combination itself is not novel, even if it is used to apply a new principle. The patentees are bound by their specification, and if they claim a combination of machinery as their invention, they cannot sustain the patent without establishing the novelty of that combination. A principle in the abstract is not patentable, nor is an old machine made patentable by applying it to a new purpose. The patentees here specifically claimed the 'combination' of machine parts, not the discovery of the property of lead or the process of applying it. Therefore, the trial court erred by instructing the jury that the novelty of the machinery was not material and that the invention's originality lay in applying a newly discovered principle. Because the patentees founded their claim on the machinery combination, the novelty of that combination was a material fact for the jury to decide.
Dissenting - Mr. Justice Nelson
Yes, the patent is valid because the majority misconstrues the claim. The true invention was the discovery of a new property in lead and its practical application to create a new and useful product. The claim should be read benignly and in its full context, which is for the combination of machinery only 'when used to form pipes of metal under heat and pressure, in the manner set forth.' This limitation ties the machinery to the novel process of applying the newly discovered property of lead. The apparatus was merely incidental and subsidiary to the main discovery. To hold that the invention is just the arrangement of old parts mistakes the skill of a mechanic for the genius of the inventor and ignores the true, revolutionary nature of the discovery.
Analysis:
This case establishes a crucial distinction between patenting a natural principle and patenting its practical application, emphasizing that an inventor is strictly bound by the language of their patent claim. The decision forces inventors and their attorneys to draft claims with extreme precision. If an invention's core is a new process or the application of a new discovery, the claim should be for the process, not merely for the machinery that executes it, especially if the machinery's components are not novel in combination. This ruling reinforces the idea that one cannot patent a result or effect, but only a specific, novel means of achieving it.
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