Mr. Justice McLEAN
delivered the opinion of the court.
This is a case on error, from the Circuit Court of the Southern District of New York.
The action was brought in the Circuit. Court, to recover damages for an alleged infringement of a patent for new and useful improvements in machinery for making pipes and tubes from metallic substances.
The declaration alleged that John and Charles Hanson, of England, were the inventors of the improvements specified, on or prior to the 31st of August, 1837 ; that on the 10th of January, 1840', the ITansons assigned to H. B. and B. Tatham, two of the defendants in error, the full and exclusive right to said improvements; that,- on the 29th of March, 1841, letters-patent were granted for the improvements to the Tathams, as the assignees of the Hansons; that, afterwards, H. B. and B. Tatham assigned to G. -N. Tatham, the remaining defendant in error, an undivided third part of the patent.
On the 14th of March, 1846, the said letters-patent were surrendered, on the ground that the specifications of the improvements claimed were defective, and - a new patent was 'issued, which granted to the patentees, their heirs, &c., for the term of fourteen years^ from the 31st of August, 1837, the exclusive right to make and vend the improvements secured. The declaration states, the patent was of the value of fifty thousand dollars; and that the defendants below had made and vended lead pipe to the amount of two thousand tons, in violation of the patent, and to the injury of the plaintiffs twenty thousand dollars.
The defendants pleaded not guilty; the defendant Lowber did not join in the plea, but permitted judgment to be entered against him by default. On the trial, certain bills of exceptions were taken to the instructions of the court to the jury, on which errors are assigned.
The schedule, which is annexed to the patent, and forms a part of it, states that the invention consists " in certain improvements upon, and additions to, the machinery used for manufacturing pipes and tubes from lead or tin, or an alloy of soft metals capable of being forced, by great pressure, from out of a receiver, through., or between apertures, dies, and cores, when in a set or solid state, set forth in the specification of a patent granted to Thomas Burr, of Shrewsbury, in Shropshire, England, dated the 11th of April, 1820." After describing Burr's machine, its defects, and. thé. improvements made on it as claimed,- the patentees say, " Pipes thus made are found to possess great solidity and unusual strength, and a fine uniformity of thickness and accuracy of bore is arrived at, such as, it is believed, has never before been attained by any other machinery."
" The essential difference in the character of this pipe, w iiich distinguishes it, as well as that contemplated by Thomas Burr, from all other heretofore known or attempted, is that it is wrought under heat, by -pressure and constriction, from set metal; and that it is not a casting formed in a mould."
And they declare, "We do not claim as our invention and improvement, any, of the parts of the above-described machinery, independently of its arrangement and combination above set forth. What we do claim as our invention, and desire to secure, is, the combination of the following parts above described, to wit: 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, in the manner set forth, or in any other manner substantially the same."
The plaintiffs gave in evidence certain agreements between the defendants, showing the manufacture of lead pipe by the defendant Lowber, for the defendants Le Roy and Smith. And also evidence tending to prove that the said John Hanson and Charles Hanson were the original and first inventors of the improvement described in the said letters-patent; that the invention and discovery.therein described was new and useful; that the lead pipe manufactured thereby, wag superior in quality and strength, capable of resisting much greater pressure, and more free from defects, than any pipe before made ; that in all the modes of making lead pipe, previously known and in use, it could be made only in short pieces, but that by this improved mode it'could be made of any required length, and also of any required size; and that the introduction of lead pipe, made in the mode described, had superseded the use of that made by any of the modes before in use, and that it was also furnished at a less price."
"And the. plaintiffs also gave evidence tending to prove that lead, when recently become set, and while under heat and extreme pressure in a close vessel, would reunite perfectly, after a separation of its parts; and that in the process described in the said patent^ lead pipe was manufactured by being thus separated and reunited; and that the said John and Charles Hanson were the first and original discoverers thereof; and that such discovery, and its reduction to a practical result in the mQde described in said letters-patent, was useful and important."
"And the plaintiffs also gave evidence, conducing to prove that the improvement, described in the letters-patent, was the same invention and discovery which had been made by the said John and Charles Hanson, and for which letters-patent had been granted to them in England, and subsequently in this country, to the Tathams, as recited in the letters-patent."
"And the plaintiffs also gave evidence conducing to pro've that they had been .ready and willing, and had offered to sell the said invention, within ' eighteen months succeeding .the-issuing of said letters-patent to'them, and also since; and had, within the said eighteen months, sold the same for a large portion of the United States."
The defendants' counsel then read in evidence from the •" Repertory of Arts," vol. 16, page 3-14, the description of the patent to the Hansons, dated August 31, 1837. They also read in evidence the patent issued upon the application of the plaintiffs to the Patent Office, containing another specification, which was annexed to the patent surrendered. And also they read the specification of Thomas Burr's patent, of April 11, 1820. Also a patent granted to ^.George W. Potter, described in the 12th "Franklin Journal of Arts," pubhshed in 1833; they also read the specification of a patent granted in England, to Bush and Harvey, on December 5th, 1817 ; and also the specification of a patent granted in England to Joseph Bramah, October 31st, 1797.
Evidence wa§ also given, to show that the combination of machinery for making lead pipe, described in public works as having been invented by Burroughs Titus, by-George W. Potter, by Jesse Fox, by John Hague, and by Joseph Bramah, were substantially the same as that used by the plaintiffs; that the combination of machinery, patented as herein before stated, by Bush- and Harvey, for making pipes of clay, and that used for making maccaroni, were substantially the same as that described in the plaintiffs' patent.
In their charge to the jury, the court said, " They, the plaintiffs, also state, that they do not claim any of the parts of the machinery, the cylinder, core, die, or bridge, but that they claimed the combination when used to form pipes of metal, under heat and pressure, in the way they have described. There can be no doubt that if this combination is new, and produces a new and useful result, it is the proper subject of a patent." " The result is a new manufacture. And even if the mere combination of machinery in the abstract is not new, still, if used and applied in connection with the practical development of a principle, newly discovered, producing ii'new and useful result, the subject is patentable. In this view, the improvement of the plaintiffs is the application of a combination of machinery to a new end; to the development and application of a new principle, resulting in a- new and useful manufacture. That the discovery of a new principle is not patentable, but it must be embodied and brought into operation by machinery, so as to produce a new and an useful result. Upon this view of the patent, it is an important question for the jury to determine, from the evidence, whether the fact is established, on which the alleged improvement is founded, that lead in a- set, or semi-solid state, can thus be reunited or welded, after separation." To this instruction the defendants excepted.
It was also objected, that the plaintiffs' patent was invalid for want of originality; that the invention had been before described in public works, and Bramah, Hague, Titus, Fox, and Potter^ were relied on by the defendants.
To this it was replied, by the court, " That in the view taken by the court in tlic construction of the patent, it was not material whether the mere combinations of machinery referred to were similar to the combination used by the Hansons, because the originality did not consist in the novelty of the machinery, but in bringing a newly discovered principle into practical application, by which a useful article of manufacture is produced, and wrought pipe made as distinguished from cast pipe." To this charge there was also an exception.
The word principle is used by elementary writers on patent subjects, and sometijnés in adjudications of courts, with such a want of precision in its application, as to mislead. It is ad mitted, that a principle is not patentable. A principle, in the abstract, is a fundamental truth ; an original cause; a motive ; these cannot be patented, as no one can claim in either of them an exclusive right. Nor can an exclusive right exist to a new power, should one be discovered in addition to those already known. Through the agency of machinery a new steam power may be said to have been generated. But no one can appropriate this power exclusively to himself, under the patent laws. The same may be said of electricity, and of any other power in nature, which is alike open to all, and may be applied to useful purposes by the use of machinery.
In all such cases, the processes used to extract, modify, and concentrate natural agencies, constitute the invention. The elements of the power exist; the invention is not in discovering them, but in applying them to useful-objects. Whether the machinery used be novel, or consist of a new combination of parts known, the right of the inventor is secured against all who use the same mechanical power, or one that shall be substantially the same.
A patent is not good' for an effect, or the result of a certain process, as that would prohibit all other persons from making the same thing by any means -whatsoever. This, by creating monopolies, would discourage arts and manufactures, against the avowed policy of the patent laws.
A new property discovered in matter, when practically applied, in the construction of a useful article of commerce of manufacture, is patentable ; but the process through which the new property is developed and applied, must be stated, with such precision as to enable an ordinary mechanic to construct and apply the necessary process. This is required by"the patent laws of England and of'the United States, in order that when the patent shall run out, the public may know how to profit by' the invention. ' It is said, in the case of the Househill Company v. Neilson, Webster's Patent Cases, 683, "A patent will be good, though the subject of the patent consists in the-discovery of a great, general, and most comprehensive principle in science or law'of nature, if that principle is by the specification applied to any special purpose, so - as thereby to effectuate a practical result anil benefit not previously attained." In that case, Mr. Justice Clerk, in his charge to the jury, said, " the specification does not claim any thing as to the form, nature, shape, materials, numbers,.or mathematical character of the vessel or vessels in which the air is to be hea'ed, or as to the mode of heating such vessels," &c. The patent was for " the improved application off air to produce heat in fires, forges and furnaces, where bellows or other blowing apparatus arc required."
In that case, although the machinery was not claimed as a part of the invention, the jury were instructed to inquire, " whether the specification was not such as to enable workmen of ordinary skill to make machinery or apparatus capable of producing the effect set forth in said letters-patent and specification." And, that in order to ascertain whether the defendants had infringed the patent, the jury should inquire whether they, " did by themselves or others, and in contravention of the privileges conferred by the said letters-patent, use machinery or apparatus substantially the same with the machinery or apparatus described in the plaintiffs' specification, and to the effect set forth in said letters-patent and specification." So it would seem that where a patent is obtained, without a claim to the invention of the machinery, through which a valuable result is produced, a precise specification is required; and the test of infringement is, whether the defendants have used substantially the same process to produce the same result.
In the case before us, the court instructed the jury that the invention did not consist " in the novelty of the machinery, but in bringing a newly discovered principle into practical application, by which a useful article of manufacture is produced, and wrought pipe made as distinguished from cast pipe."
A patent for leaden pipes would not be good, as it would be for an effect, and would, consequently, prohibit all other persons from using the same article, however manufactured. Leaden pipes are the same, the metal being in no respect different. Any difference in form and strength must "arise from the mode of manufacturing the pipes. The new property in the metal claimed to have been discovered by the patentees, belongs to the process of manufacture, and not to the thing made.
But we must look to the claim of the invention stated in their application by the patentees. They say, " We do not claim as our invention and improvement any of the parts of the above described machinery, independently of their arrangement and combina-1 on above set forth." " What we claim as our invention, ana desire to secure by letters-patent, is, the combination of the following parts above described, to wit, the core and bridge or guide-piece, the chamber, and the die, when used to form pipes of metal, under heat and pressure, in the manner set forth, or in. any other manner substantially the same."
The patentees have founded their claim on this specification, and they can neither modify nor abandon it in whole or in part. The combination of the machinery is claimed, through which the new property of lead was developed, as a part of the process in the structure of the pipes. But the jury were instructed, "that the originality of the invention did not consist in, the novelty of the machinery, but in bringing a newly discovered principle into practical application." The patentees claimed the combination of the machinery as their invention in part, and no such claim can be sustained without establishing its novelty — not as to the parts of which it is composed, but as to the combination. The question whether the newly developed property of lead, used in the formation of pipes, might have been patented, if claimed as developed, without the invention of machinery, was not in the case.
In the case of Bean v. Smallwood, 2 Story, R. 408, Mr. Justice Story said, " He (the patentee) says that the same apparatus, stated in this last claim, has been long in use, and applied, if not to chairs, at least in other machines, to purposes of.a similar nature. If this be so, then the invention is not now, but at most is an old invention, or apparatus, or machinery applied to a new purpose. Now I take it to be clear, that a machine, or apparatus, or other mechanical contrivance, in order to give the party a claim to a patent therefor, must in itself be substantially new. If it is old and well known, and applied only to a new purpose, that does not make it patentable."
We think there was error in the above instruction, that the novelty of the combination of the machinery, specifically claimed by the patentees as their invention, was not a material fact for the jury, and that on that ground, the judgment must be reversed. The other rulings of the court excepted to, we shall not examine, as they are substantially correct.
- Mr. Justice Nelson, Mr. Justice Wayne, and Mr. Justice Grier dissented.