135 U.S. 584

This was an action at law brought to recover damages for an alleged infringement of letters patent No. 107,611, bearing date September 20,1870, and granted to James W. Haines, for an 'improvement in chutes for delivering timber.' The specification, claim, and drawings are as follows: 'Be it known that I, James W. Haines, of Genoa, in the county of Douglas and state of Nevada, have invented a new and improved chute for delivering timber from high mountains; and I do hereby declare that the following is a full, clear, and exact description thereof which will enable others skilled in the art to make and use the a me, reference being had to the accompanying drawing forming part of this specification.

"Fig. 1 represents a side view of my improved chute.

"Fig. 2 is an end view of the same.

"Similar letters of reference indicate corresponding parts.

"This in vention has for its object to furnish to the public an improved chute for facilitating the transportation of timber of all kinds from the tops or sides of mountains or other elevations, and consists in constructing a chute so as to present a V form in cross-section; the same being arranged on an incline corresponding more or less to the surface of the ground over which it passes, and brought in connection with a spring or other water supply, to receive the water therefrom,

and thus form a smooth canal throughout its entire length. Heretofore, chutes for this purpose have been constructed with flat, or nearly flat, bottoms, which, while sufficiently objectionable as requiring a greater quantity of water to insure equal rapidity in the transit of the timber, are far more so for another reason, viz.: The log or piece of timber, more especially at points where the inclination of the chute is slight, is liable to be checked in its descent by friction against the bottom and one side of the chute, and when thus situated others may pass it, thus leaving it to be again set in motion by manual assistance, or other logs striking it. The whole may become wedged together, so as to form a total obstruction to the passage of succeeding logs, destroy the chute at that point or cause other serious injury, inconvenience, and, in any event, pecuniary loss. A, in the drawing, represents a wooden trough made of two boards, a and b, which are joined at an angle of about ninety degrees. This trough is supported by trestles or frames, B, B, of suitable construction, and is built up on the side of a mountain; its upper end being connected with a brook, lake, stream, or spring, to receive a supply of running water, which may, if desired, be regulated by means of a suitable gate. The timber or wood to be transported down wardly is thrown into the trough, and carried down by the water in the same. A very rapid and convenient means of conveying wood is thus provided. Having thus described my invention, I claim as new, and desire to secure by letters patent, the chute, A, of V form in cross-section, arranged on an incline in whole or in part, and adapted to receive a flow of water, for the conveyance of timber, as set forth.'

The defendants denied each and every allegation of the complaint separately and specifically, and set up other defenses. A jury trial was had, which occupied several days, and resulted in a verdict in favor of the defendants, upon which judgment was entered. A bill of exceptions was taken, and a writ of error sued out from this court.

The plaintiff's evidence tended to show that, in the fall of 1867 and the winter and spring of 1868, he cut a large amount of wood into lengths of four feet each on the eastern slope of the Sierra Nevada, with the design of floating it out of the mountains. These logs were rolled down the sides of the canon upon which the trees had grown, and plaintiff built a square or rectangular flume, having bottom boards 2 feet wide and side boards 18 inches wide. When he turned the water into the flume, and commenced putting in his wood, he found that the wood would run faster than the water, and that the lighter sticks would run faster than the heavier ones, jamming and choking up the flume. He then spread the upper edges of the side boards of the flume as far out as he could without breaking the nails at the bottom of the boards, and found that that afforded some relief. Then he took inch boards, 12 inches wide, nailed them together at an angle of 90 deg., so as to make a V chute, and set that in the flume. He lapped each length about three inches, by placing the lower end of one length upon the upper end of the next length below. This worked much better, but there was difficulty on account of the laps when the water wasl ight. He then changed to the butted jointed flume, in which the ends of the different sections abutted against each other instead of lapping. This was in September, 1868. It is admitted that the patent was applied for August 6, 1870.

The evidence also tended to show that one A. C. Cleveland built a flume a little over a mile in length, with lapped joints, for the transportation of wood, the contract for the construction of which he made on June 22, 1868, and which was completed on the 21st of July, 1868, and used continuously until the early part of August, 1868, when Cleveland disposed of it to other parties. Cleveland described the mode and manner in which it was constructed, of two boards nailed together in V shape, and put on trestles wherever necessary; and it was conducted along the mountain a distance of 6,700 feet in length Evidence was also given on behalf of the defendants in respect to what the witnesses called a sluice at Case's tannery, at the town of Mariaville, Hancock county, in the state of Maine, in 1858, and which was still in existence at the time of the commencement of the suit. This sluice was described, in substance, as follows: 'At Case's tannery, there was a mill-dam twelve feet high, measuring from the center of the stream to the top of the dam. It was the custom to float logs down that stream, in the spring of the year, from points which lay several miles above Case's tannery to other places below the tannery. In order to pass the logs over the mill-dam, the said sluice was constructed. The sluice was about four feet across the top, and was built with two inclined sides, the planks of which were butted, and the joints broken, which in cross-section stood at an angle of forty-five degrees, and were joined together at the bottom, and thus formed a trough in the form of a right-angled triangle, with the right angle at the bottom. This sluice or flume was some three or four hundred feet long, and was four feet across the top. Its upper end was set into the mill-dam, so that the water from the dam would flow into and fill it sufficiently to convey the logs. It was built at a regular incline down the stream, and its lower end was a foot and a half or two feet above the water in the stream bolow the dam. The sluice or flume was built upon and sustained by suitable frame-work. The dam set the water back above it from a half to three-quarters of a mile. When the logs reached the lower end of the mill-pond, each one, as it floated, was steered by the use of poles to the upper end of the sluice, through which it was carried by floating upon the water which ran through the sluice. A million feet of logs, lumber measurement, could be run through the sluice in a day, and two or three million feet were usually so run through the sluice each year. The sluice or flume was built on a regular incline. The water ran swiftly through it at a depth of about three feet, varying from day to day according to the supply in the dam.' Eight different withesses testified to the existence of the said Mariaville sluice, and each one of these witnesses said that he had never seen a V chute, for carrying wood or lumber down a mountain side, such as described in the plaintiff's patent. One of them, however, testified that he saw one of these chutes used in transporting lumber down the mountain side over uneven grades, in California, in 1873.

Close, who constructed this sluice in Maine, was called as a witness, and produced a diagram which he thus described: 'My exhibit represents a cross-section of my sluice or flume, except as to stringers, A, A, which are not shown in cross-section. The flume itself, shown by the planking, P, P, is composed of plank on the inside of a frame, and set at a convenient angle of about forty-five degrees, and is supported on horses, one of which as shown in the part marked 'D, D.' The feet of the horses rest on cross-sills, one of which is shown in the parts marked 'B.' From each end of the cross-sill, B, a brace, C, extends to the upper ends of horse, D, and the whol structure rests upon stringers, A, A. The planking is pinned or nailed to the inside of the frame. The stringers extend underneath the whole length of the flume, which can be extended to any desired length. The horse frames, D, D, can be set at any desired distance apart, say from four to five feet; their only purpose being to support the planking, P. This device gives a flume of V form in cross-section. The diamond piece, V, was placed in the throat of the horses, D, D, for the purpose of saving water, and rested on the top of the planking. Piers were built over falls and gulches, and over land, as the conformation of the ground required, and by the use of trestle-work or posts. In one case that I know of, such a sluice has been built on tops of trees cut twenty feet from the ground. My flume was built on an incline to give a current or draught of water, and was used for the conveyance of logs or other lumber by means of the flow of the water. The way I happened to build this sluice was a case of necessity, as I will describe. The Messrs. Case, who owned the tannery at the place where I built the sluice at Mariaville, had a long race-way or penstock some three hundred feet in length on one side, and in the bed of the stream below the dam, for the purpose of carrying water from the dam to the flume in the tannery; and they called on me to come and help them out of their trouble. They said the log-driver wanted to cut a hole in their dam twelve feet by twelve feet, and build a gate, and if that was done they said it would ruin them, as they had thirty thousand hides in their vats, which would spoil for the reason that the log-drivers would draw all the water from their pond, and they could not run their hide nor the bark mills, as they had a limited supply of water to supply a gate of twelve feet by twelve. I made a contract with them to build a sluice to sluice by their tannery all the logs that were above their tannery, or that ever would be; and, in my contract, I was not to lower their pond one inch. I built the sluice, as I have already described, and it was a perfect success, and people came from distances to see this new and improved sluice. A part of this sluice is now in existence, which can be seen by any one who desires to see it. The length of this sluice or flume was some three hundred feet. The first logs that were put through the sluice were by me, and four men of us put through six hundred and forth logs in thirty-five minutes, and this was in April, 1858; and, as I said before, millions of feet of logs have been put through it since that time. The side boards were of plank two and a half inches thick, fourteen inches wide, and three plank on a side. There was room on the horses to have planked up two or three plank higher, if desirable, but it never was called for; it being about impossible for a log to get out over the sluice or flume.'

The defendants read in evidence, from a work called 'Babbage on Economy of Machinery and Manufactures,' which was published in London in 1841, a description of the slide at Alpnach, in Switzerland, of which the following is a copy: 'The slide of Alpnach is formed entirely of about 25,000 large pine trees, deprived of their bark, and united together, in a very ingenious manner, without the aid of iron. It occupied about 160 workmen during eighteen months, and cost nearly 100,000 francs or 4,250. It is about three leagues or 44,000 English feet long, and terminates in the lake of Lucerne. It has the form of a trough about six feet broad, and from three to six feet deep. Its bottom is formed of three trees, the middle one of which has a groove cut out in the direction of its length for receiving small rills of water, which are conducted into it from various places, for the purpose of diminishing the friction. The whole of the slide is sustained by 2,000 supports, and in many places it is attached in a very ingenious manner to the rugged precipices of granite. The direction of the slide is sometimes straight and sometimes zigzag, with an inclination of from 10° to 18°.I t is often carried along the sides of hills and the flanks of precipitous rocks, and sometimes passes over their summits. Occasionally it goes under ground, and at other times it is conducted over the deep gorges by scaffolding 120 feet in height.'

The bill of exceptions states: 'The plaintiff's counsel, during the trial, constantly claimed that the plaintiff's invention was not a mere flume in V form, nor a mere chute in V form, but he claimed that it was a combination of both; and he also claimed that the patentee was entitled to his patent because he had discovered that a chute made in V form in cross-section, and built down a mountain's side of varying grades, so that its operation partook of the nature of both a flume and a chute, would do work which no other form of flume or chute would do. He also claimed that, because the plaintiff kept on improving such combined flume and chute until he found out, by actual experiment and use, that such combined flume and chute, when made without laps so as to form a smooth canal throughout its entire length, would do several times as much work as it would when it was made in any of the methods which had been used in constructing it prior to the month of September, 1868; that the invention was not to be considered, in law or fact, as a completed invention until it was so constructed; that it formed a smooth canal throughout its entire length, as mentioned in the specifications of the patent. All the way through the trial the plaintiff's counsel claimed that a 'flume' and a 'chute' were two different things. Plaintiff's counsel frequently, during the trial, spoke of plaintiff's said alleged invention as a 'flume."

M. A. Wheaton and Wm. M. Stewart, for plaintiff in error.

Z. Montgomery, for defendant in error.

Mr. Chief Justice FULLER, after stating the facts as above, delivered the opinion of the court.

In the course of the charge the court went over the facts in relation to the Cleveland flume, stating, among other things, that it was successfully operated until the 15th of August, 1868, and performed its functions and ends satisfactorily. Plaintiff's counsel specifically objected to the statement that the flume worked successfully, and a colloquy ensued as to what constituted successful operation; and the judge told the jury that that was the way he understood the testimony as applicable to the issues, but said that he left the matter wholly to them to determine. In this, as the question arose, there was no error. Transportation Line v. Hope, 95 U. S. 297. Counsel for plaintiff objected to this part of the charge, also, upon grounds treated of under subsequent exceptions. The extract is quite long, and it is unnecessary to give it in full. It concluded as follows 'If, under all the evidence in the case, then, you believe that this flume built by Cleveland was in all its substantial elements the same as that afterwards patented by the plaintiff in this case, then your verdict must be for the defendants, because it is a conceded fact that that was a public use, or, whether conceded or not, it was a public use, and it was in use more than two years before the plaintiff applied for his patent.' This is the third exception, and may be considered with the fourth, fifth, sixth, seventh, and eighth exceptions to the following portions of the charge: '(4) You have heard a good deal in this case, gentlemen, in regard to this matter of abutted joints or lapped joints. Now, I say to you, you may dismiss that particular quality of this flume from your consideration. There is nothing in the patent covering this matter of joining sections of the flume; and a party would be liable for infringement, I apprehend, if liable at all, who should use this flume with a lapped joint, as well as if he used it with an abutted joint. As a matter of fact, the evidence in this case, I believe, without contradiction, shows this in the Mariaville flume, made at Maine, a model of which is before you. The joints there were what mechanics call 'broken.' The boards ran over from one section half way over on the other, and were abutted. That would undoubtedly give strength to the flume, and where heavy materials were run through would probably be an advantage. On the other hand, where no very great strength is required, the ordinary abutted flume, as made by the plaintiff in this case, might have an advantage, and that perhaps for cheapness, and, where other conditions obtained where it could be used, perhaps a lapped flume would cover all the requirements needed, and be cheaper than either one of the others; but as a matter of law you may dismiss the whole matter of joints from your consideration, one way or the other, because specifically, it is not covered by the patent. (5) If a wooden trough of V form in cross-section, arranged on an incline in whole or in part, and adapted to receive a flow of water for the conveyance of logs or timber or wood when thrown into said trough, and to transport the same down-wardly along said trough by means of water flowing therein, was an old device at the time of plaintiff's l leged invention, the mere fact, if such be the fact, that plaintiff first applied this old device to the transportation of logs or timber or wood down the side of a mountain, or of such a canon, or of an elevation, was no invention; and, under such a state of facts, if you find them to exist, your verdict should be for defendants. (6) The invention which is covered by the claim of paintiff's patent is a chute of V form in cross-section, arranged on an incline in whole or in part, and adapted to receive a flow of water for the conveyance of timber thrown into said trough, and carried down by the water in the same. According to this description, the character of the incline is not stated, and therefore is not material, except that it should be steep enough to give the water strength of flow sufficient to transport the timber thrown into the trough. (7) If the Cleveland chute was a chute of V form in cross-section, with its series of planks lapped at their ends, arranged on an incline in whole or in part and adapted to receive a flow of water for the conveyance of timber thrown into said chute, and carried down by means of water in the same, and was finished on the 22d day of July, 1868, and was publicly and successfully used by Cleveland for the transportation of wood or timber in the manner aforesaid between the 22d day of July, 1868, and the 5th of August, 1868, then this was a public use of plaintiff's invention in the United States for more than two years before plaintiff's application for a patent, and constituted a constructive abandonment of plaintiff's invention; and under these facts, if you find them to exist, your verdict should be for defendants. (8) If you believe that the wooden flume testified to by several of defendants' witnesses as having been constructed at Mariaville, Me., was constructed and operated at that place in the year 1858 and thereafter, and was of V form in cross-section, and was arranged from the top of a dam to a point 300 feet beyond said dam, and was adapted to receive a flow of water for the transportation of logs from the upper to the lower end of said flume, and along the whole length thereof, and was set upon an incline steep enough to give the water in said flume strength of flow sufficient to swiftly transport the logs placed in the head of said flume to the lower end thereof, and along the whole length thereof, and that this flume was successfully operated, and many thousands of logs transported through it, in the year 1858 and thereafter, previous to 1868, by means of a flow of water through said flume, then I instruct you that this was an anticipation of the invention claimed in plaintiff's patent, and that your verdict should be for the defendants.' The argument of plaintiff's counsel is that the lapped flume did not include Haines' completed invention; that it was one of Haines' experiments, which Cleveland saw and copied, but this could not affect Haines' right to go on and complete his invention by making further experiments and discoveries producing further new and useful results; that until it was a completed invention the time had not arrived at which it was his duty to apply for a patent; and, therefore, that he forfeited nothing by delay. Various instructions guarding this point were given by the court, and among them these: '(7) If an inventor applies for his patent within two years from the time that he first exhibits his completed invention in public, no amount of public use within that two years, either by the inventor or others, will work any forfeiture of his right to a patent, or constitute any evidence of abandonment.' '(16) The jury will not consider any former flume or chute to be an anticipation unless they believe such former flume or chute developed the same mode of operation as the flume described in the plaintiff's patent.' Of course, if the patent for the completed chute described nothing which could be recognized as a patentable improvement differing from the prior lapped chute, then the objection has no bs is to rest on. The evidence leaves no doubt that the lapped chute was in public use, with Haines' consent or allowance, more than two years prior to the application for the patent.