each pound of lime; that they continued to use than copper, and to secure greater strength to On cross-examination he was asked whether water was not used in their first process and whether he ever knew any process by which fats were decomposed into fat acids and a solution of glycerine without the intervention of water; to which he answered, water was used in the first process described, but in quantities only slightly in excess of that requisite for preparing the milk of lime; and he added that he did not know that the decomposition of neutral fats into fat acids and a solution of glycerine | had ever been accomplished without the inter vention of water. Counsel for the respondent also requested the witness to describe the process used by his firm which he calls the complainant's process. His answer is, in substance and effect, as follows: He places the melted fat to be treated in a large vessel with a quantity of water equal at least 399*] to *one half the bulk or weight of the fat, and subjects the melted fat and water to a steam pressure of three hundred pounds to the square inch for a period of about five hours, keeping the water and fat in intimate contact by pumping the water from the bottom to the top of the vessel and discharging it on the upper surface of the fat, in order that the water may make its way to the bottom of the same; to which he added that he preferred to use half of one per cent. of lime, for the reason, as he states, that that quantity of alkali enables him to perfect the decomposition in four hours, at a pressure of two hundred and fifty pounds to the square inch with material economy of fuel and of wear and tear of machinery; and he states that since ascertaining the advantages of the lime he has adhered to that mode of operation. Responsive to another question, he states that the apparatus was first put in operation, under the superintendence of the complainant, in September, 1863; that the vessel used was manufactured in Philadelphia; that it comprises a tube thirty eight feet in length and thirty-eight inches in the internal diameter; that it is made of iron plates of the thickness of a half inch, and a copper tube of nearly the same length, thirty-five inches in diameter, which is placed inside of the iron tube so as to leave an annular space of about one and a half inches between the copper and the iron vessel, whose estimated capacity is about ten thousand pounds of oil and water, but the quantity of fat usually put into the vessel at one time is about six thousand pounds, with about four thousand pounds of water, all of which is placed in the copper vessel, which serves to fill the vessel within three feet of the head or top; and he states that when the decomposition is perfected the water holding the glycerine in solution and the fat acids are discharged into their respective receptacles. Two vessels are used instead of one, as directed in the specification, because iron is cheaper Satisfactory products, as the witness states, may be obtained by the process without lime, though he adheres to the statement that he prefers to use it in order to diminish the pressure which would otherwise be required, and for the economy which it effects in fuel, labor and time, but he states, without any qualification. that no one in their manufactory ever mixed any fatty or oily substance with water, in the proportions given in the complainant's specification, and placed the mixture in any vessel in which it could be heated to the melting point of lead until the operation was completed and thereby obtain free fat acids and solution of glycerine. Even without any discussion it is obvious that the means and mode of operation practiced by the witness are widely different from the method or process described in the specification of the complainant's patent. Instead of working in a vessel entirely full of the fat and water and under a pressure sufficient to prevent the presence of steam, the operation under the process of the witness is performed in a vessel only partly filled, which is open at the upper end and inclosed in another vessel, and the heat is applied by the introduction of steam from boilers outside. Other differences also exist, as, for example instead of being worked at a temperature of 510° or 612° Fah., and in a vessel capable of sustaining an internal pressure of two thousand pounds to the square inch, the process of the witness is worked at a temperature represented by a pressure of only three hundred pounds to the square inch, which is a latitude of deviation not warranted by any language to be found in the complainant's specification. Two other differences may also be mentioned, which are equally persuasive, to show that the method or process practiced by the witness is substantially different from that embodied in the patent of the complainant. Instead of the fat and the water being maintained during the entire operation in a state of intimate mechanical mixture, as required in the specifi- [*401 cation, a pump is provided, not to force the mixture into the heating vessel, but to be kept constantly at work to draw the water from the bottom of the vessel and to discharge it on top of the charge of fat, in order that it may percolate down through the fat and supply the deficiency occasioned by the fact that the water is constantly being converted into steam. Ten minutes is the maximum time allowed for the operation in the complainant's specification, but the method or process employed by the witness, instead of effecting the decomposition in ten minutes, requires at least four or five hours, even when he uses a small proportion of lime to assist the chemical action of the heated water. Besides the differences between the two methods already pointed out, there are others which may be suggested, equally striking and of a character equally persuasive, to show that the two methods are substantially different, as, for example, the apparatus employed by the wit'ness consists of two vertical cylinders, one with in another, instead of a coil of tubing, with an annular space between the two, as before explained, of an inch and a half. Fat and water in nearly equal proportions are charged into the inner cylinder, leaving a vacant space at the top of the same of about three feet. Like the coil of tube the outer cylinder is steam tight, but the inner one is open at the top. Steam for the operation is generated in two separate boilers, which is introduced through the top of the outer cylinder to the space between the two and through the upper end of the inner one, which is open, to facilitate the circulation of the steam, in order that the fat and water in the inner cylinder may be heated to the temperature represented by a pressure of two hundred and fifty to three hundred pounds to the square inch; and the witness testified that he regarded the use of the pump and the use of some lime as essential to the use of the apparatus with the greatest economy. Licensees of the complainant were also ex402*] amined by the *respondent, to wit: Nathanial Ropes and Nathaniel Ropes, Jr. These witnesses have had great experience in manufacturing candles, and they testify that they know of no place in this country where candles or soap are manufactured from free fat acids produced by water alone at high temperature and pressure without the use of alkali. They both described the old saponifying process as consisting in the treatment of fat by water heated in an open vessel, lime being mixed with the water, by which the glycerine was separated from the other constituents of the fat, leaving what some manufacturers call lime soap, or fat acids and lime, which latter ingredient was afterwards removed by sulphuric acid the residuum being free fat acids. Changes were made in their mode of operation early in the year 1860, which alterations were introduced to them by the brother of the complainant, who experimented in their manufactory several months before he put the apparatus adopted in operation. By that plan they use water in equal proportions with the fat, with a half per cent. of lime and double that quantity of sulphuric acid, the whole being | heated to a temperature representing a pressure of about one hundred and fifty pounds to the square inch in a closed vessel for twelve hours. Formerly they conducted the operation in open tubs, using thirteen per cent. of lime with double that quantity of sulphuric acid, but since the new method was introduced by the agent of the complainant, they have substituted closed copper tanks in the place of the open tubs, using, however, the same agents to effect the decomposition of the fatty substances, though in different proportions. Copper tanks are used as receptacles for the fat and the water, but the steam to communicate the heat is generated in a large iron boiler thirty feet in length and forty inches in diameter, with which the copper tank is connected by means of steam pipes furnished with stopcocks as regulators in the use of the steam. 403*] There is also a shaft in the tank, having radial arms, which shaft is kept in rotation to cause and preserve an intimate mechanical mixture of the fat and the water during the whole operation. Instead of having the tank constantly filled with the fat and water, the fact is that it is never filled, nor is the mixture kept under a pressure sufficient to prevent the accumulation of steam and air, as directed in the specification of the patent described in the bill of complaint. Empty space is left in the tank above the fat and water at the outset sufficient to allow boiling, which space, of course, would be filled with steam and air. Heat is communicated to the mixture by introducing steam from the large iron boiler into the copper tank, creating a temperature and causing a pressure of one hundred and fifty pounds to the square inch. Several months were employed in making the experiments before the method now in use was finally put in practice by the complainant's agent. He tried it without lime at a pressure of two hundred pounds, allowing twenty-four hours for the operation, but the result was not satisfactory. Dismissing that method he next tried the experiment with fat and water in the proportion of two to one, allowing twenty hours; still the result was unsatisfactory. Next he tried the compound of fat and water in equal proportions, using only half of the water during the first part of the operation, then discharging that and putting into the charge the other half of the water, and he found that the operation produced a good result in twelve hours. Some of the experiments were without lime, but the witnesses state that, inasmuch as they found that by the addition of lime they could accomplish the work at a pressure of one hundred and fifty pounds to the square inch and in less time, they have ever since continued the use of lime in their business. Much discussion of the process introduced on that occasion is unnecessary, as it appears that instead of working at a heat equal to the melting point of lead, in a vessel capable of sustaining an internal pressure of two thousand pounds, these licensees of the complainant use a certain per cent of lime at a pressure not much above one hundred and fifty *pounds; [*404 and it appears that they decompose the fat in a vessel not filled with the mixture, nor provided with a mechanical stirrer, and leave a vacant space in the vessel sufficient for circulation, in which steam is not only generated but is introduced from a separate boiler. ences such as these require no comment except to say that the method is entirely different from that described in the patent in question, and to add that it corresponds much more nearly to the method described in a patent dated May 15, 1860, subsequently obtained by the complainant, and which was introduced in evidence by the respondent. Differ Reasons exist besides those disclosed in the testimony of those witnesses, to support the conclusion that the complainant never supposed that his patent conferred the exclusive right to use temperatures and pressure to decompose fats with water alone much below the gauges given in his specification, and that he had come to doubt, several years before those experiments were made, whether the patented method or process could be accomplished so as to be practically useful by the means and in the mode of operation pointed out in the patent. His letter, dated London, June 25, 1856, addressed to a certain firm in Cincinnati, affords strong support to that conclusion, in which he states that our experiments in the factories here and in Paris have shown that on the large scale the decomposition of fats by water is more conveniently effected by modifying the apparatus originally proposed so that the fat and water are exposed to a comparatively lower heat and pressure for a longer time, instead of a very high pressure for a few minutes; by which means he suggests in the same letter that a considerable quantity of material may be treated at one charge in an ordinary steam-boiler lined with lead or copper, and may be provided with an agitator in the place of using the continuously working pump and coil of pipe, and the 405*] suggestion is that, *at a pressure of two hundred and twenty-five pounds to the square inch, tallow, palm-oil or lard stearine may be completely decomposed in five hours. Nearly two years before the date of that letter, to wit: on the 25th of March, 1854, the complainant took out a patent in England for the same invention as that described in the patent in issue in this case, and the proofs show that he made various efforts to introduce it into practice in that country. He remained there, it seems, from 1854 to 1859, and it appears that in June, 1854, he exhibited his process in the old form to George F. Wilson, the managing director of the Price Patent Candle Company, and the company entered into a contract with the complainant respecting the same, by which he assigned the said letters patent and the privileges thereby granted to the said company, and that the said company, in consideration of the assignment, covenanted to pay him an annuity of £1,000 from the month of October of the following year during the continuance of the patent, subject to various conditions, and among others to be terminated by giving notice to the complainant as therein provided; the company were also to have the use of several other patents therein described, which have since expired. Proofs were also exhibited showing that the said company have ever since paid the stipulated annuity, but there is no satisfactory evidence in the case to show that they have ever applied the process to produce fat acids and solution of glycerine by the means and in the mode of operation described in the specification, as construed and defined by this court. Some use, it may be presumed, has been made of the patent by the assignees, but what that use is does not very satisfactorily appear. It does appear, however, from a paper read before the British Association, in September, 1855, by the general director of the company, to whom the complainant testifies that he exhibited his process the year previous; that he stated that in our new process the only chemical agents employed for decomposing the neutral fat and for separating its glycerine are steam and heat, and that 406*] *the only agents used in purifying the glycerine thus obtained are heat and steam. Strong confirmation of that is also derived from a paper read by the same person at a session of the Society of Arts, held in that country, January 25, 1856, also put in evidence by the complainant, in which the author says, in speaking of the patented process, "It has yet to be proved how far it can compete successfully with distillation," adding that they have made an arrangement with the inventor which, as he expresses himself, will give them the means of testing its commercial merits, and then he pro ceeds to state that on witnessing a trial of the process in the small tube apparatus, it struck him that steam passed into the fat at a high temperature should effect by a gentle process what the patentee aimed at effecting by violent process, to wit: the resolving of the neutral fat into glycerine and fat acids; finally stating that they had proved that the fact was so, and that the glycerine distilled over with the fat acids, though it was no longer combined with those products, evidently showing that the process employed by them was at that time widely different from that claimed by the complainant. Application for a patent was also made by the complainant to the proper authorities of France during the same year, and it appears that the application was successful, as he immediately commenced negotiations through his patent agent with the firm of Monier & Co., doing business near Paris in that Empire, for the sale of the patent, which negotiations resulted in a contract of sale. Pursuant to that contract he transferred the patent to that firm subject to the condition that the process would effect the results promised by the grantor. Numerous experiments were subsequently made under the superintendence of the patentee or his brother, for a period of six months, all of which produced results hich the evidence shows were entirely useless. They were made in the first place, as the senior partner of the firm states, by means of a small appa- [*407 ratus brought from London by the patentee, which consisted of a hollow iron tube of serpentine form, incased in a cast iron block from which the two ends of the tube projected-one for receiving the fatty substance used in the experiments for decomposing the same, and the other for discharging the product. High heat was required for the purpose, and with that view the apparatus was so placed in a furnace constructed of fire proof bricks that it received all the heat, the flames of which completely enveloped it, and which brought it to an excessive heat, but the witness cannot give the degree of heat, as the apparatus did not contain any gauge to indicate its intensity. Fatty matter and water were put in a vessel prepared for the purpose, which was provided with a bronze suction and force-pump worked by hand, and connected with one end of the iron coil projecting from the cast iron block, by which the mixture of fatty matter and water was drawn from the receptacle and was forced into and through the iron coil of tube, as the same was incased in the iron block, and out at the opposite end of the same, where it was discharged into another receptacle prepared for the purpose. By means of the furnace the iron tube and the block in which the coil was incased were "heated to an excessive degree, estimated by the witness to exceed 500° Fah., with an estimated pressure of more than twenty atmospheres. Both the patentee and his brother worked at the experiments ten or fifteen days, but the decomposition of the fatty matter, as the witness states, was never complete, and that they never produced fat acids and glycerine, the product being only an altered fatty matter, which, when washed, showed acroleine to such an extent as to fatigue the workmen who assisted at the experiments. Fifteen of the experiments were made by the patentee | close vessels with water, and from that persons None of his efforts, however, succeeded, though the experiments were continued until the expenditure exceeded forty thousand francs, and it appearing that fat acids and glycerine could not be produced by the process, the contraet was annulled, and the witness affirms that it is impossible to decompose fatty matter and obtain fat acids and glycerine by the method in dicated in the complainant's patent. He ad mits, however, that his firm were subsequently induced, on the return of the patentee to that country, to join with another firm engaged in manufacturing candles, to make a new contract with the same party upon the same basis as the irst contract, it being represented that the patentee would introduce a new process, based upon the principles of the patented method, which promised certain success and admirable results. Such a contract was accordingly made, and new experiments were prosecuted for a period of two or three months, but, like the first efforts in that direction, the experiments failed to produce either fat acids or glycerine. How much these last experiments cost, the witness does not state, but he does state that the experiments were productive of no good, as they produced neither fat acids nor glycerine. Remarks respecting the Belgium patent are unnecessary, as no proof was offered to show that the process was ever introduced into practice in that country. Having failed to accomplish such results in those countries as would show that his process would be practically useful if applied by the means and in the mode of operation described in the specification, and probably having become convinced that the decomposition of fats by water could be more conveniently effected by modifying the described apparatus so that the fat and water would be exposed to a lower 409*] *heat and pressure for a longer time, as expressed in his letter of the 25th of June, 1856, the patentee left England in August or September, 1859, and returned to the United States. Conclusive proof that the patentee did not accomplish results in France, which would show that the patented process, applied by the means and in the mode of operation set forth in the specification, is exhibited in the record of the other case between the same parties, which was heard at the same time. Reference is made to the report of the jury upon organic chemistry made the 3d of December, 1855, to the international exhibition held in Paris, which is made an exhibit in that case. Chemists, say the jury, liken neutral fats to compound ether, which was the hypothesis put forth by Chevreul in his investigations of such matters. Ether, it was known, may be decomposed by being heated to a high temperature in were led quite naturally to attempt to effect in "We are sorry to say that the fatty matter on Made public, as the report was, more than two years before the patentee returned to the United States, it may be presumed that it came to his knowledge before his return. On the 15th of May, 1860, the new patent referred to was granted to him in this country, which affords the most conclusive proof that the alleged invention is one of a very different character from that described in the specification of the patent in issue in this case, and yet he states under oath that he verily believes that he is the original and first inventor of the improvement, and that to the best of his knowledge and belief it had not been known or used before his application for the patent, which is utterly repugnant to the pretense that anything which is embodied in that patent was included in the one granted to him more than five years before the latter application was filed. Experience seems to have greatly modified the views of the patentee, as he now characterizes the improvement as a new and improved method of decomposing fatty and oily substances, and alleges that it is applicable either when water alone is used, or when, in addition to water, a portion of alkali is used to aid the chemical action; and he also alleges, that to extract the whole of the glycerine from the fat with a moderate quantity of water, when the lower range of pressure is used, requires considerable time; and he actually states that his invention consists in applying the water to the fat in several successive portions. High temperature and pressure are represented as the agents of decomposition, but in the view of the complainant as expressed in that specification the high temperature required may be only that which is represented by a pressure of one hundred and twenty to one hundred and fifty pounds to the *square [*411 inch. Gauges to indicate the required temperature are dropped, and all idea of rapid manipulation seems to be discarded as the terms "a 141 ▪| considerable time" or "from two to three hours" are substituted in the place of "ten minutes." Vessels of very great strength are no longer required, as the patentee states that his invention may be applied to any of the different forms of boilers or tanks used for the decomposition of fats by water at a high temperature or pressure, meaning, doubtless, that the terms high temperature and pressure shall be understood in the same sense in which he employs them in a subsequent part of the same paragraph. Water may be supplied when wanted and, of course, it is of no moment even if some of it is converted into steam; nor does the specification contain any requirement that the heating apparatus shall be kept entirely full of the mixture, or that neither steam nor air shall accumulate therein during the time required for decomposition, or, in other words, the old specification is divested of every one of its extreme conditions, and the inventor, under his new patent, is left free to claim every means and every mode of operation which the ingenuity of man ever did or ever can invent or discover. Further remarks respecting it, however, may be omitted, as it is not the subject of litigation in this case. see what future experiments may do in the way of overcoming the existing doubts and difficulties, the court is not inclined to rest their decision entirely upon that ground. 3. Passing from that, the next question is, whether the proofs show that the respondent practiced and used the patented process of the complainant, when properly construed and defined, as charged in the bill of complaint. Such an inquiry cannot be intelligently considered without first ascertaining what the respondent's process is, as it is obvious that the two processes must be compared, in order to determine whether they are substantially the same in principle and mode of operation, or substantially different, which is the criterion by which to determine every such issue as the one under consideration. Factories have been erected by the respondent for manufacturing *candles, and he [*413 is largely engaged in that business, but he denies that he uses the alleged improvement of the complainant, or any method of decomposing neutral fats embracing the means and mode of operation described in the specification of the complainant's patent. He admits that in his process of manufacture he uses water at high temperature, and steam, and that he also uses such pressure as arises from the expansive force of hot water or steam in a close vessel; that he is engaged in manufacturing candles under and in pursuance of letters patent granted by the United States of the 25th of January, 1859, to Wright and Fouché, as subsequently amended, but he denies that he employs either the method, process or apparatus described in the complain Chemical and mechanical experts were examined as witnesses on both sides in about equal numbers. Those called by the complainant express the opinion that the patented process may be applied by the means and in the mode of operation described in the specification so as to accomplish useful results, and of a character to give commercial value to the new product. On the other hand, those examined by the respondant's specification. ent express opinions widely different and most or all of them are of the opinion not only that the means and mode of operation described in the patent cannot be so applied that the invention will be practically useful, but several of them state that the attempt to apply it without the exercise of extraordinary precautions must be attended with danger to the operator. 412*] *Most of the expert witnesses made experiments in applying the process, and in the course of their examination were required to state the results of the same as supporting their opinions, but experiments made, as most of these were, with small apparatuses admitting only a small charge of the fatty substance or mixture to be treated are not entitled to much weight in determining such an issue, however satisfactory the analysis may have been to the chemist who conducted it, as the issue necessarily involves very difficult questions of mechanics as well as of chemistry. Taken as a whole, the evidence convinces the court that the patentee never did succeed in introducing his invention into practical use by the means and in the mode of operation described in the specification, to such an extent as would warrant the court in finding that issue in his favor. Doubts of a very serious character are also entertained by the court whether the patented process, unless divested of its extreme and unparalleled conditions, can ever be reduced to practice by the means and in the mode of operation described in the specification, so as to be practically useful or safe to the operator; but the proofs are very conflicting upon the point and, inasmuch as it is impossible to fore Appropriate means are at hand to enable the court to make the comparison, as the patent under which the respondent works was given in evidence at the hearing. On the face of the patent it purports to be a new and useful improvement in process for decomposing fats, and it appears that the inventors obtained a patent for the improvement in France two years before the complainant left England to return to the United States, and more than three years before the complainant obtained his new patent in this country, in which he left out all of the extreme and unexampled conditions of the old patent, and in which he stated under oath that he verily believed he was the original and first inventor of the improvement, and that it had never been known or used before his then application was filed. Wright and Fouché describe their invention in their specification as a new apparatus destined to produce chemical decomposition by means of superheated steam and water, and that it is chiefly intended for the decomposition of fatty substances into fat acids and glycerine, and they particularly describe the means to be employed and the mode of operation when the patented method is applied to that purpose. Drawings are annexed to the specification, which contain figures of the apparatus [*414 to be employed in applying the patented process in the decomposition of fatty substances to obtain fat acids and glycerine. Two vessels constructed of iron or copper are required for the purpose one is called the boiler in the specification, which it is said may be of any form, and the other is called the cylinder, and is placed on a base and elevated |