Lapas attēli

With regard to this portion of the opinfon, counsel for defendant observes:

rateness of detail, and appears to have of the court in permitting a disclaimer of created an impression of its soundness upon certain clauses in the specification, printed the circuit court of appeals, but the circuit above in italics, which was made after the court did not seem to look upon it as the argument and upon the petition of the turning point of the case, nor do we regard plaintiff, "that at the hearing of this cause it as at all decisive. It seems to assume it was taken by surprise by the argument that the second claim can only be met by of the defendant that the portions of the evidence of absolute uniformity of prod specification now disclaimed enlarged the uct, whereas all that is claimed is a uni- scope of the invention of the said letters formity in the constituent parts of molten patent beyond what your petitioner believes metal preparatory to further treatment; to be the import of the claims thereof." in other words. to make it fit for further Upon the hearing defendant seems to have treatment in the converters, without the insisted that certain portions of the specinecessity of remelting in the cupolar fur-fications were broader than the second naces. Or, as stated by the district judge: claim. Those parts of the specification there"It is therefore plain that with a mixer fore were disclaimed. As we had occasion thus operated it is possible to have wide to observe in Sessions v. Romadka, 145 U. variations in the composition of the blast- S. 29, 36 L. ed. 609, 12 Sup. Ct. Rep. 799, furnace metal charges added, and at the "the power to disclaim is a beneficial one same time the successive withdrawals for and ought not to be denied except where the Bessemer converter show quite small it is resorted to for a fraudulent and deand gradual changes of composition. The ceptive purpose." In that case the plaintiff heat of the detained mass is affected by the was permitted to enter a disclaimer of all incoming charges just from the blast fur- the claims but the one in suit, the patentee nace, but the heat of such addition, whether having included in the patent more devices relatively high or low, must mingle with, than properly could be the subject of a sin be modified by, and average with the heat gle patent. In the case under consideration of the larger and dominating mass." the disclaimer was not of a claim but of certain statements in the specification, which if retained might be construed to have the effect of illegally broadening the second claim. The first statement disclaimed was that the invention might be[436] practised by merely receiving a number of small portions of metal taken from different ladles, the mixing being performed merely by the act of pouring into the charg ing ladle. The use of the word "merely" ignored the steps embodied in the second claim, where the mixing is not performed by merely pouring together the several charges into a ladle, but by maintaining a permanent quantity of metal in the reservoir, to which charges were alternately added and from which they were withdrawn. The other clauses were intended to disclaim the casting of the metal into pigs. We think there is no foree in the criticism that a disclaimer may not extend to a part 35] *We have not, however, been able to per- of the specification, as well as to a distinct suade ourselves that the two processes are claim. Hurlbut v. Schillinger, 130 U. S. so alternative and inconsistent with each 456, 32 L. ed. 1011, 9 Sup. Ct. Rep. 584; other as to render them mutually destruc- Schillinger v. Gunther, 17 Blatchf. 66, Fed. tive, or to justify counsel in charging the Cas. No. 12,458; Schwartzwalder v. New district judge with an abdication of his York Filter Co. 13 C. C. A. 380, 26. U. S. judicial duty of deciding the case according App. 547, 66 Fed. 152. Had the purpose of to what he believed to be the law and the the disclaimer been to reform or alter the facts. We dismiss the subject with the sim- description of the invention, or convert the ple observation that much more seems to claim from one thing into something else, have been made of it than it deserves, and it might have been objectionable, as patents that a reference to the second claim shows can only be amended for mistakes of this its object was to secure uniformity of the kind by a reissue. But the disclaimer in molten metal in its constituent parts pre- this case appears to have been made to obparatory to its further treatment, by which viate an ambiguity in the specification, and further treatment we are to understand the with no idea of obtaining the benefit of a Bessemerizing process of converting metal reissue. If the clauses had the effect of into steel, and that any step in that direc-broadening the patent the disclaimer retion would necessarily lead to an avoidance moves the objection. If they did not, the of abrupt variations in silicon and sulphur, disclaimer could do no harm, and cannot be while such avoidance of abrupt variations made the subject of criticism. would in their turn only tend toward a greater uniformity of product.

"The judge of circuit court, having lost sight of the statutory requirements as to a full, clear, and concise statement of the invention, and having persuaded himself that it was his judicial duty to find a way if possible to protect the Carnegie Company in his monopoly of what Mr. Gayley and his colleagues claim ought to have been the invention described in the patent, adopted the ingenious view that the patent was to be construed as though it disclosed and covered two inventions, one having for its object to obtain a product substantially uniform in its contained silicon and sulphur, and the other having for its object the improvement in the operation of Bessemerizing iron which is incident to an avoidance in the successive charges of abrupt variations in contained silicon."

Some criticism was made upon the action 185 U. S. U. S., Book 46.


It is insisted, too, that there is no mention in the second claim of a dominant pool, and that the words "removing portions


only of the composite molten contents of the receptacle without entirely draining or emptying the same, and successively replenishing the receptacle with fresh ununiform additions," are satisfied by leaving a quantity of iron, however small, in the res-only describes with sufficient clearness the ervoir, and that it really includes nothing that was not well known before. It is true that neither the size of the reservoir nor the amount of metal to be left therein, after each discharge is made into the converter, is specified; but it is stated in the specification that this reservoir may be of any convenient size, "holding, say, 100 tons of metal (more or less)," with the bottom of the discharge spout some distance above [437] the bottom of the vessel, "say, 2 feet in a hundred-ton tank, and more or less, according to the capacity of the vessel, the purpose of which is that when the metal is poured out of the spout a considerable quantity may always be left remaining and unpoured, and that whenever the vessel is replenished there may already be contained in it a body of molten metal with which the fresh addition may mix." Though the size of the reservoir and the considerable quantity left therein as a dominant pool might have been described more definitely (but perhaps at the risk of an infringement being avoided by one using a receiver of a different size containing a different quantity), we think it is impossible to read this patent without gathering from it the dominant idea of Jones not to describe a reser voir for storage, with or without incidental mixing, but to provide a receptacle the main, if not the sole, object of which is to preserve therein a large and constant quantity of molten iron as a basis for a gradual unification of the product of several blast furnaces, or of several casts from the same furnace, and herein distinguishing it from all prior inventions. The specification of the patent is not addressed to lawyers, or even to the public generally, but to the manufacturers of steel; and any description which is sufficient to apprise them in the language of the art of the definite feature of the invention, and to serve as a warning to others of what the patent claims as a monopoly, is sufficiently definite to sustain the patent. He may assume that what was already known in the art of manufacturing steel was known to them, and, as observed

what he has made that is new, and what it
replaces of the old. That which is common
and well known is as if it were written out
in the patent and delineated in the draw.
ings." We think this second claim not
purpose of the patent to secure uniformity
of the molten metal in its constituent parts
preparatory to further treatment, but,
read with the specification, sufficiently de-
scribes the process by which this uniform-
ity may be secured by always preserving in
the reservoir a sufficient quantity of molten
metal to secure such uniformity of product.[438]
It is undoubtedly true that the storage fea-
ture appeared more prominently in the
specification which was first rejected upon
the ground that it was not sufficiently dif-
ferentiated from prior patents than in that
which was finally accepted, but there is
nothing to indicate that Jones did not un-
derstand from the first that the distin-
guishing feature of his invention was the
preservation of a considerable quantity of
iron in the reservoir.

[ocr errors][subsumed][merged small][subsumed][subsumed][ocr errors][subsumed]

3. The question of infringement only remains to be considered, and, in the view we have taken of the prior devices, presents no serious difficulty. The court of appeals was of opinion that "the defendant's reservoir, or accumulating ladle, complained of, is the sanie in principle as one which has been in use at the Cambria works ever since Bessemer steel was first manufactured there, with only this difference, that at first it was used at cupola, now at furnace." If would not be open to the charge of infringesuch were the fact, of course defendant inent. Undoubtedly it has the right to make use of all prior devices, and particularly such as had been used at its own manufactory. In order to understand the device made use of by the defendant prior to the Jones invention, we reproduce herewith two small but easily understood cuts, taken from its brief, showing the character of the ladle known as the Bessemer intermediate ladle, used by it and generally by all American mills manufacturing steel by the Bessemer process.

It appears elsewhere in the testimony that the intermediate reservoir or ladle was from fifteen to eighteen tons' capacity, and the converter from six to eight tons; that

[blocks in formation]


6 to 7 Tona,

Reservoir. 15 to 18 Tona

Reservoir 11 Tons
Remainder. 4 to 5 Tong

by Mr. Justice Bradley in Webster Loom | the molten metal was tapped from the cu-[439] Co. v. Higgins, 105 U. S. 580, 586, 26 L. ed. polas into the reservoir, and withdrawn for 1177, 1179, "he may begin at the point the converter, and as the intermediate ladle where his invention begins, and describe held considerably more than the amount of

side of the mixer, which was not allowed to run below the floor, as a guide to the men who rotated or tilted the mixer, since, if the mark went below the floor and out of sight, they could not tell how much iron was left in the mixer. Under these instructions not to allow the chalk mark to go below the floor there was retained in the mixer about 175 tons of molten metal, amply sufficient for the purposes stated in the Jones patent. Its principle of construction was similar to that of the Jones mixer, and its operation

metal necessary to charge a converter, there was some incidental mixing; but the main, and perhaps the only, purpose of the reservoir was for storage, and that if any quantity of metal were left in the reservoir it was by accident rather than by design. It will be noticed, too, that the reservoir was open at the top. It does not appear to have been made use of in carrying out what is known as the direct process, the difference being that the cupola practice furnished a metal for the Bessemer converter that was uniform in composition, or prac-identical. Indeed, defendant's engineer tically so, while the direct metal was largely variable in composition.

The testimony further shows that, after the installation of the Jones mixer at the Edgar Thomson works, Mr. Morgan, the defendant's mechanical engineer, visited and inspected these works, and obtained information as to their practical operation, and was advised by the superintendent as to the location and proper size of the mixer and its contiguity to the converters. Mr. Morgan does not deny this conversation, although he qualifies it by saying that he thought the Jones apparatus had grave defects. Shortly after this visit, and in the latter part of 1895, defendant installed an apparatus of its own for the operation of the direct process, which is herewith produced upon a small scale and in comparison with the Jones process. It consisted of a covered refractory lined and turtle-shaped

himself says: "With the exception of ad-
ditions of cupola metal, I do not know that
there is any material difference between our
practice and that described in the second
claim" of the Jones patent. We agree, in
the opinion of the circuit court, that "it is
quite clear, in view of these facts, that in-
fringement takes place. That initial mix-
ing rather than storage is the purpose of
the reservoir is shown by the fact that the
cupola metal is not stored, but served direct
in ladles to the converter plant. And that
the homogeneous mixture, once obtained, is
used as a dominant pool to produce a grad-
uated, nonabrupt product, is shown by the
chalk line minimum limit of 175 tons.
With such a permanent dominant pool in
constant use, we are clear that respondent's
practice infringes the second claim of the
Jones patent in both letter and spirit."
If the contents of the mixer used by de-

[blocks in formation]

vessel of about 300 tons' capacity, arranged to tilt, and having a spout at either side for receiving and pouring out the metal. The metal was brought to the mixer and poured [440]in at one end, and, through a spout on the other side, was poured into a ladle, which supplied the Bessemer converters. The metal was supplied both from blast furnaces and cupolas, the former furnishing about two thirds, the latter about one third, of the metal used; but the metal from the cupola system was delivered by a ladle to the converter direct and not through the reservoir. The metal from the blast furnace entered the reservoir in about fifteen-ton ladle lots, and was withdrawn in approximately twelve-ton lots. The chief engineer of the company states that, "in accordance with the natural way of using the reservoir, it is ordinarily kept well filled up." That in the practical operation of the mixer or reservoir a large quantity of iron was retained for mixing purposes is evident from the fact that a chalk mark was made on the

fendant were allowed *habitually to become [441]
empty in carrying out its process, there
would be no infringement; but all the evi-
dence contradicts this. In the Jones prac-
tice this cannot be done, since the mixer
cannot be tilted beyond a certain point. In
the defendant's mixer it can be done, but is
not, since the operator is not allowed to tilt
it beyond a certain point gauged by a chalk
mark. This seems to be the only founda-
tion for the charge so frequently reiter-
ated, and in varying language, that the
methods in use before the Jones process de-
prived that process of all novelty, and if
novelty existed it was by reason of the vary.
ing modes of executing such methods; the
inference from this being that, as the Jones
method was old, it could only be treated as
new because of the conduct of individuals
in applying the method and their inten-
tions, and that this reduces itself to the
proposition that the Jones patent rests up-
on the mere intention or minds of persons.
If we understand this argument correctly,

it is that the prior method contemplated we think the court of appeals made its most storing only, and the mixing was but an in- serious error. The defendant had an uncident, while the Jones patent contemplates questioned right to manufacture steel as it mixing as its main object and storage only had been accustomed to do; but instead of as an incident. that it abandons the Bessemer uncovered ladle of twelve to eighteen tons, and adopts a covered refractory lined reservoir of 300 tons' capacity, and makes use of it, not as before, for the storage of cupola metal, but for the mixing of blast-furnace metal aecording to the direct process. This, too, was done immediately after Mr. Morgan's visit to plaintiff's works.

This proposition that the application of this patent depends upon the individual intent of the operator overlooks the essential nature of a process patent. The directions and specifications of such a patent are addressed to those engaged and skilled in the art. It professes to disclose a method of procedure, not the particular instrumentality that may be employed. It may be, as suggested, that one person may, and in ignorance of the patented method, make use of a reservoir merely as such, and without any desire to avail himself of the patented process; but such a fact would not deprive the discoverer of the process of the protection of his patent. Such a supposed case might present a question of fact for a court or jury, and if it were made to appear that the party charged with infringement had, as in this case, changed the instrumentalities used by him after a new method had been disclosed, and particularly if he had for the first time used a special device necessary to that process, a jury might well refuse to believe and find that the defendant was only following the old methods of procedure, and not seeking to avail himself of the plaintiff's invention.

[442] *But we think the difference in the two processes may be illustrated by a very simple example: Let us imagine a reservoir containing, say, three quarts, and filled with one quart each of three liquids of different constituent parts, and withdrawn for further treatment at the rate of one or two quarts at a time. Necessarily there would be some incidental mixing, but it would occur at once that the main object of the reservoir was a retention of a sufficient quantity of the mixture to supply the receptacle for further treatment, and if no necessity existed for a longer retention of the liquid in the reservoir, it could be very quickly emptied by two discharges into the receiving vessel. Now, let us substitute for this reservoir a cask of, say, sixty quarts, into which the liquids of different constituent parts are poured in at one end from a multitude of receptacles, and discharged at the other end after remaining a certain time in the cask, and that this cask could not be tilted so far but what a quantity of liquid would be left within it amounting, say, to half its capacity. Now, if there be no distinction between these two operations there would be little left to the Jones process, the very vitality of which consists in the size of the cask relative to the ladles and the mixing of the various liquids poured into it before they are withdrawn.

If, as insisted by the defendant and found by the court of appeals, the reservoir now used is the same in principle as the one which had been in use at the Cambria Iron Works ever since the Bessemer steel was first manufactured there, and the same were adequate for the purposes of the direct process, why was any change made? Therein

It is true that with the growth of the production of furnaces *from fifty tons a day [443] in 1872 to four or five hundred tons in 1895 all apparatus would naturally be increased in size; but why was the open reservoir theretofore used for cupola metal provided with a cover and enlarged in its capacity from fifteen to three hundred tons -twentyfold-while the converter was little more than doubled in size? Why was it so operated that 175 tons were left in the mixer as a dominant pool, if no infringement were contemplated? In the face of these facts the question so earnestly pressed by the defendant, whether the "method of mixing molten metal," covered by the second claim, was one for securing a substantial homogeneous composition of metal, to the end of getting a practically uniform product, or was one simply for the purpose of preventing sudden variations in the compositions of successive small portions drawn from the reservoir, without attaining substantial uniformity, loses most of its significance. We do not know how the process can be better described than in the specification itself: "To provide means for rendering the product of steel works uniform in chemical composition." The variations in such composition are said to be "particularly in silicon and sulphur," and the process to be one of mixing, whereby the particles of metal "are diffused or commingled thoroughly among each other, and the entire charge is practically homogeneous in composition, representing in each part "an average of a variety of uniform constituent parts, all the charges of the converter from time to time will be substantially uniform." This, denuded of all hypercriticism, is the object of the Jones invention, which seems to be the only one yet devised for carrying on what is known as the direct process. If it be true that this process cannot be carried on without infringing the Jones patent, he is certainly entitled to a monopoly of the invention. If it can be, then every method theretofore known for carrying on such process was open to the defendant. But we think the change from the Bessemer intermediate ladle to the Jones mixer was a radical one, and was made for a purpose. That purpose was clearly the adop tion of the Jones process.

It is true that before the facts were fully ascertained a stipulation was signed to the effect that the "amount of molten *metal in[444} said mixer (defendant's) varies from nothing to its full capacity, depending on the supply and demand, the supply being ger

erally sufficient to keep the mixer more than half full of molten metal, which metal remains molten therein." It appears, how ever, that upon the facts being more fully ascertained, notice was given that, in so far as the stipulation varied from the facts appearing in the testimony of defendant's expert, it would be repudiated, and particu. larly that portion wherein it was said "that the amount of the molten metal in the mixer varies from nothing to its full capacity." As it clearly appears from the mouths of defendant's own witnesses (notably Mr. Morgan) that, in the usual operation of the mixer, the ordinary amount of metal kept in the reservoir was more than one half its capacity, we think that plaintiff's case should not be prejudiced by this stipulation. Stipulations are ordinarily entered into for the purpose of saving time, trouble, or expense, and in this case it recites that "as defendant's counsel is expected to sail for Europe in a few days, and may not be back for about four months, it is therefore stipulated by counsel for both parties, to save delay, as follows." But while the stipulation is undoubtedly admissible in evidence it ought not to be used as a pitfall, and where the facts subsequently developed show, with respect to a particular matter. that it was inadvertently signed, we think that, upon giving notice in sufficient time to prevent prejudice to the opposite party, counsel may repudiate any fact inadvertently incorporated therein. This practice has been frequently upheld in this and other courts. The Hiram, 1 Wheat. 440, 4 L. ed. 131; Hurt v. Hollingsworth, 100 U. S. 100, 103, 25 L. ed. 569, 570; Malin v. Kinney, 1 Cai. 117; Barry v. New York Mut. L. Ins. Co. 53 N. Y. 536.

In short, we are clearly of opinion that the reservoir now in use is used for entirely different purposes from the intermediate Bessemer ladle formerly employed; that the process carried on with it is identical with the Jones invention; and that its primary, if not its sole, use, is for mixing purposes, with necessarily incidental storage, while the Bessemer intermediate ladle was solely used for storage, with little, if any, thought of the advantages to be gained by an incidental mixing.

adequate for cupola metal, uniformity in which had been largely secured by a careful selection and breaking up of the pigs, but it had not proved a success for blast-furnace metal, except that it had been used to a very limited extent in foreign countries where the peculiar character of the iron ore had rendered it possible to carry on a direct process, although apparently by methods quite other than those employed by Jones. The principal step employed by Jones was to magnify the capacity of the reservoir about twentyfold, provide it with a cover, and to arrange that it should not be tilted beyond a certain point, in order that a "considerable quantity" of molten metal might be retained in it for a sufficient time to accomplish a pretty thorough mixing, but little change having been made in the meantime in the size of the receiving ladles and converters. As the reservoir was designed to hold a large quantity of metal for a considerable time it must have been covered to obviate the contents being crusted over or sculled.

As soon as this method had proven to be successful by employment at the Edgar Thomson works, and had become so well known as to attract the attention of other manufacturers of steel, it found a ready sale, was adopted by all the leading manufacturers in this country, and was sold for use abroad for about $50,000.

It should be borne in mind that this process was one not accidentally discovered,[446] but was the result of a long search for the very purpose. The surprise is that the manufacturers of steel, having felt the want for so many years, should never have discovered from the multiplicity of patents and of processes introduced into this suit, and well known to the manufacturers of steel, that it was but a step from what they already knew to that which they had spent years in endeavoring to find out. It only remains now for the wisdom which comes after the fact to teach us that Jones discovered nothing, invented nothing, accom. plished nothing.

We cannot better conclude this opinion than by the following extract from the opinion of Mr. Justice Bradley in Webster Loom Co. v. Higgins, 105 U. S. 580, 591, 26 445]* Discarding now all that does not bear di L. ed. 1177, 1181: "But it is plain from the rectly upon the validity of the Jones pat- evidence, and from the very fact that it was ent, and dropping all superfluity of words, not sooner adopted and used, that it did let us determine exactly what Jones has not, for years, occur in this light to even contributed, if anything, to the art of mak- the most skilful persons. It may have been ing steel. He undoubtedly found reservoirs under their very eyes; they may almost be of small size in use, in which were poured said to have stumbled over it; but they cerfrom receiving ladles enough molten metal tainly failed to see it, to estimate its value, to fill them, and from which a sufficient and to bring it into notice. . . . Now amount was discharged to supply a convert that it has succeeded, it may seem very er, usually about half the size of the reser-plain to anyone that he could have done it voir. But in all these cases the fact wheth- as well. This is often the case with invener any particular amount of metal was left in the reservoir was treated as a matter of indifference or accident, although there must have been necessarily some incidental mixing; and probably the metal as it ran into the converters approximated more nearly to uniformity than when it ran into the reservoir. The former methods were

tions of the greatest merit. It may be laid down as a general rule, though perhaps not an invariable one, that if a new combination and arrangement of known elements produce a new and beneficial result, never attained before, it is evidence of invention."

The decree of the Circuit Court of Appeals is therefore reversed, and the case re

« iepriekšējāTurpināt »