ILLINGWORTH '11. ATHA.
141
ILLINGWORTH t1. ATHA (CM'euit Gourt, D. NeJW J"fJr8W.
et al.
March 25,1890.)
1.
PATENTS FOR INVENTIONs-:F'RAUDULENT ApPLICATION-INJUNCTION.
A complainant who alleges that defendant induced the commissioner of patents to decide in his favor, as to the priority of an invention, by means of false testimonyand misleading statements, but who nowhere particularizes the falsehood or perjury, and who introduces practically the same evidence on the hearing of a motion to restrain defendant from receiving letters patent that had already been considered by the comissioner, is not entitled to a preliminary injunction. Rev. St. U. S. § 4915, which gives an unsuccessful applicant for a patent the right to apply to a court of equity, and which provides that an adjudication by the court in the applicant's favor" shall authorize the commissioner to i,ssue such patent" to to the applicant, col1fers on the court no power to enjoin the oommissioner from issuing letters patent in favor of one whom he has adjudged entitled thereto. Rev. St. U. S. !l 4921, which confers power on courts having jurisdiction of pat'ent cases to grant injunctions to prevent the violation of any right," secured by Pat· ent, " does not confer any authority on such courts to issue an injunction in favor of one who has failed to secure a patent. '
2.
SAME-UNSUCCESSFUL ApPLICATION-EQUITABLE JURISDICTION.
8.
SAME.......INJUNCTION.
4. ,FEDERAL COURTS-JURISDICTION-COMMISSIONER OF PATENTS.
Under Act Congo March 8,1875, (18 U. S. St. 470,) as amended by Act March 8, 1887, (24 U. S. St. 552,) and by Act Aug. 18,1888, (25U. S. St. 434,) which provide that no oivil suit shall be brought in the federal courts against any person by any original.process or proceeding in ,any other district than that whereof he is an inhabitant, the circuit court of New Jersey has no jurisdiction over the commissioner 01 patents, whose official residen,ce is the District of Columbia.
In Equity. On bill for injunction. Briesen « Knauth, for complainant. Edwin H. Brown, for defendant Atha. GREEN, J. This suit is brought under section 4915 of the Revised Statutes of the United States, which is as follows:
"Whenever a patent on application is refused, either by the commissioner of patents, or by the supreme conrt of the District of Columbia upon appeal from the commissioner, the applicant may have remedy by bill in eqUity; and the 'court, having cognizance thereof, ou notice to adverse parties, and other due proceedings had, may adjudge that such applicant is entitled, according to law, to receive a patent for his invention, as specified in his claim, or for any part thereof, as the facts in the case may appear. And such adjndication. if it be in favor of the right of the applicant, shall authorize the commissioner to issue such patent 011 the applicant fil'ing in the patent-ollice a copy of, the adjudication, and otherwise complying with the requirements of law. In all cases, where there is no oppOSing party, a copy of the bill shaH be served upon the commissioner, and all the expenses of the proceeding shall be paid by the applicant, whether the final decision is in his favor or not."
The complainant, in his bill of complaint, alleges that he was the first and original inventor of certain improvements in ingot moulds, for which he, on the 26th day of August, 1886, made formal application for letters patent; that, prior to the elate of the filing of his application, he constructed a model representing said invention, and in the month of July ,1886, he exhibited and explained. it to his partner, Benjamin Atha, one of the, defendants in this cause; that, after seeing said, model, and
FEDERAL
REPORTER,
vol. 42.
after having it explained, Atha, with the intent of defrauding the complainant, and with the purpose of depriving him of his right to letters patent for said invention, surreptitiously prepared an application for a patent for said inventibnin his own name,and,by the exercise of unusual haste .and secrecy, succeeded in filing the same in the patent,office o/lAugust 23, days prior to the application of the ,complainant. Upon the filing of complainant's application, an interby the c6mmissioner ference Qetween the two applications was of patents, and the usual course of procedure in matters of interference was had. Much testimony w,as taken, but the defendant Atha succeeded in inducing the commiSSioner of patents to adjudge that he, and not the compI4iiill.gt, the Qiigillalinventor of the improvernents involved in theissue,ilil said interference, and ordered a patent to be issued to him, 'The bill prays that the defendant Charles and not to the E. Mitqbell,' commis:;lione)," ,of patents, may be restrained. and enjoined or causinj:{ to be issued, to the said defendant Atha,letters patent for said, improvement in ingot moulds, which !ire in controversy' in ,the said interference; that Atha may be restrained f't()m'receiving patent for the same; and that the commissionerof.patents may be decreed to issue to the complainant letters pateI;lt tb,e invention,ofwhich he clltilns to be the and inventor. The matter now comes before. the court upon a motion to make absolute a temporary restraining order, and for a preliminary injunction against both defendants in terms pursuant to the prayer of the bill. The testimony taken in the interference controversy is to be considered testimony in this cause,upon this motion. The granting of a preliminary injunction is a matter almost wholly, if not entirely, within the discretion ora court of equity., It will never bo ordered unless from the pressure of a most urgent necessity, aud upon facts from wjliq1;l the ,resulting equity must be as clear as crystal. The damage threatened to be, done, and which it is legitimate to prevent, must be, in an equitnblepointof view, of an irreparable character. Inconvenience, vexation, even serious peCUniary loss; do not afford justb.eexerciscof the power to enjoin', power, as Judge v. 00., Blildw. 217, emphatically says, "the exeroiseof. which is most delicate,requiring the greatest deliberation and sound, discretion, ,and which is, most dangerous in a doubtful <:ase."In the case now under consideration, it is claimed that the right ':lithe to thisegpecial reliaf,arises in this manner: Being, as he asserts, the originalinventor of a.new and uset:ul improvement in ingot moulds, he exhibited and' explaIned to his partlier in business, Benjamin Atha;; (lne ofthedefendallts, a model prepared for the purpose of obtaining'letters patent; that Atha, in fraud of the' rights ofthe complainarit, surreptitiously prepared anavplication for letters patent coveringothe entire 'invention of' the complainant,and,. by the exercise of unwonted haste and diligen.ce,succeeded in having it filed three days before the complainant tiled' .his' applicathm; ,The two applications were similar in their claims, and, necessarily an interference was
"'as
ILLlt'OGWORTH ,.
,
declared. In the cantroversy which followed, the main issue was the priority oithe invention. This issue was decided against the complainant, and in favor of defendant Atha, first by the examiner of interferences, next by the examiners in chief, (although they suggested, as an amicable settlement, a joint patent to the complainant and defendant,) and lastly by the commissioner Of patents; and it is chiefly upon the alleged impulsive cause of this last decision that the complainant nowappeals to the court. In his bill of complaint, he charges that the defendant Atl1a, by "means of false testimony and misleading statements," induced the commissioner of patents to decide that the defendant Atha, and not tbecomplainant, was the first inventor of the s!iid invention, to the irreparal;>leqamage, of the complainant, and the loss of complainant's rights to,sl\id and l{ltters patent might be granted therefor. Parenthetically, it may be remarked' tnat the evidence presented: to this court upon the hearing of this motioll'was the evidence presented to and passed upon by the examiners and by the commissioner of patents in the interference controversy, and that-only, save im affidavit made since that contest., and for the purpose of this !luit,by the complainant. in which, inter alia, following the werding'ofthe bill of 'compiahit, he declares"upon' false testimony and representations and misleading stateml!nts , adduced by the defendant Atha, and filed inllis behalf, the defendant Charl.es ·E. 'MiWhell, Who was then" and now is, the commissioner of palents,walJiJ).ducedJiO,decide that t.he said defendant Atba, and. not your orator, was the first inventor of the in interferenC,e." ' It is nlscjnoticeable that neither in the bill of complaint,nodn the "affirlavitjust quoted from; dOes the complainant do more than charge, in the·inost general way. false swearing, false representations, and, mislea.ditig'slalements. He nowhere condescends to specify or particularize the petj iiry or the falsehood'i His allegations 'are most vague. Now, it is a prinCiple settled inequity, practice that alHhe facts and CITcunistltIioes'up6n which an application for an injunction is founded must be . carefully; positively, and specifically proved. There is a class of ,cases, as', bills charging fraud and praying a discovel'y, where,dn the very'. nature of things,positive proof canhotbe expected. Butthese forn! the exceptions to the operation of the principle. lriother case,Htisim'perative, and it cannot be contended that this case falls within exception. So that this case now stands belare the court upon the same, 'and only thesetme, evidence, as to priority of invention, that has'already been acted: upon by three different tribunals; each of which,practically, reached the same conclusion, and that cOnclusion one adverse tothecomplainant,-"-aconclusion, too, which the complainant, in effect, admits was justified by the evidence; for hisllllegati6n is not that the commissioner 'a.djudged without sufficiency of evidence, but that the evidence upon which the judgment was rendered was false and misleading; and this charge the complainant purposes and expects to by proof hereafter. I do not think that any case hlisooen made! by.: the complainant to for the ihterferenceby this court '.with
the
call
144
FEDERAL :Rl!WORTER,
the rights of the defendant Atha. by preliminary injunction. The most that can. be 'said in review of the testimony is, it may be that the commissioner of patents has made a. mistake in awarding priority of invention to Atha. At this stage of the controversy, I would be very unwilling to make even that mild criticism. My first impression of the testimony :su1Jmitted would not justify it. But, if it were otherwise, I should: adopt, with full concurrence, the language of Judge LOWELL in WhiPPle Y. Miner, 15 Fed. Rep. 1.17: I the opinion given in Paper Bag Machine Oo.v. Orane, 1 Holmes, 429, """, '" that the decision oUhe commissionerof patents is not final, on a que$tionof priority of invention, eyenbetween those who were fully heard in the but his decision has great weight, and it would be highly the applicant from receiving his patent upon the mere suggestion that the commissioner was mistaken." II
The. tnotion' for a preliminary injUnction against t,he defendant Benjamin Athldsrefused, and the restl'aining order heretofore granted is discharged. . , Nor can the like motion against the commissioner of patents be granted, . and for t.wo :reason: First,.in this court can derive no power to enjoin the commissionerfr0m the statute relied u.pon by complaina·nt. ::14is is purely a s.tatutory proceeding, and the court cannot go outside the statute which is. the foundation of t1;le action ,to assume to itself powers not found in the·.purview of the act. The section under consideration has but a singleobjeet,-to provide a way by which an unsuccessful applicant for letters patent, notwithstanding the rejection of his claim.by the commissioner of patents, may obtain them through an adjudication, in favor of his right thereto, by a court of equity having cognimnce ofthe subject-matter; and, as the object of the section is single, so is the power of the court plainly limited under it to the ac-complishment.of that object. The prayer of a bill of complaint exhibited to the court under and by virtue of this section would be for a decree that the complainant has ,established his right to hl;l.ve letters patent issued to him. So far may the decree of the court go, but no further. ltmayadjudge an issue of the letters, or it m$.y declare. the complainant to be right. In either pase the power conferred by this section is exhausted. Nowhere can be gathered, either from the words ot the section, nor from its spirit and purpose, an intention on the part of 'the national legislature to. authorize an interference with the commissioner of patents, in the performance of his plain duty, by writ ofinjunction. I think this is very manifest; but, were it a matter of doubt, such doubt should be resolved against the exercise of so delicate and danger-ous a power upon application for a preliminary injunction. Nor does section 4921, ,Rev. St., afford any aid to.the contention of the complainant. That section does confer upon "courts vested withjurisdiction of cases arising under the pl;l.tent laws power to grant injunc'tions apcording to the course and. principles of c9urtsGf equity;" but the exercise of the· power is limited to a. specific purpose,. namely, "to prevent the violation of any. rights secured by. patent." Manifestly the
.
SMITH ,. PITTSBURGH GAS ;CQ.
145
"right" which is thus declared entitled to claim the protection of the court is that which is "secured by patent;" not that which may thereafter be so secured, but that which is secured at the very time the appli- . cation for protection is made. There is no pretense of any such right in this case. . But, if I am wrong in this construction of the sections referred to, there .yet remains an objection to the granting of this motion against the commissioner of patents which is insuperable. It appears that he has not been.served with process in this action, nor has any appearance been entered for or by him. Has this court obtained any jurisdiction over him? I think it has not. By the act of March 3, 1875, (18 U. S. St. 470,) as amended by the Acts of March 3, 1887, (24 U. S. St. 552,) and the act of August 13, 1888, (25 U. S. St. 434.)it is, inter alia; provided that no civil suit shall be brought before either of said courts (circuit or district) against any person, by any original process or proceeding in aqy other district than· that whereof he is an inhabitant. T)1ere .is no allegation in the bill of complaint that the commissioner of patents is an inhabitant of the district of New Jersey. Such statement would be contrary to the. fact. Officially, he resides at the seat of the national . government, in the District of Columbia. This, then, is an attempt to bringthe commissioner of patents within the jurisdiction of the court, not by. sel,"vice of process, but by a motion. But a federal court acquires jurisdiction only by a service of process, or by a voluntary appearance of tpe pllrty. HfJl'ndon v. Ridgway, 17 How. 424. In this case, neither of these necessary precedent conditions appears. Under exactly similal," circumstances, in a suit brought under this section 4915, the Supreme Court has determined that the circuit court for the district of V ermont had no jurisdiction over the commissioner. Butterworth v. Hill, 144. U.·S. 128, 5 Sup. Ct. Rep. 796. The restraining order heretofore granted against the defendant Charles E. Mitchell, Commissioner· of patents, is set aside, as improvidently granted, and as to him this bill is dismiSied for want of jurisdiction.
SMITH et al.
11. PITTSBURGH
GAS Co.
(Circuit Court, W. D. Pennsylvania. April 19, 1890.)
GA.S: Letters·patent No. llilO,747, granted to Roland H. Smith on November 17,1885, for a process of producing a fixed compound illuminating gas "by heating natural gas to a sufficient temperature to decompose and convert a fiuid hydrocarbon into D fixed gas, and then bringing SUCh. hydrocarbon into contact with the heated natura;. gas, " in view of the prior of the art of gas making and the proceedings in the patent-oftlce, must be confined to a process in 'which the natural gas is first heated to the required degree, and th6fiuid hydrocarbon is then brought into contact with the natural gas thus heated. .
J'OB INVENTIONS-ExTENT OF CLAIM-PBIOR STATB OJ' ABT-ILLUMINA.T-
S. SA.HE-INFBINGEMENT.
Intlle;process practiced by the defendant, water gas hot from the generator, hy. dtocarbo/l oil and natural gas in its cold state, enter a sub or mixing ohamber at
v.42F.no.2-10
4.
: , the same time, and; ,there lutermingUnJl, the gases and petroleum vapor pass up lAto a superheater, Where they are ,.ub)epted to a second heating, and oombined ':ll.xedlY. ,. Held, that this is not an infringement of Smith's patent. 8. SAMB"'-ANTICIPATION:' ' , The paten,t granteli to ;A.lla W. Wilkinson on June 17,1878, desori,bes' and oovers a process for an illuminating gas by taking "the natural light ca,rbureted hydrogen "as escaplUg in some places from the earth, " and, after purifying it in the uaual way, Pll--,il)g the 'puriftedgas into and through retorts kept at or a <:herry-red heat i!1to which 110 ricb. hydrocari?on, ,s1;1ch is introdUced. 'Betd; that WilklUson's prooes8was an antIcipation of SmIth's patent. SAME.
Sndth was ,also by,the prooess praoticed as early as ,the year 1878 at the Beaver Falls Gas·Works. , ' .
'
"
"George
Equity.
..
.w.
&:
F. PaUer8on, for defendant.
i,
.'
ACHEBON,J. The bill; ofcomplai:b.t charges 'the defendant with the infringebientoftwdletters patent grllnted to Roland H; Smith;-one dated November 17, 1885, and numbered 330,747, fora "processofprodncing illuminating-gasj"atidthe other dated May 4, 1886, and numbered 341,8'54', issued upon an appliCation made after the grant of the former patent,for a fQprocess ofmantifacturing gas." But the witriesseson both sides 'agree that, the two patents· c()versubstantially the "Same' process, Rtidas'this,undoubtedly, is the fa:ct,.in treating the case; attention need only be to thespecificatioh 'and claim' oftheelnlier patent, No. 330,'747. ' '1 h
The declared object is to provide for the prodnctibn of an illuminating with any etlrichingagent, ,such as the various fluid :hydroc8itbons;" and it consists; the spemfication states,"in an imprdved 'process' of producing illuminating' gas by 'heating natural',gastoll. temperature su,fl3.oienttd decodlposeflilid hydrocarbon, form:iriga fixed gas of any desire<Ulltiminnting standard;" The apparatus shown and described consists of an or'retO'rts, the several retorts being connected successively by a pipe extending from one to another. The first of the lower line of retorts is connected bva supply pipe with the natural gas main, while a pipe enters the top of the uppermost retort to s,u,pply it with t;he fluid The retorts being heated, the' natural gas is' admitted to the first'retort, and thence is passed up, ,through the entire series qf reto;l;ts un,tjl H reaches "the proper temperature to form a fixed gas with the fluid hydrocarbon subsequently admitted;" The fluid hydrocarbon is'so admitted and .from that retQrt an eduotion pipeleads for the de,livery pf the, storage tanks, point of con;SUll;lptlOn., The patent does not, specify thedegreei of heat necessary , the fluid ,hyqroCarbonsQQuld ba,iI;l the practice ,of the prpCeBlk, The claim of the patent is in these words: , , ,,"'Xbe prQCIlSS, herein, desoriQed,ofprodQciDg illuminating..gwvbyheating natural gastoasulllcient temperature to decompose and convel·t a fluid hydro,
or
',. \
BlUTH. ". PITTSBURGH GAB CO.
147
carbon int!> a -fixed gas, and then bring such hydrocarbon into contlLct tpe heated natural gas, whereby a fixed qompound gas of suitable mUmin,ating propertieifis produced, substantially as specified." '
The proofs show that before the date of Smith's invention an appar$tus; designated the "Granger Water-Gas Apparatus," was publicly known and in use in ,the United States, whereby water gas is first produced in the usual way, and then, under the action of high heat, is enriched ,by the incorporation therewith of the gasified vapor of hydrocarbon 9il, or petroleum, so as to form a highly illuminating gas. The apparatus, as described by the witnesses, consists of a tall, cylindrical superheater filled with brick checker-work,. and having at it'! base, a hollow mixing or subchamber, the arched cover of which are numerous perforations leading into the superheater. An ordinary wawr-gas generator is connected with the,subchamber by a flue, and directly opposite to the point qf entrance of the flue an oil-supply pipe enters the chamber. In the operation of the apparatus the generator is charged with cokeor anthracite coal,which is ignited, andpy the use of an /l.ir-blast is carried up to a heat; the products of combustion passing up through the superheater, and heating the checker-work to a cherry-red color., The blast then cut off, and, the waste product outlet being closed, steam is admitted beneath the incandescent coke or coal, and, passing up through the ,same is converted into a water gas, consisting, as it leaves the bed of incandesc.ent carbon, of free hydrogen gas and carbonic oxide gas in nearly The water gas, in an intensely heated state, passing through the fiue into the subchamber, there meets and mi,xes with the incomi,ng oil, which, under strong pressure, enters the chamber in the form of a spray or mist, and the mingled gas and oil vapor, pass up through the heated checker-work of the superheater; and the .resultant illuminating gas passes thence through the hydraulic main and purifiers to the storage tanks. Now, the defendant uses the old Granger apparatus and process, as above described, but with this addition, viz.: The defendant has iqtroduced a pipe for supplying natural gas to the subchamber; that pipe and the oil supply pipe approa.cJiing the chamber in converging lines, and their orifices being close together. When the superheater is blown up to a cherry-red color, the water gas in its heated state, the spray of the hydrocarbon oil, and the natural gas in its cold state, are admitted at. the same time into the subchamber, and ill their mingled condition the gases and oil vapor pass up through the superheater. The defendant has given evidenoe tending to show that nearly equal parts otwater gas, petroleum gas, and natural gas enter into the composition of the resultant gas. should here be mentioned that, in. connection with the Granger plant, the company manufactures by the old retort process common coal gas, which is mixed with the "Granger gas," so called, in the purifiers and stprage tanks, in the proportion of half of eaoh in volume. The position taken by the plaintiffs is tba.t the defendant infringes the in Bubjectingthe natural gas and the liquid hydrocarbon
ru
DDERAL REPORTER,
to degree ofheat stated, thus them, andl.hat it is immaterial that water gas also enters into the resulting fixed. compound gas. The plaintiffs' expert witness, Mr. Coombs, speaking of the Smith patent, declares that "the gist of the' invention is combining the natural gas and the hydrocarbon while they are in a heated condition;" and the plaintiffs' learned counsel contend that Smith's patent, No. 330,747, "covers the process of making a fixed compound gas by the union of gases resulting from the decomposition of petroleum with natural gas when heated to the degree required to decompose the petroleum, regardless of the mode or apparatus employed to heat and unite the gases, and regardless of the addition of non-illuminant water gas to dilute and expand the volume of the compound." But, in view of the prior state of the art of gas making, and the proceedings in the patent-office, I do not see how it is possible to give to the claim of the patent a construction so broad. It was a matter ofcommon knowledge -among gas manufacturers, long before the date of Smith's invention, that lean gases-that is, gases deficient in carbon ---could be enriched, and their illuminating power increased, by combiningwith them, through the instrumentality of heat, the gases of decomposed hydrocarbons. The proofs here show several instances of the previous actual practice of such processes in several places in the United States, and a number of prior patents in evidence describe and cover such processes, and show suitaible apparatus for the work. For example, the patent grtllltedto Moses W. Kidder on June 12, 1877, shows a process for manufacturing illuminating gas consisting-First, in heating bituminous coal in a closed distilling. chamber sufficiently toexpel the hydrocarbon vapors from the coal without decomposing said vapors; and, secondly, in introducing a combustible non-Iuminant gas beneath the coal in said chamber, and passing it upwardly through snch heated coal, whereby the nascent hydrocarbon vapors are taken up and lifted out from the coal, and the non-Iuminant gas carbureted; the mixed gas and vapors being subsequentlysuperheated, and thus permanently combined. Kidder's patent covers combustible non-luminant gases generally; but, by way of example, the specification. names water gas. hydrogen gas, carbonic oxide gas, and marsh gas. Now, there is aconftictof opinion between the witnesses in this caSA as to whether "marsh gas" and what is now known by the term "natural gas" are one and the But, if not absolutely identical, certainly the difference between them is so very slight that it may be safely affirmed that, as respects the process by which they may be carbureted, it is an unimportant difference. To the suggestion that, at the date of Kidder's patent, 110 analysis of natural gas, so far as appears, had been made to determine its elements, it can be answered that, at any rate, so soon as it came into· use as a fuel and illuminant, it was known to helong to the class oflean gases. But Mr. Smith was not the first to show to thepublio a process for combining fixedly, by the agency of heat, the gases of decomposed },ydrocarbons natural gas, eo nomine. The patent granted to Asa W. Wilkinson on 17, 1873, distinctly sets forth a process for mamifacturing an illulliinating gas by taking "the natural light oarbureted.hydro-
BMITH ". PITTSBURGH GAB CO.
149
gen gas escaping in some places from the earth," and,after purifying it, passing it through a retort or retorts, heated at or near a cherry red, into which petroleum or other rich hydrocarbon is introduced. The claim of the patent deserves,to be here quoted at large. .. A process of manufacturing a rich and superior illuminating gas by first producing ordinary illuminating gas from bituminous coal, or taking the natural light carbureted hydrogen gas escaping in some places from the earth, then purifying the same by the usual process, and finally passing the purUied gas through a retort or retorts kept at or near a cherry-red heat, into which a rich hydrocarbon, such as petroleum, naphtha, oils, resin, &c., is introdulled, substantially in the manner set forth."
The defendant cites Wilkinson's patent as anticipatory of the Smith invention, and the point will be considered hereafter That patent is now ·referred to as illustrative, in part, of the prior state of the art; and, surely, it evinces, in connection with the other proofs under this head" that Smith's patent cannot be construed so broadly as to cover every mode whereby a fixed compound illuminating gas is produced by combining natural gas with the of fluid hydrocarbon by means of heat. Turning now to the proceedings in the patent office, we find that, in view of the several prior patents referred to by the examiner, Smith's :applicaticu was twice rejected. Upon the first rejection, in a written .communication to the commissioner, .Mr. Smith called particular attention to the lact that his invention "consists essentially in heating natural $as under pressure to a temperature sufficient to decompose a liquid hy.drocarbon, and then decomposing such hydrocarbon by mixing with the heated fixed gas while under pressure." And in a further written com- ' munication to the commissioner, upon the second rejection, after stating that in his case it was plainly set forth that "the temperature should be sufficient to decompose tne admingled hydrocarbon so as to form a fixed. gas," Mr. Smith added this signifip,ant language: "In other words, applicant employes the natural gas as a vehicle for con",eying the necessary heat to the fluid hydrocarbon, to decompose it. Tbis has not been even hinted at in any reference, and, as it forms an essential ,element of tile present invention, it is submitted that the case should be allowed." Then, upon the examiner's calling for "a full and fair acknowledgment .of the state of the art as shown by the references, to distinguish between
what is old and what is claimed as the improvement," the specification was amended by inserting the following statement of the invention and .disclaimer: "My invention consists in an improvl'd process of producing illuminating ,gas, by heating natural gas to a temperature sufficient to decompose fluid hy.drocarbon, forming a fixed gas of IIny desired illuminating standard, as more fully hereinafter specified. * * *. I am aware that poor gas has been enriched by passing it directly from the retortS in which it is generated through liqUid hydrocarbon, so as to take up the vapor of the same, and convert the mixed gases and vapor into a fixed gas by re-retorting;a!so; that natural gas jilas been, together with steam, passed through higbly-heated carbon. the re-
150;
FIlDERAL REPORTER,
StJltanC:gRlilesbeing combined with liquid hydrocarbon. and the mixed gases and, ,vapOr converted into a fixed gas by subjecting the same to intense heat;. " " . and such processes I do liot claim." After this amendment; there was a.n allowance of the patent with the cla,ilU 4ereinbefore quoted. Applying, then, to the Smith patent, the principles of construction laid dowIlby the. supreme court in the cases v. United States Cartridge Co., 112 U. S. of Union Metallic Cartridge 624, 5 Sup. Ct. Rep. 475; Sargent v.Lock Co., 114 U. S. 63,5 Sup. Ct. 1021; Shepard v.Carrigan, 116 U. S. 593, 6 Sup. Ct. Rep. 493; and Sutter v. Robinson, 119 U. S. 530, 7 Sup. Ct. Rep. 376,-a more limited effect must be given to the claim than the plaintiffs insist on. The above citations from. Mr. Smitp's written communications to the commissioner,upon the faith of which the office acted, cannot now be excluded .from consideration. They, in effect, restricted his application to,a process in which hydrocarbon is decomposed by means of heated naturfll gasIor, as he himself put the case, to a process which employs "the natural gas as a vehicle for conveying the necessary heat to the hydrocar\ilon, to decompose it." And" when we read the claim in connection'with the, amended specification, it is not. difficult to see that· it is so lilIPted; [PX', as there defined, the patented proceSS consists of two steps,.....,.fil'st, "heating natural gas" sufficiently "to decompose and convert a. fluid hydrocarbon into a fixed gas," and "then hringing such hyd:roclU'1>l>n illto contact with the heated natural gas." Now, it seems to llle clear, that ,the defendant does not practice that, process, tor Ule naturalga!il enters the mixing or subchamber of the Granger apparatus at the works in its natural, cold state, and, there intermingling\yith t4e heated water gas and the hydrocarbon oil, the gases ahd the vapor together pass into the superheater,and up through the hel\ted·brick checker-work. If the foregoing views are correct, the defense of non-infringement mustpreyl,l.il, lind hence. this. opinion might well here end. But the defense ,i?f anticipation has been fully argued bycouns",l, and it is percourt pass direcUy upon it, a.lso. The evidence to haps b.etter that sustain this ·defenseisthe,Wilkinson patent, already referred to, and proot by John M. Critchlow of the alleged prior use at the works of the county, Pa. the WilBeaver Falls Gas Company in kinson and Slllith pateMs, it is quite plaIn that the respective processes thereiIl:described are alike in purpose and. in the apparatus employed; .that in thepraetice of each the natural gas is heated, and the fluid hy. drocarbon then brought into contact with it in its heated condition; and that the result in each case is the same. It is, however, here worthy of note that, while Smith does not mention any specific degree of heat, WilkiIisdn directs that the retorts be kept at or near a cherry-red heat, which. .plaintiffs; proOfs show is the proper temperature. The only ditlerepce,then, between the two patents, is that Wilkinson provides for the puriQcation of. the natural gas by the usual process-that is, by passing.it through. lime purifitjrs-before heating the gas, whereas Smith says nothing' about its purification. Doubtless Willdnson supposed that
SMITH tI. PITTSBURGH GAS CO.
151
natural gas, like coal gas,'-to which his patent also applies,-contains some impurity which should be eliminated; and in his specification he explains the advantage of purifying the gas, whether natural gas or coal gas be under treatment, before it enters the retorts. His language is this: "The gas requires no purification after having left the last retort, and is now ready for the holder, thus avoiding the loss in illumination that richgas suffel·s.in passing through the purifiers." I think it isevidentthatWHkinsondid not regard the previous punficatiol;l of the natural gas as at all necessary in order to carburet It might as' well be argued that he supposed that the pre-purification of the coal gas .was necessary before it could be enriched. In judgment, his patent does not teach that, in order to carburet naturllJ. gas, i41 Pllrification is a prerequisite. Mauifestly the prescribed purification is simply preliminary to the practice of the enriching process described in patent, and here in question. and is no 'part of the process the llncontradicted evidence-coming, too, from the · plaintiffs' expert-is that the purification of natural gas by the usual not in any wise the nature of the gas, but simply removes any carbonic acid that may be present; und the witness says: ".It w-Qijld leave it in a better condition to combine ·wjth the hydrocarbon byreason,Q( the removal of the carbonic acid. Except by tile removal of the carbonic acid, the gas would be the same." But,i! previous purification put&Jthe natural gas in a more suitable · state for ;combining with the fluid hydrocarbon, by what mode of soning can the conclusion be reached that the omission. by Smith of such ,'pnrft1cation involved ihvention? Again, can it be doubted that, had W,ilkinson's proeess been later thanSrnith's, it would .have infringed Smith's pa.tent? But, if-so, being earlier, it anticipated it. · Peters v. Manufacturing Co., 129 U. S. 530, 537, 9 Sup. Ct. Rep. 389. The enrichment of natural gas, to increase its illuminating power, by mixing it, in a heated condition, with petroleum, was practiced at the works of the Beaver Falls Gas Company in the years 1877 and 1878; and the mode of operation is thus described by Mr. Critchlow, whose testimony is uncontradioWd, and :may be accepted ,as truthful in ita statements of fact. The natural gas., as itcame from the earth, was con'Teyed in a pipe inserted through the lid of the mouth-piece of an ordinary retort, and delivered at the rear end of the retort, which was heated to the degree common in the distillation of coal,-say from 1,800 deg. to 2,100 deg. From the rear end of the retort the natural gas passed to the forward end, and thence'ppwardly thtPugh a vertical starid-pipe which connected the retort with the hydraulic main. The hydrocarbon oil for · cail:mretingtlle natural gas Was introduced into the stand-pipe, and, falling from the point of introduction, met and came in direct contact with the ascending hot natural gas,. and" was thereby volatilized to a large extent," and, mixing with the hot,natural gas, was carried to the hydraulic main. That part ofthe;oilwhich was riot immediately so affected by direct contact with the heated natural gas fell to the, forward
rea-
152
FEDERAL REPORTER,
end of the retort, and was there Cl more slowly volatilized" and mixed with the natural gas. The product of this operation was mingled with ordinary coal gas, and the admixture supplied to consumers. This pro· was practiced at the Beaver Falls Gas-Works, constantly, for the pe· riop ofa year or more, and was then discontinued because the result was · Unsatisfactory; the compound gas, when any great quantity of oil was used, burning with a smoky flame, and the diminution of the quantity of oil producing gas of low candle power. Such being the facts, I do not see how it can be' denied that the process so practiced at Beaver Falls 'fas the same as that described in Smith's patent, and was an anticipation.. What Inore does the patent disclose than was there known and ,,ptirs.ued"l. As to the proper proportiotl.sin the admixture of the natural 'gas and'the fluid hydrocarbon, the patent is silent. It gives no instruc· tion 'whereby the excessive employment of the enriching agent may be avoided. Nor can the transaction at Beaver l!'alls be deemed an unsuccessful and abandoned experiment, within the meaning of the patent law. Ani illuminating compound gas was thete actually produced, and for a longtime was extensively used. The cessation of the use was not because the, process was' impracticable, but by reason of the unsatisfactory natu'te of the product, in that the compound gas burned with a sttlokyflame. And here it must be observed that there is testimony in the case tending very strongly to show that smokiness is a defect inherent in gas produced by combining natural gas and petroleum gas, for the reason tbatnaturalga!! is ueficient in hydrogen. I will not, however, discuss that subject. It is enough here to say that in my opinion the defenseo£anticipation is made out. The defendant sets up other defenses, which have not been alluded to andwUl not be consider,ed here, inasmuch as, for the reasons already ,given,ithe. bill of complaintmllst be dismissed. Let a decree be drawn dismissing the bill, with costs.
MoCmUuCK HARVESTING MACH.· Co. 'V. MINNEAPOLIS HARVESTER
WORKs·. (ci.rcui.t Court, D. Minnesota. April 7, 1890.) 'PATBNTIl ·FOB Il!iVBNTIONS-I'BIOBITY -LACHBS.
, .An in grain-binders was conceived, l;Ind orally explained by the in'ventor,iiiJunel..1879, to persons skilled in tbe operation of harvesters, and their conatru1)tion. ,J:1is devices. were construoted and in operation on a maohine in the of 1tlSO, and a patent was applied for in June. 181:>1. Complainant's l;ISsignor'applied for a patent in Aprll,1880. Held, that the first inventor did not lose his claim topi'iority by delay.
, In Equity.
Bill to determine priorityofinvention.
Pamnson & Parkinson, for complainants. J. R.BenneU, for defendant.