80 F. 395 | 1st Cir. | 1897
This cause involves the validity of a patent for an invention relating to improvements in the construction of vessels ordinarily called “digesters,” and, as a leading feature of', the improved construction, provides for what the complainant calls a “protective lining” for the shells thereof. These digesters are used in the sulphite wood-pulp process, and may be either stationary or rotary, and are constructed with an outer shell of iron. The structures-are large and expensive, varying in size (sometimes 15 feet in diameter by 30 in length), and are designed to receive blocks of wood and wood substances to be subjected to the sulphite -process; and the metal shell, being corrodible by the acids and gas used in the process of cooking or dissolving the wood fiber, requires an interior protective lining. It is manifest—indeed, it is conceded—-that the practical workings of' the sulphite process had disclosed a fundamental and imperative-necessity for some means of protection against the hazard and explosive dangers incident to the corroding influences and the great pressure, under highly-heated conditions, of bisulphite acid solutions necessarily involved in the process for dissolving the wood substances; and in this connection we cannot do better than quote from the opinion of the circuit court on this phase .of the case, where it is said:
“It is very evident that the art to which the patent relates had been for a long time urgent for a practical lining for the iron or steel shells of digesters, which would be reasonably economical, and that the urgency had been so-*397 great as to have become a fundamental necessity.' For several years no one nad been able to respond; so that, under the circumstances, whoever should solve the whole problem, or should make advances of practical use jn that direction, whether by adoption from other arts or otherwise, would have been entitled to be held an inventor, both by the common judgment and by the courts. Mitscherlich accomplished this in part, but he always had a lead lining in direct juxtaposition with the shell, and his interior material was not continuous. Tlie Russell device displaced the lead, and furnished a continuous and homogeneous lining.”
The prior state of the art, the anticipatory character of American and foreign patents, questions of fraud in reissue in respect to the patent in suit, questions as to prior public use in the United States and in foreign countries, and finally the question whether the problem presented to the patentee involved patentable novelty, are not raised by the assignment of errors, and are not before us. These questions were all resolved in favor of the patent in suit by the circuit court, and thus our investigations are narrowed to the question whether George Fred Russell’s conception and discovery in August, 1889, at the time -he received information from Cologne, were so far reduced to operation and practical use, or, in other words, had so far generated an idea of practically operative means, as to become a discovery or an invention entitled to patentable protection; and, if the problem of invention is determined favorably to the patent, then the question as to the validity and meaning of the claims and specification, and the question of infringement, will require our consideration. The claims are stated in the reissue patent as follows:
“I claim: (1) The improved pulp digester herein described, having an outer shell, A, and a continuous lining or coat, B,” of cement, as described, applied to the interior of the said shell, for the purpose set forth. (2) The improved pulp digester herein described, having an outer shell, A, a continuous lining or coat, B, of cement, substantially as described, applied to the interior of the said shell, and an interior lining of tiles, 0, all substantially as set forth.”
The complainant contends for a broad construction of his claims, and that his device and process, under reasonable construction—
“Consists in an improved pulp digester, in which the metal shell, corrodible by the acid solution employed, is protected against its attacks by a continuous coat or lining of cement of proper thickness applied upon the interior of the shell; the term ‘cement’ including any material or mixture of materials which resists the acid solution under high heat and pressure, and which is capable of being made plastic and adhesive to the digester shell, and so compact as, in practice, to prevent the acid solution from reaching the iron shell in consequence of the high steam pressure used in the process.”
On the other hand, the defendant in error stands here, as in the court below, upon the defense that, while Russell was experimenting in that direction, he had made no advance in the art at the time he received information from Cologne that Wenzel, an Austrian, was successfully lining digesters with hydraulic cement and sand. The defendant does not urge that the Russell claims should be limited to hydraulic cement, and it may be here remarked that the learned counsel on both sides agree, in argument, that the construction limiting Russell’s claims to hydraulic cement is impossible, and cannot stand. The scope of the claims, however, will be considered later. The position of counsel in argument is given in this connection for the purpose of better understanding the questions which we are to consider.
“I have found a cement lining which, if it turns out to be what it now appears, is the best thing yet. It is simply a cement and is put on as one would plaster a wall.”
This information was conveyed to the patentee, Russell, early in August in the same year. It therefore becomes necessary to ascertain how far Russell had progressed in his discovery and invention, and whether he had so far advanced the art at the time he received knowledge of the Springer letter from Cologne as to entitle him to protection as an inventor. The circuit court approached this phase of the case with the observation that while Russell “must have had before that time a clear and positive conception of the substance of what was afterwards patented,” where the “substantial question,” as in the case at bar, “is whether the patentee, Russell, invented at all, we do not deem it in fact necessary that the complainant should prove that the alleged invention was put into a practical, concrete, or visible form before the patentee received the information contained in Springer’s letter.” Holding this view, the circuit court, under its construction limiting the claims to hydraulic cement, found and held that Russell had not solved the problem of invention, and dismissed the bill. We are inclined to consider the question of invention here presented upon lines perhaps less favorable to the patentee than those drawn by the circuit court, and to determine his rights with reference to the rules which would govern questions of patentability. Therefore, had his advance in the art at the time he received information of the Wenzel experiments reached such a stage as would entitle it to protection as involving invention, if expressed in letters patent? If so, the information from Cologne would not deprive him of the fruits of his discovery. At least, a higher advance in the art is not required to protect him against information of this character than would be required to protect his discovery, as an invention described in a patent, under the rules regulating patentability and nonpatent
Having conceived the idea of a cementitious lining, and having newly discovered the acid-resisting force of cementitious compositions ns against highly-heated bisulphite liquor consisting of lime, sulphur
It would seem that Russell at this time had practically solved the problem presented, and that his discovery, demonstrations, and prescribed process present a meritorious and useful invention; and, in our view, Wenzel’s unpublished and unknown discoveries in Austria should not deprive him of the benefits of his own independent and original discovery and experiments in this country. Upon the question whether Russell had so far completed his discovery and accomplished his purpose when he received information from Cologne as to entitle him to a patent, and before passing to other questions in the case, let us look for a moment at the development of his-conception in connection with his newly-discovered fact or force in matter under heat, pressure, and acid conditions, and his actual adaptation of means and process to the required purpose, in the light of the reasoning of Mr. Chief Justice Waite in the Telephone Cases, 126 U. S. 1, 532, 8 Sup. Ct. 778. There Bell was the first to discover the fact that, by gradually changing the intensity of a continuous electric current so as to make it correspond to the changes in the density of the air caused by the sound of the voice, vocal sounds could be transmitted and reproduced at a distance, but he had not advanced so far as to actually transmit spoken words so that they could be distinctly heard at the receiving end of the line. Bell had discovered the fact that a force in nature (the electric force), under changed conditions, would produce a new and unknown result,—that of reproducing vocal sounds at a distance from the speaker, although words had not been transmitted. Upon the question of the patentability of his discovery, and his imperfect art, Mr. Chief Justice Waite said:
“But it is insisted that the claim cannot he sustained, because, when the patent was issued, Bell had not in fact completed his discovery. While it is conceded that he was acting on the right principle, and had adopted the true theory, it is claimed that the discovery lacked that practical development which was necessary to make it patentable. In the language of counsel, ‘there was still work to be .done, and work calling for the exercise of the utmost ingenuity, and calling for the very highest degree of practical invention.’ It is quite true that when Bell applied for his patent he had never actually transmitted telegraphically spoken words so that they could be distinctly heard and understood at the receiving end of his line, but in his specification he did describe accurately, and with admirable clearness, his process (that is to say, the exact electrical condition that must be created to accomplish his purpose); and he also described, with sufficient precision to enable one of ordinary skill in such matters to make it, a form of apparatus which, if used in the way pointed out, would produce the required effect,—receive the words, and carry them to and deliver them at the appointed place. The particular instrument which he had, and which he used in his experiments, did not, under the circumstances in which it was tried, reproduce the words spoken so that they could be clearly understood; but the proof is abundant, and of the most convincing character, that other instruments, carefully constructed, and made exactly in accordance with the specification, without any additions whatever, have operated, and will operate, successfully. A good mechanic of proper skill in matters of the kind can take the patent, and, by following the specification strictly, can, without more, construct an apparatus which, when used in the way pointed out, will do all that it is claimed the method or process will do. Some witnesses have testified that they were unable to do it. This shows that they, with the particular apparatus they had and the skill they employed*403 in its use, were not successful; not that others, with another apparatus, perhaps more carefully constructed or more skillfully applied, would necessarily fail. As was said in Loom Co. v. Higgins, 105 U. S. 580, 586, ‘when the question is whether a thing can be done or not, it is always easy to find persons ready to show how not to do it.’ If one succeeds, that is enough, no matter how many others fail. The opposite results will show that in the one case the apparatus used was properly made, carefully adjusted, with a knowledge of what was required, and skillfully used, and that in the others it was not. The law does not require that a discoverer or inventor, in order to get a patent for a process, must have succeeded in bringing his art to the highest degree of perfection. It is enough if he describes his method with sufficient dearness and precision to enable those skilled in the matter to understand what the process is, and if he points out some practicable way of putting it into operation. This Bell did.”
And this Russell did in respect to Ms conception and process. And, as to the Bell patent, it may be further observed in this connection that Bell was in doubt whether the magneto or the variable resistance methods were the better for conducting the force, but thought the magneto method was; and as to this the chief justice says (page 538, 126 U. S., and page 784, 8 Sup. Ct.):
“Indeed, he said, in express terms, he preferred it, but that does not exclude the use of the other, if it turns out to be the most desirable way of using the process under any circumstances.”
And again he says (page 539,126 U. S., and page 785, 8 Sup. Ct.):
“Surely a patent for such a discovery is not to be confined to the mere means he improvised to prove the reality of his conception.”
Under the reasoning of this case, it would seem clear that Russell’s patent should not be declared void because he was in doubt as to which of the compositions would prove the most satisfactory in a commercial sense, or because he had not practically and finally tested and chemically isolated all the matter or material containing the required cohesive, adhesive, and acid-resisting qualities.
As has been said, the information from Cologne reached the patentee in August, 1889; and the fact that he remained silent as to his discovery until about the time of his application for a patent, in October, 1890, requires our attention. The record shows that the patentee was in the employ of the Russell Paper Company, in which his father was treasurer and Ms uncle president, during the period covering the supposed acts of invention, as well as during the later period in which Ms application was pending in the patent office, and that certain experiments were made by the paper company during that time, in which the patentee took part without disclosing the discoveries and experiments involved in his invention. If there were a controversy upon the evidence as to what the patentee had actually done in the line of the art, or if the conditions were such as to require him to speak, this evidence would have weight. But the evidence discloses no controversy in respect to the first proposition, and the only question fairly raised is whether his conception and discovery amount to invention,—whether he had carried it forward to a practical demonstration by developing the idea of means. As to the second proposition, his father and uncle were prominent officers in the company, and active and influential in the management of its business. The
The inventor, having advanced the art in a certain line, as he believed, in order to secure his rights stated his claims, and described his invention and the operative means for putting it into practice; and we now come to a consideration of the questions relating to the scope and validity of his patent, construing it with reference to his claims, description, and specification, as set forth in his application of October 18, 1890, and the reissue patent No. 11,282, dated November 16, 1892. In the circuit court, as has been said, a result was reached limiting the claims to a coat or lining of hydraulic cement. In discussing the question as to the scope of the claims, that court said: '
“The whole substance of the patent is in the first claim. This consists of only two elements,—the shell and the continuous lining or coat of cement. Its language is so unequivocal that its construction needs no aid from secondary rules, and is not enlarged nor limited by the redundant, and, in some particulars, somewhat obscure, language of the specification, whether of the original patent or of the reissue, except in one particular.”
And again, in referring to the word “cement” as used in the claim, it was said:
“But this word has the ordinary commercial meaning of hydraulic cement, and also a larger, and perhaps more accepted, sense. It cannot, in this patent, be given the latter without substantially giving the patentee the whole art, and much more than he can claim to have actually invented or discovered. Therefore we are compelled to limit the word which he has himself chosen to its ordinary commercial sense. An examination of the file wrapper leads to the same results, but we need not enlarge on this. The word ‘cement’ having various significations, its precise definition for this purpose must thus he determined. With that exception, we need only say that we are not to construe what does not need to be construed, and that the simple phraseology of this claim can neither be added to nor taken from by what appears in the specification, by what occurred in connection with the reissue, or by any alleged implied disclaimer arising in relation thereto. We know of no mystery relating to ascertaining the legal meaning of claims in patents; and we apply to this ease the fundamental rules by which is read every instrument whose language is clear in itself.”
“Where tlie claim immediately follows the description of tlie invention, ft may be construed in connection with the explanations contained in the specifications; and, where it contains words referring back to the specifications, it cannot properly be construed in any other way.”
Mr. Curtis, in his explanation of the purposes of the claims and specifications, and the relations which they sustain to each other, observed (section 227) that “the claim is not intended to be any description of the means by which the invention is to be performed, but is introduced for the security of the patentee,” and that one object of the specification “is to make known the manner of constructing the machine, if the invention is of a machine.” And Mr. Chief Justice Fuller, in Howe Mach. Co. v. National Needle Co., 134 U. S. 394, 10 Sup. Ct. 572, says:
“Doubtless a claim is to be construed in connection with the explanation contained in the specification, and it may be so drawn as, in effect, to make the specification an essential part of it.”
Now, let us see what Russell stated in his claims, and the means which he described in his specification to which he referred for reducing his invention to form and practice. The inventor, in his claims, which immediately follow his description of the invention, says: “I claim (1) the improved pulp digester herein described, having an outer shell, A” (thereby referring to his diagram and to his specification), “and a continuous lining or coat, B, of cement, as described” (again referring to his specification), “applied to the interior of the said shell
“My invention relates to improvements in the construction of the vessels, ordinarily called ‘digesters,’ in which wood pulp is manufactured hy what is known as the ‘sulphite process.’ Its object is to improve the construction of these digesters, so as to prevent their injury by the solution employed. * * * The shell of the digester is marked A, and within it are shown linings, B and C, the construction whereof I will now proceed to describe: A represents the outer shell of the digester. It is ordinarily constructed of metal,—such as iron, steel, or brass,—which is liable to be injuriously affected by the acid solution employed. Upon the interior of the shell of the digester, I form a continuous lining or coat, B, of acid-resisting material, applied in a plastic condition. This lining or coat is of the nature of a cement, and may be composed of any material or mixture of materials which is acid-resisting, and capable of being made plastic and adhesive to the shell of the digester, and so compact as to prevent the acid solution from reaching the iron shell in consequence of the high steam pressure required in practice. A convenient material for the purpose is commercial cement, preferably Portland, made plastic with water, and applied with any suitable implement upon the interior of the digester shell, so as to form a continuous covering therefor. Other cement-like materials or mixtures having similar properties or characteristics may be used, such as the ordinary cement mixtures, sand and Portland cement, sand and tar, and the like.”
He then proceeds to describe the necessary thickness and compactness of the lining under different conditions. Thus, it would seem to be clear that the inventor intended to cover acid-resisting cementi
“The law does not require that a discoverer or inventor, in order to get a patent for a process, must have succeeded in bringing his art to the highest degree of perfection. It is enough if he describes his method with sufficient clearness and precision to enable those skilled in the matter to understand what the process is, and if he points out some praticable way of putting it into operation.”
This we think Russell did. He said, in effect:
“I have conceived the idea that the old linings of brick and tile with cemented and leaded joints, which do not stand under pressure and acid conditions, may be displaced, and we may have a homogeneous lining formed of the materials of which such bodies are made. We will let it harden as one piece, adhering to the outer shell as a continuous lining; and, if the brick and tile will stand the pressure and acid conditions, this will. I have experimented in the field of cementitious material, and I have found several mixtures that will answer the purpose which I have described, and I have found, by subjecting them to the sulphite liquor conditions, that they will answer the purpose. 1 have said that the materials must be capable of being made plastic and adhesive to the shell, and must be acid-resisting; and this means acid-resisting under digester conditions, which means highly-heated bisulphite conditions. I have said that other cement-like materials or mixtures, having similar properties or characteristics, may be used, such as the ordinary cement mixtures, sand and ¡Portland cement, sand and tar, and the like; and this explanation of my discovery, and this explanation of the conditions which are necessary to make the test, will enable any practical chemist or skilled person to discover the required qualities.”
“Tbe remarkable fact appears that, while bisulphite liquors attack hydraulic cement quite freely at ordinary temperatures, they have no action whatever at the high temperature at which the sulphite process is conducted.” Again: “It is a curious fact, which the employment of the Russell lining has brought out, that, even if original defects exist in the Russell lining, they become filled in use.” Again: “All cement linings are more or less porous when first applied, but in use soon fill up with sulphate and sulphite of lime. They then become practically impervious to liquor, and afford complete protection to the shell beneath. Such liquor as may work through a crack is quickly rendered harmless through reaction with the lime salts composing the cement.”
As said by Mr. Justice Strong in Smith v. Vulcanite Co., 93 U. S. 486, 495, “to find a material, with a mode of using it, * * * had been an object long and earnestly sought.” Russell discovered that cement materials generally, which possess the quality of being made plastic, when applied in that condition, as a thick, one-piece lining to an iron shell to be used in the process of disintegrating wood substances, generally speaking, had the quality of adhering to the shell, of resisting the hot acid, and. of performing the function of protecting the iron from the highly-heated conditions to which it would otherwise be subjected, and that the expansive and resilient qualities of such materials were equal to the expansion and contraction of the shell with the temperature of the iron so reduced. The evidence demonstrates—and quite likely Russell understood—that some cement mixtures, commercially speaking, were more desirable than others; and the word “cement,” used in the claims, must be understood, when considered in connection with the statutory description, as referring generally to cementitious mixtures having the qualities which he described. As to those which he expressly named, like commercial cement, preferably Portland, made plastic with water, and as to the ordinary cement mixtures,—sand and Portland cement, and sand and tar,—there can, of course, be no doubt in the mind of any person possessing ordinary skill in the art as to what he intended; and as to his general expression, “any material or mixture of materials which is acid-resisting, and capable of being made plastic and adhesive to the shell of the digester, and so compact as to prevent the acid solution from reaching the iron,” he described the conditions which, in the hands of persons skilled in the art, would develop, whether in a given mixture the required property and qualities do or do not exist. He discovered that in such cementitious materials as could be made plastic, and were adhesive, cohesive, and self-hardening, the required properties, in a degree, existed ás a quality common to them all. This
“If the patentees had discovered in fibrous and textile substances a quality common to them all, or to them generally, as distinguishing them from other materials, such as minerals, etc., and such quality or characteristic adapted them peculiarly to incandescent conductors,, such claim might not be too broad. * * * If, as before observed, there were some general quality running through the whole fibrous and textile kingdom, which distinguished it from every other, and gave it a peculiar fitness for the particular purpose, the man who discovered such quality might justly be entitled to a patent. * * * If Sawyer and Mann had discovered that a certain carbonized paper would answer the purpose, their claim to all carbonized paper would perhaps not be extravagant.”
The Incandescent Lamp Case, just referred to, was recently under consideration by Judge Townsend in Read Holliday & Sons v. Shulze-Berge, 78 Fed. 498, as to its bearing upon the somewhat analogous question of equivalents, where it was cited, together with the opinion of the circuit court in this case (70 Fed. 988), to the point:
“That a patentee must clearly conceive and accurately state his invention or discovery, and that he cannot claim a monopoly of the whole art, nor by speculation include unknown elements within the limitations of his claim.”
Judge Townsend then proceeds to explain what he understands to-be the limitation upon this rule, as follows:
*410 “I think the law must he that where the new ingredient is such as would have been known to or employed by the ordinary skilled, practical chemist, or is such as would naturally have been developed in the growth of the art, and the substitution thereof involves no alteration or new operation or result, it is covered by the patent, provided the specifications and claims are sufficiently broad to include it.” Rob. Pat. § 257; Walk. Pat. § 354.
In conclusion, the specification in the case at bar was so referred to in the claims that either may aid in the interpretation of the other. Pearl v. Ocean Mills, 2 Ban. & A. 469, Fed. Cas. No. 10,876; Bob. Pat. § 517. And we think, upon principle and authority, that Russell, having discovered that cement material generally possesses the qualities required for his conception of a homogeneous digester lining, •should not be limited to such materials in the class of cementitious mixtures as he had chemically and commercially isolated as individuals, but that his claims and description should be construed as including all cementitious mixtures which ordinary skilled practical chemists might be expected to find as answering the requirements of the described conditions, or such as would naturally develop in the growth of the art without invention.
In our opinion, the patent is valid, and protection should be commensurate with the invention stated in the claims and the discovery and process described in the specification; and in our view the patent •covers homogeneous structural linings composed of adhesive, acid-resisting materials in the nature of cement, which possess the required qualities described in the specification. The circuit court has found that:
“If the patentee, Russell, was entitled to his patent at all, the defendant’s method of obtaining a continuous lining of cement is plainly within its scope; .•and it differs so unsubstantially from the method described in the patent that it has the appearance of a mere evasion, easily devised when sought for, and -plainly within the rules touching equivalents.”
In this we fully agree, and, as the result of our conclusions sustains "the patent, it follows that the decree of the circuit court must be reversed. The decree of the circuit court is reversed, and the cause is remanded to that court, with instructions to enter a decree in favor of the complainant for a perpetual injunction and an accounting as •prayed for, and for further proceedings in accordance with law; the complainant to have its costs in this court and in the court below.