10 Blatchf. 66 | U.S. Circuit Court for the District of Southern New York | 1872
This suit is brought on two patents. The first is a reissued patent, granted to Moses Thompson, March 31st, 1S57, for an “improvement in furnaces for burning wet fuel,” the original patent having been granted to him, as inventor, April 10th, 1855, and reissued to him October 7th, 1856. The application for the original patent was filed November 14th, 1853, the specification having been sworn to November 9th, 1853; and a caveat, describing substantially the invention patented, was filed August 12th, 1853. This patent was extended April 8th, 1869, for seven years from April 10th, 1869, by the commissioner of patents.
The second patent is one granted to the same Moses Thompson, December 15th, 1857, for an “improvement in bagasse furnaces.” The application for this patent was . filed May 13th, 1857, a previous application filed on the same model, in February, 1S57, having been rejected. On an interference declared between the application of Thompson and a patent granted to A. Hager and S. Allyn, for an “improved bagasse furnace,” May 6th, 1856, priority of invention was decided in favor of Thompson, November 30th, 1S57. This interference related to what is the second claim in the patent granted to Thompson, December 15th, 1S57. This patent was, on the 14th of December, 1871, extended for seven years from the 15th of December, 1871, by the commissioner of patents.
The contest between the parties to this suit has been very severe. The suit was brought after the extension of the 1855 pat
Tbe answer sets up, that the 1857 reissue of tbe 1855 patent was obtained by Thompson for tbe purpose of further including therein, and did include therein, more than Thompson originally contemplated, specified or showed to be his alleged invention, on tbe apphcation for bis original patent, and matter wbicb he had no right to include and claim therein, and that such reissue is not for tbe same invention as tbe original patent of 1855, but is for inventions and things substantially and materially different. It also sets up, that tbe first claim of such reissue is invalid, because it is indefinite and equivocal, and does not refer to tbe process specified and described in the language preceding said claim. It avers, that tire extension of the 1855 patent was obtained by misrepresentation and fraud, and denies any infringement of either patent. It sets up want of novelty in regard to both patents, and specifies, in respect to each, prior knowledge by nineteen persons, and prior description in eight printed publications, fourteen English patents, and two United States patents. Twenty-six witnesses have been examined on the part of the defendants, and twenty-one on the part of the plaintiffs. Of these, two on each side are chemical experts, Benjamin Silliman and William H. Plumb for the plaintiffs, and Charles F. Chandler and Adolph Faber du Faur for the defendants. The printed case on the part of the plaintiffs covers over six hundred printed pages. That on the part of the defendants covers nearly one thousand printed pages. The direct examination of the plaintiffs’ experts occupied six days, and covers sixty-five printed pages, embracing seventy-six interrogatories. The cross-examination of those experts occupied twenty-five days, and covers two hundred and seventy-two printed pages, embracing six hundred and five interrogatories. The direct examination of the defendants’ expert Du Faur occupied six days, and covers fifty-six printed pages, embracing one hundred and fifteen interrogatories. The. cross-examination of the same expert occupied seven days, and covers sixty-seven printed pages, embracing three hundred and thirty-one interrogatories. The direct examination of the defendants’ expert Chandler covers fifteen printed pages, embracing thirty-two interrogatories. He was not cross-examined. These observations are made for the purpose of showing how thorough has been the investigation of the questions at issue.
The title of the reissued patent of 1857 is, “an improvement in furnaces for burning wet fuel.” The specification states the invention to be one of “improvements in burning tan-bark, bagasse, sawdust, and other-kinds of fuel, in a wet state, for the purpose of creating heat to generate steam, or to be employed in heating or drying opera.-tions.” Bagasse is crushed sugar-cane. There are two figures of drawings accompanying the specification. One is a horizontal section of a furnace constructed according to the invention. The other is a vertical section of the same. The specification states, that the main object of the invention is, “to effect the more economical use, for fuel, of tan-bark, bagasse, or other trashy matter, in a wet state, or very green or wet wood.” The furnace shown in the drawings has three fire-chambers. The patentee state that he considers three, “in many cases, to be best adapted to practical operation.” He proceeds: “In some cases, two may be sufficient, and, in others, more or less. In making these variations as to the number of chambers, the builder is to be guided by the quantity of heat required, size of chambers and character of fuel to be used. The fire-chambers are of a square, but may be of other form, with grate bottoms, B, B', B", and arched tops, or said tops may be used or built of any other form adapted to the kind of fuel to be used. They are separated by a wall of fire-proof material, and lined throughout with firebrick, and, in case of burning wet tan or bagasse, fire-brick grates should be used. Each burning chamber is provided with a door, C, in front, for the purpose of lighting and tending the fire, and with an opening, D, at the top, for the purpose of supplying the fuel, and with an opening, E, at the back end of the chamber, which leads to the flue, F, or the mixing chamber. The opening may be provided with a damper, If. Each fire-chamber has a separate ash-pit, G, below it, wheh is furnished with a door, H, to regulate the admission of air. The flue or mixing chamber. F, extends across the back of all the three fire-chambers, and the chimney may be at one end, or may be placed in the rear, with a flue, I, leading to it from the flue, F. If the furnace is used for generating steam, the best place for the boilers will be in flue I, which will be made of a proper size to receive and nearly surround it. If used for other purposes, any arrangement may be made best adapted to the application of said heat The thing to be heated ought to be placed a little above the inside top of the
It will be proper, in the first place, to consider the objections that are made to the reissued patent of 1857. It is contended, that the first claim of the reissue is void, because the invention claimed in it is not found in the original patent of 1855. That claim is a claim to the use of a flue or chamber, intervening between, on the one hand, the chamber or chambers containing the fire of carbonaceous combustion and a ■highly heated mass of the wet substances named, and, on the other hand, the apparatus to be heated and the stack, for the purpose of mingling in such chamber the gases issuing from such highly heated mass with the gases arising from the fire of carbonaceous combustion, so that such gases may consume each other in such flue or chamber, and thus intense heat be produced, by the use, for fuel, of such wet substances. The model and drawings of the reissue are the same as of the original patent. Such model and drawings show such a mingling or mixing chamber as is claimed, and show such an arrangement of parts, as, when used according to the dii’ections of the patentee, with the fuel named, will produce the result desci'ibed in the claim, of mingling and consuming, in such chamber, the gases mentioned, and producing intense heat. The specification of the original patent of 1855 gives substantially the same directions for producing such result as are given in the reissue of 1857. Those directions are, that, taking the use of three fire-chambers, for illustration, in burning wet fuel, two of the fire-chambers have their ash-pits closed and their dampers partly closed, while the third fire-chamber has its damper open and Its ash-pit open, so far as necessary to produce the requisite combustion in that chamber, to produce the degree of heat desired; that when, by such combustion in the open chamber, its fuel is reduced, it is recharged wiili wet fuel and closed, and one of the above chambers is opened for combustion; that so, in turn, each chamber is opened and supplied with air, to make it a burning chamber and generate carbonaceous gases, and is then supplied with wet fuel and closed, so as to heat and decompose such fuel before admitting air freely to it; that the chambers are thus supplied with wet fuel in succession; that this carrying out of the process by using two or more fire-chambers. with such a construction of apparatus .and flues as is shown in the drawings, will effect the most perfect combustion of the gases generated in the chambers, and enable a proper supply of heat to be yielded uninterruptedly; that the use of a single fire-chamber will not produce such a perfect result, nor an uninterrupted supply of heat, although an inferior result, within the principle, may be produced, by using a single fire-chamber, with several grates and ash-pits, and charging the several grates in succession, excluding the air from the charged grate, until the charge is in a condition for rapid combustion; that, by such use of wet fuel, fed into an intensely heated chamber, better results can be obtained than can be from an equal quantity of dry fuel; and that the principle of the operation is, that the products of the carbonaceous combustion in the rapid combustion chamber, being present with the gases arising from the decomposition of the wet fuel in the heating chamber will decompose the vapor of the water and cause it to yield up its oxygen, so that a perfeot combustion will be produced, without such a draft being used, as had ordinarily been employed for like fuel. All this is disclosed in the specification and drawings of the original patent, and is repeated in the specification of the reissue. The claims of the reissue are both of them fully warranted by what appeai-s in the specification and drawings of the original patent The inventor failed to claim, in his original patent, all that his original specification and drawings would have warranted him in then claiming.
It is also objected to the reissued patent of 1857, that as the patentee disclaims the arrangement of a series of fire-chambers to communicate with a common flue, irrespective of the purpose for which and the manner in which he employs such arrangement, he cannot lawfully claim the arrangement which he uses, when used for the purpose for which he employs it, and cannot lawfully claim it used in the manner in which he employs it. Fire-chambers in a series, communicating with a common flue, existed before. But, the patentee’s process was not carried out in any of such prior structures, nor was such common flue used as a mixing chamber in any of them. The first claim of the reissue is for a process carried into effect by an apparatus. The prior apparatus would not have enabled the patentee to work his new process, nor was such new process ever worked before in any apparatus. The second claim of the reissue is for an apparatus when employed to work a process, the apparatus and the process being both of them new with the patentee. It is not perceived how any tenable objection can be taken to the validity of either claim. The disclaimer does not admit that the patentee’s arrangement existed before, although he disclaims it ii’respective of the purpose and manner of his use of it.
Passing now to the patent of December,
The principle developed in the first claim of the reissue of 1857 is worked out in the furnace and method of procedure described in the patent of 1857, but the claims of the two patents are different. The claims of the patent of 1857 are for special constructions to work out more effectually the process of burning wet fuel discovered by Thompson, and made known in his original patent of 1855. The first furnace constructed by Thompson on his principle was built at Richmond, Virginia, in August, 1853, and was then and there used successfully in burning wet tan. In 1854, he built a furnace on this plan, at Weed’s tannery at Binghamton, New York. Others were built after its pattern at various places in New York, and the furnaces used by the defendants are traced, in their origin, to the furnace so built at Binghamton. It is very manifest, from the language of Thompson’s specifications, and from the testimony, that the form of apparatus shown by Thompson in his drawings and described, admits of many formal variations, within the principle of his inventions and the scope of his claims. Thus, a single furnace, with an upper chamber and a lower chamber, separated by a grate and sufficiently long to admit of two feed holes in the top, with a proper mixing chamber, and operated so as to produce, in such chamber, the mingling and consumption of the gases from the wet fuel in the upper chamber with the gases from carbonaceous combustion, would infringe the first claim of the reissue of 1857. Such a construction, with the lower chamber used for the combustion of dry carbonaceous fuel, and so operated as to cause the gases from both chambers to be continuously and simultaneously discharged into the mixing chamber, for mingling and mutual combustion, would infringe the first and third claims of the patent of 1857. A single furnace, with the grate between the upper and lower chambers so open as to allow the lower portion of the wet charge, as dried and charred, to fall through into the lower chamber, and keep a hot fire therein, the uncharred portion of the wet charge being supported by the grate, would infringe the second claim of the patent of 1857. So, also, various constructions of mixing chambers may be made, which would be substantial equivalents for the mixing chamber of the form and location shown by Thompson, and would be the mixing chamber of each of his two claims in the reissue of 1857, and of the first and third claims of his patent of 1S57.
It is satisfactorily shown, that the wet tan furnaces of the defendants, in their tanneries at Albion, Laporte, and Thorndale, which are the three proceeded against, infringe each of the patents. All of the claims of each patent are infringed by the furnaces at Albion and Laporte, and all except, perhaps, the second claim of the reissue of 1857, are infringed by the furnace at Thorndale.
The claims of the Thompson patents are none of them successfully attacked on the ground of a want of novelty. There is nothing in the Crockett furnace, or the Morrison furnace, or the Woodstock, Sparrowbush, or Newark furnaces, or any of the other American furnaces adduced in evidence, so far as such furnaces are shown to have existed in construction, or in description or drawings, before the dates of Thompson’s inventions, which destroys the novelty of those inventions. So far as such furnaces burned wet fuel successfully, before Thompson’s inventions, to what extent they did, they did so on different principles from those developed by him, and in structures arranged and operated in a manner not embraced in his claims. In regard to all the foreign patents and publications put in evidence, it is sufficient to say, that they none of them anticipate Thompson’s inventions. It is not an unimportant consideration, that both of his patents have been extended by the patent office, after, as there is every reason to believe, a full consideration of substantially everything, on the question of novelty, that is brought up in defence in this suit.
It is apparent, from the evidence, that Thompson was the first to discover and put in practice the true method of economically burning wet fuels, and obtaining from them better results than from equal quantities of dry fuels. In respect to the tanning business, tanners can, by his inventions, certainly obtain all the heat they need by the use of no other fuel than their spent tan, wet from the leaches. The combined resistance by them to his patents is a tribute to the merits of his inventions.
I have examined, with care, all the evidence taken in this case, and considered the views advanced by the counsel for the defendants, but I am unable to resist the conclusion that the plaintiffs have fully established their case.
As to the point, that the cause of action respecting the furnace at Albion arose in the northern district of New York, where that furnace is situated, the objection is one which may be voluntarily waived. The defendants in this case have waived it by not raising it in their answer.
There must be a decree for the plaintiffs, for a perpetual injunction, and on account, with costs.