This is a suit for infringement of the first claim of letters patent No. 156,852, dated October 27, 1874, and issued to Smith Hyatt and John W. Hyatt for an “improvement in manufacturing solidified collodion.” The claim referred to is as follows: “(1) The process h'efein described'of manufacturing solidified Collodion by mixing pyro-xyline with a latent liquid solvent, which becomes active only upon the application of heat,-as and for the purposes set forth.” Upon the construction of this claim rests the determination of the case. The complainant insists that it covers liquid solvents which are active as respects the pyroxyline with which they are brought into actual contact, but are used with such a relatively large mass of pyroxyline that the mass will not be converted into solidified collodion at ordinary temperatures. The defendants contend that the claim must be restricted to such liquid solvents' only qs p'osses's no solvent powers' at ordinary temperatures, and which, when brought in contact with pyroxyline, remain perfectly inactive till the application of heat; heat alone being necessary to bring into activity their latent solvent powers.
The first question, úrea, to be decided is whether, under this patent, the activity or latency of a solvent is to be determined with reference solely to the power of the solvent itself, or with reference to the quantity of pyroxyline to which it is applied. Another patent for an improvement in the .manufacture of celluloid (No. 156,353) was taken out by the Hyatts on the same day as the one in suit. That patent was before' Judge Shipman, in Celluloid Manuf’g Co. v. American Zylonite Co., 26 Fed. Rep. 692. In his decision will be found a very full description of the state of the art prior to October 27,1874, and to restate it here Ayould be mere useless repetition. The following brief narrative of events, however, bears more particularly upon the point raised in this suit: In June, 1869, (No. 91,341,) the Hyatts patented an “improved method of making solid collodion,” the distinguishing feature of w'hich was the use of great pressure applied to a mixture of pyroxyline and solvent, and applied so quickly that the solvent was forced into contact with every particle of the pyroxyline before the dissolving process had time
In this reissue they omitted the words “in a powdered state,” struck' out their disclaimer of camphor made into a solution with alcohol, and added a new claim, viz.:
“(3) The method, substantially as herein described, of making solid collo-dion by subjecting a mixture of pyroxyline and a latent solvent to heat and pressure.”
They also amended the claim to the use of gum-camphor as follows-
“(1) The combination of pyroxyline with camphor-gum, or any equivalent converting agent, in such manner that the transforming action of the converting agent is kept latent, substantially as and for the purposes set forth. (2) The method, substantially as herein described, of developing the latent power of the converting agent by the application of heat to a mixture of pyroxyline and gum-camphor, or its equivalent,-for the purposes set forth.”
In this reissue the word “latent” is for the first time introduced into the art, although a deferred action of the solvent was quite clearly indicated in the patent of 1870, as originally issued.
Among the numerous exhibits which have been presented, covering so many different varieties of compound, there is none showing the mixture of this reissue, viz.,. one part by weight of powdered camphor, and two parts by weight of pyroxyline. No doubt/in view of the evidence, such an exhibit was deemed unnecessary. The powdered camphor in that mixture is truly and strictly a latent solvent. One of the complainant’s experts (Prof.' Chandler)'suggested that delicate experiments might show that there was some occult action between the components; but he ad
In September, 1874, the Ilyatts made application for the patent here sued upon, for “improvement in manufacturing solidified collodion,” No. 156,352, dated October 27, 1874. In the specification they stated that the object of their invention w'as to overcome certain objections involved in the use of liquid solvents. The objections and remedies are thus pointed out:
“Heretofore liquid solvents have been used in dissolving pyroxyline by first preparing the solvent, [for instance, ether and alcohol, nitro-benzol, etc.,] and then saturating the pyroxyline with the solvents. When the pyroxyline and such solvents are brought into contact, the transforming action of the solvent upon the pyroxyline commences at once, so that the portions of the pyroxy-line first exposed to the action of the solvent become first dissolved, and absorb an excess of the solvent during the mixing processes, and before the coá-' version of the entire mass of pyroxyline has taken place, thereby involving a waste of the solvent, and an increased expense of time and labor in the manufacture of large masses of the solidified product. This excess of solvent renders the compound soft, and the excess must be separated from the mass by! evaporation, or otherwise, before a solid and useful product can be obtained. We have overcome these objections by certain processes, for which we have obtained two several letters patent. The first method is that described in let- 1 ters patent No. 91,341, issued to us June 15, 1869, and consists in using the' smallest practicable proportion of a liquid solvent, and bringing it into con- • tact with every part of the pyroxyline by heavy pressure, securing thereby cheaper and better results than had been heretofore described. The second method is that described in our reissued letters patent No. 5,928, dated J une 23, 1874, in which a solid solvent is used, which is latent at ordinary temperatures, but which becomes active by the application of heat. This method permitting a mechanical mixture, with the pyroxyline of the solvent in the precise proportions required to produce a solid result, the solvent remaining latent or inactive, to suit the convenience of the operator, but becoming active when required by the application of heat and pressure.”
Having thus pointed out the objections to the old process, where solv- . ents were used'whose transforming action commenced at once, and which . were used in sucb excess that subsequent evaporation was necessary to. secure a solid product, and having indicated the improvements they had already patented, by one of which this -excessive use of solvents was ■' avoided and by the other of which a solvent (solid) was indicated whose’ transforming action did not commence at once upon mixture, but ré-
. “Our present improvement consists in transforming pyroxyline into solidified collodion or ‘ celluloid,’ by using a liquid instead of a solid solvent, which liquid solvent, like the solid, is latent at ordinary temperatures, but becomes active and dissolves the pyroxyline upon the application of heat. The following is a description of our improved process: ‘ We make a weak solution of camphor in alcohol, the proportions being, by weight, one part of camphor to eight parts of alcohol. This solution of camphor is not a solvent of py-roxyline at ordinary temperatures, and we therefore $erm it a latent liquid solvent; but it becomes an active solvent at an elevated temperature. There being differences, however, in the solubility of different grades of pyroxy-line, a corresponding change in the strength of the solution of camphor becomes necessary, which may readily be determined by experiment. [After the pyroxyline is reduced to a pulp, mixed with coloring matter, and the aqueous moisture expelled,] we'then add to the dried pyroxyline, or pyroxy-line compound, the above-described latent liquid solvent in about the proportion, by weight, of 50 parts of the solvent to 100 parts of the pyroxyline. The solvent is stirred into the pulp, and the whole kept in a closed vessel until the solvent becomes evenly diffused throughout the mass; no solvent action taking place to retard or prevent this even diffusion, as would be the case in the use of solvents that are active at ordinary temperatures. The compound is then subjected to heat and pressure in a similar manner to that employed when using the solid solvents,'described in our reissued letters patent 2STo. 5,928. Any liquid solvent of pyroxyline that is latent at an ordinary temperature, and that becomes active at a higher temperature, can be used as a substitute for camphor and alcohol in our improved process. The latent solvent may be combined with the pyroxyline without Srst reducing the py-roxyline to a pulp. In doing so we add the latent solvent to the pyroxyline, and, after allowing it to become diffused, preferably in a closed vessel, we develop the latent solvent, and complete the transformation of the pyroxy-line either in heated moulds, under pressure, or by passing the compound through heated rollers; in the latter case the heat developing the activity of the solvent, and the rollers compacting the compound. The coloring or other matter may also be added While the material is being masticated between the rollers, care being had to continue this masticating process until the component parts of the compound are thoroughly and evenly diffused throughout the mass.’ The solvent and pyroxyline may also be mixed, and the compound subjected to heat, in any other suitable manner than those above described. Furthermore, the subjecting of the compound to pressure during the transforming or converting process is not essential to the working of our process* although the manufacture of the completed. product is facilitated, and the cost thereof lessened, by the combined action of heat and pressure, as hereinbefore described.”
The claims made under this specification were:
“First. In the manufacture of solidified collodion, a liquid solvent that is latent at an ordinary temperature, but which becomes active as a solvent when the temperature is increased, substantially as hereinbefore set forth. Second. In the manufacture of solidified collodion, a solution of camphor and alcohol combined essentially in the proportions described, whereby the solution is latent as a solvent at ordinary temperatures, but becomes active and transforms the pyroxyline on the application of heat, as hereinbefore set forth.”
“Second. In the manufacture of solidified collodion the process of making a homogeneous mass by mixing pyroxyline with Ipartof camphor and 8 parts of alcohol, which forms a solvent that will remain latent at ordinary temperatures, and becomes active upon the application of heat, substantially as described.”
They also amended the first claim by inserting the word “only,” so as to read, as it does in the patent issued:
“ First. The process herein described of manufacturing solidified collodion by mixing pyroxyline with a latent liquid solvent, which becomes active only upon the application of heat, as and for the purposes set forth.”
They also addressed an argument to the commissioner of patents, October, 1874, pointing out that their invention consisted “in the employment of a liquid solvent of such composition and proportions that it is perfectly latent until the mass it is intended to solve is subjected to a certain degree of heat. The solvents described in the references are not liquid latent solvents, either by nature or in use, but are active, and perform their office immediately when brought in contact with the py-roxyline.” They refer to the specification as setting forth the difference in action and result between active and latent liquid solvents, and add that the camphor-alcohol solvent, disclaimed, is, “ like all others then known, 1 an.active agent,’ and will not effect the transformation in the manner sought to he covered by our present process. All other liquid solvents are active; that is, they perform their transforming function as soon as they are brought in contact with the pyroxyline. Our present latent liquid solvent does not effect the transformation of the pyroxyline by simple contact, but remains combined therewith, and perfectly inactive, until its power is commanded by the application of heat.”
Thereupon the patent was issued.
In view of the state of the art as set forth in Judge Shipman’s opinion, supra, and in this brief narrative of the circumstances under which the patent in suit was issued, what construction is to be placed upon the word “latent,” as used in the claim? The complainant, it will be remembered, insists that it should cover any liquid solvent which, though active as respects the pyroxyline with which it is brought in contact, is used with such a relatively large mass of pyroxyline that the mass will not be converted into solidified collodion at ordinary temperatures. So broad a construction does not seem to be warranted by the facts of this case.
First. The various improvements or modifications in the process of manufacturing solidified collodion which are disclosed in the earlier
Second. The ordinary meaning of the word “latent,” when used in the description of any substance possessing inherent power, would import that s.uch power was not manifested, — was hidden, concealed, not visible or apparent. It would not fairly describe a condition -where the power was in part displayed or manifested.
Third. The phraseology of the specifications imports some peculiarity in the liquid solvent itself. After describing the weak solution of camphor and alcohol, there appears this clause: “ T/m solution of camphor is not a solvent of pyroxyline at ordinary temperatures, and we therefore term it a latent liquid solvent.” If the present contention as to the meaning of the word “latent” is to be accepted, it would be difficult to conceive of any possible solution of camphor, or of anything else, which could not, with equal propriety, be called “latent.” If the discovery sought to be availed of was the possibility of arresting the action of any solvent by reducing the quantity of the solvent applied to the mass, it is very strange that language should have been used which imported the use of some peculiar solvent.
' Fourth. The word “latent” had a meaning in the art. It was first introduced in the reissue No. 5,928 as descriptive of the dry powdered camphor therein used. As pointed out, supra, the camphor, as used in that patent, remained inert, inactive, exerting no action upon the'py-roxyline with which it was mixed, not even commencing operations by dissolving small portions of it. To define such action, or, rather, such non-action, of the solid camphor-gum, the word “latent” was selected. Surely, an apt selection. Thereafter, when the word “latent” is used in the celluloid art without some qualification, it would naturally be understood to have the meaning given by the text of the patent in which it was first used, as illustrated by the process which that patent pointed out.
Fifth. The patent itself indicates that the word is used with that meaning. It refers to the reissue “in which a solid solvent is used, which is latent at ordinary temperatures,” and then prescribes the use of a liquid instead of a solid solvent, “which liquid solvent, like the solid, is latent at ordinary temperatures.” The language of the specifications and of the argument addressed to the commissioner of patents, which refers, to. their new solvent as one “perfectly latent” or “perfectly inactive,” seems to indicate quite clearly that the construction now contended- for was hot thought of when the patent was issued.
Seventh. It is urged by the complainants that the patent is not limited either as to the strength of the solvent to be used or as to the proportions in which it is to be combined with the pyroxyline; that two separate processes are provided for, — the one contemplating pressure in heated moulds, the other mastication under heated rollers; that the specific statement of ingredients and proportions refers only to the first method; and that for the second method the patent covers practically any ingredients in any proportions. The language of the specification warrants no such construction. It describes “a weak solution of camphor in alcohol, the proportion being, by weight, one part of camphor to eight parts of alcohol. This is the solution which the patentees say they make in their improved process, which they state is not a solvent at ordinary temperatures; which they therefore term a latent “liquid solvent.” The specification proceeds: “There being differences, however, in the solubility of different grades of pyroxyline, a corresponding change in the strength of the solution of camphor becomes necessary, which may readily be determined by experiment.’’ This provides for but a limited change. When abnormal pyroxyline is used, the solution of the patent is to be modified so far only as to give it the same strength, relatively, to me abnormal pyroxyline as the one to eight solution possesses relatively to normal pyroxyline.
The specification next provides for a reduction of the pyroxyline to a pulp, and its mixture “with the above-described latent liquid solvent in about the proportions by weight of 50 parts of the solvent to 100 parts of the pyroxyline;” the compound to be then subjected to the process of pressure in heated moulds. The specification proceeds: “Any liquid solvent of pyroxyline that is latent at an ordinary temperature, and that becomes active at a higher temperature, can be used as a substitute for camphor and alcohol in our improved process.” This surely is not, as complainants insist, a direction to those skilled in the art to use different proportions of camphor and alcohol, when completing the process under masticating rollers, as provided for in the next succeeding sentences of the patent. It is a general provision, applicable equally to the die and to the roller process, contemplating the discovery of some other liquid solvent than camphor and alcohol, which, like the special solution of the patent, might conduct itself “like the solid” when mechanically mixed with pyroxyline. Whenever “any latent liquid solvent” other than the solution of their improved process should come to light, the patentees in
The specification then proceeds as follows:
“The latent solvent \i. e., the one herein specifically described as one to eight camphor and alcohol, or as modified to meet modifications in th.e pyroxy-line, or 'any liquid solvent which is latent in the sense of the patent, and which can be used as a substitute for camphor and alcohol] may be combined with the pyroxyline without first reducing the pyroxyline to a pulp. In doing so we add the latent solvent to the pyroxyline, and, after allowing it to become diffused, preferably in a closed vessel, we develop the latent solvent, and complete the transformation of the pyroxyline either in heated moulds, under pressure, as in the previously described process, [£. e., the one where pyroxyline was first reduced to a pulp,] or bypassing the compound through heated rollers; in the latter-case the heat developing the activity of the solvent, and the rollers compacting the compound. ”
While this indicates that when the pyroxyline is not reduced to a pulp a process of mastication under heated rollers may be substituted for the pressure in heated moulds, it does not call for any change in the composition of the solvent wlien so used. The word “latent,” as used in the claim, thereforte, cannot be held to cover liquid solvents which are not, “like the solid, latent” at ordinary temperatures.
It only remains to determine whether the defendants infringe the first claim of the patent as thus construed. They do not use the 1 to 8 solution of camphor and alcohol, but one composed of 85 to 40 parts of camphor and 50 parts of wood alcohol. This, as complainants’ witnesses concede, is by no means a weak solution. This solution they mix with pyroxyline in the proportions of about 85 to 90 parts of solvent to 100 parts of pyroxyline. That such a solution is an active solvent of so much of the pyroxyline as it comes in contact with is practically not disputed; in fact it is one of the most active known. That it has acted upon such parts of the pyroxyline so as to break down their fibrous constitution, and produce, in combination with them, a jmllowish, semitransparent, glutihous' compound, which is neither pyroxyline nor camphor and alcohol, is the universal testimony of the exhibits. Nor does the witness McLaughlin substantially contradict this, for he says that “usually on the top of the batch that was soaked’it looked something like the sample, [Monroe experiment, No. l.]” As the defendants, therefore, use neither a weak solution of camphor and alcohol, nor mix it with pyroxjdine in the proportions specified, nor use any liquid solvent “which, like the solid, is latent at ordinary temperatures,” they cannot be held to infringe. Bill dismissed.