79 F. 331 | 6th Cir. | 1897
having stated the case as above, delivered the opinion of the court.
The first of the questions presented by this record relates to the application of the rules of evidence in respect to the competency of proof of the prior and contemporaneous parol negotiations of the parties, for the purpose of affecting the construction of the contract. The competency of such evidence depends upon the nature of the proceeding and the purpose for which it is offered. If the proceeding is for the purpose of reforming the writing so that it shall truly express the intentions and purposes of the parties, such evidence is no doubt admissible, for in such a case the primary object is not to construe the contract, but to ascertain what the real contract was, to the end that, if the writing fails to express it, it may be reconstructed so that it shall do so. On the other hand, if the purpose of the suit; is to enforce a written contract, whereby the writing is accepted as it stands and admittedly expresses the intentions of the parties, the general and familiar rule applies that such prior and contemporaneous negotiations are not admissible to affect the construction of the writing. This rule is founded upon the presumption that the parties have gathered in and finally put in form the result of the negotiations, the obvious purpose of the writing being to express in a definite and authentic form their final conclusions. The general rule just stated does not, however, exclude proof of the facts and circumstances showing the situation of the subject-matter, and the relations of the parties thereto, or other facts and circumstances tending to throw light upon those subjects.
Coming, now, to the interpretation of the contract, it is contended on the part of the appellee that Bradley and Crocker, the parties of the first part in the contract, agreed to sell only such of their joint property as fell within the description of the subject of their grant, that no express mention was made therein of any individual property of either of them, and therefore that Bradley’s individual application did not pass. On the other hand, the appellants insist that the general language employed, when considered in the light of the evident purpose and the reasons of the parties actuating them, includes, not only the joint property of Bradley and Crocker of the kind described, but also the individual property of each of them of the same kind, by plain intendment. The court below held that the latter was the proper view to be taken of the question, and in that we concur. Undoubtedly, if there are in any such case no circumstances which would change the primary grammatical construction, the terms employed would support the appellee’s contention; but the grammatical rule raises only a prima facie presumption, and does not preclude the settling of the meaning by detracting somewhat from the exactness of the language in order to give effect to more cogent reasons of another sort. And the cases are very numerous in which this principle has been applied, and the plural language of the agreement has been held to cover and include the singular ajso. “If two persons have goods in jointure, and give all their goods, not only those they have in join: ture, but their several goods also, pass.” The substance of the rule is-stated in Go. Litt. 197a, and several cases are cited in the opinion of the court below in illustration and support of it. Justice Windham’s Case, 5 Coke, 7b; Wharton v. Fisher, 2 Serg. & R. 182; Williams v. Hadley, 21 Kan. 350; Judd v. Gibbs, 3 Gray, 539; Von Wettberg v. Carson, 44 Conn. 289; Coffin v. Douglass, 61 Tex. 406; Shoe Co. v. Ferrell, 68 Tex. 638, 5 S. W. 490; Bank v. Beede, 37 Minn. 527, 35 N. W. 435. The general rule above invoked is one which is applied also in the construction of statutes. Black, Interp. Laws, 154, and the instances there given.
' It is conceded by counsel for the appellee that the reference in another place in this contract to “applications for patents made by E. H. & A. H. Cowles” would include the application which
Much stress is laid by the appellee upon the fact that the contract of May 18,1885, did not. in terms enumerate as coming within the grant the Bradley application, notwithstanding that it had been brought to the notice of the Cowles Company by the reference t hereto in the Bindley and Crocker application, which was present at the time when the contract was made. This reference to the Bradley application was made for the purpose of stating the difference between that and the Bradley and Crocker application. In the reference, the general characteristic of the Bradley invention was stated, but: not the details; and it is now strenuously insisted that the omission of any special mention in the contract of the Bradley application, whose existence was known, in connection with the fact that the Bradley and Crocker application is specifically mentioned, furnishes strong evidence that it was not intended by the parties that the Bradley invention should pass; and this consideration appears to have had great weight with the court below in determining the construction which ought to be put. upon the. con tract.
Now, one of the applications of Cowles and Cowles, for a patent for improvement in electric smelting furnaces, which had been filed on February 24, 1885, was pending at the time of this contract. The details of the apparatus proposed by it were those suggested by their previous application, filed December 24, 1884, of which the one now mentioned was a divisional application. The claims were for combinations of such apparatus. After some changes in the specifications and claims, it was declared at the patent office to be ready for allowance on May 1, 1885, but it was at the same time declared that the case must, he withheld from issue, because of the fact that the main case was in interferencp with the Bradley and Crocker application. And a little later, on May 6th, this Cowles application was declared suspended, because of the following facts stated in a notice directed to Cowles and Cowles, which stated that; "the caveat of C. S. Bradley and B. F. Crocker, pending at the date of the filing of this application, is found to cover substantially the apparatus herein claimed; and, as provided by rule 196 the caveators have been notified to file a complete application. This application must be suspended in view of the above action.” This notification was mailed to Cowles and Oowles on May 7, 3885, and, by due course of mail, must have reached them a week or more previous to the date when the parties met and concluded the agreement of May 18th. And its previous reception was probably the reason for the mention of caveats as one of the class of things desired hv the Cowles in a letter written to Bradley and Crocker, May 11, 1885. The Cowles brothers must, therefore, have had quite as ample notice, not only of the existence of the caveat, but of its sub
The above-mentioned argument of the appellee appears to have had much weight with the court below in determining the proper construction to be put upon the contract; for, as we gather from the opinion there given, it was the main consideration upon which, the court held that the parties did not actually suppose that Bradley’s invention was included. 68 Fed. 368. It is probable that the condition of the case on the application of Cowles and Cowles of February 24, 1885, at the date of the contract, was not brought to the attention of the court, as no reference was made thereto in its opinion. The manner in which this caveat was dealt with in the contract confirms the impression which is strongly induced by the general and sweeping terms of the contract as a whole when construed in the light of existing facts, that impression being that it was the purpose of the parties to bring under the operation of the contract every existing thing in the nature of inventions and applications which might tend to defeat any of the Cowles inventions and applications. Again, it is urged that the reference to the Bradley application in that of Bradley and Crocker indicated to the Cowles brothers'that the Bradley invention was so far off from their own that it was of no importance for them to acquire it, but weido not think that such was the probability. On the contrary, we think that that reference bore on its face the signal of danger. It is stated that in that application Bradley had described "an electrometallurgical process in w;hich an electric current is employed to perform two functions: First, to effect an electrolytic disruption of the materials treated; and, second, to supply the heat necessary to maintain said materials in a fused state while they are being electrolyzed.” Now, to a man having the familiarity with the subject which the Cowles brothers possessed, it was apparent that this process contemplated an operation which in its nature essentially consisted of a transposition of the two operations mentioned in this reference; for'the material must first be fused before the electrolytic disruption could occur, that being necessarily a secondary effect. They knew that in their own applications for a similar process it had been stated that in some circumstances, depending upon the conductivity of the materials treated, no carbon or other independent material was employed as an agent in the operation, but the process was performed by the direct application of the current to the subject-matter to be reduced. It seems to us, therefore, that, if there is any inference to be derived from the probabilities
A point is made upon the descriptive words of the grant, “discoveries and inventions relating to electric smelting processes,” and the endeavor is to establish that Bradley’s process is not correctly described if we designate it as “electric smelting,” and therefore was not included. But we think it was an apt and proper description of it. It was performed by electricity, and that was the feature of if which distinguished it from the old methods of reducing ores. By using the current the ore was “smelted.” By the definitions of the dictionaries the word “smelting” is shown to he sometimes employed to signify simply “melting,” “fusing,” and sometimes, and more commonly in its 'practical sense, to mean the reduction of ores by melting them in the presence of some agent ■which would react upon the compounds of the ore when fused, and (hereby separate them. Such a reagent is carbon. But if in Bradley’s process the one agent performed both functions by melting and decomposing the ore, we can see no reason whatever for giving' it a name which should also indicate the secondary effect in the process any more than it was necessary in the old art to include it in the designation. The term “electric” sufficiently distinguished it from the older method, for in itself it carried the idea, of fusing and electrolyzing, both being its well-known functions. Because a different agency was employed to effect one of the things done in the operation would not alter the general character of the whole process, to which the comprehensive characterizing of “smelting” in the sense of “reduction” would fitly be applied.
The Bradley process was not less appropriately described as an electric smelting process than that of Siemens by the electric arc. At the hearing there was exhibited to ns the work of Dr. Urbanitzky, originally in German, entitled “Electricity in the Service of Man.” This was subsequently edited by Dr. Wormell, and was republished in English with an introduction by Perry, in 1886, at London and New York. In this work Siemens’ process is described as “electro-smelting.” The indications are quite strong that the court below was in error in supposing that even as early as 1885 the process of reducing metals by electricity was not denominated “electro-smelting.”
This' brings us to the question of the interpretation of the following language in the contract:
“And all applications now pending and caveats on file in the United States patent office relating to electric smelting processes and furnaces which do or may interfere with any application for patents made by Eugene H. Cowles and Alfred H. Cowles, of Cleveland, Ohio, now pending in the United States patent office.”
It is urged upon us that we should accept as a test in the construction of this language that the parties intended it to he em
The appellee contends that the words “which do or may interfere” have relation back to all of the preceding subjects of the grant, and include the words “discoveries and inventions.” On the other hand, the appellants contend that they refer only to the words immediately preceding, “and all applications now pending and caveats on file in the United States patent office relating to electric smelting processes and furnaces.” It must be confessed that the question is somewhat doubtful. In support of the appellants’ contention that it relates only to the immediately antecedent words, it may be observed that it was known that there were applications and a caveat of the other party on file in the patent office relating to the subject. They also had in mind that the Cowles brothers had applications there. These properties were, therefore, - of the same sort. And if we were to assume that the parties were dealing, as contended, “in the atmosphere of the patent office,” the language employed would be apt and technical to describe the things “which do or may interfere”,1 whereas, using the language in the meaning which it has in the patent office, it would be a bungling and unusual expression to speak of “discoveries and inventions” as interfering. But as we are not disposed to interpret this contract strictly in the way in which such terms would be employed in the patent office, for reasons which are elsewhere explained, we are inclined to think, upon consideration of the leading object which the parties had in view, which was to clear the way for their own inventions and applications, that the limiting words “which do or may interfere” were intended to apply to all of the things granted, which are mentioned in this paragraph, except perhaps the Bradley and Crocker application mentioned in the subsequent clause. For this reason it: becomes necessary to determine whether the Bradley application was one which did or might interfere with any of the Cowles applications.
We are not required to pass upon the validity of the patents involved in this suit, or of any of them. There is no issue of that kind before us, and we shall go no nearer to such a decision than the determination of the issue here made requires. The comparison of one patent with another, for the purpose of determining their substantial identity, is essentially one of a comparison of claims, though the specifications may be referred to, within limited bounds, for the purpose of construing the claims themselves. As we think that the contract in question must be deemed to refer to things as 1hey then existed, we think the comparison should be made of the specifications and claims made by the parties as they stood at that
In the claims as they originally stood, the third claimed simply “for a combination with the two electrodes placed at opposite sides of the furnace chamber of a mass of granular or pulverized material interposed between the same.” The sixth was “for a process which, consisted in pulverizing the ore and introducing.the pulverized ore in a dry state within the circuit of an electric current^ by means of which the ore is reduced.” These claims, however, were introduced before the amendments above referred to were made. Thus it will be seen that the specifications were of such a character as that it was competent, upon the basis of them, to claim the process of reducing metallic ores or compounds by bringing them between the électrodes of a dynamo-electrical machine, and passing through them the current, using carbon or not, as the character of the material made expedient. Whether such claims would be valid or not, it is not necessary here to inquire. Even before the making of the contract, such claims were in fact made in the applications; and there can be no question that the parties engaged in the purchase and sale of these inventions and applications, for the purpose of taking them out of the way, apprehended that such claims might properly be made and were tenable.
Referring, next, to the application of February 24, 1885, by the Cowles brothers, it is found to have been a divisional application, founded upon the one just considered. This was for so much of the invention stated in the original specifications as related to the apparatus. The matter of it is not very material to the present purpose, but it illus
Considering next the Bradley application of April 23, 1883. It is seen to have been for an electro-metallurgical process. The first step in the process which he described consisted in piling upon a hearth a heap of ore in the form of a truncated cone, malting a basin in tlie top of the heap. He then took the two electrodes connected with the wires running from the dynamo-electric machine, and, bringing them near together, plunged then into (be ore at the bottom of the basin, where, by reason of their proximity, an electric arc would be formed producing intense heal, and thereby melting the immediately adjacent material. As the ore melted, the electrodes were moved farther apart, whereupon the arc ceased, and the current, instead of passing between the lumps or granules of the material, passed through the mass which had become melted, whereby heat was generated serving to keep the mass molten; the result of which would be to melt down the other parts of the ore adjacent to that already melted, the electrolytic action of the current going on simultaneously after the initial fusion by the arc had been accomplished. Ac,cording to the idea of the inventor, the concurrent fusing of the mass and the electrolyzing of the same would be continued until the operation ceased. It was also suggested that the operation might be continuous, and only needed the addition of fresh ore. He also indicated in his specifications an advantage in thus fusing the ore within a
The patent founded upon the second of the divisional applications was, quoting the first claim therein, for: “(1) The process of obtaining metals from their ores or compounds consisting in passing an electric current through a fused portion of the ore or compound contained in an unfused body or heap of said ore or compound.” It was stated in the specifications that the body of unfused ore might either be formed into an uncoil fined pile, or in a box or tank lined with the ore itself, and it was stated that by adding to the mass of the ore the process might go on indefinitely. There is no mention of the initial fusing as one of the steps of the process, and there was an express exclusion of it in the statement preliminary to the claims. That process, including such initial fusing, was made the subject of another patent, which latter fact has been already shown by the reference to the patent which we have just previously considered. Nor is there any mention made in the first two claims of any electrolyzing process, unless it is to he implied as a result of passing the current-through the fused ore. These claims speak of the process being performed in the material contained “in an unfused body or heap of ore.” As the containing ore serves
Recurring to the situation of the applications of the several parties, it is impossible for us to hold that the Bradley patent was not or might not constitute an interference with any of the CoAvles applications. Without referring to all of the points upon Avhich collision might occur, and we think in fact existed, it will be sufficient to compare the applications of A. H. Cowles and its original claims with that of Bradley, as his application stood when the contract with which we are dealing was made. We have already pointed out the characteristics of these two applications. In each of them the process .consisted of reducing ores and 'metallic compounds by depositing the material to be treated between the electrodes of a dynamo-electrical machine, and passing therethrough the electric current.. After the initial fusing,—Avhich for the purposes of the comparison may be laid out of the case, because it was not made essential to the Bradley claims as they then stood,—the melted ore in the Bradley process between the poles became the same electrolyte as in the Cowles process, when the latter process was applied to ores or other materials possessing in themselves sufficient conductivity, and probably also when applied to ores or materials with which carbon or some equivalent substance would- be advantageously intermixed; because we are satisfied that in this ‘Cowles process, whenever the carbon should be employed, after the initial fusing the current would pass betAveen the electrodes in large measure through the fused ore by reason of the breaking up of the continuity of its paths through the carbon by the progressive destruction of the carbon and the gathering of the metal upon the surfaces of the granules, and because also the paths thus made would offer less resistance to the current than the surrounding mass of carbon and unfused ore; and more especially would this be so if the process was applied to the reduction of highly refractory ores, where the great heat to which the materials must be subjected Avould render the conductivity of the molten mass apnroximately that of the carbon, and thus the carbon and the material would become a homogeneous mass with respect to its conductivity. But, be that as it may, it is enough that with respect to the two processes they were not only alike, but identical, in some of their applications. It is said that there are no ores with respect to which the Cowles process would be a successfully operative one without the carbon. But, if the initial fusing be ignored, Bradley’s must be equally so.
Referring again to the first claim of the patent to A. H. Cowles, it is readily seen that it in fact includes the whole of Bradley’s process, initial fusing and all. “It consists in first bringing a limited quantity of the material to be treated betAveen a pair of electrodes.” He says, in his specifications, that at the start the electrodes are placed" near together. This is exactly what Bradley did, and for
Strenuous effort is made by counsel in behalf of appellee to demonstrate that the leading idea of the Cowles application consisted in the distinctive part of his process which' employed the use of carbon intermingled with the ore to serve as a resistance material to generate heat, or to act as a chemical reagent to absorb the extraneous compounds. We think it may be doubted whether this was so, being made, as it was, a contingent element in the process. But, assuming it to be so, it must be answered that, although it was the leading idea, that idea did not constitute the limits of his invention any more than Bradley's idea of initial fusing by the electric arc, or the use of the unfused body of the ore for a receptacle, or the electrolytical process of Bradley, constituted his invention. As a matter of fact, we have no doubt that Bradley’s leading idea was the apx»lication of the electrolytical agency of the current in Ms process: hut, if it were held that the other features of his invention were thus to be excluded, it would make havoc with most of the claims in his x>atents. And we are constrained to think that too much iupportance was attached in the court below to the results of the comx>arison of the siqqmsed leading ideas thus made. The efficiency of the electric current to break up and separate the chemical compounds of a fused mass of ore by maintaining the current through it is a faculty of the current itself, inherent and indivisible. Bradley’s idea of separating it from the factor itself, and exalting it into an independent element or step in his process, was a merely fanciful one. The actual process which he described necessarily involved it. just as the Cowles process also did. The process being the same in other regards, and all the conditions being substantially alike, the electrolyzing energies of the current would operate in a similar manner and produce the like results. Counsel for the apx»ellee states the plain truth when he says that “the passage of an electric current through a fused metallic compound is bound to produce electrolysis in amount proportional to the volume of the current passing.”
There is no room for distinguishing them in this respect. It was not necessary that Cowles should have known how the current acted in effecting the reduction, or what peculiar power or energy
Disregarding, then, the initial fusing, which Bradley himself disregarded in his original claims, and as well also in the claims in some of his patents; and disregarding the employment of the carbon resistance material, as Cowles did in some of his claims; and seeing also that electrolysis is not an element, but a mere incident, to one of the factors employed in both the Cowles and Bradley inventions,—we should find that their processes were not merely similar, but identical. But complete identity is not necessary. As was stated by Mr. Justice Curtis in Winans v. Denmead, 15 How. 330:
“If the machine complained of were a copy, in form, of the machine described in the specification, of course, it would be at once seen to be an infringement. It could be nothing else. It is only ingenious diversities of form and proportion, presenting the appearance of something unlike the thing patented, which give rise to questions; and the property of inventors would be valueless, if it were enough for the defendant to say: ‘Your improvement consisted in a change of form; you. describe and claim but one form; I have not taken that, and so have not infringed.’ ”
This was said in a case where the original patent was for a cylindrical ore body in a railroad car, where the structure held to infringe was hexagonal. But it is equally applicable to inventions for processes. The patentee is entitled to claim, hot only that which he precisely claims, but, where he claims for a combination or process embodying the use of certain elements, his claims will include such combinations and processes as adopt substantially the same means; where the variation is only such as common intelligence in that art would suggest. Incidental appliances in operating the substantial means invented would not prevent a second patented invention from infringing upon the first. The language of some of the Bradley claims is broad enough to admit the admixture of carbon, if his invention was a primary one, and the employment of carbon was a mere auxiliary of the current in effecting the reduction, according to the doctrine of Machine Co. v. Lancaster, 129 U. S. 263, 9 Sup. Ct. 299; Proctor v.
This record is not made up for the purpose of enabling the court to decide how far the Bradley invention advanced the prior art. If it was all he claimed for it, it first supplied the efficient means of reducing to the service of the public an agency of great power and value in a highly important industry. To such an invention the courts will give precedence according to its breadth, and will treat all modifications of it which involve only the exercise of the ordinary skill and learning of that art as comprehended in the invention. And having regard to the Bradley patents, it seems not too much to say that if the claims are valid for what they import, and so have priority in the field occupied by them, they would he entitled to a large privilege. The testimony before us shows that, when the Cowles brothers brought out their invention designed for a similar purpose, its novelty and importance were recognized by scientific and practical men, and it was made the theme of discussion and congratulation in learned societies.
The rule to which we have above adverted is illustrated by the well-known case of Tilghman v. Proctor, 102 U. S. 707, in which the patent alleged to have been infringed was for a process of obtaining fat acids and glycerine from fatty substances. In describing his process Tilghman had stated that it consisted of subjecting a mixture of fat and water in certain proportions to the action of heat and pressure. After deciding the patent to he valid, the court considered the defense of noninfringement. There were several grounds taken by the defendant in support of that defense, one of which was that the defendant added to the mixture of fat' and water from 4 to 7 per cent, of lime, which it was claimed stimulated the union of the elements in the mixture. This it was claimed distinguished their process from that of the complainant. But this contention did not prevail. The court, by Mr.'Justice Bradley, said:
“They use water in admixture with fat, heated to a high degree, far above the boiling point, and yet subjected to such pressure as to prevent the water .from being converted into steam: and though they may also use other things at the same time, which other things may facilitate the operation, or render a loss degree of heat necessary than would be required when water alone is used, and thus actually improve the process of Tilghman, yet this process is included in their operation, and forms the basis of it. It is idle, therefore, to say that they do not infringe Tilghman’s patent. It is unnecessary to determine what precise part, the lime used by the defendants plays in their process; whether, as the complainant contends, it saponifies the l'at to a certain extent, leaving the remainder to be acted upon by the water alone purely after the process of Tilghman; or whether, as the defendants contend, the lime produces a more perfect and active commixture of the fat and water, or predisposes the fat to unite with the requisite elements of'water necessary for producing glycerine and the fat acids. In either case, the process of Tilghman, modified or unmodified by the supposed improvement, underlies the operation performed in the defendant’s boilers.”
And in the case of fhe driven-well patent (Eames v. Andrews, 122 U. S. 40, 7 Sup. Ct. 1073), which was also for a process, there was a similar ruling. The suit was brought upon a reissued patent. One of the defenses was that the claim sued on was broadened in the re
“It does not follow, either from the amended or the original patent, that a driven well, according to the process described, may not he constructed and operated, notwithstanding in its construction some rock has to he penetrated. There may be a layer of rock on the surface. When this is removed or cut through, a driven well may then he constructed in the space thus uncovered from the obstruction. So, if a stratum of rock is met in the course of driving the rod or tube, that layer may he penetrated, not by driving the rod or tube through it, but by other usual means of boring and drilling. After it is passed, the rod or tube, having been inserted in the opening made through the rock, may then be driven in the usual manner through the remainder of its course until it reaches a water-bearing stratum of earth, as if no rock had been met in its passage.”
Taking the drawing accompanying the Cowles specifications, which illustrate not only the apparatus but by clear suggestion the process itself, it is evident that a person ordinarily skilled in the art would have no difficulty in constructing it upon the specifications of the Bradley application. There is a box or tank having a lining for the purpose of saving the walls from injury, the two electrodes running through the opposite sides of the box and made adjustable so that their extremities could be brought close together or moved apart as the requirements of the operation would indicate, and the material to be operated upon located between the electrodes and in contact therewith. The material might be ore and carbon mixed, as shown in the diagram, or it might be the material alone, according to its nature. It is an established rale, for the purpose of determining whether there is a substantial identity or equivalency of two inventions, that we may apply this test, and inquire whether the construction which is alleged to infringe may, by the skill of one conversant with the art, be built upon the specifications of the patent said to be infringed.
Something is sought to be inferred from the subsequent conduct of the parties to aid in the construction of the contract. Where the instrument is of dubious import, proof of this kind is receivable in order to show in what sense the parties understood it. But such proof is liable to open up a controversy in regard to what the conduct of the parties really was, and can only be resorted to when the contract, read in the light of surrounding facts, leaves the construction in doubt. But, if such doubt existed in the present case, the action of the parties here referred to gives nearly equal ground for opposite conclusions. It is urged that the Cowles Electric Smelting & Aluminum Company.