46 F. 773 | U.S. Circuit Court for the District of Maryland | 1891
The complainant corporation is the owner of patent No. 841,355” granted May 4,1886, to Solter, Robbins & Sheppard, for “Prepared cereals, and mode of production.” The claims are as follows:
“(1) The hereinbefore described process of heating cereals in the form of hominy or samp, consisting, first, in cooking the product in a moistened condition to a point at which it still retains the granular form, then passing the same, in its moist condition, through a grinding-mill, and finally drying it substantially as described.
“(2) The hereinbefore described product from Indian corn, consisting of separate grains, in a stringy or coralline form, and cooked and dried condition, substantially as described.”
In their specifications the patentees described their method of cooking the broken grains of samp or hominy, the object being to reduce them to a softened but tough condition, each granule separate from the others, and retaining its form, and not reduced to a mush.. They then explain that they have discovered that these tough, softened granules, cooked and softened as described by them, if put through a mill of metal or grooved stones, will come out, not as a meal, but each granule as a distinct piece, of a stringy or coralline form, which is rough, light, and porous, and easily dissolved, and which keeps well if dry, and is useful for various purposes, particularly for brewing. The specifications state that the grains of samp or hominy, prior t,o this discovery, had been softened
So far as the testimony discloses, the result obtained by the patentees was new. Many patents for the treatment of Indian corn and other cereals, and their preparation for use, have been put in evidence, but none of them of date prior to the complainant’s patent describe a production similar to the coralline of this patent. Most of them produce some form of meal, others flattened disks or flakes, others interlaced fibers, formed by forcing the material through a perforated plate, and others a product formed of a pasty mass run into molds. So far as the testimony discloses, it was the discovery of Solter and Robbins that .hulled and broken corn, usually known as “samp” or “hominy,” could be so cooked and passed through a mill that it would come out neither as a paste nor as a meal, but in elongated curled granules, having certain distinctive qualities, which make the product useful and commercially profitable. Immediately upon their discovery, Solter and-Robbins, together with Sheppard, to whom they had assigned an interest in the patent, proceeded to manufacture coralline, and have ever since had for it a considerable sale. Their first experiments had been with an iron disk mill, which they found discolored the product. They soon substituted a burr mill, revolving at a high speed of about 1,050 revolutions a minute. With this mill it was found that the friction caused so great a heat that the warm, wet material which went into the hopper came out of the mill as coralline, accompanied by steam, and so hot that it could not at once be held in the closed hand, and in such a state that mere cooling, exposed to the air, more especially as it was found that it had to be fanned or winnowed to get rid of the fine mealy portions, was quite sufficient to dry it. They therefore dispensed with the steam-drier, which had been necessary when they used the iron mill. Some time in the summer of 1889 the defendant, having employed Sheppard, who had sold out his interest in the complainants’ business and patent, and having employed others who had been in the coralline mill of complainants, began the. manufacture of an article he called “Barlyne.” This is the same product as coralline, manufactured precisely as it is manufactured by the complainants, except that there is sometimes added to the hominy a small percentage of rye, wheat, and barley, but not always, as they sometimes use pure corn. The addition of this very sma.ll quantity of other grain is shown not to affect the product in any perceptible way, and other testimony showing an intention to use the complainant’s process, to employ their workmen familiar with it, and to compete with the same customers, produces the conviction that the addition of the other grains is not a substantial difference. The respondent relies very earn
The point of greatest difficulty raised by the defense is the want of pat-entability in the patented process. I have considered this difficulty with care. The complainants have in their favor the presumption which their patent gives them. They have in their favor the fact that their process has produced an article which appears from the testimony not to have been intentionally produced before, and which, now that it is known, is of commercial value, and the respondent, because of that commercial value, has set to work to manufacture by the same process. It is true that hulled corn, treated substantially as the complainants’ process describes, had been flattened into flakes, and mashed through perforated plates into threads. It is probably true that corn, treated in ways different from complainants’ process, has been either intentionally or accidentally curled by running through mill-stones into coralline shapes. But in no patent cited, and in no process testified to by any witness, does it appear that the several steps of hulling, moistening, cooking by
It is also urged against the complainant’s patent that the statement therein that the separate grains of hominy remain separate in passing through the mill, and each comes out as a separate piece of coralline, is not a fact. It is claimed that the fact is that the hominy is really ground into a paste, which is curled up in the grooves of the stones, and thrown off in broken pieces of a stringy coralline form. It does not seem to me that this is a matter essential to any step in the process. No one does know just what takes place between the rapidly revolving stones. It does appear to be a fact that the size of the pieces of coralline has some relation to the size of' the granules of hominy, and the inference is, that, as the material does not come out either as lumps of paste or as meal, each piece of coralline is the product of a granule of the hominy. But this is not essential to the process or the result. It is not a fraudulent or deceptive statement, or one of importance, so far as the process is concerned. It might, perhaps, be of importance, as affecting the second claim of the patent, which is for the product, and which is described as consisting of separate grains, in a stringy or coralline form, substantially as described. But in my opinion the complainants’ product, independently of the process of making it; cannot be supported as for a new composition of matter, or a new substance not before known. Commercially speaking, it may be a new article of manufacture, but it is, after all, only an improved preparation of Indian corn, with the same characteristics and qualities as other similar preparations. It may be less liable to spoil, more porous, more easily soluble; it may unite more readily with the diastase of malt, — but these are not new and peculiar qualities; they are only the same qualities in an improved degree, which are inherent in other preparations of the same substance.
In my judgment, the second claim of the patent is invalid, but the first claim is valid, and the respondent has infringed it.