64 F. 125 | U.S. Circuit Court for the District of Northern Ohio | 1894
This is a bill to enjoin the infringement of a patent for a process of making aluminum by electrolysis, and to re
“And now comes the defendant, and files this, his amended motion for a rehearing in this case; and, for grounds for granting the same, the defendant states as follows, namely: (1) That, upon the original hearing of this cause upon the questions as to character and validity of the patent in suit, it was claimed and represented by the complainant that there was an important difference between the solution of the alumina in the fused cryolite bath under the patent in suit and the fusion of alumina with cryolite as a flux in electric smelting, and that the patent in suit was for the solution of alumina in the fused cryolite bath, and not for the fusion of alumina with cryolite as a flux in electric smelting, which representation and claim the defendant believed to be true, and was thereby led into the trying of the case on its part upon that basis, and to rely upon its right, in ease it should become necessary, to set up the process of electric smelting with the use of cryolite as a flux under electric smelting patents belonging to the defendant, as a standard of the comparison as to the cost of so manufacturing aluminum, as compared with the process under the patent in suit. That, upon the hearing in damages, the complainant objected to the introduction of evidence as to such comparative cost of manufacturing aluminum, upon the ground that the use of cryolite as a flux in electric smelting was the same as the solution in a fused cryolite bath under the patent in suit, and that all such testimony was thereupon stricken out by the court, and all further testimony on the subject was disallowed; that, by the means above set forth, the defendant was entirely deprived of the benefit of such testimony in any way. In law and justice, he is now entitled to the use of the same upon the questions as to the validity or scope of the patent in suit, and the infringement of the same by the defendant. (2) That the court erred in finding and holding that the testimony in the cause showed that alumina, was not dissolved in the cryolite bath of the soluble anode process to any appreciable amount, and also in finding and holding that the defendant operated said soluble anode process improperly and unfairly in respect to the soluble anodes being partly above and partly within the bath, and holding that the same should have been entirely immersed in the fused bath; whereas, in truth and in fact, it is the uniform custom in using anodes, whether soluble or otherwise, to place them*127 partly in and partly above the bath, as shown in the drawing's attached to the Hall and Bradley patents: and whereas, also, in fact, the alumina is or may bo dissolved in ample amounts in said soluble anode process in such fused bath of cryolite, — all of which the defendant can fully establish as clear and positive facts, and will do so, if allowed the opportunity, and that the defendant will also fully prove that as much alumina will be and is dissolved in such Tused bath in such soluble anode process whether anodes are entirely immersed as when used in the manner which the defendant used them. The defendant aslts that, upon the granting of such rehearing, the parties may be allowed to introduce all such further testimony as may be relevant, in such rehearing, and that the defendant may have leave to amend its answer accordingly.”
The ground of the first paragraph of the motion, as elucidated in the oral presentation of it, is peculiar. It is, in effect, that complainant’s counsel by their argument misled the defendant and its counsel into taking a wrong view' as to the issue of the cause; and now, having discovered the real issue to be something other than it was supposed to Tbe, defendant wishes to adduce more evidence and make further argument on the new issue heretofore successfully obscured and concealed from the defendant, its counsel, and the court by the ingenuity of complainant’s counsel. Defendant’s present counsel expressly disclaims ihe slightest intention to impeach the good faith or professional skill oí defendant’s former counsel, hut merely contends that in this case the arguments on behalf of complainant were so persistently sophistical and calculated to mislead that a serious mistake was made by the solicitors for defendant. The ground for the second paragraph of the motion is, in effect, that the court made an error in holding that the De Ville process for making aluminum by electrolysis was not an anticipation of the complainant’s process, which error it is proposed to show more fully by subsequent experiments made by the defendant, and now offered in evidence.
The rules which govern the court in granting a rehearing in a cause like this, after a full hearing and decree on the merits, are well settled. In Baker v. Whiting, 1 Story, 218, Fed. Cas. No. 786, Mr. Justice Story, in a full discussion of the subject, holds that a rehearing for the purpose of admitting new evidence can only he granted when it would he granted on a bill of review after final decree. In Purcell v. Miner, 4 Wall. 519, the supreme court quote, and follow Lord Chancellor Bacon’s rule with reference to a hill of review:
“No bill of review shall be admitted except it contain either error in law appearing In the body of the decree, without further examination of matters in fact, or some new matter which hath arisen any time after the decree, and not on any new proof which might have been used in the decree so made. Nevertheless, upon new proof that is come to light after the decree was made, which could not possibly have been used at the lime when the decree passed, a bill or review may be granted by the special license of the court, a.nd not otherwise.”
See, also, City of Omaha v. Redick, 63 Fed. 1-6.
It is not claimed by counsel for the defendant that the new evidence sought to be put in is evidence which could not have been brought before the court by due diligence at the original hearing. By the rule quoted, therefore, the motion fails to present a case for
A full description of Hall’s process is given in the opinion of the court already filed. To state it shortly, the double fluoride of sodium and aluminum is placed in a crucible lined with carbon, and heated to a state of fusion. The poles of an electric dynamo are connected with this bath. The negative pole connects with the carbon lining of the crucible, and makes that the cathode, while the positive pole is connected with a piece of carbon suspended over, and extending down into, the fused mass forming the anode. Alumina — -that is, the oxide of aluminum — is added to the double fluoride after fusion, and freely dissolves in it. An electric current of from four to six or seven volts is passed through the mass, causing the electrolysis or chemical disruption of the alumina into its constituents, — oxygen and the metal aluminum. The oxygen gathers at the anode, while the aluminum is deposited on the carbon lining of the crucible of the cathode, and is dipped out of the bath. The claim of the patent which was held to be infringed was as follows:
“As an improvement in the art of manufacturing aluminum, the herein-described process, which consists in dissolving alumina in a fused, hath, composed of the fluorides of aluminum and sodium, and then passing an electric current hy means of a carbonaceous anode through the fused mass, substantially as set forth.”
In this patent, Hall expressly disclaims any intention to make a claim for the apparatus. He seeks a monopoly only for the process. He maintains that his process was novel in two respects: First. In that he dissolved alumina in the fused double fluoride of sodium and aluminum as freely as sugar dissolves in water; that, until he discovered that alumina would thus freely dissolve in this bath, it had never been known. And, secondly, that no one had ever before succeeded in disrupting the constituent elements of alumina by an electric current. The defendant in the original hearing attempted to show by quotations from the works of a French chemist named De Ville that it was well known as far back as 1859 (27
•■If cryolite only dissolved one per cent, of its weight in alumina, Hall’s process would never have been beard of. Tbe difference between wliat Hall discovered and what was known before him in this regard is the difference between complete knowledge on a subject and so little as to be wholly useless and not to suggest further inquiry. It is impossible, if De Ville had any knowledge that alumina could be dissolved in cryolite, as Hall found, that he should not have made a note of it, for all the experts agree that he observed most carefully, and noted exactly all that he observed.”
But it is said that the court reached its conclusion as to the small per cent, of alumina which De Yille found cryolite would dissolve by inferring from De Yille’s writings and those of subsequent chemists that cryolite would dissolve about as much alumina as the fluoride of calcium (commonly called “flúor spar’’), and by assuming ihafc flúor spar would not dissolve more than 3 per cent, of alumina. It was in evidence at the hearing by one of defendant’s experts iha.t flúor spar would not dissolve more than 1 per cent, or 1|- per cent, of alumina. Evidence is now sought to be adduced to show that, by actual experiment, flúor spar will dissolve 25 per cent, in its own weight of alumina. The person making the experiment was not submitted to cross-examination, and yet from his own statement it appears that the result was only obtained after the application of a very high, degree of heat, and was a surprise to the operator in whose first experiment but 44 per cent, was dissolved. The statement of defendant’s expert in the evidence at the hearing showed what was then known concerning ike solubility of alumina in flúor spar. The matter was only important in the construction of De Yille’s language, and as, in the art, it was supposed that flúor spar dissolved but a small per cent, of alumina, (¡ven down to the time when defendant’s witness testified, it is entirely irrelevant and immaterial what subsequent experiments have developed. Another standard of comparison suggested by De Yille’s description of his experiment was the solubility of alumina in fluoride of sodium, which lie used often for the same purpose as the cryolite. Tlmt will dissolve even less than 1 per cent., as defendant’s witness testified; and it is not now proposed to show this to be a mistake. The evidence which has been introduced by the defendant consists of the deposition of another expert and further quotations from De Ville’s works and from subsequent chemists. Everything which has been shown is carried back to the process for making aluminum by chemical reactions discovered by De Ville, and which was the only practical process until Hall’s process by electrolysis was discovered to the world. The evidence is simply cumulative, and does not at all change the conclusion of the court with reference to its effect. Neither the Bradley nor the Cowles patents contain the slightest suggestion that cryolite should be used as a flux for the refractory alumina, and no evidence is sought to be introduced that any one ever actually used cryolite in furnaces for that purpose. ‘ The question presented by the defendant, therefore, is exactly the same as that which the court originally passed upon, and which was
This brings us to the second ground of the motion; namely, that the court erred in the view which it took of De Ville’s process of making aluminum by electrolysis. . The argument on this head is a mere restatement of the old arguments made on the original hearing, and deserves no further notice. The difference between the
The motion for a rehearing is denied.