American Wood-Paper Co. v. Fibre Disintegrating Co.

Mi’. Justice STRONG delivered the opinion of the court. Though the two reissued patents (Nos. 1448 and 1449 * ) were granted on the same day and to the same patentees, and though they are both substitutes for the one original patent granted July 18th, 1854, antedated August 19th, 1858, they are to be carefully distinguished one from the other. The first (No. 1448) is a patent for a product or a manufacture, and not for any process by which the product may be obtained. The second (No. 1449) is for a process and not for its product. It is quite obvious that a manufacture, or a product of a process, may be no novelty, while, at the same time, the process or agency by which it is produced may be both new and useful—a great improvement on any previously known process, and, therefore, patentable as such. And it is equally clear, in eases of chemical inventions, that when, as in the present case, the manufacture claimed as novel is not a new composition of matter, but an extract obtained by the decomposition or disintegration of material substances, it cannot be of importance from what it has been extracted. There are mauy things well known and valuable in medicine or in the arts which may be extracted from divers substances. But the extract is the same, no matter from what it has been taken. A process to obtain it from a subject from which it has never been taken may be the creature of inven *594 tion, but the thing itself when obtained cannot be called a new manufacture. It may have been in existence and in common use before the new means of obtaining it was invented, and possibly before it was known that it could be extracted from the subject to which the new process is applied. Thus, if one should discover a mode or contrive a process by which prussic acid could be obtained from a subject in which it is not now known to exist, he might have a patent for his process, but not for prussic acid. If, then, the Watt & Burgess patent for a product is sustainable it must be because the product claimed, namely, “a pulp suitable for the manufacture of paper, made from wood or other vegetable substances,” was unknown prior to their alleged invention. But we think it is shown satisfactorily that it had been produced and used in the manufacture of paper long before 1853, the year in which the original patent of Watt & Burgess was dated. It is insisted, however, that the paper-pulp which had been produced before the invention of Watt & Burgess was not pure cellulose, that it was only approximately pure, and from this it is argued that the pure article obtained from wood by their process is a different and new product, or manufacture. Whether a slight difference in the degree of purity of an article produced by several processes justifies denominating the products different manufactures, so that different patents may be obtained for each, may well be doubted, and it is not necessary to decide. The product of the complainants’ patent is a pulp suitable for the manufacture of paper, and, confessedly, to make white paper it requires bleaching. The pulp which bad been obtained by others from rags in large quantities, and from straw, wood, and other vegetable substances to a lesser extent, was undeniably also cellulose, suitable for manufacturing paper, and, so far as appears, equally suitable. The substance of the products, therefore, was the same, and so were their uses. The design and the end of .their production was the same, no matter how or from what they were produced. It is freely admitted that the patent of an originator of a *595 complete and successful invention cannot be avoided by proof of any number of incomplete and imperfect experiments made by others at an earlier date. This is true, though the experimenters may have had the idea of the invention, and may have made partially successful efforts to embody it in a practical form. And though this doctrine has been more frequently asserted when patents for machines have been under consideration, we see no reason why it should not be applied in cases arising upon patents for chemical products. But the doctrine has no applicability to the present case. What had been done before the Watt & Burgess invention was more than partially successful experimenting. A product or a manufacture had been obtained and had been used in the arts, á manufacture which was the same in kind and in substance, and fitted for the same uses as the article of which the complainants now claim a monopoly. That this manufacture may have been the product of one or more different processes is, as we have said, quite immaterial in considering the question whether it is the same as that produced by the complainants. It has -been, however, argued that the product of the complainants’ process and the product claimed as a new manufacture is cellulose, of the proper consistency and dimensions, and with a fibre of a proper length for immediate felting into paper, while the cellulose obtained from rags or wood, or other vegetable substances, by other processes than that of the Watt & Burgess patent, had a longer fibre, and required, in addition to chemical agency, mechanical treatment to prepare it for use in paper making. Hence, it is inferred the product is a different one, that it is properly denominated a new manufacture, and that it was patentable as such. This argument rests upon a comparison of the finished product of the complainants with an article in an intermediate stage, and while undergoing treatment preparatory to its completion. It may be quite true that at some stage of its preparation the paper-pulp made and used before 1853 was not of the proper consistency for paper making, or that *596 its fibre was too long, and that it required additional manipulation to fit it for use. But when it had received that treatment, its fibres were reduced to the proper length, and it became capable of all the uses to which it is claimed the product of the complainants is adapted. It is with the finished article that the comparison must be made, aud, being thus made, we are of opinion that no substantial difference is discoverable. It may be that if the cellulose which had been produced prior to 1853, of such form and with such properties that it’ could be at once felted into paper, had been only a chemical preparation in the laboratory or museum of scientific men, and had not been introduced to the public, the Watt & Burgess product might have been patented as a new manufacture. Such appears to be the doctrine asserted in some English cases, and particularly in Young v. Fernie. * In that case, Vice-Chaucellor Stuart remarked upon a distinction between the discoveries of a merely scientific chemist, and of a practical manufacturer who invents the means of producing in abundance, suitable for economical and commercial purposes, that which previously existed as a beautiful item in the cabinets of men of science. “ What the law looks to,” said he, “ is the inventor and discoverer who finds out and introduces a manufacture which supplies the market for useful and economical purposes with an article which was previously little more than the ornament of a museum.” But this is no such case. Paper-pulp obtained from various vegetable substances was iu common use before the original patent was granted to Watt & Burgess, and whatever may be said of their process for obtaining it, the product was in no sense new. The reissued patent, No. 1448, is, therefore, void for want of novelty in the manufacture patented. The reissue, 1449, is for a process to obtain pulp from wood or other vegetable substances for the manufacture of paper. It consists in boiling the wood'under pressure in a *597 solution of caustic alkali, with such an adjustment of the strength of the solution, of the pressure, and of the time of boiling as to produce the pulp ready for washing and bleaching at a single operation. It is in the main, if not entirely, a chemical process, and it differs from all processes for obtaining paper-pulp known before 1853, when the original patent to Watt & Burgess was dated, in this particular,—that it produces the pulp ready for bleaching or for use in a single operation. In all processes prior to that date, successive operations were necessary in order to obtain a pulp fitted for use in making paper. These were in part mechanical, sometimes wholly so. In some cases the vegetable substances had been boiled in alkalies in open or closed boilers, under pressure, or without pressure. To this treatment, disintegration by mechanical means was added, and in no case had a suitable pulp been produced by chemical agency and in a single stage of treatment. It must then be admitted that the process described in this reissue was unknown before 1853, and.if then invented by Watt & Burgess, it was patentable to them. Whether it was in fact patented to them is another question. It is, we think, fairly established by the testimony of Hugh Burgess, one of the original patentees, that in 1851 or 1852, he produced a good pulp by boiling wood in a caustic alkali at a high pressure. The witness does not, however, state that this production was the result of a single process. His description of his experiments, as given in his testimony, is ver}- significant. * What he there swears to does not look at all like the production of pulp by a single operation, nor does it intimate an}’’ discovery of a process by which it could be effected. Such an idea seems not then to have been in the mind of the inventor. And when the schedule to the English patent, dated August, 1853, was prepared, it described a process, consisting of several stages. In that wood shavings were first boiled in caustic alkali of the strength indicated by about twelve of the English hydrometer. This process, the specification stated, was much *598 better performed under pressure, and after the wood had been boiled about twenty-four hours it was to be well washed and squeezed to remove the alkali. The wood was then placed upon racks in a chamber and exposed to the action of chlorine, or any of the compounds of chlorine with oxygen. When sufficiently acted upon by the chlorine it was to be removed and washed, and then subjected to the action of a weak solution of caustic alkali. Only then, after these successive stages, was a pulp produced ready for bleaching. The specification of this patent is the same as that of the first American patent, dated July 18th, 1854, but antedated August 19th, 1853, to correspond with the English one. If it contains the germ of the process described and claimed in the reissue 1449, it is too evident to admit of doubt there was then in the mind of the patentees no finished conception of such a process. What they contemplated was a series of manipulations. Boiling under pressure, though preferred, was not stated to be essential. No graduation of the strength of the alkali was described. No degree of pressure was named, and no variation of the time of treatment. These are all-important to the production of pulp in one operation. Undeniably three successive stages of operation were described in the specification, three distinct processes, not employed contemporaneously, but following each other in order of time. And this succession in the order mentioned was considered by the patentees as essential, in fact it was claimed as their invention. In support of their application for the original American patent it was argued on their behalf that “ their invention relates to a series or combination of processes, in the order in which they are stated, for treating shavings, &c.” * The several processes and their order was then stated. An “order and series of processes” is what, according to the statement made in support of their application, “ constituted their invention, and what they supposed they had embodied in their claim.” And the claim of the *599 patent was for the treatment of wood shavings bjT chemical agencies “in the order substantially as described.” How, then, is it possible to maintain that a process to obtain pulp by chemical action in a single operation had been invented by the patentees when their first patent was granted ? And what is of more importance, how is it possible to hold that such an invention was patented to them ? We find no satisfactory evidence that the idea of a single-stage process was ever conceived by Watt & Burgess until after a patent disclosing it was granted to Marie Amedée Charles Mellier on the 26th day of May, 1857. This was before the surrender of their original patent, and before the reissue. And if Watt & Burgess had not invented the single-stage process, when their original patent was granted, the reissue 1449 is for a different invention from that described or referred to in the original patent; and such is the testimony of the experts who have been examined in this case. But the testimony of the experts is not needed. It appears on the face of the reissue that it is for a different invention, for the reissue is attempted to be sustained only on the ground that it is for a single-stage process. Both the reissues, therefore, we think, are void. We proceed next to consider the two boiler patents granted to Morris L. Keen. The first of these, dated September 18th, 1859, * is for a boiler for boiling under pressure wood and ligneous materials for making paper-pulp,- constructed with an expansion-chamber, stirrers, and discharge valve or cock, arranged for the purpose and in the manner substantially as stated in the specification. Such was the claim of the patentee. The invention claimed is, therefore, a combination, in a specified manner, of an expansion-chamber, stirrers of a peculiar construction, and a discharge valve in a boiler, and the purposes avowed are to keep the stock boiled covered with the liquid used, to give it motion in order to insure its being properly boiled throughout, and to blow it *600 out in a pulpy state when it has been sufficiently boiled. In the arrangement of the constituents of the combination for the accomplishment of these purposes, the expansion, chamber is provided with an aperture through which the boiler is charged. The stirrers are two in number, the shafts of which are placed vertically toward the sides of the boilers, and provided with arms on one side only, in order that they may.be turned toward the periphery of the boiler when it is to be charged, so as not to be in the way of the material thrown in. That the stirrers constructed and arranged substantially as described wei*e a material part of the combination is certain, and we think it has not been proved that they were used by the defendants. It is true that the extent of the use, if there was any, is immaterial. A single instance of using the combination would have amounted to infringement, and would have entitled the complainants to a decree. But .the defendants never employed two stirrers, nor even one constructed with arms only on one side, capable of being turned outward when the boiler was charged, so as not to be in the way of the charge or an impediment to the discharge. The novelty in the arrangement, so far as it relates to the stirrers, is in their construction and location, with a view to remedy this difficulty. There is evidence that the defendants did for a time use an ordinary stirrer, a single shaft in the centre of the boiler, provided with four blades, in form like the blades of a propeller. Arranged as it was, directly under the expansion-chamber, and under the supply aperture, it was, of course, an obstruction to the material with which the boiler was charged, and to the discharge of the pulp, and hence its use was abandoned either before or soon after this bill was filed. Regarding, as we must, the Keen patent as being for a combination of the devices mentioned, constructed and arranged as described in the specification, and for the purposes avowed, we think it must be held that the device employed by the defendants cannot be considered substantially the same as the peculiarly constructed and located stirrers of the patent. Ve think it evident that the novelty and usefulness of the Keen com *601 bination, so far as it relates to the stirrers, is in their construction and location, so as to avoid the obstruction to filling and discharging the boiler, which was caused' by the use of such an agitator as the defendants employed. We cannot, therefore, hold that this patent has been infringed by the defendants. They have not used all the constituents of the combination, nor employed any equivalent device which produces, or is calculated to produce, the same effects. It is true a witness for the complainants, not a mechanical expert, has testified that the boilers used in the factory of the defendants are substantially the same as those described and patented by Keen, and are operated and treated substantially in the same way. This was, no doubt, the opinion of the witness, but he has stated no facts that justify such an opinion. He has not undertaken to say that the central propeller of the defendants is substantially the same in operation or effect as the stirrers of the Keen patent. And all the mechanical experts who have been examined are of opinion that the defendants’ boiler does not infringe either of the Keen boiler patents. We are also of opinion that there has been no encroachment upon the second boiler patent, dated June 16th, 1868. * In that there are two claims. . The first is “ a boiler provided with a perforated diaphragm and well, or their substantial equivalents, arranged in the manner and l'or the purpose described” (in the specification). The second is, “in combination with the boiler, the arrangement of the discharge-pipe and valve, for the purpose of blowing out or discharging the contents of the boiler under pressure, substantially ás and for the purpose set forth” (in the specification). The invention relates to boilers in the interior of which a perforated diaphragm is. placed, and through which diaphragm the material for paper-pulp manufacture is to be charged into the cylinder. Its design is to prevent the falling of the material upon the diaphragm and choking its openings, and the means devised for achieving this are connecting the feed- *602 hole in the shell of the boiler with a man- or feed-hole through the diaphragm by a perforated well, or cylinder, so that the material can be charged through the well into the boiler without falling upon or clogging the diaphragm. As the defendants have not used a perforated well connecting a feed-hole in the shell with a man-hole in the diaphragm of the boiler, they are certainly guilty of no infringement of the first claim in this patent. They feed their boiler by means of a feed-hole below the diaphragm, not through it. Surely this is not a substantial equivalent for a cylindrical well from the top of the boiler through the diaphragm. Surely the patent was not intended to be for every possible means of supplying the boiler without clogging the interstices or perforations of the diaphragm. Had it been it would be void. But it is not for a result however obtained, it is for a mode of attaining a useful result. In such a case as this it cannot be maintained that because the result is the same the devices for obtaining it are not substantially different. It is argued, however, that the defendants have infringed upon the second claim of the patent, and they undoubtedly have if the mode of charging the boiler, and the devices by which the charging is accomplished, have no relation to the asserted invention. If it be true that the second claim means nothing more than the assertion of an exclusive right to discharge any boiler in the mode described in the specification, very clearly the defendants are trespassers. But is that the true construction of the claim? We think not. It is not the arrangement of the discharge-pipe and valve that the patentee claims,’but it is those devices in combination with the boiler particularly described in the specification, namely, a boiler containing near its upper end a perforated diaphragm, with an opening in its centre, and having a well connecting that opening with the feed-hole in the shell of the boiler. It may be quite true that the well and the mode of charging the boiler have no effect upon the mode of discharge, yet the claim is for a combination, of which the well is a part. Its language admits of no other construction. *603 Hence the defendants, not having used the well, they have not used the combination. These considerations lead to the conclusion that the appeal of The Americán Wood-Paper Company cannot be sustained. It remains to inquire whether the Mellier patent * is a valid one, and whether the defendants have been guilty of infringing it. Both these inquiries the Circuit Court answered in the affirmative, and consequently awarded an injunction against the defendants. It is from this part of the decree they have appealed. The difficulty of this part of the case lies in determining what was the invention of Mellier — the invention patented. The second claim of the patent (which is the only one asserted to have been infringed) is, to say the least of it, obscure. It is avowedly for a process, and a process described in the preceding specification. But what that process is which the patent describes, wherein consists its novelty and usefulness, it is not easy to define'. And it is not surprising that though ho less than three Circuit Courts have been called upon to construe the patent, a construction somewhat different has been given in each ease. In the court below the principle of the Mellier discovery was held to be this, namely, that the effect of a solution of pure caustic soda upon straw and such other fibrous materials could be increased by the use of it under pressure, at a temperature of not less than about 310° Fahrenheit, so as to result in the production of the nearly pure fibre without resort to any other chemical process, thereby saving both alkali and time. In the Circuit Court of Pennsylvania the discovery was, by oue of the judges, understood to be that the temperature and strength of the caustic alkali solution, and the duration of the boiling could in practice be so graduated and adjusted as to produce the pulp at oue operation. This construction of the specification was, in *604 effect, holding the invention to be substantially the same as that in the Watt & Burgess reissue No. 1449, already considered. But in Buchanan v. Howland * when the patent was presented for construction in the Northern District of New York, the principle of the discovery was held to be that the known effects of a solution of pure caustic soda, which had been previously used for boiling straw and other fibrous materials of a similar character and texture, in open vessels, in which the heat could be raised only to 212° Fahrenheit, might, by the use of a much higher degree of heat, not less than 310°, be advantageously and greatly increased, while at the same time the reduction of the materials to paper-pulp would be more economical, inasmuch as it dispensed with the large quantities of alkali which had been previously employed. This resembles the construction adopted in the court below, though not exactly the same. And such, we think, is the true construction of the specification, and the process described is, we think, an attempted embodiment of this principle. Undoubtedly the patentee in framing his process made use of known agents. The use of caustic alkali in reducing vegetable substances to paper-pulp was no novelty. Neither was boiling under pressure. But a process combining those things with a certain specified arrangement of the strength and quality of the alkaline solution, and a defined regulation of the heat and pressure, may well have been patentable if it had no other novel result than the production of paper-pulp more economically. In the specification the improvement claimed is declared to consist “ in subjecting straw or other fibrous materials to a pressure of at least seventy pounds on the square iuch when boiling such fibrous matters in a solution of caustic alkali.” Then follows a description of the mode in which the improvement is effected, in which not only is the minimum of pressure or heat described, but the strength of caustic alkali used is approximately defined. The heat is specified by *605 stating it as equivalent to at least seventy pounds on the square inch, internal pressure, on the boiler, and the strength of the alkali used is described as from two to three degrees of Baumé, or of a specific gravity of from 1.013 to 1.020. These are to be used together in a boiler where a steam gauge will render it possible to ascertain when the pressure has attained the required degree. A certain strength of alkaline solution, and a degree of heat, indicated by a minimum pressure, are essential elements in the process. The precise proportion of alkali used is not specified, but it is described as about sixteen per cent., that is, sixteen pounds to one hundred of the fibrous substance under process. The heat is described as that which is equivalent to at least seventy pounds internal pressure on the boiler, or, as the patentee says, equivalent to 310° Fahrenheit. Quite evidently by using the phrase “ internal pressure,” the patentee intended artificial pressure alone, that produced by the application of heat, and the measure of the heat. If so, the pressure, as measured by the steam-gauge, instead of being seventy pounds, is the weight of one atmosphere (14^) less, or 55j3v pounds. This was the opinion of the court below, and in that opinion we concur. That the patentee so understood it is manifest from the fact that he defined seventy pounds internal pressure on the boiler as being equal to about 310° of Fahrenheit. It is much more than equal to that temperature if the pressure is marked by the steam-gauge, unless the weight of the atmosphere be deducted. But if from it be deducted the weight of one atmosphere, the remainder (55T30) approximately corresponds with the temperature- named. Sixty pounds pressure exceeds 310° Fahrenheit, even with distilled water, and still more with an alkaline solution. It is, then, altogether probable the French tables of steam-pressures, recognized throughout the scientific world, were in the patentee’s mind. They start from a vacuum at zero, and make ordinary atmospheric* pressure 14,^ pounds, whereas safety valves and manometer gauges in this country are always graduated so as to express the pressure in pounds, exclusive of that of the atmosphere. *606 Mellier was a Frenchman and probably familiar with the French tables. Understanding the terras used in the specification thus, the elements of the process claimed are, 1st, the use of a solution of pure caustic soda (natrium and oxygen), from two to three degrees Baumé strong; and, 2d, boiling the materials to which the process is applied in the solution raised to a temperature of not less than 310° Fahrenheit, which, of course, implies the use of a close boiler. The preparation of the materials for the process is no part of it, nor is the subsequent washing and bleaching. The claim, it is true, in referring to the material to be treated, mentions only straw, but the object of the claim was to secure a monopoly of the process, not to enumerate the materials to which it might be applied. They had already been described in the specification, and there was no necessity for mentioning any of them in the claim. It is true the patent cannot be extended beyond the claim. That bounds the patentee’s right. But the claim in this case covers the whole process invented, and the complainants seek no enlargement of the process. Certainly the claim of the process ought not to be regarded as excluding all other substances than the one mentioned. As already noticed, the specification avows the object of the invention to be a process for treating straw and other vegetable fibrous materials requiring like treatment preparatory to the use of such fibres in the manufacture of paper. The subject to' be treated is fibrous materials of a vegetable nature. Arid it may well be doubted, in view of this general declaration of the object, whether there is anything that limits the scope of the invention to a process of treating straw and other like materials. The language of the patent is not “ straw and other like vegetable materials.” The specification speaks of “ straw or such other fibrous matters,” of “ straw or fibrous matters,” of* “ straw or fibrous substance,” “ straw or other fibrous material,” and it uses other similar forms of expression, but all of them clearly referring to fibrous materials requiring treatment like that required by straw for the pro *607 duction of paper-pulp. It would, therefore, in our opinion, be too narrow a construction of the patent to hold that it is for a process applicable only to straw or other similar vegetable substances, and not applicable to vegetable substances generally requiring like treatment for the uses mentioned. It remains only to inquire whether the defendants have infringed upon the complainants’ rights as thus defined, for no sufficient reason has been given to justify our holding the patent void. This part of the case presents real difficulty. If there has been any infringement it was very slight. Admitting that bamboo, which is the subject principally used by the defendants (though there is some evidence that straw was also used), is one of the vegetable fibrous materials to which the complainants have an exclusive right to apply their .process, does the evidence show that the process has been applied? Certainly it has not, unless in boiling bamboo or straw the minimum degree of heat and'pressure specified in the patent has been employed by the defendants in their treatment of vegetable substances. The evidence upon this subject is that while using an alkaline solution of less than 3J degrees Baumé the defendants have sometimes used an external pressure, as measured by the gauge, of from forty to sixty pounds, the latter being equivalent to an internal pressure of nearly seventy-five pounds, or a temperature above 310°. This may have been, and it probably was, only occasionally, but it was, nevertheless, an invasion of the monopoly. In regard to the strength of the solution of caustic alkali employed, there is evidence that the general strength was from two and a half to three degrees Baumé. Upon the whole, therefore, we have come to the same conclusions as those reached by the court below. Decree aeeirmed : each party to pay his own costs in this court. Footnotes [*] 10 Law Times Reports, 861. [*] Supra, pp. 587-590. [*] 2 Fisher, 341.