BADISCHE ANILIN
&;
SODA FABRIK V. KALLE.
16;;
in the drawings were used. Such a shoe would have the metal at its ends chill-hardened through ,the entire maSS'--'-the claim requires nothing more. That the claim is invalid,. unless the method of producing the chill, as shown and described, is imported into it is hardly disputed. It is insisted, however, that this may be done should be done. The claim would then read as follows: "A brake shoe having the metal at its extremities chill-hardened through the entire mass by means of the chill blocks G and H adapted to inclose the shoe at the ends on all sides exp-ept the top," etc.
H is argueil that such a chill box produces chill lines running both horizontally and vertically, thus preventing chill m'acks and intensifying the chill. Assuming that this contention is susceptible of proof the difficulty is that the claim is not for a method but for a shoe. So far as the proposition now under discussion is concerned, it is as if the specification were absolutely silent on the subject of chill blocks. The clainl permits the use of any chill blocks. Where the language of a claim is clear and simple there is no room for construction. The court is convinced that if the patentee has made an invention he has failed to claim it. No patentable novelty can be found in the claim as stated in the patent. The patentee might have claimed a process, he might have a novel chill block; but he has done neither. The court is, therefore, prohibited from giving him a patent limited to an article produced by means of an alleged ingenious device which is not even mentioned in the claim. Were the rule otherwise it would be a dangerous menace to public rights which might be destroyed, not by the patent emanating the patent office, but by a different patent subsequently granted by the court. Even were there more doubt as to the correctness of this conclusion the court would still be of the opinion that it is fo,r the interest of both parties that the question should be definitely settled before they are required to incur the large expense of preparing for a final hearing. The demurrer is allowed.
BADISCHE ANILIN & SODA F ABRIK v. KALLE et al. CQurt. S. D. Kew York. :.\Iay 8, 1899.)
1.
PATENTS-PRIOR USE Ii' FOREIGN COUNTRY.
Under Rev. St. § 4923, mere prior use in a foreign conntry does not defeat a patent where the patentee is ignorant thereof, and believes himself to be the first inventor. SAME-ANTICIPATION-PRIOR PUBLICATIONS.
2.
A description which is insufficient to support a patent cannot be relied upon as an anticipation. Unless the prior publication describes the invention in such full, clear, and intelligible terms as to enable persons skilled in the art to comprehend it, and reproduce the process or article claimed, without assistance from the patent, such publication is insuffident as an anticipation. SAME-EXTRINSIC EVIDENCE.
3.
Prior patents and publications alleged to anticipate must be taken in the meaning disclosed upon their face, and extrinsic evidence is not admissible to reconstruct them, as by showing that a word having a sensible meaning in the context was erroneously used for another word.
164 4. sA.MJl:......PATENTABLE PRflDUCTS.
5. S.aMlri.....1NVENTION.· ". TJ311 discovery that safraninQ-azo-naphthol, a coal-tar product, which was long believed to be insoluble, and valueless, was soluble by pi'olonged washing, so as to produce a cheap and valuable substitute for vegetable inq!go, Iwld to involve patentable invention. 1. SAME;-DECJSIONS BY FOREIGN COURTS. A ?ecision by the courts of a fore.lgn country that the discovery of a of patentable invention, while not certam. process involved the binding. on the courts of this country, is yet to weight as the opinions of trained experts In the country Of' the inventor where the part,icnlar art was best unde:rstood. ' 7. 'SAME-BI,UE COLORING MATTER. The .Julius patent,. No. 524,254, for improvements in the manufacture of blue coloring matter, whereby a newdyestul'f is prepared from safranlne·azo-naphthol, held vaIio and Infringed.
If,8< product be patentably new llJld useful, the patent should be sust!i'lned, even though 1:Jle article may be produced .by a process substantIallY; like those used to produce somewhat similar results in the pdor art.
Livingston Gifford, for complainant. E.N.Dickerson, for' defendants. COXE, District Judge. TIns is an equity suit for the infringement of letters patent, No. 524,254, granted August 7, 1894, to the complainant as of Paul Julius, of Ludwigshafen, Germany, for improvements in the manufacture of blue coloring matter. The parts of the specification relied on by the complainant are as follows: "The ultimate object of my Invention consists In a new lake that may be produc,ed as, a pigment or upon fiber. It resembles vegetable indigo in color and fastness against washing and light so nearly as to form an artificial substitute for the same such as has been solight ,for many years by chemist.'l. In arriving at this new lake I have made certain very essential intermediate diseoveries ,or inventions which I also desIre to secure by this patent. Thus I have· dIscovered and .recognized that a certaIn class of substance&----1safranlnebodles)-known as 'insoluble precIpitates' and regarded as worthless bodies, can be rendered soluble, and then constitute a most valuable dye, and I have proved thIs dIscovery by rendering them soluble (as hereinafter further explained) and have hereby enriched the dyeing industry with a cheap dye of most excellent properties, the application of which is founded on transforming it into the above said lake. · · · The compounds resulting from the combination of the safranine-diazo compoundB with the unsulphonated naphthols have been mentioned in chemical merature as insoluble preeipitates. They could not be applied in tM dyeIng industry and have since been disregarded and fallen into the rank of useless bodies and were not included in the said German patent. · · · Make a one' per cent. solution of safranine, taking one molecular proportion of the safranine used: say, about seven (T) parts of safranine T, or about six and three-fifths (6.6) parts of pheno-safranine, or about seven and seven-tenths (7.7) parts of dimethyl safranine. Diazotize by adding first a solution of sodium nitrite containing about one and fourtenths (1.4) parts of that salt, (one molecu!ltr proportion) and then twenty-three (23) parts of hydroehloric acid containIng about thirty-three per cent. real acid (HOI). The solution during these operations must be kept cold with ice and stirred. Next run the mixture into an ice-cold solution of about three (3) parts of naphthol-either alpha or beta--(one molecular proportion) in about one hundred and sIxty (160) parts of water and twenty-five (25) parts of caustir: soda solution, containing about thirty-five per cent. of sodium hydrate iNaOH), stir the mixture thoroughly for several hours, then filter off the blackish violet precipitate of safl'anine-azo-naphthol thus formed. Now wash well with cold water, prolonging this untiltbe liquor running off is deeply colored and shows' that a soluble product has reSUlted. The paste then remaining
BADISCHE ANILUi & SODA FABRIK V. KALLE.
165
on the filter can be used In dyeing as such or after making up to a standard strength. Or without washing so thoroughly, my new dyestuff can also be prepared In the form of paste, (In which form It best meets the requirements of dyers) as follows: Stir the azo body, obtained as above described, with a little water and mix gradually with hydrochlodc acid, until a test portion of the paste obtained is completely soluble in hot water. To prepare the ne'w dyestuff from the quantities of safranine described in the above example, about two and one-fifth (2.2) parts of hydrochloric acid, containing about thirty-three per cent. of real hydrochloric acid (Hel) may be used at this stage of the process. The paste so obtained contains my new dyestuff in the form of a salt and can be diluted or made up to a standard strength. Instead of hydrochloric acid other acids may be used, such as acetle acid, sulphuric, nitric, oxalic, and ta.rtaric acids, also salts which act as acids; but of these hydrochloric and acetic acids give the best results. * * * My new dyestuff, however prepared, is a soluble safranine-azo-naphthol body. It oerms in the dry form and in paste, and forms a dark-colored powder with a slight metallic sheen giving a violet-black paste. It is soluble in both hot and cold water giving violet to blue solutions, insoluble in alkalies, soluble in alc'ohol aIllI practically insoluble or very slightly soluble in benzene. The dye can readily be recognized by its behavior on treatment with reducing agents, for safranine and amido-naphthol occur in the reduction products. '['he dyestuffs which I desire to claim generically herein may be recognized as follows: If reducpd with stannous chloride and hydrochloric aeid, amido-naphthol is produced and can be recognized in any suitable well-known way. On careful and mOlIerate reduction with zinc dust and acc·tic acid the safranine used in the production is regenerated and shows tllP eharactl'ristic reactions of the members of the safranine series. * * * "I wHl now proceed to describe the new lal,e and the manner of obtaining it. ' "Example a.-Dissolve about twenty parts of my new dyestuff in the forin of powder (or the corresponding quantity of paste) in about two thousalHl pal'ts of hot water; allow to cool. * * * "Example b.-To obtain the lake on cotton fiber proceed as follows:-Take the freshly boiled-out goods, pass them six times through a boiling-hot solntion of sumac, and then leave them overnight in the liquid. Xext wring out" and pass about eight or ten times through a solution of antimony salt; wash well and wring out. Now fill the dye vat with the necessary quantity of \\';1' tel' and add the amount of aluminium sulphate mentioned below, then enter the goods and after passing them through the liquid once or twice, remove and wring them lightly by stretching. Add about one-eighth of the dye solution through a fine sieve, pass the goods again six times through the sotution, then removing them and stretching as before add again one-eighth of the dye solution, SUbsequently add a quarter of the dye solution and finally the remainder thereof. manipulating in the same way. * " * "The dyed goods are of a color resembling indigo, possess a degTee of fastness to light and washing exeeeding that obtainable with the ordinary aniline dyes and comparing adYantageously with indigo itself. The coloring matter may be applied so as not to bleed into the white."
The claims in controversy are as follows: "\1.) AI; an article of manufacture a eoloring matter lake resembling indigo
in eolor, whleh ean be obtained by combining a soluble safranine-azo-naphthol body with a tanno-metallic mordant l\'v1 which is very fast to light and washing; upon suitable reduction it the reaetions of safranine, upon treatment with caustic soda it shows the reaetions of tannin and it contains a metal, substantially as describf'd. "(2) As an arti":e vf manufacture, the herein-described blue dyeshlff whleh can be obtained from a safranine-azo-naphthol and whieh may be rf'eognized by the following eharacteristics: It is soluble in water, upon reduction with stannous chloride anel hydrochloric lIeid, amido-naphthol is produced and upon reduction with zinc dust lind acetic acid a safranine is produeed, substantially as described."
94
,
by ,tlle sl!.franinementiop.eJi. soluble iIi, water:)w.hicb possljsses the f.O.IlO".:Vlll.g. . ...Pl.. in. .. blackiSh-gre.en solutlon acid and, on red}lethm gives Rlld S/lfrallll\c, pl.'Ol)ler, all sub&tantial,ly, ,Ils .
blue coloring
defe)ls,es are that the patenfisvoid for lack of invention, that tpe that, properljr construed, the deinfringe. .' i , ..'. . ' , " ' The object of the inventor was to produce an artificial substitute for vegetable indigo which should resemble indigo in color and durability and:ttt:\:ie same time be cheaper and more easy of manipulawas belIeved to tion. Prior to the invention O,Wing to the alkali ,and salts therein, and be was consequently regarded 'as possessing .little practical value. The invention i consists in rendering thjs silbstancesoluble in water either by prolonged washingqrby nii4iAggradually wHh hydrochloric acid, acetic acid or other siniilar ac1ds or with saits which act as acids. In ,either event the product is a safranine.azo.naphthol body soluble in both hot and cold water and in alcohol, giving solutions varying in color from violet to qlue. Wb,en combined with . a tanno-metallie mordl,mtthis (';oluble substance pr<!duces a matter lake resembling indigo in color and which is very fast talight and washing. Was Julius the first to produce this product? or, to state the question still more narrowly, was he the first to reduce safranine-azo-naphthol to s,olubWty? fo.r,upon this discovery the entire irlvention rests.. Thp de jure date of the invention is January 2, 1892, being tbedate of the earliest foreign patent. Is the patent anticipated? Section 4886 of the Statutes provides that "any person'who has invented or discovered" any newllnd useful * * * manufacture or composition of matter, * **not known or used 'by otherS hi this country, and not ,patented or described in this or any foreign country, before his invention. or discovery thereof"'may ,obtain a patent. Section 4t123 provides:tliat"whenever it that a patentee, at the time of his ap}?lication for tbe'pa.tent believed biIllself to be the original and first invelltor or ·dhscoverer cif the thing patented, the .same shall not be held to be void on account of the invention or discovery, or any part thereof, having been known or used in a foreign country, before ordisco-yer;y thereof, if it bas not .peen patented or dehis scribed in printed As to prior use the law limits the inquiry to this country. A prior use in a foreign country will not defeat the patent. There is no proof that Julius knew of the facts upon which the alleged prior use in' Germany is based. 'fhe defense of anticipatibll,therefore, rests upon foreig:;} patents and publication['1 prior to Jannary 2, 189'2. ' Publications appearing sincE' that time cannot be, cbIrsidered by the couri:. . .' The bU'i-dell, of provingantiGipation rests upon the defendants and every reasonable doubt should be resolved against them. The Barbed·WirePatent, 143 U. 8. 275,284,12 Sup. Ct. 443,450; Coffin v. Ogden, 1SWall. 120. Unless th:epriorpubIication describes the invention in s1,lcb a full, clear and intelligible manner as to enable persons skilled ill the art to comprehend it and reproduce tIl(' processor article claimed, without assistance from the patent, the publication
a
BADISCHE ANILIN & SODA FABRIK V. KALLE.
16',
is insufficient as an anticipation. Cohn V,. COI"Set Co., 93 U. S. 366, 370; Seymour v. Osborne, 11 Wall. 516, 5,55; Tilghman v. Proctor, . 102 U. S. 707,711; Powder Co. v. Parker, 16 Blatchf. 295, Fed. Cas. 625; Bowers v. Bridge Co., 91 Fed. 381, 408In Tyler v. Boston, 7 Wall. 327, the patent contained the following statement: "The exact quantity of fusel oil which is necessary to produce the most desirable compound must be determined by experiment." The court says: "A discovery of a new substance by means of chemical combinations of known materials is empirical and discovered by experiment. ""here a patent is claimed for such a discovery it should state the component parts o·f the new manufacture claimed with clearness and precision, and not leave the person attempting to use the discovery to find it out 'by experiment.' "
See,also, Wood v. Underhill, 5 How. 1; Grant v. Raymond, 6 Pet. 218; Consolidated. Electric Light Co. v. Light Co., 16 ot. 75. A description which is insufficient to support a patent can hardly be relied on as an anticipation. In each instance the same predsion is required. If the alleged anticipating matter leaves the description incomplete requiring extrinsic investigation to make it complete it fails as an anticipation. The principal anticipation, at least the one that has provoked the widest discussion, is founded up0l/. an article which appeared in a Prench publication, the Scientifique, in Septlfmber, 1886, being, in fact, a reproduction of the application of Beyer & l{egel for a German patent for the "process for the preparation of blue coloriJ,lg matters by the combination of diazo-safranines with the phenols.'; 'I'he important parts of the specification are as follows: "Preparations of blue coloring matters by the combination of diazo-compounds of safranines, 011tained by the process (]escribed below, with the phenols and their sulfo-acids. "Description. "The new coloring matters which we have discovered are distinguished by their beautiful indigo-blue shade. "Vith a view of manufacturing these blues we have studied up to date the following safranines: "..t\.. Safrauines which are obtained by oxidation, etc. * * * "B. Safranines formed in the same reaction by substituting, etc. * · * "Example 1. 32.kiJol;rams of pheno-safrunine are dissolved in a sufficient quantity of water and 25 ldlograms of hydrochloric acid aee added. On adding 7 kilograms of nitrite of sodium, the diazo compound of pheno-safranine forms, which is made to run into a liquor containing 22 kilograms of beta-naphthol. The coloring matter forms at once. * * * "QUite analogous results are obtained with phenol, resorcine, alpha-naphthol or the other naphthol-mono-di, or trisulfo acids. "The follOWing table shows the shades 01' color given in clyeing with the new coloring matters prepared from the constituents as given: "Diazo-safran inc with: ";\Iolecule phenol: bordeaux, insoluble in water. " resorcin: violet, inso')u!lle in water. alpha"naphthol: blue, insoluble In water. beta-naphthol: blue violet, insoluble in water."
Here is direct statement that the product produced by following the Beyer & Kegel process is "im;oluble in water." \Yhen the claim of invention rests solely upon the discovery of solubility it is not eas,}' to perceive upon what principle of law or rule of logic an insoluble
91 FEDERAl;
,said to anticipate,a soluble, product. In 1892 Julius prodjJ.ced a sol11ple dyestuff, its chief merit being that it is soluble. In said they ha,dill,v,ent,,ed, a sim,ilar;in"soluble dyestuff. It is now asserted by the defendants that this;pnblishedstatement voids theconlplainant'spatent; ,that one skilled in the art, seeking in 1886 to produce a soluble product, would have learned how to do this frqlll a recipe which states on its fl\\?e that it produced an insoluble lJl'Oduct. ,But this is not the only: ,vplnel'able, feature of the Beyer & Kegel specification. It says the.,diazo-compound of pheno-safranine "is made. to run into a liquor containing 22 kilograms of beta-naphthoL" The specification is silent asto ho,\¥ this liquor is prepared and wliat are its ingredients. It is a liquor and it contains the betanaphthol. This is all; nothing else is told. Caustic soda is not mentioned, and yet, it is substantially conceded that solubility or insolubility' will result, depending upon the proportion 6f caustic soda employed, and that this fact was unknown at the time. \Ve have then a prior publication which purports to give a formula for producing an insoluble compound and which omits one of the most important steps, leaving a blank where proportions should be stated with accuracy. Can it be that such a publication anticipates a patent for a soluble product which gives with minute detail all the steps necessary to accomplish that result? Is this Moniteurpublication the concise and accurate statement which the law requires? Can it be said that it gives :to the skilled chemist that precise information which will enable him,wlthout experiment, to produce the dyestuff of the Julius patent? W'ould a chemist to-day, who knows nothing of, art except the Moniteur article and the publications whiclipreceded it, produce a product which infringes the claims of the Julius patent? T'o ask these questions is to answer them. The court is familiar with no authority deciding that a patent can be overthrown by a document, which, if its statements be true, is, concededly, not an anticipation; and which becomes valuable as a d fense only after its falsit.)' is establish.ed. The suggestion is thrown out by one of the witnesses that the statement that the Beyer & Kegel compound is "insoluble in water" is "a mistake, whether a printers error or error of the composer I cannot say." It is cQntended that the should have been "soluble in water." There is no proof to sustain this contention, but, assulUing it to. be true,it is wholly beside the mark. If prior patents and publica,tions can be reconstl'ucted by extrinsic evidence to fit the exigencies of the case, the inquiry will no longer be confined to what t:\lepublication c(}mmunicates to the public, but it ,,:ill be transferred to an endeavor to ascertain what its author intended to communicate. The question is, what does the prior publication say'! Not what it might have said or what it should have said. The court has simply to consider what the publication in question has contributed to the art. If it fails to show the invention which it is said to :al1ticipate" t.l;le contention that its author knew enough to write an anticipation and intended to do so' is grotesquely irrelevant. Were s.uch a rule ef3tablished the law ripon this subject would be thrown irito inextricable confusion. The court is inclined to the opinion that
the Moniteur publication is entirely consistent in its statements, needs no interpretation and is, upon its face, insufficient as an anticipation. But it is argued that if the blank in its recipe, which undoubtedly exists, were filled by an appeal to the prior art the resulting produd would be the product of the Julius patent. In other words, that a skilled chemist, in 1886, after reading the recipe, would know how to fill the blank and, with the missing link thus supplied, a soluble product would certainly be obtained. That there are many cases where an omitted step is so obvious that it may he supplied ft'om the existing art, may well he admitted. but. for the reasons heretofore stated, it is, at least. doubtful whether this is such a case. Here the omitted step is of the essence of the invention and the art is that of a foreign country, where prior use will not defeat a patent of tlw United States. It would seem, then, that oral testimony intended to make good so important an omission is within the misehief of the hw making the knowledge of foreigners, other than the patentee. inad· missible upon this question. Assuming the inquiry to be !lprtinent. how then stands the case'! The ehemical side of this controversy has taken an exceedingly wide range and has ramified into numbel'll'ss eol· lateral issues saine of whieh have only a "emote bearing upon tilt' principal questions involved. The contending theories have been elaborated with a wealth of technical learning which has not failed to excite the admiration of the court. To attempt to follow the ('xcursions of counsel through the bewildering mazes of the will serve no useful purpose. A discussion of all the propositions argued would extend this opinion beyond all reasonable limits eyen if the court possessed the technieal learning necessary to follow these labyrinthian pathways to the end. It is generally true. eYen in the most complicated cases, that after the testimony has passed through the analysis of a fierce judicial invE'stigation thE' "precipitatE''' disdoses a few plain, simple and controlling propositions. 'I'he duty of the court will be accomplished if the salient facts are discovered and the conclusions therefrom are correctly drawn. Unquestionably the information contained in the Hollidaj' English patent of 1881 furnished the most specific directions, to be found in the prior art. for filling the Moniteur blank. Dr. Sehweitzer, an expert witness ealled by the defendants, testifies: ''The English Holliday patent is the only one giving kind or quantity of alkali to be used in the preparation of safl'anine-azo-naphthol. This Holliday patent is the first printed publication on the subject. the subsequent puhlieations do not mention the quantities or qualitips any more. because these details were unnecessary for everybody skilled in the art at the date of those publications." ,
The patent saj's: "I prepare first a solution of, say. 2 parts of naphthol. 1 part of eaustic soda and 100 parts of 1vater."
If a chemist, in 1886, had supplemented the )loniteur directions with the Holliday recipe the result would have been an insoluble com'oundj predlSel,Y as the }Ioniteur states. This proposition seems to,
170
94 FEDERAL REPORTER.
be conceded on all hands. Dr. Schweitzer, after examining a number of patents and publications says: "It is seen from these publications that the average amount of alkali to be t!lken is about 50 per cent"
This is the same proportion stated by Holliday and leads to the same result-an insoluble It is doubtful if this testimony was given for the purpose of establishing an existing rule upon this subject.' The strenuously insist that the witness had no such intention and that a rule based upon this average is incorrect and was never adopted by the witness. In practice the defendants insist that Dr. Schweitzer adopted a very different rule, using the theoretical amount of caustic soda necessary to form the naphtholsodium salt, and carbonate of soda to neutralize an excess of acid. It cannot be denied, however, ·that a chemist might have adopted such an average in establishing the amount of alkali to be taken rather than attempt a separate 'experiment in each instance. In any view it is important as sMwing the wide divergence of opinion among skilled chemists existing at the time. The Muhlhauser-Griess rule when interpreted by the complainant produces an insoluble product if used to .fill up the l\foniteur blank. If interpreted as the defendants insist it be, it produces the product of the Julius patent. This is also true of several; otherrec,ipes rel\ed on by the defendants. In short, the prior art ,was in such a state' of confusion .and uncertainty sofaI' assafrariine-azo-naphthol is concerned that if a chemist had arriVed at the correct prop<\ttion of caustic soda to produce solubility'it would have been rather from chance than from any definite and; teliable teaching of the art. .The probabilitieS were in favor of his producing' an insoluble product. leids to the cQndlusion that. althclugh some chemists might gnd,perhaps, did use the correct quantity of alkali, there wllsno definite and' certaltl guide on the subject. Certainly it has. not );leen .estllblishM ihatsuich a guide eXisted.: It is hardly an exaggeratioh aSsert that had the chemists of 1886 attempted separately, it 'to;write into the Momteur'blank t:p.ere would .have been ,almost 'as many reCIpes as there were chemists..... if. therew'ere' any' recognized. rule this record of over 2,000 printed pages would have been an impossibility. An almost acrimonious contest between learned experts in which· after weeks and months. of: weary disputation they leave the fieIdeo'Vered with dead 'anddyingtheories,is hardly ,witb the pro,position that t4e rule in c?ritroversy was so universf\.llyreGpgnized ibat no disagreement could have existeq regarding it. The burden of establishing the existenc!l of the rule was on the defendants. They have not sustained this burden. The view most favorable to them is that the subject is left in COnfusion and qoubt. T&fl of d,oubt defeats anticipation. The foregoing' considerations make it unnecessary to discuss in detail the otheranticipatory references. Many ofthem are mere skeletons, the information contained is fragmentary and, in instance, falls farsbott M the clear and precise statement required by the law. Before 'discussing the question of invention· it is well that the law ap-
BADISCHE A]'i;ILIN & SODA FABiuK V. KALLE.
171 The
plicabletoproduct and process patents should be kept supreme court say:
"A ml;lchine ,may be new, and the product or manufacture proceeding frorb it may be old. In that case the former would. be patentable and. tile latter not. The machine maybe substantially old and the product new. In that event the latter, and not the former, would be patentable. Both may be new, or both may be old. In the. former case, both ,,'C'uld be patentable; in the latter neither. The same 'remarks apply to Processes and their results. Patentability may exist as to eithl:!r, neitller, or both. according to the fact of novelty, or the opposite. The patentability, or the!ssulng of a pal as to nt one, In no wis affects the rights of the inventor or discoverer in respect to the other. They are wholly dlseonnect and independent facts." Hubber Co. v. d Goodyear, 9 Wall. 788, 7 9 6 . ' ,
If one discovers a new and useful product he is entitled to the full benefit thereof no matter how it may be produced. Merrill v. Yeomans, 94 U. S. 568. A patent for a product must produce, by thf' process it describes, that article and no other. If the article be old: it cannot be the subject of a patent even though. made artificially for the first time. "Every patent for a product or composition of matter must identify it so that it can be recognized aside from the descrip' tion of the process for making it, or else nothing can be held to infr'inge the patent which is not made by that process." Cochrane v. lladischeAnilin & Soda Fabrik, 111 U. So 293, 310, 4 Sup. Ct. 455, 464. A product is not patentable upon the ground that an already known article is made mont perfectly by the new process or machine than it was before. If this rule were otherwise the product of each successive machine would be patentable. Improvements in quality are not the subject of a patent. Wooster v. Calhoun, 11 Blatchf. 215, Fed. Cas., No. 18,035. "A new process is usually the resuIt of discovery, a machine of invention." Corning v. Burden, 15 How. 252. "A distinction must be observed between a new article of commerce and a new article which, as such, is patentable. Any change in form from a previous condition may render the article new in commerce. * * * vVhen certain properties are known to belong generallJ to classes of articles, there can be no invention in putting a new species of the class in a condition for the development of its properties similar to that in which other species of the same dass have been placed for similar development." Glue Co. v. Upton, B7 U. S. 3. The claims in question cover a new article of manufacture--a product as distinguished from a process. This product maJ, says the patent, be produced by either of two alternative and equivalent processes, namelJ, bJ treating safranine-azo-naphthol with an acid or by washing it with cold water. The third claim of the patent is deI'igned to cover the acid process. The washing process is not claimed as new. Applying the law as above stated to the ease in hand the court understands the rule to be that if the coloring matter of the claims be patentablJ new and useful the patent should be sustained even though this coloring matter were produced bJ a pro,cess 8ubstantiallJ like those used to produce somewhat similar results in the prior art. It was thought at the argument, and subsequent examination has confirmed the impression, that the most vulnerable part of
94 FEDERAL REPORTER. ,
"
the complainant's patent is the part which deals with the washing process. If it did not im'olve diScovery so to treat the body on the filter the patent cannot be upheld. On the other hand; if the use of this process can be sustained as patentable there can be little diffi· culty in upholding the alternative acid process, which is much more complicated and abstruse. The washing-out process is given prefer· ep#e by the patentee and can be readily comprehended, by a layman. No special chemical knowledge is necessary. What is 'the washingout process? After describing tMmixture on the filter the patentee proceeds as follows: "Now wash well with cold water, prolonging t.J1is :until the liquor running off is, deeply colored and shows that a soluble product has resulted." This is all there is of the process as stated in the specification. The body thus washed was insoluble because it was impure. It contained alkali and salts and their presence prevented solubility. Their removal by washing made the body soluble. At least this is what the patent implies. The argument for the defendants may be summarized as follows: Julius did not invent He did not invent soluble safranine-azonaphthol. The substance, even on the statements of the patent alone, existedin the prior art. This solubility was not recognized because the body was admixed with salts and .alkali. The moment these were washed away the soluble body,' which was at all times present, was revealed. The patentee did not create a soluble dyestuff, but he found. it. by the same method that a miner' finds the grains of gold by washing away the mineral substances which mde them. Assuming that Julius was the first to subject safranine-azo-naphthol to washing; this did not in volve invention. One is dealing with a substance supposed to be insolUble; he becomes curious to know whether it will dissolve in water; what is the first thought to enter his mind? Whether he be chemil:>t or lawyer he will conclude that the best way to ascertain whether it' will dissolve in water is to put it in water it prove slow in dissolving, naturally, and await the result. he will stir it as he stirs the sugar in his coffee when he wishes to accelerate the dissolving proeess. The fact that the idea of making a soluble dyestuff from safranine-azo-naphthol first occurred to the patentee does not aid him. A mere abstract idea is not patentable irrespective of the means described for carrying it into execution. If when the question arises the answer is self-evident there can be no patentable novelty in carrying out the idea. Given a new material Whose characteristics are not definitely known, should the following questions suggest themselves to any person interested in ascertaining its properties, would not the following answers simultaneousIj' occur to him? Will it melt? Subject it to heat. Will it float? Put it in water. Is it elastic? Stretch it. Is it soluble? Place it in fluid. If the washing Ift'ocess would occur to the ordinary dyer how Illuch more would it occur to the learned chemist accustomed to the almost daily use (}f similar methods to produce similar ['esnlts. 'I'he patent is addressed to a comparatively sm::lll body of men-those familiar witlJ. the dyeing art-and particulady to that seled ba.nd of chemists who have made coal-tal' colors a I'pecialty. Dr. Julius is an accomplished chemist and so are most of the witnesses. The
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question of invention must be considered from the point of view of these men. That which seems to the ordinary layman to involve the exercise of extraordinary mental power is to these men nothing but the everyday work of laboratory routine. When it became desirable to ascertain whether the body was or was not soluble the method of doing this which first occurred to the patentee was to wash it. The moment the necessity for the information was presented to his mind he knew exactly how to obtain it. He did not have to construct any new implements to make the test, they were ready at his hand. He knew, because he says so in the specification, that the body was insoluble because of the presence of alkali and salts. He knew, beeause he says so in the specification, that if he destroyed the influence of these impurities which prevented solution he would, or, at least, that he might, obtain the body in a soluble form. He knew that in order to find out the properties of the body he must have the body pure and that no simpler method was known to chemistry for producing a pure body than to wash away the impurities. In short, it is said that Julius is not entitled to a patent for discovering, by a well-known proeess, that a soluble body is soluble. The court has thu!'! endeavored to state in a concise form the argument against patentability as strongly and fairly for the defendants as the proof permits. Nothing has been omitted which, in tM opinion of the court, tends to add to the force. of the defendants' contention. It was thought, in view of the great mass of testimony and the elaborate and conflicting arguments and opinions presented, that the most satisfactory way of analyzing and tel"ting the strength of the defendants' position was to reduce, briefly, their propositions to writing and compare them with the complainant's arguments similarl,}' stated. The question thus presented is an interesting one and for some time after the case was taken up for decision the court was in doubt as to what the answer should be. That the defendants' contention is plausible and cogent cannot be gainsaid, but the more the record ;13S been studied-the investigation involving months of labor-the more settled has become the conviction that the defendants have Hot succeeded in voiding the patent and that the question must be answered in favor of the complainant. The reasons for this condusiJH lIlay be stated as follows: It is thought that an impartial mind after reading the ['ecord must reach the conclusion that the most favorable view for the defendants is that the question is involved in doubt. If there were no preponderarlCe in favor of the complainant, if the scales of proof hung with even balance, it ,vould still be duty of the court to resolve the doubt in favor of the complainant. The presumption deducible from the patent itself is that it is valid. He who asserts to the contrary must prove it; the burden is on hinL 1'he defendants have not done this; they have not sho,vn b,}' proof which outweighs the complainant's proof that there is no patentable novelty in the process under consideration. Again, there is a distinction between invention and discovery which must not be lost sight of in dealing with pwcess patents. Of course, a diseovery to he patentable must have the attributes of an invention, but the mental
174
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operation 'is someWhat who invents armachine and one who disCovers 'a process. ,The ,basic truth upon which rests a process may come to the discoverer suddenly :and unexpectedly. He may not understand the;law upon which the process oPerates, and he may be unable to explain the cause' of certain phenomena, ,nevertheless, if hebe the first to' give to the world as a l'esult of his method a new and 'Valuable article of manufa<iture he is entitled to protection. The laws of nature are all old, but, as men of genius become more and more familiar with their characteristics they are able to utilize these laws and make them tributary to the' progress of mankind. Electricity, 'the universe, and yet it is only within for instance, is as ancient the' present' century, almoSt ,within, the present generation, that the world has been li'ghtedupand distant peoples have been brought to' gether by the discovery of'its marvelous properties. Should an electrician, by well-known electrical methods, produce some Dew product which revolutionizes the art, patentability will hardly be denied him because electricity'and the material on which it operated, were both old. For example,'should some material be discovered which solves the storage battery problem, it is hardly to be presumed that he who confers this benefit lIpon mankind will be denied a patent, because the material onwhicbhe: operated was well known and his process had been used before on other materials to produce different results. And so a chemist who first discovers that a substance beHeved to be useless can, by a simple proceSB, be transformed into an article of great value, sbOuldnot be defeated by a similar line of attacli: As well might it be said that the ,astronomer who discovers a new planet should be robbed of the credit ofhis achievement, because his -teleScope was old and other astronomers had used it to examine Saturn and Mars. The mere selection of a material, and this, too, by a process of exclusion, has been deemed sufficient to sustain patentability, and the patent law abounds in instances in which patents have been upheld where the inventor stumbled upon the-discovery in total oblivion of the reason why effect followed cause. In the case at bar it is not, then, material to know why certain results are produced or to prove that the inventor knew the reason therefor. It is enough that he has produced an entirely new and useful product by a method which; though abstractly old,· had never been applied to the material in queStion which was supposed to be incapable of such treatment. Dr. Julius was the first to produce the blue dyestuff of the claims. The court does not overlook the fact that the defendants insist that there was a prior use by Beyer & Kegel in Germany, but, for the reasons heretofore stated, a discussion of this question is not germane to the iEiSue. In the eye of the patent law of this country JUlius was the first to produce "indahl blue." This fact is overwhelmingly proved and mnst be taken as established. It is a fact of immense weight in determining the question -of invention. Indoin blue was a success from the start and its saleha-s steadily increased. To produce a cheap, artificial; soluble substitute for iudigo, posBessing many of its advantages and in some respects superior to indigo, was surely no mean achievement. 'Learned ·chemists in Germany and England, and probably in other countries, had long been
as
BADISCHE ANILIN &: SODA FABRIK V. KALLE.
175
experimenting to produce a result the importance of which was universally recognized, but Julius was the first to succeed. Indoin blue is now one of the leading dyes of commerce. Safranine-azo-naphthol was believed to be useless as a water-soluble dyestuff. So general was this belief that it is not surprising that experiments were few. A conservative and timid chemist would have accepted the prevailing opinion as conclusive and bent his energies in other directions. It required a man of boldness and originality to break through existing prejudices, strike out on new lines and make a discovery which his reading taught him to be impossible. The fallacy of the defendants' argument seems to be that it assumes that the chemist knew that the body upon which he intended to operate was or might be soluble. Assuming the very fact in controversy, of course, there is no invention, but the value of the discovery of Julius is based upon the proposition that neither he nor anyone else knew the fact of solubility, but on the contrary the belief was universal that the body was worthless, because insoluble. It was because Julius found out that by persistent washing, a substance, as worthless as gravel or sand, could be converted into a dyestuff of inestimable value, that he made an invention of decided merit. Of course, if what Julius knew was known before and if what he did had been done before the pretense of invention would be absurd. Invention is predicated of the incontrovertible fact that solubility was unknown and that the body had never before been subjected to the Julius processes. This position is clearly and fairly explained by the leading expert witness for the complainant. He says: "The novelty of the patent consists in securing solubility in a body previously believed to be insoluble by the application tosuch body in a thorough manner of the well-known process of washing. And, in that sense, there is nothing new in such process of washing, the novelty being in its application to this body, and in the unexpected result of producing solubility, or a soluble product."
Invention was sustained by the German patent office in the contest with Farbenfabriken. The decision is as follows: "The production of valuable dyestuffs from the hardly usable safranlneazo-naphthol by converting the latter into salts soluble in water, which have hitherto Dot been described, is to be regarded as a patentable invention. Compare herewith the decision of the imperial court of the 27th June, 189l. (Patent Journal 1891, page 433, second column.)"
Again, in 1894 there was a stubborn opposition by five rival manllfacturers to complainant's application for a patent covering the washing pl'ocess now under consideration. The patent was granted, the decision being in the following words: "The reasons advanced in the oppositions to the patentability of the process in question are not in point. The process claimed for the systematic further washing out of safranine-azo-naphthol has been regarded as an invention because it was not known as such before the· application was filed, nor had it been in public use in this country, whilst on the other hand, there can be no doubt that it is in a high degree capable of technical use."
An appeal was taken, but it was dil!missed in these words: coloring matter bases produced, according to the patent No. 61,692, and re"It has not been proved that it was known before the application that the
176
garded as insol,uble in water, are, after sufficiently thorouf(hly carried out .washing soluble in. water. The production of these coloring mutters in the form soluble in by continuing the washing out to a uefinitc end, aupenr:,; to be, technically, of great importance; therefore, an unexpected teeDllical success has been 'achieved. The process of the application describeu is, therefore, a patentableinventioll."
These decisions are in no wayeontrolling upon this court, but are valuable as the opinions of trained experts in the country of the inventor and where the art is best understood. The opinions of such men, learned, able and disinterested, officially expressed after thorare persuasive to say the least. ough The new dyestuff is described with all necessary technical precision in the claims. This product being absolutely new with Julius and , being of great commercial value his patent should not be destroyed unless proof of undoubted cogency is presented showing that his processes were so rudimentary and axi<?matic that no inventive skill was required in employing them. The conrtis of the opinion that the, weight of testimony is to t4e effect that the ordinary manufacturing chemist would not have thought of applying the washing process to"safranine-azo-naphthol and if he had done so he would have abandoned it as hopeless long before he readIed the Julius product. If he turned to his text-books he would find nothing to encourage him to proceed. If he searched contemporaneous literature on coal-tar colors he would be convinced that it was hopeless to expect to find the prize in this barren, uncultivated and abandoned azo-naphthol field. No precedent in the prior art would help him. He would look in vain for any analogous insoluble body which had been converted into a soluble body by washing. One of the complainant's witnessef; says: "This process of converting insoluble safranine-azo-naphthol into a soluble product is to this day a unique There Is no other body of the naphthol-azo series which can be rendered soluble by a mere washing out with water. *. * * Whatever may be th!' theoretical explanation of the change which occurs, it Is a unique change, and I know of nothing analogous to It In the whole range of dyestuff chemistry."
In short, there was nothing to direct the chemist to the fact that safranipe-azo-naphthol could be converted into a soluble coloring matter and the discovery that it could be required something more than the ordinary skill of the laboratory. Whether or not solubility is due solely to the removal of admixed impurities is left in doubt by the proof. The language ot the patent certainly tends to support the affirmative of this proposition, but there are strong presumptions the other wayan. the precise nature. of the change from insolubility to solubility, and the reason therefor, is not explained and, apparently, cannot be explained by the testimony. Whatever the reason,. the fact remains that solubility results from a treatment which produces wholly unexpected and unique phenomena; a treatment which was rieverbefore applied to the body in question and which would fail of result if applied to any analogous body. The complainant's principal expert witness, Dr. Morton, says: "All I know, on this subject Is that, whenptoduced by following the process down to the point Indicated the product is,as I understand the word, substan-
ROSE V' · HIRSH.
177
tially Insoluble. Tbat is, approaching in its lack of solubility ordinary stones, ni.ineralsand the like. If an attempt is made to wash this material, the first applications of water have substantiaIly no effect upon the solubility, but when a certain point is reached, which, as I understand it, is the point at which certain mineral substances are removed from the entire mass, then it becomes substantially soluble."
The earlier washings gave no evidence of solubility and here the ordinary chemist would stop, but Dr. Julius prolonged the washing until the deep blue color evidenced the fact that the body had become soluble. It is unnecessary to pursue the subject further. 'Vhat hili'! been said already applies also to the add process, which, as before stated, is, in the opinion of the eourt, entitled to greater consideration than the washing-out proeess. The fundamental proposition upon which the validity of the patent rests applies equally to both processes. Dr. Julius has given to the world a new dyestuff of great value. The methods by which he accomplished this result seem simple enough now, but they were open to the ehemical world and no one ever applied them to safranine-azo-naphthol before. From the refuse heaps of chemist.lry he took a comparatively worthless and neglected body and transformed it into a substance capalU-e of producing wealth "bevond the dreams of avarice." One who has done so much should not-be turned out of a court of equity upon the theory that his achievement was so simple that it might have been performed by the most eommonplace chemist in the art. Results accomplished cannot be anticipated by results which might have been accomplished. Eliminate the work of Julius and the dyeing art would to-day, in all probability, be without indoin blue. There is nothing t.o indicate that any of the chemists of Germany or England were proceeding on lines which would have led to the discovery. Surely there is a persuasive presumption that one who contributes such a valuable product to the world is something more than a skilled artisan. There is no doubt at all that the defendants infringe. Bengaline differs from indoin blue in name only and its sale as proved constltutes an infringement of claims 2 and 4. It is sold in connection with printed circulars and oral directions describing and recommending its use with a tanno-metallic mordant thus producing the coloring matter lake covered by claim 1. There should be a decree for the complainant.
ROSE v. HIRSH et at
(Circuit Court of Appeals, Third Circuit. 26, March Term. 1. PATENTS-INFRINGEMENT-MEASURE OF DAMAGES.
May 4, 1899.)
Where the patentee himself manufactures the patented article, and maintains a close monopoly, so that one desiring to use it could purchase it only from him, it is proper, in case of wanton infringement, to conclude that hut for the infringement the infringer would have purchased the articles from the patentee, and consequently thai the latter is entitled to all damages resulting from the loss of sucb sales. 94 F.-12