892

FEDERA.L REPOR,£.I1R,

voL 60.

resjudi-eata. The circuit,'eonrtrefused the mandamus prayed forbtymlators, because they have no judgment against the city of New Orlea.ns,and. it is against that municipal corporation whieh;under the existing law, can be dealt with by the board ofliquidlltion. This rulhig :was in all respects correct, and should beaflirnied,with costs. Judgment accordingly.

DURAND et al v. GREEN et at. (Clre-nlt Court. E. D; Pennsylvania. February 19, 1S94.)

No.6.

1.

PATENTS FOB INVENTIONS-CLAIM-PROCESS AND PRODUCT.

In letters patent No. 252,721, granted February 14, 1882, to Horace Koechlin,for the "manufact1lfe of colors or d:l"estuffs," the claim was as follows: "The Improvement in the manUfacture of coloring matters, consisting in the production otviolet coloring matters by the action of nitroso derivatives. of the tertiary amines on tannin, or equivalent reaction." 'Held., that this Claim was for a process, and not for the resulting product; and it cannot be extended to cove.I.-' the latter on the ground that the product inheres in the process. ' 'I'he..claim being distinctly for the. process only, it cannot be enlarged to cover the product as well,.by reference to statements illj the specification that "tbeproducts, as well as the methods of prodUcing the same, comprises, therefore, the prepara.constitute part of the tion and the coloring matters abpve .

.

SAME-SPEClFIC.A.ll'ION-ENLARGEMENT .· OF OLAIM.

In Equity. On final hearing. Bill by L. Durand, Huguenin & Green, Schulze-Berge '&Koechlin,for infringement of . Livingston Giffo.rd, for Cowen, pickerson, Nicoll & for defendants. DALLAS, Circuit Judge. claiming to be as· signees and present owners of letters patent No. 252,721, issued to Horace Koechlin on February 14, 1882, for "manufacture of colors Qrdyestuffs," filed their billeharging the defendants with infringement thereof. The latter" by their answer, have set up several de· fenses, including a denial of the infringement alleged. The case thl1s preaentedhas been heard and considered upon the pleadings and probfs, and is now for decision. He who conceives a new method, and by that method produces a . new substance, invents, by one and the same exercise of the creative "'faculty, both a process and a product. The exploit is single, though the achievement is double. The manner of producing and the thing produced may, of course, be separately contemplated, but the inventive 'actfrom which both are derived is not divisible. The fruit is twofold, but the germ is one. This seems to me to be self-evident; bUt, were demonstration required, it would be found in the characteristically vigorous and lucid opinion of Judge Greer in the case of Goodyear v. Railroad Co., 1 Fish. Pat. Cas. 626, Fed. Cas. No. 5,563. But from this unquestioned premise a conclusion was reached in

DURAND 11. GREEN.

3tl3

that case which does not result from its acceptance in this one. It is not necessary to challenge the correctness of that conclusion in order to support my own. If it were, I would greatly distrust the latter. It may well be conceded that, at the time the Goodyear Case was decided, it was right to hold that a patent which claimed a process, but which also disclosed that, by the practice of that process, an entirely new fabric was produced, covered and included the latter as well as the former. The doctrine of that decision is that, under the act of 1836, to the peculiar language of which the opinions repeatedly refer, the exclusive privilege conferred by apatent is coextensive with the actual invention, as discoverable from the entire instrument; and from that doctrine it necessarily resulted in that case that the product disclosed, as well as the process claimed, was protected. The first general statute passed by congress in pursuance of its power to secure to inventors, for limited times, the exclusive right to their respective discoveries, is that of 1790. Thflt statute was, however, repealed by the act of 1793, which was afterwards supplemented by the enactments of 1794, 1800, 1819, and 1832; and these last-mentioned statutes comprised the whole of the positive law of the subject until, by the act of 1836, the present more complete and rational patent system was inaugurated. None of the earlier acts had contained any provision with respect to claims. The act of 1793 required that every petitioner for a patent should "deliver a written description of his invention," alid that the letters patent should ''be made out, * * * reciting the aIlegations and suggestions of the said petition, and giving a short description of the said invention or discovery;" but this is all that was made necessary, and it appears from the forms given in tlie appendix to Fessenden on Patents (published in 1822) that it was not the practice to deliver with the petition, or to recite in the patent, anything more than the law directed. The former was accompanied by a specification merely, and to the latter was annexed a schedule "containing a description in the words of" the petitioner, and which "recited the specification," and nothing else. It is important to bear in mind that, during this era of unperfected patent law, patents were granted without examination by any governmental agency for asce-rtainment of either the novelty or the utility of the asserted invention. It was sufficient that the petitioner "alleged" and "made oath" that he ''believed'' it to be new and useful. Upon this alone the pat· ent issued; but it was accepted in reliance, solely, upon the recip. ient's own unaided investigation, and with the unmitigated hazard that, by reason of subsequently appearing lack of novelty or utility, it might turn out to be absolutely worthless. Subject to this risk, however, he was secured in his invention as described, and, as has been shown, was not required to, and did not, present any. claim whatever. By the act of 1836 a radically different and vastly superior policy was adopted, and its administration provided for. In the interest both of the public and of inventors, investigation by the patent office was established for the determination of, at least, the probable validity of a patent, in advance of its issuing. The increased, and increasing, demands of other duties upon the officers to'

;394

60.

()f, tR!:! patent had theretQfore. been a:JJllOSt ma..welousextent of the inventive genius llecessitqted the erection of ,tb,e separate depaI1;n::t.l>nt:{>r creation· of which was the primary object ip.,t t:b.e principal new feature introduced by of the it iJ:!. ;\1Vl\". :l;hat to·:wb.tchI have l'eferre:d,-thorough ando:rdeW,prllfuninary.cwpninatiQn,to .test the right of each applithe patent applied, tor. The work., thus devolved cant uponthEtPa.tentoffice ryary and.in its performance theexerci"e ot·great skill was requisite.'rhat it might not \>e. it was but rea.sollable to· require that everyappJicant shouJ,d, not merely, as under the act of n93, "deliver a writtell :description,Qf his invention," but should also, as part of. that descriptioll, "particularly point out the part, hnptoveznent, or: (»!Jlpinatlon,: whichhe,!'Olllims as his invention or diseovery i" and ,such is the addition which,.in this regard, is JJ:U,tdebYthe:actpf,1836, to thatpf1,793. Still, it was directed (1,836, §5) thatithe pate»t,althoughannexing thespeci:fl.cation (as abOves1;ated,) ,of what as his invention should "containashorj; descriptio)). ,or the invention or discovery, its ,n"ture and and should "grant the correctly tulland right Jp said jnvention/' ,It was with ex-. press reference, of, these. terms of the act of 1836, that decjdep in v. Railroad Co. that the pat· entee's mQDopqly was not,',in .that limited by his claim, but extended to tp.e invention Which was and the nature and decorrectly in. the specification. After the of the lact of 18361 the profession recognized the convenience and utility ()f .stating the clafw. for which it made provision at the end oftha, specitlcation; and, the practice which ensued, as well as for other manifestrel'lsons, the courts were led (as in Goodyear v. Railroadqo.) to give to suchelaims much, but not controlling, weight in determining the scope of patent rights. I turn now to the act of 1870, unde:r which the patent in suit was granted. It is, as to the under consideration, markedly different from thellctof 1836. It mentions the specification and the elaipl as two distinct things, and requires an inventor, not merely to sp,E!cify and point out, but to ."particularly point out and .distinctly clailll," his invention. The, change in words is very slight, but the difl'erence in meaning is obvious anq WlPortant. By the one act he wa,s instructed to specify what heaJIeged to be his invention; by theother he is tQld that the inventlPn for which he desires a patent he must distinctly claim. The f8tct .that, except as to the change indicated, tlJ,e words used two acts, when dealing with aresubstantiltlly is quite convincing that the drii,qghtsmanC)f the act of 1870, as well as in presumption r# laly, thus. pe<llllia.rly varied tile language of the. act of 1836, not without reason, bllt with a definite purpose. Nox:: is the legislative design 'hard to4fscern. . Tb,epractice of the profession, and the opinions of the juqges to which I have.adverted, had suggested that the embarrassmellts llttendant upon. the efforts of the courts to construe

"the:

DURAND ". GBEEN.

395

vague and indefinite patents might, without doing injustice to patentees, be much alleviated by denying protection for anything, though original, new, and useful, which was not also distinctly claimed. In brief, it was prescribed that the claim must be taken as defining precisely what the invention covered by the patent is; and hence the true question is not what the patentee might have claimed, but what he has claimed,-the latter, not the former, being made the measure of his right. The rules for determining what is claimed in any case are few and simple, and are not peculiar to the patent law, except as respects the doctrine of liberality in construction in favor of pioneer inventors. The benefit of that doctrine is claimed" by these complainants, and, without pausing to examine their title to invoke it, for it cannot avail them, I concede, for the present purpose, its applicability to the achievement of Koechlin. As to the rest, it is sufficient to say that, if the language of a claim has a plain and distinct meaning, that meaning must prevail. That which is to be ascertained is, of course, the intent of the claimant; not, however, that intent as elsewhere, or in some other manner, disclosed, but as expressed in the claim itself. If the meaning of the claim be uncertain,-that is to say, if the claim be ambiguous, but still be reasonably capable of elucidation by reference to the specification,-the latter may be resorted to for interpretation of the former, but never to change the plain meaning of its language, nor to extend it beyond the limits imposed by its own terms, and a fortiori not so as to create a separate or additional claim. From these preliminary observations I now pass to the consideration of the only claim of the patent involved, which claim is as follows: "1 claim the improvement in the manufacture of coloring matters, consisting in the production of violet coloring matters by the action of nitroso derivatives of the tertiary amines on tannin, or equivalent reaction, substantially as described." Is this claim for a process, or for a product, or for both? It is true that the word "manufacture" may be used to denote either the act of manufacturing or a manufactured article, and that the word "production" may designate as well a thing produced as the operation of producing. Each of these words does possess the double sense which the complainants ascribe to it; and, if any insurmountable difficulty in comprehending the claim resulted from this, the consequence, perhaps, might be that the patent would fall for want of any distinct claim to support it. But these words, when properly related to their context, do not render the claim equivocal. The improvement is expressly stated to be "in the manufacture of coloring matters,"-that is to say, in making coloring matters; for otherwise it would be necessary to suppose that (at this point) it was intended to claim the substances called "coloring matters," which would be absurd. Then, the claim, continuing, explains that the referred-to improvement in manufacture of coloring matters consists in-what? In a substance; in a fabric; in an article of merchandise? No; but "in the production of violet coloring matters." I do not think it possible than any per· son having the least degree of skill in the use of the English language would so have expressed himself if his intention had been to

I'EDERALREPOR'l'ER,vOl. 60. plattez:st.restricted to yjolet matters, either pr?duce4. py a pap;icwar .On the other clallll natural meamng (and that is which should be adopted) would clearly require its a claim. for a .process only. But; as we proceed in the of the claim, the notion that it is, or was intended to be, becomes even more surely inadmissible, for from what foll0'Ysitappears that what is claimed is not something which exists 61' is tope Created, but to be done,-to be accomplished by "action" 01' "reaction." Onthe whole, therefore, I am of opinion that this claim do.elinot require, and consequently does not admit of, interpretati()n, put ,that, upon a fair and natural reading of it, unaided by.·cq:p.strncti9I), to be, and therefore is, a claim for a process, and· nothing else. As, however, it has been very earnestly urged that it should be so extended as to include the product, because of the allserted broader scope of the invention as described and designated inthe specification, I briefly refer to that part of the patent. .' the first place, it is. there said:. "My invention C911-sists in. .of violet coloring mattel'li by the action," etc.; and certa1nly, if this .language be related to the closing words of the claim,. "su'tistantially' as descri,bed," its only' tendency is to I have expressed. But the particular portion of specificatiotlupon which the complainants rely is this: "Other GolQring matters' can be made by similar reactions. The products, as well as the IIlcthod of producing the same, constitute part of the invention, which comprises, therefore, the preparation and the coloring matters above mentioned." This statement,· however, does not aid them-First, because an existing claim cannot be enlarged by, nor an additional. one be imported frolll, the specification; and, second, because. the assertion that "the products * * * constitute part of the invention," when taken in connection with their omission from the clai:rn, pregnantly indicates that the applicant had process and products distinctively in mind, and yet, either in the. statute,or because he was satisfled to secure only process, fbnited his claim to process alone. It remains only to notice the contention that in this instance the product inheres in the process, and that, therefore, the claim of the includes the other. For reasons already stated, this positiOn is untenable. Product and process are quite distinct mateven where both are created by the same inventive act. If the point here was the same as in Goodyear v. Railroad Co., it might be decided favorably to the complainants; but as, in this case, the ques'ij()nls.not as to the scope of the invention, but as to the subject"ffiattel'. of the patent as defined by the it must be determined 8g:;iinl;lt them. It was not held in .Goodyear v.Railroad Co. that, b¢cause the process was expressly claimed, the product was constpuC}tively claimed. The theory upon which the judgment was founded is quite different. It is that,though not at all included in. the claim, product was patented, because it appeared, from other parts of the instrument, to. have been invented. In other words, the scope of the patent was determi:Q.ed, not by construction of the generan:sr;oJ;

'or,

will

0'

EDISON ELEC. LIGHT CO. 11. PHILADELPHIA TRUST, S. D·· INS. 00.

397

cla1m, but by exploring the specification in'search of invention; and invention disclosed, not claimed, was made the measure of right. The difference is a palpable one, and it clearly distinguishes that case from this one. I have reached the conclusion that the only claim of the patent in suit is for a process, and is not for a product; and, waiving any ques· tion as to whether use or sale of the product by the defendants jointly has been shown, it has at least not been established that they have in any manner used the process. It results from this that the charge of infringement has not been sustained. Other defenses were interposed, and the points which they involve have been very thor· oughly and ably argued; but it is unnecessary, and therefore not desirable, that I should intimate any opinion upon them. I do not do so; but upon the ground, and for the reasons, which have been etated, the bill is dismissed. with costs.

EDISONELECTRIO LIGHT CO. et aI. v. PillLADELPIDA TRUST, SAFEDEPOSIT & INS. CO. et aI. SAME v. MANUFACTURERS' CLUB OF PillLADELPHIA. SAME v. SPRECKELS SUGAR-REFINING CO. (CirCUit Court, E. D. Pennsylvania. January 26,1894.) Nos. 29, 30, and 31.
PATENTS-PRELIMINARY INJUNCTIONS DECISION8 BY CIRCUIT COURT 011' PEAL8 AND OTHER CIRCUIT COURTS.

AP-

The Edison incandescent electric lamp patent, No. 223,898, was sustained by the circuit court of appeals for the second circuit after ex· haustlve litigation. Afterwards the new defense of anticipation by one Henry Goebel was set up in a suit In the circuit court for the eastern district of Massachusetts, and, a"ter a thorough luvestigation thereof, a prelhninary Injunction was granted. In other SIlitS in which this defense was Interposed a preliminary Injunction was granted by the circuit court tor the eastern district of WisconsiI:l- but was denied by the circuit court for the eastern district of Missouri on the defendant's giving bond. A subseQ.uent suit was brought in the circuit court for the eastern district of Pennsylvania, and the defendants therein claimed that they should be exempted from a preliminary injunction In respect to usIng certain lamps made by the company, which the court for the eastern district of Missouri had refused to enjoin. No evidence was sublultted on which the court could form an independent judgment as to the alleged Goebel anticipation. 'Held that, In view of the decision of the circuit court of appeals, the injunction should be granted.

These were three suits, brought by the Edison Electric Light Company and the Edison Electric Light Company of Philadelphia against the Philadelphia Trust, Safe-Deposit & Insur-ance Company and others, the Manufacturers' Club of Philadelphia, and the Spreckels Sugar-Refining Company, respectively, for infringement ·of the Edison incandescent electric light patent. lleard on application for preliminary injunctions. Samuel B. Huey, Richard N. Dyer, and O. E. Mitchell, for com. plainants. Crarath & Houston and John O. Bowman, for defendants.