ᏋᎭᏋ . is obvious that the use of such an amount of oil would not infringe the claims of the patent which limit the oil to be used to a fraction of 1 per cent. on the ore. But the contention of the petitioners, approved by the District Court, was, and now is, that kerosene and fuel oil were inert and valueless, if not harmful, as used by the respondent in the process, and rendered the recovery less than it would have been if the pine oil only had been used; that they were added solely to carry the content of oil beyond the prescribed fraction of 1 per cent. on the ore, in the hope of technically avoiding infringement; and that essentially in its operations the respondent used the process of the patent with 0.27 of 1 per cent. of pine oil on the ore, and therefore infringed it. The respondent replied that it was not true that kerosene and fuel oil were inert and useless, and asserted that they were oils of the patent, "having a preferential affinity for metalliferous matter"; that the patentees by the claims of their patent had limited their exclusive right to the use, in the process, of any oil or oily substance having such an affinity, but in an amount not greater than a fraction of 1 per cent. on the ore, and that therefore the process of the respondent, in which more than 1 per cent. of oil on the ore was used, did not infringe the patent. The entire evidence in the Hyde Case was introduced on the trial of this case, and whether the petroleum products or derivatives used by the respondent were oils within the scope of the patent must be determined from the record now before us. The claims of the patent in suit which we are considering call for the use in the process of an "oily liquid,” “an oily substance," and in the twelfth claim simply of an "oil." These expressions are said by Prof. Chandler, an expert for the petitioners, much relied on in the Hyde Case and in this, to include petroleum products. "Q. Have you since found it possible to use other oils than oleic acid with the result of producing a froth? "A. Yes. Higgins, one of the experimenters who discovered the process in suit, and who is much relied upon by the petitioners as an expert witness in both cases, testified as follows in the Hyde Case: "Q. What other oils? "A. I have obtained satisfactory results by the use of petrol and certain proportions of distillate of crude petroleum, such as Cosmos oil," -and he said "Cosmos oil" is "a petroleum distillate." Chapman, an engineer and a witness for the petitioners in the Hyde Case, testified that he had obtained good recoveries in the laboratory and in commercial practice, from the ore of the Braden mine, in Chile, using three pounds of Texas fuel oil to one pound of American wood tar oil per ton of ore. Texas fuel oil is petroleum. Greninger, an engineer employed by one of the petitioners in installing its flotation plants, testified in this case that in a mine in British Columbia he used a mixture of oil, 75 per cent. of which was derived from pe troleum. liferous matter." Without quoting more from the record before us, we must conclude that when the patent in suit was obtained, and even until the testimony in the Hyde Case was closed in 1912, petroleum products were recognized by the petitioners, and that they are still used, as oils, efficient and useful in the process of the It is admitted that petroleum products are patent in suit. Much of this evidence is es"oils having a preferential allinity for metal-pecially impressive because the papers from *which it is derived were written, and the In each of the four claims of the "Com-witnesses testified before the question as to plete Specification" of the British patent, petroleum, now made in this case, was raised Aled by the same persons who were patentees or discussed. of the patent in suit, on June 3, 1905, "petrol" is given as an equivalent of oleic acid in the process. This appears in the statement, repeated in each claim, that the ore and acidified water shall be mixed or agitat-eral ed with "a small proportion of an oily substance such as oleic acid or petrol, amounting to a fraction of one per cent. on the ore." "Petrol" is the name used in England for gasoline. There is much more of the same character from witnesses for the petitioners, and the evidence of the respondent is strongly to the effect that petroleum products are useful and efficient and have been widely used in the process in laboratory and commercial practice. [3] While we thus conclude that petroleum and petroleum products are oils useful in this process of the patent, it is also clear that they are not as highly efficient as pine oll and sevother oils and combinations of oils, which, in the nomenclature of the record are called "frothing oils," and also that better results would probably have been obtained by the use of less than 1 per cent. on the ore, of pine oil alone, than were obtained by the respondent with that oil in combination with the larger amounts of petroleum products. And this presents the further question neces→ sary to a decision of the case, viz.: #345 Does the use of a more efficient, in combination with a less efficient, oil of the patent constitute infringement, where the former is used in an amount within the limits of the claims but the combined amount is in excess of such limit, and when the amount of the more efficient oil used would probably produce better results from the process than are produced with the combination of oils? 2980 To answer this question requires a consideration of the state of the prior art as it was when the discovery of the patent was made, and of the scope of the claims which we are considering. (39 Sup.Ct.) It is always difficult to recover the realities of a situation long past, such as we have here, but it is especially difficult when the importance of the discovery has led, as in this case, to extensive improvements in mechanical appliances for utilizing the invention and to large additions to the knowledge of the adaptability to the process of various oils, singly and in combination. We held in the former case that the patentees came late into the field of ore concentration investigation, and that their discovery rests upon a prior art so fully developed that it was "clear from the record that approach was being made slowly, but more and more nearly, to the result which was reached by the patentees of the process in suit in March, 1905," and that their final step was not a long one. Such a patent, in such a field of investigation, must be construed strictly, but candidly and fairly, to give to the patentees the full benefit, but not more, of the disclosure of their discovery which is to become a part of the public stock of knowledge upon the expiration of the patent period, and which was the consideration for the grant to them of a patent monopoly. With the state of the prior art in mind, we come to consider the nature and extent of the disclosures of the patent in suit, but only with respect to the kinds and quantities of oil which may be used in the process. The specification recites that the invention of the patent relates to an "improvement" upon prior processes employed in ore concentration "by means of oils, fatty acids, or other substances which have a preferential affinity for metalliferous matter over gangue." Next come the specific disclosures required by the patent law (R. S. § 4888 [Comp. St. § 9432]), which are intended to describe the advance which the patentees claimed to have made from the prior art Cattermole agglomeration of metalliferous matter into granules, which separate from the gangue, and sink to the bottom of the pulp under treatment, to the discovery of the patent in suit, with its metal bearing froth, rising to the surface of the pulp. Here is the essence of the discovery, and it is announced in these terms: "We have found that if the proportion of oily substance be considerably reduced, say to a fraction of one per cent. on the ore, granulation ceases to take place, and after vigorous agitation there is a tendency for a part of the oil-coated metalliferous matter to rise to the surface of the pulp in the form of a froth or scum." This is followed by the description of three "factors" on which "this tendency is depend The first three claims declare that, so far, duce the characteristic froth, if any such as oil is concerned, the discovery resides or there are, and that a proper construction of consists in "adding a small proportion of an the patent limits it to such "frothing oils," oily liquid having a preferential affinity for and renders the use of them in a fraction of metalliferous matter, amounting to a frac-1 per cent. on the ore an infringement when tion of one per cent. on the ore"; the fourth used with "non-frothing oils" having the re claim differs only in substituting the word quired affinity in *amounts sufficient to make "substance" for "liquid” in the first three; the combination exceed the quantity limit of and the twelfth claim provides for carrying the patent. out the process with “oil in water containing To give such a construction to the patent a fraction of one per cent. of oil on the ore." would subordinate the clear description conFrom this consideration of the terms of the tained in it of what are oils of the process, patent as written, it is apparent that it to an implied and vague description and clasmakes no differentiation whatever, either in sification which would leave the whole subthe claims or in the specification, among the ject again at large, to become a field for furoils having a preferential affinity for metal-ther experimentation, without definition in liferous matter, and that its disclosure, to the patent of what oils or froths would satiswhich the petitioners must be limited, is that, fy it. So interpreted, the patent could not when a fraction of 1 per cent. on the ore of reasonably be said to contain a disclosure of any such oil is used in the manner prescrib- the discovered process in the "full, clear, ed, there will be produced a metal-bearing concise and exact terms" required by law (R. froth, the result of the process. No notice is S. § 4888 [Comp. St. § 9432]), and the claims given to the public, and it is nowhere "par- might conceivably be said to fall short of ticularly pointed out" in the claims, that "particularly pointing out and distinctly some oils or combination of oils, having a claiming" any discovery at all within the preferential affinity for metalliferous matter, meaning of the act of Congress. are more useful than others in the process, or that some may be used successfully and some not, or that some are "frothing oils," a designation not appearing in the patent, and that some are not. The patentees discovered the described process for producing the result or effect, the metal-bearing froth, but they did not invent that result or froththeir patent is on the process, it is not and cannot be on the result-and the scope of their right is limited to the means they have devised and described as constituting the process. Corning v. Burden, 15 How. 252, 268, 14 L. Ed. 683; Le Roy v. Tatham, 14 How. 156, 175, 14 L. Ed. 367; Fuller v. Yentzer, 94 U. S. 288, 24 L. Ed. 103; Robinson on Patents, § 149. Thus when to our former conclusion that the respondent used an efficient oil of the patent we add the further conclusion, derived from a study of its terms, that the patentees failed to differentiate among the oils described in the patent, we must conclude that it is impossible for the courts to distinguish among them, as more or less efficient in the process, without amending the claims of the patent, and this they are powerless to do. We are confirmed in the conclusion thus arrived at by the evidence which the patentees in the Hyde Case, petitioners in this, introduced to show that their discovered process could not be made operative when more than a fraction of 1 per cent. of oil on the ore was used, and that the use of a greater amount would not produce the typical froth which results from it-this without differentiation among the oils described in the patent, save as to their varying adaptability to different ores. The patent in suit was applied for in this country on May 29, 1905, within a few weeks after the discovery which it embodies was made, and whether, from haste or lack of investigation, from the necessity of meeting the exigencies imposed by the prior art or from a desire to make the claims as comprehensive as possible, this discussion of its terms makes it clear that the only disclosure as to the kind and amount of oil which the patentees made to the public as necessary to the practicing of their process is that it must be an oil or oily substance, or oily liquid having a "preferential affinity for metalliferous matter," and that it shall be limited in amount "to a fraction of one per cent. on the ore." It is argued that the provision of the claims that the mixture prescribed, of oil, water and ore, shall be agitated until the oil-coated mineral matter forms into a froth serves to differentiate the "frothing oils" from others having the required preferential affinity for metalliferous matter, but which, when agitated in the mixtures, may not pro Thus, Ballantyne, a metallurgist and the patent agent who prepared the patent specifications for the petitioners, when called by them as an expert witness, testifies to intimate relations with the patentees and with their in*vestigations before and since the patented discovery was made, and says: "I have never seen the agitation-froth process successfully carried out by the use of an amount of oil equal to practically 1 per cent. by weight on the ore, and in my opinion 0.9999 per cent. of oil would not be a proper quantity (that is to say, a suitable and economical quantity), as therefore, be a suitable fraction of 1 per cent., contemplated by the patent, and would not, as contemplated by the patent." Liebmann, an expert much relied upon by the petitioners, testified: *350 (39 Sup.Ct.) * * * "Q. I understand from your answer that you have never in your operations * * * obtained any floating mineral-bearing froth when using an amount of oil, or other selective agents, amounting to more than 1 per cent. of the weight on the ore. In order that there may be no misunderstanding, will you state whether I have understood you rightly? "A. That is my recollection." John Ballot, one of the patentees, testified that he had never seen a froth of the character produced by the patent in suit using a pulp containing more than 1 per cent. of oil. There is much more of similar import in the record. This, however, will suffice, add ing only the record of a remarkable incident which occurred in this court during the argument of the Hyde Case by Mr. Kenyon for the petitioners: "Mr. Justice McReynolds: I would like to ask you when in this process of reducing oil your invention came into existence? It must be added that the evidence is far from satisfying that the results of the respondent's process was, in fact, that peculiarly superior quality of metal-bearing froth characteristic of the patented process when worked with a fraction of 1 per cent. on the ore. The evidence, otherwise doubtful on the point, is rendered especially so by the testimony introduced by the petitioners, and not contradicted, that a computation on the basis of the tonnage of ore treated by the respondent shows that if the process as practiced by it after January 9, 1917, had been used through the year it would have involved a loss of over a million dollars in increased cost of oil and in diminished recoveries, as compared with what the results of operation would have been for the same time using the process of the patent as practiced by the petitioners. It is difficult to see how a process so wasteful and inefficient as that of the respondent is thus proved to be can be other than substantially different from that of the petitioners. "Mr. Kenyon: At about one-half of 1 per cent. of oil. "Mr. Justice McReynolds: Before you got to the one-half of 1 per cent. did you have any invention? "Mr. Kenyon: We were passing from the region of Cattermole, which was a distinct"Mr. Justice McReynolds: I want to know when your invention came into existence. "Mr. Kenyon: This invention was not reached, I should say, from those figures until about 0.5, that is one-half of 1 per cent. of oil was reached. It is vaguely suggested in the testimony for the petitioners that there was some peculiarity in the composition of the ore of the re"Mr. Justice McReynolds: At 1 per cent. you spondent, or in the treatment of it, which had no invention? resulted in the presence of "clayey gangue slimes" which absorbed an unusual quantity of oil, and that this contributed to render it possible to produce the results of the patented process when more than the prescribed fraction of 1 per cent. of oil on the ore was used. It is hard to see how this, if true, would be of value to the petitioners, but the evidence is quite too indefinite in character and meager in extent to be accepted as the basis for the judicial determination of such a claim. "Mr. Kenyon: No. "Mr. Justice McReynolds: At one-half of 1 per cent. you did have invention? "Mr. Kenyon: It began to come. Remote, but it began to come. At 0.3 of 1 per cent. the float vastly increased. At 0.1 of 1 per cent. the float again vastly increased. "Mr. Justice McReynolds: When this float has more than one-half of 1 per cent. of oil it does not infringe? "Mr. Kenyon: It does not infringe. "Mr. Justice Pitney: What have you to say in answer to what Mr. Scott said the other day to the effect that 1.8 per cent., or perhaps more, of oil, would give the same result with increased agitation? "Mr. Williams: Absolutely no. "Mr. Kenyon: It would not." While parties should not be held rigidly to statements made by their counsel in the stress of argument, even when replying to questions from members of the court, nevertheless these statements from leading counsel in charge of the Hyde Case and of this case are impressive and significant. This and much more of like character in the record brings us unhesitatingly to the conclusion that the scope we have given to the patent, based upon an interpretation of the language of the claims, is justified also by the evidence in the case, and that it is, in fact, that which the petitioners and their 898* counsel, until very recently, placed *upon it in? iull confidence, that the essence of the discovery lay to such an extent in the use of a small amount of oil, such as is described in the patent, that the result could not be obtained with more than a fraction of 1 per cent. on the ore. [4] The respondent contends that the disclaimer filed by the petitioners with respect to the three claims held invalid by the decision of this court in the former case was so delayed and is so evasive in form that it is invalid, and that, for this reason, the petitioners should not be permitted to further prosecute this suit, under the provisions of R. S. §§ 4917, 4922 (Comp. St. §§ 9462, 9468). The decision holding the three claims invalid was rendered on December 11, 1916, and the disclaimer was recorded on the 28th day of March, 1917. Having regard to the fact that the owners of the patent in suit resided in a foreign country, and to the wartime conditions of communication then prevailing, the entry required by law was not "unreasonably neglected or delayed." While the wording of the disclaimer borders on finesse, we do not think it can be interpreted as giving any *354 rights under the patent greater than may be 4. STATES Reversed in part. (250 U. S. 135) NORTHERN PAC. RY. CO. et al. v. STATE Under Act Cong. Aug. 29, 1916 (Comp. St. § 1974a), giving the President power in time of war to take possession and control of transportation systems, presidential proclamation of December 26, 1917 (Comp. St. 1918, § 1974a), whereby the President took such possession and control, together with Act March 21, 1918, providing for the operation of transportation systems under federal control, the complete possession and control of the railroads taken by the United States impliedly included the power to fix rates, regardless of the power given by Act March 21, 1918, § 10 (Comp. St. 1918, § 31154j). 4-CONFLICT BETWEEN STATE AND FEDERAL GOVERNMENT. Under the Constitution, the authority of the United States is paramount, when exerted as to subjects concerning which it bas power to control; and this is so in cases where both the state and federal government have authority to regulate. 6. UNITED STATES 125-SUIT AGAINST UNITED STATES-RAILROADS-FEDERAL CONTROL-SUIT AGAINST DIRECTOR GENERAL. No. 976. 1. RAILROADS 52, New, vol. 6A Key-No. Series FEDERAL CONTROL-RATE-MAKING POWER. As the claim that the power of the Presi(Argued May 5, 1919. Decided June 2, 1919.) dent, acting through the Director General, to fix rates for railroads under federal control, given by Act March 21, 1918, § 10 (Comp. St. 1918, § 31154 j), was limited to interstate rates, was not wholly frivolous, the courts had jurisdiction of a proceeding to compel the Director General by mandamus to desist from charging intrastate rates so fixed, and to exact only the rates fixed by the state; such proceeding not being a suit against the United States, in view of the question as to the Director General's authority. As the federal control and operation of railroads worked a fundamental change, Act March 21, 1918, § 10 (Comp. St. 1918, § 31154), authorizing the President to prescribe rates, etc., cannot be construed as applicable only to interstate rates, for such construction would tend to prevent the change from becoming effective. 5. RAILROADS 52, New, vol. 6A Key-No. Series-FEDERAL OPERATION-CARRIERS. 3. RAILROADS 52, New, vol. 6A Key-No. Series-CONGRESS-WAR POWER. The war power of the United States is not disputable, and therefore where Congress, under its war power, by Act Aug. 29, 1916 (Comp. St. § 1974a), authorized the President to take possession of transportation systems and the President took control of the railroads, and was by subsequent Act March 21, 1918, § 10 (Comp. St. 1918, § 3115%), authorized to fix rates, such rate-making power cannot be construed as limited to interstate rates, for that would be a limitation on the war powers of the United States. Under Act March 21, 1918, § 10 (Comp. St. 1918, § 3115), authorizing the President to providing for review by the Interstate Comfix rates for railroads under federal control, but merce Commission, etc., and section 15 (section 311540), declaring that nothing in the act shall be construed to impair lawful police regulations of the state, the President has power to prescribe intrastate rates for railroads under federal control, though such rates conflict with rates previously fixed by state authority. Original application by the State of North Dakota, on the relation of William Langer, Attorney General, for writ of mandamus against the Northern Pacific Railway Company and Walker D. Hines, as Director General of Railroads. 2. RAILROADS 52, New, vol. 6A Key-No. awarded (172 N. W. 324), and defendants A peremptory writ was RATE-MAKING Series FEDERAL CONTROL · bring error. Reversed and remanded. In Error to the Supreme Court of the State of North Dakota. Messrs. John Barton Payne, of Chicago, Ill., and Charles Donnelly, of St. Paul, Minn., for plaintiffs in error. Messrs. Frank E. Packard, of Bismarck, N. D., and W. V. Tanner, of Olympia, Wash., for defendant in error. *Mr. Chief Justice WHITE delivered the opinion of the court. In taking over the railroads from private ownership to its control and operation, was the resulting power of the United States to fix the rates to be charged for the transportation services to be by it rendered subordinated to the asserted authority of the several states to regulate the *rates for all local or intrastate☛ business, is the issue raised on this record. It arises from the allowance by the court below, of a peremptory writ of mandamus comFor other cases see same topic and KEY-NUMBER in all Key-Numbered Digests and Iudexes |
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