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To give such a construction to the patent would subordinate the clear description contained in it of what are oils of the process, to an implied and vague description and classification which would leave the whole subject again at large, to become a field for further experimentation, without definition in the patent of what oils or froths would satisfy it. So interpreted, the patent could not reasonably be said to contain a disclosure of the discovered process in the "full, clear, concise and exact terms" required by law (R. S. § 4888 [Comp. St. § 9432]), and the claims might conceivably be said to fall short of "particularly pointing out and distinctly claiming" any discovery at all within the meaning of the act of Congress.
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 reclaim 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 a fraction of one per cent. of oil on the ore." From this consideration of the terms of the patent as written, it is apparent that it makes no differentiation whatever, either in the claims or in the specification, among the oils having a preferential affinity for metalliferous matter, and that its disclosure, to which the petitioners must be limited, is that, when a fraction of 1 per cent. on the ore of any such oil is used in the manner prescribed, there will be produced a metal-bearing | froth, the result of the process. No notice is given to the public, and it is nowhere "particularly pointed out" in the claims, that some oils or combination of oils, having a preferential affinity for metalliferous matter, 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.
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 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.
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 investigations 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:
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?
"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.
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.
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.
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?
"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
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.
 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
AND FEDERAL GOVERNMENT.
Under the Constitution, the authority of the United States is paramount, when exerted as to subjects concerning which it has power to control; and this is so in cases where both the state and federal government have authority to regulate.
rights under the patent greater than may be 4. STATES 4-CONFLICT BETWEEN STATE legitimately obtained under the claims held valid, and we therefore deem it sufficient to meet the requirements of the statutes cited. It results that the decree of the Circuit Court of Appeals that the respondent infringed the patent only when using one-half of 1 per cent. or less of oil on the ore must be reversed, but that its implied holding that the use made by respondent of petroleum products and pine oil in excess of 1 per cent. on the ore did not constitute infringement must be sustained. The cause is remanded to the District Court for further proceedings in conformity with this opinion. Reversed in part.
(250 U. S. 135)
NORTHERN PAC. RY. CO. et al. v. STATE
LANGER, Atty. Gen.
5. RAILROADS 52, New, vol. 6A Key-No. Series-FEDERAL OPERATION-CARRIERS.
Under Act March 21, 1918, § 10 (Comp. St. 1918, § 3115%), authorizing the President to fix rates for railroads under federal control, but providing for review by the Interstate Commerce 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.
6. UNITED STATES 125 SUIT AGAINST UNITED STATES-RAILROADS-FEDERAL CONTROL-SUIT AGAINST DIRECTOR GENERAL.
As the claim that the power of the Presi
(Argued May 5, 1919. Decided June 2, 1919.) dent, acting through the Director General, to
1. RAILROADS 52, New, vol. 6A Key-No. Series FEDERAL CONTROL-RATE-MAKING POWER.
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, § 3115j).
fix rates for railroads under federal control, given by Act March 21, 1918, § 10 (Comp. St. 1918, § 31154j), 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.
In Error to the Supreme Court of the State of North Dakota.
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. A peremptory writ was
2. RAILROADS 51⁄2, New, vol. 6A Key-No. awarded (172 N. W. 324), and defendants
Series FEDERAL CONTROL RATE-MAKING
As the federal control and operation of rail-
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, § 31154), 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.
bring error. Reversed and remanded.
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 com
For other cases see same topic and KEY-NUMBER in all Key-Numbered Digests and Iudexes
manding the Director General of the rail- [used upon or operated as a part of such rail or roads, appointed by the President, and the combined rail and water systems of transportaofficers of the Northern Pacific Railway Com- tion, to the end that said systems of transportapany to desist from charging for transporta- tion be utilized for the transfer and transportation in intrastate business in North Dakota the exclusion so far as may be necessary of all tion of troops, war material and equipment, to the rates fixed by the United States for such other traffic thereon, and that so far as such exservices. When this command was obeyed, clusive use be not necessary or desirable such the mandamus ordered that the Director Gen- systems of transportation be operated and utileral should thereafter exact for the services ized in the performance of such other services stated only lesser rates which were fixed as the national interest may require and of the in a schedule on file with the State Utilities usual and ordinary business and duties of comCommission prior to the bringing of sult and won carriers." Comp. St. 1918, § 1974a.
which rates under the law of North Dakota could not be changed without the approval of the Utilities Commission. In the opinion of the court below it was stated that all the parties admitted that there was no question as to the jurisdiction to consider the controversy and that they all also agreed that no contention was presented as to the power of Congress to enact the law upon which the controversy depended, as the correct interpretation of such law was the only issue to be decided. We consequently put those subjects temporarily out of view. We say temporarily, since even upon the assumption that issues concerning them necessarily inhere in the cause and cannot be waived by the parties, we could not decide concerning such issues without interpreting the statute, which we proceed to do.
On the 29th of August, 1916 (39 Stat. 645, c. 418 [Comp. St. § 1974a]), Congress gave the President power, "in time of war,
to take possession and assume control of any system or systems of transportation, or any part thereof, and to utilize the same, to the exclusion as far as may be necessary of all other traffic thereon, for the transfer or transportation of troops, war material and equipment, or for such other purposes connected with the emergency as may be needful or desirable." War with Germany was declared in April, 1917, and with Austria on December 7th of the same year. *40 Stat. 1, c. 1; 40 Stat. 429, c. 1. On December 26, 1917, the President, referring to the existing state of war and the power with which he had been invested by Congress in August, 1916, proclaimed that
By the proclamation a Director General of Railroads was appointed with full authority to take possession and control of the systems embraced by the proclamation and to operate and administer the same. To this end the Director General was given authority to avail himself of the services of the existing railroad officials, boards of *directors, receivers, employés, etc., who were authorized to continue to perform their duties in accordance with their previous authority "until and except so far as such Director shall from time to time by general or special orders otherwise provide." Limited by the same qualification the systems of transportation taken over by the government were made subject to existing statutes and orders of the Interstate Com
merce Commission and to all statutes and orders of regulating commissions of the various states in which said systems or any part thereof might be located. In addition, however, to the limitation previously stated the proclamation in express terms declared:
"But any orders, general or special, hereafter made by said Director, shall have paramount authority and be obeyed as such."
The proclamation imposed the duty uvon the Director General to negotiate with the owners of the railroad companies for an agreement as to compensation for the possession, use and control of their respective prop erties on the basis of an annual guaranteed compensation and with reservations in the interest of creditors, bondholders, etc. The proclamation in concluding declared that
"From and after twelve o'clock on said twentyeighth day of December, 1917, all transportation systems included in this order and proclamation shall conclusively be deemed within the possession and control of said Director without further act or notice."
Carrying out the authority exerted by the proclamation, the railroads passed into the possession, control and operation of the Director General.
"Under and by virtue of the powers vested in me by the foregoing resolutions and statute, and by virtue of all other powers thereto me enabling, [I] do hereby * take possession and assume control at 12 o'clock noon on the 28th of December, 1917, of each and every system of transportation and the appurtenances thereof located wholly or in part within the boundaries of the continental United States and consisting of railroads, and owned or controlled systems of coastwise and inland transportation, engaged in general transportation, whether operated by steam or by electric power, including also terminals, terminal companies and terminal associations, sleeping and parlor cars, private "An act to provide for the operation of transcars and private car lines, elevators, and ware-portation systems while under federal control, houses, telegraph and telephone lines, and all for the just compensation of their owners, and other equipment and appurtenances commonly for other purposes."
On March 21, 1918 (Act March 21, 1918, c. 25, 40 Stat. 451 [Comp. St. 1918, § 3115a]). uealing with the subject Congress passed a law entitled:
The opening sentences of the act declared:, *On May 25, 1918, the Director General "The President, having in time of war taken made an order establishing a schedule of over the possession, use, control, and operation rates for all roads under his control and cov*(called herein federal control) of certain rail-ering all classes of service, intrastate as well roads and systems of transportation (called here- as interstate. The order made these rates in carriers), is hereby authorized to agree with effective on designated dates in the month of and to guarantee to any such carrier making June and they were continuously enforced operating returns to the Interstate Commerce during a period of about eight months up to Commission, that during the period of such fed- the 14th of February, 1919, when the bill in eral control it shall receive as just compensa- this case was filed by the State Utilities tion an annual sum, payable from time to time in reasonable installments, for each year and Commission for mandamus against the Dipro rata for any fractional year of such federal rector General and the officers of the Northcontrol, not exceeding a sum equivalent as near- ern Pacific Railway, asserting the want of ly as may be to its average annual railway power in the United States over intrastate operating income for the three years ended June rates and the exclusive right of the state of 30, 1917." North Dakota to fix such rates for all intrastate business done in that state. The Director General, admitting that he had made the order complained of and had collected the rates earned thereunder and paid them into the treasury of the United States, sustained his action and denied the alleged right of the state upon the legislation and official acts which we have stated. The Northern Pacific denied interest on the ground that its railway had passed under federal control and that it was receiving the compensation therefor which had been agreed on between itself and the United States. It alleged that the rates under the order complained of had been collected by the Director General through agents appointed by him who were not officials of the company and therefore it had no
Without going into detail it suffices to say that the first eight sections of the act comprehensively provided for giving effect to the purposes just stated and in a general way contemplated affording what was deemed to be just compensation to the owners for the use of their property. In addition it empowered agreements in the interest of security holders of the railroads and sanctioned provisions deemed fair to the United States and to the owners of the property for betterments which might be required to be made during the term of control and for the return of the property when the government possession came to an end, which return was to be accomplished within a stated period after the cessation of war by the proclamation of the ratification of a peace treaty.
Beyond doubt also, for the purpose of enabling the United States to perform the obligations which it assumed and to secure it from ultimate loss from the pecuniary responsibilities which might result, including the repayment to it of an appropriation of $500,000,000 which the act made applicable, all the earnings of the railroads were by the act expressly made the property of the United States.
The remaining eight sections of the act need not be stated; but as section 10 (Comp. St. 1918, § 31154j), which expressly provides for the power to fix rates, and section 15 (Comp. St. 1918, § 31150), making certain reservations concerning the powers granted, were greatly relied upon in the opinion below and in the argument at bar, we reproduce in the margin the more relevant portions of section 10 and the text of section 15.1
1 "Section 10.
That during the period of federal control, whenever in his opinion the public interest requires, the President may initiate rates, fares, charges, classifications, regulations, and practices by filing the same with the Interstate Commerce Commission, which said rates, fares, charges, classifications, regulations, and practices shall not be suspended by the commission pending final determination.
"Said rates, fares, charges, classifications, regulations, and practices shall be reasonable and just and shall take effect at such time and upon such notice as he may direct, but the Interstate Commerce Commission shall, upon complaint, enter
upon a hearing concerning the justness and rea-
"After full hearing the commission may make such findings and orders as are authorized by the act to regulate commerce as amended, and said findings and orders shall be enforced as provided in said act: Provided, however, that when the President shall find and certify to the Interstate Commerce Commission that in order to defray the expenses of federal control and operation fairly chargeable to railway operating expenses, and also to pay railway tax accruals other than war taxes, net rents for joint facilities and equipment, and compensation to the carriers, operating as a unit, it is necessary to increase the railway operating revenues, the Interstate Commerce Commission in determining the justness and reasonableness of any rate, fare, charge, classification, regulation, practice shall take into consideration said finding and certificate by the President, together with such recommendations as he may make."
"Sec. 15. That nothing in this act shall be construed to amend, repeal, impair, or affect the existing laws or powers of the states in relation to taxation or the lawful police regulations of the several states, except wherein such laws, powers, or regulations may affect the transportation of troops, war materials, government supplies, or the issue of stocks and bonds."