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the patent is not addressed to lawyers, or even to the public generally, but to the manufacturers of steel; and any description which is sufficient to apprise them in the language of the art of the definite feature of the invention, and to serve as a warning to others of what the patent claims as a monopoly, is sufficiently definite to sustain the patent. He may assume that what was already known in the art of manufacturin
steel was known to them, and, as . by Mr. Justice Bradley in Webster Loom Co. v. Higgins, 105 U.S. 580, 586, 26 L. ed. 1177, 1179, “he may, begin at the point where his invention begins, and describe what he has made that is new, and what it replaces of the old. That which is common and well known is as if it were written out in the patent and delineated in the drawings.” We think this second claim not only describes with sufficient clearness the purpose of the patent to secure uniformity of the molten metal in its constituent parts preparatory, to further treatment, but, read with the specification, sufficiently describes the process by which this uniformity may be secured by always preserving in the reservoir a sufficient quantity of molten metal to secure such uniformity"of product. It is undoubtedly true that the storage feature appeared more prominently in the specification which was first rejected upon the ground that it was not sufficiently dif
It appears elsewhere in the testimony that the intermediate reservoir or ladle was from fifteen to eighteen tons' capacity, and the converter from six to eight tons; that the molten metal" was tapped from the cupolas into the reservoir, and withdrawn for the converter, and as the intermediate ladle held considerably more than the amount of metal necessary to charge a converter, there was some incidental mixing; but the main and perhaps the only purpose of the reservoir was for storage, and that if any quantity of metal were left in the reservoir it was by accident rather than by design. It will be noticed, too, that the reservoir was open at the top. It does not appear to have been made use of in carrying out what is known as the direct process, the difference being that the cupola practice furnished a metal for the Bessemer converter that was uniform in composition, or prac
ferentiated from prior patents than in that which was finally accepted, but there is nothing to indicate that Jones did not understand from the first that the distinguishing feature of his invention was the reservation of a considerable quantity of iron in the reservoir. 3. The question of infringement only remains to be considered, and, in the view we have taken of the o devices, presents no serious difficulty. e court of appeals was of opinion that “the defendant's reservoir, or accumulating ladle, complained of, is the same in principle as one which has been in use at the Cambria works ever since Bessemer steel was first manufactured there, with only this difference, that at first it was used at cupola, now at furnace.” If such were the fact, of course defendant would not be open to the charge of infringement. Undoubtedly it has the right to make use of all prior devices, and particularly such as had been used at its own manufactory. In order to understand the device made use of by the defendant prior to the Jones invention, we reproduce herewith two small but easily understood cuts, taken from its brief, showing the character of the ladle known as the Bessemer intermediate ladle, used by it and generally by all American mills manufacturing steel by the Bessemer process.
tically so, while the direct metal was largely variable in composition. The testimony further shows that, after the installation of the Jones mixer at the Edgar Thomson works, Mr. Morgan, the defendant's mechanical engineer, visited and inspected these works, and obtained information as to their practical operation, and was advised by the superintendent as to the location and proper size of the mixer and its contiguity to the converters. Mr. Morgan does not deny this conversation, although he qualifies it by saying that he thought the Jones apparatus had grave defects. Shortly after this visit, and in the latter part of 1895, defendant installed an apparatus of its own for the operation of the direct process, which is herewith produced upon a small scale and in comparison
with the Jones process. It consisted of a covered refractory lined and turtle-shaped 3 receiving and pouring out the metal.
vessel of about 300 tons' capacity, arranged to tilt, and having a spout at either side#. e
§ metal was brought to the mixer and poured
in at one end, and," through a spout on the other side, was poured into a ladle, which supplied the Bessemer converters. The metal was supplied both from blast furnaces and cupolas, the former furnishing about two thirds, the latter about one third, of the metal used; but the metal from the cupola system was delivered by a ladle to the converter direct and not through the reservoir. The metal from the blast furnace entered the reservoir in about fifteen-ton ladle lots, and was withdrawn in approximately twelve-ton lots. The chief engineer of the company states that, “in accordance with the natural way of using the reservoir, it is ordinarily kept well filled up.” That in the practical operation of the mixer or reservoir a large quantity of iron was retained for mixing purposes is evident from the fact that a chalk mark was made on the side of the mixer, which was not allowed to run below the floor, as a guide to the men who rotated or tilted the mixer, since, if the mark went below the floor and out of sight, they could not tell how much iron was left in the mixer. Under these instructions not to allow the chalk mark to go below the floor there was retained in the mixer about 175 tons of molten metal, amply sufficient for the purposes stated in the Jones patent. Its principle of construction was similar to that of the Jones mixer, and its operation identical. Indeed, defendant's engineer himself says: “With the exception of additions of cupola metal, I do not know that there is any material difference between our practice and that described in the second claim” of the Jones patent. We agree, in the opinion of the circuit court, that “it is uite clear, in view of these facts, that inringement takes place. That initial mix: ing rather than storage is the purpose of the reservoir is shown by the fact that the cupola metal is not stored, but served direct in ladles to the converter plant. And that the homogeneous mixture, once obtained, is used as a dominant pool to produce a graduated, nonabrupt product, is shown by the chalk line minimum limit of 175 tons. With such a permanent dominant pool in constant use, we are clear that respondent's ractice infringes the second claim of the ones patent in both letter, and spirit.” If the contents of the mixer used by de
fendant were allowed”habitually to become • empty in carrying out its process, there would be no infringement; but all the evidence contradicts this. In the Jones practice this cannot be done, since the mixer cannot be tilted beyond a certain point. In the defendant's mixer it can be done, but is not, since the operator is not allowed to tilt it beyond a certain point gauged by a chalk mark. This seems to be the only foundation for the charge so frequently reiterated, and in varying language, that the methods in use before the Jones process deprived that process of all novelty, and if novelty existed it was by reason of the varying modes of executing such methods; the inference from this being that, as the Jones method was old, it could only be treated as new because of the conduct of individuals in applying the method and their intentions, and that this reduces itself to the proposition that the Jones patent rests upon the mere intention or minds of persons. If we understand this argument correctly, it is that the P. method contemplated storing only, and the mixing was but an incident, while the Jones patent contemplates mixing as its main object and storage only as an incident. This proposition that the application of this patent depends upon the individual intent of the operator overlooks the essential nature of a process patent. The directions and specifications of such a patent are addressed to those engaged and skilled in the art. It professes to disclose a method of procedure, not the particular instrumentality that may be employed. It may be, as suggested, that one person may, and in ignorance of the patented method, make use of a reservoir merely as such, and without any desire to avail himself of the patented process; but such a fact would not deprive the discoverer of the process of the protection of his patent. Such a supposed case might present a question of fact for a court or jury, and if it were made to appear that the party charged with infringement had, as in this case, changed the instrumentalities used by him after a new method had been disclosed, and particularly if he had for the first time used a special device necessary to that process, a jury might well refuse to believe and find that the defendant was only following the old methods of procedure, and not seeking to avail himself of the plaintiff's: invention. * *But we think the difference in the two"
processes may be illustrated by a very simple example: Let us imagine a reservoir containing, say, three quarts, and filled with one quart each of three liquids of different constituent parts, and withdrawn for further treatment at the rate of one or two quarts at a time. Necessarily there would be some incidental mixing, but it would occur at once that the main object of the reservoir was a retention of a sufficient quantity of the mixture to supply the receptacle for further treatment, and if no necessity existed for a longer retention of the liquid in the reservoir, it could be very quickly emptied by two discharges into the receiving vessel. Now, let us substitute for this reservoir a cask of, say, sixty quarts, into which the liquids of different constituent parts are poured in at one end from a multitude of receptacles, and discharged at the other end after remaining a certain time in the cask, and that this cask could not be tilted so far but what a quantity of liquid would be left within it amounting, say, to half its capacity. Now, if there be no distinction between these two operations there would be little left to the Jones process, the very vitality of which consists in the size of the cask relative to the ladles and the mixing of the various liquids poured into it before they are withdrawn. If, as insisted by the defendant and found by the court of appeals, the reservoir now used is the same in principle as the one which had been in use at the Cambria Iron Works ever since the Bessemer steel was first manufactured there, and the same were adequate for the purposes of the direct process, why was any change made? Therein we think the court of appeals made its most serious error. The defendant had an unquestioned right to manufacture steel as it had been accustomed to do; but instead of that it abandons the Bessemer uncovered ladle of twelve to eighteen tons, and adopts a covered refractory lined reservoir of 300 tons' capacity, and makes use of it, not as before, for the storage of cupola metal, but for the mixing of blast-furnace metal according to the direct process. This, too, was done immediately after Mr. Morgan's visit to plaintiff's works. It is true that with the growth of the production of furnaces from fifty tons a day in 1872 to four or five hundred tons in 1895 all apparatus, would naturally be increased in size; but why was the open reservoir theretofore used for cupola metal provided with a cover and enlarged in its capacity from fifteen to three hundred tons —twentyfold—while the converter was little more than doubled in size? Why was it so operated that 175 tons were left in the mixer as a dominant pool, if no infringement were contemplated? In the face of these facts the question so earnestly pressed by the defendant, whether the “method of mixing molten metal,” covered by the second claim, was one for securing a substantial homogeneous composition of metal, to the end of getting a practically uniform product, or was one simply for the purpose of preventing sudden variations in the com
positions of successive small portions drawn from the reservoir, without attaining substantial uniformity, loses most of its significance. We do not know how the process can be better described than in the specification itself: “To provide means for rendering the product of steel works uniform in chemical composition.” . The variations in such composition are said to be “particularly in silicon and sulphur,” and the process to be one of mixing, whereby the particles of metal “are diffused or commingled thoroughly among each other, and the entire charge is practically homogeneous in composition, representing in each part “an average of a variety of uniform constituent parts, all the charges of the converter from time to time will be substantially uniform.” This, denuded of all hypercriticism, is the object of the Jones invention, which seems to be the only one yet devised for carryin on what is known as the direct process. I it be true that this process cannot be carried on without infringing the Jones patent, he is certainly entitled to a monopoly of the invention. If it can be, then every method theretofore known for carrying on such process was . to the defendant. But we think the change from the Bessemer intermediate ladle to the Jones mixer was a radical one, and was made for a purpose. That purpose was clearly the adoption of the Jones process. It is true that before the facts were fully * ascertained a stipulation was signed to the 3 effect that the “amount of molten"metal in * said mixer (defendant's) varies from nothing to its full capacity, depending on the supply and demand, the supply being generally sufficient to keep the mixer more than half full of molten metal, which metal remains molten therein.” It appears, however, that upon the facts being more fully ascertained, notice was given that, in so far as the stipulation varied from the facts appearing in the testimony of defendant's expert, it would be repudiated, and particu: larly that portion wherein it was said “that the amount of the molten metal in the mixer varies from nothing to its full capacity.” As it clearly appears from the mouths of defendant's own witnesses (notably Mr. Morgan) that, in the usual operation of the mixer, the ordinary amount of metal kept in the reservoir was more than one half its capacity, we think that plaintiff's, case should not be prejudiced by this stipulation. Stipulations are ordinarily entered into for the purpose of saving time, trouble, or expense, and in this case it recites that “as defendant's counsel is expected to sail for Europe in a few days, and may not be back for about four months, it is therefore stipulated by counsel for both parties, to save delay, as follows.” But while the stipulation is undoubtedly admissible in evidence it ought not to be used as a pitfall, and where the facts subsequently developed show, with respect to a particular matter, that it was inadvertently signed, we think that, upon giving notice in sufficient time to prevent prejudice to the opposite party, counsel may repudiate any fact inadvertent
ly incorporated therein. This practice has been frequently upheld in this and other courts. The Hiram, l Wheat. 440, 4 L. ed. 131; Hurt v. Hollingsworth, 100 U. S. 100, 103, 25 L. ed. 569, 570; Malin v. Kinney, 1 Cai. 117; Barry v. New York Mut. L. Ins. Co. 53 N. Y. 536. In short, we are clearly of ". that the reservoir now in use is used for entirely different purposes from the intermediate Bessemer ladle formerly employed; that the process carried on with it is identical with the Jones invention; and that its primary, if not its sole, use, is for mixing purposes, with necessarily incidental storage, while the Bessemer intermediate ladle was solely used for storage, with little, if any, thought of the advantages to be gained by an incidental mixing. *Discarding now all that does not bear directly upon the validity of the Jones patent, and dropping all superfluity of words, let us determine exactly what Jones has contributed, if anything, to the art of making steel. He undoubtedly found reservoirs of small size in use, in which were poured from receiving ladles enough molten metal to fill them, and from which a sufficient amount was discharged to supply a converter, usually about half the size of the reservoir. But in all these cases the fact whether any particular amount of metal was left in the reservoir was treated as a matter of indifference or accident, although there must have been necessarily some incidental mixing; and probably the metal as it ran into the converters approximated more nearly to uniformity than when it ran into the reservoir. The former methods were adequate for cupola metal, uniformity in which had been largely secured by a careful selection and breaking up of the pigs, but it had not proved a success for blast-furnace metal, except that it had been used to a very limited extent in foreign countries where the peculiar character of the iron ore
had rendered it possible to carry on a direct i
process, , although apparently by , methods quite other than those employed by Jones. The principal step employed by Jones was to magnify the capacity of the reservoir about twentyfold, provide it with a cover, and to arrange that it should not be tilted beyond a certain point, in order that a “considerable quantity” of molten metal might be retained in it for a sufficient time to accomplish a pretty thorough mixing, but little change having been made in the meantime in the size of the receiving ladles and converters. As the reservoir was designed to hold a large quantity of metal for a considerable time it must have been covered to obviate the contents being crusted over or sculled. As soon as this method had proven to be successful by employment at the Edgar Thomson works, and had become so well known as to attract the attention of other manufacturers of steel, it found a ready sale, was adopted by all the leading manufacturers in §. country, and was sold for use abroad for about $50,000. It should be borne in mind that this pro
cess was one not" accidentally discovered, but was the result of a long search for the very purpose. The surprise is that the manufacturers of steel, having felt the want for so many years, should never have discovered from the multiplicity of patents and of processes introduced into this suit, and well known to the manufacturers of steel, that it was but a step from what they already knew to that which they had spent years in endeavoring to find out. It only remains now for the wisdom which comes after the fact to teach us that Jones discovered nothing, invented nothing, accomplished *..."; We cannot better conclude this opinion than by the following extract from the opinion of Mr. Justice Bradley in Webster Loom Co. v. Higgins, 105 U. S. 580, 591, 26 L. ed. 1177, 1181: “But it is plain from the evidence, and from the very fact that it was not sooner adopted and used, that it did not, for years, occur in this light to even the most skilful persons. It may have been under their very eyes; they may almost be said to have stumbled over it; but they certainly failed to see it, to estimate its value, and to bring it into notice. Now that it has succeeded, it may seem very plain to anyone that he could have done it as well. This is often the case with inventions of the greatest merit. It may be laid down as a general rule, though perhaps not an invariable one, that if a new combination and arrangement of known elements produce a new and beneficial result, never attained before, it is evidence of invention.” The decree of the Circuit Court of Appeals is therefore reversed, and the case remanded to the Circuit Court for the Western District of Pennsylvania for further proceedings consistent with this opinion.
Mr. Justice White, with whom concurs Mr. Chief Justice Fuller, Mr. Justice Harlan, and Mr. Justice Brewer, dissent
ing: To elucidate the reasons which constrain me to dissent, it is deemed essential to give a mere outline of the processes by which iron and steel were made prior to June 4, 1889, when the patent in suit was issued, in so far as such processes in some aspects *concern the manufacture of steel by what is known as the Bessemer method, to which the court now declares the patent in suit solely relates. Into the stack of a smelting furnace iron ore, with suitable fluxing material and fuel, was introduced. In the operation of the furnace the ore was reduced to a metallic state by the oxidizing action of carbon or gas containing carbon. This metallic iron melted in the lower part of the furnace, taking up a F." of carbon and other ingredients, dropping to the bottom of the hearth as molten pig iron. The earthy impurities combined with the flux, and were also melted and descended into the hearth, resting upon the top of the molten metal. The molten metal was drawn from the
hearth from time to time by or. , and the molten impurities, combined with the
flux, forming a cinder, were also drawn from the hearth at a higher level. As the molten iron was tapped it was run out into molds, and came to be known as pig iron or pigs. These pigs were not of uniform com: position, because of the varying quantity of the constituents contained in the ore and the chemical changes wrought by irregularities incidental to the operation of the furInace. To make foundry castings, pigs were selected, broken up, charged into a cupola furnace, reduced to a molten state, and the liquid was drawn off into a receiving ladle. From this the quantity desired was tipped into a smaller vessel known as a casting ladle, and was poured into the molds. Where more than one cupola furnace was employed, each was tapped, , and the metal F. through a groove into a receiving adle, common to the furnaces, where it was held for use, and drawn as required into a casting ladle, and carried to the molds, as already mentioned. In 1855 and 1856 Sir Henry Bessemer obtained various patents covering his discovery for producing malleable iron and steel by forcing currents of air through molten iron. The appliance described was a refractory lined vessel, called by Bessemer a converting vessel, which came to be designated as the converter or the vessel. With2 out going into detail, it suffices to say that, : for various reasons, the method of Sir Hen* ry" Bessemer proved not to be as advantaus as had been expected. Indeed, it was not until Mushet patented a method of decarbonizing iron by completely blowing it and adding ferromanganese or speigel-eisen in a molten state that the difficulty of producing steel was solved and the process of Sir Henry Bessemer was rendered practical. Despite, however, the fact that Mushet's discovery was of immense value and rendered Bessemer's conceptions a commercial success, Mushet allowed his patent right to lapse through neglect to pay the requisite fees in the third year; † (to quote the language of the author of the article on Iron, contained in Encyclopaedia Britannica, 9th ed. vol. 13, p. 342) “in consequence his name is all but forgotten in connection with his improvement on Bessemer's own process, the combination being ordinarily termed “Bessemerizing.’” In the manufacture of steel by the Bessemer-Mushet process two methods were followed, one termed the indirect, the other the direct. In the indirect, pigs were charged into a reverbatory furnace, for which, at a later date, a cupola furnace was substituted. In such furnace the pigs were melted and run into ladies or reservoirs, and thence the molten iron was conveyed to the converter for the necessary treatment. Without attempting to give accurately the variations in the size and consequent capacity of cupola furnaces and converters, it is unquestioned that the quantity of molten metal which could be drawn at a single tapping from the cupola, was usually not adequate to supply a full charge to the converter. It followed that ordinarily more than one
cupola furnace was used to supply a converter, and that the tappings from such cupolas were drawn into a common reservoir or ladle, and there stored until required to be carried to the converter. Indeed, irrespective of the necessity of storing the tappings, growing out of the difference between the capacities of the vessels in question, such storage was additionally required in order that the operation might be continuous, in case of delay resulting from accident to the converter or otherwise. In the direct process the capacity of blast furnaces greatly exceeded that of cupola furnaces. The molten iron was tapped directly from the blast furnace into a number of receiving reservoirs or ladles, and car-> ried for treatment to the converter. § • On October 31, 1888, William R. Jones • made application for two letters patent, one stated to be for a new and useful improvement in apparatus “for mixing molten pig metal,” the other for a process declared to be “a new and useful improvement in methods of mixing molten pig metal.” The application for the first or apparatus patent was several times rejected, and, after various amendments, was finally allowed. This patent may be dismissed from view, as it is not involved in this controversy. The first application for the process patent—which is the patent under consideration in this case—was rejected. Thereupon a new and amended application was presented. This was also rejected, when a second amendment was made, and the application was finally allowed. As the opinion of the court has reproduced the specifications and claims of the patent, it is unnecessary to repeat them in detail, and therefore a mere outline of them is now given. The patent was entitled “Method of Mixing Molten, Pig Metal.” The primary object of the invention was stated to be “to provide means for rendering the product of steel works uniform in chemical composition.” It was also stated that: “My invention is not limited to its use in connection with converters, since similar advantages may be obtained by casting the metal from the mixing vessels into pigs for use in converters, puddling furnaces, or for any other uses to which pig iron may be put in the art.” It was further stated that: “My invention may be practised with a variety of forms of apparatus, for example, by merely receiving in a charging ladle a number of small portions of metal taken from several ladles or receiving vessels containing crude metal obtained at different times or from different furnaces, mixing being performed merely by the act of pouring into the charging ladle, and other like means may be employed.” It was, however, declared that it was preferable to use the device covered by the apparatus patent, and a description of the same was set out. That device may be thus described: It consisted of a covered tilting tank of large size, “holding, say, 100 tons of metal [more or less],” lined so as e “to retain the heat of the molten contents? of the vessel and to prevent chilling there-