Commercial Acetylene Co. v. Searchlight Gas Co.

• Decision Date: 26 June 1912
• Docket Number: 30,301.
• Citation: 197 F. 908
• Parties: COMMERCIAL ACETYLENE CO. et al. v. SEARCHLIGHT GAS CO. et al.
• Court: U.S. District Court — Northern District of Illinois

197 F. 908

COMMERCIAL ACETYLENE CO. et al. v. SEARCHLIGHT GAS CO. et al.

No. 30,301.

United States District Court, N.D. Illinois, Eastern Division.

June 26, 1912

Clarence Winter, Keyes Winter, John P. Bartlett, Brothers & Mills, and Charles H. Hamill, for complainants.

Robert H. Parkinson, John S. Miller, Merritt Starr, and Wallace R Lane, for defendants.

KOHLSAAT Circuit Judge.

Final hearing. This cause was before the court on April 25, 1911 on motion for a preliminary injunction. The matter involved is the gas package described in claims 1, 2, and 5 of letters patent No. 664,383, granted December 25, 1900, to Bruno Abdank-Abakanowicz, assignee of Claude & Hess, the inventors for an apparatus for storing and distributing acetylene gas. On that hearing, the court was of the opinion that the invention covered by the patent in suit was fully disclosed in the British patent No. 29,750, issued to Claude & Hess upon application filed June 30 1896, which patent expired on June 30, 1910, under the British law; that at the time this suit was instituted (February 1, 1911), and at a time more than seven months prior thereto, the patent in suit had expired with the said British patent; and that at the time of filing the bill herein for an injunction, no cause of action existed, in view of the provisions of section 4887 of the Act of July 8, 1870, as amended by the Act of March 3, 1897 (U.S. Comp. St. 1901, p. 3382). At this hearing, complainant contends that the court was in error in so holding; that the British patent did not cover an apparatus device; and that by reason of the Treaty of Brussels (Dec. 14, 1900, 32 Stat. 1936), which became operative between the United States and certain foreign countries, including England, on September 14, 1902, and of the Act of March 3, 1903, c. 1019, 32 Stat. 1225 (U.S. Comp. St. Supp. 1911, p. 1453), the said provision of the Act of March 3, 1897, leaving the terms of the act of 1870 in force as to all applications filed and patents granted prior to January 1, 1898, was repealed, whereby the life of the patent in suit was extended to the full term of 17 years, and was therefore a valid right at the time this bill was filed.

For the defense, it is insisted: (1) That the apparatus involved herein was not new; (2) that the patent had expired before suit was brought; (3) that defendant does not use the reducing-valve, and, consequently, does not infringe.

On March 1, 1897, Claude & Hess filed in the Patent Office their two applications for patents, the one numbered 625,580, ostensibly for an apparatus, being that upon which the patent in suit was granted, and the other numbered 625,581, ostensibly for a method of storing acetylene, consisting in forcing acetylene under pressure into a liquid solvent, such as acetone. This latter application proceeded as far as the Commissioner, following whose adverse rulings the applicants seem to have abandoned it entirely. Before so doing, they had changed their specification and so amended their proceedings that there remained little difference between it and its companion application.

'The object of the present invention,' they state (D.R. 296) 'is to provide means for distributing the gas in holders without reducing the same to a liquid by direct compression, although providing for the storage of a large quantity of the gas in a small space without encountering dangerous pressure,' etc.

With regard to said last-named application, counsel for applicants, in their argument before the Commissioner, state:

'It is proper to say, however, that in our judgment the illustration contained in the apparatus case, or a portion thereof, should be reproduced in this, since the reducing-valve, or some equivalent thereof, is contemplated in the claims in this.'

This is urged in support of defendants' contention that the apparatus claim is for nothing more than an ordinary receptacle, inseparable from the method claim, unless read in connection with an automatic reducing-valve, which they do not employ. The Commissioner disposed of the matter in the following language:

'If there were any novelty in using a pressure regulator to permit gas under pressure to flow at a uniform rate to its place of use, these claims might have some standing. whole class of patents is devoted to them. * * * These pressure-regulating devices are used wherever gases under higher pressure than is desired are to be distributed, or used under lower uniform pressure. The use of this old apparatus to perform its usual function in connection with an old method of compressing gas into a solution is not a new invention, but a mere application of the expected knowledge of any one familiar with the art of gas distribution.'

In their application, serial No. 625,580, on which the patent in suit was granted, complainants disavow any intention of attempting to secure a patent upon the vessel used to contain a liquid, but claim 'a closed receptacle containing acetylene gas in solution. ' Page 1, col. 1, 1. 28.

The claims in suit, Nos. 1, 2, and 5, read as follows, viz.:

'1. A closed vessel containing a supersaturated solution of acetylene produced by forcing acetylene into a solvent under pressure, said vessel having an outlet for the acetylene gas which escapes from the solvent when the pressure is released or reduced, and means for controlling said outlet whereby the gas may escape therethrough at substantially uniform pressure, substantially as described.

'2. A prepared package consisting of a tight shell or vessel; a solvent of acetylene contained within said vessel; and acetylene dissolved in and held by said solvent under pressure and constituting therewith a supersaturated solution, the package being provided at a point above the solvent with a reducing-valve, substantially as and for the purpose set forth.'

'5. As a new article of manufacture, a gas package comprising a holder or tight vessel; a contained charge of acetone; a volume or body of gas dissolved by and compressed and contained within the solvent; and a reducing valve applied to an opening extending to the interior of the holder above the level of the solvent, substantially as set forth.'

In substance, as will be seen, claim 1 calls for a receptacle containing a supersaturated solution of acetylene; claim 2 calls for a receptacle containing a solvent for acetylene, acetylene forced thereinto and held under pressure; and claim 5 calls for a receptacle, a body of acetone, a body of gas dissolved and compressed within the solvent. Claim 1 also calls for an outlet for the gas, controlled so as to produce uniform escape pressure. Claims 2 and 5 call for reducing-valves above the storage chamber. The specification (page 1, col. 1, 1. 47) reads:

'The inlet and outlet passages are provided with suitable valves or cocks to close the same after the receptacle is charged with gas and when it is not in use. It is further desirable for the proper operation of the burners supplied in this way that the gas should be delivered thereto under a substantially uniform pressure only slightly above the atmospheric pressure, and for this purpose means are provided for controlling the outlet whereby the gas is allowed to escape therethrough at substantially uniform pressure, a reducing-valve being herein shown as interposed between the interior of the receptacle which contains the dissolved gas and the outlet from which said gas is allowed to escape for use.'

And again (page 1, col. 2, 1. 92) it is said:

'In order that the gas delivered from the receptacle may pass into the pipes to the burners under a substantially uniform pressure (the pressure of the gas within the receiver, of course, decreasing as the gas passes out therefrom), a reducing-valve d of any suitable or usual construction is interposed between the interior of the receptacle and the outlet c therefrom. As herein shown, the said reducing-valve is in a passage d2, connecting the spaces below and above a wall or partition d3 near the upper portion of the receptacle a. The dissolved acetylene being contained in that portion of the receptacle which is below the said partition, the portion above being normally empty and forming a reservoir for the gas at low pressure which has passed into said reservoir through the said reducing-valve. In order that the reducing-valve d may be set or adjusted to respond to any desired pressure, the vessel a is shown as provided with a removable plug d4, through which access may be had to the adjusting-stem d5 of said valve. It is obvious that through the agency of the reducing-valve the pressure in said upper reservoir will be substantially uniform, so that the supply of gas in the pipes is properly controlled, the pressure being substantially the same when the receptacle is fully charged as when it is nearly exhausted.'

It is also apparent from the drawings of the patent in suit herewith produced that the automatic reducing-valve is an essential element of complainant's combination, and a necessary feature in securing the uniform pressure called for in claim 1 in discharging the gas.

(Image Omitted)

Defendants employ no reducing-valve such as contemplated in the patent in suit. They do not provide for uniform pressure of the escaping gas. They deliver the gas to the burner or receptacle directly from the storage tank, regulating the volume of the flow by a cock or valve, preferably a needle-valve. No attempt is made to secure a uniform pressure. Complainants, it is said, now use no reducing-valve, but employ the needle-valve. This form of valve is very old. It was held by Judge Quarles, in Commercial Acetylene Co. v. Avery Portable Lighting Co (C.C.) 166 F. 907, that the needle-valve was the equivalent of the...