Commercial Acetylene Co. v. Avery Portable Lighting Co.

• Decision Date: 13 January 1909
• Parties: COMMERCIAL ACETYLENE CO. v. AVERY PORTABLE LIGHTING CO.
• Court: U.S. District Court — Eastern District of Wisconsin

166 F. 907

COMMERCIAL ACETYLENE CO. v. AVERY PORTABLE LIGHTING CO.

United States Circuit Court, E.D. Wisconsin.

January 13, 1909

This is a bill in equity charging infringement of United States letters patent No. 664,383, involving an invention of Claude & Hess for improved apparatus for storing acetylene gas issued December 25, 1900, and United States letters patent issued May 24, 1901, to Edmund Fouche, No. 727,609, for apparatus for storage of gases; which two patents were by mesne assignments transferred and assigned to complainant.

The answer specifically denies the several averments of the bill and avers that both of said letters patent in all substantial and material parts have been anticipated in the prior art setting up many references to former patents in this country and in Europe; and further averring that, during the prosecution of the applications which resulted in the issue of said two patents, the respective applicants so limited and restricted their respective claims in compliance with the requirements of the Patent Office, in view of the state of the art, that complainant is now estopped from contending that said claims cover anything more than the exact specific device shown and described in said letters patent. Infringement is specifically denied.

Upon the final hearing complainant withdrew its contention as to the Fouche patent, so that the issues in the case are limited to the Claude & Hess patent.

Bartlett Brownell & Mitchell and Carl F. Geilfuss, for complainant.

Chamberlin & Wilkinson and Ferdinand A. Geiger, for defendant.

QUARLES District Judge (after stating the facts as above).

It may be well in the first instance to consider the contention of estoppel supposed to result from abandonment of claims during proceedings in the Patent Office. The file wrapper and contents of the patent in suit show that Claude & Hess had pending at the same time two distinct applications, one for the method or process of forcing acetylene gas under pressure into a solvent for the purpose of storing and transporting such gas, and the other for the apparatus or package adapted to receive and store a supersaturated solution of acetylene for safe and convenient transportation.

After the proofs were closed herein, the defendant moved the court that the case might be opened, and for leave to introduce surrebuttal proofs on behalf of the defendant, for the purpose of putting in evidence the file wrapper and contents of the method application, to show the abandonment by Claude & Hess of a certain claim therein made which the Patent Office was willing to allow. This motion was resisted, and on May 20, 1907, the same was denied by the court, 'without prejudice to the renewal thereof upon terms.'

On November 8, 1907, the motion was renewed to permit defendant to take further testimony in surrebuttal, which motion was denied, except as to certain proofs touching the Fouche patent.

It thus appears that the defendant had no authority for offering in evidence the file wrapper of the method application, and that the same is not properly before the court, although printed as part of the defendant's proofs.

Complainant has objected at every stage to the introduction or use of such file wrappers, and this objection was renewed on final hearing. For these reasons I do not feel at liberty to consider the proceedings in the Patent Office touching the method application, or the claimed abandonment predicated thereon. The evidence, therefore, does not show what became of the process application, except that no patent was granted thereon.

The claims of the Claude & Hess patent here in dispute are Nos. 1, 2, and 5, which are as follows:

'(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.'

It would not be profitable to review in detail the long and bitter contest in the Patent Office before these three claims were allowed. The primary difficulty seems to have been to what extent the solvent supersaturated with gas might be considered an element of the combination in the apparatus patent. The office was disposed to consider the closed vessel and the reducing-valve as the only legitimate elements of the apparatus disclosure.

Claim 1 was rejected by the examiner as an aggregation, on the strength of Morgan Envelope Co. v. Albany Paper Co., 152 U.S. 425, 431, 14 Sup.Ct. 627, 630, 38 L.Ed. 500, where the court say:

'The first defense raises the question whether, when a machine is designed to manufacture, distribute, or serve out to users a certain article, the article so dealt with can be said to be a part of the combination of which the machine itself is another part.'

Along this line the examiner suggested striking out of the claim the word 'containing,' and inserting instead thereof the words 'adapted to contain' the solvent, so as to leave for consideration only the closed vessel with its inlet and outlet valves. This would have been fatal, because it was in the first instance decided that the closed vessel with the two valves containing acetylene gas involved no patentability.

A long contest in the office followed. It was finally held on appeal that, as an apparatus for storing and distributing acetylene gas, the solvent, with supersaturated solution of acetylene, might constitute an element of the combination, and a claim was suggested by the board, which is claim 1 of the patent in suit.

The subsequent controversy in the office was mainly as to whether the other claims suggested by Claude & Hess were within the scope of the above suggestion. But after repeated arguments and references, especially to the patent upon the thermometer with its bulb and stem, and the column of mercury contained therein, it seems to have been decided that the liquid and gaseous contents of this package might be legitimately suggested as elements of the combination constituting the package; but it was insisted that it should be specifically limited to a supersaturated solution of acetylene gas. To meet this requirement a broad amendment was inserted in the specification, lines 10 to 25, which seemed to satisfy the scruples of the board, without any formal change in the reading of the fifth claim; and claim 5, which had been in controversy, seems to have been allowed with claims 1 and 2. The court cannot find any substantial ground for the contention that claim 5 was allowed to slip through by mistake. As the record stands, there can be no doubt that Claude & Hess would be estopped if they claimed the right to handle any other kind of gas in this package.

The second issue is the patentability of the invention. It is contended that no invention is disclosed by Claude & Hess, but that, in view of the state of the art, their alleged discovery involves merely mechanical skill.

Time and space preclude a review of the learned and interesting discussion of expert scientists preserved in the record as to Henry's law with its many variations, or the general knowledge of the solubility of all gases in liquids, and the conclusions that might be naturally drawn therefrom by one skilled in the art.

There is one feature of the Claude & Hess discovery which is of paramount importance, namely, the peculiar affinity of acetone for acetylene, and especially the modifying influence of each upon the other when combined in a supersaturated solution. Acetone is volatile and inflammable, and its vapor when mixed with air is explosive. Acetylene is highly explosive. Defendant suggests no law of physics, or treatise, or source of information that would have led to the discovery that both elements would become harmless when so combined. Claude & Hess were the first to make known these peculiar and wonderful properties, which they must have discovered by actual experiment. This fact is attested by the literature of the art and by the testimony here adduced.

Prior to the discovery of Claude & Hess, acetylene was a well-known illuminant. Its brilliancy was appreciated. The simplicity and cheapness of its production had attracted general attention, but its explosive nature had put a ban upon its use. Every expedient to compress it for the purpose of transportation failed, and in many instances had been attended with disaster. As Prof. Hallock testifies:

'Prior to the introduction of the tanks referred to here in suit, the use of acetylene was practically restricted to those cases where it could be immediately generated at the time and place where it was to be used.' The principle in physics that all gases were soluble in liquids was well understood. What is known as 'Henry's Law' had been familiar for a hundred years, that, broadly speaking, the quantity of gas that a liquid would absorb depended upon

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