Commercial Manuf Co Consolidated v. Fairbank Canning Co

• Decision Date: 21 April 1890
• Citation: 10 S.Ct. 718,135 U.S. 176,34 L.Ed. 88
• Parties: COMMERCIAL MANUF'G CO., CONSOLIDATED, et al. v. FAIRBANK CANNING CO. 1
• Court: U.S. Supreme Court

135 U.S. 176

10 S.Ct. 718

34 L.Ed. 88

COMMERCIAL MANUF'G CO., CONSOLIDATED, et al. v. FAIRBANK CANNING CO.¹

April 21, 1890.

Chas. K. Offield, T. D. Lincoln, and B. F. Thurston, for appellants.

Lysander Hill, for appellee.

BLATCHFORD, J.

This is a suit in equity, brought in the circuit court of the United States for the northern district of Illinois, on the 11th of December, 1882, by the Commercial Manufacturing Company, Consolidated, a New York corporation, and the National Dairy Company, an Ohio corporation, against the Fairbank Canning Company, an Illinois corporation, for the infringement of reissued letters patent No. 10,137 granted June 13, 1882, on an application filed May 20, 1882, to the Commercial Manufacturing Company, Consolidated, for an improvement in treating animal fats. The original patent, No. 146,012, was granted December 30, 1873, having been applied for December 13 1873, to Hippolyte Mege, as inventor it was assigned to the United States dairy company, and was reissued to that company as No. 8,424, September 24, 1878. That reissue was then assigned to one Remsen, who assigned it to the Commercial Manufacturing Company, Consolidated, to which reissue No. 10,137 was granted. The National Dairy Company was the exclusive licensee for the state of Illinois, in which state the infringement was alleged to have taken place. The answer set up, among other defenses, that the United States patent had expired before the last reissue thereof was granted, by reason of the expiration of certain foreign patents granted to Mege for the same invention; that the last reissue was invalid; and that the defendant did not infringe.

So much of the specification of reissue No. 10,137 as is important in the present case is as follows: 'Be it known that Hippolyte Mege, of Paris, France, now deceased, chemist manufacturer, did invent an improved means for transforming animal fat into butter, of which the following is a specification: This invention, which is the result of physiological investigations, consists of artificially producing the natural work which is performed by the cow when it reabsorbs its fat in order to transform the same into butter. The improved means he employed for this purpose are as follows: (1) Neutralization of the Ferments. In order to prevent the greasy substance which is settled in the tissue of the animals from taking the disagreeable taste of the fat, it is necessary that the ferments which produce this taste shall be completely neutralized. For this effect, as soon as possible after the death of the animal, he plunged the raw fats, called 'graisses en branches,' into water containing fifteen per cent. of sea salt and one per cent. of sulphite of soda. He began thus the transformation an hour, at least, after the immersion, and twelve hours, at most, afterwards. (2) Crushing. A complete crushing is necessary in order to obtain rapid work without alteration For this purpose, when the substance is coarsely crushed, he let it fall from the cylinders under millstones, which completely bruise all the cells. (3) Concentrated Digestion. The crushed fat falls into a vessel which is made a well-tinned iron or enameled iron or baked clay. This vessel must be plunged in a water bath, of which the temperature is raised at will. When the fat has descended in the vessel, he melted it by means of an artificial digestion, so that the heat does not exceed 103 deg. Fahrenheit, and thus no taste of fat is produced. For this purpose he threw into the washtub containing the artificial gastric juice about two liters per hundred kilograms of greasy substance. This gastric juice is made with the half of a stomach of a pig or sheep, well washed, and three liters of water containing thirty grams of biphosphate of lime. After a maceration during three hours, he passed the substance through a fine sieve, and obtained the two liters which are necessary for a hundred kilograms. He slowly raised the temperature to about 103 deg. Fahrenheit, so that the matter shall completely separate. This greasy matter must not have any taste of fat. It must, on the contrary, have the taste of molten butter. When the liquid does not present any more lumps, he threw into the said liquid one kilogram of sea salt (reduced to powder) per hundred kilograms of greasy matter. He stirred during a quarter of an hour, and let it set until obtaining perfect limpidness. This method of extraction has a considerable advantage over that which has been previously essayed. The separation is well made, and the organized tissues which do deposit are not altered. (4) Crystallization in a Mass. In order to separate the oleomargarine from the stearine, separated crystallizers or crystallizations at unequal temperatures have been already employed. He contrived for this purpose the following method, which produces a very perfect separation, and is as follows: He rendered the molten fat in a ves el, which must be sufficient for containing it. This vessel is placed in a washtub of strong wood, which serves as a water bath. In this washtub he put water at the fixed temperature of 86 deg. Fahrenheit for the soft fats proceeding from the slaughter-house, and 98 deg. for the harder fats, such as mutton fat. Afterwards the washtubs are covered; and after a certain time, more or less long according to the fats, the stearine is deposited in the form of teats in the middle of the oleomargaric liquid. (5) Separation by Centrifugal Force. In order to avoid the numerous inconveniences of the employment of the presses which have been hitherto used, he caused the mixture of stearine and oleomargarine to flow into a centrifugal machine, called 'hydro-extractor.' The greasy liquid passes through the cloth, and the stearine is collected. When all the liquid is passed, he put the machine in motion, and the crystals of stearine are entirely exhausted without the auxiliary of the presses. However, during certain seasons there are animals which produce crystals of stearine soft enough for rendering necessary the stroke of a press as a last operation; but in this case this operation has little importance, because it is applied only to a fraction of the product. In all cases the oleomargarine is separated from the stearine when it is cold, and passed to the cylinder, constituting, especially if its yellow color has been raised, a greasy matter of very good taste, and which may replace the butter in the kitchen, where it is employed under the name of margarine;' but, if it is desired to transform it into more perfect butter, he employed the following means.' The claims in that reissue are as follows: '(1) The improved material herein described, produced by treating animal fats so as to remove the tissues and other portions named, with or without the addition of substances to change the flavor, consistency, or color, as set forth. (2) The process herein described of treating animal fats in the production of oleomargarine.' The claims of reissue No. 5,868 were six in number, and those of reissue No. 8,424 were nine in number; while the claims of the original patent and of reissue No. 10,137 were identical in number and language.

After a replication to the answer, proofs were taken, and the case was heard before Judges GRESHAM and BLODGETT. The opinion of the court, delivered by the latter, is found in 27 Fed. Rep. 78; and, in accordance with its conclusions, a decree was entered, on the 22d of March, 1886, dismissing the bill. From that decree the plaintiffs have appealed the ground for the dismissal was that the Bavarian patent, which was granted April 8, 1873, expired April 8, 1876; that the Austrian patent, which was granted October 31, 1869, expired May 26, 1876; and that, therefore, reissue No. 10,137 was invalid, because the application on which it was granted was not made until May 20, 1882. Mege also took out a patent in France for his invention, July 15, 1869, for 15 years. The defendant contends that the Bavarian and the Austrian patents were granted for the same invention as reissue No. 10,137, while the plaintiffs allege the contrary.

The text of the specification of the Bavarian patent is as follows:

'The crude fats and the crude tallow have, until the present time, been used in a very imperfect manner for the preparation of edible fat or soaps, or the fabrication of melted tallow for the preparation of fatty acids, by means of chemical modes of saponification or other purposes. The new modes of procedure described herein consist both of chemical and physiological processes. They are not intended to improve the former methods of fabrication, but, on the contrary, on account of their nature and better properties, furnish neutral and new products. They are especially intended to benefit the navy and the less wealthy classes, by furnishing excellent edible and preservable fats at a price considerably lower than that of present similar products; for instance, butter and the finer grades off ats. The reduction in the price of butter will, in a large measure, contribute to the general wealth; for stock-raisers, instead of making butter, will feed their milk to calves, and thereby get more stock; thus furnishing more cattle for slaughtering purposes, and at a lower price. The new procedure is also of considerable importance, from a hygienic point of view, in doing away with the emanation of bad odors inevitable with the former chemical methods, and due to the excessive high temperature to which fats had been exposed. The new procedure depends upon the following conclusions of modern science; (1) That the malodorous, colored, acid, and rancid ingredients are not originally contained in the crude fats as they occur in nature; (2) that these harmful substances are developed by the activity of the organized tissues under the influence of fermentation, heat, and chemical agents; (3) that the fats of milk, termed 'butter,' consist only of the immediate fat, which is...