Royer v. Coure

• Decision Date: 19 December 1892
• Docket Number: No. 82,82
• Citation: 13 S.Ct. 166,36 L.Ed. 1073,146 U.S. 524
• Parties: ROYER v. COURE et al
• Court: U.S. Supreme Court

146 U.S. 524

13 S.Ct. 166

36 L.Ed. 1073

ROYER

v COURE et al.

No. 82.

December 19, 1892.

M. A. Wheaton, for appellant.

W. H. Thurston, for appellees.

Mr. Justice BLATCHFORD delivered the opinion of the court.

This is a suit in equity, brought in the circuit court of the United States for the district of Massachusetts, by Herman Royer against William Coupe and Edwin A. Burgess, copartners under the name of William Coupe & Co., founded on the infringement of letters patent No. 149,954, granted April 21, 1874, to the plaintiff, as inventor, for an 'improvement in the modes of preparing rawhide for belting,' on an application filed December 31, 1872.

The specification of the patent is as follows: 'After the removal of the hair from the hide by means of sweating,—a process familiar to every tanner,—the hide is dried perfectly hard. Then it is inserted in water for ten to fifteen minutes,—long enough to lose its extreme stiffness. In this condition the process of fulling is commenced. This may be done in a machine constructed for this purpose, and patented by me May 12, 1868, under No. 77,920. Before the hide is passed into the machine the second time it is stuffed with a mixture of twenty parts tallow, two parts wood tar, and one part resin. About two pounds of this mixture is put on a steer hide in a warm liquid state with a brush. After the hide leaves the machine the second time, it is ready for the next operation. It is then moistened with water four or five times during the day. The next day it is stretched and cut into pieces suitable for belting. For purposes of lacing the thinnest hides are selected; and, after they have gone through the same mode of treatment as hides for belting, they are shaved, oiled, and hung up to get perfectly dry, when the hide is cut into strings. In order to more fully understand my mode of preparing hides, I avoid the use of lime, acid, and alkali; for, just to the amount a hide is impregnated with such substances, it suffers in its tensile strength and toughness; a slow but constant dissolution is going on with hides so impregnated. If the effects of the aforesaid substances are in some way neutralized, which must be a chemical one, the hide suffers again in this process. The power to resist abrasion, and the extreme tensile strength for which pure rawhide is noted, are irreparably lost. [I am aware that hides and skins have been prepared by a fulling or bending operation to render them pliable, but this mode alone does not answer for the preparation of machine belts and lacing. It is necessary to make use of a preparation substan- tially such as before described to render the rawhide fit for use and durable.] The tallow has the effect of imparting a high degree of elasticity, and keeps the moisture. The wood tar prevents dogs, cats, mice, vermin, etc., from attacking the hide, at the same time causing the tallow to enter the hide quickly and thoroughly. The resin gives the belting a certain solidity and glossy appearance, and assists also in preventing animals and vermin from attacking the belting. Belts and lacing made of such prepared hide are in all respects stronger, more lasting, and cheaper than those made from common leather.'

The claim is as follows: 'The treatment of the prepared rawhide in the manner and for the purposes set forth.'

The bill of complaint is in the usual form. The answer sets up want of novelty and noninfringement. It also avers that the process set forth in the patent is composed of a series of steps, consisting of (1) the removal of the hair from the hide by means of sweating; (2) drying the hide perfectly hard; (3) then softening the hide slightly by soaking in water; (4) fulling the hide; (5) stuffing the hide with 20 parts of tallow, 2 parts of wood tar, and 1 part of resin; (6) fulling the hide a second time; (7) repeated moistenings with water; and (8) stretching and cutting into belting. It avers that the supposed importance of the plaintiff's alleged invention is the avoidance of the use of lime, acid, or alkali in the treatment of the hides, and the consequent avoidance of the use of any chemical agents to neutralize the action of such lime, acid, or alkali; that the process employed by the defendants is substantially different from that of the patent; that the process of removing hair by sweating the hide was known and practiced long before the supposed invention of the plaintiff; that the process of fulling hides is indispensable, and has been practiced ever since the art of tanning and curing hides was known; that the process of stuffing hides with tallow and greasy substances, and with various admixtures of resinous substances, tallow, and other materials, had been known from the earliest days of the art of manufacturing leather; and that a patent was granted to the defendant William Coupe (No. 182,106), September 12, 1876, for an improvement in process for the manufacture of rawhide, under which the defendants carry on their manufacture, and make a different product from that produced by the process of the plaintiff's patent. Issue was joined, proofs were taken, and the circuit court entered a decree in March, 1889, dismissing the bill, with costs. The plaintiff has appealed to this court.

The opinion of the circuit court is reported in 38 Fed. Rep. 113. It held that the process of the patent consisted of the series of eight steps above set forth in the answer. It considered the questions whether the claim was intended to cover all, or only a part, of the eight successive steps, and whether it meant the method of preparing rawhide in the manner set forth, or whether the words in the claim, 'prepared rawhide,' signified a hide which had had been subjected to one or more of the eight steps, and the claim was limited to the subsequent steps of the process. The court went on to say that that inquiry was important, because, if the claim covered all of the eight steps, the defendants did not infringe it, for the reason that they did not use the first step of the process, namely, the removal of the hair from the hide by means of sweating; they making use, for that purpose, of the liming process, which the plaintiff stated in his specification must be avoided. The court held that the claim covered, and was intended to cover, the whole treatment described by the plaintiff, and not a part of that treatment; that the claim meant the same as if it read 'the method of preparing rawhide in the manner set forth;' and that the words 'prepared rawhide' meant the finished product, and not the hides subjected to one or more of the steps of the process described. The court then referred to the contents of the file wrapper of the case in the patent office, as throwing light upon the real scope of the patent.

The specification, as originally filed, contained, in its descriptive part, substantially the same description as the patent when issued; but the claim originally made was in these words: 'The use of a mixture of wood tar, resin, and tallow, applied to hides made into leather by a mechanical process, substan- tially as...