Tompkins v. St. Regis Paper Co.

• Decision Date: 18 August 1915
• Parties: TOMPKINS v. ST. REGIS PAPER CO.
• Court: U.S. District Court — Northern District of New York

226 F. 744

TOMPKINS v. ST. REGIS PAPER CO.

United States District Court, N.D. New York.

August 18, 1915

A. Page Smith, of Albany, N.Y. (Edwin J. Prindle, of New York City of counsel), for complainant.

W. B Van Allen, of New York City (Henry Schreiter, of New York City, of counsel), for defendant.

RAY District Judge.

The patent in suit, alleged to have been infringed by defendant dated August 18, 1891, and issued on application filed July 30, 1888, to John D. Tompkins, the complainant (his present title being by assignment), is for 'a process of making paper stock,' and has but one claim, which reads as follows:

'The herein described art of treating fibrous and other kindred materials for their conversion into paper stock, which consists in effecting the suspension of such materials in a constantly rising current of the treating liquid, and while thus suspended subjecting the material to the heating, cleansing, or chemical action of the suspending liquid.'

This process consists, says the claim, in the art of treating fibrous and other kindred materials for their conversion into paper stock, and which process consists in (1) effecting the suspension of such materials (fibrous or their kindred) in a constantly rising current of the treating liquid; and (2) 'while thus suspended subjecting the material (fibrous or their kindred) to the heating, cleansing, or chemical action of the suspending liquid. ' To answer the claim there must be a constantly rising current of the said liquid contained in the vessel or digester, and in this liquid the said fibrous material must be constantly suspended, and while so suspended it is subjected to the heating, cleansing, or chemical action of the 'suspending liquid'; that is, of the constantly rising current of liquid.

The patentee first describes what he conceives to be the prior art and the objections to be overcome as follows:

'It has heretofore been the practice to subject vegetable and other kindred material from which paper stock is made to the successive action of various treating liquids within a closed vessel or digester, and while thus inclosed to bring the treating liquids into intimate contact with the material by spraying the liquids in a downward direction thereon, or by agitating the mass of material and liquids together, as by rotation of the digester. Both methods have been found in practice to be open to objection: The first, by reason of the fact that the downwardly directed streams of liquid serve to pack the paper stock material upon the bottom diaphragm of the digester, the effect of which is to transform the material into a strainer or filtering mass, gather the lignine and other material picked up by the treating liquors upon the top of the mass, and to unevenly affect the material by the treating liquids. It will be readily understood that, when the mass is packed upon the bottom of the digester, the upper portion of the mass will be much more affected than the lower portion, and hence the material will be fully acted upon in one portion, partially acted upon in another, and, to a great extent, unacted upon at the lowermost part of the mass. The second, that agitation of the material and liquids by rotation or other movement of the digester tends, in a measure, to break up and destroy the fibrous character of the paper stock material thus acted on.'

He then says his object is to treat the material in a closed digester and in such a manner that (1) no packing of the material will occur, by reason of the downward spraying above mentioned and the settling; (2) the fiber will not be injured, by the agitation of the material caused as by the rotation of the digester; (3) the adventitious materials will be separated from the paper material; and (4) all the material brought into the best position to be acted upon by the treating liquids evenly and at the same time effectively.

The patentee then points out that all, or nearly all, the substances from which paper is made are of a lower specific gravity than water, and hence will float in any of the treating liquids or fluids employed in this art. That such materials will also absorb the water, and when soaked with water sink or gravitate to the bottom of the vessel and become packed there. As a result such materials are not thoroughly and evenly acted upon by the treating liquids. He then says:

'My improved method of treatment is based upon the theory that the material from which the paper stock is to be made should be suspended in the treating liquid while in the digester, and while thus suspended subjected to the heating, cleansing, or chemical action of the suspending liquid.'

The patentee then describes an apparatus for carrying out his process, and then says:

'The material to be treated is introduced through the manhole D. At the same time the pump G is started, drawing the preliminary treating liquid from the tank within which it is stored, through the pipe II, and delivering it into the chamber C', and from thence in an upward direction through the perforations of the diaphragm, the sum of the areas of which is made preferably somewhat less than the area of the inlet pipe, so as to impart a certain velocity to the upwardly directed streams of liquid transmitted through the perforations. The upwardly directed streams are projected against the material as it is introduced into the digesting chamber, so as in effect to effectually spray the material from below as it falls into the chamber. When sufficient quantities of material and liquid have been introduced into the digesting chamber, the valve in the pipe II is closed, and the pump G draws the liquid from the upper chamber C, and introduces it into the lower chamber, from whence it is sprayed upward against the mass of material in the digester, which, becoming soaked, tends to gravitate. The effect of the upwardly directed streams of liquid impelled from the pump through the diaphragm is to overcome the gravity of the particles of material within the digesting chamber and to hold them, so to speak, in suspension in the treating liquid. It is my purpose in treating the material in the digesting chamber to keep the material in suspension in the treating liquid, and hence the direction of flow or circulation of the treating liquid is always from below upward.'

Later he says he does not limit himself to the apparatus described, digester and pipe connections, as many changes may be made. He says, also:

'The apparatus shown and described is, however, that which I consider best adapted to carry my invention into effect.'

In a general way the process may be described as follows: (1) The stock to be treated is inserted through the manhole in the top of the digester. (2) The treating liquid is forced in at the bottom through a pipe or pipes by means of a pump. The contents of the digester are highly heated and steam is forced in at the bottom. A pipe from the top extends to and connects with this injection pipe, so as to allow a constant upward current of the treating liquid. When the cooking or treating process is complete, the contents may be drawn off through a conduit at the bottom of the digester. The idea is that by reason of the constant upward current of treating liquid, combined with the steam, when used, the matter to be treated will be constantly forced or carried upward and held suspended in the liquid in a loose, disintegrated mass, as contradistinguished from a solid, packed mass, and that its particles will be thus subjected on all sides to treatment by such liquid.

Complainant's Title.

The complainant is the patentee, but very soon after the issue of the patent in suit, and August 25, 1891, he assigned it to the Tompkins Paper Stock Company, of Albany, N.Y., receiving stock in said company in exchange therefor. Later, and January 20, 1899, on foreclosure, the letters patent were sold to Emma A. Tompkins, wife of the complainant, and she owned same until December 16, 1911, when she assigned same to the complainant. The patent expired August 17, 1908, or about three years prior to the assignment to complainant. If a cause of action for infringement then existed, it could be assigned; but there could be no infringement after the expiration of the patent. The defendant asserts that this complainant cannot sustain this action in equity to recover damages and profits; it having been commenced by the assignee after the expiration of the patent, and the assignment having been executed thereafter. Defendant insists there was nothing to assign, except a mere cause of action at law to recover the damages. Section 4919, R.S.U.S. (Comp. St. 1913, Sec. 9464), provides for an action in the case by either patentee, assignee, or grantee. If complainant owns the right of action by assignment, if there be one, why can he not enforce it in any manner not forbidden by law?

Is The Patent Valid?

Defendant insists that the subject-matter of the patent in suit herein is not an 'art' or 'process,' but merely the mechanical function of the apparatus. It is settled that the mere function of a machine is not patentable as a process. Cochrane v. Deener, 94 U.S. 780, 24 L.Ed. 139; Bush v. Jones, 184 U.S. 599, 22 Sup.Ct. 511, 46 L.Ed. 707; Carnegie v. Cambria, 185 U.S. 403, 425, 22 Sup.Ct. 698, 46 L.Ed. 968; Westinghouse v. Boyden, 170 U.S. 537, 18 Sup.Ct. 707, 42 L.Ed. 1136; Expanded Metal Co. v. Bradford, 214 U.S. 366, 29 Sup.Ct. 652, 53 L.Ed. 1034; Corning v. Burden, 15 How. 252, 14 L.Ed. 683; Risdon Locomotive Works v. Medart, 158 U.S. 68, 15 Sup.Ct. 745, 39 L.Ed. 899.

What does this machine or apparatus do? It is first filled with the treating fluid and stock to be treated thereby, and the purpose now is to hold the stock suspended in the fluid,...