Powder Company v. Powder Works

APPEAL from the Circuit Court of the United States for the District of California.

This is an appeal from a decree dismissing, upon demurrer, a bill filed by the Giant Powder Company against the California Powder Works and others, charging them with the infringement of three certain letters-patent belonging to the complainant, and praying for an injunction and a decree for damages. These letters, for certain alleged inventions of one Alfred Nobel, of Hamburg, in Germany, relating to the use of nitro-glycerine in the manufacture of dynamite and other explosive compounds, are all reissues; two of them bearing date the nineteenth day of March, 1872, and numbered respectively 4818 and 4819; and the third bearing date the seventeenth day of March, 1874, and numbered 5799. No. 4818 is for the mixture of gunpowder with nitro-glycerine; No. 4819 is for the mixture of rocket powder with nitro-glycerine; and No. 5799 is for a mixture of nitro-glycerine with porous or absorbent substances, forming what is called dynamite, or giant powder. The bill sets out the substance of the original and intermediate letters as well as those sued on, and of some of them makes profert. A consent order was made in the cause, that the complainant should file, as parts of the bill, copies of the several letters mentioned and described therein, of which profert was so made. The bill also sets forth by way of schedule a copy of the original application of Nobel filed in the Patent Office on the sixteenth day of September, 1865.

From the statements of the bill, and the documents thus annexed to and made part thereof, it appears that Alfred Nobel, on the day last aforesaid, by his attorney, filed in the Patent Office a paper describing certain alleged discoveries and inventions made by him in reference to the use of nitro-glycerine as an explosive agent and as a component in explosive compounds. Having in this document referred to the well-known property of nitro-glycerine, and the nitrates of ethyl and methyl, nitro-mannite, &c., whereby they cannot be exploded in open space by the application of fire, he proceeds to point out how he succeeds in effecting their explosion. He says:--

'A chief point of my invention consists in overcoming this difficulty. According as nitro-glycerine is to be used for fire-arms or for blasting, I adopt two different methods for promoting its explosion, viz.:--

'1st Method. By mixing it with gunpowder, gun-cotton, or any other substance developing a rapid heat, nitro-glycerine being an oil, fills the pores of gunpowder, and is heated by the latter to the degree of its explosion. Gunpowder treated in this way can take up from ten to fifty per cent of nitro-glycerine, and develops a greater power with a lesser quickness of explosion. Where the only object in view is to reduce the quickness of explosion of gunpowder, I mix it with or make it absorb common non-explosive oil from one to ten per cent of its weight.

'2d Method. When nitro-glycerine is to be used for blasting, where quickness of explosion is of great importance, I submit it to the most rapid source of heat known; viz., that developed by pressure. To effect this, I make use of the pressure developed by heating a minute portion of nitro-glycerine, or by the detonation of any other violently exploding substance. Nitro-glycerine being a liquid, if it cannot escape, as for instance in a bore, receives and propagates the initial pressure through its whole mass, and is by that pressure instantaneously heated; hence the first impulse of explosion decomposes the rest. There are many means of obtaining this impulse of explosion, such as—

'1. When nitro-glycerine in tubes is surrounded by gunpowder, or vice versa.

'2. By the spark or heat developed by a strong electric current when the nitro-glycerine is enclosed on all sides, so as not to afford an escape to the gas developed.

'3. By a capsule,' &c., six different methods of producing explosion of nitro-glycerine being pointed out, accompanied by drawings for showing the manner in which they were employed.

He then claims as his invention:--

1. The use of gunpowder or similar substances, when mixed with nitro-glycerine or analogous substances.

2. The reduction of the quickness of explosion of gunpowder by mixing it with oily explosive, or non-explosive substances.

3. The effecting the detonation of nitro-glycerine or analogous substances (which can be ignited without exploding) by the heat developed by pressure, promoting an impulse of explosion which decomposes the rest.

4. The exclusive use of nitro-glycerine and the class of substances described above, or mixtures of such as far as their application may be classed under any of the methods indicated in this memorandum.

He then describes a new method of preparing or manufacturing nitro-glycerine, and claims to be the inventor of that.

The bill further states, that after filing the above application Nobel's agent (one Howson) filed certain amendments thereto, striking out a portion of the original; and on the twenty-fourth day of October, 1865, upon such amended application, letters-patent were granted to Nobel for the term of seventeen years, numbered 50,617; and profert is made of the same in the bill, and they are set out in the record.

By reference to the specification of these letters, which are accompanied with drawings, they appear to be for a process, to wit, the process of using nitro-glycerine, or its equivalent, as a substitute for gunpowder, by exploding it in the manner pointed out. Having explained the nature of nitro-glycerine, nitrate of ethyl, methyl, and nitro-mannite, as in the original paper, the specification then points out how nitro-glycerine may be exploded after being confined in a hole drilled in the rock when to be used for blasting, or in a case when to be used for other purposes. Four distinct modes of doing this are enumerated: first, by exploding gunpowder in contact with the liquid; secondly, by passing an electric spark through a fine wire immersed in it; thirdly, by inserting in it a thin case containing lime-water; and, fourthly, by a fuse. The drawings show the manner in which the wire is arranged for passing an electric spark through the fluid.

The bill then states that on the 13th of April, 1869, the above patent was surrendered, and four new divisional patents were issued for the same inventions for which the original patent was granted, numbered respectively reissues 3377, 3378, 3379, 3380; the first, No. 3377, being for the method of exploding nitro-glycerine by detonation; the second, No. 3378, being for the application and use of percussion caps and other exploders to create the detonation necessary to explode the nitro-glycerine; the third, No. 3379, being for the improved mode of manufacturing nitro-glycerine; and the fourth, No. 3380, being (as stated in the bill) for the new explosive compounds invented by Nobel, viz. the mixture of gunpowder and nitro-glycerine, and the mixture of gun-cotton and nitro-glycerine, and the mixture of rocket powder and nitro-glycerine.

These four reissued patents are not referred to by way of profert in the bill; but the above description of their purport is sufficient for the purpose of understanding their character.

The bill then states that on the nineteenth day of March, 1872, the said reissue 3380 was surrendered, and two new divisional patents for the same inventions were issued in lieu thereof, numbered respectively reissues 4818 and 4819; the former being for the mixture of gunpowder with nitro-glycerine, and the latter for the mixture of rocket powder with nitroglycerine; and each patent securing to the patentee the exclusive right of making, using, and vending the explosive compound therein described respectively. These are two of the patents on which the suit is brought; and profert is made of them in the bill, and they are set out in the record. By reference thereto, it appears that in reissue 4818 the patentee claims,--

1. The utilization, as explosives, of nitro-glycerine and the analogous liquid substances before mentioned (nitrate of ethyl, &c.), by combining therewith gunpowder, gun-cotton, or other similar substances developing a rapid heat or combustion, substantially as described.

2. The combination of gunpowder with nitro-glycerine, substantially as and for the purposes described.

3. The combination of gun-cotton with nitro-glycerine, substantially, &c.

In reissue 4819 the claim is for the mixture of nitro-glycerine and rocket powder.

The remainder of the bill is taken up in setting forth the other patent sued on, and various assignments by which the complainant deduces its title to the patents, with the allegation of infringement and prayer for relief.

To this bill the defendant demurred, as well to the whole bill for want of equity as to the relief sought in respect of the different patents taken separately; also for multifariousness, misjoinder of defendants, &c.

The demurrer having been sustained and a final decree entered dismissing the bill, the Giant Powder Company brought the case here.

Mr. M. A. Wheaton and Mr. William Bakewell for the appellant.

The vital question in this case is, Did the commissioner, when granting the reissues, have the right to look into Nobel's original specification on file, for the purpose of ascertaining what those inventions were, or was he confined to the amended specification which was issued with the letters-patent?

The Circuit Court decided that he could only look to the amended specification. For this reason they decided reissues Nos. 4818 and 4819 to be void, and sustained the demurrer.

If, therefore, he had a right to look at the original specification, the decree must be reversed.

Both upon authority and reason, he had the right, and was bound in duty, to look as well to the original as to the amended specification.

Although most of the adjudications on this point were made under the act of 1836, they are equally applicable to that of 1870. The former did not say what should be used as evidence to prove the original invention on an application for a reissue.

As a matter of law and also of fact, the original specification, drawings, and model are never issued with the patent. They remain on file; copies only are issued.

There are many cases in which the term 'original specification' is used, instead of naming that which issues with the patent. The correct rule is laid down in the case of Collar Company v. Van Dusen (23 Wall. 557, 558), in the following language: 'Repeated decisions also have established the rule that parol testimony is not admissible in an application for a reissued patent, so as to enlarge the scope and effect of the invention beyond what was described, suggested, or substantially indicated in the original specification, drawings, or Patent-Office model, as the purpose of a surrender and reissue is not to introduce new features, ingredients, or devices, but to render effectual the actual invention for which the original patent should have been granted.

This is the whole point in this case; and it seems too plain for argument that Seymour v. Osborne (11 Wall. 516) holds that the original specification may be examined as claimed by us.

Sect. 5 of the act of 1837, and sect. 53 of the act of 1870, permitted several patents to issue for 'distinct and separate parts of the thing patented.'

The words 'thing patented' here used doubtless refer to the thing patented by the reissues.

Nobel's whole inventions were made in utilizing nitro-glycerine. One of them was the method of exploding it by mixing it with well-known explosives which explode by the application of fire. One distinct and separate part of it was mixing nitro-glycerine with gunpowder, another with gun-cotton, another with rocket powder, and so on. Every divisional patent issued for each one of these mixtures was valid, and reissue No. 4819 was, of course, one of them.

The law allowed divisional reissues. Sect. 5, act of March 3, 1837; act of 1870, sect. 53; Goodyear v. Providence Rubber Co., 2 Fish. 499; s. c. 9 Wall. 788; Goodyear v. Wait, 3 Fish. 242; Pennsylvania Salt Co. v. Thomas, 5 id. 148; Bennett v. Fowler, 8 Wall. 445.

The act of 1870, sect. 53, re-enacted by sect. 4916 of the Revised Statutes, expressly provides for the introduction of new matter into the reissue of letters-patent for a process. When it was passed, there were well known, and had long been known, two classes of patents,-one with models and drawings, and the other without. The last part of the section refers to the class which includes those for processes, and not to the former class; that is, patents for machines.

As new matter was proper to be introduced into the two reissues Nos. 4818 and 4819, the court below erred in sustaining the demurrer.

The grant of the reissue is prima facie evidence that the commissioner did his duty, and that the reissues were granted on proof satisfactory to him that whatever new matter was introduced into them was a part of the original invention, omitted by inadvertence, accident, or mistake from the specification attached to the original patent.

In the present case, the matter omitted from the original patent, and which forms the subject-matter of reissue No. 4818, is found in the original specification on the records of the office. Furthermore, neither model nor drawing of any thing embraced in that reissue was filed, for the reason that the invention is not, in that way, susceptible of illustration, being not a machine, but a combination of nitro-glycerine with gunpowder, gun-cotton, or similar substances.

The court below having sustained the demurrer so far only as reissues Nos. 4818 and 4819 are concerned, it erred in dismissing the whole bill. 1 Daniell, Ch. Pr., p. 543, sect. 1, p. 589, sect. 3, p. 598, sect. 5; Livingston v. Story, 9 Pet. 632.

The point on which the court below held reissues Nos. 4818 and 4819 to be invalid was that these reissues were not for the same invention as the original patent.

This is a question which should not have been decided without affording the parties an opportunity to offer evidence for the consideration of the court. Seymour v. Osborne, supra; Battin v. Taggart, 17 How. 74-85.

It is distinctly alleged in the bill that Nobel was the original and first inventor of the subject-matter of the several patents in suit; that the patents were duly granted; that the surrenders and reissues were duly made; that the reissues were for the same inventions; that the title was in the complainant; and that the defendants had infringed each of said patents. These facts being admitted by the demurrer are sufficient to establish the complainant's equity, and to entitle it to a decree. Welford, Eq. Pl., pp. 261-265; Kay v. Marshall, 2 Webs. P. C. 39; 1 Myl. & Cr. 373; Westhead v. Keene, 1 Beav. 287.

If any of these facts are denied by the demurrer, it is no longer a demurrer, but a plea by demurrer, which is bad, and therefore should have been overruled.

Mr. George Harding, contra.

MR. JUSTICE BRADLEY, after stating the facts, delivered the opinion of the court.