Tilghman v. Proctor (125 U.S. 136)/Opinion of the Court

This was a bill in equity, filed June 26, 1874, by Richard A. Tilghman against William Proctor and four others, copartners under the name of Proctor & Gamble, praying for an injunction, for an account of profits, and for damages, for the infringement of letters patent, originally granted to Tilghman for 14 years from January 9, 1854, and afterwards extended to January 9, 1875, for the process of manufacturing fat acids and glycerine from fatty bodies by the action of water at a high temperature and pressure. The infringement complained of in this suit was from May 1, 1870, to January 8, 1875. Similar suits by this plaintiff against other defendants had been mamtained by the circuit courts for the southern districts of Ohio and of New York in 1862 and 1864 respectively. Tilghman v. Werk, 2 Fish. Pat. Cas. 229; Tilghman v. Mitchell, Id. 518. In the suit in New York, a final decree for an account of profits was entered by the circuit court on September 1, 1871. Tilghman v. Mitchell, 9 Blatchf. 1, 18, 4 Fish. Pat. Ca. 599,615. On March 2, 1874, that decree was reversed in this court by the opinion of four justices against three, two judges not sitting, upon the hypothesis that Tilghman's patent was limited to the apparatus therein described, and that the use of an apparatus similar to that used by the present defendants was not an infringement. Mitchell v. Tilghman, 19 Wall. 287-419. In the case at bar the circuit court, on December 2, 1874, following the decision of this court in Mitchell v. Tilghman, made a decree dismissing the bill. But, on appeal from that decree, this court, at October term, 1880, by a unanimous opinion, overruled its decision in Mitchell v. Tilghman, and adjudged that Tilghman's patent was a valid one for a process, and not merely for the particular apparatus described in the specification; that that apparatus could be operated to produce a beneficial result; that the defendants had infringed the plaintiff's patent; and therefore, that the decree of the circuit court be reversed, and the case remanded, with directions to enter a decree for the plaintiff in conformity with that opinion. Tilghman v. Proctor, 102 U.S. 707. There is nothing in the record before us to induce any change or modification of the conclusions then announced.

By making a few extracts from that opinion, the questions now before us will be the better understood: 'The patent in question relates to the treatment of fats and oils, and is for a process of separating their component parts so as to render them better adapted to the uses of the arts. It was discovered by Chevreul, an eminent French chemist, as early as 1813, that ordinary fat, tallow, and oil are regular chemical compounds, consisting of a base which has been termed glycerine, and of different acids, termed generally fat acids, but specifically stearic, margaric, and oleic acids. These acids, in combination severally with glycerine, form stearine, margarine and oleine. They are found in different proportions in the various neutral fats and oils; stearine predominating in some, margarine in others, and oleine in others. When separated from their base (glycerine) they take up an equivalent of water, and are called free fat acids. In this state they are in a condition for being utilized in the arts. The stearic and margaric acids form a whitish, semi-transparent, hard substance, resembling spermaceti, which is manufactured into candles. They are separated from the oleic acid, which is a thin oily fluid, by hydrostatic or other powerful pressure; the oleine being used for manufacturing soap, and other purposes. The base, glycerine, when purified, has come to be quite a desirable article for many uses.' 102 U.S. 708, 709. The substance of Tilghman's discovery and invention was thus summed up by the court: 'That the fat acids can be separated from glycerine, without injury to the latter, by the single and simple process of subjecting the neutral fat, while in intimate mixture with water, to a high degree of heat under sufficient pressure to prevent the water from being converted into steam, without the employment of any alkali or sulphuric acid, or other saponifying agent; the operation, even with the most solid fats, being capable of completion in a very few minutes when the heat applied is equal to that of melting lead, or 612° Fahrenheit; but requiring several hours when it is as low as 350° or 400° Fahrenheit. The only conditions are, a constant and intimate commixture of the fat with the water, a high degree of heat, and a pressure sufficiently powerful to resist the conversion of the water into steam. The result is, a decomposition of the fatty body into its elements of glycerine and fat acids, each element taking up the requisite equivalent of water essential to its separate existence, and the glycerine in solution separating itself from the fat acids by setting to the bottom, when the mixed products are allowed to stand and cool. In this process a chemical change takes place in the fat in conseqe nce of the presence of the water and the active influence of the heat and pressure upon the mixture.' Pages 712, 713. The court spoke of the different forms of apparatus, mentioned in Tilghman's patent, or used by the defendants, as follows: 'The apparatus described' in the patent 'consists of a coil of iron pipe, or other metallic tubing, erected in an oven or furnace, where it can be subjected to a high degree of heat; and through this pipe the mixture, (of nearly equal parts of fat and water,) made into an emulsion in a separate vessel by means of a rapidly vibrating piston or dasher, is impelled by a force-pump in a nearly continuous current, with such regulated velocity as to subject it to the heat of the furnace for a proper length of time to produce the desired result; which time, when the furnace is heated to the temperature of 612° Fahrenheit, is only about ten minutes. The fat and and water are kept from separating by the vertical position of the tubes, as well as by the constant movement of the current; and are prevented from being converted into steam by weighting the exit valve by which the product is discharged into the receiving vessel, so that none of it can escape except as it is expelled by the pulsations produced by the working of the force-pump. Before arriving at the exit valve, the pipe is passed, in a second coil, through an exterior vessel filled with water, by which the temperature of the product is reduced. After the product is discharged into the receiving vessel, it is allowed to stand and cool until the glycerine settles to the bottom and separates itself from the fat acids. The latter are then subjected to washing and hydraulic pressure in the usual way.' Pages 718, 719. 'It is evident that the passing of the mixture of fat and water through a heated coil of pipe standing in a furnace is only one of several ways in which the process may be applied. The patentee suggests it as what he conceived to be the best way, apparently because the result is produced with great rapidity and completeness. But other forms of apparatus, known and in public use at the time, can as well be employed without changing the process. A common digester or boiler can evidently be so used, provided proper means are employed to keep up the constant admixture of the water and fat, which is a sine qua non in the operation.' Pages 719, 720. 'The defendants use a boiler in which the charge of fat and other materials is placed and heated; and do not mix the fat and water in the manner pointed out in the specification of the patent, but, on the contrary, have inserted in the boiler a pump which forces the water, as it settles to the bottom, upwards to the top of the mass, and pours it upon the upper surface, whence it again finds its way down through the fat, thus keeping up a constant mixture.' Page 730. It was expressly decided that neither the form of the defendants' apparatus, nor the addition of lime, nor the use of steam, nor the applying of a lower degree of heat, prevented their process from being an infringement of the plaintiff's patent. Pages 730-733. The court also said: 'It is objected that the particular apparatus described in the patent for carrying the process into effect cannot be operated to produce any useful result. We have examined the evidence on this point, and are satisfied that it shows the objection to be unfounded. A recapitulation of this evidence is not necessary. The testimony of Tilghman himself, of Professor Booth, and of Mr. Wilson, is directly to the point.' Page 730.

In accordance with the judgment and mandate of this court, the circuit court, in February, 1877, entered an interlocutory decree for the plaintiff, and referred the case to a master 'to ascertain and tax and state and report to the court an account of the gains, profits, savings, and advantages which the said defendants have received, or which have arisen or accrued to them, from infringing the said exclusive rights of the said complainant by the use f the process patented in the said letters patent, as well as the damages the said complainant has sustained thereby.' The master filed his report in August, 1884. As to damages, 'the master finds from the evidence that the complainant has derived no profit from the invention involved in this suit, otherwise than by granting licenses to others to use the same. These licenses have been granted to all manufacturers desiring to use his process, at a substantially uniform fee of twenty cents for each hundred pounds of fat * treated, payable monthly. For several years, the respondents held such a license from the complainant, but terminated the same, refusing to pay the stipulated license fees, after May 1, 1870, although continuing to use the process until the expiration of the patent on January 8, 1875.' The master further says: 'The accompanying table, A, shows the quantity of fat treated by the respondents during each month of infringement, the license fees therefor, and interest thereon to October 7th, the first day of October term, 1884, making the whole amount of the complainant's damages herein, $79,566.91.' As to the profits, gains, savings, and advantages which had accrued to the defendants, the master finds that what was known as 'the lime saponification process,' which consisted in the manufacture of the fat into soap by the use of lime, and in the decomposition of that soap into fatty acids and glycerine by the aid of sulphuric acid, was more advantageous than any other process open to public use at the time in question; and reports the defendants' savings in lime and sulphuric acid, their gain in glycerine, their loss in fat acids produced, and their net gains and savings, as follows:

2,798,733 lbs. of lime at $.3526 per hundred $. 9,868

6,880,219 lbs. of sulphuric acid, at $2.527 per hundred, 173,863

Total,............................ $244,433

Deducting loss in fatty acids, being 54 cents per hundred on.....................................

21,294,753 lbs. of fat,........... $114,991