Fireball Gas Tank Co. v. Commercial Acetylene Co.
239 U.S. 156 (1915)

Annotate this Case

U.S. Supreme Court

Fireball Gas Tank Co. v. Commercial Acetylene Co., 239 U.S. 156 (1915)

Fireball Gas Tank & Illuminating Company

v. Commercial Acetylene Company

No. 13

Argued October 22, 1915

Decided November 29, 1915

239 U.S. 156

CERTIORARI TO THE CIRCUIT COURT OF APPEALS

FOR THE EIGHTH CIRCUIT

Syllabus

A process may be independent of the instruments employed or designed to perform it, and the expiration of a foreign patent for the one may not affect the United States patent for the other.

In this case, held that the patent of complainants for acetylene gas tanks is distinctly for an apparatus, while the foreign patents which have expired and are claimed by defendant to be identical are explicitly for methods.

There having been conflicting opinions of different circuit courts of appeal on questions of invention and infringement, as well as the effect of expiration of foreign patents, held that there was no abuse of discretion in the granting of an interlocutory injunction, but that, while there is no identity between complainants' patents and expired foreign patents pleaded by the defendant, all other questions should be reserved for the trial of the cause.

The facts, which involve the propriety of issuing an interlocutory injunction in a suit for infringement of patents for acetylene gas apparatus, are stated in the opinion.

MR. JUSTICE McKENNA delivered the opinion of the Court.

By this writ there is brought here for review a decree of the circuit court of appeals affirming an order for an

Page 239 U. S. 157

interlocutory injunction against the infringement of certain letters patent.

The circuit court of appeals considered the question in the case to be the narrow one whether the injunction was properly granted.

Petitioners, who were defendants in the district court, attack not only that conclusion, but contend for the larger relief of a dismissal of the bill.

The Acetylene Company is the owner of letters patent No. 664,383, granted December 25, 1900, for "apparatus for storing and distributing acetylene gas." The Prest-O-Lite Company is the exclusive licensee as to the use of the invention on automobiles, carriages, and other movable vehicles. Defendants manufacture and sell what is known as the "Fireball Gas Tank;" Soloman is the president of the defendant.

The bill was filed August 17, 1911, and a motion for a preliminary injunction was made. It was heard upon the bill, exhibits, answer, replication, and affidavits. The circuit court granted the injunction, and the order was affirmed, as we have said, by the circuit court of appeals. The court considered that the question before it was whether the trial court had exercised a sound judicial discretion in granting the injunction, and deciding that the trial court had done so, affirmed its action and refused to dismiss the bill, as it was urged to do. Opinion was reserved upon all of the questions which the record presented except the question of the abuse by the trial court of its discretion in the issue of the injunction, as the court said,

"until the affidavit stage of this proceeding shall have been passed, until the rights of these parties shall have been tested by the production, hearing, and cross-examination of their witnesses according to the salutary and searching practice of the common law, and until the court below, at the final hearing, has investigated and decided the issues these parties raise in

Page 239 U. S. 158

the light of that testimony and of the argument of counsel."

Whether this prudence should be imitated or a broader scope of decision be made we will determine upon a consideration of the case.

The bill is in the usual form, and sets forth the respective rights in the patent of complainants, respondents here (we shall refer to them as complainants and to petitioners as defendants), and its infringement by defendants.

The defendants answered separately, and each denied infringement and averred that, by reason of the proceedings in the Patent Office, the patent is limited in its scope to the subject matter precisely as claimed and defined by the claims of the patent; that the prior art was such that the patent is devoid of novelty and patentable invention; that it is destitute of utility; that it does not comply with the statutes in precise difference from what preceded it, nor sufficiently describe the method of operating it and the process of making, constructing, and using it; that complainants have a remedy at law and the court has no jurisdiction, and that the alleged inventors of the patent were not the first and true inventors of it. Certain United States, British, and German patents are alleged as antedating the invention, and certain publications are represented as having disclosed it.

Public uses of the patent are also circumstantially alleged, and profits are denied. It is further alleged that the invention of the Claude & Hess United States patent No. 664,383, which is in suit, was patented to George Claude and Albert Hess by British patent No. 29,750, and that the latter had expired or ceased before the issue of patent No. 664,383; that the term of the latter expired not later than June 30, 1910; that a French patent to the same patentees expired June 30, 1911, and that therefore patent No. 664,383 also expired not later than said date, and so with the German patent and other patents.

Page 239 U. S. 159

The first consideration which presents itself is the identity of the United States patent with the foreign patents which, by their expiration, if they have expired, have terminated the United States patent.

The letters patent in suit describe the invention as "An Improvement in Apparatus for the Storage and Distribution of Acetylene Gas." Drawings illustrate the patent, and it is stated that it

"is designed to carry out a process of storage and distribution involving the employment of a chamber charged with a solvent of the gas to be stored and into which the gas is forced under suitable pressure,"

and that the apparatus is to be charged at a central station and transported to the place of use as a complete article or package. The apparatus is described and illustrated, and it is said that it, embodying the invention, consists essentially in a closed receptacle containing acetylene gas in solution, and having an outlet for the gas so positioned as to be normally above the level of the solution, and adapted to be provided with a burner or connected with a pipe system for the final use or distribution of the gas which escapes from the solution owing to the diminution of pressure when the outlet is opened. It is constructed and arranged "for the charging process as well as for the discharging process." Inlet and outlet passages are provided with suitable valves or cocks to close the same, and it is desirable, it is said, for the proper operation of the burners supplied in this way that the gas should be delivered thereto under a substantially uniform pressure only slightly above the atmospheric pressure, and for this purpose, means are provided. A reducing valve is shown as the means interposed between the interior of the receptacle which contains the dissolved gas and the outlet from which the gas is allowed to escape.

Claims 1, 2, and 5 are those with which we are concerned, and are as follows:

"1. A closed vessel containing a supersaturated solution

Page 239 U. S. 160

of acetylene produced by forcing acetylene into a solvent under pressure, said vessel having an outlet for the acetylene gas which escapes from the solvent when the pressure is released or reduced, and means for controlling said outlet whereby the gas may escape therethrough at substantially uniform pressure, substantially as described."

"2. A prepared package consisting of a tight shell or vessel, a solvent of acetylene contained within said vessel, and acetylene dissolved in and held by said solvent under pressure and constituting therewith a supersaturated solution, the package being provided at a point above the solvent with a reducing valve, substantially as and for the purpose set forth."

"* * * *"

"5. As a new article of manufacture, a gas package comprising a holder or tight vessel, a contained charge of acetone, a volume or body of gas dissolved by and compressed and contained within the solvent, and a reducing valve applied to an opening extending to the interior of the holder above the level of the solvent, substantially as set forth."

It is manifest, therefore, that the invention is of an apparatus designed to make use of the property of acetylene and other gases of solubility in a liquid in accordance with the law of solution (Henry's law), which is that the amount of gas absorbed by any liquid is proportioned to the pressure exercised upon the gas. Acetone is mentioned in Claim 5 as a solvent.

We may now turn to the various patents whose expiration, it is contended, terminates the United States patent.

The law is (§ 4887, Rev.Stats., § 9431) that

"every patent granted for an invention which has been previously patented in a foreign country shall be so limited as to expire at the same time with the foreign patent, or, if there be

Page 239 U. S. 161

more than one at the same time, with the one having the shortest term, and in no case shall it be in force more than seventeen years."

The question, then, is one of identity between the United States patent and the foreign patents. The first of the latter relied upon is the British patent to Claude and Hess of 1896. The title is, "An Improved Method of Storing Acetylene for Lighting and Other Purposes." The specification states:

"This invention relates to an improved method of storing acetylene, for lighting and other purposes, in a small volume in order that it may be supplied in portable form to the customer, and it consists in dissolving the acetylene under pressure in certain liquids, the effect of pressure being to increase the solubility of the acetylene and so enable a considerable quantity of acetylene to be stored in a small volume in readiness to be supplied for any purpose for which it may be required."

"Liquified acetylene occupies the least volume, but the pressure is very high, and may become excessive should the critical temperature (37.5

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