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
The circuit court of appeals considered the question in the case
to be the narrow one whether the injunction was properly
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
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
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
"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
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
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
"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
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�) of acetylene be accidentally exceeded. On the
other hand, simple compression of the gas enables dangerous
pressures to be avoided, but the quantity which can be stored in
this way is too small. For these reasons, we avail ourselves of the
great solubility of acetylene in certain liquids, and increase this
solubility by pressure, and this method of storing acetylene gas is
the invention which we hereby broadly claim as our invention,
whatever may be the liquid employed, the kind of apparatus used, or
mode of operation."
Examples of liquids which may be employed as solvents are given.
Among these are mentioned "alcohols" and "particularly acetones."
It is stated that mixtures and combinations of these bodies vary
their solvent power, and of this property the patentees said they
availed themselves. And further, that the solvent power increases
Page 239 U. S. 162
pressure, and the solution of the gas in a liquid is the
principle of the invention.
The process described as carried on, though subject to
modifications, is as follows: the gas is dissolved in the liquid
chosen, and the
"solution under pressure, however obtained, is filled into a
receiver of metal or of glass (such as used for soda water) capable
of resisting the pressure employed. The receiver has a cock and the
necessary adjuncts for connection, directly or through an expansion
chamber, with the appliances in which the gas is used by the
consumer, the substitution of charged for empty receivers being
readily effected. The storage receivers may vary in dimensions from
a small portable, to a large fixed, gas holder."
The claims describe the method and invention to be the
utilization for the purpose of storage, in a small volume, of large
quantities of acetylene gas, of the solubility of the gas in
certain liquids by the application of pressure, and the novel
application as a solvent of acetylene under pressure for the
purpose of storage, transportation, and utilization for industrial
purposes, and the employment (Claim 6) of a receiver containing a
liquid charged with acetylene under pressure, and from which the
acetylene is evolved when required for use.
Defendants have fixed on Claim 6 as establishing identity, and
the British law of patents is relied on. British United Shoe
Machinery Co. v. Fussell & Sons,
45 R.P.C. 631. The
argument is that not only a receiver is claimed, but a receiver of
the exact or equivalent kind described in the United States patent.
"Evolving gas from a receiver in which the gas is under pressure
necessarily implies an outlet, an outlet necessarily implies a
valve, and a valve necessarily implies a control of the escaping
They say further, quoting the cited case:
"A man must distinguish what is old from what is new by
his claim, but he has not got to distinguish what
Page 239 U. S. 163
is old from what is new
in his claim."
Applying the principle and asserting that the devices described
in the United States patent were old, it is contended that they
would be implied as necessary elements of the claim.
Taken at its full import, the argument would seem to establish
that there could be no patent for an apparatus to execute a process
if it (apparatus) were a combination of old elements. In many
cases, therefore, the argument would confound process and
apparatus, but it is established that a process may be independent
of the instruments employed or designed to perform it. They may be
independent, or they may be related.
"They may approach each other so nearly that it will be
difficult to distinguish the process from the function of the
apparatus. In such case, the apparatus would be the dominant thing.
But the dominance may be reversed, and the process carry an
exclusive right, no matter what apparatus may be devised to perform
Steinmetz v. Allen, 192 U. S. 543
192 U. S. 559
However related they may be, to which may be assigned dominance may
be important in considering the patentable novelty of either, or,
it may be, the infringement of either, but not whether one has
expired because the other has. Leeds & Catlin v. Victor
Talking Machine Co., 213 U. S. 301
213 U. S. 318
The various questions thus arising may indeed have complexity
(Risdon Locomotive Works v. Medart, 158 U. S.
), but they must not be confounded.
A great deal of what we have said applies to the German patent.
Its claim is for
"the employment of liquids charged with acetylene under pressure
for the purpose of utilizing acetylene for illumination, motive
power, heating, and the like, characterized by acetylene being
absorbed under pressure by a suitable liquid, and the liquid
saturated with acetylene being preserved or contained in suitable
vessels, from which the acetylene gas can be supplied for use, a
pressure regulator being preferably interposed. "
Page 239 U. S. 164
This claim is preceded by a lengthy explanation (too lengthy to
quote) setting forth the properties of acetylene and its absorption
by certain liquids, and the dependence of the amount of absorption
upon pressure, and the use of such properties and pressure for
storing and utilizing the gas. It is said:
"The vessels for holding the liquid saturated with acetylene
must be provided with a cock or valve from which the gas escapes
according to the diminution of pressure which occurs, and can then
be used for the customary purposes."
And an apparatus is described "with whose aid the storing
process can be carried into practice." Care is taken to mention
"that the process is in no way limited to the apparatus described
and shown." It is clear, therefore, that the process and the
described vessel of storage are separate, and that the invention is
for the former. An apparatus was mentioned in display of the
utility of the process. See Tilghman v. Proctor,
102 U. S. 707
was not the intention to claim a particular form of device and
secure a patent for it.
The title of the French patent is "A System of Storing
Acetylene." And it is said that the object of the
"invention is a system of storing acetylene whereby acetylene to
be used for any purpose whatsoever, especially for lighting, may be
enclosed in a restricted space and easily transported."
A description of the process is given, and the properties of the
gas and its solvent which make the law of the process. And it is
said the solution under pressure obtained by the means
"or by any other means, is placed in a metal recipient (or a
glass recipient, like seltzer water siphons) susceptible of
resisting the pressure employed. The recipient is provided with a
faucet and the necessary fittings to enable it to be connected,
either directly or by means of an expander, with the apparatus of
consumption at the house of the consumer. "
Page 239 U. S. 165
The claims were:
"1. For the storage of large quantities of acetylene in a small
space, the application of the solubility of this gas in certain
liquids, using pressure for the purpose of increasing the amount of
gas dissolved per unit of volume of the liquid, as described
"2. For the purpose of effecting the solution under pressure of
large quantities of acetylene in a small volume of liquid, the use
of methods and apparatus employed to cause the solution under
pressure of other gases in other liquids, especially of carbonic
acid in water."
There were certificates of addition to the patent, the first of
which sets forth the advantage of mixing the liquid with a porous
body capable of absorbing it. "An expedient and practical form of
accomplishing this" is set forth in the second certificate. The
third certificate of addition connects the patent
"with a safety appliance to be adapted especially on recipients
where the aceteylene is dissolved in an appropriated liquid, such
as acetone, according to the process described in"
The contention is that the patent is for a "system," not for a
"process or method," and that, besides, the "resume" or claims of
the first patent especially refer to both "method and apparatus,"
and that "the certificates of addition, especially the last two,
unquestionably are for the apparatus, namely, the gas tank."
We think the contentions are untenable. The distinction between
system and method is too subtle, and, besides, it is clear that the
patentee considered the words as meaning the same thing, and the
apparatus referred to was one, it was said, "employed to cause the
solution under pressure of other gases in other liquids." It was
not the apparatus of the United States patent, though having some
features the same.
But it is contended that, even if considered as a "method"
"it is merely for the method of operating the
Page 239 U. S. 166
apparatus, constituting the function of the apparatus, and
therefore, under the decision of this Court, is for the same
And this is contended to be established by Mosler Safe &
Lock Co. v. Mosler, 127 U. S. 354
by a ruling of the Patent Office upon the application of Claude and
Hess for an "Improvement in a Method of Storing Acetylene Gas for
Distribution," and the acceptance of that ruling by the
case, it was said in Miller v. Eagle
Mfg. Co., 151 U. S. 186
151 U. S. 197
"that a patent having issued for a product, as made by a certain
process, a later patent could not be granted for the process which
results in the product."
The process was a purely mechanical process, and the ruling, it
would seem, must be confined to the exact facts of the case, for in
Miller v. Eagle Mfg. Co.,
it was said that
"a single invention may include both the machine and the
manufacture it creates, and in such cases, if the inventions are
really separable, the inventor may be entitled to a monopoly of
And Sewall v. Jones, 91 U. S. 171
cited for the purpose of showing that there might be a patent for
the process and one for the product. Merrill v. Yeomans,
94 U. S. 568
also cited as holding that
"where a patent described an apparatus, a process, and a
product, and the claims covered only the apparatus and the process,
the law provided a remedy by a surrender of the patent and a
reissue, for the purpose of embracing the product."
The ruling of the Commissioner of Patents referred to above is
"It was common long prior to the appellants' invention to force
under pressure into a liquid solvent thereof in a closed vessel and
was also common to draw off gas from a holder where it was
contained under pressure, though an opening, the effective size of
which was directly controlled by and proportionate to the pressure
of the gas
Page 239 U. S. 167
within the holder, or, in other words, through a pressure
regulator. The appellants were therefore not the inventors of the
step of storing gas, as set forth, nor of the step of permitting
gas to escape from a place of storage in the manner set forth.
Neither of these steps modifies in any manner the old and expected
effect of the other, and the final result of the alleged process --
namely, distributing gas at a uniform pressure -- is the same as
that produced by processes old in the art, as above stated. The
appellants have therefore not invented a new and patentable
process, although, as held in a companion case, they have devised
an apparatus by which the old process of storing gas can be made
practically and commercially useful. Claims to that apparatus have
been allowed, and it is believed that it is the only patentable
invention disclosed by them."
"* * * *"
"It appears, further, that they do not cover proper methods, but
merely the functions of mechanism, and that they are not patentable
in view of the decisions in Cochrane v. Deener,
94 U. S.
, and Boyden Brake Co. v. Westinghouse,
Off.Gaz. 1067. Claim 3 clearly covers several independent
disconnected steps which do not go to make up a patentable
The "companion case" referred to by the Commissioner is the
patent in suit, and it will be observed that the Commissioner said
it was for an apparatus by which the old process of storing gas
could be made practically and commercially useful, and that claims
to it had been allowed. It was therefore distinctly a patent for an
apparatus, while, on the contrary, all the foreign patents are
explicitly for methods. The devices described in them were not a
result of the operation of the methods. Some receptacle or
apparatus was necessary to be shown to produce and hold the
solution of the gas and the liquid employed as a solvent. Something
else was necessary for
Page 239 U. S. 168
the use of the solution, and the device of the United States
patent was aimed to secure it. It is distinct from the method.
Whether it has patentable novelty is another question. And a
serious question it is. The solubility of acetylene in liquids,
especially in acetone, is availed of in all of the patents, United
States and foreign. This cannot be denied -- indeed, is admitted --
and, as we have seen, there are devices described in the foreign
patents for storing the solution and devices indicated for its use.
The similarities and differences between the patents have given
rise to a diversity of opinion and decision.
The Circuit Court of Appeals for the Sixth Circuit discerned a
difference between the British patent and that in suit, and
considered that the former was for a process, and the latter for an
instrument to perform the process, and therefore the two were not
for the same invention, and that necessarily the United States
patent did not expire with the British patent. 192 F. 321.
The Circuit Court of Appeals for the Seventh Circuit expressed a
contrary view, and decided that the British patent and the patent
in suit were for substantially the same invention, and, the British
patent having expired, the patent in suit expired with it. The
decisions had, respectively, the support of Judge Denison (188 F.
89) and Judge Kohlsaat (188 F. 85, 112, 192 F. 321).
It was decided in the Circuit Court for the Eastern District of
Wisconsin, Judge Quarles sitting, that the device of the patent in
suit was patentable, and was not anticipated by anything in the
prior art. 166 F. 907; see also
181 F. 387.
It was this conflict of views that induced this writ, but the
conflict is not as to all questions in the case. If the decisions
of the trial courts may be in opposition on invention and
infringement as well as on the effect of the
Page 239 U. S. 169
foreign patents, such conflict cannot be asserted of the
opinions of the circuit courts of appeal. That of the Eighth
Circuit -- and to which this writ is directed -- refrained from a
decision on the merits, and considered only the propriety of the
discretion exercised by the trial court in granting a preliminary
injunction, and, reviewing the expression of judicial opinion,
decided that the court was justified in making the order. The court
of appeals went no farther, as we have seen, and we are disposed to
a like limitation. The questions are seriously disputable, as the
difference in decision indicates, and we think we should follow the
circuit court of appeals and imitate the example of Leeds &
Catlin v. Victor Talking Machine Co., 213 U.
, 213 U. S.
-312. We have not the aid -- and its value in
inestimable -- of the judgment of the trial court or of the circuit
court of appeals, but must consider the question upon conflicting
allegations and affidavits. The better course, therefore, is to
reserve all questions except that of the identity of the patent in
suit with the foreign patents, and its termination by their
expiration, and, with that reservation, we decide only that there
was no abuse of discretion in granting and sustaining the order of