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by the assignor if the same in fact falls within the class, although the pendency of such application was known to both parties, and was not specifically mentioned in the contract, and although neither party at that time believed that it fell within the class; but the fact that neither party thought it was in the class may be a pregnant circumstance to show in what sense the words describing the class were used, if those words are
capable of more than one meaning. 1 SAME.
By a contract of assignment, certain inventors conveyed to their assignees "any and all discoveries and inventions relating to electric smelting processes and furnaces, and all patents they have obtained therefor, and all applications now pending, and caveats on file in the United States patent office relating to electric smelting processes and furnaces, which do or may interfere with any applications for patents made by [the assignors], now pending in the United States patent office." Held, that the words, “which do or may interfere with,” qualify not only the phrase immediately preceding, namely, "caveats on file," etc., but also the words, "discoveries," "patents,” and “applications,” and that the interference referred to was either a declared interference in the patent office, or the total defeat or narrowing of any of the otherwise valid claims of the pat
ents issued to the assignees. 5. SAME.
Eugene and Alfred H. Cowles, after long investigation, made certain discoveries and inventions relating to the reduction of the more refractory ores, especially aluminum ore. Their process consisted substantially in the use of granulated carbon distributed through the mass of the ore in the furnace to carry the electric current from one electrode to the other, whereby intense heat was produced which fused the ore, and enabled the carbon, by its chemical action upon the nonmetallic elements in the ore, to separate the metallic element therefrom. This process they designated as an “electric smelting process." In 1885, having applied for certain patents, and being about to apply for others, they learned that C. S. Bradley and Francis V. Crocker had made similar inventions, and that an application filed by them was about to be thrown into interference with the principal application of the Cowles brothers. They thereupon secured from Bradley and Crocker, for a large money consideration, a contract of assignment, which, after reciting that the Cowles brothers had made certain discoveries and inventions relating to "electric smelting processes and furnaces,” and had applied for patents therefor, conveyed all the interest of said Bradley and Crocker in “any and all discoveries and inventions relating to electric smelting processes and furnaces, and all patents they have obtained therefor, and all applications now pending and caveats on file in the United States patent office, relating to electric smelting processes and furnaces, which do or may interfere with any applications for patents made by Eugene and Alfred H. Cowles, of Cleveland, Ohio, now pending in the United States patent office.” At the date of the contract, Bradley, individually, had pending an application for a process of reducing ores by electrolysis, which application, after long delay, was divided, and three: patents issued thereon, the main one (No. 468,148) being restricted to a combination of three steps, namely: (1) The initial fusion of the ore mass: by the use of an electric arc; (2) maintenance of the fusion by the heati of resistance to the current in the fused ore, and the consequent progressive melting of the rest of the ore; (3) electrolysis by the current. The pendency of this application was known to the Cowles brothers, but it was not specifically referred to in the contract. Held, that this Bradley application did not pass by the assignment: First, because the phrase “electric smelting process,” as used in the contract, meant a smelting process as ordinarily understood, including the use of a chemical reducing agent; and, second, because, even if these words were broad enough to include electrolysis, yet the Cowles inventions were not "interfered with”. by the Bradley application for the reason that they did not effect initial fusion by means of an electric arc, which was an essential step in the Bradley process.
The bill in this case was filed by Grosvenor P. Lowrey, a citizen of New York. He has since died, and the case has been revived in the name of his executrix.
The bill averred that Lowrey was the owner by assignment of two patents issued to Charles S. Bradley for a process of separating metals from their ores by the use of the electric current both to fuse and to electrolyze the ore. The bill charged that the defendant the Cowles Electric Smelting & Aluminum Company, a corporation of Ohio, had executed and recorded in the patent office an assignment of the same patents, in which it purported to convey them to its codefendant, Alanson T. Osborn, a citizen of Ohio; that the Cowles Company asserted title to the patents, and the right to convey them by virtue of an assignment to it made by Bradley and one Crocker, on May 8, 1885; that the assignment relied on did not cover the patents in question at all; and that the assignment of the Cowles Company to Osborn was a cloud upon complainant's title. He prayed that the defendants might be enjoined from further asserting any claim to the patents in question, and be ordered to cancel the assignment already made and recorded.
The answer of the defendant asserted its ownership of the two patents by virtue of the assignment of May 8, 1885. By a cross bill, it prays for a de cree enjoining complainant from claiming title to the patents by virtue of Bradley's assignment to him. In answer to the cross bill complainant sets up that he was a purchaser for value without notice of the patents, and that defendant's conduct in not claiming title to the Bradley inventions for 10 years estops it from now asserting it. The case was argued to the court, and decided on a plea to the bill. The plea was held insufficient, and leave given to answer. 56 Fed. 488. Evidence upon the issues presented by the pleadings has been taken, and the case is now before the court on its merits.
The main question in the case is whether the assignment of Bradley and Crocker to the Cowles Company, dated May 8, 1885, of certain patents, applications, and inventions, covered and included the patents title to which is here in controversy. The assignment was as follows:
“This agreement entered into this Sth day of May, 1885, between F. B. Crocker, of New York City, N. Y., and C. S. Bradley, of Yonkers, N. Y., constituting the first party, and the Cowles Electric Smelting and Aluminum Company, of Cleveland, Ohio, a corporation organized under the laws of the state of Ohio, constituting the second party, witnesseth that whereas, the first party have made certain discoveries and inventions relating to electric smelting processes and furnaces, and have made some applications for patents therefor in the United States patent office; and whereas, second party is desirous of becoming the owner of all such discoveries and inventions: It is therefore agreed between the parties as follows: (1) For the consideration hereinafter mentioned, the receipt of which, to our full satisfaction, is hereby acknowledged, the said party does hereby sell, assign, and set over to the said second party all interest in any and all discoveries and inventions relating to electric smelting processes and furnaces, and all patents they have obtained therefor, and all applications now pending, and caveats on file, in the United States patent office, relating to electric smelting processes and furnaces, which do or may interfere with any applications for patents made by Eugene H. and Alfred H. Cowles, of Cleveland, Ohio, now pending in the United States patent office. It is understood and agreed between the parties that this clause also includes the application of the first party, now pending in the United States patent office, and designated serial number 158,805, and filed March 14, 1885. (2) Said first party also sells, assigns, and sets over to said second party their entire interest in all inventions, patents, and applications for patents, in all foreign countries, for the discoveries and inventions mentioned in the preceding clause of this agreement. (3) Said first party hereby authorizes and requests the commissioner of patents to issue to the said second party patents for said discoveries and inventions mentioned in the first clause of this agreement. (4) Said first party, for said consideration, further agrees to sign and execute all papers necessary to perfecting applications for said inventions, and obtaining patents therefor. (5) In consideration
of the preceding, said second party hereby pays in hand to said first party the sum of five thousand dollars. In testimony whereof said parties have hereunto set their hands the day and year first above written,
"Francis B. Crocker.
“Charles S. Bradley." This assignment was recorded in the patent office a short time after its execution. At the hearing of the plea, this court held that, from an examination of the Bradley patents and of the Cowles patents, referred to in the foregoing assignment, and their file wrappers and contents, it did not appear that the Bradley patents interfered with the Cowles patents, but that the introduction of expert evidence might show that they necessarily covered the same ground; that the issue thus raised was not an issue proper to be raised upon a plea, but should be raised in an answer, and heard upon full evidence, ex: pert and otherwise. The evidence which has now been taken discloses quite fully the circumstances surrounding the execution of the assignment.
Eugene Cowles and Alfred H. Cowles, sons of Edwin Cowles, of Cleveland, Ohio, had given much time and study to the investigation of processes and apparatus for the winning of the rarer metals from their refractory ores by the use of electricity. They had experimented much in the Brush laboratory in Cleveland, and had made several important discoveries and inventions, for which they had applied, or were about to apply, for patents in the years 1884 and 1885. Early in 1885 they were informed by some means that their principal application for a patent for an electric furnace and smelting process was about to be declared in interference in the patent office with an application for a similar furnace and process of C. S. Bradley and Francis B. Crocker. Through Colgate Hoyt, a lawyer of New York City who acted for them, the Cowles brothers obtained the following option from Bradley, then living at Yonkers, N. Y.
“New York, April 8, 1885. "By and between Charles S. Bradley and Colgate Hoyt, both of Yonkers, in the state of New York, it is agreed as follows: Said Bradley shall, upon demand of said Hoyt, made at any time within 90 days from the date hereof, assign to said Hoyt, or his order, for the consideration of ten thousand dollars cash, an undivided 14 interest in all inventions which he had hitherto made in electric furnaces, and in the reduction of ores by electricity, and of all patents to be granted therefor, whether applications for such patents have already been filed, or shall hereafter be filed, in the patent office of the United States; and, in consideration of the option being granted, said Hoyt, or the party to whom he may have assigned the same, shall pay to said Bradley, at the date hereof, the sum of five hundred dollars. Charles S. Bradley."
During the life of the option thus secured, the Cowles brothers, with their father, Edwin Cowles, organized the defendant corporation under the laws of Ohio, and a correspondence was begun between the company and Bradley and Crocker, with reference to the purchase of the latter's application, which was then declared in interference with theirs. The result of the correspondence was that Bradley and Crocker visited Cleveland, and had a conference with the Cowleses, father and sons. The conference was upon Saturday afternoon and evening, and an adjournment was had until Monday morning for the drawing up of the contract. On Monday morning, Crocker and Bradley produced their application, which had been declared to be an interference with the Cowles applications. It contained the following reference to the application by Bradley alone, upon which the two patents which are here the subject of litigation were subsequently issued: “In an application for letters patent of the United States now pending (filed February 23, 1883, serial number 85,957), Charles S. Bradley, one of the present inventors, has described an electro metallurgical process in which an electric current is employed to perform two functions: First, to effect the electrolytic decomposition of the materials treated; and, second, to supply the heat necessary to maintain said materials in the fused state while they are being electrolyzed. The present invention resembles the above to a certain extent, but in the present invention the electric current which we employ performs no electrolytic action, the reaction which takes place being solely to develop the heat which is a necessary condition of the reaction. For this reason, our invention does not require the use of a continuous current of electricity. An alternating current may be employed, if desired, which is an advantage, since large alternating current dynamos may be constructed more cheaply than the continuous current machines, and it is also less trouble and expense to run them."
This reference to the application of Bradley, of 1883, was brought to the attention of both Eugene and Alfred Cowles, and was the subject of discussion between them and Bradley and Crocker before the contract was finally drawn and signed. The option of April 8, 1885, was surrendered to Bradley. At the time the contract was signed, Bradley and Crocker had no other application than the one then declared to be in interference by the patent office authorities with the Cowles application. They owned no patent of the United States for any invention. They had no application pending in any European country, and owned no patent issued by any European government. Bradley at that time had pending only one application in addition to the Crocker and Bradley application in terms assigned by the contract, and that was the application for the patents here in controversy. Upon the execution of the contract, the question was submitted to Gen. M. D. Leggett, counselor in patent cases at Cleveland, who supervised and revised the contract as agreed upon between the parties, whether it would be better to have the patent for the entire process and discovery issued on the application of the Cowles brothers or upon the application of Bradley and Crocker. He decided, on the evidence adduced, that the stronger case was with the Cowles brothers, and that it was better for them to have Bradley and Crocker concede priority of invention, so that the patent might be issued upon the Cowles application. This was done, but the Cowles brothers proceeded with the Bradley and Crocker application, omitting the general claims which interfered with the Cowles application, and obtained a patent for the particular apparatus described by Bradley and Crocker in their application which might prove to be an improvement on or useful variation from, the Cowles patent. This patent was issued to the Cowles brothers as the assignors of Bradley and Crocker. No claim of title to the Bradley application of 1883 was ever made by the Cowles brothers nor did they ever attempt to prosecute it to a patent. As a matter of fact, although it was not then known to the Cowles brothers, at the time of the execution of the contract of assignment in May, 1885, the application of Bradley of 1883 stood rejected, as not involving a patentable process. The application lingered along in the patent office, retained there by the filing of amendinents until 1891. It was divided into three applications. The main application was finally rejected by the examiner, and was then carried on appeal to the board of review in the patent office, which reversed the decision of the examiner, and allowed the issuance of a patent in 1892. After their issuance the patents were assigned by Bradley to Grosvenor P. Lowrey, the original complainant in this action.
To render the issues clear, it is necessary to describe at some length the various Cowles patents referred to in the assignment, the Bradley and Crocker application referred to therein, and the Bradley patents, which are the subject of this litigation.
The first and most important of the Cowles patents, the one between wlich and the Crocker and Bradley patent an interference was declared, was en, titled "A Process for Smelting Ores by the Electric Current." The description taken from the specifications was as follows: “The present invention relates to the class of smelting furnaces which employ an electric current solely as a source of heat. Heretofore it has been attempted to reduce ores and perform metallurgical operations by means of an electric are, the material to be treated being brought within the field of the arc or passed or fed through it; but numerous experiments have demonstrated that the arc system is not adapted for long and continuous operations on a scale of any considerable magnitude. The difficulties attending the regulation of the arc and the preservation of a constant resistance are very great, and the heat generated, though intense, is localized and difficult to control. The object of this invention is to provide a process by which electricity can be practically employed for metallurgical operations, and for this purpose to secure a distribution of the intense heat which it is well known electricity is capable of generating over a large area or through a large mass, in such manner that a high temperature can be sustained for a long time and controlled. To this end the invention consists, essentially, in the use for metallurgical purposes of a body of granular material of high resistance or low conductivity, interposed within the circuit in such a manner as to form a continuous and unbroken part of the same, which granular body, by reason of its resistance, is made incandescent, and generates all the heat required. The ore or light material to be reduced-as, for example, the hydrated oxide of aluminium, alum, chloride of sodium, oxide of calcium, or sulphate of strontium-is usually mixed with the body of granular resistance material, and is thus brought directly in contact with the heat at the points of generation at the same time the heat is distributed through the mass of granular material, being generated by the resistance of all the granules, and is not localized at one point or along a single line. The material best adapted for this purpose is electric light carbon, as it possesses the necessary amount of electrical resistance, and is capable of enduring any known degree of heat when protected from oxygen, without disintegrating or fusing; but crystalline silicon or other equivalent of carbon can be employed for the same purpose. This is pulverized or granulated, the degree of granulation depending upon the size of the furnace. Coarse granulated carbon works better than finely pulverized carbon, and gives more even results. The electrical energy is more evenly distributed, and the current cannot so readily form a path of highest temperature, and consequently of least resistance, through the mass along which the entire current, or the bulk of the current, can pass.
The operation must necessarily be conducted within an airtight chamber, or in a nonoxidizing atmosphere, as otherwise the carbon will be consumed and act as fuel. The carbon acts as a deoxidizing agent for the ore or metalliferous material treated, and to this extent it is consumed, but otherwise than from this cause it remains unimpaired."
The patentees illustrate their process by describing a zinc furnace, which consists of a cylinder made of silica or other nonconducting material, imbedded in powdered charcoal, mineral wool, or some other nonconductor of heat. One end of the cylinder is closed by means of a carbon plate forming the positive electrode. The other end is closed by means of an inverted graphite crucible, forming the negative electrode, and, through a hole communicating with the furnace, forms a condensing chamber for the zinc fumes. The patent proceeds: “The circuit between the electrodes, so called, is continuous, being established by means of and through the body of broken carbon. * *
* The zinc ore is mixed with the pulverized or granular carbon, and the retort charged nearly full through the front end with the mixture, the plug D being removed for this purpose. After the plug has been inserted, and the joint properly luted, the electric circuit is closed, and the current allowed to pass through the retort, traversing its entire length through the body of mixed ore and carbon. The carbon constituents of the mass become incandescent, generating a very high degree of heat, and, being in direct contact with the ore, the latter is rapidly and effectually reduced and distilled. The heat evolved distills the zinc, and the zinc fumes are condensed in the condensing chamber precisely as in the present method of zinc making, with this important exception: that, aside from the reaction produced by heating carbon in the presence of zinc oxide, the electric current, in passing through the zinc oxide, has a decomposing and disintegrating action upon it, not unlike the effect produced by an electric current in a solution. This action accelerates the distillation, and promotes economy in the process. have found in practice that a mixture of about one part of carbon with one and a half parts of zinc ore, by weight, gives most satisfactory results with the particular ore which we have treated; but the proportions to be used will depend upon the character of the ore and the degree of heat required to reduce it, and the degree of heat evolved will be determined by the resistance or conductivity of the mass and the strength of the current employed. * * * In the reduction of an ore composed of a nonvolatile metal, or a metal which is not volatilized at the heat generated in the furnace, the metal remains in the furnace mixed with the carbon, filling the interstices between the grains, while the gases produced pass off. In the reduction of rare metals, where a pure product is desired, it is necessary to use a pure carbon, or a carbon free from iron or other foreign ingredient; otherwise the iron or other substance will go into the product."