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    U.S. Supreme Court


    183 U.S. 591

    No. 61.

    Argued October 28, 29, 1901.
    Decided January 6, 1902.

    Messrs. Lysander Hill, William R. Omohundro, Ernest Wilkinson, and Raymond & Barnett for petitioner.

    No counsel for respondent.

    Mr. Justice McKenna delivered the opinion of the court:

    This suit was originally brought for the infringements of three letters patent issued to the petitioner as assignee of Amos Perkins. The patents were respectively numbered 501,537, 542,349, and 560,599, and were dated respectively 18th July, 1893, 9th July, 1895, and the 19th of May, 1896. The first, 501,537, was for an improved 'method of repairing asphalt pavements;' the other numbers were for 'improvement in apparatus for repairing asphalt pavements.'

    The bill contained the usual allegations of invention and infringement, and prayed an injunction.

    The answer admitted the issue of the patents, but denied that Perkins was the original and first inventor of the subject-matter, or that the improvements therein disclosed constituted new and useful inventions within the meaning of the patent laws, or that said improvements were not known or used in this country, or had not been patented or described in any printed publication in this or in foreign countries before the alleged invention thereof by Perkins. [183 U.S. 591, 592]   The petitioner dismissed the bill as to patent number 542,349. Upon the hearing the circuit court sustained the apparatus patent number 560, 599, finding that the Assyrian Asphalt Company had infringed upon that apparatus, and ordered an injunction and a reference for an accounting. The method patent, number 501,537, was adjudged invalid, and the court said:

    The petitioner took an appeal to the court of appeals, and that court affirmed the judgment of the circuit court. 41 C. C. A. 123, 100 Fed. 965. The case was then brought here by a certiorari.

    The proceedings here are only concerned with the method patent, number 501,537. The letters patent describe the invention as follows:

    The apparatus described consists of a suitable tank mounted on a wheel for carrying gasoline. The tank is connected with a series of horizontal pipes which carry a series of burners, and 'project a flame downward against the pavement.'

    The letters patent further say:

    Infringement is only asserted of the first claim, and, considering the language of the claim and of the specifications, it seems impossible to escape the conclusion that the invention claimed is for the application of heat to the spot to be repaired. And the patentee did not confine himself to the particular apparatus he described. That, he said, was 'one form of accomplishing the result.' He would have it understood, he said, that he did not confine himself 'to any particular form of apparatus for carrying out' his invention; and the independence of his method from any form of apparatus is brought out by [183 U.S. 591, 595]   contrast of what had been done and what he proposed to do as an improvement. What had been done was to take out with a pick or other instrument the surface material around the spot to be repaired, sometimes applying heat to the spot to soften the material, so that it might more easily be removed. And the new method he proposed was to subject the spot to be repaired and surrounding edges to such a degree of heat that the surface asphalt-not only the exact spot to be repaired, but the surrounding material, to a greater or less degree-will be reduced to the soft, pliable state in which it was originally laid. Here we have the comparison of the two methods. The old was to take out the surface material around the spot to be repaired, sometimes applying heat to soften such material. The new method was to apply heat, not only to the exact spot to be repaired, but the surrounding edges. What, then, was the advantage of the new method? The patent tells us. In the old method the depression made by the removal of material was 'thoroughly cleaned and given a coat or dressing of tar.' The tar acted as a solder, but the joint between the old and the new material was discernible, and often a ridge was formed, and the adhesion of the materials yielded to frost and other causes. The new method dispenses with the tar and its consequences. It substitued the melting of the surrounding edges, producing a union and coalescing of the old and new material, making a better appearing and more lasting repair. If the method and effect of the patent be different from this, we are unable to discern it from the patent or from the testimony. Indeed, there is no other difference established by the testimony. One of the expert witnesses of the petitioner testified as follows:

    ... * *

    And he further testified:

    In other words, the mixing of the old and new material around the edges of the excavation, and 'adding of new material in direct contact with the old material, smoothing and burnishing it,' is the essence of the invention; and so unqualifiedly is this true that a witness of petitioner testified that if the heat which was applied not only melted, but burned, the immediate surface and as well 'the particles deep down,' and the material thus burned raked away clean before new material was applied, the method of the patent would be followed.

    As thus described, was there anything in the art which preceded the Perkins method and took from it the claim of originality and invention? The circuit court and the circuit court of appeals found that a patent issued to Paul Crochet [183 U.S. 591, 597]   June 11, 1880, in France, had that effect; and we concur in the finding. The process described in the Crochet patent is for the 'preparation and recharging of compressed asphalt roadways.' The following is the specification of the patent:

    The similarity, if not identity, of the patents, is manifest, and it would seem unnecessary to enlarge upon their resemblance. They are both methods of repairing asphalt roadways; they both apply heat to the spot to be repaired; the old material is removed in the Crochet patent; in the Perkins patent it is reduced to the state in which it was originally laid, then agitated and mixed with new material. But this agitation and mixing of old and new material is not necessary to the method. It may be advisable to do or not to do, a witness testified. But further, the Perkins patent calls for a heating of the surround- [183 U.S. 591, 599]   ing edges of the spot to be repaired, to make continuity between the spot repaired and the surrounding pavement. The Crochet patent has not this detail in words, but it is clearly implied. Describing the prior art, the Crochet patent says: '. . . the operator generally delimits with a pick the part which is to be replaced, and takes therefrom the asphalt; but it is rare that this operation has not for consequence the starting of the adjacent portions which are sound, swelling them up in such wise that at the end of a little while it is necessary to repair them in their turn.' His method, he says, 'suppresses such inconveniences,' and the repeated passing of the heating apparatus over the pavement has the effect that the new coat forms with the old 'a thickness without break in continuity, and it does not at all impair the neighboring portions.' Surely, considering the method of this patent alone, it did not require the exercise of invention to pass to or conceive the Perkins method. Besides, that conception had the aid of other publications. In some of them the application of heat is mentioned as necessary in the original construction of asphalt payements, and also in their repair. In a work entitled 'Asphalt, its Origin, its Preparation, and its Application,' by Leon Malo, published in Paris in 1888, the repair of pavements after excavations and deteriorations was described. In making excavations two precautions were recommended, and the second consisted, the author said--

    And again, as to deteriorations:

    The counsel claim, however, that the Perkins 'method is characterized by a new and useful way of applying heat to the [183 U.S. 591, 600]   pavement, to wit, by sending a flame blast into direct contact with the pavement surface,' and that the Crochet patent had no suggestion of that; and, besides, the Crochet process applied to compressed asphalt roadways, which was a different asphalt roadway than that to which the Perkins method was intended to apply. And upon the difference in the asphalt counsel has dwelt long and interestingly, but the argument finally comes to a dependence upon the fact that the compressed asphalt of the Crochet patent disintegrates and crumbles, and if overheated becomes as inert as sand; whereas the asphalt of the Perkins patent melts under the action of heat and has 'a peculiar property or 'susceptibility;' namely, that when its surface is subjected constantly to a lively heat, the exposed material automatically covers itself with a thin, protecting shield, and merely melts and softens beneath that shield.' The answer to the contentions is that given by the circuit court of appeals; the patent does not support them. Before the time of either patent the world knew that heat disintegrated some things and melted others, and we cannot concede invention to the thought that that might be true of different kinds of asphalt. Indeed, even in the face of the grave testimony contained in this record given by unquestionably expert men, we find it also difficult to concede that it was an exertion of invention to apply heat to the edges of an excavation to make a bond between the old and the new material. To devise an instrument to do that well and quickly might be invention, and that Perkins achieved by his apparatus patent. To allow him more under the facts of this record would be to give him a monopoly of the machine and of that which the machine can do. And this is an answer to the contention based upon the peculiar property of American asphalt to interpose a shield against a blasting heat to protect itself from destruction, heat to protect itself from destruction,-a virtue in American asphalt, no doubt. application of heat, there is nothing in the record to show that Perkins was aware of it. He certainly did not reveal it in the specifications of his patent nor describe it as part of his method. His apparatus, it is true, is provided with burners by which blasts of heat may be projected against the pavement. But his method is independ- [183 U.S. 591, 601]   ent of his apparatus. He says in his patent: 'The heating of the surface may be accomplished in various ways and by means of various forms of apparatus, and while I have herein shown but one form for accomplishing the result, yet I would have it understood that I do not limit myself to any particular form of apparatus for carrying out my invention.'

    And what is claimed is, as we have seen, 'the subjecting the spot to be repaired to heat.'

    In further answer to the contention we may quote the circuit court of appeals as follows:

    Decree affirmed.

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