CITE:  94 U.S. 780
CMON:  March 1877
PLAIN: William F. Cochrane et al., Appts.,
DEFND: Josiah W. Deener et al.
COURT: Supreme Court
DATE:  March 19, 1877

Appeal from the Supreme Court of the District of Columbia.  This is a suit
in equity, instituted in the Supreme Court of the District of Columbia for
injunction and relief against an alleged infringement of various patents
belonging to the complainants. The bill was dismissed and the complainants
have appealed. The case is fully stated by the court.

  Process is as patentable as machinery, independent of form of instruments
  used, if new and useful.

JUDGE: Bradley, Justice


The patents sued on are six in number, originally five, granted to the
appellant Cochrane on the 13 of January 1863, and numbered respectively
37317, 37318, 37319, 37320, and 37321. They all related to an improved
method of bolting flour, the first being for the general process; and the
others for improvements in the different parts of the machinery rendered
necessary in carrying on the process. Three of the original patents,
Nos. 37317, 37318 and 37321, were surrendered and re-issues taken in 1874,
which re-issues were numbered 5841, 6029 and 6030, the first being for the
process, and the other two for portions of the machinery. Re-issue 6029,
being in place of the original patent numbered 37321, was also subsequently 
surrendered, and two new re-issued patents substituted therefor,
numbered 6594 and 6595.

The case has been mainly argued on the question of infringement, the
defendants using a bolting apparatus constructed according to letters
patent issued to Edward P. Welch in April, 1873, for improvements upon
machines patented to Jesse B. Wheeler and Ransom S. Reynolds, which, as
well as the process employed, they contend, are radically different from
the apparatus and process of Cochrane.

A preliminary question is raised, with regard to the jurisdiction of the
court below to hear the case on a bill in equity, before a determination
of rights of the parties in an action at law.

The powers of the Supreme Court of the District of Columbia in patent cases
are the same as those of the Circuit Courts of the United States. See
Revised Statutes, relating to the District of Columbia, secs. 760, 764.

The circuit courts were first invested with equity jurisdiction in patent
cases by the Act of Feb. 15, 1819 (3 Stat. at L., 481), which declared that
these courts should have "Original cognizance, as well in equity as at law,
of all actions, suits, controversies, and cases arising under any law of the
United States, granting or confirming to authors or inventors and exclusive
right to their respective writings, inventions and discoveries; and upon any
bill in equity, filed by any party aggrieved in any such cases, should have 
authority to grant injunction, according to the course and principles of
courts of equity," etc.

This law was substantially re-enacted in the 17th section of the Patent Law
of July 4, 1836 (5 Stat. at L., 117), and the 55th section of that of
July 8, 1870 (16 Stat. at L., 198), special powers to assess damages in
equity cases being also conferred by the latter Act.

Before the Act of 1819 was passed, the circuit courts had cognizance of
actions at law brought to recover damages for the infringement of patents,
but not of suits in equity in relation thereto, unless the parties happened
to be citizens of different States. Phil. Pat., 379; Livingston v. Van Ingen,
1 Paine, 54;  Sullivan v. Redfield, 1 Paine, 447.  Under that Act and the
subsequent Acts in which it became incorporated, bills in equity for
injunction, discovery and account have constantly been sustained, 
frequently without any previous action at law. As said by Mr. Justice Grier,
in a case decided at the circuit: "It is true that, in England, the
chancellor will generally not grant a final and perpetual injunction
in patent cases, when the answer denies the validity of the patent,
without sending the parties to law to have that question decided. But
even there the rule is not universal; it is a practice founded more on
convenience than necessity. It always rest in the sound discretion of the
court. A trial at law is ordered by a chancellor to inform his conscience,
not because either party may demand it as a right, or that a court of
equity is incompetent to judge of questions of fact or of legal titles.
In the United States, the practice is by no means so general as in England."
Goodyear v. Day, 2 Wall., Jr., 296. Subsequently in the case of Sickles v. 
Gloucester Co., 3 Wall.,Jr., 186, the same judge said: "The courts of the
United States have their jurisdiction over controversies of this nature by
statute, and do not exercise it merely as ancillary to a court of law."
And, after quoting the statute, he proceeds: "Having such original
cognizance * * * the courts of the United States do not, in all cases,
require a verdict at law on the title, before granting a final injunction, 
or concede a right to every party to have every issue as to originality
or infringement tried by jury."

The position of Mr. Justice Grier is undoubtedly true, that whether a case
shall be first tried at law is a matter of discretion, and not of
jurisdiction; and in this matter the courts of the United States, sitting
as courts of equity in patent cases, are much less disposed than the
English courts are to send parties to a jury before assuming to decide
upon the merits.

But the counsel for the defendants suggest that the Revised Statutes have
not preserved in entirety the previous enactments on this subject, but
have omitted the vesting of original cognizance in the circuit courts
sitting as courts of equity in patent cases. From a careful consideration,
however, of all the sections of the Revised Statutes on the subject, we
think that no intention is evinced to make any change in the law. The
original enactments are separated into distinct parts, and somewhat
condensed; but the substance of them is retained. By section 629, the
circuit courts are invested with jurisdiction, among other things: 
"Ninth, of all suits at law or in equity arising under the patent of
copyright laws of the United States." And, by section 4921, it is declared,
that "The several courts vested with jurisdiction of cases arising under
the patent laws shall have power to grant injunctions according to the
course and principles of courts of equity", etc., following precisely the
language used in the Act of 1870, 16 Stat., at L., 198, the last previous 
revision of this branch of the law. The grant of jurisdiction is as broad
and general as it could well be, and the mode of exercising it is
prescribed in precisely the same terms as in previous statutes.

In the present case, we see no special reason for sending the case to a
court of law or to a jury for trial. There are no such issues depending
upon the credibility of witnesses, or on the intricacy of machinery, as
to make the case susceptible of easier solution or greater certainty as
to the truth, before such a tribunal, that it admits of when presented
to the consideration of a chancellor. It would, perhaps, be desirable, if
all cases of this sort could be referred to a commission of intelligent
experts and practical men to report their opinion thereon, with their
reasons, for the final action of the court. A proceeding of this kind was
probably in the mind of Congress in passing the Act of Feb. 16, 1875,
18 Stat. at L., 315, authorizing a reference to a jury of five persons.
Neither courts nor ordinary juries are perfectly adapted to the
investigation of mechanical and scientific questions. The court below,
however, exercised its discretion to decide the case upon its merits,
without the aid of a jury or any sort, and their action is not a ground
of appeal. If we were convinced, however, that the case was not properly
decided, and could not be properly decided without such a reference, we
might undoubtedly, in the exercise of our own discretion, remand it to
the court below for that purpose. But we see nothing in the questions
raised which requires that such a course should be adopted.

The principal patent sued on in this case was granted on the 21st of April,
1874, being a re-issue of a patent granted to William F. Cochrane on the
6th of January, 1863. The original patent was numbered 37317, and the
re-issue 5841. The alleged invention is for a process in manufacturing
flour. The patentee, in his specification, says: "The object of my
invention was to increase the production of the best quality of
flour; and my improvement consisted in separating from the meal, first
the superfine flour and then the pulverulent impurities mingled with the
flour producing portions of the middlings meal, so as to make 'white' or
'purified' middlings, which, when reground and rebolted, would yield
pure white flour, which, when added to the superfine, would improve the
quality of the flour resulting from their union, instead of deteriorating
its quality, as had heretofore been the case when the middlings flour
was mingled with the superfine."  The process employed for producing the
result here indicated is then described. It consists of passing the ground
meal through a series of bolting-reels clothed with cloth of progressively 
finer meshes, which pass the superfine flour and retard the escape of the
finer and lighter impurities; and, at the same time, subjecting the meal
to blasts or currents of air introduced by hollow perforated shafts 
furnished with pipes so disposed that the force of the blast may act
close to the surface of the bolting-cloth; the bolting-chest having an
opening at the top for the escape of the air, and of the finer and lighter
particles therewith, through a chamber where the particles are arrested,
whilst the floor and sides of each compartment of the chest are made close,
so as to prevent the escape of the air in any other direction than 
through said opening. But this means, the superfine flour is separated,
and the fine and light specks and impurities, which ordinarily adhere to
the middlings and degrade the flour produced therefrom, are got rid of;
and when the middlings are now separated from the other portions of the
meal, they are white and clean, and capable of being reground and rebolted,
so as to produce superfine flour equal in quality and even superior to
the first installment.

This is the process described: but the patentee claims that it is not
limited to any special arrangement of machinery. He admits the prior use
of currents of air in the interior of the reels, introduced by means of
hollow, perforated shafts, for the purpose of keeping back the speck, and
increasing the quantity of superfine flour; but not for purifying the
middlings preparatory to regrinding. His improvement, therefore, does not
consist in using drafts and currents of air, but in the process as a
whole, comprising of application of the blast, and the carrying off of
the fine impurities, whereby the middlings are purified preparatory to
regrinding after being separated from the other parts.

The defendants deny that they use this process. They purify the middlings
of the flour, as before stated, by means of machines constructed according
to letters patent issued to Edward P. Welch, in April, 1873, for
improvements upon machines patented to Jesse B. Wheeler and Ransom
S. Reynolds.

In this process, reels are not used for purifying the middlings, but a
flat and slightly inclined vibrating screen or sieve is used for the
purpose; over which the ground meal is passed, and whilst passing is
subjected to currents of air blown through a series of pipes situated
close underneath the screen; which currents pass up through the screen
and through an opening at the top of the chest into a chamber, carrying 
with them the finer and lighter impurities, whereby the middlings are
rendered clean and white, and capable of being reground into superfine
flour. The bolting-chest is made tight and close on all sides except the 
opening at the top, so that the currents of air may be forced to escape
by that exit.

Now, except in the use of a flat sieve or screen in place of reels, it
is difficult to see any substantial difference between these two methods.
The defendants use, in addition, brushes, which revolve on the under side
of the screen, so as to keep the meshes thereof constantly clean and free;
but this is merely an addition, which does not affect the identity of the
two processes in other particulars. We have substantially the same method
of cleaning the middlings preparatory to regrinding by means of currents
of air passed through them whilst being bolted, and whilst being confined
in a close chest or chamber, said chamber having an opening above for the
escape of said currents of air and the impurities with which they become 
loaded. The middlings being thus purified are reground and rebolted,
producing a superfine flour of superior grade; a new, useful and highly
valuable result.

The use of a flat screen instead of a revolving reel for bolting and
cleaning the middlings is a mere matter of form. It may be an improved
form and, perhaps, patentable as an improvement; but it is at most an

The forcing of the air-currents upward through the screen and film of
meal carried on it and against the downward fall of the meal, instead
of forcing them through the bolting-cloth in the same direction with
the meal, is also a mere matter of form, and does not belong to the
substance of the process. The substantial operation of the currents of
air in both cases is to take up the light impurities and bear them away
on the aggregate current through the open flue, and thus to separate
them from the middlings. This, too, may be an improvement on Cochrane's
method; but it is only an improvement.

The defendants admit that the process has produced a revolution in the
manufacture of flour; but they attribute that revolution to their
improvements. It may be as they say, that it is greatly due to these. But 
it cannot be seriously denied that Cochrane's invention lies at the bottom
of these improvements, is involved in them, and was itself capable of
beneficial use, and was put to such use. It had all the elements and
circumstances necessary for sustaining the patent, and cannot be
appropriated by the defendants, even though supplemented by and enveloped
in very important and material improvements of their own.

We do not perceive that the patent of Cogswell and McKiernan, if valid
at all as against Cochrane (a point which will be more fully considered
hereafter), affects the question in the least. That patent is not 
at all for the process which Cochrane claims. If valid, and if, in using
his process, Cochrane is obliged to use any device secured to Cogswell
and McKiernan, it does not detract in the slightest degree from his own 
patent. One invention may include within it many others, and each and all
may be valid at the same time. This only consequence follows: that each
inventor is precluded from using inventions made and patented prior to
his own, except by license from the owners thereof. His invention and
his patent are equally entitled to protection from infringement, as if
they were independent of any connection with them.

That a process may be patentable, irrespective of the particular form of
the instrumentalities used, cannot be disputed. If one of the steps of a
process be that a certain substance is to be reduced to a powder, it may
not be at all material what instrument or machinery is used to effect
that object, whether a hammer, a pestle and mortar or a mill. Either may
be pointed out; but if the patent is not confined to that particular tool
or machine, the use of the others would be an infringement, the general
process being the same. A process is a mode of treatment of certain
materials to produce a given result. It is an act, or a series of acts,
performed upon the subject-matter to be transformed and reduced to a 
different state or thing. If new and useful, it is just as patentable as
is a piece of machinery. In the language of the patent law, it is an art.
The machinery pointed out as suitable to perform the process may or
may not be new or patentable; whilst the process itself may be altogether
new, and produce an entirely new result. The process requires that
certain things should be done with certain substances, and in a certain
order; but the tools to be used in doing this may be of secondary

The machine patents come next to be considered.

As to No. 6030, which is a re-issue of the original patent No. 37318,
the defendants clearly infringe, at least, the last claim, which is in
these words: "In combination with the screen incased in a chest, the
perforated blast pipe and the suction-pipe, arranged to operate on
opposite sides of the screen, substantially as set forth."

As to the patent next in order, namely: the original patent No. 37319,
which relates specially to the use of what the patentee calls the pump
for introducing the meal into the chest and reels, whilst the valve 
arrangement used by the defendants may be an equivalent in the general
combination with the said pump described by Cochrane, yet, taken by
themselves, as separate pieces of machinery, they are not the same, and
the use of the one is not an infringement of a patent for the other.
Curtis, sec. 332; Foster v. Moore, 1 Curt. C. C., 279. Nor can we perceive
that the defendants infringe the next patent, No. 37320, which is for 
certain combinations of machinery, including the bolting-reels, dead-air
chambers therein, slotted shaft, and reciprocating board for discharging
the meal, etc., which it is unnecessary to describe more particularly.

The two remaining patents, numbered 6594 and 6595, being re-issues
of original patent No. 37321, are for combinations of essential parts of
the machinery required for bolting flour and purifying the middlings
according to the general process described in the first patent. The
principal claim of the original patent was for the condensing or
collecting chamber, through which the currents of air, on leaving the 
bolting-chest, make their escape, and where they leave the fine particles
with which they become loaded. This claim, it is said, was found to be
too broad, inasmuch as a collecting chamber, somewhat similar, had been
used in another connection, though not in the combinations presented in
Cochrane's bolting process. 

The original patent, therefore, was surrendered, and the two patents now
under consideration were issued in place thereof, claiming the use of the
collecting chamber in combination with the various material parts of the
bolting apparatus. The re-issue, No. 6594, contains three claims, and
No. 6595, one claim.

The first claim of re-issue No. 6594 is for the collecting chamber (used
for the purpose aforesaid) in combination with the bolter, air-pipes and
valves for feeding and delivering the meal without allowing the air to
pass therewith. Now, although the defendants use a flat bolter instead
of a reel, and use different kinds of valves for feeding and delivering
the meal without allowing the air to pass, yet they employ the combination
of devices described in this claim. They use a collecting chamber for the
same purpose as that pointed out in the patent, and use it in connection
with a bolter, air-pipes and valves for feeding and delivering the meal
without allowing the air to pass therewith, each effecting the same
separate purpose, and all combined effecting the same general purpose,
which the like parts are intended to accomplish in Cochrane's bolting
apparatus. Though some of the corresponding parts of the machinery,
designated in this combination, are not the same in point of form in
the two bolting apparatuses and, separately considered, could not be
regarded as identical or conflicting, yet having the same purpose in
the combination, and effecting that purpose in substantially the same
manner, they are the equivalents of each other in that regard. The claim
of the patent is not confined to any particular form of apparatus,
but (in regard to the valves, for example) embraces generally any valves
for feeding and delivering the meal without allowing the air to pass
through. We are of opinion, therefore, that the combination here claimed
is infringed by the apparatus used by the defendants.

It is unnecessary to make a separate examination of the other claims
embraced in the two patents under consideration. They are all susceptible
of the same observations which we have made with regard to the first
claim. In our opinion, the defendants do infringe them.

But a question is raised with regard to Cochrane's priority of invention.
A patent was granted on the 12th of June, 1860, to Mortimer C. Cogswell
and John McKiernan for improving in ventilated bolting-chests, which, it
is contended, antedates and nullifies Cochrane's apparatus as patented
to him in the original patent 37321, and the two re-issues thereof before
mentioned. This patent (of Cogswell and McKiernan) we have examined, and
find that it does contain five of the elements embraced in those re-issues,
namely: besides the bolting-chest and bolter, which are always used, it
contains the perforated air pipe extending inside of the bolting-reel,
the fan for producing a blast of air therein, and a collecting chamber
for arresting the flour carried off by the blast. The purpose was simply
to cool the meal and keep the bolting cloths dry. The flour which collected
in the chamber was returned to the chest. The parts contained in this
apparatus are those which are patented in combination in Cochrane's
re-issue 6595, which was separated, it is said, from re-issue 6594 on
account of this patent of Cogswell and McKiernan. The combinations patented
in re-issue 6594 embrace other parts not contained in Cogswell and
McKiernan's patent; and the defendants contend that this re-issue is void,
as not being sustained by the original patent 37321.

The latter position, we think, is untenable. Cochrane's apparatus, as
exhibited in his model, and described in his original patent, and in
the series of patents taken out at the same time, all having relation to 
the same general process and referred to in patent 37321, contained all
the parts which go to make the combination claimed in re-issue
No. 6594. We see no reason, therefore, why such re-issue was not properly
granted to him by the Patent Office; the claim being, in fact, a much
narrower one than that of the original patent.

The same observations apply to re-issue No. 6595. But, as to that, as
before stated, the particular elements of the combination claimed in it
are found in Cogswell and McKiernan's machine: and if this is entitled to
the precedency over Cochrane's re-issue No. 6595 is void. He contends
that it is not entitled to such precedency; but that, in fact, Cogswell
and McKiernan surreptitiously obtained a patent for his invention. We
have examined the evidence relating to this matter, and are satisfied
that the improvement claimed by Cochrane and his invention; that Cogswell
and McKiernan obtained their knowledge of it from him; and that there is
nothing connected with their patent which ought to invalidate the
re-issued patent in 

A French patent dated 27th of September, 1860, granted to one Perigault,
is also referred to as anticipating the combinations in these patents.
But is being shown that Cochrane's invention was actually made before
that date, the point was not pressed in the argument. By the Act of 1870,
a foreign patent, in order to invalidate an American patent, must antedate
the invention patented.

Our conclusion is, that the patent for the process, being re-issue No. 5841,
and the several re-issued patents for combinations of mechanical devices,
numbered respectively 6030, 6594 and 6595, are valid patents, and are
infringed by the defendants; and that the other two patents named in
the bill of complaint, numbered respectively 37319 and 37320, are not
infringed by the defendants.

The decree of the court below is, therefore, reversed and the cause is
remanded, with directions to enter a decree for the complainants, and
to proceed therein conformity with this opinion.


Mr. Justice Clifford, dissenting:

I dissent from the opinion and judgment of the court in this case, for the
following reasons:

1. Because the mechanical means employed by the respondents to effect
the result are substantially different from those described in the
complainants' patent.

2. Because the process employed by the respondents to manufacture the
described product is materially and substantially different from the
patented process employed by the complainants.

3. Because the respondents do not infringe the combination of mechanism
patented and employed by the complainants. Prouty v. Ruggles, 16 Pet., 341;
Vance v. Campbell, 1 Black, 428, 17 L. ed., 171; Gill v. Wells, 22 Wall.,
26, 22 L. ed., 710.

4. Because the respondents do not infringe the process patented by the
complainants, the rule being, that a process, like a combination, is an
entirety, and that the charge of infringement in such a case is not made
out unless it is alleged and proved that the entire process is employed
by the respondents. Howe v. Abbott, 2 Story, C. C., 194; Gould v. Rees,
15 Wall., 193, 21 L. ed., 41.

Concurring in the foregoing dissent, Mr. Justice Strong.

NOTE-Patents; distinction between inventions and processes; when latter
patentable. See note to Corning v. Burden, 14 L. ed. U. S., 683.