Statement of the case.

"To heat this furnace, I have used anthracite coal, it requir ing less than one-fourth of a ton to anneal two tons of wheels. The heat required to perform the process may, however, be obtained by the use of any other fuel that may be less expensive at the place where the process is to be performed; or the requisite heat may be taken in a suitable conduit from the furnace in which the metal is melted from which the wheels are made, after it has performed that office, to the chamber in which the annealing process is to be performed. In either case, however, the furnace or chamber must be made of such form, and have such appendages connected with it, as to enable the operator to control the quantity and intensity of the heat used, by admitting more or less of it into the chamber, and of excluding it entirely..

"The advantages resulting from the process of prolonging the cooling and annealing, as above described, are that the wheels may be made much stronger, when made of the same weight, than they can be when cast and cooled in the ordinary manner; and railroad wheels, having any form of spokes, or disks connecting the rim and hub, if subjected to this process, will not require their hubs to be cast in sections, and the spaces between the sections subsequently filled with some suitable metal, and wrought bands put on to the hub.

"Wheels subjected to this process of cooling and annealing will be stronger without bands on their hubs than those of the same weight cast and cooled in the ordinary way, having the wrought-iron bands on. In this way the original cost is diminished, and the wheels rendered more durable than they would be when made in any of the ways heretofore employed.

"I do not claim to be the inventor of annealing castings made of iron or other metal, when done in the ordinary way; nor do I claim to be the inventor of any particular form or kind of furnace, in which to perform the process. But what I do claim as my invention, and desire to secure by letters-patent, is the process of prolonging the time of cooling, in connection with annealing railroad wheels, in the manner above described; that is to say, the taking them from the moulds in which they are cast, before they have become so much cooled as to produce such inherent strain on any part as to impair its ultimate strength, and immediately after being thus taken from the moulds, depositing them in a previously-heated furnace or

Statement of the case.

chamber, so constructed, of such materials, and subject to such control that the temperature of all parts of the wheels deposited therein, may be raised to the same point (say a little below that at which fusion commences), when they are allowed to cool so fast, and no faster, than is necessary for every part of each wheel to cool and shrink simultaneously together, and no one part before another."

Whitney being in possession of his patent as already described, one Mowry, of Ohio, conceived that he too had made a valuable improvement in the same branch as Whit ney professed to have made one; and on the 7th of May, 1864, also obtained a patent. His specification, illustrated by a vertical cross-section of his furnace, says:

"My invention consists in the use of charcoal or other equivalent substance, interlaid with the wheels in the annealing pits, in connection with the regulated admission of air, for the purpose of heating the wheels up to a proper temperature, prolonging the heat, and permitting them to cool in the course of a given time, gradually, as will be more particularly explained below.

"The operation of my invention is as follows: A layer of charcoal having been laid on the perforated bottom of the annealing pit, the wheels, as they are turned out of the moulds red hot, are placed in the pits, with a layer of charcoal between each wheel, a layer of charcoal being laid on the uppermost wheel, and on this a perforated metal plate is laid.

“The charcoal, becoming now ignited by the hot wheels, the cover of pit is then laid on, and the damper opened so as to admit just sufficient air to effect the combustion of the contained charcoal, in the space of seventy-two hours, less or more, as may

* It may here be stated that, on the 7th of August, 1849, there was granted to one Murphy a patent (extended subsequently for seven years from the 7th of August, 1863) for a mode of cooling car-wheels, which consisted in encasing and protecting from the air all parts of the wheels except the hubs, and causing a current of cold air, by means of connection with the main chimney, to pass through the hubs, thus retarding the cooling of the plates and speeding the cooling of the hubs. This process, it will be observed, was the antithesis of Whitney's, the essence of which consisted in heating the wheels until all parts of them had attained the same degree of heat.

Statement of the case.

be found necessary for the annealing operation. The draft of air in the apparatus shown on drawings, is from above downward, but it may, without affecting my invention, be from below upwards, by conveying the air from the horizontal flue, up through the pits, and through the aperture in cover, and from thence through flues, into the main shaft or chimney C; the result will be the same in both cases, and the adoption of one or the other plan will be dictated by convenience."

Under his patent Mowry employed a process of annealing such as it described; and Whitney thereupon filed a bill to enjoin him as an infringer. Mowry answered, denying infringement, alleging the invalidity of Whitney's patent for want of novelty and for want of utility,

"Inasmuch as the said process would ruin and destroy the hardness on the rim of the car-wheels, known as the 'chill,' and thus greatly detract from the usefulness and durability of the wheels."

· Statement of the case.

A large amount of testimony being taken on both sides, the cause was brought to a final hearing on the pleadings and proofs, and all the issues being found for Whitney, the cause was referred to a master to take and state an account of the gains and profits which the defendant had derived from the infringement of Whitney's patent.

The master reported, on the 1st of August, 1868, that Mowry had made use of Whitney's patent in the manufac ture of 19,819 wheels, and for the use of the process in making these wheels charged him:

He further reported that Mowry, prior to the 1st of April, 1861, and without the use of the process complained of in this cause, had built up his business to its then condition. That the use of the process did not diminish, but did increase the cost of making the wheels manufactured by Mowry. That while Mowry used the said process, he did not make any difference in the quality of iron used for the manufacture of car-wheels, nor in the weight or form of carwheels, nor by reason of the use of such process, in their price. That Mowry's business was apparently not increased by the use of the process; and that he had sold the wheels. he had since manufactured without the process complained of, as readily as those manufactured by use of the process, and at the same prices.

[The patentee himself, it should be here added, in 1862, when applying for an extension of his patent, had stated, under oath, that he believed there was no essential difference in the cost, per pound, of making cast iron chilled carwheels of the various patterns, and by the different modes in use, provided the same skill and system controlled the manufacture; that by his process he was enabled to make them lighter than those made in any other way for a similar service, and therefore could afford to sell them at the same price per wheel as other makers, and save the cost of the

Statement of the case.

difference in weight; that this saving of metal he deemed to measure the essential advantage he had over his competi tors, and also the profits arising from his patent, and he estimated that ten pounds per wheel would be a fair average of the metal saved by his process.*]

Mowry excepted to the charge made, as above stated by the master, of profit derived by the entire manufacture of the wheel, and the case was recommitted to the master with instructions to inquire:

1st. Whether the wheels made and sold by Mowry had, or could have any market value without being subjected to the process patented by Whitney.

2d. If they had or could have been made to have such value by any annealing or slow cooling process outside of the Whitney patent, how much additional value, if any, they derived from being subjected to that patented process?

To this the master returned that he was unable to report any division of profits; and, being uninformed as to what was covered by the patent, he reported that, if the entire process of reheating and prolonged cooling used by Mowry in the manufacture of the wheels was an infringement of the complainant's patent, the total profit realized by the defendant from the manufacture and sale of the wheels was due to the use by him of the complainant's invention.

He reported, secondly, that if there was no infringement of the complainant's patent, unless the wheels were subjected to the process of reheating, that is to say, if the process of slow cooling used in connection with reheating was old, and not a part of the complainant's invention, nor included in his patent, no part of the profits realized by the defendant from the manufacture and sale of the wheels was due to the use by him of the complainant's invention.

[This second finding of the master the court set aside, sustaining an exception to it, that not only the entire process described in the patent but each part of such entire process was the invention of Whitney, and the use of any material,

* See supra, 435, Mowry v. Whitney.