Rector v. Gibbon, 111 U.S. 276

sho shall be the duty of said commissioners to par^l mete8 an^ hounds on the map herein provided for, the rce s or tracts of lands claimed by reason of improvements made p. 278thereon, or occupied, by each and every such claimant and occupant on said reservation ; to hear any and all proof offered by such claimants and occupants and the United States in respect to said lands and in respect to the improvements thereon; and to finally determine the right of each claimant or occupant to purchase the same, or any portion thereof, at the appraised value, which shall be fixed by said commissioners : Provided, however, That such claimants and occupants shall file their claims, under the provisions of this act, before said commissioners within six calendar months after the first sitting of the said board of commissioners, or their claims shall be forever barred; and no claim shall be considered which has accrued since the twenty-fourth day of April, eighteen hundred and seventy-six.”

From the protracted litigation to which it has given rise, the Hot Springs Reservation is famous in the history of land titles of the country. Early in the present century the medicina qualities of those springs were discovered, and from that fact the adjacent lands had an exceptional value. They were claimed by different individuals, some portions under a New Madrid certificate, and some portions under pre-emption sett e ments. The plaintiff entered upon the parcels in controversy as early as 1839, under an attempted location of a New Ma 1 p. 279certificate made in 1820, and he remained in their exclusive possession until April 24th, 1876. They were then taken in charge by a receiver appointed by the Court of Claims under an act passed in 1870, to enable persons claiming title, either legal or equitable, to the whole or to any part of the four sections of land constituting the reservation, to bring suit in that court for the determination of their title as against the United States. Four suits were brought, one of them by the plaintiff, and they resulted in an adjudication that the title was in the United States, and that the several claims were invalid. Hot Springs Cases, 92 U. S. 698. The decision against him was regarded as a special hardship, both from his long possession, and from the fact that his failure to obtain a title was occasioned by the neglect of the public officer, under whose direction the land was surveyed, to return the survey and a plat of the location to the recorder of land titles for the Territory of Missouri. Until such return the location under the New Madrid certificate was incomplete, and the lands were not appropriated so as to exclude the operation of the act of April 20th, 1832, by which the four sections were reserved for the future disposal of the United States. This court, in rejecting all the claims, observed that whatever hardship might thereby ensue would, no doubt, be taken into consideration by the legislative department in the future disposition of the lands. Accordingly, and, it is believed, upon this suggestion, Congress passed the act of March 3d, 1877. It provided for the appointment by the President, of “ three discreet, competent, and disinterested persons ” to constitute a board of commissioners, and imposed upon them various duties. Among other things, it required them, under the direction and subject to the approval of the ecretary of the Interior, to designate a tract sufficiently large o include all the hot or warm springs on the land, embracing

w at is known as the Hot Springs Mountain, which tract was ec ared to be reserved from sale ; and to lay out the residue 0 t e land into convenient squares, blocks, lots, avenues, 8 reets, and alleys, the lines of which were to correspond with existing lines of occupants of the reservation as near as might De consistent with the interests of the United States. It also p. 280provided that they should, by a map prepared for that purpose, show the metes and bounds of the parcels or tracts claimed by reason of improvements thereon, or occupied on the reservation; should hear proofs offered by claimants and occupants in respect to the lands and improvements, and “ finally determine the right of each claimant or occupant to purchase the same, or any portion thereof, at the appraised value fixed by the commissioners.” It declared that claimants and occupants should file their claims before the commissioners within six months after the first session of the board, or that their claims should be barred ; and that no claim should be considered which had accrued after the 24th of April, 1876. It also made it the duty of the commissioners to file in the office of the Secretary of the Interior the map and survey, with the boundary lines of each claim clearly marked thereon, and with each division and subdivision traced and numbered, accompanied by a schedule showing the name of the claimant of each lot or parcel of land with its appraised value ; and also all the evidence taken by them “ respecting the claimant’s possessory right of occupation ” to any portion of the reservation, and their findings in each case, with their appraisal of the value of each tract and of the improvements thereon; and to issue a certificate to each claimant setting forth the amount of land the holder was entitled to purchase, and its valuation, and also the character and valuation of the improvements. 19 Stat. 377.

Within the required time, the plaintiff filed his claim before the commissioners, and presented proof showing his long continued occupation of the land in controversy, and the improvements he had made thereon. Whilst it was in his occupation, on the 21st of February, 1873, he, through his son, who hel the property as trustee to pay certain debts, leased it to the defendants Gibbon and Kirkpatrick, for the purpose of a hote, bath-house and out-houses, at an annual rent of 8500, an p. 281$1,500 additional for water privileges, for the term of three years and three months, beginning on that day and ending on the 21st of May, 1876. The lease provided that the hotel and other improvements should not cost more than $12,000 ; that at the end of the term the lessor should have the right to take the improvements by paying two-thirds of their first cost, and should take the furniture in the hotel and bath-house by paying its actual value, so that the same should not exceed $8,000 ; that, if he should not pay these amounts at the end of the term, the lease should be extended on the same conditions until he should make the payments, giving ninety days’ notice of his intention to terminate the lease ; that upon its termination as specified the lessees should deliver to him, or to his successors in office, or grantees, or to “ whomsoever at that time in law may have the right to control the trust property,” all the lands leased to them, “ promptly without failure and free from let or hindrance of any kind whatever, together with all buildings, out-houses, and improvements ” that might be erected on the premises. The terms “ to whomsoever at that time in law may have the right to control the trust property ” refer to persons lawfully controlling the property under authority derived from the plaintiff. The lessor then held the property as trustee, and by the covenant, when the trust should be discharged, the right of control would revert to him. They were not intended to authorize a delivery under any circumstances to parties claiming adversely.

In the year 1877 the lessees sold and transferred all their p. 282interest in the premises to one David. Ballantine, he knowing at the time the terms and conditions of the lease. While the lessees were in possession, and before their transfer, the plaintiff gave them notice of his desire to terminate the lease, and requested them to furnish him with a list of the furniture coming within its provisions, which they promised to do, but never did. He never could get from them the information required for settlement, and therefore none was ever made, though he was ready and willing and frequently offered to pay all the sums that might be due to them under the terms of the lease, which offer they, under various pretences, always declined. After entering upon the premises under the transfer, Ballantine died, being at the time a resident of Illinois, leaving surviving him certain of the defendants who are named in the bill of complaint as his heirs-at-law. By the survey of the commissioners a part of the premises was laid off and designated as lots five, six, seven, eight, nine, ten and eleven in block eighty-nine in the town of Hot Springs, and the residue thereof, on which the hotel and some of the out-buildings were erected, was laid off into a street. They were appraised at the value of $10,000, and condemned, and were then torn down and destroyed. A certificate of their con d em n ati on and value was given to the heirs of Ballantine. As already mentioned, the plaintiff filed his claim to purchase the lots before the commissioners. The heirs of Ballantine also filed a like claim, and to them was awarded the right to purchase, although it was shown that their ancestor had acquired his possession under the lease made to Gibbon and Kirkpatrick. For these reasons—that the heirs never had any other right or title to the lands, or to their possession except under the lease, containing covenants to restore the property and possession to the lessor or to his successor in title on its termination-—t e plaintiff prays that they be adjudged to hold the lan s as trustees for his use and benefit, and be decreed to convey them to him, on his paying the money advanced in the pur chase, and that he be allowed reasonable rent for the occu pancy of the lands. . , The bill of complaint sets forth the material facts which

have stated, and a demurrer to it was sustained, the court p. 283ing that the decision of the commissioners awarding to the heirs of Ballantine the right to purchase was a final adjudication and conclusive upon the parties ; and even if not conclusive was correct. The ruling in both particulars the plaintiff insists was erroneous.

was for their benefit that the act was passed, in order that p. 284they should not entirely forfeit their claims from location or settlement, and their improvements, but should have, except as to the portions reserved, the right of purchase. Parties succeeding, by operation of law or by conveyance, to the possession of such claimants and occupants, would succeed also to their rights. But lessees under a claimant or occupant, holding the property for him, and bound by their stipulation to surrender it on the termination of -their lease, stand in no position to claim an adverse and paramount right of purchase. Their possession is in law his possession. The contract of lease implies not only a recognition of his title but a promise to surrender the possession to him on the termination of the lease. They, therefore, whilst retaining possession, are estopped to deny his rights. Blight's Lessee v. Rochester, 7 Wheat. 533.

Whenever Congress has relieved parties from the consequences of defects in their title, its aim has been to protect those who, in good faith, settled upon public land and made improvements thereon; and not those who by violence or fraud or breaches of contract intruded upon the possessions of original settlers and endeavored to appropriate the benefit of their labors. There has been in this respect in the whole legislation of the country a consistent observance of the rules of natural right and justice. There was a time, in the early periods of the country, when a party who settled in advance of the public surveys was regarded as a trespasser, to be summarily and roughly ejected. But all this has been changed within the last half century. With the acquisition of new territory, new fields p. 285of enterprise have been opened, population has spread over the public lands, villages and towns have sprung up on them, and all the industries and institutions of a civilized and prosperous people have been established, with the church and school-house by their side, before the surveyor with his quadrant and line appeared.

On this subject Mr. Justice Miller, speaking for the court in Lamb v. Davenport, said of the settlement upon the land which now embraces the town of Portland : “ It is sufficient here to say that several years before that [the donation] act was passed, and before any act of Congress existed by which title to the land could be acquired, settlement on and cultivation of a large tract of land, which includes the lots in controversy, had been made, and a town laid off into lots, and lots sold, and that these are a part of the present city of Portland. Of course no legal title vested in any one by these proceedings, for that remained in the United States; all of which was well known and undisputed. But it was equally well known that those possessory rights and improvements placed on the soil were, by the policy of the government, generally protected, so far at least as to give priority of the right to purchase whenever the land was offered for sale, and when no special reason existed to the contrary. And though these p. 286rights or claims rested on no statute, or any positive promise, the general recognition of them in the end by the government, and its disposition to protect the meritorious actual settlers, who were the pioneers of emigration in the new territories, gave a decided and well understood value to these claims. They were all subject to bargain and sale, and as among the parties to such contracts they were valid. The right of the United States to dispose of her own property is undisputed, and to make rules by which the lands of the government may be sold or given away is acknowledged; but subject to these well known principles, parties in possession of the soil might make valid contracts, even concerning the title, predicated upon the hypothesis that they might thereafter lawfully acquire the title, except in cases when Congress had imposed restrictions on such contracts.” 18 Wall. 307, 313, 314.

So in California the discovery of the precious metals was followed, as is well known, by a large immigration to the State which increased her population in a few years to several hundred thousand. The majority of the immigrants at first found their way into the mineral regions and became seekers of gold. But still a very large number settled upon the farming lands, erected houses thereon, planted vineyards and orchards, and subjected portions to cultivation. Much of this was in advance of the public surveys, and even before the passage of an act of Congress opening the agricultural lands to settlement, and providing for the sale of the mineral lands. Yet the progress of the country was not thereby stayed. The first appropriator of mineral lands within certain limits, or the first settler on agricultural lands to the extent prescribed by the pre-emption laws in force in other States, was recognized everywhere as having a better right than others to the claim appropriated, or to the land settled upon. In all controversies, except as against the government, he was regarded as the original owner from whom title was to be traced. And when the government extended its surveys over the agricultural lands it gave the privilege of purchasing—the pre-emption right—to the first settler, requiring only that his possession should be continued, accompanied with improvement. And when it allowed the mineral lands p. 287to be sold, it was to the original appropriator, or to those deriving their claim from him, that title was given. In no instance in the legislation of the country have the claims of an intruder upon the prior possession of others, or in disregard of their rights, been sustained. Laborers occupying mining claims, or agricultural lands, whilst working for the first appropriator or settler, acquired no pre-emptive rights over him to such claims or lands; nor did any permissive occupation under him, as tenant or otherwise, impair his rights. To construe the act of 1877 so as to give to lessees a better right than their landlord to purchase the land of which he had been in occupation more than a third of a century, would require us to attribute to Congress not only the intention to do him flagrant injustice, but to depart from its previous uniform and long settled policy to protect the pioneer and original settler upon the public domain.

In Hicks v. Reed, decided in 1862, the proper construction p. 288of the act was a question, before the Supreme Court of California, and the court said: “ It is true the entry of the town lands by the corporate authorities or county judge is, under the act of Congress, ‘ in trust for the several use and benefit of the occupants thereof, according to their respective interests ; ’ but this provision does not establish that it was the intention of Congress to give the benefits of the entry to mere temporary occupants of particular tracts at the date of the entry, without reference to the character of their occupancy, and thereby, in many instances, deprive the original bona fide settlers of the premises and improvements in favor of those who had, by force or otherwise, intruded upon their settlement. Were such the effect of the provision in question, the trespasser of yesterday, or the tenant of to-day, would often be in a better position than the parties who, by their previous occupation and industry, had built up the town and made the property valuable. We do not think Congress could have contemplated that results of this nature should follow from its legislation, but, on the contrary, that it intended that the original and bona fide occupants should be the recipients of the benefits of the entry to the extent, at least, of their interest—that is, of their actual occupancy and improvements.” 19 Cal. 551, 575.

The provision of the act that the commissioners “ shall finally determine the right of each claimant or occupant ” to purchase the land or a portion of it, does not necessarily withdraw that determination from the consideration of the court. It is final so far as the land department is concerned. By the general law all proceedings for the alienation of the public lands, from the incipient steps to a patent, are placed under the supervision of that department. The provision in question takes the action of the board, in the particulars mentioned, from that supervision. In effect it substitutes the board in the place of the ordinary land officers, with only a modification of duties and powers adapted to the peculiar circumstances of the case. It does not withdraw its decisions fom the correcting power of the court when the board has miscontrued the statute, an thus defeated its manifest purpose, and made its benefits inure to those who were never in the contemplation of Congress, p. 289and therefore were not intended to be the recipients of its bounty.

“ That the action of the land office in issuing a patent for any of the public lands, subject to sale by pre-emption or otherwise, is conclusive of the legal title, must be admitted under the principle above stated; and in all courts, and in all forms of judicial proceedings, where this title must control, either by reason of the limited powers of the court, or the essential character of the proceeding, no inquiry can be permitted into the circumstances under which it was obtained. On the other p. 291hand, there has always existed in the courts of equity the power in certain classes of cases to inquire into and correct mistakes, injustice and wrong, in both judicial and executive action, however solemn the form which the result of that action may assume, when it invades private rights ; and by virtue of this power the final judgments of courts of law have been annulled or modified, and patents and other important instruments issuing from the crown, or other executive branch of the government, have been corrected or declared void, or other relief granted. No reason is perceived why the action of the land office should constitute an exception to this principle. In dealing with the public domain under the system of laws enacted by Congress for their management and sale, that tribunal decides upon private rights of great value, and very often, from the nature of its functions, this is by a proceeding essentially ex parte, and peculiarly liable to the influence of frauds, false swearing and mistakes. These are among the most ancient and well-established grounds of the special jurisdiction of courts of equity just referred to, and the necessity and value of that jurisdiction are nowhere better exemplified than in its application to cases arising in the land office.”

I am unable to agree to this judgment. In my opinion the act of March 3d, 1877, granted a new right to the occupants of the Hot Springs Reservation, and provided a special tribunal for the settlement'of all controversies between conflicting claimants. The right and the remedy were created by the same statute, and, consequently, the remedy thus specially provided was exclusive of all others. No provision was made for a review of the decisions of the tribunal. Its determination, therefore, of all questions arising under the jurisdiction must necessarily be conclusive, and not open to attack collaterally. It seems to me there is a very broad distinction between this case and that of Johnson v. Towsley, 13 Wall. 72, and others of that class. Here a special tribunal has been created for a special purpose. It has been clothed with power to compel the attendance of witnesses “ and to finally determine the right of each claimant or occupant to purchase” from the United States, under the provisions of the act of Congress, the ground he occupies or claims. The duties of the tribunal are judicial in their character, and their decisions evidently intended to be binding on the parties. The question now is not whether, it Rector had kept away from the tribunal and Gibbon had got a title under his occupancy, he could be charged as trustee or Rector on account of his tenancy, but whether, having appeare before the tribunal and been beaten in a contest with Gibbon, p. 293on that identical question, Rector can in this suit correct the errors of the tribunal in its decision. I think he cannot. If he can, it is difficult to see why all the decisions of the tribunal are not open to revision by the courts.

“ Be it known, that we, Charles Graebe, of Frankfort-on-the-Main, and Charles Liebermann, of Berlin, in the Kingdom of Prussia, have invented a [new and useful improvement in the manufacture of alizarine ;] process for preparing alizarine from anthracine ; and we do hereby declare the following to be a full, clear and exact description thereof, which will enable those skilled in the art to make and use the same. We first change the anthracine into anthrakinon (oxanthracine), a substance known to [t ej chemists by the investigations of Anderson. For this puipose we take one part, by weight, of anthracine, two and half parts, by weight, of bichromate of [potash,] potassa, and ten or fifteen parts, by weight, of concentrated acetic acid, and we heat these substances together in a vessel, either of glass or clay, to a oU 100° centigrade to 120° centigrade, till nearly all of the bic p. 295mate of [potash] potassa is dissolved and the liquid has acquired a deep green color. We then recover the acetic acid not consumed in the reaction by distillation, and treat the residuum with water to remove the chromic acetate. From the insoluble mass we obtain the anthrakinon in a pure state by distilling the whole from a retort of glass or iron. In the place of the acetic acid, sulphuric acid, diluted with one or two parts of water, may be employed. Instead of the method just described, we also employ the following one : We heat the anthracine in a vessel of glass or of clay, with ten parts of concentrated acetic acid, to about 100° centigrade, or a little higher, and we add nitric acid of about 1.3 specific gravity, in small portions, till the violent reaction ceases. After distillation of the acetic acid we purify the residuum, as before. We then convert the anthrakinon, prepared by one of the methods described, into bibromanthrakinon. For this purpose we take three parts of anthrakinon, five parts of bromine, and we heat these substances for ten or twelve hours, or until nearly the whole of the bromine has disappeared, to a temperature, by preference, of about 100° centigrade, in a .suitable close vessel, either of glass or enameled or glazed iron, which is capable of sustaining the pressure [which is] generated by the reaction. The apparatus is then allowed to cool. It is opened in order to permit the escape of [bromic] hydrobromic acid, which can be recovered by absorption either in water or in an alkaline solution. We purify the bibromanthrakinon remaining in the vessel, as a solid substance, by crystallization from benzole. Instead of the method above described for preparing bibromanthrainon, we also employ the following : We convert first the ant racine, into a bromine derivative, into the tetrabromanthracine, nown to chemists by the investigations of Anderson. We take one part of this tetrabromanthracine, and we heat it in a retort of g ass or clay with about five parts of nitric acid of about 1.3 speci e gravity to 100° centigrade, as long as vapors of bromine are evolved. . We distil off the greater portion of the nitric acid, was t e residuum with water, and purify it by crystallization in^T ^nZ°^e‘ We thus receive the bibromanthrakinon as before, anth 0*^*a ^e^ow’ mass. We then convert therbibromof Kb mOn alizarine’ For this purpose we take one part sod 1 r“rakinon> ^W° ^ree Parts caustic potash or a, an so much water as is necessary to dissolve the alkali, and p. 296we heat the whole in an open vessel of glass, glazed or enameled iron, or silver, to about 180° to 260° centigrade for one hour, or [till] until the mass has acquired a deep blue color. We then dissolve it in water and filter the violet solution, from which we precipitate the alizarine by an inorganic or organic acid. We collect the yellow flocks of alizarine thus obtained on a filter and wash them with water. By these methods we receive the alizarine in a form in which it can be employed in the same manner as the different preparations from madder. In the place of bromine, chlorine [also] may also be employed, but not so conveniently, as the reactions above described are more difficult to accomplish with chlorine than with bromine. Having thus described the nature of our invention and the manner of performing and carrying out the same, we would have it understood that we do not confine ourselves to the exact details hereinbefore given?

The bill of complaint alleges that No. 4,321 was issued “ for a distinct and separate part of the same invention, on a corrected specification,” on the surrender of No. 95,465; and No. 4,321 states, on its face, that, on such surrender, new letters were ordered to issue “ on two separate amended specifications.” But Division A, No. 4,320, is not in the record before us. The bill alleges the infringement to have been committed by making, selling, or using the invention or dyes containing it. The answer denies the manufacture of alizarine, but avers that the defendants have sold in the United States alizarine lawfully made in Germany, and imported as an article of commerce, which was not made by the process described in No. 4,321, or any process substantially the same, but was made according to processes which were invented subsequently to the date of No. 95,465, and are the subject of different and independent letters p. 297patent. The answer also avers “that alizarine is a natural product, having a well-known definite constitution ; that it is not a composition of matter, within the meaning of the statute, but has been well known in the arts, from time immemorial, for the purpose of dyeing, and has generally been extracted from ‘madder root,’ and from other analogous products, by various processes suitable for that purpose; that, therefore, there can be no valid patent granted for alizarine; and that No. 4,321 is void.” The answer refers to “Watts’ Chemical Dictionary, published before 1869, under the title Alizarine, to show that alizarine was well known long before the said patent; ” and also sets up that the patent had expired because prior patents granted to the patentees in foreign countries, for the same invention, had expired.

case, in April, 1879, is in 16 Blatchford, 155, and in 4 Banning & r en, 215. The patent was also before the Circuit Court in assachusetts, in September, 1879, and the decision of Judge p. 298Lowell is in Badische Anilin and Soda Bobrik v. Cummins, 4 Banning & Arden, 489. In all of these cases the validity of

In the present case, it was insisted in the Circuit Court by the defendants, that the patented product was the same thing as the natural dye-stuff, alizarine, found in the root of the madder plant and chemically known by the formula C14H8O4 and not patentable. But it was .decided that the article which Graebe and Liebermann had made synthetically from anthracine, though having the same chemical formula as madder alizarine, was essentially different, in capabilities and properties, from chemically pure alizarine, madder alizarine, or any coloring matter before known; that the article dealt in by the defendants was produced by the process of United States letters patent No. 154,536, granted July 28th, 1874, to Heinrich Caro, Charles Graebe and Charles Liebermann; that the use of sulphuric acid, in the process of the latter patent, performs the same office, in the same way, as the p. 299bromine in the process of No. 4,321; and that the products of the two processes are identical.

The paper then proceeds: “ The above methods, which now, from a technical point of view, have only a historic interest, p. 301and are therefore described without further detail, make up the subject of the patents taken out in England on the 18th of December, 1868, and then also in France, Prussia, most German States, Austria, Russia and America.” The provisional specification deposited in the English Patent Office, December 18th, 1868, which was the date of the patent, gives a short description of the process and says: “ The alizarine prepared in this artificial way is perfectly pure, and can be employed in all the applications for which the different preparations of madder are used.” The full specification, filed June 17th, 1869, is substantially identical with the specification of No. 95,465, and claims “ the artificial production of alizarine, by first preparing bibromanthrakinon or bichloranthrakinon, and then converting these substances into alizarine, as herein de scribed.”

were imited to the purification of the anthracine and the manu ac ure of anthrakinon by the second mentioned bromine od, because this, notwithstanding its difficulties, showed ome opes of success.] ” The passage above in brackets by p. 302another translation, reads thus: “ The first trials principally embraced the purification of anthracine, the manufacture of anthrakinon, and the practical application of the second above mentioned bromine method, as the same, notwithstanding the great difficulties, still gave assurance that it could be used practically.”

The paper then goes on: “ The latter ” (meaning the second mentioned bromine method) “ was dropped as soon as the observation was made that the alizarine could be made more simply by means of anthrakinon sulpho-acids. Graebe and Liebermann had originally attempted to obtain anthrakinon sulpho-acids, by acting on anthrakinon with sulphuric acid. But they made the mistake of using too low heats. The temperatures they employed were not high enough, being not greater than those generally employed in the preparation of sulpho-acids. They had also been misled by the observation that antlirakinon could be sublimed unchanged from strongly-heated sulphuric acid. Therefore they hoped little from sulpho-acids, and gave all their attention to improving the above methods. This mistake was avoided, and the modification of the synthesis of alizarine which forms the basis of the industry of to-day, was discovered first by Heinrich Caro, who, as an officer at the Baden Anilin and Soda Works, made it his task to give, in combination with Graebe and Liebermann, life to the alizarine industry. Caro first noticed that anthrakinon, if heated with sulphuric acid to above 200°, would give sulpho-acids, which, on fusing with hydrate of potash, formed alizarine, the same as the bromine compound. Perkin noticed the same fact shortly after or at about the same time. This method was further developed by Caro and the original discoverers, and the English patent was taken on June 25th, 1869 (Caro, Graebe and Liebermann, English patent, 1869, No. 1,936). The patent of Perkin is dated June 26th (Perkin, English patent, 1869, No. 1,948). Two methods were discovered, analogous to the two bromine methods. In the first and most important, the anthracine is oxidized to anthrakinon; this is converte into sulpho-acids by heating with sulphuric acid to, 200 to 260°; and these, by the beautiful method of Kekule, Wurtz, p. 303and Dusart, by fusing with caustic potash or soda, are converted into alizarine. The first process is, therefore, identical with the first bromine method given above. In the second method, the sulphuric acid acts on the anthrakinon in such a manner that, besides the anthrakinon monosulpho-acid, as principal product, a small amount of anthrakinon bisulpho-acid is also formed. This was subsequently determined analytically by Graebe and Liebermann. In the patent only the anthrakinon sulpho-acids are mentioned. From analogy, Perkin, in his paper (Jour. Chern. Soc. (2) viii., 133, and Ann. Chem. Pharm. clviii., 335), considered the bisulpho-acid only. It is also formed in larger quantity by the excess of acid he employs in his method, than it is by the method of Caro, Graebe, and Liebermann.”

■^another publication by Graebe and Liebermann, in 1868, ey had said : “ By treating alizarine with zinc dust, a p. 304hydrocarbon was produced, having the composition C14 Hlo, and coinciding exactly in its properties with anthracine. . . . According to our experiments, alizarine, which is hence a derivative of anthracine, must have the formula C14 H8 O4.”

In Prussia, a patent for five years was granted to Graebe and Liebermann, March 23d, 1869, for their bromine process, on condition that it should be put into practical operation in 12 months within the kingdom. On the 7th of July, 1870, after several notices to them, the patent was declared extinct, because proof had not been produced of the carrying out of the patented methods. In view of what Graebe and Liebermann themselves state, in the publication before cited, it is manifest that the Prussian patent was revoked because the process described was not a practical one. There was nothing p. 305practical until the sulpho-acid discoveries were made. In regard to this the paper first cited says: “The patent of Caro, Graebe and Liebermann is dated one day earlier than that of Perkin. If any value at all is to be placed in the date, then Caro must certainly be mentioned first, since the application for a patent by the German chemist was delayed by an error. The signing took place at the patent agent’s in Berlin. In reference to the above two English patents, Perkin and the Baden Anilin and Soda Works, proprietors of Caro and Graebe and Liebermann’s patent, made an agreement in consequence of which the patents became common property. By the publication of these patents, the sulpho-acid methods of preparing alizarine became known, and a series of works were erected in States which gave no, or insufficient, protection to the patentees.” This shows that the only methods practised commercially were the sulpho-acid methods. The English patent for the bromine methods expired December 18th, 1871, for the want of payment of a further fee.

The English patent £o Caro and Graebe and Liebermann having been granted June 25th, 1869, and the full specification filed January 13th, 1870, an application for a patent in the United States for producing artificial alizarine by the sulpho-acid processes, was filed by them January 26th, 1870. It was granted as No. 154,536, July 28th, 1874. The full specification of the English patent and that of No. 154,536 are identical. The specifications state that the invention relates to improvements on the invention described in the English patent to Graebe and Liebermann, of December 18th, 1868, and in No. 95,465, “ in which the preparation of artificial alizarine is based upon the action of caustic alkalies upon bibromanthrakinon or bichloranthrakinon.” They then proceed: “We have now discovered that a similar result may be obtained by substituting sulphuric acid for bromine or chlorine in the above process. We thus obtain the sulpho-acids of anthrakinon, which, by being dissolved in and heated with an excess of caustic alkali, p. 307are converted into alizarine. This invention relates to improvements in the production of coloring matters, and more especially to improvements in the method of producing what is known as artificial alizarine, from anthracine, a method of producing which was described in ” the English patent of December 18th, 1868, and in No. 95,465, “ and consisted in the production of artificial alizarine by converting anthracine into either bibromanthrakinon or bichloranthrakinon, and then acting upon the same by means of an alkali, and precipitating the alizarine contained in the alkaline solution by means of an acid. In the complete specification of the aforesaid letters patent granted to Charles Liebermann and Charles Graebe, two different series of processes are described for obtaining the brominated or chlorinated derivatives of anthrakinon. In the first of these processes, the anthracine is submitted to the action of oxidizing agents, as is well understood, and the oxidized anthracine or anthrakinon is then treated with bromine or chlorine. In the second of these processes, the anthracine is first treated with bromine or chlorine, and subsequently submitted to an oxidizing process, in order that the desired compounds, videlicet, bibromanthrakinon or bichloranthrakinon, may be obtained. In an analogous manner, we now employ sulphuric acid as a substitute for the bromine or chlorine employed in the processes above referred to, and we thus obtain the sulphuric acid derivatives of anthra-

P° as , under heat, and the artificial alizarine is precipitated by an acid. In the second process, anthracine is heated with sqlP uric acid, the product is put in solution, and treated with peroxide of manganese, under heat. Caustic lime is then added exc®ss, till there is an alkaline reaction, the mixture is then ,er® cark°nate of potash or soda is added to it, and the 0 as or soda salts of the sulpho-acids of anthrakinon are p. 308produced. These are treated with caustic potash or soda, under heat, the product is put in solution, and the artifical alizarine is precipated by an acid. It is stated, in regard to this substance, made by either of these two processes, that it “ may be employed for the purposes of dyeing and printing, either in the same way as preparations of madder are now used or otherwise.” In each of the two specifications there are two claims, in these words:

It is very plain that the specification of the original patent, No. 95,465, states the invention to be a process for preparing alizarine, not as a new substance prepared for the first time, but as the substance already known as alizarine, to be prepared, however, by the new process, which process is to be the subject o p. 309the patent, and is the process of preparing the known product alizarine, from anthracine. The specification states that “ the alizarine ” is precipitated, that “ the yellow flocks of alizarine ” are obtained, and that “ the alizarine ” is in such a form that it can be employed in the same manner as the different preparations from madder; and the claim is for the “ process for the production of alizarine.” The provisional specification deposited in England, December 18th, 1868, states that “ yellow flocks of alizarine are precipitated,” and that “ the alizarine prepared in this artificial way is perfectly pure; ” and the full specification, filed in England, June 17th, 1869, claims “the artificial production of alizarine.” No other conclusion can be reached than that Graebe and Liebermann, in the specification of No. 95,465, intended by “ alizarine ” the chemical substance known by the formula C14 H8 O4, and thought that was what their process produced. There is no suggestion of anthrapurpurine or isopurpurine, or of any process for producing them. Their published statements show that it was the synthesis of the alizarine of madder which they were making, the specification of No. 95,465 shows that and nothing else, and it is not contended that the alizarine of madder contains anthrapurpurine or isopurpurine. It is very clear, from the testimony, that it is to anthrapurpurine or isopurpurine that the artificial alizarine sold by the defendants owes its efficiency as a dye-stuff, and its practical success in the market, and that such product is produced by the bisulpho-acid process of Perkin; and it is not satisfactorily shown that the monosulpho-acid process of Caro or the bromine process of No. 4,321 will either of them practically produce that product.

Inasmuch as the defendants’ article is produced from anthracine or its derivatives by some method, and is a dye-stuff called artificial alizarine, it is contended that the sale of it infringes No. 4,321. The articles in market, called artificial alizarine, at the present day, are substances all of which are made from anthracine, but they vary all the way from nearly pure alizarine, made by the monosulpho-acid process, through the products of the bisulpho-acid process, which contain combinations of alizarine and anthrapurpurine, up to an article of pure p. 310purpurine, free from alizarine. All of these are used as dye-stuffs, according to the shade of color and other qualities desired. The specific article put in evidence in this case as an infringement contains about 60 per cent, of anthrapurpurine. It is claimed by the plaintiff to be the artificial alizarine described in No. 4,321, and to be physically, chemically, and in coloring properties similar to that. But what that is is not defined in No. 4,321, except that it is the product of the process described in No. 4,321. Therefore, unless it is shown that the process of No. 4,321 was followed to produce the defendants’ article, or unless it is shown that that article could not be produced by any other process, the defendants’ article cannot be identified as the product of the process of No. 4,321. Nothing of the kind is shown. On the other hand, the defendants’ article is made abroad and by a process different from that of No. 4,321. It, therefore, cannot be the product of that process. If the words of the claim “ by any other method which will produce a like result ” mean any other method which will produce the only product mentioned in the description, namely, alizarine, as then understood, having the formula C14 H8 04, the defendants’ article is not that product, for it contains other dyeing ingredients which the alizarine of the patent does not contain. If the words of the claim are to be construed to cover all artificial alizarine, whatever its ingredients, produced from anthracine or its derivatives by methods invented since Graebe and Liebermann invented the bromine process, we then have a patent for a product or composition of matter, which gives no information as to how it is to be identified. Every patent for a product or composition of matter must identify it so that it can be recognized aside from the description of the process for making it, or else nothing can be held to infringe the patent which is not made by that process.

The Circuit Court found as a fact that the defendants’ article was produced by the process described in No. 154,536. But it regarded that process as the same process chemically as the process of No. 4,321, on the view that the bromine used in the latter was merely a vehicle, and in the former sulphuric acid p. 311was substituted as a vehicle, and, though superior, performed the same office in the same way; and so, as it regarded the two processes as the same, it held the two products to be the same. We consider it, however, to be established that the defendants’ article is not made by the process of No. 4,321, but is made by the bisulpho-acid process of Perkin, which yields anthrapurpurine, and which, while it may involve the process of No. 154,536, goes beyond it. The bisulpho-acid process puts in two atoms of anhydrous sulphuric acid instead of one, and additional oxygen is carried in, and anthrapurpurine is produced, the formula of which is Ci4H8O5. Aside from this, it is shown that the dyeing qualities of the defendants’ article depend on the anthrapurpurine or isopurpurine it contains, and not on the alizarine. As the only alizarine mentioned in No. 95,465, or in No. 4,321, is alizarine the formula of which is the alizarine of. madder, the process described in those patents, to be a sufficient support for a valid patent, as being properly described, must be a process which will produce that article and no other; and No. 4,321, to be valid as a patent for’a product, must be a patent which will produce, by the process it describes, that article and no other. Unless that process will practically produce the defendants’ article, No. 4,321 is not infringed; and it is not established, by the evidence, that it will. ♦