Show minerals minerals M separation separate Se parati on reversed san francisco may 13 the oil flotation process of extracting metal from ore patent rights to which have been claimed by a british corporation is free to general use I 1 within the united states under a decision of the united states circuit court of appeals here today provided that a proportion of more than one half of I 1 per cent of oil is I 1 maintained the court reversed the decision of the united states district court of montana in which judge george M bourquin and a jury awarded damages to the minerals separation ltd from the butte superior mining company of butte montana for alleged infringement of patent As in pending and contemplate ed infringement suits is involved in final settlement of the question which has been paramount in the mining world for ten years it is expected that the united states i supreme court will be called upon to review decision the litigation culminating in i decision was begun five years ago the decision held that the minerals sep patent rights were limited to the use of a fraction of I 1 per cent of oil not in excess of one half of 1 per cent the butto superior mining company the decision held id did not infringe through the use of ore than one half of I 1 per cent under the hurts courts interpretation of the decision of the united I 1 states supreme court in the case of the e british company against james M hyde de which decided against hyde the decision was written by judge ers kine M ross and concurred in by judge william H hunt judge W W morrow concurred in the reversal of the montana court but wrote a separate opinion holding that the british company had the exclusive right to use oil in the flotation process up to 1 per cent the butte superior mining company was one of the defendants in the james M hyde case all the defendants were enjoined from infringement of the british minerals patents but the butte superior company continued the use of a flotation process with more than 1 per cent of oil the present litigation followed arguing its appeal before the court at 4 ILL 11 7 fleet of hercules powder companas Comp anys harvesters discharging cargo of kelp into lighter san francisco the butte superior filed a brief stating that the facts presented require this court to decide not only whether the use of more than 1 per cent of oil infringes the patent in suit but also whether the use of more than one half of 1 per cent and less than I 1 pe per r cent of oil infringes we admit that under the authoritative t and final interpretation of the patent by the supreme court the use of oil in quantities of less than one half of I 1 per cen cent t infringed but we contend that tha t under said interpretation the use of oil in quantities above one half of 1 per cent does not infringe the patent in suit is the same pa patent tent that was b before the courts in the hyde case the learned judge hand did not regard the use of a fraction of 1 per c cent ent of oil as of the essence of the patented process when the hyde case came before this court on appeal an entirely different view of the invention was taken this court found that the essence of the invention consists in the use of a small fraction of 1 per cent of oil reference was made to the delaware decision in the miami case wherein the court found that the essence of the invention consists in the use of a small fraction of i per cent of oil after reference to various passages in a number of decisions the brief says we see that in succession this court in the hyde case the district court in the miami case the supreme court in the hyde case and the court of appeals in the miami case all agreed in holding and in so bolding they all disagreed with the district court of montana that the use of a fraction of I 1 per cent of oil is the essence of the patented process and that the use of larger quantities of oil is not and cannot be covered by the claims of the patent in suit three questions were before the court of appeals the brief recited since the supreme court has in the hyde case authoritatively determined the rights of the plaintiffs minerals separation under the patent the first question asks if the usi use of oil in proportions gr greater i eater than the so called critical proportions trespass on aidy any rights of the tha plaintiffs as defined by the supreme court the second queried Is the effiew new ev evidence of such much character as would have led the supreme court to reach a different conclusion if ahad it had been presented in the hyde case the third what is the purpose and effect of the so called disclaimer filed by the plaintiffs after the opinion of the supreme court in the hyde case was handed down in discussing the first question the brief said that the supreme court certainly did limit the scope of the patent in suit to the use of a small fraction of I 1 per cent of oil on the ore it called attention to the statement of mr kenyon of the minerals separation counsel to the supreme court that critical proportions were less than one half of 1 per cent and th that at the use of more than this amount would not infringe the patent after citing extensively from plaintiffs brief the butte superior counsel told the court of appeals that ac according c t to 0 plaintiffs own figures defendant has sacrificed about a million dollars a year in recoveries and added expenses in avoiding trespass upon the rights of the plaintiff and therefore the defendant not only does not use the critical proportions of oil to which plaintiffs patent is limited but it is not obtaining the results which could be obtained by use of such critical proportions ions arriving at the subject of froth the brief said when the supreme court condei condemned nned the claims it was fully advised of the file fact that using larger quantities of oil than I 1 per cent would produce a metal bearing froth which differed from the froth produced by tile the use of a small fraction of 1 per cent only in that tile the former contained more oil and gave inferior results defendants froth being obtained by the use of more than 1 per cent of oil is the froth which plaintiffs themselves in the hyde case told this court and the supreme court was not the froth of the patent the brief contended that petroleum is not inert in the process of concentration as demonstrated by records of various mining companies in contradiction of the plaintiffs theory in this respect the brief that the chino mill using petroleum unintentionally shut off its supply and that the foam immediately disappeared and no recoveries were obtained until the supply of petroleum was turned on again at that time they were using pounds of oil per ton of ore the boston news bureau has the following to say regarding the fight being made by the jackling companies against minerals separation the essence of the butte superior decision in minerals separation case is that the mining company can without patent infringement gement employ ten pounds of oil in the flotation process to the ton of ore less than this 12 of 1 per cent infringes a seeming trifle and yet millions are involved in this trifle le the jackling companies have fought the contentions of the separation company vig porously orous ly undismayed by the steady stream of court decisions favorable to the latter A vast number of copper and other mining companies dared not take the risk of heavy damages and are operating under license in respect to the ore treated by flotation anaconda inspiration and some affiliated filia ted concerns have a preferential contract under which their royalty is but 4 cents per ton of ore treated the jackling interests undaunted by tile the possibility of millions of damages in the event that the courts of last resort finally decided against them only redoubled their energies at each legal reverse they sought the best talent to be had they went to frederick P fish of this city who was convinced of the merit of their case incidentally mr fish conceded to be the ablest patent lawyer in this country today made the closing argument before the united states circuit court of appeals in the case just decided favorably to butte superior it was a big achievement but final victory rests upon whether the supreme court on appeal will grant a writ of certiorari its decision in this matter cannot at the earliest come before next october and even should the appeal be granted the whole case must then be argued and final disposition might well be a matter of two or three years more As to predicting whether the supreme court would or would not be likely to issue a writ of review mr fish is silent he wisely declines to make any predictions on this point president mackelvie of the butte superior company makes the following statement the decision of the federal court of appeals at san francisco in the case of minerals separation vs the butte superior mining company reverses the decree in the court below and holds that the so called basic patent of minerals separation is limited to the use of oil in flotation processes to vz 12 of I 1 per cent on the ore or less the use of more than 12 of 1 per cent of oil is held to be outside the patent monopoly and no infringement of the patent the court of appeals in so holding has construed the earlier decision of the supreme court of the united states respecting this patent precisely as it has always been construed by the butte superior mining company minerals separation ltd will appeal decision of the circuit court of appeals in favor of butte superior mining company according to henry D williams of counsel for minerals separation ltd who made the following statement in the suit of minerals separation ltd and others against butte superior mining company united states circuit court of appeals has entered judgment of majority of the court that the patent is limited to use of oil in the proportion of one half of 1 aej per cent or less to the ton of ore and that the th d 0 defendant has always used more than that tha i 0 oil I 1 amount of oil and therefore has not in itt f fringed hence the decree has directed that the case be remanded to the court helow belo W with directions to dismiss the bill at plain si tiffs miffs costs judge ross the senior judge AH filed his opinion to this effect judge hunt filed a concurring opinion judge morrow filed an opinion concur go ring in part with and in part from the opinion of his colleagues he finds that the patent is limited to the use of any amount of oil which is a fraction of 1 per cent of the ore and that the disclaimer is valid all the judges give careful consideration to and elaborate quotation from the opinion of the supreme rne court in the case of minerals separation ltd vs hyde and the C conflict is due to conflict in interpreting that decision of the supreme court there is no breath of suspicion against the validity of the patent the difference of opinion as to what the K supreme court meant furnishes excellent r ground for taking the case at once to the fc supreme court of the united states and E plaintiffs will promptly apply for a writ of certiorari judgment being suspended meanwhile in case minerals separation obtains the t writ it is expected that the supreme court will hear the argument some time next oc r tober r |