This suit was originally brought for the infringements of three letters patent issued to the petitioner as assignee of Amos Perkins. The patents were respectively numbered 501,537, 542,349, and 560,599, and were dated respectively 18th July, 1893, 9th July, 1895, and the 19th of May, 1896. The first, 501,537, was for an improved 'method of repairing asphalt pavements;' the other numbers were for 'improvement in apparatus for repairing asphalt pavements.'
The bill contained the usual allegations of invention and infringement, and prayed an injunction.
The answer admitted the issue of the patents, but denied that Perkins was the original and first inventor of the subject-matter, or that the improvements therein disclosed constituted new and useful inventions within the meaning of the patent laws, or that said improvements were not known or used in this country, or had not been patented or described in any printed publication in this or in foreign countries before the alleged invention thereof by Perkins.
The petitioner dismissed the bill as to patent number 542,349. Upon the hearing the circuit court sustained the apparatus patent number 560,599, finding that the Assyrian Asphalt Company had infringed upon that apparatus, and ordered an injunction and a reference for an accounting. The method patent, number 501,537, was adjudged invalid, and the court said:
'From the evidence in this suit regarding the prior state of the art, and the argument before me, I find that the term 'asphalt' is not limited in its meaning to the Trinidad deposit, or to so-called 'American mixture,' but includes as well the bituminous paving material used in France and elsewhere, comprising natural rock asphalt and compositions of bitumen and lime or sand particles; and that the claims of the Perkins method patent are so broad with reference to the application of heat to the repair of asphalt pavements that they are anticipated by the Crochet patent, and are invalid.' [96 Fed. 236.]
The petitioner took an appeal to the court of appeals, and that court affirmed the judgment of the circuit court. 41 C. C. A. 123, 100 Fed. 965. The case was then brought here by a certiorari.
The proceedings here are only concerned with the method patent, number 501,537. The letters patent describe the invention as follows:
'My invention is designed to produce a method whereby the repairing of asphalt pavements may be quickly and cheaply accomplished, and a neater appearing pavement be obtained after repairing than has heretofore been the case.
'Heretofore in the repairing it has been customary to dig out with a pick or other instrument the surface material around the spot to be repaired, sometimes applying heat to the spot to soften the material so that it may be more easily removed. When the material has been removed the depression thus made is thoroughly cleaned and given a coat or dressing of tar. New material in a heated state has then been placed in the depression, and been ironed down and smoothed off in the usual manner of finishing, the tar acting as a solder to hold the new material in place. When completed, however, the line or joint between the old hardened material and the new material has been plainly discernible, and more often there has been more or less of a ridge. Again, this new block of material, by reason of frost or from other causes, is frequently torn loose from its soldered connection with the old material, thus necessitating new repairs. In practising my invention, however, I subject the spot to be repaired and the surrounding edges to such a degree of heat that the surface asphalt-not only the exact spot to be repaired, but the surrounding portion, to a greater or less degree-is reduced to the soft pliable state in which it is originally laid. With a rake or other suitable instrument it is then agitated and mixed with enough new material to fill up the spot to be repaired. It is then subjected to the usual finishing operation of ironing and burnishing. The heating of the surface may be accomplished in various ways and by means of various forms of apparatus, and while I have herein shown but one form for accomplishing the result, yet I would have it understood that I do not limit myself to any particular form of apparatus for carrying out my invention.'
The apparatus described consists of a suitable tank mounted on a wheel for carrying gasoline. The tank is connected with a series of horizontal pipes which carry a series of burners, and 'project a flame downward against the pavement.'