(orally.') I have examined these two cases with care. The first case is a suit by Walrath to restrain the Pacific Paving Company, the defendant in that suit, from infringing upon his letters patent for a process of treating bituminous sand-rock for paving purposes. The second suit is a counter-suit which was instituted by the Consolidated Bituminous 'Rock Company against- Walrath, charging him with infringing upon certain prior patents of which it is the assignee. Both cases are represented by the same counsel and both have been submitted on the testimony taken in the first case. The Walrath patent purports to be a patent for treating bituminous sand-rock for paving purposes, while the other speaks only of asphaltum. It is evident however that both patents refer to the same material because both parties use the same material from the same mine. And it was not inconsistent with this interpretation that the elder patent refers to the material as asphaltum, since it is shown that it actually contains asphaltum, as one of its component parts.
Opon examination I think both of these patents are valid, since the processes described in them are different. Both patents refer to steam as the effective agent for reducing the material, hut the patentees produce the steam and utilize it in a different manner. In the prior patent owned by the Consolidated Bituminous Rock Company, the water is poured into the kettle with the material to be dissolved and both are boiled together. During the boiling steam is generated, which passes up through the bituminous material in the kettle partly dissolving it, and the water is got rid of in part in this way. In this elder patent the claim covers the use of both water and steam and this is the process the patentee of that patent used. They never used any other until after Walrath obtained his patent and commenced to use his process. I think the process covered by this elder patent is a patentable process and 1 think the patent is good and covers the use of steam generated in that mode. The subsequent patent to Walrath is also for an improvement in processes for treating bituminous sand-rock. Instead of putting the material in water and boiling the two together, thereby generating the steam in the same vessel, he generates the steam in a separate boiler or vessel, and dispenses with the use of water in the same kettle or vessel, which seems to be an improvement. It must be an improvement because the patentees of the prior patent adopted this latter mode and proceeding after Walrath had demonstrated its value. 1 think, therefore, there must be a decree in both cases, in the one case a decree enjoining the defendant Walrath from using steam in the mode applied by the patentee of the prior patent, and in the other case, viz., Walrath v. Pacific Paving Company, I think Walrath has a valid patent for the improvement in generating, steam in an outside vessel and conveying the steam alone to the material to.be dissolved. ,
*886Mr. Boone — Did your honor take notice of the fact that there was a license: that the Walrath Company had a license to use the prior patent?
The Court — I do not think Walrath infringed while he had that license. It is only what he has done since the expiration of that license.
Mr. Boone — What he has done since then by boiling the material with water in an open kettle and generating steam in that way?
The Court — Yes.
Mr. Wheaton — Is it intended to limit the decree to the use of the open vessel?
The Court — No; either open or closed.
Mr. Boone — In the first patent issued to Judson and Rice they practiced it, and they never used it in any other way except in an open kettle, until Mr. Walrath patented it and used his process of generating steam outside.
The Court — They do not limit their claim to an open kettle. They put the material in the kettle and boil it and generate the steam in the same vessel. That is their invention. I do not suppose it matters whether the kettle was open or closed.
Mr. Wheaton — In the Walrath Case the complaint does not charge an infringement before the bringing of the suit. I suppose an injunction follows in that?
The Court — Then there is no occasion for anything but an injunction.
Mr. Boo.ne — We asked for an accounting.
The Court — There is no occasion for an accounting in the Walrath Case if the complaint shows that the defendant in that case had only threatened to use the process.
Mr. Boone — All we ask for is an injunction — that is sufficient.
The Court — Very well.
■ Mr. Wheaton — I presume both parties have contracts on hand and I ask that the injunction be suspended 30 days.
Mr. Boone — We have no objection.
The Court — Very likely you will be able to arrange it among yourselves when you find out what your rights are. That is the main proposition — to ascertain your rights.