168 F. 911 | 8th Cir. | 1909
This is a suit in equity, brought by the Alsop Process Company, to restrain the infringement of letters patent No. 693,207, granted to John and Sidney Andrews, Eebruary 11, 1902, on an application filed September 21, 1901, for a process of bleaching and conditioning flour. The complainant prevailed below. It had long been known that flour immediately after grinding, especially if produced from newly grown wheat, was unfit for domestic use. Storing the flour for about three months was necessary in order to whiten its color and otherwise improve its condition. The pat-entees claim to accomplish these results immediately by their process. In their specification they state that:
“The invention consists essentially in subjecting the flour to the action of a suitable gaseous oxidizing agent, whereby nascent oxygen, or its equivalent, is produced, or comes in contact with the flour. A very small quantity of the oxidizing agent suffices, so little, indeed, that the actual composition of the flour, as shown by analysis, is hardly perceptibly altered. The plan we prefer is to pass the flour through .various conveyors whereby it is brought in contact with the gaseous oxidizing agent, and the drawings we herewith append show the apparatus which from long experience we have found to act best with air carrying a small quantity of gaseous peroxide of nitrogen (N3 O4). We do not, however, limit ourselves to the use of nitrogen peroxide, as we have found that chlorine, bromine, and other gaseous compounds capable of liberating oxygen will act with more or less efficiency.”
They then expressly disclaim ozone and sulphuric and sulphurous acid, for reasons stated. Claim 1-of the patent, as originally presented, read as follows:
“The improvement íd the process of aging and bleaching flour, which consists in thoroughly and uniformly exposing the same to a medium capable of giving nascent oxygen to the flour, substantially as described.”
Claim 3 was framed so as to substitute for “nascent oxygen” “a dilute, gaseous, or vaporized oxidizing agent.” The application was
“The improvement in the process of aging and bleaching flour, which consists in passing the same in a state of fine division through an atmosphere containing a small regulated quantity of gaseous nitrogen peroxide."
Claim 2 is substantially the same, while claims 3 and 4 simply embrace well-known methods of producing nitrogen peroxide by a combination of "nitric acid and ferrous sulphate, or other recognized metallic compounds. ‘The patent, therefore, both by its language and by what occurred while it was pending before the patent office, is confined to nitrogen peroxide as its chemical agent, and any other chemical agent, if any such exist, so well known to accomplish the same result as to make it an equivalent of nitrogen peroxide within the rules of patent law. It will be noticed that the specifications are much broader than the claims, and in such a case it is now elementary that the claims measure the scope of the patent.
There are two well-known methods of producing nitrogen peroxide. The one is chemical, by combining nitric acid with a metallic compound, like sulphate of iron. The other is electrical, and is accomplished by subjecting atmospheric air to a flaming electric arc. The Andrews patent was first granted in England, where the inventors reside, and pointed out, as already stated, the chemical method of producing nitrogen peroxide. In 1904, a patent was issued to James N. Alsop, in the United States, for a process which accomplished in flour the same results as the- Andrews process. The agent claimed by Alsop was the gases generated by subjecting air to a flaming electric arc. In his patent he does not attempt to name such gases, and it probably was not known to him at the time that nitrogen peroxide was his active agent. The Andrews process went into immediate and extensive use in the flour mills of Great Britain. No attempt was made to introduce it in this country. Here,’ immediately after the taking out of the Alsop patent, that process was extensively applied indüstrially. The Alsops also took out a patent for their process in Great Britain, and by 1906- the two processes came in conflict before the industrial world. In that year the Alsops instituted a suit in the English courts for the revocation of the Andrews patent, claiming, among other things, that it was void for want of novelty, invention, and utility. This litigation has resulted in decisions by the Court of Appeals and the House of Lords sustaining the Andrews patent, and adjudging the Alsop process to be an infringement of if. In this suit it was fully established that nitrogen peroxide is the active agent of both Alsop and Andrews. Patents for both these processes were also taken out in Prance, and in litigation between the parties there the Andrews patent has been sustained, and the Alsop process enjoined as an infringement.
■ .After their defeat in the English courts, the Alsops, in order to protect the licensees of their process in the United States, purchased
Turning now to the defendants, they are engaged in the manufacture and sale of a machine which embodies the Andrews process. They produce their nitrogen peroxide chemically. It is fully established, and in fact conceded, that the machine made and sold by them embodies the Andrews process. Under well-known principles, therefore, the defendants are guilty of contributory infringement. It is quite likely that they were led to engage in their business from the fact that the only process here employed was the Alsop process using the electric method, and it may be that when' the defendants began manufacturing their machine they were not aware that a process which produced nitrogen peroxide chemically was an infringement of any patented process, as the Andrews patent had not then been industrially applied in this country.
The defendants are liable, if the Andrews patent is valid. They challenge its validity upon three grounds: (1) For want of utility. (2) Because it lacks patentable invention.. (3) For want of novelty.
The foreign suits above referred to were all brought to final decision while the present suit was pending. In both the French and English trial courts the Andrews patent was held invalid — in the former for want of utility, and in the latter for want of invention. These decisions gave to the defendants great encouragement in the defense of the present suit. It may be doubted whether their defense would have been made if the final result in the appellate.courts of France- and England had been known to the defendants at the time this suit was instituted, for all the questions that are here involved were there litigated and decided. See In the Matter of Andrews Patent, 23 Patents, Designs & Trade-Mark Cas. 441; same case on appeal, 24 Patents, Designs & Trade-Mark Cas. 349; same case in House of Lords, — Patents, Designs & Trade-Mark Cas.-. See, also, Flour Oxidizing Co., Limited, v. Carr & Co., Limited, 25 Patents, Designs & Trade-Mark Casi 428, involving the same patents. Copies of the French decisions have been furnished to us, but the volumes of the French reports containing the decisions, are not given.
Very little evidence was adduced at the trial in support of the defense relating to the utility of the invention. But, since the argument qf the cause, the decision rendered by the Secretary of Agriculture on December 9, 1908, wherein it was held that complainant’s process of bleaching flour is a violation of Food and Drugs Act June 30, 1906, c. 3915, 34 Stat. 768 (U. S. Comp. St. Supp. 1907, p. 928), has been brought to the notice of the court by counsel. Conceding, .without deciding, that such a decision might properly have been introduced in the trial court as evidence, it cannot be brought to this court for that purpose, nor can it be availed of here as a decision of controlling authority. It may be that complainant’s bleaching is simply the whiteness of the whited sepulchre — a' mere cover for adulteration and fraud. It is urged in argument that whiteness has long been regarded among purchasers of flour as an index of the wheat from which the
On the defense of lack of invention, the only patent cited here, and the only one that exists, is a French and English patent granted to Emile Frichot, in the former country May 9, 1898, and in the latter country July 18, 1899. This patent plainly shows that the inventor was seeking the same industrial result as the Andrews patent accomplishes. Ozone, however, was the agent which he employed. He says:
•‘The treatment consists in subjecting the flour to the action of nascent oxygen or ozone in the various forms of ozonated oxygen or ozonated air, either in the open air, or preferably in a closed chamber, or again in a vacuum. For this purpose the flour, after undergoing the usual operations of grinding and bolting, is introduced in thin layers, or preferably stirred in a closed chamber, where it is in contact with an atmosphere of nascent oxygen, or of ozonated oxygen or ozonated air, which acts immediately on its particles, sterilizes them, bleaches their gray, farinaceous parts, and prevents the essential oils from undergoing any change. After this oxygenating or ozonizing, the flour is left undisturbed; care only being taken to shovel or stir it from time to time. It is then dried in the open air, or subjected to heat or cold, for the purpose of removing every trace of oxygen or ozone.”
Several mechanisms are pointed out for working the process. In all of them the ozone is produced by subjecting air to a silent electrical discharge. In one of these the inventor points out that the flour “descends in presence of the nascent oxygen or ozone.”
“During this descent from the top to the bottom of the chamber, the material is subjected to continuous action and exposed to the ascending current of nascent oxygen.”
He again states that in order to obtain a more active ozonated fluid, and to avoid any loss of ozone, he prefers to bring the air, after it has been electrically treated, into immediate contact with the flour. The process is for treating both wheat and flour. We have separated the portions relating to flour. The claim of the patent specifies a process of treating flour, consisting in exposing it “to the action of nascent oxygen or ozone, or by ozonized air or ozonized oxygen in the open air, or preferably in a closed chamber, by distributing it in thin layers in presence of a stream of ozonated .fluid or a current of pure, dry, cold air or oxygen, becoming ozonized by contact with metal filings or fine wires placed in glass tubes connected with a high tension electric current as described.” Frichot uses the language of alchemy rather than chemistry. Defendant’s expert, when questioned as to what was meant by the phrase “nascent oxygen or ozone,” stated that in his judgment Frichot meant simply nascent oxygen liberated from ozone. The same is true as to his other phrases, “ozonated air or ozonated oxygen.” No significance can be attached to these terms, except nascent oxygen derived from ozone, in combination with air. A careful study of Frichot’s patent convinces us, as it did the foreign courts, that ozone is the agent by which he sought to accomplish the •results of his process. "V\£e reach this conclusion úpon two grounds: First, ozone is specifically claimed throughout the patent; second, the mechanism which he indicates for treating air electrically will at least chiefly produce ozone. There may be other by-products, but they were not desired by Frichot. This is substantially conceded by counsel for defendant. But they claim to have proven by experts as the result of laboratory experiments that ozone will not in fact bleach flour, and that the apparatus specified in Frichot’s patent produces a small quantity of nitrogen peroxide as a by-product, and that this, though unknown to Frichot, was the agent which produced the results claimed by him. There are several answers to this contention: First. It is not established that ozone will not bleach flour. The evidence adduced by complainants tends strongly to show that ozone alone is capable of producing that result. But to produce this effect the flour- must be subjected to the ozone for a considerable time, ranging from a few minutes to several hours. The result is that the flour is tainted and ruined. Second. Ozone is confessedly the principal product of treating air electrically in the method pointed out by Frichot. Flour, if exposed to a gaseous compound of air, ozone and nitrogen peroxide, is bleached by the nitrogen peroxide, but is also tainted by the ozone. Such tainting is undoubtedly one of the results of the Frichot process. He points it out repeatedly in his patent, and provides methods for treating the flour to remove the taint. Complainant’s process avoids all tainting of the flour. It is, therefore, patentable over the Frichot process, even if it be conceded that the agent in that process is nitrogen peroxide.
Nitrogen peroxide is a dark brown gas, deepening in color as the temperature is increased. It has a peculiarly repulsive odor, and is poisonous when inhaled. While it sometimes bleaches, it more frequently imparts color. This is especially true as to proteids, which
It should also be borne in mind in considering this subject that reasoning by analogy in a complex field like chemistry is very much more restricted than in a simple field like mechanics. This distinction has been frequently recognized by the courts.
•‘Of course, a discovery to be patentable must have the attributes of invention; but the mental operation is somewhat different in one who invents a machine and one who discovers a process. * * * The mere selection of a material, and this, too, by a process of exclusion, has been deemed sufficient to sustain patentability, and the patent law abounds in instances in which patents have been upheld where the inventor stumbled upon the discovery in total oblivion of the reason why effect followed cause.” Badische v. Kalle (C. C.) 94 Fed. 163.
We shall not lengthen this opinion by quoting extracts from decisions to illustrate this principle. It was explained and enforced in the following cases: Celluloid Mfg. Co. v. Zylonyte Co. (C. C.) 35 Fed. 301; Union Tubing Co. v. Patterson Co. (C. C.) 23 Fed. 79, 82; King v. Anderson (C. C.) 90 Fed. 500, 504; Electric Smelting Co. v. Carborundum Co., 102 Fed. 618, 631, 42 C. C. A. 537; Hemolin Co. v. Harway Co., 138 Fed. 54, 56, 70 C. C. A. 480; U. S. Mitis Co. v. Midvale Co. (C. C.) 135 Fed. 103, 107; Tannage Co. v. Donallan (C. C.) 93 Fed. 811, 816; Thomas Co. v. Electric Co. (C. C.) 111 Fed. 923, 930.
The same principle is admirably illustrated by Lord Justice Vaughan Williams, in his opinion involving the Andrews patent. In discussing the limitation of the doctrine of equivalents in patents based upon a chemical process, he says:
“It was urged on behalf of the petitioners that Friehot’s patent was an anticipation of Andrews’ invention, because all oxidizing agents which liberate nascent oxygen are chemical equivalents, and if you once have a man say, T propose to bleach flour by nascent oxygen which is liberated from ozone.’ that is an anticipation of the subsequent patent, which says, T propose to bleach flour by an oxidizing agent of another character which only operates, and can only operate, by the liberation of nascent oxygen or its equivalent.’ The answer to this is put in this way: That you cannot apply the doctrine of mechanical equivalents to a chemical patent, because you cannot predicate that all oxidizing agents will act in the same way, and cannot, therefore, predicate that in conditioning flour an oxide of nitrogen, or an oxidizing agent of the chlorine or bromine type, will act in the same way as ozone or any other oxidizing agent mentioned in Frichot’s patent.” 24 Patent, Design & Trade-Mark Oases, 365.
The learned judge qualifies the language which we have italicized later in the opinion when speaking of the doctrine of equivalents in chemical cases, and states the correct rule with remarkable precision as follows:
“The doctrine does apply in cases whore, having regard to the subject-matter, it can be truly asserted that one of two or more chemical substances is*920 ■well Tcnotm as producing the same effect on the¡ saíne subject-matter.” 24 Patent, Design & Trade-Mark Oases, 366.
When it is sought to ascertain the state of the art by means of prior patents, nothing can be used except what is disclosed on the face of those patents. Such patents cannot be reconstructed in the light of the invention in suit, and then used as a part of the prior art. That, however, is precisely what the defendants attempt to do in this case in respect to the Frichot patent. That patent' disclosed ozone as the source of the nascent oxygen used for bleaching flour. Defendants say that, while such is the real character of the verbal disclosure on the face of the patent, the process actually produced nitrogen peroxide, which was in fact its bleaching agent. There are two objections to that kind of reasoning in this case: First. Frichot himself designates ozone as the primary basis of his process. The mechanism which he points out for producing his gas will produce ozone. There is nothing on the face of his patent to teach the world that nitrogen peroxide was an efficient agency for the bleaching and aging of flour. Second. Frichot’s patent is a paper patent'. He never applied in the industrial world the art which his patent disclosed. It may be that, if he had transferred his paper patent t'o the milling industry, it would then have disclosed nitrogen peroxide as its active agent. This, however, he did not do, and the expert chemists employed by the defendants in this case to work the Frichot apparatus in their laboratory cannot', by their discovery from that experience, make what they learn a part of the prior art. Western Electric Co. v. Home Tel. Co. (C. C.) 85 Fed. 649, 656; Badische Anilin Co. v. Kalle & Co., 104 Fed. 802, 808, 44 C. C. A. 201; same case (C. C.) 94 Fed. 163, 168. Prior patents are a part of the prior art only by what they disclose upon their face. If they are carried into effect in the industrial world, what is learned from that experience also becomes a part of the prior art. An expert, however, cannot take a process patent, which has never been applied industrially, and work the process in his laboratory, and discover therefrom something which is not disclosed on the face of the patent, and then transfer that experience back to the time of the patent, and make it a part of the prior art for the purpose of defeating a meritorious invention. That would be ex post facto law of the-most pernicious character. Such a practice would be especially misleading in a case like the present. The elements here involved are so numerous that a slight modification, in the process would be likely to produce conspicuous changes in the product. The evidence leaves no doubt that an electrical current may be so applied to air as to produce either ozone or nitrogen peroxide. The silent current produces ozone. A current of sufficient strength to produce the flaming arc results in nitrogen peroxide. As you pass from the lower current to the higher, nitrogen peroxide appears as a product, and the quantity of ozone decreases; and this change progresses until, when the flaming arc is reached, a heat is developed which completely consumes the ozone and leaves nothing but nitrogen peroxide. It is easy to see how such a process might be worked in the laboratory so as to modify the result which Frichot himself attained. Again, the working of such, a process, which might be found sufficient to bleach a small quantity of
The prior art which has been exhibited to us was presented to the English and French courts, and was held unavailable. We shall discuss only those matters that are claimed to be new in the present suit. It. is first contended by defendants that it was not disclosed in the foreign litigation that ozone would not bleach flour, and that nitrogen peroxide, as a by-product of the Frichot process, was it's real bleaching agent. It is said that the Alsops, who were assailing the Andrews patent in that litigation, did not dare to bring this fact to light, because their own process was electrical, the same as Frichot’s, and such a disclosure would have been even more fatal to their patent than that of Andrews. An examination of the report of the foreign litigation does not disclose whether these alleged facts were developed there. It does appear that such distinguished chemists as Sir William Crookes, on the one side, and Sir James Dewar, on the other, testified before the English courts; and it hardly seems probable that the facts here urged, if they were facts, would not have been developed upon that hearing. Be that as it may, a careful reading of the evidence in this case fails to convince us either that ozone will not bleach flour, or that the process of the Frichot patent, when applied according to Frichot’s directions, will develop nitrogen peroxide as a by-product. We reach the conclusion, therefore, that Frichot’s patent, as a part of the prior art, must stand in this case simply for what Frichot himself declared, and not be enlarged by what defendant’s experts claim to have discovered by a laboratory working of that process.
Defendants also urge upon our notice as a part of the prior art two American patent's issued to Davis in February, 1901, Nos. 724,753 and 724,754. They relate to a process for the preservation of perishable food products, and accomplish their results by subjecting the food products for a considerable period to the gas engendered by treating air “electrostatically.” The patents point out three conspicuous features: The electric current is low; the electrodes are carefully insulated; and ■direction is given that the temperature of the air be kept low. All of these features indicate that the result of the electrical treatment of the air here taught would be to produce chiefly ozone. The patentee slates that ozone is the chief product, but that the ozone is changed in its character before the process is complete, and that the preserving agent is really “the lower oxygen-nitrogen compounds.” These patents are not cited so much for the process they disclose as for the chemical dissertation which they contain. It is very'doubtful, however, whether
The only other matter of any importance that is brought to our notice, which was not before the English courts, is an article in Spons’ Encyclopedia of Industrial Arts, published in London in 1881. In the publication the article is entitled “Oils and Fatty Substances — Refining, Clarifying, and Bleaching.” The important part’s of the article are as follows:
“Many plans of decolorizing oils are in vogue. A process much recommended is to pass nitrous acid gas through the oil.”
Numerous other processes are pointed out in the article, which then proceeds as follows:
“Most processes for the bleaching of oils depend upon the oxidation of the coloring matter by some suitable reagent, chiefly involving nascent oxygen in some form. * * * Experiment alone- can determine the particular process best suited to any given oil, having regard to the purpose for which it is to be used.”
It is probable that the term “nitrous acid gas,” used in this article, refers to nitrogen peroxide, as that’ is the name which the gas bore in the old nomenclature. The article contains no direction as to the process by which the oil is to be treated or the condition in which the gas is to be applied. The character of the oils is not indicated, whether they are oils used for foods, drugs, or paints. If for paints and similar purposes, the imparting to them of an odor or flavor could not be material. Nothing is shown as to the period of time for which the oil is to be subjected to the gas. The chemical knowledge that nitrogen peroxide would bleach oil would not teach that it would bleach flour, and least of all would it teach that it would not taint flour. The bleaching of oil belongs to a remote art, and an encyclopedia disclosure that nitrogen peroxide would accomplish that result does not deprive the Andrews process for bleaching flour of patentable invention.
In connection with this article, as well as the other prior art, the case of Spill v. Celluloid Mfg. Co. (C. C.) 21 Fed. 631, is urged as much in point, and a general statement is quoted from the decision to the effect that:
“The application of an old process or machine to a similar or analogous subject, with no change in the manner of application, and no result substantially distinct in its nature, will not sustain a patent, even if the new form of result has not before been contemplated.”
We are unable to find any analogy between that case and the present. There prior patents had taught that vegetable fiber could be bleached by certain chemical agents. The patent in suit applied those agents to vegetable fiber after it had been crushed. As the court says:
“The only difference was that the product was bleached vegetable fiber in the shape of converted gun cotton, instead of bleached vegetable fiber not so converted.”
Under such circumstances it is quite plain that the former patent anticipated the later.