260 F. 177 | 9th Cir. | 1919
The appellant brought suit in the court below for infringement of patents. Upon the issue of infringement that court found for the appellee and dismissed the appellant’s bill.
The appellant is the assignee of patents granted on March 21, 1911, to Cottrell and Speed, numbered, respectively, 987,115 and 987,116, the first of which is for the process of separating and collecting particles of one liquid suspended in another liquid, and the second is for apparatus by which the process is carried out. The invention
“There is a large class of oils that cannot be economically freed from water without distillation. These are largely oils in which the water is in very small globules, often less than one-thousandth of an inch in diameter, and behaving as if surrounded with a membrane resisting coalescence of the drops. * * * Many natural petroleums as taken from the wells contain from y2% to 50% of water in the form of small drops (i. e., emulsions), and after being allowed to stand for months still hold a great proportion of the water in suspension.”
The specifications go on to say that the inventors had found that, when these emulsions are subjected to the action of high potential electric charges in the manner thereinafter described, they are rapidly de-emulsified, the water settling to the bottom of the vessel, collecting into large masses, which can be readily withdrawn, leaving the oil dry.
The process involved in the invention, as shown by the specifications, is substantially this: Oil loaded with water in the form of minute globules is passed between two electrodes separated at a proper distance, the electrodes being connected to a source of electricity of sufficiently high potential to create between the electrodes an electrostatic field, or field of electric strain, which will cause the minute globules of water to conglomerate and coalesce until they become so large that they will settle out from the oil by gravity. Tor present purposes it is sufficient to quote the first claim:
“Tbe improvement in the art of separating and collecting particles of one liquid suspended ‘in another, which latter is essentially a nonconductor of electricity, consisting in bringing the material to be treated between electrodes connected to a source of electricity of sufficient voltage to produce coalescence of the suspended particles in such wise as to cause the rapid separation of the two liquids throughout the body of the mixture, and at the same time prevent the coalescing globules from forming complete chains, short-circuiting the electrodes.”
The appellee, operating under a patent issued October 26, 1915, No. 1,158,253, for “Process of Dehydrating Oil,” removes the moisture from oil by passing the oil between electrodes connected to a source of electricity of sufficient voltage to cause the suspended particles to coalesce in such wise as to produce rapid separation of the two liquids throughout the body of the mixture. But the appellee contends that it does not infringe the appellant’s patent for the reason that it does not prevent the coalescing globules from “forming complete chains, short-circuiting the electrodes.” Therein is the whole ground of controversy in the present suit. In both processes there are the electrodes, the sufficiently high voltage to produce coalescence of the moisture, and to separate the same from the oil. The only question is whether the operations involve different methods of electrical action. In the application for the McNear and Bowles patent reference was made to the appellant’s patent as follows:
“Said patentees [Cottrell and Speed] relied upon the electromotive force only to break down the oil partitions between the water globules, and took especial pains to prevent short-circuiting between the electrodes, and, indeed, their, inventions consisted wholly in the prevention of short-circuiting, we have discovered that far better results are obtained by relying, not upon*179 electromotive force, but upon heat as an agent to produce coalescence between the water globules, this heat being produced by the passage of the very large electric current which is produced by short-circuiting, the amount of heat being such as to convert water globules in the path of the current into steam, and by said conversion breaking the electric current in said path.”
This fanciful explanation of the effect of the current in the ap-pellee’s process may be pardoned in view of the fact that neither the patentees of that patent nor any expert witness was able to say just what does occur in the mass of the fluid when under treatment in either process. The theory that in the appellee’s process the water globules are by the electric current converted into steam is not established by evidence, and is discredited by the appellee’s expert witnesses. The defense of noninfringement, therefore, rests upon the appellee’s contention that in the appellant’s process there is no passage of electric current from one electrode to another, and that the dehydration of oil accomplished therein is the result of the maintenance of an electrostatic condition in the fluid between the two electrodes, whereas in the appellee’s process the dehydration is accomplished by the passage of currents of electricity from one electrode to another. In other words, according to the appellee, it is essential to the appellant’s process that short-circuiting be avoided, while it is essential to the appellee’s process that short-circuiting be produced. We are led, therefore, to the inquiry what is short-circuiting as referred to in the appellant’s claims, and what is the proper construction of the appellant’s claim where it provides for a source of electricity of sufficient voltage to prevent the coalescing globules from forming complete chains short-circuiting the electrodes.
“If the potential falls too low, then * * * permanent electrolytically conducting chains are established between the electrodes, thereby reducing the potential difference of the latter still more, and wasting a part of the supplied energy in useless heat of electrolytic conduction.”
The appellee’s expert witness Johnson admits that in the appellant’s process momentary or instantaneous chains are formed bridg
But the question here is not a question of difference of apparatus or difference of speed with which the oil is conducted through the same. It is simply the question whether or not the appellee’s process can be read upon the appellant’s claims. There is no mention in any of those claims of any mechanical means for preventing short-circuiting. There can be no doubt, we think, that the appellee prevents short-circuiting in the same manner and for the same purpose, if not to the same degree,, as does the appellant.' The degree is unimportant. It is obvious that neither the appellant’s nor, the appellee’s process will work if the current is entirely short-circuited. It is necessary in both to maintain a high voltage, and .to permit the passage from one electrode to the other of small portions only of the current. That the appellee maintains such high voltage is indicated by the os-cillographs taken by its own expert. These show that during the process there is no lowering of the potential to such a degree as to make the process inoperative, but that there is at all times sufficient electric charge in the electrodes to maintain the necessary electric strain. Professor Cory, expert witness for the appellee, testified concerning the appellee’s treaters:
“I am not at all desirous of saying that I know exactly what occurs in any of these treaters. I do know this, that in the operation of the treaters * * * an emulsion is delivered into the treater, and that a difference of potential is applied to the electrodes, that that difference of potential produces short circuits between these electrodes, that these short circuits could only occur because of the formation of chains of water globules between the electrodes, and that as a result the water is definitely separated from the oil and is drawn off.”
Evidently the witness meant that in the process momentary short circuits were produced, but not a total short circuit; for there is no suggestion in his testimony or in any of the evidence that in the ap-pellee’s treaters the potential of the charge ever falls so low as to diminish the electric strain between the electrodes to a point where coalescence of the water globules ceases. •
The term “short-circuiting” in the appellant’s claims, if susceptible of two meanings, should be given that which the specifications show it was intended to have, if that meaning is not repugnant to the plain and clear terms used. Cottrell and Speed were the first to discover
“It may be that the inventor did not know what the scientific principle was, or that, knowing it, he omitted, from accident or design, to set it forth. That does not vitiate the patent. He sets forth the process or mode of operation which ends in the result, and the means for working out the process or 'node of. operation. The principle referred to is only the why and the wherefore.' That is not required to be set forth.”
In Eames v. Andrews, 122 U. S. 40, 55, 7 Sup. Ct. 1073, 30 L. Ed. 1064, the foregoing language of Judge Blatchford was quoted and approved. Professor Cory admitted his want of definite knowledge as to what occurs in the process. He testified:
“Q. As a matter of fact, aren’t these water chains formed in the Cottrell process and immediately disrupted? A. I don’t know. Q. -In the McNear-Bowles process, is it not a fact that the chains are formed, and then immediately thereafter disrupted? A. I don’t know. Q. Is it not a fact that that disruption takes place by the passage of the current through the chains? A. In all probability, but if you ask me to state definitely, I don’t know.”
He was of the opinion, however, that chains are formed in the appellant’s process. He says:
“With the continuation of the electric forces between these particles, due entirely to electrostatic attraction and repulsion, sooner or later there will be many of these chains, and if that voltage is continued sufficiently a complete chain will be formed. Now, when that happens things have changed entirely from that existing at the beginning. A current flow begins to manifest itself.”
The witness thus fairly describes the appellant’s process, the theory of which is that, if the voltage is sufficiently high, chains are
“But it cannot be seriously denied that Cochrane’s invention lies at the bottom of these improvements, is involved in them, and was itself capable of beneficial' use, and was put to such use. It had all the elements and circumstances necessary for sustaining the patent, and cannot be appropriated by the defendants, even though supplemented by, and enveloped in, very important and material Improvements of their own.”
It follows that the appellee has infringed, in the form of treater first used by it, claims 1, 2, 3, 4, and 7 of process patent No. 987,-115, and that in its second form of treater, the one now used, it infringes claims 1, 2, 3, and 7, and that in both forms of treaters the appellee has infringed claim 1 of the.apparatus patent No. 987,116.
The decree is reversed, and the cause is remanded to the court below, with instructions to enter an injunction in accordance with the foregoing views, and for accounting.