The opinion of the court was delivered by: CAMPBELL
CAMPBELL, District Judge.
This is a suit for relief by injunction and damages for the alleged infringement of reissue patent No. 16,803, to Edmund M. Flaherty, assignor to E.I. du Pont De Nemours & Co., for low-viscosity lacquer and film produced therefrom, reissued November 29, 1924, upon an application for reissue filed September 19, 1927. The corresponding original patent was granted May 24, 1927, upon an application filed May 23, 1921.
The plaintiff's title to the patent, the incorporation and places of residence of the parties as alleged, and the jurisdiction of the court are admitted and notice of infringement proved.
The sale by the defendant of nitrocellulose enamel containing nitrocellulose whose viscosity characteristic is below the limit defined in the claims of the patent is admitted, but there is no reference in the stipulation as to the source of the nitrocellulose base used in the defendant's lacquers, or to the method by which the viscosity of its nitrocellulose is reduced.
The defendant purchases its nitrocellulose from the Hercules Powder Company.
The viscosity characteristic of the nitrocellulose so purchased is reduced by boiling in water under pressure without chemical reducing agents. This is an old method wholly different from the chemical viscosity-reducing treatment disclosed in the Flaherty patent.
The patent in suit is for a product and not for a method or process, and as I understand the plaintiff's position, it does not contend that defendant follows or imitates in any way the method of reducing the viscosity of nitrocellulose disclosed in the patent, but insists that the method by which the viscosity of the nitrocellulose is reduced does not make any difference.
The charge of infringement is based solely upon the fact that the defendant uses a viscosity nitrocellulose base lower than the upper limit defined in the claims of the patent in suit.
This suit is based upon claims 2, 3, 6, 8, 9, 12, and 17 of the patent in suit.
Claims 2, 3, 6, and 9 are directed to the lacquer.
Claims 8, 12, and 17 to the coating resulting from the use of the lacquer.
All of the claims in suit specify the presence of the resinous ingredient, and all of them except claims 8, 9, and 17 also specifically refer to the presence of a softener.
Claims 3 and 17 are specific to pigmented lacquers as distinguished from clear lacquers.
All of the claims in suit specify that the viscosity characteristic of the nitrocellulose is "below" "or less than" a defined standard.
In claims 2, 3, 9, and 12 the standard is defined with reference to the viscosity of a solution consisting of 16 ounces of the nitrocellulose in a gallon of pure ethyl acetate.
In claims 6, 8, and 17 this standard is defined with reference to the viscosity of a 25 per cent. solution of the nitrocellulose in the particular mixed solvents specified in example 1 of the patent.
All the claims in suit refer to the viscosity characteristic of the nitrocellulose.
The two definitions of the standard mean the same thing, although in one case the viscosity of the solution referred to in the definition is 25,000 centipoises, and in the other case the viscosity of the solution referred to in the definition is 1,200 centipoises.
This is true because while nitrocellulose itself has no viscosity, it has the characteristic or capacity of making any solution, in which it may be dissolved, more or less viscous, and the extent to which it makes a solution viscous depends partly upon the particular solvents, and partly upon the concentration of the nitrocellulose in the solvents.
The centipoise is a unit used by the United States Bureau of Standards for the measurement of viscosity, and the bureau keeps on hand solutions of viscosity measured in centipoises.
Any one who desires to determine the viscosity of an unknown solution can on request obtain from the Bureau of Standards a sample by specifying the solution of viscosity he desires and compare it with the unknown solution by means of suitable instruments.
The Stormer viscometer referred to in the patent is a suitable instrument for that purpose.
The patentee in the patent in suit states as his purpose the production of an improved low viscosity nitrocellulose lacquer, and then defines his invention or discovery as follows: "According to my invention pyroxylin solutions, and particularly lacquers, having an abnormally high nitrocellulose content in conjunction with a suitably low viscosity are produced by subjecting pyroxylin mixtures of the character hereinafter described, for a prolonged period, say from one to three weeks, preferably at ordinary room temperature, to the action of a metal salt of a weak acid, for example an alkaliforming metal acetate. The discovery of the action of salts of this kind on the viscosity of pyroxylin solutions is described in the patent of Earle C. Pitman No. 1,636,319, and the application of this discovery to the reduction of viscosity of pyroxylin solutions is claimed broadly therein. By a particular application of this discovery to high percentage pyroxylin solutions, I have found it practicable to produce solutions, such as lacquers and colored enamels, of such a high pyroxylin content that they will deposit in two coats a film as heavy and satisfactory as the ordinary solutions do in four coats or more."
He then in detail states two specific examples in both of which the "metal salt of a weak acid" employed as a chemical viscosity-reducing agent is sodium acetate; and points out that by following the procedure set forth in these examples, a 25-40 per cent. pyroxylin solution may be obtained, having a viscosity below 25,000 centipoises at 28 degrees centigrade.
The next two paragraphs name a number of other "metal salts of weak acids" that may be used as a viscosity reducer in the place of sodium acetate, and a number of other well-known solvents of nitrocellulose that may be employed.
These paragraphs are not statements of Flaherty's discovery, but of Pitman's patent, No. 1,639,619.
The specification contains no further disclosure of methods or of alternatives, but the remainder consists of a number of statements differentiating the "new lacquer" from prior lacquers made from "cellulose nitrate which has not been subject to the above subscribed treatment with sodium acetate or a similarly functioning agent," all of it beyond the words last quoted having been added at various times during the prosecution of the application.
The substance of these statements is that lacquers made from nitrocellulose treated with Mr. Pitman's viscosity-reducing agents will, as in the examples given, contain more solids at any given viscosity than the usual nitrocellulose lacquers, by virtue of the fact that the viscosity characteristic of the nitrocellulose has been reduced, and that by reason thereof the resulting lacquer has greater covering power, and the desired thickness will be produced by a smaller number of coats.
The patentee discloses in the patent in suit, as a novel and patentable idea of means, his discovery that the application to the making of lacquer films of Mr. Pitman's method of reducing the viscosity characteristics of nitrocellulose solutions will produce superior films.
The alleged invention or discovery of the patent in suit, as I read the patent, is the use as a lacquer, or in a lacquer, of a nitrocellulose solution in which the viscosity of the nitrocellulose has been reduced by Mr. Pitman's method.
The defendant contends that this was not a patentable discovery or invention.
To determine whether the defendant's contention should be sustained, we must first determine how the substitution in lacquers of nitrocellulose treated by Mr. Pitman's method changed the nature of the resulting lacquer, whether in kind or merely in degree.
That the viscosity of nitrocellulose could be reduced in various ways was known for many years before the filing of the original application of the patent, of which the patent in suit was a reissue, and nitrocellulose lacquers, made by dissolving nitrocellulose in its usual solvents in such proportions as to produce a solution that may be applied either by spraying, brushing, or dipping, have been manufactured and sold for many years. When so applied, the solution is spread on the surface to be coated, the volatile solvents evaporate, and the nitrocellulose is deposited as a transparent film on the surface.
It is therefore of importance to the user that there be a maximum of pyroxylin per unit of solvent, as the solvent in most cases is all lost by evaporation during the drying of the film of pyroxylin.
It was common practice long before Flaherty to add gums, resins, and pigments to these nitrocellulose solutions, to give the lacquers or enamels the properties these added substances impart.
In 1911, it was known that nitrocellulose, which is a complex organic compound, does not have a fixed viscosity characteristic. Its viscosity characteristic (i.e., the extent to which it imparts viscosity to a given quantity of a given solvent) depends upon the starting material from which the nitrocellulose is manufactured, the way in which it is manufactured, and its treatment after manufacture, and that the higher the viscosity characteristic of the nitrocellulose used in a lacquer, the less will be the quantity of nitrocellulose that may be added to a product of given fluidity; and the lower the viscosity characteristic of the nitrocellulose, the more may be added to the solvent without exceeding the desired viscosity of the lacquer. See Worden's Nitrocellulose Industry, pp. 47, 48 and footnote 3, Defendant's Exhibit F.
A change in the viscosity characteristic of the nitrocellulose base does not change its functional relation to the other constituents of the lacquer, as they co-operate in the same way to produce the same result without regard to the change.
That the plaintiff may have discovered and invented a new process for the making of lacquer is not proof that it has invented a new lacquer, as the word "new" is used in the patent law.
Nor is the fact that a new nitrocellulose, with a new viscosity characteristic, is used proof of the production of a new lacquer, as the word "new" is used in the patent law, as the lacquer produced is the same old lacquer with the same mode of operation; the only difference being the increased covering power due to the lower viscosity of the nitrocellulose.
The difference is in degree and not in kind, and in may opinion the product is not broadly patentable. Union Paper Collar Co. v. Van Deusen, 23 Wall. 530, 560, 563, 23 L. Ed. 128; Hotchkiss et al. v. Greenwood, 11 How. 248, 266, 267, 13 L. Ed. 683; Smith v. Nichols, 21 Wall. 112, 118, 119, 22 L. Ed. 566; Milligan & H. Glue Co. v. Upton, 97 U.S. 3, 4, 6, 24 L. Ed. 985; Rubber-Coated Harness-Trimming Co. v. Welling, 97 U.S. 7, 10, 12, 24 L. Ed. 942.
Plaintiff relies strongly on General Electric Co. v. Laco-Philips Co. (C.C.A.) 233 F. 96; General Electric Co. v. Alexander (C.C.A.) 280 F. 852; and General Electric Co. v. P.R. Mallory & Co. (C.C.A.) 298 F. 579.
These suits were based on the Just and Hanaman patent on tungsten electric light filament.
I cannot agree with counsel for the plaintiff that in Just and Hanaman's time the idea that tungsten would be a good thing to use, if a filament could be made of it, was old. As I understand it, the properties of tungsten were not known at that time, and it had been passed over in an intensive search for new filament. General Electric Co. v. Laco-Philips Co. (C.C.A.) 233 F. 96, 101. Pure homogeneous tungsten did not exist, and no one knew what could be accomplished with it as an incandescent filament.
De Lodyguine had unsuccessfully experimented with tungsten as a filament, but not with pure homogenous tungsten.
Under these conditions the belief, which was only a guess, came to Just and Hanaman, that tungsten might have valuable characteristics as an incandescent filament, if it could be produced in a pure and homogeneous state. They produced a pure homogeneous tungsten filament, and their patent for the product, however made, was sustained.
This is not the case in the instant suit, where it was commonly known in the art that lower viscosity nitrocellulose would produce a better lacquer because of its increased covering power, and those cases do not seem to me to be in point.
Evidence was offered in this case which plaintiff contends shows great commercial value of the Flaherty lacquer, and even if that be assumed as due to the Flaherty process, which I do not, that does not prove invention of the product. General Electric Co. v. Cooper Hewitt Electric Co. (C.C.A.) 249 F. 61, 70, 71.
Whether the Pitman method was an invention or not, it was not Flaherty's invention, and the lacquer made of the nitrocellulose, whose viscosity is reduced by that method, differs only from the old lacquers in the increased ...