Appeal from the District Court of the United States for the Eastern District of New York.
Before L. HAND, AUGUSTUS N. HAND, and CHASE, Circuit Judges.
This is the usual equity suit for the infringement of a patent for a product; that is, for a lacquer made of nitro-cellulose with oils and resins, and for articles coated with it. Infringement is conceded, but the judge declared all the claims invalid. To an understanding of the case a brief statement is necessary, which may be supplemented by resort to the opinion below. De Nemours & Co. v. Glidden Co. (D.C.) 1 F.Supp. 1007. The base of the lacquer in question is nitrocellulose, a derivative, of cotton, which when dissolved in proper diluents may be sprayed or brushed upon the object to be varnished, or made to adhere to its surface by dipping. As the solvents are evaporable, they disappear with exposure, leaving a coating upon the object which is hard, tough and adhesive, with a smooth glossy finish. The thickness of the coat obviously depends upon the solids left after the solvents have evaporated, principally the nitro-cellulose. The greater the proportion of this to the solvents, the thicker the coat, and an initially thick coat is what is desired, else the operation must be more often repeated. On the other hand, the greater the proportion of nitro-cellulose in the solution, the more viscous it is, and the harder to spray or brush. The optimum is therefore that solution which will contain most nitro-cellulose and remain most fluid. There would have been no problem, if nitrocellulose were all of one quality, in respect of thickening the solution into which it is put. It is not. In some conditions of the substance a given proportion in a solution will thicken it beyond practicable limits; in others, the same proportion will leave it fluid enough for use. This quality is known as its "viscosity characteristic." To achieve a thick coating and keep the solution fluid enough for use, it was essential to produce a nitro-cellulose of low "viscosity characteristic," and undoubtedly the art would have welcomed sued a lacquer before Flaherty's time; indeed, it had tried to find one. It would thicken each covering and avoid several additional coats.
Various processes were known long before the invention by which viscosity of nitrocellulose could be reduced; the patent especially mentioned one of these of recent origin, Pitman. However, as the viscosity is reduced, though the lacquered object will be covered more thickly, the coating becomes brittle and will crack or chip. Oils and other softeners prevent this by making it tough; resins make it stick, though they counteract the action of the softeners, and even with softeners the viscosity must not be too far reduced. The art entirely understood the action of these components and had used them for long. The patent did not pretend to rely upon any of these discoveries, and could not. It gave a recipe for reducing viscosity, and for oils or resins, but laid no claim to it or any part of it. It claimed no more than that to produce an effective lacquer of thick coating quality, the viscosity characteristic of the nitro-cellulose must be below a critical limit fixed in the claims. It left the art to its own devices as to how to reduce the nitro-cellulose to the required viscosity, and how by the addition of oils and resins to make the coat tough and adhesive. The examples or recipes were merely illustrations of how the product could be made; they were not part of the invention and the defendant has not followed them; nor indeed does the plaintiff at the present time. They are present merely to conform to the statute.
There are various ways of reckoning viscosity; for convenience we shall adopt the simplest, which is a scale in seconds. The specifications declare that, by following the examples given, "a 25 to 40%" nitro-cellulose "solution may be obtained having a viscosity below" a stated limit, "being practically the upper limit for any commercial solution which is to be used for coating without thinning" (page 2, lines 25-31). This upper limit, by the scale used in the disclosure, involved in fact nitro-cellulose of different characteristics at the two extremes. The characteristic of the nitro-cellulose of a 25% solution measured by that standard is 4.6 seconds; that of a 40% solution is much lower, between .2 and .5 seconds, according to the amount of sodium acetate used to reduce it. Perhaps Flaherty intended by these words to fix a lower limit of viscosity, but the language is obscure, and his claims suggest nothing of the sort. Yet it is a natural way to read the language to suppose that the 40% solution was indeed a lower limit, in spite of the verbal inappositeness of the phrase. However that may be, he did indicate very clearly in his specifications that the viscosity should not be too low. Thus his first example was of lowering it so far as to be too low "even for most purposes," and of building it back by the addition of higher viscosity nitro-cellulose, "to a suitable working point." Clearly he presupposed that the art would understand what that point was, and that it should not make a lacquer too brittle to be corrected by softeners. The art certainly responded, for it had that knowledge and followed him without difficulty. In these circumstances it appears to us irrelevant that the claims contained no lower limit, as indeed they did not. So construed, is the patent valid?
Upon the appearance of the patented lacquer, under its trade-name, Viscolac, the art very generally followed suit, coming to rest for the most part with "half second" nitrocellulose. Flaherty's work was done in 1920, shortly after the close of the Great War, and at a time when vast stocks of nitro-cellulose were on hand, and when the pressure for its disposal had increased, as well as for some use for the existing plants. This may account for the stimulus to get an effective lacquer of thick coverage, but it does not explain all the facts. The uses of such a lacquer had existed long before, and when it appeared, it largely invaded the field of varnish and in many fields supplanted its use; there is no reason to suppose that if it had been available earlier, it would not have done the same. Furthermore, the art had unquestionably been experimenting with low viscosity nitro-cellulose for a number of years before Flaherty began. In 1913, and thus before the war, Doerflinger, a competent chemist, who later went to the Perry Austen Company, began to work upon low viscosity lacquers. His nearest approach to anything within Flaherty's limits was his formula 415. The technical evidence as to its viscosity, is obscure and baffling. Doerflinger's tests at the time were made by pipettes, and then in only two very thin solutions. The extent to which he reduced viscosity depends upon his testimony; at least there is a dispute as to whether the basis of the experts' experiments, i.e., the defendant's bill of particulars, was the same as that testimony. Doerflinger during reduction neutralized the agent, ammonia, by which he reduced viscosity. There is a dispute as to how far in the duplication of his experiments his moment of neutralization was observed. Upon it the viscosity depended. The evidence being in so much dispute, the severe standard of proof for anticipation was scarcely met in our judgment; but, quite aside from that, we think that the testimony of the art is enough to forbid the conclusion that, whatever viscosity Doerflinger got, he had produced a lacquer such as Viscolac. The Perry-Austen Company was a substantial producer; its wares were sold in quantity. The new lacquer appeared and passed to its customers without comment from them, or any notice of difference between it and the lacquers already on the market; manufacture was discontinued in 1919. When in 1921 Viscolac appeared, it at once commanded the attention of the whole art as something radically new and desirable. Its equal had not yet been available and all recognized that it must be matched. This seems to us at least to throw enough doubt upon Doerflinger's work to put it out as an anticipation. It is explicable of course on the theory that the secret of the success lay in something other than low viscosity. Possibly it did, but the explanation is not forthcoming. It could not have been Hitt's patent for a softener, for Viscolac made its appearance some months before that was used. So far as we can judge, the art had meanwhile received no information for the betterment of lacquer, except the control of viscosity. Why this should not have been earlier taken as critical, especially as the relation between viscosity and coverage was well known, we cannot say; but, so far as we can see, nothing except the knowledge that viscosity must be kept below Flaherty's limit determined the success of the new product. The art apparently had no difficulty in avoiding such reduction as could not be corrected by oils or other softeners.
Our conclusion is borne out by the other evidence. One, Bacon, was a chemist in the employ of the Atlas Company, a large and powerful producer of lacquers. In 1919 this company wished to secure a lacquer of low viscosity and charged Bacon to develop it. An early report, that of July 30, 1919, indicated that he had succeeded; if it stood alone, it might be hard to deny that it was an anticipation of Flaherty, who had not yet begun. But Bacon had been premature in his conclusions. He was diverted to trying out resins and gums, and by August of 1920, by his own admission, had not yet succeeded in making a suitable wood lacquer.It is not necessary to follow his work in detail, for concededly his results in the later part of 1920, and the early part of 1921, are the most important. In December, 1920, he had developed a lacquer of very low viscosity which he used as a resin; it was very sticky and he did not mean to use it alone. To this he added a softener to increase its toughness, but still found that it was too thin. Finally he produced his Adamantine X, in which he did not reduce the viscosity so far as in the resinoid predecessor. Probably, though not certainly, the resulting viscosity was within Flaherty's limit. However, it was probably not satisfactory; there is testimony that it checked and cracked. In any event it appeared in January, 1921, and after Flaherty had developed his own lacquer. Indeed, Flaherty's first sale was in January, 1921, following some trial deliveries in December.
But again it seems to us that we need not depend upon the technical evidence, which, as is so common in chemical cases, is confused and uncertain. As in the case of Doerflinger, whatever Bacon got, it was not Viscolac, which the trade at once recognized as new. The Atlas Company itself was explicit as to this; in its report of April, 1922, it said that "to obtain such a finish in one or two coats with material thinned with an equal amount of thinner had been unheard of in lacquer finishes until Viscolac came on the market." Bacon had not succeeded, and the difficulties were plainly greater than appear from the known relation between coverage and viscosity. Though that was understood, it had not been enough to lead two competent experimenters to success. We have already said that it does not follow that the secret lay only in the critical limit of viscosity; and that it seems, at first blush anyway, rather improbable that this alone should have proved the cue. And yet again, when all the facts are considered, nothing else appears to have changed. The defendant suggests that new and economical methods of reducing viscosity had appeared, as for example Pitman's. But the very process which it uses itself had been patented at least as early as 1910, and while the Hercules Company had not known the earlier disclosures, they were available to the art. An invention must be judged by what was in the public demesne, as well in the inventor's favor, as against him. Nor was there any new discovery in softeners to account for success, as we have already said. True, all that Flaherty did was to carry out what was already known, and by trial and error fix the limit which should be observed. If genius is demanded, surely he was no inventor; rather he was one of those who, taking the knowledge at hand, worked out its implications in the laboratory. There are indeed expressions in the books which, taken literally, would exclude such work from the protection of the patent laws; there are others which would not. But we deprecate such a priori rules for determining invention. Nothing has tended more to confuse and obscure the issue than the attempts of courts to lay down generalities. The issue does not admit of such treatment, for invention is always a function of the particular situation, of the conditions which preceded and followed the appearance of the composition or the machine. That this is a treacherous standard is true enough, but at least it is less treacherous than easy absolutes which fit the immediate occasion, but lie athwart any realistic treatment in the next case. At any rate to this approach we stand committed. O'Rourke Engineering Construction Co. v. McMullen (C.C.A.) 160 F. 933, 938; American Stainless Steel Co. v. Ludlum Steel Co. (C.C.A.) 290 F. 103, 105; Kirsch Mfg. Co. v. Gould Mersereau Co. (C.C.A.) 6 F.2d 793; Dubilier Condenser Corp. v. New York Coil Co. (C.C.A.) 20 F.2d 723, 724; Electrical Engineers' Equipment Co. v. Champion Switch Co. (C.C.A.) 23 F.2d 600, 604; R. Hoe & Co. v. Goss Printing Press Co. (C.C.A.) 30 F.2d 271, 274; United Chromium Co. v. International Silver Co. (C.C.A.) 60 F.2d 913, 916, 917. And we have endeavored in adopting it to follow the implications of the Supreme Court. Webster Loom Co. v. Higgins, 105 U.S. 580, 581, 26 L. Ed. 1177; Potts & Co. v. Creager, 155 U.S. 597, 607, 15 S. Ct. 194, 39 L. Ed. 275; Diamond, etc., Co. v. Consolidated, etc., Co., 220 U.S. 428, 435, 31 S. Ct. 444, 55 L. Ed. 527; Eibel, etc., Co. v. Minnesota, etc., Co., 261 U.S. 45, 68, 43 S. Ct. 322, 67 L. Ed. 532.
The learned District Judge particularly relied upon De Forest Radio Company v. General Electric Co., 283 U.S. 664, 51 S. Ct. 563, 75 L. Ed. 1339, and so does the defendant. That was a case which superficially somewhat resembled the case at bar, and where some of the language, broken from its context, looks in the defendant's favor. We do not think that upon close scrutiny it goes so far as appears. Langmuir, the inventor, had utilized the current knowledge of the art in 1913, to claim as his invention the exhaustion of the occluded gases in a vacuum bulb, by which he reduced its ionization point in use. It was known that the phenomenon of ionization, though in some respects it assisted the development of the current discharge in a radio receiving circuit, made it unsteady and demanded nice adjustment for each bulb. Thus it became desirable to reduce it so far as possible, allowing the electrons to pass in vacuo from the filament to the plate. All this, as we have said, was well known and had been declared in scientific periodicals, especially by Lilienfeld. At the time when Langmuir disclosed his invention, which was merely for a completely exhausted bulb, there was no demand for anything of the sort; the art did not yet need it. Thus Langmuir had merely put in practical form, before they were needed, the scientific discoveries of others; indeed the court thought that De Forest had anticipated him even in that, though this was not its chief reliance. The opinion must be read with this in mind, and when so read appears inapposite. However obvious Langmuir's invention might seem to be, we have no reason to suppose that, had he been the first to succeed of several experimenters, working over a substantial period after the practical need had arisen, he would have failed.
Therefore, we are disposed to regard Flaherty's work in this case as invention. From him dated in fact a contribution whose value cannot be denied; to him must be attributed the first practicable low viscosity lacquers, whose desirability had been known long enough to make them the subject of much experiment; we can discover nothing but the control of viscosity which achieved success, obvious as that may now seem; that information turned out to be enough to direct the art. There may be some illusion in all this, of which we are not aware, but as the case stands, to assimilate his work to mere craftsmanship would be a denial of the facts before us. Moreover, the patent has been recognized by fifty-two manufacturers who have taken licenses. True, this must not be pressed too far; it is easier to pay tribute than to fight, and a substantial part of the trade has combined in this contest. But courts have always treated such recognition as a relevant consideration and certainly it may not be altogether disregarded. Thropp's Sons Co. v. Seiberling, 264 U.S. 320, 329, 330, 44 S. Ct. 346, 68 L. Ed. 708.
Flaherty originally claimed a higher limit of viscosity than 4.6 seconds. Not only was he forced to disclaim after suit brought, claims to 16.2 second nitro-cellulose, but his specifications still contain the statement that "generally" the critical limit is as high as that (page 3, lines 2-9). He was more acquisitive than he should have been, as inventors often are; but that ought not to take away from him his invention, if he made one. The claims in suit are limited to 4.6 second viscosity, and that is what he actually found. The very purpose of the disclaimer statute is to allow retraction, in the absence of bad faith, which is not here asserted. That he should have wrongly guessed that the limit was higher, does not abate from the fact that he has found the actual limit; that which the art has now adopted. He could not be expected to set a definite figure; there is none, for viscosity may vary even below his limit. But he did set that limit definitely, and in a chemical patent that is all that is required. The supposed vacillation in his conception seems to us to be no more than is permissible to one who has in fact discovered a chemical invention of substance, but who is in doubt whether it may not extend beyond his experimental verification. Somewhere no doubt he must set his bounds at his peril, and that he did.
The defence of abandonment we need not consider. The District Judge thought it without merit and so do we. We are content to accept his ...