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E. I. Du Pont De Nemours & Co. v. Glidden Co.

CIRCUIT COURT OF APPEALS, SECOND CIRCUIT


November 13, 1933

E. I. DU PONT DE NEMOURS & CO.
v.
GLIDDEN CO.

On Rehearing.

Per Curiam.

We have again examined the record as to Doerflinger's prior use in 1913-1919, and are still of opinion that it was not adequately proved. We may assume that he did on occasion reduce viscosity below Flaherty's limit, but what he used, except experimentally, was solution 415, and the viscosity of that is most uncertain. Doerflinger used acetic acid to stop the reaction of ammonia, the reducing agent; the more ammonia that combined, the greater the reduction in viscosity. He added enough acetic acid to neutralize two-thirds of the ammonia; and after its addition the solution was neutral, not acid. The defendant's experts allowed either all the ammonia, or much more than a third to combine; Schlatter, one of plaintiff's witnesses, after adding the amount of acetic acid specified by Doerflinger, found that the result was acid; more than a third of the ammonia had been used. Naturally there was a greater reduction of viscosity. Clark, the other, did not test to see whether the solution was neutral or not. Moreover, the temperatures of Doerflinger's experiments could not be reproduced, as they were not accurately measured at the time, and, besides, his memory was not reliable after nearly twenty years. Therefore, whatever Doerflinger did, it is not definitely proved that he discovered a lacquer suitable in other respects, and of thick covering, produced by keeping within 4.6 seconds' viscosity. If in his experiments he chanced upon some such, it was not an anticipation, unless he came to rest upon a formula which contained the elements of the patented composition. Lacquer made under formula 415 made no impression upon the art, either by its appearance or disappearance; and it is improbable that this would have been so, had it been that composition which in 1921 was at once recognized as a new and important advance. This circumstance fortifies our doubts as to the identity of the two, as it did before.

As to Bacon's use, it is clear that, regardless of Flaherty's date of invention, Admantine X was not the patented product. It was the culmination of a series of experiments originating in Admantine resin, which Bacon thought would be a substitute for true resins. It contained none, because at that time Given says that they did not believe that ordinary resins could be successfully combined with low viscosity nitrocellulose. Probably in 1919 they had thought that it could, but the results had not been satisfactory, and, when Bacon took up the investigation again in July, 1920, they did not believe that he had yet solved the problem, certainly as to wood finishes. As to lacquers of other kinds, if indeed the difference is as important as the defendant would have us believe, his results, judging by his reports, were still experimental and somewhat equivocal. For example, the report of October 27, 1920, was based upon high viscosity nitrocellulose, with which they were therefore still working. We cannot regard all this, taken with the later omission of all resins, as compatible with more than tentative earlier results. Besides, the declarations of the Atlas Company itself, when Viscolac appeared, ought to lay any doubt that what Bacon succeeded in producing was not Flaherty's lacquer.

Upon the issue of invention we have little to add to what we said before. Except for claim 1, all the claims are for compositions of nitrocellulose and resin; most of them with a softener added. The invention, so far as we need consider it, is not for a low viscosity nitrocellulose; not even for a lacquer made of low viscosity nitrocellulose. Our emphasis upon the new element in our opinion has apparently misled the defendant into supposing that we thought the patented lacquer was only a nitrocellulose product. It was not; it was a lacquer made with gums or resins, and normally with a softener. Bacon at least had been led away from such a lacquer, as we have just said; he thought that it would not be tough, hard, and adhesive. Whether the art generally supposed so, does not appear, but such a lacquer with great covering power would have got wide acceptance. If Flaherty did no more than disabuse the art of a misconception, it is evidence of originality; most of us persist in what we are accustomed to believe. Though all he did was to carry forward the existing knowledge that lower viscosity would result in greater coverage, other competent persons had tried to use that knowledge; the stimulus to success was great, and the art had been either strangely inert, if the combination was obvious, or else obsessed with a belief that low viscosity was impracticable. The result was a new and unexpected product, recognized as such, and used to much advantage. We know of no rigid doctrine, divorced from those practical considerations which rightly or wrongly are basic in the patent law, that forbids to such an advance the name of invention. If authority is needed, Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245, 48 S. Ct. 474, 72 L. Ed. 868, will serve. There it was known that by degenerating starch its absorptivity would diminish. All Perkins did was to stop the process before it became dextrine, which gave bad adhesion; and that was an invention, though he did not claim it. The situation is here reversed; instead of stopping a known process to get a new result, Flaherty extended one. That his limit is not absolute is no objection; though at first hazy as to the precise boundaries, he had always fixed a safe upper limit, and that was enough. Nor do we agree that, at least on this record, we were wrong in saying that there is a lower limit to which viscosity should not extend; it is true that the resulting brittleness can be corrected, but there is at least some evidence that the necessary softeners make the lacquer impracticable. In any case, the point is unimportant, for no lower limit is necessary to the validity of the patent, and we have not found that there was any.

We did not mention Carlsson and Thall's patent, because it seemed to us irrelevant, since it added nothing to Bacon's work. The specifications are only for the preparation of low viscosity nitrocellulose. The last two claims, which were borrowed from Bacon, do indeed imply that such nitrocellulose may be used for lacquers; but the question whether the nitrocellulose described was to be used alone, or made an ingredient with resins and the like, is left wholly at large. This at best left the art just where Bacon's own experiments left it. Unless we beg the whole question by assuming that the unanswered question was unimportant, the disclosure was irrelevant; and, even if we do not, it would scarcely be full enough.

We cannot see that Underwood v. Gerber, 149 U.S. 224, 13 S. Ct. 854, 37 L. Ed. 710, affects the validity of claims 12 and 17; it did not hold that a single patent might not contain claims both for a composition of matter and for articles in or on which it was used. It is not indeed apparent how a patentee gains anything by such claims; the article is already covered by claims for the composition, if it contains the composition. On the other hand, though such claims may be idle, they do not expand the monopoly, which covers all uses of the composition anyway.

We failed to notice that the disclaimer included lines 2 to 9 of page 3, but the argument is stronger with these out.

We adhere to our original decision, and the decree is reversed.

19331113

© 1998 VersusLaw Inc.



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