The opinion of the court was delivered by: BYERS
The interlocutory decree in this case bears date of March 3, 1934, and is based on the decision (5 F. Supp. 961) that plaintiff's patent as to claims 5 and 10 is valid (they being the only claims in litigation) and had been infringed. Sixty days later, and after the time to appeal from that decree had been allowed to lapse, the defendants made three motions which were heard together,
(a) To open the record and add a patent.
(c) To dismiss the bill because the disclaimer filed by plaintiff prior to the trial was directed only to the claims in litigation.
For convenience these motions will be treated together.
(a) The patent sought to be added to the record is No. 1,869,042, issued to Bengston, July 26, 1932, about eleven months before the final hearing herein was brought to a close. It is not attached to the motion papers, but a copy was filed with defendants' brief, and as there is no question concerning the plaintiff's ownership of that patent, it has been read and considered as though physically embodied in the moving affidavit.
In the latter it is stated that although the defendants knew of this patent at the trial, they were not then prepared to accept its teachings as correct, but experiments since conducted by them, or one of them, have established "that the coating produced in the sulphuric acid electrolytes is basic aluminum sulfate (not aluminum oxide) and this patent of plaintiff now becomes important, as it reaches the same conclusion." That because the motion to reopen, made in connection with the principal argument of the cause, was denied, and the motion papers pertaining thereto, by stipulation, were to be incorporated in the record, the same status should be accorded to this patent.
Stated otherwise, it is a motion to amend the motion to reopen, by adding something thereto which was known to the defendants a the trial.
The defect in the reasoning is more significant than in the practice.
It is not the Bengston patent which was in litigation, and manifestly it was neither in the art prior to Flick (filed July 10, 1923, issued February 10, 1925), nor did it anticipate the latter. Consequently, its only possible relevance is to fortify the defendants' contention that since the latter employ a sulphuric acid electrolyte, as does Bengston, who says, in describing the characteristics of the anodic film produced by his process: "I attribute this high adsorptive power in part to the large amount of fixedly contained SO, or basic aluminum sulfate, as the case may be. This basic sulfate is in a form resisting action by cold water and it is extremely active as an adsorbent. In the article of the present invention, the fixedly held SO may range between, say 16 per cent. and 23-24 per cent. of the coating. Using weaker sulfuric acid than 1.5-1.7 specific gravity, it is not possible to fix as much SO, and the adsorptive properties are not as good" -- it follows that the defendants' expert Handy must be right in his statements in the motion to reopen, that the defendants' process produces a coating which "is aluminum sulphate, a definite chemical compound," and therefore the motion to reopen was improperly denied.
Giving to this argument the greatest latitude of plausibility, it comes down to this, that because Bengston's coating is from 16 to 24 per cent. aluminum sulphate, Handy must be right, assuming that he does say that the defendants' coating is aluminum sulphate. And that this is so, although at the time of trial the defendants did not believe Bengston.
The major premise of the defendants will be seen to be that Bengston is right. Whether this is so or not cannot be decided in this case. If he is, his film is correctly described as to one-quarter of its constituency, and as to the remaining three-quarters he makes no assertion.
For present purposes it is assumed that Handy now says that the defendants' film "is aluminum sulphate" and Frary says that it is not. By each statement the court has assumed that the predominant constituent is that which determines the chemical identity of the substance, for ordinary or court-room purposes, and that each witness implies that other constituents are present, but not in sufficient volume to discredit the nomenclature employed. But the precision of the identity of the defendants' film is neither aided ...