The opinion of the court was delivered by: KNIGHT
This suit is for the infringement of U.S. Patent No. 1,892,258, issued to I. G. Farbenindustrie Aktiengesellschaft, assignee of Hanns Ufer. The only question at issue here is whether by virtue of the provisions of Section 4887 of the U.S. Revised Statutes, U.S.C.A. Title 35, § 32, the patent is invalid.
The first paragraph of that section provides that no patent shall "be declared invalid by reason of its having been first patented * * * by the inventor or his legal representatives or assigns in a foreign country, unless the application for said foreign patent was filed more than twelve months * * * prior to the filing of the application in this country." The second paragraph of the same section makes the filing date of the foreign application the effective filing date of the U.S. application, provided that the two applications are "for the same invention" and provided there are less than twelve months between their filing dates. Counsel differ as to the meaning and purpose of these paragraphs. The defendant urges that the first paragraph is purposed to "insure the expiration of a U.S. patent at a date not substantially later than the expiration date of the corresponding foreign patent". Plaintiff denies that it has any such purpose or effect. Defendant submits that the second paragraph relates only to the giving to the applicant the benefit of a foreign filing date for the purposes of a priority contest, or to enable him to overcome a publication. The plaintiff takes issue with this and urges that the two paragraphs are in effect different expressions of the same thing. However, the question of any difference in any way in the effect of these two sections makes no difference with the conclusions herein made.
The patent in suit, No. 1,892,258, was issued December 27, 1932, on application S.N. 421,596, filed January 17, 1930. The claim here made is that it is invalid under section 4887, supra, in view of the German Patent No. 529,557, asserted to be for the same invention, patented in a foreign country, by the U.S. inventor's representatives or assigns, and for which the application was filed more than twelve months prior to the filing of the application for the U.S. Patent No. 1,892,258.
The critical questions to be determined here are whether the United States Patent and the German Patent are for the same invention and when the effective filing date of the application for the German Patent was.
The first German application with which we are concerned is S.N. I 35,266, filed August 15, 1928. An amendment adding Example 3 was filed January 24, 1929, an amendment adding Examples 4 and 5 and Claim 3 was filed December 20, 1929, and amendment re-writing the specification, adding Example 6 and omitting Claims 2 and 3, was filed July 29, 1930, and the publication of the grant as No. 529,557 made July 2, 1931.
On December 20, 1929, the same date on which the patentee filed his second amendment to the application of August 15, 1928, a second German application No. S.N. I 40,202 was filed. This second German application was not prosecuted to a patent. On July 15, 1929, or within twelve months from the date of the filing of the original application S.N. I 35,266, Ufer U.S. application S.N. 378,586, was filed. This application was abandoned. The application for the patent in suit states that it is a continuation in part of the application Serial No. S.N. 378,586.
The subject matters of concern here are processes for the modification of castor oil -- one to make it soluble or miscible with mineral oil and usable as a lubricant, and one to make a drying oil, such as might be used in the paint and varnish arts as a drier, as is linseed oil. Castor oil, as such, is not a lubricant nor is it a drying oil. Though there is no water in castor oil, the modification processes are said to be obtained by "dehydration". By treatment with certain catalysts the chemical structure is changed in this process and water is formed which passes off as steam. Castor oil contains hydroxyl groups and hydrogen. If one of the hydroxyl groups, with a corresponding hydrogen atom, is split off through the action of the catalyst in the process employed, castor oil miscible with mineral oil is formed; if all, or three of the hydroxyl groups with the hydrogen atoms, are split off, a drying oil is produced.
Is the U.S. Patent No. 1,892,258 for the same invention as the German Patent No. 529,557? It is thought it is. The title of Ufer U.S. Patent No. 1,892,258 is "Improvement in the Production of Modified Castor Oil." The title of the German Patent No. 529,557 is "Process for the production of oils soluble in mineral oils from castor oil." Both state that the modification is affected by heating in the presence of certain compounds which serve as catalysts; all the catalysts mentioned in the German patent, except sulfuric acid, are found in the suit patent; both patents state that upon continuing the heating of the castor oil with the catalysts, further modification takes place and an oil with drying properties results. Both patents set out certain examples which are substantially identical. Both patents disclose that by heating with the catalysts under certain conditions castor oil is dehydrated and water evolved; that when from two to three per cent of the weight of the oil has been distilled off in this manner, castor oil is generally miscible with mineral oil; if heating is continued 3 molecular proportions of water can be removed from each molecular proportion of castor oil and drying oil can be produced; that the treatment is most effective if conducted under vacuum or flow of gas; that the operating temperature is under 350 degrees C. The catalysts employed in the U.S. patent are described as "acid compounds of the non-oxidizing mineral acids containing oxygen" and suitable catalysts are specifically indicated in the examples of the patent. The German patent includes compounds of non-oxidizing mineral acids as to another type of catalysts. The German patent includes a single claim. It is broader than the suit patent. It includes as catalysts the acid compounds described in the U.S. patent and also the oxides which are not disclosed in the latter patent. The patent in suit includes only acid and acid compounds of certain types. Both describe with comparable likeness the method of the use of the materials, the kind and the amount.
Obviously, these patents are not identical. It is not necessary that they be. Sawyer Spindle Co. v. Carpenter, C.C., 133 F. 238; Commercial Acetylene Co. v. Searchlight Gas Co., D.C., 197 F. 908; Siemens v. Sellers (Guarantee Ins. Trust & Save-Deposit Co. v. Sellers), 123 U.S. 276, 8 S. Ct. 117, 31 L. Ed. 153. The test is whether the United States patent would be infringed by the German patent. Commercial Mfg. Co. v. Fairbank Canning Co., 135 U.S. 176, 10 S. Ct. 718, 34 L. Ed. 88.
The heading to the United States patent includes this statement: "Application filed January 17, 1930, Serial No. 421,596, and in Germany August 15, 1928." The first paragraph of the United States patent reads: "Application has been filed in Germany August 15, 1928." The German patent in the specifications reads: "Be it known that I, Hanns Ufer, * * * have invented new and useful improvements in production of modified castor oil, for which I have filed application in Germany I 35,266 August 15, 1928", and it further reads: "Application has been filed in Germany August 15, 1928." While not conclusive, these statements are significant as to the understanding of the patentee that the patents were the same.
Is there continuity between the first United States application S.N. 378,586 and the application for the patent in suit? If so, the patent in suit is entitled to the benefit of the filing date of the first United States application, and this filing date would be within twelve months of the filing of the original German application.
The patent in suit recites that "the present application is a continuation in part of the application Ser. No. 378,586, filed July 15, 1929." The disclosure of the first United States application was, in general, the same as that of the original German application. Such disclosure was a process for the production of a modified castor oil miscible with mineral oil. The process involved heating of castor oil both with the oxide type of catalyst and in addition with other compounds. The oxides mentioned as catalysts include aluminum, tungsten, titanium, zirconium, chromium, molybdenum, etc. The "other compounds" mentioned are sulphates, phosphates, silicates, "and the like." The United States patent named the catalysts to be employed as "acid compounds of the non-oxidizing mineral acids containing oxygen, preferably while avoiding the presence of water." It is the claim of the plaintiff that United States application on which the patent was issued is a continuation of the first United States application, which was abandoned, because in the first of the two applications the applicant, as in the first German application, named specific hydrating catalysts which would come within the class of "acid compounds of non-oxidizing mineral acids containing oxygen." It is the plaintiff's claim that the claims of the patent in suit, except 8 to 11, inclusive, and 14, are directly readable on the first United States application and, also, the first German application. It is the contention of the plaintiff that "tungsten oxide", "molybdenum oxide" and "primary sodium phosphate", named in the last-mentioned application, come within the acid compound group, as distinguished from the neutral substance group of such applications.
As showing continuity, the plaintiff further points out that both the patent in suit and the first United States application disclose a process "for the production of modified castor oil"; that in such process "a few percent of weight of oil" of the acid compound is used and that there is the same limitation "in the absence of substantial quantity of an oxidizing agent" and the same method of evacuating the re-action chamber to carry off the water, as steam, and other voluble substances. In my opinion, it is only necessary to determine whether, in the first instance, the first United States application contains any "acid compounds of non-oxidizing mineral acids containing oxygen", and, if so, whether such content makes continuity. There is a sharp conflict as to whether the catalysts, to wit: oxide tungsten, molybdenum and primary sodium phosphate, are acid compounds of the type described. It seems clear to me that the applicant in his first United States application did not intend to and did not have in mind the use of any acid catalysts in his process. As pointed out, this first application followed closely the first German application. It was filed on July 15, 1929, prior to the addition of Examples 4, 5 and 6 to the first German application, on December 20, 1929. These examples for the first time described the use of acid catalysts as distinguished from the oxide. In July, 1929, the patentee had no ...