The opinion of the court was delivered by: KNIGHT
This is an action for a judgment declaring United States patent 2,459,764 invalid and void and that plaintiffs have not infringed its claims. Defendant counterclaims against plaintiff National Lead Company, alleging infringement and demanding an injunction, accounting and costs.
Plaintiff Chemical Construction Corporation is a Delaware corporation. Plaintiff National Lead Company is a New Jersey corporation. Defendant is a New York corporation, having its principal office at Buffalo in this District.
The patent is entitled 'Purification of Native Sulfur', was applied for June 14, 1945, and issued to Frank M. Yeiser January 18, 1949. By mesne assignments it is now owned by defendant. It makes two claims. Defendant now admits that only claim 1 is being infringed. This claim as set forth in the complaint reads as follows:
'1. A method of purifying raw native sulphur containing contaminations including dirt particles, sulphuric acid and moisture but free of such contaminations as arsenic and antimony which consists in mixing with said sulphur an acid-neutralizing material chosen from the group consisting of oxygenous compounds of calcium and barium, the chosen material being added in a state in which it is capable of combining with sulphuric acid and moisture contaminations in the sulphur with the production of products which are insoluble in molten sulphur, the quantity of material which is added being in substantial excess over quantity required for combination with said acid and moisture contaminants and thereupon conducting the sulphur in a molten state through a filter consisting in part at least of an acid-reactant metal whereby the sulphur contaminations and the added neutralizing material in combined and uncombined state are removed from the molten sulphur conducting said contaminated sulphur.'
Defendant in its brief urges: 'The last four words of claim 1 should not be in the patent, as they are in a misprint on the part of the Government Printing Office' and relies on Plaintiff's Exhibit No. 2.
The complaint alleges that Frank M. Yeiser, designated as the inventor of the patent in suit, was not the original and first inventor because his alleged invention was anticipated in the following three patents:
No. Patentee Date
1,396,485 E.F. White November 8, 1921
1,918,684 E.E. Bragg July 18, 1933
1,970,147 S.I. Levy August 14, 1934
It is further alleged that every material and substantial part thereof was disclosed in a published article by Bacon and Fanelli entitled 'Purification of Sulfur' in Industrial and Engineering Chemistry, Vol. 34, pages 1043-1048 (Sept. 1942).
In an amendment to the complaint it is alleged that every material and substantial part of the Yeiser process was in public use by Duval Texas Sulphur Company at Orchard, Texas, more than one year prior to filing the patent application.
In a further amendment it is alleged that the patent is invalid '10(g) Because for the purpose of deceiving the public the description and specification filed by the said Frank M. Yeiser in the United States Patent Office was made to contain less than the whole truth relative to his alleged invention, or more than is necessary to produce the desired effect.'
The contention of the parties in this suit is well summarized at the conclusion of their briefs.
Plaintiffs say: 'It is submitted that the patent in suit is invalid. It was improvidently granted by the Patent Office in ignorance of the actual state of the art and on the basis of misrepresentations by the patentee. The totally undisputed evidence of the prior art now before this Court proves that the subject matter of the patent was both obvious and old, and that the claims are not infringed.'
Defendant says: 'The evidence is clear that the presumption of the validity of the Yeiser patent by reason of its issuance by the Patent Office, has not been overcome by the plaintiffs in this action and therefore both claims 1 and 2 of said patent are valid. The showing of the infringement by National Lead Company by reason of its use of the process at the Sayerville plant at New Jersey, is clear and the process as practiced there constitutes an infringement of claim 1 of the patent.'
Claim 2 is substantially the same as claim 1 except that it substitutes after the words 'acid and moisture contaminants' these words- 'and thereupon conducting the contaminated sulphur while molten through a filter consisting of a metallic screen coated with pulverant filter-aid material, the latter including an acid-neutralizing of the class hereinabove indicated, whereby the sulphur contaminations and the added neutralizing material in combined and uncombined state are removed from the molten sulphur.'
The facts relative to the alleged infringement of claim 1 by National Lead Company have been stipulated in writing by the attorneys for the parties.
The patent in suit is a process patent. 'A patentable process is a method of treatment of certain materials to produce a particular result or product.' Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245, 255, 48 S. Ct. 474, 72 L. Ed. 868, quoted by this court in Aeration Processes v. Walter Kidde & Co., D.C., 77 F.Supp. 642, 644.
The patent involves only methods for the 'purification of native sulfur' and does not concern the manufacture of sulfuric acid. The claims are limited to 'purifying raw native sulphur containing contaminations including dirt particles, sulphuric acid and moisture but free of such contaminations as arsenic and antimony.' They both involve the sue of 'an acid-neutralizing material chosen from the group consisting of oxygenous compounds of calcium and barium' and a filter. No drawing accompanied the patent application.
In the description of his process, Yeiser alleges: 'Industrial storage and handling methods as applied to native sulphur derived from underground deposits or the like invariably subject the sulphur to various soil contaminations requiring the sulphur to be subsequently cleaned prior to use thereof as for example in the manufacture of sulphuric acid by the so-called 'contact' process. The contaminations referred to will often include appreciable quantities of dirt and cinders and rust and organic matter and other debris resulting from exposure when openly piled in stock yards and/or transferred in railroad cars and the like * * * . Incidental to storage and transportation the native sulphur also becomes exposed to oxidation and moisture absorption sufficient to produce therein varying amounts of free sulphuric acid.'
The fact that weathered sulfur contains small quantities of sulfuric acid had been known for many years. In the application for the White Patent No. 1,396,485, filed February 25, 1920, the inventor states: 'When sulfur is exposed to the atmosphere it generates sulfurous acid and sometimes sulfuric acid due to the chemical reaction between the sulfur and the air or moisture, thereby unfitting it for many commercial purposes such, for instance, as in vulcanizing processes and it is for the purpose of removing the objectionable acid from the sulfur that I have devised my present invention.' That patent was issued November 8, 1921. In the 11th edition of the Encyclopedia Britannica, published in 1911, sub voce Sulphur, it is said: 'It should be noted that the oxidiation of sulphur itself by atmospheric influence may give to sulfuric acid, which in the presence of limestone will form gypsum.' Vo. XXVI, p. 61. The same fact was noted in old standard chemical textbooks offered in evidence by plaintiffs. The oldest of these- Bloxam's 'Chemistry Inorganic and Organic,' published in 1895 (8th ed.)- states: 'Finely divided sulphur, especially sublimed sulphur, is gradually oxidized and converted into sulphuric acid when exposed to moist air.' p. 207.
In the description of his process, Yeiser further alleges: 'More specifically, the invention contemplates for the initial step addition to the raw molten sulphur of an acid neutralizing and dehydrating material such as is adapted to react with acid and/or moisture contaminations in the molten sulphur to produce only insoluble salt by-products * * * . It has been determined, for example, that material such as barium oxide; barium hydroxide, barium carbonate; calcium oxide; calcium hydroxide; calcium carbonate; and the like may be successfully employed for the purposes hereinabove set forth * * * . Materials such as the above are adapted to neutralize any free acid in the molten sulphur and to free any excess moisture therein while producing only insoluble salt by-products such as will be retained upon the filter cake of the filtering unit to which the treated sulphur is subsequently fed.'
Barium and calcium are alkali earth metals and unite with sulfuric acid to form insoluble salts. This fact was well known to chemists long before Yeiser applied for his patent.
Dr. Brooks, chemical expert who testified for plaintiffs, submitted a statement showing the reactions of calcium oxide (quick lime), calcium hydroxide (hydrated lime) and calcium carbonate (limestone) with sulfuric acid. In all three cases calcium sulphate is formed- a highly insoluble solid. Defendant's 68 year old chemical expert Whitney admitted on cross-examination: 'Q. How long has it been a part of your common knowledge that lime would neutralize sulphuric acid? A. Almost since I was out of school.' On the trial no stress was laid on the barium neutralizers. Dr. Brooks said: 'The lime either as quick lime or hydrated lime or as ground limestone is very, very much cheaper than any of the barium compounds which have to be manufactured.' In the alleged violation of the Yeiser patent only hydrated lime was used.
The next step in the Yeiser process is the filtering of the molten sulfur to which the neutralizer has been added. In his description, Yeiser says: 'In accord with the method of the present invention the molten sulphur which has been chemically treated as explained hereinabove is next passed through a filtering device comprising a metallic screen which in some instances will preferably carry a filtering cake composed of some suitable fibrous material. The filter screen structure may be of any desired physical form and arrangement, and the filtering cake material may be of any suitable type of which several suitable forms are presently available on the market. For example, the cake material may comprise diatomaceous earth or any other chemically inert and pulverant material having suitable filtering characteristics. The molten sulphur will be thereby cleared of all solid impurities such as dirt or other soilage initially present or picked up therein during the storage and transportation of the sulphur prior to delivery for its intended use, and the molten sulphur passing through the metallic screening device will be free from corrosion producing acid while the insoluble salt by-products of the chemical treatment hereinabove referred to will become lodged upon the filter cake in such manner as to supplement the latter as a filtering medium.' He then asserts 'that the method of the invention renders employment of metallic screening or filtering devices to be highly practicable * * * and greatly reduces maintenance costs in such processes and time losses otherwise expended for repair and/or renewal of corroded equipment.'
In the Bragg Patent No. 1,918,684, issued July 18, 1933, and claimed by plaintiffs to be anticipatory, the inventor in his application filed May 1, 1929, states: 'Heretofore, sulphur has been melted by the passage of steam through steel coils placed within the pot or vessel in which the sulphur is melted. Such melters require frequent replacement of the steel coils, for in operation the coils become corroded and leaky within a relatively short period. I attribute this corrosion to the presence of weak sulphuric acid in the sulphur, since the corrosive action is particularly paid when the sulphur contains moisture and the coils are not entirely immersed in the molten sulphur.'
Bragg, however, did not propose to eliminate the corrosion by adding an alkali neutralizer to the molten sulfur. He continues: 'One object of this invention is to provide a melter not involving steel coils and which is of rugged construction, is not corroded or otherwise deleteriously affected in operation and which is adapted to continuously and efficiently melt the sulphur charged thereinto.' Although plaintiffs' Dr. Brooks testified that hydrated lime 'has long been known and is probably the best known neutralizing agent for acids in general', Bragg did not use it in his invention.
The Levy Patent No. 1,970,147, issued August 14, 1934, cited by the Patent Office and claimed by plaintiffs to be anticipatory, is entitled 'Method of Treating Recovered Sulphur.' It does not relate to 'raw native sulphur'. The English inventor, in his application filed in the United States January 22, 1931, says: 'The sulphur obtained by physical methods from deposits of the native element contains generally only small proportions of mineral impurities, usually calcium sulphate or siliceous material. Sulphur recovered by metallurgical or chemical treatment of sulphide minerals, in which sulphur does not occur in the uncombined condition, on the other hand, is usually associated with more objectionable impurities, such as compounds of the heavy metals and of ...