Permutit Co v. Graver Corporation
| Decision Date | 23 November 1931 |
| Docket Number | No. 3,3 |
| Citation | 52 S.Ct. 53,76 L.Ed. 163,284 U.S. 52 |
| Parties | PERMUTIT CO. v. GRAVER CORPORATION |
| Court | U.S. Supreme Court |
Messrs. Drury W. Cooper and Allan C. Bakewell, both of New York City, for petitioner.
Messrs. Charles L. Byron and George L. Wilkinson, both of Chicago, Ill., for respondent.
The Permutit Company is the owner of Gans patent No. 1,195,923, for an apparatus for softening water, applied for August 5, 1911, and granted August 22, 1916. It brought, on February 23, 1928, this suit in the federal court for northern Illinois, against Graver Corporation to enjoin infringement of claims 1 and 5. The defendant denied both the validity of the patent and the infringement. The District Court held both claims invalid, 37 F.(2d) 385. The Circuit Court of Appeals for the Seventh Circuit affirmed that decision; and also held that the defendant's 'presently used structures' do not infringe calim 5, 43 F.(2d) 898. Certiorari was granted (283 U. S. 812, 51 S. Ct. 345, 75 L. Ed. 1429), because of conflict with earlier decisions in other circuits. 1
Water is hard because it contains the salts of calcium and magnesium. It may be softented by distillation or by adding to the water certain other chemicals through which the hardening constituents in solution are changed to an insoluble form and precipitated. Such softening may also be effected by the use of zeolite, a hydrated alumino-silicate found in nature. When hard water is passed through zeolites, they give up their sodium to the water, and take from it the calcium and magnesium as a new base. Zeolites have the peculiar quality that, after becoming exhausted in such use, they may be regenerated by passing a solution of common salt through them, whereupon they give up their new base of calcium and magnesium and take back their sodium base. They retain indefinitely these valuable properties.
The chemical attributes of zeolites, and their effect upon hard water, had been known long before the application for the patent in suit. But zeolites were not employed commercially as a water softener because, as then found in nature, they were ill adapted for use in filters, and the expense of mining them was large. Gans invented a process for producing artificial zeolites, and a process of softening water by means of them. The United States patents issued for those inventions had expired before the commencement of this suit, which is upon a patent for an apparatus 'in which the zeolites or alumino-silicates can be used in a filter and be regenerated therein so as to be capable of continuous use for the softening of water.' The essential elements of the water softening process in which this apparatus is employed are the passage of water through zeolites, their regeneration by recharging them with the sodium chloride solution, and the rinsing of them thereafter, so that no noticeable tinge of salt will be found in the filtered water. A drawing was attached to the specification as an example of a filter provided according to the invention claimed.
As described in the specification, the apparatus consists of a cylindrical container within which are 'a number of horizontally disposed perforated plates.' Near the bottom is one upon which rests a layer of sand (or quartz). This supports a bed of zeolites. At some distance above the zeolites is another perforated bed of sand 'through which the water to be softened may be first filtered.' There are piping connections so that the hard water may be run into the casing through the zeolite bed and out to the soft water service line. The chamber is also provided with means for cutting off the hard water and introducing a flow of salt water to regenerate the zeolites; and with means for washing out of the container the contaminated brine and any accumulated dirt. As so constructed, the filter may operate by letting the hard water flow either downward through the upper sand bed to the zeolites or upward to them through the lower sand bed. On March 2, 1920, The Permutit Company disclaimed from the scope of claim 1 any apparatus 'in which the water to be softened is so introduced into the casing that it passes upwardly through said layer of zeolites.' It is conceded that Graver Corporation's 1927 type of water softener does not infringe claim 1, as in it the water passes up- ward. The specification also describes, and the drawing indicates, a modified form of apparatus provided with means for stirring the zeolites in washing. No stirrer is employed in the defendants' apparatus.
First. The apparatus described in the specification closely resmebles sand filters long used. The elements enumerated above, alone and in combination, are confessedly old. The only invention seriously urged under claim 1 is the substitution of a 'free' for a 'locked' zeolite bed; a matter which is not referred to either in the specification or in the claim. In earlier filters, the zeolites had been held in place by locking the bed; that is, by placing a metal screen either immediately over the layer of zeolites or over a layer of burlap or excelsior resting upon them. The occasion for a screen is that zeolite grains are lighter than the sand and gravel on which they rest. In flowing the water or the regenerating solution upward through the zeolite bed in an upflow softener, or in backwashing the zeolites in a downflow softener for the purpose of cleansing them of accumulated slime and dirt, the lighter grains may be washed out through the flow pipe, unless impeded in some way. Gans is alleged to have discovered that a locked zeolite bed is erratic in action and will soon cease to give soft water; that through such a bed the hard water will flow unevenly; that preferred channels of flow will form; that the zeolites contiguous to them will be speedily exhausted and the hard water will pass through unaffected, although the great mass of zeolite material remains unexhausted; and that it is necessary to have an open space above the top of the zeolites in order to furnish opportunity for the zeolites to rise or boil, and to spread out and reform in the bed. The invention relied upon consists in removing the close fitting cover from the zeolite bed and in providing ade- quate rising space by placing the screen at some distance above the top of the layer of zeolites.
We have no occasion to consider whether this alleged Gans invention of a 'free' zeolite bed rises to the dignity of invention or whether, as Graver Corporation contends,2 it lacked novelty, and was anticipated by earlier apparatus and publications; defenses to which the evidence, the briefs, and the oral arguments were mainly directed. For even if a patent for a 'free' bed might have been valid, that sued on is invalid for lack of the disclosure prescribed by Rev. St. § 4888 (35 USCA § 33).3 There is no mention in the specification of either a 'free' or a 'locked' zeolite bed; or of the alleged discovery that a rising space above the zeolite bed is necessary for the successful operation of the softener; or of the need of a device to prevent the lighter grains of zeolite from passing out in backwashing. Nor does claim 1 or claim 5 make mention of a 'free' zeolite bed. Claim 1 is for 'a filter bed consisting of a layer of sand or quartz and a layer of zeolites or hydrated alumino-silicates disposed on the layer of sand or quartz.'4 Claim 5 for 'a filter bed consisting of a layer of zeolites or alumino-silicates, supporting means for said layer.'5 As the patentee has thus failed to give in the specification 'a written description' and has likewise failed particularly to point out and distinctly claim the free zeolite bed, as 'the part, improvement, or combination which he claims as his invention or discovery,' the patent is void.
The question of compliance with the requirement of disclosure laid down by section 4888 was not adverted to in either opinion of the Second Circuit Court of Appeals sustaining the validity of the patent, 279 F. 713, 22 F.(2d) 916; 6 nor was it called to the attention of this court, which denied certiorari in the first case in 259 U. S. 588, 42 S. Ct. 590, 66 L. Ed. 1078. In those cases, both of the district courts seem to have thought that the free surface of the zeolites was indicated by the attached drawing, and to have deemed such indication sufficient, although the matter was nowhere mentioned in the description or claims 274 F. 937, 942; 292 F. 239, 240. The opinion in the second case added that this feafure was necessarily 'presupposed' in the stirring device mentioned in the description as 'advantageous' and included in other claims not now in suit, and that it was 'involved' in the absence from claims 1 and 5 of any upper sand filter. These con- clusions were adopted by the Circuit Court of Appeals for the Sixth...
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