Permutit Co. v. Paige & Jones Chemical Co., Inc.

• Decision Date: 27 July 1923
• Citation: 292 F. 239
• Parties: PERMUTIT CO. v. PAIGE & JONES CHEMICAL CO., Inc.
• Court: U.S. District Court — Southern District of New York

292 F. 239

PERMUTIT CO. v. PAIGE & JONES CHEMICAL CO., Inc.

United States District Court, S.D. New York.

July 27, 1923

Patents 328-- 1,195,923, for water softening apparatus, held valid and infringed.

The Gans patent, No. 1,195,923, for a water softening apparatus which differed from the earlier experiments in that the filter was separated from a zeolithic bed leaving the latter free so that the particles might 'boil' and freely assort themselves during 'back-washing,' remedying several serious defects in operating previous similar devices, held not anticipated by prior publications, and hence valid and infringed.

James Q. Rice and M. C. Massie, both of New York City, for plaintiff.

Hanz V Briesen, of New York City, for defendant.

LEARNED HAND, District Judge.

This patent having passed the Circuit Court of Appeals for this circuit (Permutit Co. v. Harvey Laundry Co., 279 F 713), it is unnecessary and would indeed be improper for me to reconsider the references which were then before the court. Since the infringement of claim 1, at least, cannot be successfully denied, the case comes down to a consideration of the new references brought forward on this hearing. Before taking them up, however, I may say a word respecting the argument that the plaintiff in the former suit misled the court in maintaining that before the patent in suit, no machine had ever been devised which could produce 'zero water.' The evidence on which this assertion rests is some language in an article which appeared in a German publication 'Technische Rundschau' on January 27, 1909, certain representations made by the German company regarding the 'Aquaril' filter in 1908, and Gans's exploitation of what was probably the patented invention in the spring of 1909. It may be true that the 'Aquaril' filter, which was considered by the Circuit Court of Appeals and found not to be an anticipation, 'performed excellent services.' It may equally be true that a boiler fed by the machine described in the Rundschau was 'perfect in every respect' at the end of three months, and that Gans was making incorrect to say that no machine has ever produced 'zero water' before that here patented. But I do not see that it is a matter of critical consequence, and, if it were, the evidence is rather meager. I may at once throw out Gans's French exploitation of the present machine. It would be relevant for any purpose in this case, only if a foreign use were a valid anticipation. As to the other two instances, while a machine in which the top of the zeoliths is held down by a screen may at times work satisfactorily and produce 'zero water,' it is not in the long run what the art wants, and it will not hold its own with the patent in suit. Granting all that the defendant claims, the result as I view it, is no more than that the claims should not be entitled to so broad a scope as they would otherwise enjoy.

Even after Leister's patent which showed a downward flow of water, the distinctive feature of the invention, on which it may safely rest, is the free surface of the zeoliths themselves, something clearly indicated in the designs of the patent and indeed presupposed in a stirring device such as is described. Claims 1 and 5, moreover, are distinguished by the absence of a sand filter which again involves the free surface of the zeoliths. This feature was not at first understood. The earlier machines, e.g., Feldhoff's, or better Gans's first patent, and (as I shall show) probably Leister's as well, contained the zeoliths by a top screen. But the results were not satisfactory in the respects discussed in Judge Manton's opinion. It is essential for good practice that the particles shall freely assort themselves during 'back-washing' and in a measure too during both purifying and regeneration, so that the smaller shall be in the top layers and the coarser below. This cannot occur if they are held tight, and there result several serious defects in operation, e.g 'channeling,' air pockets, and difficulty in cleaning the zeoliths from slime or dirt.

To ascertain from experience the need of a free surface to the bed was a genuine invention, even if everything else in the machine had been disclosed before. A filter is concededly necessary. The earlier experiments naturally put it close to the bed itself. It took observation and analysis to learn what was the cause of the bad results and to find the remedy. I am therefore by no means disposed to say that there was no invention in separating the filter from the bed and leaving the latter free, so that the particles might 'boil.' It is necessary, however, to examine the references with a view to ascertaining whether any of them show this feature.

First I shall consider Gans's own paper, 'Ueber die Technische Bedeutung der Permutite,' published in April, 1909. ...