Chas. H. Lilly Co. v. IF Laucks, Inc., 7083.

• Decision Date: 21 December 1933
• Docket Number: No. 7083.,7083.
• Citation: 68 F.2d 175
• Parties: CHAS. H. LILLY CO. et al. v. I. F. LAUCKS, Inc.
• Court: U.S. Court of Appeals — Ninth Circuit

68 F.2d 175 (1933)

CHAS. H. LILLY CO. et al. v. I. F. LAUCKS, Inc.

No. 7083.

Circuit Court of Appeals, Ninth Circuit.

December 21, 1933.

Jay C. Allen and Weldon G. Bettens, both of Seattle, Wash., for appellants Lilly and Chas. H. Lilly Co.

G. Wright Arnold, Raymond D. Ogden, Clinton L. Mathis, and Ward W. Roney, all of Seattle, Wash., for appellee.

Before WILBUR, SAWTELLE, and GARRECHT, Circuit Judges.

SAWTELLE, Circuit Judge.

On March 27, 1928, appellee filed in the District Court its "Bill of Complaint for Injunction and Accounting of Profits and Damages for Infringement of Reissued Patent No. 16,422 (Originally 1,460,757)," naming as defendants the Chas. H. Lilly Company and Wilmot H. Lilly, its president, as contributory infringers of the patent, and Kaseno Products Company and George F. Linquist, its president, as direct infringers. From a decree in favor of plaintiff-appellee, upholding the validity of the patent and the charge of contributory infringement, the Chas. H. Lilly Company (hereinafter referred to as appellant Lilly Company) and Wilmot H. Lilly (hereinafter referred to as appellant Lilly) have prosecuted this appeal. Kaseno Products Company and George F. Linquist joined in the citation on appeal, but thereafter withdrew and waived the assignments of error filed by them and abandoned their right of appeal, and as to those defendants the decree is final.

Appellee is the owner of the Letters Patent described in its bill (referred to herein as the Johnson patent) by virtue of an assignment thereof, on June 30, 1925, from Otis Johnson, to whom the patent was originally issued on July 3, 1923, as Letters Patent 1,460,757.

The invention of the Johnson patent, as stated therein, "relates to an adhesive formula and the product produced therefrom." The specifications of the patent are as follows:

"I have discovered from experiments that a high class waterproof adhesive, such as so-called glue, may be realized from soya beans, or rather the residue derived from soya beans preferably after the oily content of the beans has been extracted. This residue, I have found, contains a highly valuable adhesive constituent which provides an excellent base for an adhesive formula. One feature of the same resides in the fact that I can use either the residue as a whole, or else to realize a high grade product, I can extract by any suitable means the adhesive constituent of the residue.

"In carrying out the invention, soya beans are first pressed, or otherwise treated, to extract their oily content and the resultant pressed cake is either finely ground, when the whole of the residue is to be used, or else it is treated to extract the adhesive constituent when the high grade adhesive is to be produced. This adhesive constituent, or even the finely ground pressed cake, may be considered as a base for my formula and the same, on account of its adhesive qualities, I will term a tacky substance. I compound the tacky substance with various other agents which may be those commonly used in the manufacture of adhesives, such as hydrated lime and sodium fluoride, the tacky substance and the two agents named being mixed in solution. I, of course, do not confine myself to hydrated lime and sodium fluoride, as any other agents having substantially the same characteristic qualities will be sufficient. In fact, entirely different agents may be used, but I have not as yet experimented further than the agents of this character. The hydrated lime is, of course, a waterproofing solvent, and the sodium fluoride is a so-called liquefying agent; in other words, it prevents the compound from drying out. I have found that the following proportions give satisfactory results: About two and one-half to three parts hydrated lime, one part sodium fluoride, about ten parts of the tacky substance, and sufficient water to make up a solution of the desired consistency.

"The term adhesive, or glue, should not be construed in either the specification or claims as limited to the ordinary accepted meaning of the term, as this tacky substance may be used to advantage in calcimine formulas and other instances where a strong adhesive is not necessarily required.

"I have found in practice that by using this tacky substance I can produce a very cheap adhesive, and one that is far better than any that has been made by heretofore known formulas. Soya beans, or rather the residue may be obtained at a very nominal cost and the treatment necessary to either grind the residue when it is used as a whole, or when it is treated to extract the adhesive constituent, is very simple. Consequently the base for the formula is realized without expensive equipment or other high cost.

"The so-called tacky substance, it shall be understood, only becomes tacky when mixed with water or a suitable solution. It shall be understood that the tacky substance which constitutes the adhesive constituent, after being finely ground, is in the form of dry meal. After this meal is produced, same is then mixed with hydrated lime and sodium fluoride. Therefore, the protein-containing vegetable material, otherwise called tacky substance, only becomes tacky when mixed with liquid, as aforesaid.

"I claim:

"1. An adhesive composition comprising the tacky substance of the soya bean, and an alkali-metal liquefying agent.

"2. An adhesive composition comprising the tacky substance of the soya bean, an alkali-metal liquefying agent, and a water-proofing agent.

"3. An adhesive composition comprising the tacky substance of the soya bean, hydrated lime, and sodium fluoride.

"4. The method of making an adhesive composition which consists in including therein the tacky substance of the soya bean.

"5. The process of making an adhesive composition which consists in extracting the oil from the soya bean, and adding to the residue an alkali-metal liquefying agent.

"6. The process of making an adhesive composition which consists in extracting the oil from the soya bean, and adding to the residue an alkali-metal liquefying agent and a waterproofing agent.

"7. The process of making an adhesive composition which consists in extracting the oil from the soya bean, grinding the residue, and then adding to the finely ground residue, hydrated lime and sodium fluoride.

"8. In a method of making glue, the steps which consist in treating protein-containing vegetable material derived from the soya bean with an alkali metal compound, and lime."

The bill alleged "that plaintiff has manufactured, sold and caused to be used great quantities of adhesive embodying and containing said patented invention, and the same has been purchased and used by the public and generally and extensively recognized by the public as of great utility and novelty, and plaintiff has built up a profitable and valuable business in the manufacture and sale thereof; that upon or to each of the containers or sacks in which the said manufactured material was vended by the plaintiff since the date of the grant and delivery of said Letters Patent and the assignment thereof, there has been marked in plain and conspicuous letters the word `Patented'"; "that defendants have been notified in writing or had knowledge of the grant, issuance and delivery of said Letters Patent and warned not to infringe thereon or to manufacture, sell or use adhesive embodying or containing said patented invention, and said plaintiff had caused to be published in The Timberman, an international lumber journal published in Portland, Oregon, under date of issue September 7, 1925, a notice to the effect that it, the plaintiff, owned patents giving it the exclusive right to the manufacture of an adhesive embodying its patented invention; that notwithstanding said notice and said knowledge said defendants have jointly and severally infringed upon said patents"; that said defendants Kaseno Products Company and Chas. H. Lilly Company have jointly and severally contributed to said infringement by making and selling said infringing adhesive; that said defendant Kaseno Products Company has made and sold adhesive embodying said patented invention, and said defendant Chas. H. Lilly Company has contributed to said infringement by selling to said Kaseno Products Company soya bean material adapted and intended to be employed as a substantial part of the combination invented and patented, "well knowing that said material was to be thus used to manufacture said infringing adhesive and fully intending that it should be so used"; "that said defendants have conspired together to infringe upon said patent rights, and each and all of them refuse to desist therefrom, and intend, unless prohibited by this court, to continue to infringe said Letters Patent" by manufacturing and selling adhesive embodying said invention.

In the amended answer of Kaseno Products Company and George F. Linquist, filed February 28, 1930, it is denied that they had committed, or were committing, any wrongful or infringing acts, and denied that they had jointly or severally infringed the patent; denied that they had made or sold an infringing adhesive or an adhesive embodying the patent invention; admitted that they bought soya bean meal in its regular form from appellant Lilly Company, but denied any conspiracy between the defendants. The answer put in issue the validity of the patent, and denied that said defendants had done any act or thing, or proposed doing any act or thing, in violation of any alleged right, or otherwise, belonging to appellee or secured by the patent.

In the amended answer of appellant Lilly Company and appellant Lilly, filed March 20, 1930, they denied that they had committed any infringing acts and denied that they had been notified or had any knowledge of the issuance of the patent, or had been warned not to infringe; denied that they had contributed to the infringement by Kaseno Products Company by selling soya bean meal adapted and intended to be employed as a part of...