Hanovia Chemical & Mfg. Co. v. David Buttrick Co.

• Decision Date: 02 July 1941
• Docket Number: No. 310.,310.
• Citation: 39 F. Supp. 646
• Parties: HANOVIA CHEMICAL & MFG. CO. v. DAVID BUTTRICK CO.
• Court: U.S. District Court — District of Massachusetts

39 F. Supp. 646

HANOVIA CHEMICAL & MFG. CO. v. DAVID BUTTRICK CO.

No. 310.

District Court, D. Massachusetts.

July 2, 1941.

Harrison F. Lyman, of Boston, Mass., for plaintiff.

Robert L. Thompson and Roberts, Cushman & Woodberry, all of Boston, Mass., Leonard A. Watson, C. V. Johnson, E. R. Helferich, and Watson, Bristol, Johnson & Leavenworth, all of New York City, for defendant.

FORD, District Judge.

This is a patent infringement suit seeking an injunction and accounting for profits and damages. The defenses are invalidity and noninfringement.

The plaintiff is a New Jersey corporation and manufacturer of scientific equipment, including mercury vapor lamps, with a usual place of business in Newark, and the defendant is a Massachusetts corporation operating a dairy in Arlington, Massachusetts. The plaintiff, a manufacturer of ultra-violet ray lamps, is, by assignment, admittedly the owner of United States patent No. 2,001,555, issued May 14, 1935, to Dr. Henning A. Trebler. This patent is designated as a device for the irradiation of milk with ultra-violet rays.

The defendant is alleged, in irradiating milk, to have used a device embodying the invention owned by the plaintiff. This device was manufactured by the National Carbon Company, Inc., of New York (hereafter called the Carbon Company) and known as "Type YN Milk Irradiator." The latter corporation, manufacturer of lamps and arc carbons, is defending the suit.

The Facts.

In 1924, Dr. Harry Steenbock, professor of bio-chemistry at the University of Wisconsin, demonstrated that certain food products developed antirachitic characteristics when exposed to ultra-violet irradiation. Milk is one of the substances. Dr. Steenbock made application for a patent for treating edible products with ultraviolet rays on June 30, 1924, and the patent (No. 1,680,818) was issued August 14, 1928. This patent taught that Vitamin D could be introduced into milk by irradiating the latter with ultra-violet light. Steenbock found that milk itself contained pro-vitamins and these, activated by irradiation, are transformed into vitamin D. The Wisconsin Alumni Research Foundation is the owner and licensor under this patent. As owner and licensor, this Foundation permits no one to sell, or a dairy to use, a milk irradiator until it is approved by dairy experts of the Foundation as capable of producing milk, not only of sufficient vitamin potency, but also of a flavor acceptable to the public. Expert dairymen at the Foundation together with flavor experts from other American universities make the final decision on potency (vitamin D units) and flavor before a license is issued. Periodical tests are made during each year of licensed milk irradiating devices for the purpose of determining that at all times the licensed machines produce milk of proper vitamin D potency and flavor. Proper potency is determined by means of a rat test which it is not necessary to discuss in detail in this opinion. The Foundation maintains a staff of experts for the determination of the cause of flavor troubles which occur at times in all irradiating devices which have been approved by it.

The first apparatus used commercially in the United States for milk irradiation was developed by Dr. George C. Supplee, now director of research for the biological laboratories of the Borden Milk Company, large manufacturers and distributors of milk products in the United States. Dr. Supplee's experiments in irradiating milk began late in 1924 and in 1927 the first commercial irradiation of milk was started. This took place at the Dry Milk Company, Inc., of New York, a producer of dry milk. This company was acquired by the Borden Company early in 1929. In the first commercial installation for irradiating milk at the Dry Milk Company, with which Dr. Supplee was connected, the milk was irradiated in the form of liquid milk and sold in the form of dry milk. The irradiation was done in what was known as a cooler assembly which involved the flow of milk over corrugated tubular coolers of standard construction, with arc lamps positioned before the film of milk during its course of travel over the surface of the cooler. The milk was supplied to the top of the irradiator through a standard feed trough distributor and dropped from the latter onto the irradiating surface through two parallel rows of holes at the bottom of the feed trough. The parallel outlets were so positioned as to permit a flow of film on both sides of the irradiating surface. The milk flowed down the corrugations of the cooler, after a continuous film had been formed, for a distance of about five feet and collected in a trough at the bottom and from there is was redistributed. The milk in this device was in a continuous sheet near the bottom of the flow surface and for some distance above the bottom. This apparatus, exclusive of lamps, is shown in Figs. 1 and 2 of United States patent No. 1,817,936, issued to George C. Supplee, August 11, 1931, on application filed June 2, 1926.

The Borden Company started commercial irradiation and distribution of fluid milk for the general fluid market in Detroit, Michigan, in January, 1933.

On September 21, 1933, Drs. Supplee and Merrill J. Dorcas filed an application for a patent relating to a device and method for irradiating milk which involved particularly a method for producing smooth films over the flow surface. This patent was issued May 28, 1940 (No. 2,202,610). The original apparatus on which the films described in the patent were formed (defendant's exhibit 1) was produced in court at the trial. This apparatus was made early in 1933, between late January and March 1st, on an order of Dr. Supplee dated February 16, 1933. This apparatus was put in operation about a week after its receipt from the maker (February 21, 1933). It was operated frequently thereafter. The general purpose of this patent was to obtain uniform smooth flowing films over a flat surface that could be varied in the amount of milk delivered per horizontal inch of film. The patentee stated: "In the irradiating liquids it is important that the effect of the radiant energy be uniformly produced throughout the liquid and that this effect be produced to the proper degree. * * * It is equally desirable that no substantial portion of the milk be excessively exposed to the ultra-violet energy because such excessive exposure would produce undesirable changes that would not be counteracted by dilution with unexposed milk. Examples of such undesirable changes are the formation of undesirable flavor or odor * * *." Dr. Supplee obtained from the apparatus described in this patent a "smooth flowing film of mirror-like surface" horizontally and vertically continuous. This patent shows a two-inch pipe-form distributing chamber provided with a narrow slot. The distributing chamber is fed through the end. The slot is on the side of the distributing chamber. The fluid to be irradiated flows from the distributing chamber through the slot onto and down a smooth flow-board. In addition to the operations of the patentees themselves at the Borden Company, others used the apparatus described in work that involved flowing films of milk at different volume capacities with exposure of the films to ultra-violet rays. The samples obtained were tested for vitamin D potency.

In March or April, 1933, Dr. C. E. Greider of the National Carbon Company commenced to use the original apparatus in work that involved the determination of the transmission of different wave lengths or bands of wave lengths of ultra-violet irradiation transmitted through flowing films of different capacities. On or about November 2, 1933, a Mr. H. P. Fell, Assistant Chief Engineer of the Borden Company and formerly of the Dry Milk Company, had a detailed drawing made of another unit of the general type of construction shown in this patent. This drawing was made at the Borden Company engineering department, New York City, New York, for experimentation on the flow of milk. The drawing showed the presence of a new element, a vertical piece of metal projecting from the top level of the distributing trough for the purpose of avoiding or suppressing whirls or eddies in the film as it fed into the slot of the trough before proceeding down the flow-board. Dr. Supplee had proposed this new element. This element is commonly called a baffle, a plate, a wall, or screen used to check or regulate the flow of liquids. The baffle extended below the slot of the opening through which the milk flowed from the trough. The flow-board of this device was 20½ inches long and 18½ inches wide and the top edge of the flow-board, which formed a weir between the baffle and the flow-board, was 1/8 of an inch thick. The baffle was also 1/8 of an inch in thickness. A device similar to that in the drawing was constructed and tests run on it in New York State, on December 12, 1933. One of the purposes of the baffle in this device, the evidence showed, was to take out any turbulence from the milk, before it flowed through the slot. The evidence further showed that this device produced a smooth film of milk covering the full width of the flow-board with no observable foam or foreign matter on the latter. In order to regulate the flow of milk, this device contained a removable and adjustable plate in front of the baffle for the purpose of increasing or decreasing the slot through which the milk flowed onto the board. No patent application was filed on the apparatus shown in this drawing.

Subsequent to this time, the Borden Company was instrumental in having a device constructed embodying this trough and baffle arrangement shown in the drawing made at the instance of Fell. It was built by the Creamery Package Manufacturing Company, of Chicago, Illinois. This device was operated commercially at Norwich, New York, at one of the plants of the Borden Company. In 1933, the Creamery Package Company began the sale of a cylindrical type...