96 F.2d 242 (9th Cir. 1938), 8310, Celite Corp. v. Dicalite Co.

Docket Nº:8310.
Citation:96 F.2d 242, 37 U.S.P.Q. 383
Party Name:CELITE CORPORATION v. DICALITE CO.
Case Date:April 18, 1938
Court:United States Courts of Appeals, Court of Appeals for the Ninth Circuit
 
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96 F.2d 242 (9th Cir. 1938)

37 U.S.P.Q. 383

CELITE CORPORATION

v.

DICALITE CO.

No. 8310.

United States Court of Appeals, Ninth Circuit.

April 18, 1938

Rehearing Denied June 6, 1938.

Page 243

Leonard S. Lyon, Richard F. Lyon, Irwin L. Fuller, and C. A. Miketta, all of Los Angeles, Cal. (Walter H. Borcherding, of New York City, of counsel), for appellant.

Swanwick, Donnelly & Proudfit, of Los Angeles, Cal. (Frederick Bachman and Theodore S. Kenyon, both of New York City, Charles E. Townsend, of San Francisco, Cal., and Charles E. Donnelly, of Los Angeles, Cal., of counsel), for appellee.

Before WILBUR, MATHEWS, and HANEY, Circuit Judges.

WILBUR, Circuit Judge.

On March 17, 1931, appellant brought suit in equity against appellee for infringement of letters patent No. 1,502,547 granted

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July 22, 1924, to R. Calvert, K. L. Dern, and G. A. Alles, for a process of preparing diatomaceous earth and for the product so prepared.

Appellee answered alleging that the appellant's patent is invalid because anticipated by prior United States and foreign patents, and, also, because the claimed invention disclosed by the patent was described in printed publications and in use more than two years prior to the application for its issuance. It was also alleged that the patent was void for want of a 'full, clear, concise, or exact description of the alleged invention. ' As a further defense appellee alleged that appellant 'comes into this Court with unclean hands and seeks equity without doing equity' because of its unfair competition. Appellee filed a counterclaim alleging diversity of citizenship, that the amount involved in this controversy is more than $3,000, exclusive of interest and costs, and that the amount of damage to the appellee caused by the said unlawful acts of appellant 'is impossible of accurate ascertainment, but is in excess of the sum of three thousand dollars ($3,000) exclusive of interest and costs. ' It prayed that an injunction issue restraining appellant from coercing and intimidating the trade and especially appellee's customers by threats of litigation or litigation because of their use and sale of diatomaceous earth products, and for an accounting of all 'gains, profits and damages' that had accrued to appellant from the alleged unlawful acts and of all damages appellee had sustained by the alleged acts.

In its answer to the counterclaim appellant denied that it committed the alleged unlawful acts alleged in the counterclaim and denied that the amount of damage to the business of the appellee was 'in excess of the sum of three thousand dollars ($3,000) exclusive of interest and costs or any other sum or sums whatsoever. * * * '

In a decree entered October 31, 1935, the trial court held claims 1, 2, 11, 12, 13, 14, 18, and 21 of the patent in suit invalid; claims 5, 6, and 9 valid, but limited to the use of the particular chemicals specified in the patent and held that the appellee had not infringed any of the claims of the patent. The court held that the appellant, through the Johns-Manville Sales Corporation, had engaged in unfair competition against appellee 'by a course of conduct designed to harass the defendant as a competitor of plaintiff and to intimidate defendant's customers from dealing with the latter and generally to destroy defendant's trade. ' It perpetually enjoined appellant from intimidating appellee's customers or prospective customers from dealing with appellee with respect to the diatomaceous earth products sold by appellee; and from threatening appellee's customers with litigation because of their use and sale of said products and from suggesting to appellee's customers that they should obtain a guarantee or bond from appellee to cover any loss that might result from suits brought against them by reason of their use or sale of the products. It ordered that appellee 'recover from plaintiff all the gains and profits which the plaintiff or its confederates have derived, received or gained or which have arisen or accrued to it or them by the unlawful competition of plaintiff and its confederates against the defendant, and in addition thereto any and all damages which defendant has sustained by reason of said unlawful competition. * * * ' The case was referred to a special master to determine such gains, profits, and damages.

Appellant contends that the court erred in finding claims 1, 2, 11, 12, 12, 14, 18, and 21 invalid. It states in its brief that claims 5, 6, and 9, which were held valid, 'will not be relied upon before this court. ' It contends that the court erred in finding that appellant has engaged in unfair competition against the appellee and in ordering an accounting and the issuance of an injunction.

Validity of Patent No. 1,502,547.

The patent relates to the claimed invention of a diatomaceous earth product and the process of making the same. Claims 1, 2, 11, 12, 13, 14, and 21 are process claims and claim 18 is a product claim. The process involves mixing diatomaceous earth (fossilized remains of diatoms, a unicellular microscopic plant) with a fluxing material such as sodium chloride (common salt) and heating the mixture 'sufficiently high to produce incipient fusion, such incipient fusion being defined as a condition at which the particles under the action of heat begin to show a noticeable tendency to adhere, to form weak lumps, or aggregates, or the condition in which there begins to occur such a change that the product after cooling shows a markedly decreased resistance to the flow therethrough of any of the various liquids such as, for instance, a 60 per cent solution of sugar in water. ' It is also stated

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in the patent that 'one advantageous effect of the addition of sodium chloride is presumably that it lowers the sintering point of the diatomaceous earth and particularly of the clay content thereof, so as to enable the finer particles of the material (siliceous dust) to be sintered together or to the larger particles, thereby doing away with the excessively fine particles that might tend to clog the filters. ' Appellant states in its reply brief: 'The process involves simply the addition of a small amount of flux to the diatomaceous earth and calcining the mixture in powdered form to an extent sufficient to produce loosely agglomerated lumps (incipient fusions), but not to an extent sufficient to form a hard mass, whereupon the product may be reduced to a powder without shattering the diatom structure.'

In the patent two ways are suggested to carry out the process. In one method:

'One hundred pounds diatomaceous earth is mixed with five pounds of sodium chloride (common salt) and the mixture is then ground so as to reduce both the diatomaceous earth and the salt to a state of powder or fine division and to give an intimate mixture. The mixture is then charged into a muffle furnace and heated to about 1800 degrees F., at which temperature it is maintained for one hour. The product is then removed from the furnace, and reground to form of powder, if necessary, although in some cases such regrinding is not required.'

In the other method:

'An oil fired rotary kiln 6 ft. in diameter and 100 ft. long was continuously fed with the diatomaceous earth which had been milled, but not completely dried as is customary, so that almost 20 per cent moisture was present. A technical grade of sodium chloride was fed into the feeding mechanism at about 5 per cent on a total weight of diatomaceous earth.

'The temperature of the kiln varied from about 1900 degrees F. in the firing and discharge zone to about 1000 degrees F. at the feed end. The calcined material was cooled and then passed through a fan so as to break up the larger particles formed during burning. Under certain conditions it may be desirable to incorporate salts of alkali forming metals in the form of a solution and then calcining, and we have found that the operation may be quickly and successfully carried out in this manner.'

The object of the alleged invention as disclosed by the patent 'is to provide by treatment of diatomaceous earth in this manner, a product which is of greater commercial value, more attractive appearance and better adapted for use as a filter aid or for other purpose for which diatomaceous earth is used, for example, as an insulating material, as an ingredient in soaps, paints, dental preparations or other compositions or articles where lightness in weight, softness or fluffiness, fine subdivision and pure white color are essential or desirable. ' As to the efficiency of the patented product as a filteraid, the patent states: 'The product so obtained has been tested for efficiency as a filter aid or filtration accelerator, in the following manner: Sixty pounds raw cane sugar is dissolved in forty pounds water at 80 degrees C., and to the solution is added 0.8 pounds of the calcined product produced as above described. On pumping...

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