BLAW-KNOX COMPANY v. Hartsville Oil Mill

• Citation: 269 F. Supp. 205
• Decision Date: 08 June 1967
• Docket Number: Civ. A. No. 7847.
• Parties: BLAW-KNOX COMPANY, a Delaware Corporation, Plaintiff, v. HARTSVILLE OIL MILL, a South Carolina Corporation, and the French Oil Mill Machinery Company, Defendants.
• Court: U.S. District Court — District of South Carolina

269 F. Supp. 205

BLAW-KNOX COMPANY, a Delaware Corporation, Plaintiff, v. HARTSVILLE OIL MILL, a South Carolina Corporation, and the French Oil Mill Machinery Company, Defendants.

Civ. A. No. 7847.

United States District Court D. South Carolina, Florence Division.

June 8, 1967.

John T. Roddey, of Roddey, Sumwalt & Carpenter, Rock Hill, S. C., Blenko, Hoopes, Leonard & Buell, and William Henry Venable, Pittsburgh, Pa., for plaintiff.

Philip Wilmeth, Hartsville, S. C., Karl B. Lutz, Pittsburgh, Pa., and T. Russell Foster, Hartsville, S. C., for defendants.

HEMPHILL, District Judge.

This is a civil action for infringement of United States Patent No. 2,840,459, dated June 24, 1958 which shall be referred to as the Karnofsky patent. The Karnofsky patent was issued to the plaintiff as the assignee of George B. Karnofsky, and title has remained in the plaintiff ever since. The defendant French Oil Mill Machinery Company has counterclaimed for a declaration that the Karnofsky patent is invalid and not infringed in toto. The court has jurisdiction of the parties and subject matter under 28 U.S.C. §§ 1338(a) and 1400(b). Jurisdiction is not contested.

The plaintiff Blaw-Knox Company is a Delaware corporation having its principal place of business at Pittsburgh, Pennsylvania.

The defendant Hartsville Oil Mill is a South Carolina corporation having its principal place of business at Hartsville, South Carolina.

The defendant French Oil Mill Machinery Company is an Ohio corporation having its principal place of business at Piqua, Ohio. French Oil intervened on its own motion and has conducted the defense of the action in fulfillment of a patent protection provision contained in the sales contract for the solvent extractor here said to infringe, French Oil having manufactured the accused solvent extractor and installed it on the premises of Hartsville Oil at Hartsville, South Carolina.

The matter was heard by the court without a jury, therefore the facts shall be found specially and the conclusions of law stated separately.

FINDINGS OF FACT

1. The Karnofsky patent is for a method and apparatus for continuously extracting oil and other soluble material from solid material by the use of liquid solvents. "Solvent extraction" may be described sufficiently for present purposes as a process whereby a prepared oil bearing material is contacted by a solvent which dissolves the oil from the material.

2. The Karnofsky patent contains twenty-eight apparatus claims and four process claims, and plaintiff has selected claims 8 (apparatus) and 32 (method) as typical of the two groups. The defendants, by counterclaim, seek a judgment that all the claims are invalid. The plaintiff submits that the court need consider only claims 8 and 32, as representative claims, and that the plaintiff's case will stand or fall upon the decision as to them.

3. Apparatus claim 8 is as follows:

A continuous solvent extractor for vegetable oils or the like, comprising, a rotor having a substantially vertical axis, a plurality of substantially vertically and radially divided cells disposed around said axis, said cells being open at the top and adapted to contain oil-bearing solid material for intimate contact therein with solvent and solvent solution of varying degrees of richness during the rotation thereof, a perforated closure adjacent the bottom of said cells adapted to permit the continuous draining of said solvent and solvent solution through said cells, a plurality of compartments positioned adjacent the bottoms of said cells along the path of their rotation and adapted to collect said solvent and solvent solution draining from said cells, means connected to a majority of said compartments for circulating the contents thereof to said cells at a plurality of separated positions respectively along said path of rotation to effect substantially countercurrent flow of solvent and solvent solution and of solid material.

4. Method claim 32 is as follows:

In a continuous system for the solvent extraction of oils or the like from solid particles, the steps comprising, separately confining a succession of masses of solid oil-containing particles independently from one another, moving said succession of masses through a closed rotary path in a substantially horizontal plane, supplying a flow of solvent substantially from above to each of said succession of masses at spaced intervals along said path of rotary movement, repeatedly draining solvent so supplied from said succession of masses into a succession of separate solvent-receiving zones positioned beneath said succession of masses and along said rotary path, and circulating solvent from a plurality of said separate solvent-receiving zones to a plurality of said supplying steps.

5. Solvent extraction is an old art, dating back to as early as 1843. It became a commercial reality in about 1900. Between the World Wars, at least sixty different schemes were evolved to meet the demand for larger, more efficient extractors. By 1939, however, the best available extractors were the Bollman "Vertical Basket Extractor" and, of lesser importance, the Hildebrandt extractor.

Although the Bollman and the Hildebrandt extractors were widely used, they both had well recognized disadvantages.

The Bollman was a vertical structure utilizing a series of baskets on an endless path. In order to make this design economically practical it required that the extractor be some four or five stories tall. This required in turn a large exterior construction for housing the extractor. The design involved a great number of moving parts which were a ready source of mechanical problems. The feeding of oil bearing material, solvent, and miscella¹ to the baskets was necessarily intermittent. The Bollman extractor was thus inherently limited as to practical maximum and minimum size design limits: beyond those limits the extractor could not be constructed or operated with economy. The oil bearing material had to be carefully prepared to attain satisfactory extraction.

The Hildebrandt extractor utilized the principle of an ordinary meat grinder: the solvent was pushed through one way and the oil bearing materials were pushed through the opposite way. External equipment was required to drain the spent material, or flakes, and to remove a quantity of fine solid particles from the miscella. Filtration was poor and the quality of the miscella was thus poor.

The Bollman extractor was, in summary, more expensive to manufacture, install, and operate; the Hildebrandt was less efficient in extracting oil, and the oil and the spent material recovered were of varying and generally poorer quality.

6. Between 1935 and 1945, many large organizations joined in the search for a cheaper, more effective, more efficient solvent extractor. Procter & Gamble Company, a dominant processor, and French Oil, the leading company devoting itself to the building of oil mill machinery, were active in the search. Although many improvements were suggested and adopted, the basic mode of operation and the quality of extraction of the available extractors remained unaltered. The Bollman extractor remained the best of the solvent extractors available. There was a long-felt want in the trade for an improved solvent extractor which the "Rotocel" fulfilled in 1949 when it was commercially introduced.

7. Blaw-Knox entered the solvent extraction field in 1943 and began to manufacture Bollman extractors. That year Blaw-Knox employed George B. Karnofsky, a graduate chemical engineer who had no previous experience or background in solvent extraction. Karnofsky was assigned to familiarize himself with the art, and to design and detail a conventional solvent plant. Not satisfied with convention, however, Karnofsky conceived and perfected the invention of the patent in suit — the "Rotocel."

8. The Rotocel² utilizes a verticalaxised cylindrical rotor compartmented by radial walls into wedgeshaped contiguous cells disposed like the cut pieces of a pie. Each cell is open at the top. Each cell has a perforated hinged bottom. The rotor is mounted on an axial shaft which is motor driven so as to turn the rotor at constant speed. There is a feeding complex above the rotor having stations for feeding solvent, miscella, and a "slurry" of prepared oil seeds and miscella as the cells move sequentially under the different feeding stations. Below the rotor, there is a series of wedgeshaped receiving chambers into which miscella drains through the perforated bottoms of the cells. There is a dumping station at which the perforated bottoms are successively opened so as to dump the solid residues after the oil has been extracted from them. The bottom is automatically returned to its closed position before the now-emptied cell moves through the zone below the feed pipe. The component parts of the feeding-receiving complex are interconnected by pump-and-piping systems so that miscella can be pumped from the receiving chambers to the spray nozzles and the slurry-feed pipe. In operation, the solvent, first as fresh solvent and then as miscella, passes through the charges in successive cells, increasing in concentrations of extracted oil until a "full" miscella is achieved and drawn off from the appropriate receiving chamber. The solvent is thereafter separated from the oil and flakes, and the separated solvent is returned to the system. Since the cells are contiguous, there is no spillage of solvent, miscella, or slurry, although all of these are fed continuously to the rotor; and since the miscella-receiving chambers are contiguous, there is no spillage of miscella draining from the cells, although the drainage is continuous.

9. The Rotocel is a great and meritorious step forward in the art. It kept all of the advantages of percolator type extractors, such as the Bollman type, added to it all of the advantages of the immersion-type extractors, such as the Hildebrandt, but without the...