Chemical Cleaning, Inc. v. Dow Chemical Company

• Decision Date: 31 July 1967
• Docket Number: No. 23498.,23498.
• Citation: 379 F.2d 294
• Parties: CHEMICAL CLEANING, INC., John H. Rusch and George Lewis, Appellants, v. The DOW CHEMICAL COMPANY, Appellee. The DOW CHEMICAL COMPANY, Appellant, v. CHEMICAL CLEANING, INC., John H. Rusch and George Lewis, Appellees.
• Court: U.S. Court of Appeals — Fifth Circuit

379 F.2d 294 (1967)

CHEMICAL CLEANING, INC., John H. Rusch and George Lewis, Appellants, v. The DOW CHEMICAL COMPANY, Appellee.

The DOW CHEMICAL COMPANY, Appellant, v. CHEMICAL CLEANING, INC., John H. Rusch and George Lewis, Appellees.

No. 23498.

United States Court of Appeals Fifth Circuit.

June 15, 1967.

Rehearing Denied July 31, 1967.

M. Ted Raptes, Washington, D. C., Monroe & Lemann, Benj. R. Slater, Jr., New Orleans, La., of counsel, for appellants-appellees, Chemical Cleaning, Inc., et al.

Joseph B. Miller, F. Frank Fontenot, New Orleans, La., William M. Yates, Midland, Mich., Charles J. Merriam, William A. Marshall, Allen H. Gerstein, Chicago, Ill., Merriam, Marshall, Shapiro & Klose, Chicago, Ill., Milling, Saal, Saunders, Benson & Woodward, New Orleans, La., of counsel, for plaintiff-appellee-appellant.

Before HUTCHESON, GEWIN and DYER, Circuit Judges.

Rehearing En Banc Denied July 31, 1967.

HUTCHESON, Circuit Judge.

This appeal is from a judgment of the district court holding Chemical Cleaning, Inc. (CCI) guilty of civil contempt in that it knowingly and willfully violated an order which had enjoined it from further infringing a patent held by Dow Chemical. We affirm on the issue of contempt, but remand for a hearing on the issue of damages and costs.

On November 8, 1960, Dow obtained Patent No. 2,959,555 (hereafter Patent 555) which claims a chemical process to be used in the cleaning of industrial steam generating boilers. Such boilers accumulate on their metal sides incrustations of copper and iron oxide. The cleaning of the boilers involves the periodic removal of the incrustations. The cleaning job is made difficult by the fact that the copper, once removed, has a tendency to become redeposited on the metal surfaces before it can be flushed from the boiler. Patent 555 avoids that difficulty by the use of thiourea, a urea derivative, which acts as a sequestering agent to hold the copper within the cleaning solution until the whole solution can be flushed out of the boiler.

CCI also cleans industrial boilers by use of chemicals. Pursuant to a suit brought by Dow against CCI for infringement of Patent 555, the United States District Court for the Eastern District of Louisiana entered an order on December 7, 1961, that Dow's patent was valid and had been infringed in that CCI had employed thiourea in its boiler cleaning operations. An injunction was issued against CCI ordering that it refrain from further infringements of the patent.

CCI then began using another chemical compound, monomethylolthiourea, which it called Sequestrol 60. Dow filed the instant contempt action alleging that the use of the new solution constituted a violation of the injunction since Sequestrol 60 was merely thiourea to which formaldehyde had been added, and which, when used, disassociated to produce significant amounts of thiourea. The court below found that Sequestrol 60 was indeed the equivalent of thiourea and held CCI in civil contempt of the injunction. It is the issue of equivalency which we first consider.

In recognition of the fact that a patent would be virtually worthless if it did not protect against devices which incorporate only unimportant variations of the patented device, the doctrine of equivalents provides that a later-developed device will be regarded as the equivalent of the patented device if, although different in form or shape, it "performs substantially the same function in substantially the same way to obtain the same result." Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42, 50 S.Ct. 9, 13, 74 L.Ed. 147 (1929). In its early development, the doctrine generally was applied in cases involving the equivalence of devices having mechanical components. Today, however, the same principles are applied to compositions where there is equivalence between chemical ingredients. Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 609, 70 S.Ct. 854, 857, 94 L.Ed. 1097 (1955).

In Graver, the Supreme Court spoke to the problem of determining what constitutes equivalency:

"Consideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with the other ingredients, and the function which it is intended to perform."

"A finding of equivalence is a determination of fact. Proof can be made in any form: through testimony of experts or others versed in the technology by; documents, including texts and treatises; and, of course, by the disclosures of the prior art. Like any other issue of fact, final determination requires a balancing of credibility, persuasiveness and weight of evidence. It is to be decided by the trial court and that court\'s decision, under general principles of appellate review, should not be disturbed unless clearly erroneous. Particularly is this so in a field where so much

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