Chemithon Corporation v. Procter & Gamble Company
| Decision Date | 25 June 1968 |
| Docket Number | Civ. A. No. 14315. |
| Citation | 159 USPQ 139,287 F. Supp. 291 |
| Parties | The CHEMITHON CORPORATION v. The PROCTER & GAMBLE COMPANY and the Procter & Gamble Manufacturing Company. |
| Court | U.S. District Court — District of Maryland |
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Charles J. Merriam, William A. Marshall, Alvin D. Shulman, Merriam, Marshall, Shapiro & Klose, Chicago, Ill., and Benjamin R. Civiletti, Venable, Baetjer & Howard, Baltimore, Md., for plaintiff.
George B. Finnegan, Jr., William D. Denson, Jerome G. Lee, John C. Vassil, New York City, and William A. Grimes, Ober, Williams & Grimes, Baltimore, Md., for defendants.
This is a suit for infringement of two patents and for misappropriation of three trade secrets. Plaintiff, The Chemithon Corporation hereinafter referred to as Chemithon is a corporation organized under the laws of the State of Washington and has its principal place of business in Seattle, Washington. Defendants, The Procter & Gamble Company and The Procter & Gamble Manufacturing Company hereinafter collectively referred to as P&G are Ohio corporations having their principal place of business in Cincinnati, Ohio. P&G has a regular place of business in Baltimore, Maryland, and the acts complained of occurred within the District of Maryland. Jurisdiction has been demonstrated and is admitted, and P&G has waived venue.
Chemithon is the owner of both patents in suit, United States Patent No. 3,024,258 hereinafter referred to as the '258 patent and United States Patent No. 3,058,920 hereinafter referred to as the '920 patent and the three trade secrets. The named inventors of the two patents are Richard and Burton Brooks, both officers of Chemithon.
Chemithon commenced this action on December 27, 1962. P&G answered, and denied infringement and the validity of the patents and denied it had misappropriated any of the trade secrets alleged. By counterclaim P&G seeks affirmative relief, asking that both patents be declared invalid, not infringed, and unenforceable by reason of inequitable conduct and unclean hands of Chemithon. It also requests reasonable attorneys' fees on the ground that this is an exceptional case within the provisions of 35 U.S.C. § 285.
The case is before the court after trial held from September 18 to November 7, 1967, involving 28 court days, the presentation of about 600 exhibits, and the testimony of 21 witnesses. The parties have submitted post-trial briefs and proposed findings of fact and conclusions of law totaling more than 600 pages.
Because of the nature of the patents and trade secrets in suit, it is necessary, as a preliminary matter, to review the general background of the subject matter involved. The discussion, necessarily, will be limited and simplified, and it is presented only with the view to understand more clearly the disclosures of the patents, the trade secrets, and the disputed issues of the case.
Both patents and all three trade secrets are related to chemical processes used in the making of synthetic detergents sold as household washing products. For many years soaps were manufactured by the neutralization of fatty oils which were derived from several natural sources, viz, animal fats, vegetable oils, and so forth. After World War II, manufacturers turned to new materials as substitutes. One of these materials was a class of organic chemicals known as alkyl benzenes, a hydrocarbon liquid derived from petroleum, which could be reacted in a chemical process, called sulfonation, with a sulfonating agent to produce chemical compounds known as alkyl benzene sulfonates (ABS). ABS have surface active properties which make them particularly useful as components of synthetic detergents.
When a different organic hydrocarbon material, such as fatty alcohol, is substituted for alkyl benzene, the reaction with the sulfating agent is called sulfation, as opposed to sulfonation, and the final product is an organic sulfate-type detergent, rather than a sulfonate. In the early days of the soap industry most synthetic detergents were so made.
As is usual with chemical processes, the making of synthetic detergents entails chemical reactions occurring in steps one after the other. In the first step, sulfonation or sulfation, the alkyl benzene or other hydrocarbon is reacted with an agent, usually concentrated sulfuric acid. Oleum, a solution of sulfur trioxide in sulfuric acid, is the preferred form of sulfonating agent. The hydrocarbon is converted into an intermediate reaction product called, in the case of sulfonation, alkyl benzene sulfonic acid, with some excess sulfuric acid left over. The next step is to neutralize the acidic reaction material with an alkali, and this produces the desired active detergent. At the same time there is formed in the product at neutralization an inert by-product called sodium sulfate, which results from the concurrent neutralization of the excess sulfuric acid that is left over from the first step of the process. It has little, if any detergent activity.
Sometimes, in order to increase the ratio of the active ABS to the inert sodium sulfate in the final product, a portion of the excess sulfuric acid is separated and removed prior to its neutralization. When the excess sulfuric acid is so removed and the remaining product is neutralized, a high-active detergent results because it contains a lesser proportion of the inert material. When used, this separation step is called "settling" or "acid-layering".
The neutralized product of the operation, either with the excess sulfuric acid settled out or with it present in neutralized form, is a thick liquid mixture called "slurry". This is then mixed with various additives in a blending vessel and then dried forming the final product.
Sulfonation and sulfation, as such, is relatively old. However, as carried out prior to the discovery of the process claimed in the two patents in suit, the old processes had a number of inherent weaknesses. For example, in the initial reaction between the hydrocarbon and the reacting agent, high heats are liberated which seriously endangered the color of the product, an important consideration in the manufacture of household detergents. Furthermore, the recovery of the excess sulfuric acid by settling or acid-layering was slow and difficult.1 The separation step, taking a considerably longer period of time than the initial sulfonation reaction, necessitated the use of a batch process, as opposed to a more desirable and more efficient continuous process.
The batch process had several other weaknesses which limited its usefulness. For example, in order for it to have a reasonable output, a large reaction vessel, a large settling tank and a large neutralizing vessel were required. The large reaction vessel in turn necessitated a long time for the mixing of the sulfonating agent and the hydrocarbon—that is, a long reaction time—which makes controlling the temperature very difficult. This problem, inherent in all the various stages of the process, resulted in a tendency for the product to become degraded.
The sulfonation stage of the '920 patent is comparable to that stage in the '258 patent. After this reaction, the product is fed into a sulfation stage where it is mixed with streams of fresh alcohol, fresh oleum, and cooled recycled output from the sulfation stage. Thereafter, the product from the two stages is neutralized. The gist of the invention according to Chemithon resides in a combination of conditions for obtaining maximum conversion of raw materials and for maintaining a single phase solution, especially in the second stage, notwithstanding the mixing therein of (1) sulfation reaction product; (2) fresh alcohol; (3) fresh oleum; and (4) the output of the product of the sulfation stage.2
Because proof of P&G's use of the claims of both patents was supplied primarily by a stipulation among the parties, which is attached to the pretrial order, it will not be necessary to go into great detail with respect to all the claims of the patents. It is sufficient for present purposes to categorize the various claims. Thus, the claims of the '258 patent—twenty-one in all—can be classified as those claims which relate to sulfonation or sulfation, namely claims 1-4 and 6-8 and those which relate to fast settling or acid-layering, namely claims 5 and 9-21,3 all the other claims of the patent. This patent was issued on March 6, 1962, on a patent application dated June 11, 1957, which was a "continuation-in-part" application of an earlier and abandoned application dated January 30, 1956....
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