Corn Products Refining Co. v. Penick & Ford

• Decision Date: 28 February 1933
• Docket Number: No. 4691.,4691.
• Parties: CORN PRODUCTS REFINING CO. v. PENICK & FORD, Limited, Inc.
• Court: U.S. Court of Appeals — Seventh Circuit

63 F.2d 26 (1932)

CORN PRODUCTS REFINING CO. v. PENICK & FORD, Limited, Inc.

No. 4691.

Circuit Court of Appeals, Seventh Circuit.

December 6, 1932.

Rehearing Denied February 28, 1933.

Percival H. Truman, of Chicago, Ill., and Melville Church, of Washington, D. C., for appellant.

Dyrenforth, Lee, Chritton & Wiles, of Chicago, Ill. (John H. Lee, Russell Wiles, and Horace Dawson, all of Chicago, Ill., and O. N. Elliott, of Cedar Rapids, Iowa, of counsel), for appellee.

Before EVANS and SPARKS, Circuit Judges, and WILKERSON, District Judge.

WILKERSON, District Judge.

Plaintiff (appellee here) charged infringement of Widmer patent, No. 1,585,452, for the manufacture of starch. Defendant by counterclaim charged infringement of McCoy patent, No. 1,651,611, for a closed or "bottled-up" wet starch system. The District Court found infringement of claims 1, 2, 4, 5, 8, 9, 13, 14, and 18 of the Widmer patent and dismissed the counterclaim on the issue of validity.

The patents in suit are in the field of starch manufacture by the wet method. By this method starch-bearing material, such as corn, after being ground, is subjected to operations in water to separate the starch therefrom. Both patents deal with the repeated return to the system and the re-use of the water employed in the separating and subsequent starch washing operations, with the object of preventing stream pollution, economizing water and saving solubles and insolubles in the water which would be wasted by going to the sewer with the water — the ordinary objects sought to be achieved in any manufacturing system involving the repeated use of process waters.

The principal constituents of corn are: Starch, gluten — soluble and insoluble — germs, bran and fiber (slops) together with certain salts and other soluble substances. The corn is first softened by steeping in water which leaches out soluble substances and the steeped water is evaporated to save these substances. The steeped corn is then ground and the starch separated from the other constituents of the corn in separating operations in water. The waste water from the separating operations is called gluten water because it is taken from the gluten settlers when the gluten is recovered. The starch is washed with fresh water and the filtrate or wash water from this operation is called starch wash water. The patents in suit deal with the reuse of these waters.

By the old practice the corn is first steeped in the steeps and the water drawn off to the evaporator. The steeped corn then goes to the wet starch house where the germs, bran, and fiber are removed by means of separating operations carried on in water, giving a mixture of starch and gluten which is then caused to flow over "tables" which are long, slightly inclined troughs, upon which the starch settles; the gluten and water flowing over the ends of the tables into gluten settlers. The gluten settles to the bottom of the settlers and is removed. The starch is removed from the tables and goes to a filter where it is washed with fresh water to remove soluble substances. It was also ordinary practice to return from 10 to 20 per cent. of the gluten water to the steeps, thus saving some of the soluble substances. The remainder of the gluten and starch wash water went into the sewer. Another feature of the old process was the use of sulphur dioxide throughout the system. Corn in a wet state ferments and decomposes. It was customary to use sulphur dioxide in the steeps and in the wet starch house, and in fact throughout the system, to prevent fermentation and especially to prevent a sliming fermentation which, if it occurred, would upset the process. It was also customary to keep the temperatures of the liquids passing through the wet starch house higher than ordinary room temperatures, the temperatures in the starch house being frequently maintained as high as 125° Fahrenheit.

The Widmer Patent. — The Widmer specification states that in accordance with the improvement covered by the patent the gluten water heretofore discharged into the sewer is returned to the process and used where it has been customary to use fresh water, for example, in the coarse and fine slop separations or in the washing of the germ; that in order to prevent the gluten waters from sliming the starch-bearing material undergoing separation and the reels or sieves used in such operations these waters "before being returned to the process are sterilized so as to prevent or at least to arrest fermentation and decomposition"; that preferably the serialization is brought about by heating the gluten overflow water (although other methods might be employed); and that the return of the gluten overflow water to the process results in the starch on the starch tables having a higher soluble content, which is remedied by thoroughly washing the starch, for example, by filter pressing.

In the drawing which exemplifies the invention the gluten overflow water is taken through a pipe to a collecting tank and from the tank to a sterilizer connected at the bottom with a cooler from which the water is run to the wet starch house. As to the operation of the sterilizer and cooler it is said: "The control condenser * * * operates to maintain a proper vacuum in the evaporator. The vacuum is adjusted so that the vapor will be sufficiently hot to give the gluten water flowing through the sterilizer * * * the proper temperature. This temperature is preferably about 160° Fahrenheit. By raising the gluten water to this temperature fermentation, which ordinarily sets in very quickly, is arrested so that no appreciable decomposition will take place for two or three days. As the gluten water will pass through the process in less than one day an ample margin of safety is provided. The sterilized gluten water passes from the sterilizer * * * to a collecting vessel. * * * The gluten overflow water cooled, for example to 90° Fahrenheit in the cooler * * * is run to the collecting vessel * * * and from thence to the wet starch house. * * * A certain amount of the water from the gluten settler * * * from ten to twenty per cent, for example, will pass * * * to the steep house where after being sulphurized it is used in steeping fresh grain. * * * The gluten overflow water contains a certain quantity of sulphur dioxide from the use of this acid during the starch separating operations. This sulphur compound, instead of being wasted, is returned to the process and re-used, effecting a saving of two-thirds in the quantity of sulphur required. * * * The utilization of the vapors from the evaporator for sterilizing the gluten water and the cooling of the sterilized gluten water by heat transference to fresh water utilized in the process at places where warm water can be employed advantageously, make it possible to effect the purposes of my invention at a cost which is relatively small. * * *"

It seems perfectly clear from the specification that the serialization of the gluten water which Widmer says is essential to a re-use of that water in the separating operations is something additional to the treatment which the gluten water and the other liquids have received and will receive in the wet starch house. That is to say, it was Widmer's conception that the sulphur dioxide and process temperatures of the old method would be insufficient to prevent fermentation and decomposition and the resulting sliming if the gluten water were returned to the system; although they were sufficient when the wet starch house was supplied with fresh water.

In each of the claims¹ in issue here the sterilization of the gluten water is specified explicitly as one of the steps of the process. In none of the claims is the combination of process steps described by Widmer in the specification fully set forth.

The Widmer Disclaimer. — After the trial in the District Court plaintiff attempted to reconstruct the claims of the patent by filing a disclaimer; and before taking up the issues of infringement the effect of this disclaimer² should be considered.

The disclaimer was filed under sections 65 and 71, title 35 U. S. C., 35 USCA §§ 65, 71 (R. S. §§ 4917, 4922; sections 7 and 9 of the Act of March 3, 1837, 5 Stat. 193, chap. 45).³

The first of these sections provides in substance that whenever through inadvertence, accident, or mistake and without any fraudulent or deceptive intention, a patentee has claimed more than that of which he was the original or first inventor or discoverer, he may be permitted to make disclaimer of such parts of the thing patented as he shall not choose to claim or hold by virtue of his patent. The other permits the patentee to maintain a suit on his patent, although through inadvertence, accident, or mistake and without any willful default or intention to mislead the public, he has claimed some material or substantial part as an invention of which he was not the original or first inventor. He is deprived, however, of the right to recover costs, unless he has filed a proper disclaimer before the commencement of his suit. It is further provided that the patentee shall not be entitled to the benefits of this section if he has unreasonably neglected or delayed to enter a disclaimer.

Passing the questions of delay in filing and of the effect of the disclaimer as an admission of the invalidity of the original claims, we are of the opinion that the document here in question is not a valid disclaimer. The statute limits the amendment of claims through disclaimer to that which "is a material and substantial part of a thing patented and definitely distinguishable from the parts claimed without right." The Supreme Court, in Hailes v. Albany Stove Co., 123 U. S. 582, 587, 8 S. Ct. 262, 265, 31 L. Ed. 284, construed the statute: "A disclaimer is usually and properly employed for the surrender of a separate claim in a patent, or some other distinct and separable matter, which can be exscinded without mutilating or...