Delco Chemicals v. Cee-Bee Chemical Co.

• Decision Date: 11 December 1957
• Docket Number: Civ. No. 17387.
• Citation: 157 F. Supp. 583
• Parties: DELCO CHEMICALS, Inc., a corporation, Plaintiff, v. CEE-BEE CHEMICAL CO., Inc., a corporation, Defendant.
• Court: U.S. District Court — Southern District of California

157 F. Supp. 583

DELCO CHEMICALS, Inc., a corporation, Plaintiff, v. CEE-BEE CHEMICAL CO., Inc., a corporation, Defendant.

Civ. No. 17387.

United States District Court S. D. California, Central Division.

December 11, 1957.

COPYRIGHT MATERIAL OMITTED

Fulwider, Mattingly & Huntley, Robert W. Fulwider, Walter P. Huntley, John M. Lee, Los Angeles, Cal., and John A. Weyl, Hollywood, Cal., for plaintiff.

Carlos G. Stratton and Louis M. Welsh, Los Angeles, Cal., for defendant.

MATHES, District Judge.

Plaintiff brought this action for a declaration of invalidity and non-infringement as to United States Letters Patent No. 2,653,116. 28 U.S.C. §§ 1338(a), 2201. Defendant answered with a counterclaim for damages for alleged infringement. Plaintiff now moves for a summary judgment declaring the patent invalid. Fed.R.Civ.P., Rule 56, 28 U.S. C.A.

The motion is based upon the pleadings, various affidavits, a copy of the patent in suit, the "file wrapper", and copies of various prior-art patents. Affidavits have been filed in opposition to the motion.

There is no issue of fact, "genuine" or otherwise, as to the contents of the patent in suit, the contents of the file-wrapper record of Patent Office proceedings leading to the issuance thereof, or the contents of the various prior-art patents.

The patent in suit—Letters Patent No. 2,653,116, covering a "Method of Removing Sealant from Fuel Tanks"—issued September 22, 1953, upon an application filed March 16, 1949, for a patent on both "Method and Apparatus for Removing Sealant from Fuel Tanks". The file wrapper discloses that the first action of the Patent Office was to declare that "The method and the apparatus are distinct, each from the other * * * and all claims are rejected on the ground of misjoinder."

Next, claims limited to the method were rejected as unpatentable over the prior art cited. Further method claims were then filed, then amended, then rewritten; personal interviews with the examiner were had; associate counsel appeared; and at length, the Patent Office examiner allowed the eight claims appearing in the letters as issued.

Interestingly enough, the specifications and drawings of patent No. 2,653,116, issued for the "method" alone, are the same as those in the original application for both "method and apparatus." Indeed, the opening words of the specifications in the letters issued for the method alone are: "This invention relates to a method and apparatus for removing the sealant that lines the interiors of integral fuel tanks, particularly of aircraft." Patent 2,653,116, col. 1, ll. 1-5.

In the language of the defendant's brief in opposition to the motion for summary judgment, the patented process is a "three-way method, including, first, spraying a volatile solvent against the sealant in an aircraft tank; secondly, spraying the solvent with a `water-rinsable, solvent-miscible' material; and thirdly, applying a water spray of a higher pressure. The second and third sprays may be applied successively or simultaneously."

Thus, defendant's fuel-tank cleaning process can be envisioned as embracing either two or three steps, depending on whether the water rinsing accompanies or follows the "water-rinsable, solventmiscible" spray.

Plaintiff's motion for summary declaration of invalidity is made upon the grounds that: "The method claimed by the patent in suit is fully and clearly anticipated by prior art which was not cited or considered by the Commissioner of Patents while the application for the patent was pending * * *. The method claimed by the patent in suit is devoid of patentable novelty * * *. There does not exist any genuine issue as to material facts necessary to consideration and determination of this motion, since invalidity of the patent in suit is clearly apparent from a comparison of said patent in suit with said prior art which was not considered by the Patent Office but * * * is before the Court in this motion."

It is often declared generally that validity of a patent is a question of fact. United States v. Esnault-Pelterie, 1936, 299 U.S. 201, 205, 57 S.Ct. 159, 81 L.Ed. 123; Faulkner v. Gibbs, 9 Cir., 1948, 170 F.2d 34, 37, affirmed per curiam 1949, 338 U.S. 267, 70 S.Ct. 25, 94 L.Ed. 62. But the broad question of validity may encompass a variety of issues, both factual and legal. 35 U.S.C. § 102.

Whether a method or "process" upon which letters patent have issued is "new and useful", and whether first "invented or discovered" by the patentee, are questions of fact. 35 U.S.C. §§ 100, 101; Oriental Foods v. Chun King Sales, 9 Cir., 1957, 244 F.2d 909, 913-914; Hall v. Wright, 9 Cir., 1957, 240 F.2d 787, 790; Hansen v. Safeway Stores, Inc., 9 Cir., 1956, 238 F.2d 336, 339.

In the case at bar, the specific question whether "the invention was pattented * * * in this country, more than one year prior to the date of the application for patent in the United States * * *" 35 U.S.C. § 102(b) is one of fact.

The burden of proof necessary to establish invalidity for anticipation, or for other want of invention, rests of course upon the party asserting it. Marconi Wireless Tel. Co. of America v. United States, 1943, 320 U.S. 1, 34, 63 S.Ct. 1393, 87 L.Ed. 1731; Smith v. Hall, 1937, 301 U.S. 216, 222, 232-233, 57 S. Ct. 711, 81 L.Ed. 1049; Radio Corp. of America v. Radio Eng. Lab., 1934, 293 U.S. 1, 7-8, 54 S.Ct. 752, 78 L.Ed. 1453; Eibel Process Co. v. Minnesota & Ontario Paper Co., 1923, 261 U.S. 45, 60, 43 S.Ct. 322, 67 L.Ed. 523; The Barbed Wire Patent Washburn & Moen Mfg. Co. v. Beat 'Em All Barbed-Wire Co., 1892, 143 U.S. 275, 284-285, 12 S.Ct. 443, 36 L. Ed. 154; Schmeiser v. Thomasian, 9 Cir., 1955, 227 F.2d 875, 876; Whiteman v. Mathews, 9 Cir., 1954, 216 F.2d 712, 716.

But, as the Court said in Bates v. Coe, 1878, 98 U.S. 31, 25 L.Ed. 68, "the patent offered in evidence * * * will be held to be prior, if it is of prior date to the patent in suit, unless the patent in suit is accompanied by the application for the same, or unless the complainant introduces parol proof to show that his invention was actually made prior to the date of the earlier patent, or prior to the time the earlier application was filed." 98 U.S. at page 33; see Alexander Milburn Co. v. Davis-Bournonville Co., 1926, 270 U.S. 390, 399-400, 46 S.Ct. 324, 70 L.Ed. 651.

Questions as to validity, such as anticipation or other want of invention, as a rule present "genuine" issues of fact which must be litigated and adjudicated by plenary trial so long as the presumption of validity is available to the defender of the patent. See Radio Corp. of America v. Radio Eng. Lab., supra, 293 U.S. at page 9, 54 S.Ct. 752; Hycon Mfg. Co. v. H. Koch & Sons, 9 Cir., 219 F.2d 353, 356, certiorari denied 1955, 349 U.S. 953, 75 S.Ct. 881, 99 L.Ed. 1278. For, although disputable, the presumption of validity cannot be dispelled without an evaluation of the evidence to the contrary. Such an evaluation necessitates the consideration or weighing of all opposing evidence, the drawing of inferences, and the choice of opposing inferences; usually this can be done only after a plenary trial. See Sartor v. Arkansas Natural Gas Corp., 1944, 321 U. S. 620, 628, 64 S.Ct. 724, 88 L.Ed. 967; Hansen v. Safeway Stores, Inc., supra, 9 Cir., 238 F.2d at page 340; Hycon Mfg. Co. v. H. Koch & Sons, supra, 9 Cir., 219 F.2d 353; cf. Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 1950, 340 U.S. 147, 153-154, 71 S.Ct. 127, 95 L.Ed. 162; Muench-Kreuzer Candle Co., Inc., v. Wilson, 9 Cir., 246 F. 2d 624, certiorari denied 78 S.Ct. 149; Oriental Foods v. Chun King Sales, supra, 244 F.2d at page 913; Kwikset Locks, Inc. v. Hillgren, 9 Cir., 210 F.2d 483, 486, certiorari denied, 1954, 347 U. S. 989, 74 S.Ct. 852, 98 L.Ed. 1123; 348 U.S. 855, 75 S.Ct. 78, 99 L.Ed. 673.

Since there is no rational basis upon which to rest it, the presumption of validity cannot extend beyond the scope of the administrative record—the file wrapper of the patent as issued. So the presumption that a patent is valid, as embodying an invention over the prior art, does not subsist as to pertinent prior art not cited or considered by the Patent Office in passing on the application for the patent. Jacuzzi Bros., Inc., v. Berkeley Pump Co., 9 Cir., 1951, 191 F.2d 632, 634 & note 4, 637; Gomez v. Granat Bros., 9 Cir., 1949, 177 F.2d 266, 268, certiorari denied 1950, 338 U.S. 937, 70 S.Ct. 351, 94 L.Ed. 578; Mettler v. Peabody Engineering Corp., 9 Cir., 1935, 77 F.2d 56, 58; and see Syracuse v. Paris, 9 Cir., 1956, 234 F.2d 65; see, also, Fritz W. Glitsch & Sons, Inc., v. Wyatt Metal & Boiler Works, 5 Cir., 1955, 224 F.2d 331, 335; Royal Patent Corp. v. Monarch Tool & Mfg. Co., 6 Cir., 1953, 203 F.2d 299, 300; O'Leary v. Liggett Drug Co., 6 Cir., 150 F.2d 656, 664, certiorari denied 1945, 326 U.S. 773, 66 S.Ct. 232, 90 L.Ed. 467; Himmel Bros. Co. v. Serrick Corp., 7 Cir., 1941, 122 F.2d 740, 745; Nordell v. International Filter Co., 7 Cir., 1941, 119 F.2d 948, 950; National Elec. Products Corp. v. Grossman, 2 Cir., 1934, 70 F.2d 257, 258; R. Hoe & Co. v. Goss Printing Press Co., 2 Cir., 1929, 30 F.2d 271, 274; American Soda Fountain Co. v. Sample, 3 Cir., 130 F. 145, 149-150, certiorari denied 1904, 195 U.S. 634, 25 S.Ct. 791, 49 L.Ed. 354.

Such uncited prior art is as if unknown to the Commissioner and, being unknown, could not possibly have influenced his administrative finding of invention. Himmel Bros. Co. v. Serrick Corp., supra, 122 F.2d at page 745; Nordell v. International Filter Co., supra, 119 F.2d at page 950.

One has only to examine the admitted copy of the letters, and of the file wrapper of the patent in suit, to learn there can be no issue of fact, "genuine" or otherwise, that the following pertinent prior-art patents were not cited or considered in connection with the application for the patent at bar:

                      No. 2,018,757 issued 1935 to Butterworth for          "Apparatus for Cleaning
                      Tanks";

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