Diversey Corporation v. Mertz

• Decision Date: 31 January 1936
• Docket Number: No. 14339.,14339.
• Parties: DIVERSEY CORPORATION v. MERTZ.
• Court: U.S. District Court — Northern District of Illinois

13 F. Supp. 410

DIVERSEY CORPORATION v. MERTZ.

No. 14339.

District Court, N. D. Illinois, E. D.

January 31, 1936.

Russell Wiles and Charles J. Merriam, both of Chicago, Ill., for plaintiff.

John J. McLaughlin and Sidney Wallenstein, both of Chicago, Ill., for defendant.

LINDLEY, District Judge.

Plaintiff brought this suit for infringement of two patents, Adler, No. 1,734,706, and Kochs, No. 1,962,821, issued to plaintiff as assignee of the respective applicants. Defendant asserts invalidity and denies infringement. He files a counterclaim in which he avers that the Adler invention is his and should be assigned to him. In view of the defense that Adler was not the inventor and the issue presented by the counterclaim, I shall consider, first of all, the question of invention by Adler.

Defendant was formerly plaintiff's vice president and general sales manager and its confidential agent. Adler was hired by the Victor Chemical Works, which owns plaintiff, to invent, and was bound to assign any invention he made to his employer.

The patents in suit deal with chemical compounds and have to do with the method, and a chemical product, utilized in cleansing tin containers, such as milk cans. The special utility claimed arises from the quality possessed by the patented compound of cleaning tin with alkaline detergents without resulting corrosion of the tin.

Before the filing of the application for either of the patents, Victor produced chlorosol, a mixture of trisodium phosphate and sodium hypochlorite, possessing sterilizing properties similar to those of chlorine, which had been used for cleaning and sterilizing glazed vessels, glass containers, and similar articles. Prior to 1925, no attempt had been made to utilize it in cleaning tin without corrosion of the same.

Early in 1925, Adler and his associates first discovered that chlorosol did not corrode tin and immediately began to speculate on the cause of this result. Adler was a skilled chemist, knew that sodium hypochlorite is a common oxidizing agent, and, at first, assumed that its oxidizing character made it an inhibitor of corrosion of tin. This thought carried him further to the possibility of using other and cheaper oxidizing agents. No further progress appears until some weeks before November 2, 1925. Kochs, an employee of Victor, and Mertz discussed the possible market for a noncorrosive cleaner cheaper than chlorosol. On November 2, 1925, Mertz wrote that it seemed probable that sodium hypochlorite owes its corrosion inhibiting effect to its oxidizing character; that oxidizers generally include sodium bichromate and sodium perborate, which should work successfully, and that there would probably be a market for a cheaper noncorrosive compound than chlorosol. This was in accordance with Adler's thought that oxidizers generally might successfully work in the combination; but he had not appreciated that there was a possible profitable market. He testified that within a week thereafter he produced the compound of his patent.

On November 11, 1925, defendant, speaking as an employee of plaintiff, wrote Kochs, saying: "We deem it advisable that you (Victor) should immediately file patent to cover the use of bichromate with trisodium phosphate," and on December 19, 1925, he wrote urging that the patent be taken out in the name of plaintiff, instead in that of Victor. These letters indicate rather clearly that Mertz was not at that time claiming to be the inventor. Rather, they indicate that Adler, a Victor employee, was the inventor, inasmuch as defendant first suggested that Victor should apply.

In January, 1926, Mertz and Adler consulted counsel, and the preponderance of the evidence is that at that time the direct question was put to Adler and Mertz as to which was the inventor. Adler said that he was the inventor. Mertz made no protest, and the applications were prepared and filed in Adler's name. From these facts, therefore, it appears that Adler was the real inventor of the compound utilizing the effectiveness of sodium bichromate to inhibit corrosion of tin.

Of some interest in this connection are these facts: In his letter of November 2, Mertz suggested that any oxidizer when included in the detergent compound, would work as an inhibitor. Later development proved the fallacy of this theory. Certain oxidizers inhibit corrosion and others do not; and some agents, not akin to oxidizing agents, such as sodium sulphite, are successful and others are not. It is clear that discovery in this field arises, not from theory, but from observation and experiment. In chemical compound inventions, prediction is futile. Experiment is all essential, and the successful test of a new agent, producing a sought for new result, is a new discovery, unless its use is taught by prior art. It was the discovery that chromates would work successfully, which produced invention by Adler. The theory that all oxidizers would accomplish the desired result was erroneous, and, therefore, was discarded.

The rough draft of application presented to counsel in January, 1926, attempted to cover all oxidizers, and Mertz and Adler then learned that such claims would not be allowed by the Patent Office, because, first, the use of one member of the claim class, chlorosol, was old, and, second, no class can be patented as such unless all its members work, and inasmuch as all oxidizers would not work, such claims would be invalid.

The evidence, therefore, indicates that the only contribution of Mertz was the suggestion of a theory which proved to be false, to the effect that all classes of oxidizers would work, whereas what Adler discovered, as the result of experiment and test, and what is embraced in his patent is that certain of the class do work. Mertz, as promulgator of a falacious theory, was not the inventor. Patents are not granted for false theories; they issue for inventions growing out of discoveries of true facts. Corollary to this conclusion is the fact that in chemistry, invention results from empirical or experimental discoveries. Thus in United Chromium v. International Silver (D.C.) 53 F.(2d) 390, 393, affirmed 60 F.(2d) 913 (C.C.A.2), the court said: "The prior publications and prior patents relied on by defendant do not teach the patentee's invention. On the contrary, they emphasize the fact that Fink's `regulation' is one of the missing links in all prior chromium-plating efforts. Defendant attempts to supply this link from other metal plating arts. But, inasmuch as a chemical action is involved here, analogy does not go a long way, because, while one can predict with confidence in mechanics in some instances, and in some cases where mathematics can be applied, in chemistry, one almost entirely fails. In chemistry, one cannot anticipate a result. A result may be obtained only by experiment." See, also, Corona Chem. Co. v. Dovan Corp., 276 U.S. 358, 48 S.Ct. 380, 72 L. Ed. 610; Tyler v. Boston, 7 Wall. (74 U.S.) 327, 19 L.Ed. 93; General Electric Co. v. Laco-Phillips Co., 233 F. 96 (C.C.A.2); Naylor v. Alsop Process Co. (C.C.A.) 168 F. 911; Stevens v. Keating, 2 Web.Pat.Cas. 181; Toledo Rex Spray Co. v. California Spray Chemical Co. (C.C.A.) 268 F. 201. It may be that if one suggests a line of tests the results of which prove to be 100 per cent correctly predicted, invention will have occurred, as defendant here insists. But that is not the present case. We cannot meet an invention by art which suggests a line of tests, some of which experiment later shows would produce the result and some of which similar experiments show would not.

Defendant testified that he made some tests after November 2, 1925, and before November 11, 1925, upon trisodium phosphate and sodium dichromate. Other witnesses fixed the time as several weeks before November 11th. The records show no purchase of sodium dichromate before December, 1925. At that time Mertz ran a test to confirm Adler's chart. Mertz himself testified that he had a clear recollection of only one test of dichromate. Apparently, in view of the facts related, he is confused in the date of the test.

Furthermore, apparently defendant is estopped to claim now that he is the true inventor. As has been pointed out, Adler was employed by Victor to invent, and Mertz was a fiduciary agent of Diversey and had written to Victor that it or Diversey should own the invention and the patent thereon. At the time of the conference in January, 1926, he acquiesced in the statement of Adler that the latter was the inventor. The facts are such that Mertz was in fact a constructive trustee for Diversey of any patent if he made the invention thereof. Beecroft and Blackman Inc. v. Rooney, et al. (D.C.) 268 F. 545; Barr Car Co. v. C. & N. W. R. R., 110 F. 972 (C.C.A.7th); Bestwall Mfg. Co. v. United States Gypsum Co., 290 F. 798 (C. C.A.7th).

In considering the question of anticipation, it is well to keep in mind that discoveries in this field, as has been pointed out, arise from experiment. One cannot determine the usefulness of a reagent as an inhibitor of the corrosion of tin, which is the essence of both patents, from its efficacy as an inhibitor of corrosion of other metals. There is known no broader class, to which corrosion of tin belongs. The field is empirical, and when, as the result of experiment, a new reagent is found to accomplish the result, a patentable discovery exists. Corona Chem. Co. v. Dovan Corporation, 276 U.S. 358, 48 S.Ct. 380, 72 L. Ed. 610. Consequently, anticipation can arise only from the use of the same inhibitor or combination of inhibitors on the same metal. In other words, to anticipate the invention, we must find in combination, three things: (1) An alkaline detergent; (2) a chromate inhibitor of corrosion; and (3) applicability of (2) to tin.

So far as the product claims are concerned, it should be observed that the Patent Office, at the time these applications were presented, held product claims invalid,...