Engelhard Industries, Inc. v. Sel-Rex Corporation

• Decision Date: 10 May 1966
• Docket Number: Civ. A. No. 1002-63.
• Citation: 253 F. Supp. 832
• Parties: ENGELHARD INDUSTRIES, INC., Plaintiff, v. SEL-REX CORPORATION, Defendant.
• Court: U.S. District Court — District of New Jersey

253 F. Supp. 832

ENGELHARD INDUSTRIES, INC., Plaintiff, v. SEL-REX CORPORATION, Defendant.

Civ. A. No. 1002-63.

United States District Court D. New Jersey.

May 10, 1966.

Meyner & Wiley, by G. Douglas Hofe, Jr., Newark, N. J., Roger T. McLean and John Boustead, New York City, of counsel, for plaintiff.

Pindar, McElroy, Connell & Foley, Newark, N. J., Richard Whiting and Stanley L. Amberg, Herbert Burstein, New York City, of counsel, for defendant.

MEANEY, District Judge.

Plaintiff brings this action for declaratory judgment under 28 U.S.C. §§ 2201 and 2202 and the patent laws 35 U.S.C. § 1 et seq., to declare defendant's United States Patent No. 3,104,212 invalid and uninfringed by plaintiff or its customers.

Defendant's amended answer set up a counterclaim alleging infringement of its patent by plaintiff and demanding injunctive relief, an accounting for profits and treble damages, the assessment of costs and attorneys fees against plaintiff, and other appropriate relief.

Plaintiff, Engelhard Industries, Inc., is a corporation of the State of Delaware, doing business at 113 Astor Street, Newark, New Jersey.

Defendant, Sel-Rex Corporation, is a corporation of the State of New Jersey, doing business at 75 River Road, Nutley, New Jersey.

The court's jurisdiction is founded upon 28 U.S.C. §§ 1338(a) and 1400(b), and the patent laws, 35 U.S.C. § 1 et seq.

Defendant Sel-Rex is in the business of manufacturing and supplying equipment and processes to the electrochemical industry, principally in the field of precious metal deposition.

On September 17, 1963 United States Patent No. 3,104,212 was issued to defendant as the assignee of Edwin C. Rinker and Robert Duva. The claimed invention "relates to improvements in the process of producing a ductile electrochemical pure gold plate and to the electrolyte for producing the same." The several beneficial objects claimed for the patent are obtained "by providing a relatively weak acid bath containing (1) a weak, stable, organic acid, and (2) gold as a cyanide (potassium gold cyanide, for example), the acidity of the bath being adjusted to pH 3-6" ("pH" being a measure of the hydrogen ion concentration in a solution, which determines the acidity or alkalinity of the solution. For pure water at 25°C. a pH of from 0 to 7 is acid, from 7 to 14 alkaline).

The patent in suit contains 18 claims, of which Nos. 1, 2, 5, 6, 12 and 14 are in issue. The invention is claimed in terms of both the method or process of electrodepositing gold and the electrolyte or bath which is used in the process.

A typical electrodeposition system consists of a tank containing an aqueous solution of the metal compound to be deposited, called the bath or electrolyte; a positively charged electrode, or anode; and a negatively charged electrode, or cathode. The electrodes are immersed in the electrolyte, spaced apart and connected externally to a direct current power source. The current, when turned on, flows between the anode and the cathode, and the positively charged metal ions in the bath "plate out" as atoms on the cathode, forming a coating of the metal which was in the compound. Various metals may be used as electrodes.

Defendant's process and bath were sold commercially for some years prior to the issuance of the patent, and still are, under the name Temperex. The bath is used primarily in electronic circuitry.

Since issuance of the patent and prior to the filing of the complaint, plaintiff has made and sold, but not used, "E-55 Gold Cyanide" which is a mixture of potassium gold cyanide and ammonium citrate, in proportions such that the gold content of the mixture is 50.0 per cent by weight. During the same period of time plaintiff has sold, but neither made nor used, "E-55 Conducting Salts" which is dibasic ammonium citrate, the ordinary ammonium citrate of commerce. Plaintiff advises its customers to use the products in proportions of 3.0 ounces of the E-55 Gold Cyanide per gallon of electroplating solution and 150 grams of E-55 Conducting Salts per gallon of the same solution. The electroplating solution when thus made up has a pH of about 5.2, and plaintiff recommends to its customers that the pH be adjusted to between 5.5 and 6.0 by the addition of ammonium hydroxide.

Defendant's position is that the Engelhard bath is the chemical equivalent of its patented product, the only difference being the order in which the ingredients are added to the bath. It asserts —correctly—that the constituents in the Engelhard bath are the same as they would be if the bath were made up by using citric acid partially neutralized with ammonium hydroxide to bring its pH to 5.5, a method taught by the patent, instead of by using ammonium citrate and adjusting its pH with ammonium hydroxide, as is done by plaintiff's customers; and that plaintiff's bath therefore infringes the patent.

Plaintiff advances several grounds upon which it bases its contention that the claims of the patent involved are invalid: (1) invalidity under 35 U.S.C. § 112, the first paragraph, in that the specification does not contain a sufficient written description of the invention; (2) invalidity under 35 U.S.C. § 112, the second paragraph, in that the specification does not particularly point out and distinctly claim the subject matter of the invention; (3) invalidity under 35 U.S.C. § 102(a), (b) and (e), or 35 U.S.C. § 103, because the subject matter of the patent was anticipated by the prior art or was obvious to one skilled in the art at the time the claimed invention was made. Plaintiff also argues the applicability of the doctrine of file wrapper estoppel to the cause. These points will now be considered.

I. File Wrapper Estoppel

Defendant's patent was granted based upon Application Serial No. 814,758. That application was in Interference No. 91,899 with Application Serial No. 830,122, filed by Robert A. Ehrhardt. The count of the interference was the following claim: "A method of electrodepositing gold which comprises electrolyzing a solution in which the initial ingredients consist essentially of citric acid and a complex cyanide salt of an alkali metal and gold, said solution having a pH value of about 3-6." Ehrhardt moved before the Patent Office Examiner to broaden the scope of the count to call for "a citrate ion-containing compound" in the place of "citric acid." Rinker and Duva opposed Ehrhardt's motion, which the Examiner denied as being broader than the disclosure of either party, saying: "The broad language of the proposed count calling for the addition of citrate ion-containing compounds reads upon the addition of such compounds to the exclusion of citric acid per se and there is no example in the application of Rinker et al. which discloses process which contains citrate ion but no citric acid."

Plaintiff argues that since its bath contains a citrate ion-containing compound (ammonium citrate) but does not require citric acid in its preparation, defendant is estopped by the finding of the Examiner from asserting that defendant's patent covers plaintiff's bath.

The gravamen of file wrapper estoppel is that an applicant for a patent who acquiesces in the rejection of his claim, and accordingly modifies it to secure its allowance, will not subsequently be allowed to expand his claim by interpretation to include the principles originally rejected, or their equivalents. International Manufacturing Co. v. Landon, Inc., 336 F.2d 723 (9th Cir. 1964), cert. denied 379 U.S. 988, 85 S.Ct. 701, 13 L.Ed.2d 610 (1965), rehearing denied 380 U.S. 938, 85 S.Ct. 936, 13 L.Ed.2d 825 (1965); M. O. S. Corporation v. John I. Haas Co., 332 F.2d 910 (9th Cir. 1964); Metal Coating Corp. v. Baker Manufacturing Co., 227 F.Supp. 529 (W.D.Wis.1964). The doctrine does not apply where the applicant does not give up any element of his claim to meet an objection of the Patent Office Examiner. Toy Ideas, Inc. v. Montgomery Ward & Co., 172 F.Supp. 878 (D.Md. 1959).

It appears, and this court holds, that the doctrine of file wrapper estoppel does not apply in the instant case, where Rinker and Duva, the patentee's assignors, did not modify any of their claims in order to secure their patent, but rather opposed Ehrhardt's motion to broaden the count of the interference.

II. 35 U.S.C. § 112, the second paragraph

The second paragraph of 35 U.S.C. § 112, provides in part: "The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. * * *"

Claims 1, 2, 5 and 6 of the patent in suit all provide that the gold which is sought to be plated out on the cathode is to be added "as a gold cyanide." The patent application also sets forth three examples indicating how the bath is to be made up. Examples 1 and 3 call for the addition of "Gold (as potassium gold cyanide)"; Example 2 specifies the use of "Gold (as cyanide)."

In preparation for trial, both parties conducted inter partes tests to prove the operability or inoperability of various types of baths relative to the patent in suit. In plaintiff's Tests Nos. 2A and 2B plaintiff prepared a bath which purported to follow Example 2 of the patent and which was composed of 47.2 grams per liter of sodium acetate; 2.8 grams per liter of acetic acid; 4.5 grams per liter of 88.3 per cent gold cyanide; and the remainder water. Both tests were run for ten minutes at a pH of 5.5, temperature of 70°F., current density of 10 amperes per square foot and fast cathode oscillation of 32 feet per minute. There was no evidence at all of any gold plate on the cathode.

Plaintiff argues that since the patent calls for the use of gold cyanide in the preparation of the bath and that since the bath is completely inoperable when gold cyanide is used, the patent "overclaims" the invention and is therefore invalid, citing Graver Tank & Mfg. Co. v. Linde Air Products Co., 336 U.S. 271, 69 S.Ct. 535, 93 L.Ed....