Engelhard Industries, Inc. v. Research Instrumental Corp.

• Decision Date: 23 December 1963
• Docket Number: No. 17848.,17848.
• Parties: ENGELHARD INDUSTRIES, INC., Appellant, v. RESEARCH INSTRUMENTAL CORPORATION, Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

324 F.2d 347 (1963)

ENGELHARD INDUSTRIES, INC., Appellant, v. RESEARCH INSTRUMENTAL CORPORATION, Appellee.

No. 17848.

United States Court of Appeals Ninth Circuit.

October 28, 1963.

Rehearing Denied December 23, 1963.

James E. Bryan, Washington, D. C., and Elliott & Pastoriza, and William J. Elliott, Santa Monica, Cal., for appellant.

Kendrick & Stolzy, and Elwood S. Kendrick, Los Angeles, Cal., for appellees.

Before HAMLEY and KOELSCH, Circuit Judges, and MacBRIDE, District Judge.

KOELSCH, Circuit Judge.

By its complaint, Engelhard Industries, Inc. (Engelhard) charged Research Instrumental Corp. (Research) with infringement of U. S. Letters Patent No. 2,805,191, and with unfair competition. The patent was issued on September 3, 1957 to Engelhard's assignor Hersch and is entitled "Oxygen Analysis of Gases." In the complaint Engelhard alleged that Research had infringed "the patent" by manufacturing and selling oxygen analyzers that embodied the invention of the patent; Engelhard further alleged that Research had unfairly competed by misappropriating, prior to the date the patent issued, confidential information relative to a working model of its analyzer.

After extensive discovery proceedings, Research moved for summary judgment in its favor. In a supporting memorandum it advanced the following reasons why summary judgment should be entered: The patent is invalid, file wrapper estoppel, the patent is not infringed, and the acts of Research do not constitute unfair competition. As to all of these grounds, Research asserted that there was no genuine issue as to any material fact.

Resisting the motion Engelhard filed two affidavits, together with a statement purporting to list genuine issues of material fact. The trial court opined (D.C., 196 F.Supp. 138) that Research was not guilty of either infringement or unfair competition and accordingly did not pass on the question of validity.

Engelhard then sought a rehearing. The petition was denied and judgment was entered against Engelhard, who appealed to this court.

The Hersch patent defines a method and an apparatus for detecting electro-chemically the presence of oxygen, particularly minute or trace quantities, in other gases. The apparatus includes in combination the constituent elements of the ordinary automobile storage battery or galvanic cell — that is, a container or case, two electrodes (one a negative pole or cathode, and the other a positive pole or anode), and a liquid electrolyte.¹ It operates on the well-known principle that oxygen coming into contact with the cathode and the liquid electrolyte in a galvanic cell sets up a chemical reaction which causes the production of ions; the ions flow toward the anode to produce an electric current. This current varies with the rate of absorption of the oxygen into the cell, which in turn is a function of the amount of oxygen coming into contact with the cathode. The current can be registered by a galvanometer or other measuring device.

The alleged novelty of the Hersch patent lies in the cathode. In the first of two embodiments of the invention depicted in the patent the cathode appears as a solid piece of metal; it is so suspended that a portion rests in the pool or reservoir of electrolyte in the cell. In the second embodiment the cathode is tubular and composed of metal gauze; it is positioned above the reservoir but encircles a wick that extends into the liquid.

The cathode of the accused analyzer is composed of eight pieces of fine wire screen folded in half. These double screen sections are partially immersed in the reservoir. And due to their construction the electrolyte, by means of capillary action, creeps up between the folds.

The claims in the Hersch patent are broad enough to cover a cathode composed of screen, for their only limitation is that the cathode must be of "imporous metal." And the statement in the patent specifications that "the cathode may take the form of a solid metal element such as sheet, wire, etc., or it may be in the form of gauze, the elements of which are solid strands," would seem to expressly show the patent monopoly extends to the use of screen.

Nevertheless, the district court, believing the doctrine of file wrapper estoppel applicable, held that Engelhard could not assert that its patent covered the screen cathode used in the accused analyzer.² Its holding was based on the notion that Engelhard represented that his invention consisted of a method and apparatus in which electrolyte did not rise above the level of the reservoir and onto the unimmersed portion of the cathode.

We are unable to agree. It appears that when the patent application was filed the patent examiner rejected claims on several grounds, one being that they did not define over the prior art, particularly the patent granted to one Haller, (U. S. Letters Patent No. 2,651,612). He tentatively determined that no generic claim was allowable, that each of the two embodiments of the invention appearing in the drawings constituted a separate specie of an oxygen analyzer; and he required Hersch to elect between claims specific to one or the other of those species.³

In response, Hersch amended his application. He revised some of the claims to meet the examiner's general objections; he retained his generic claims, as he was permitted to do, and he expressly elected to prosecute the specie exemplified by the wire gauze cathode, selecting accordingly certain of the claims which he believed read on the elected specie. However, the examiner ruled that, since the latter claims as then worded spoke of the cathode as "imporous," they described the first rather than the second specie because "wire gauze * * * is considered porous in the broad sense."

If at this stage of the application Hersch had acquiesced in the examiner's definition of the phrase "imporous cathode" and if he had continued to employ that phrase in subsequent amendments of his application he would, in effect, have withdrawn his election of the second specie and substituted for it an election of the first; and any generic claims would have been likewise limited to a method and apparatus employing an imporous cathode as opposed to one of screen or gauze. Roemer v. Peddie, 132 U.S. 313, 10 S.Ct. 98, 33 L.Ed. 382 (1889).

But Hersch did not let the matter lie. Following the examiner's ruling Hersch again amended his application. In an effort to conform his claims to the elected specie he replaced all of the old claims with new ones. The old claims had called for an "imporous cathode" but the new ones, both specific and generic, referred to and described it as a "cathode of imporous metal." After the language had been thus broadened, the examiner made no further objection that the claims did not comport with the election; he thereafter approved the application and the patent issued with this wording.⁴

Nor do any of the representations Hersch made, either in themselves or considered with the amendments, justify the placing of a limitation upon the patent claims.

The essential feature of the Hersch patent is the maintenance of a cathode so designed and so positioned in the cell as to establish between the electrolyte and the cathode a line of contact that enables the gas being tested to unite with them simultaneously at the same point, referred to as the "three-phase boundary." This method permits the oxygen molecules to be ionized without first having to diffuse through the electrolyte, as would be required if the cathode were completely submerged in or covered by a film of the electrolyte. As a result, Hersch stated, his analyzer is more sensitive and less sluggish in operation than those in which electrolyte covers the cathode. During the prosecution of the patent application, Hersch emphasized and re-emphasized that, in order to create this "three-phase boundary," his cathode was designed and operated so as to prevent electrolyte from creeping upon its unimmersed portion, and he iterated and reiterated that in this respect his cathode differed materially from Haller's, which was completely covered with a film of electrolyte. He stated, for example, that his cathode was "devoid of pores, to prevent creeping of the electrolyte on or along the exposed cathode surface such that a film of electrolyte would subsequently completely envelop the cathode," and that his invention embraced "* * the utilization of stagnant or substantially stagnant electrolytes to prevent the creeping thereof along the exposed cathode surface."

Hersch never did say that all of the unimmersed portion of his cathode was completely free of electrolyte or that there was no creep whatever above the liquid level of the reservoir. Rather, he carefully explained that the creep did not "completely" envelop the cathode, and he prefaced his statement that the electrolyte must be stagnant with other statements that showed the phrase "exposed cathode surface" meant not "the unimmersed portion of the cathode," but "the area of the cathode free of electrolyte."

Our conclusion that there is no estoppel does not necessarily require a reversal of the judgment. A patent for a method or process claim is not infringed unless all of the steps or stages of the process are used Royer v. Coupe, 146 U.S. 524, 13 S.Ct. 166, 36 L.Ed. 1073 (1892); Goodyear Dental Vulcanite Co. v. Davis, 102 U.S. 222, 26 L.Ed. 149 (1880), and a patent for an apparatus is not infringed unless the accused device is a copy of the claimed apparatus "either without variation, or with such variations as are consistent with its being in substance the same thing." Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42, 50 S.Ct. 9, 13, 74 L.Ed. 147 (1929), quoting from, Burr v. Duryee, 1 Wall. 531, 573, 68 U.S. 531, 573, 17 L.Ed. 650 (1863).

It has already been noted that an essential feature of the Hersch patent, evidenced in the claims, is a so-called "free area" on the cathode. The court was entitled to conclude,...