General Chemical Co. v. STANDARD WHOLESALE P. & A. WKS.

• Decision Date: 01 May 1935
• Docket Number: No. 3818.,3818.
• Parties: GENERAL CHEMICAL CO. v. STANDARD WHOLESALE PHOSPHATE & ACID WORKS, Inc.
• Court: U.S. Court of Appeals — Fourth Circuit

77 F.2d 230 (1935)

GENERAL CHEMICAL CO. v. STANDARD WHOLESALE PHOSPHATE & ACID WORKS, Inc.

No. 3818.

Circuit Court of Appeals, Fourth Circuit.

May 1, 1935.

W. Brown Morton, of New York City (R. Contee Rose, of Baltimore, Md., and Charles W. Riley, of New York City, on the brief), for appellant.

Clair W. Fairbank, of New York City (Charles McH. Howard, of Baltimore, Md., and William R. Perkins and Robert A. Norton, both of New York City, on the brief), for appellee.

Before PARKER, NORTHCOTT, and SOPER, Circuit Judges.

SOPER, Circuit Judge.

The bill of complaint of the General Chemical Company, plaintiff in the District Court, charged infringement by Standard Wholesale Phosphate & Acid Works, Inc., defendant, of United States Reissue Patent No. 19,282, to Slama and Wolf, relating to the oxidation of sulfur dioxid and catalyst therefor, and prayed for an injunction and an accounting of profits and damages. The bill was dismissed by the District Court, without going into the question of infringement, on the ground that the patent is void because of unreasonable delay in the filing of a disclaimer of claim 7 of the original patent No. 1,371,004 of March 8, 1921, for the infringement of which the suit was originally brought.

The original patent was the basis of an earlier suit for patent infringement instituted July 24, 1929, by the plaintiff against the Selden Company at Pittsburgh in the Western District of Pennsylvania. The decree of that court dismissed the bill on June 17, 1932 see General Chemical Co. v. Selden Co. (D. C.) 60 F.(2d) 144, and adjudged that claim 7 of the patent was invalid on the ground that it failed to enumerate one of the essential elements of a catalyst, and that the other claims were valid but were not infringed when restricted to the specific disclosures therein, as required by the state of the prior art. On September 15, 1932, an appeal was taken to the Circuit Court of Appeals of the Third Circuit, which, on September 20, 1933, affirmed the decree of the District Court see 67 F.(2d) 133. A petition for rehearing was denied on October 30, 1933; and a petition for writ of certiorari to the Supreme Court, filed on January 30, 1934, was denied on March 5, 1934. 291 U. S. 678, 54 S. Ct. 529, 78 L. Ed. 1066. No express mention of claim 7 was made in either of these petitions which were directed to the consideration of the scope of the claims, but no abandonment of claim 7 or acceptance of the adverse decisions thereon was expressed.

Pending the appeal in this case, that is, on March 22, 1933, the plaintiff filed the bill of complaint in the instant case at Baltimore, alleging that the defendant herein (which is a customer of the Selden Company) was infringing all of the claims of the original patent, including claim 7. On the next day, the plaintiff filed a petition in the suit against the Selden Company in Pittsburg, calling the Baltimore suit to the attention of the court, and seeking to reopen the case against the Selden Company and to stay the appeal then pending in the Circuit Court of Appeals; but the petition was denied on May 8, 1933, and no appeal was taken from the order of the court. On October 17, 1933, shortly after the affirmance of the decree in the Pittsburg case by the Circuit Court of Appeals, the Selden Company filed a supplemental bill therein, alleging that the plaintiff was attempting to relitigate with one of its customers the same question which had been adjudged by the Circuit Court of Appeals, and therefore was acting contrary to the rule laid down in Kessler v. Eldred, 206 U. S. 285, 27 S. Ct. 611, 51 L. Ed. 1065, forbidding a patentee from harassing the customers of one whom he had unsuccessfully sued for infringement. An injunction restraining the plaintiff from proceeding with the Baltimore suit was sought. On December 6, 1933, the motion for injunction was denied, and, on appeal, the decision of the District Court on this point was affirmed on September 26, 1934, twelve days before the trial of the instant case was begun in the Baltimore court. The Circuit Court of Appeals, stating that it did not appear that the catalyst used by the defendant in the Baltimore suit was identical with that covered in the Pittsburg case, held that the Pittsburg court was without authority to try the issues involved in the Maryland suit. See Selden Co. v. General Chemical Co., 73 F.(2d) 195.

It will be observed that the bill of complaint in the instant case was filed on March 22, 1933, before the decision of the first appeal in the Pittsburg case, the plaintiff taking the position that the article alleged to infringe in the Baltimore case differed from that involved at Pittsburg. Thus the instant case was awaiting trial during the interval in which the first appeal was decided on September 20, 1933, the petition for certiorari to the Supreme Court was denied on March 5, 1934, and the second appeal in the Pittsburg case was decided on September 26, 1934. It is important to bear these proceedings in mind in passing on the question whether the plaintiff's actions in seeking a reissue of the original patent and in filing a formal disclaimer of claim 7 were seasonably taken.

On April 7, 1934, the plaintiff filed in the Patent Office an application for a reissue of the original patent, and sought to substitute for claim No. 7 a new claim, in which was included the element whose omission in the original claim had been held fatal in the Pittsburg case. This application was made 32 days after the denial of the writ of certiorari in the Supreme Court in that case. The Patent Office held that the paper was not entitled to a filing date because it failed to comply with Rule 85 of the Patent Office, or with Rev. St. § 4895 (35 USCA § 44), requiring that an application for reissue by an assignee shall be made and sworn to by the inventor. The application showed that it was filed in the name of the plaintiff, because one of the inventors, Slama, had been dead for a number of years, and the applicant had no recent information as to whether the other inventor was alive. Later the signature of Wolf, the other inventor, was obtained, and the application was refiled on June 16, 1934. It was then considered and Reissue Patent No. 19,282 was granted on August 21, 1934. The plaintiff then amended its bill in the Baltimore case, setting up this reissue patent and charging infringement of claims 1 to 6 and claim 8 thereof.

In the meantime, under date of April 12, 1934, the plaintiff sent to the Patent Office a disclaimer in respect to claim 7 of the original patent, stating in the accompanying letter that a new claim 7, redrafted to correct the deficiency upon which the decree of invalidity had been based, had been filed, and that the disclaimer was filed out of abundant caution to avoid the possibility of an adverse ruling that the cancellation of the claim by a reissue was not the equivalent of the statutory disclaimer. The filing date of the disclaimer was April 13, 1934, 38 days after the denial of the writ of certiorari, and 7 days after the filing of the application for reissue.

On October 1, 1934, 5 days after the decision of the second appeal in the Pittsburg case, the defendant amended its answer in the pending case and set up the defense of invalidity of the original patent on the ground of unreasonable delay in filing the disclaimer; and on October 8, 1934, filed a motion to dismiss the bill on the same ground. This motion was granted, and the bill was dismissed on October 9, 1934. The present appeal followed in due course.

The District Judge held (8 F. Supp. 265), in accordance with the decision of the Supreme Court in Ensten v. Simon, Ascher & Co., 282 U. S. 445, 51 S. Ct. 207, 75 L. Ed. 453, that a patent containing an invalid claim may be saved from the effect of the general rule that such a patent is wholly void, by complying with the provisions of the disclaimer statute, Rev. St. § 4917, 35 USCA § 65, and filing a disclaimer of the invalid claim in the Patent Office within a reasonable time; and that in the...