Georgia Kaolin Company v. Thiele Kaolin Company, 15401.

• Decision Date: 09 February 1956
• Docket Number: No. 15401.,15401.
• Citation: 228 F.2d 267
• Parties: GEORGIA KAOLIN COMPANY, Appellant and Cross-Appellee, v. THIELE KAOLIN COMPANY, Appellee and Cross-Appellant, THIELE KAOLIN COMPANY, Appellee and Cross-Appellant, v. GEORGIA KAOLIN COMPANY, Appellant and Cross-Appellee.
• Court: U.S. Court of Appeals — Fifth Circuit

228 F.2d 267 (1955)

GEORGIA KAOLIN COMPANY, Appellant and Cross-Appellee, v. THIELE KAOLIN COMPANY, Appellee and Cross-Appellant, THIELE KAOLIN COMPANY, Appellee and Cross-Appellant, v. GEORGIA KAOLIN COMPANY, Appellant and Cross-Appellee.

No. 15401.

United States Court of Appeals Fifth Circuit.

December 21, 1955.

Rehearing Denied February 9, 1956.

Alex A. Lawrence, Savannah, Ga., Walter J. Blenko, Pittsburgh, Pa., John B. Harris, John B. Harris, Jr., Macon, Ga., Eugene F. Buell, Pittsburgh, Pa., for appellant.

Charles J. Merriam, Chicago, Ill., Chas. W. Walker, Macon, Ga., Merriam & Lorch, Chicago, Ill., Anderson, Anderson, Walker & Reichert, Macon, Ga., of counsel, for appellee.

Before RIVES, TUTTLE and JONES, Circuit Judges.

RIVES, Circuit Judge.

Georgia Kaolin Company (hereafter called appellant) is a New Jersey corporation engaged at its Dry Branch, Georgia plant in the processing of clay for use in the paper coating trade. It originally brought this suit on September 22, 1949 against Thiele Kaolin Company (hereafter called appellee), a Georgia corporation also competitively engaged in clay processing for the paper coating industry, charging infringement of its Maloney patent,¹ from appellee's manufacture and sale of certain commercial grades of paper coating clay² at its Sandersville, Georgia plant. The original complaint sought the usual injunctive relief and damages, and in its answer appellee interposed, inter alia, the usual, basic defenses of non-infringement and invalidity of the patent, both as failing to disclose patentable invention as a matter of law and as anticipated, in fact, by numerous other prior art patents and uses.³

At a pre-trial conference held on February 11, 1950, it was agreed between the parties that the issues thus raised were "properly referable" for trial before a Special Master, and the district court so ordered.⁴ The Master agreed upon, John Gilbert, Esquire, subsequently held two lengthy hearings beginning on September 11, 1950 and February 5, 1951, at which a voluminous amount of testimony was taken on both issues of validity and infringement. After preparing an initial report sustaining validity, but finding non-infringement, and considering extensive oral and written objections thereto filed by both parties, the Master filed a final report with the district court on September 29, 1952, substantially adhering to his previous view that the Maloney patent was valid, but had not been infringed.

The district court adopted the above stated conclusions of the Master on June 19, 1953, in an order from which an appeal was initially taken to this Court but subsequently dismissed because of doubt as to finality of the decision. On October 23, 1953, appellant filed a supplemental complaint charging further infringements by "different products (and) proccesses" made and employed by appellee "subsequent to the filing of the original complaint," and trial before the Master thereon, to which appellee filed an answer that its products and processes were then "identical in every material respect with the processes and products which the Master's Report found do not infringe the patent in suit." On that same date, the district court's prior order of June 19, 1953, purporting finally to adopt and confirm the Special Master's final report of September 29, 1952, was, by agreement of the parties, "vacated, pending final judgment in view of supplemental complaint," and appellee's aforementioned counterclaim was withdrawn.

The issues thus drawn by the supplemental complaint and answer were not again referred to the Master for trial, but a hearing thereon was held before the district court on November 30, 1953, at which time testimony was taken and the court informally restated its impression, announced at a former hearing held on August 5th, that its previous order confirming the Master's report was a "final judgment" and "res adjudicata" with respect to any allegations of the same or similar acts of infringement previously considered. However, in its formal opinion, thereafter filed on July 26, 1954, the court found "that defendant's processes and products charged as infringements are the same processes and same products complained of in the original complaint and do not infringe said patent," and concluded that neither grade Nos. 1 nor 1B of appellee's accused clay products infringed the Maloney patent. The court's final judgment simultaneously filed expressly confirmed the Master's report, held the Maloney patent valid but not infringed, and independently adjudicated dismissal of both the original and supplemental complaints, so that all issues before the court, as well as those previously considered by the Master and reviewed by it, were finally resolved. On August 9, 1954, appellant filed the main appeal from the findings of the Master and court below on non-infringement, and on August 20, 1954, appellee filed its cross-appeal attacking their conclusions as to validity.

Validity of the Maloney Patent.

The Maloney patent was originally filed on November 26, 1934, and issued May 16, 1939,⁵ to a corporate predecessor of appellant, as assignee of the inventor, William T. Maloney. To facilitate an intelligent understanding of the arguments pro and con validity, claims 5, 9 and 10 of the patent, here alleged to be infringed by appellee's grades No. 1 and 1B clays, are fully quoted in the margin.⁶

As its language reveals, claim 5 is a "process claim" which teaches a method for treating crude Georgia clay so as to produce "a finely divided material adapted for use in place of satin white in coating paper," whereas "product claims" 9 and 10 are essentially descriptive of the end product of the process disclosed in claim 5, also similarly described in terms of its function as "a finely divided material adapted for use in place of satin white in paper-coating compositions * * *." (Emphasis ours.) Claim 5 more particularly describes that "finely divided material" as a clay fraction "containing colloidal particles and non-colloidal smaller particles at least about 80% of which are of a size between 0.1 and 2 microns and adapted to impart * * * gloss and color when applied to paper." (Emphasis again ours.) Claim 9 speaks somewhat vaguely of precipitating the aqueous (water and clay) suspension under "controlled conditions", otherwise undefined, to recover a clay fraction also described as "consisting of colloidal and non-colloidal smaller particles of which at least about 80% are between 0.1 and 2 microns, inclusive, in size, and in such proportions (not definitely stated) as to impart * * * gloss and color, etc." (Emphasis also ours.) Finally, though it also contains the somewhat obscure "under controlled conditions" phrase, claim 10 alone uniquely requires "at least 90%" of the clay particles to be "of a size two microns and smaller and in such proportions (also not definitely stated) as to impart * * * gloss and color, etc." (Emphasis ours.)

Appellee contests the validity of the Maloney patent principally on four grounds: (1) Its alleged anticipation by, and failure to disclose patentable invention over, certain prior art patents and references not expressly considered by the Patent Office before issuance;⁷ (2) because of Maloney's alleged attempt to monopolize an unpatentable natural product and phenomena of nature;⁸ (3) alleged invalidity of the single "process claim", as well as of both "product claims" in issue, for describing Maloney's contribution, if any, purely in functional terms at the precise point of his asserted novelty;⁹ and (4) finally, because of alleged ambiguity and uncertainty in other italicized portions of the claims resulting from Maloney's failure to disclose any specific method of control and the precise proportions of the various size clay particles desired; and particularly in his failure, in each claim, to specify any commercially recognized method (such as Calbeck & Harner, Bouyoucas or Casagrande) for testing the stated percentages of clay particles within his supposedly "critical" 0.1-2 micron control range.¹⁰

With reference to appellee's first contention as to invalidity for anticipation and failure to disclose invention over the prior art, we think Maloney's teachings probably disclose a patentable contribution over the "finer (clay particle) the better theory" attributable to the prior art patentees, Stocker and Rafton, and also deserve independent recognition over the course, wire-mesh, screening processes of Edgar and Callighan. See footnote 7, supra.¹¹

Though the contention has some force, we think appellee's second argument, that the claims are invalid as attempting to monopolize an unpatentable natural product and phenomena of nature, is also insufficient to justify invalidation of the patent, since it unfairly minimizes the novelty and utility of Maloney's process in materially improving the physical properties of the natural clay product for the paper coating industry, so as substantially to reduce the need for "satin white"; and in producing an improved clay fraction which imparted greater gloss and color than possible with theretofore known "H. T. clay", so as to render its use commercially more advantageous to the paper coating industry and justify its patentability. Cf. Vincent v. Suni-Citrus Products Co., 5 Cir., 215 F.2d 305; see Rumford Chemical Works v. New York Baking Powder Co., 2 Cir., 134 F. 385.

We likewise reject appellee's third insistence, supra, as to invalidity of the claims for their functional language, since this argument emphasizes the functional aspects of their disclosure (i. e., in terms of the result or product produced), without according sufficient weight to the overall process or treatment concept whereby Maloney was enabled to produce the improved clay product. See Minnesota Mining & Mfg. Co. v. International Plastic Corp., 7 Cir., 159 F.2d 554, 558; cf. Montgomery v. Marzall, 88 U.S.App.D.C. 281, 189 F.2d...