Guthard v. SANITARY DIST.

• Decision Date: 18 October 1934
• Citation: 8 F. Supp. 329
• Parties: GUTHARD et al. v. SANITARY DIST. OF CHICAGO.
• Court: U.S. District Court — Northern District of Illinois

8 F. Supp. 329

GUTHARD et al. v. SANITARY DIST. OF CHICAGO.

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

October 18, 1934.

Lynn A. Williams and Clifford C. Bradbury, both of Chicago, Ill., for plaintiffs.

Wallace R. Lane, John J. Healy, George F. Barrett, James Hamilton Lewis, and William Rothmann, all of Chicago, Ill., and Arthur C. Denison and Newton D. Baker, both of Cleveland, Ohio, for defendant.

LINDLEY, District Judge.

Plaintiff, Activated Sludge, Inc., being the owner of six patents, No. 1,247,540, issued November 20, 1917, applied for October 9, 1914, No. 1,282,587, issued October 22, 1918, applied for November 7, 1916, No. 1,247,542, issued November 20, 1917, applied for October 18, 1915, reissue No. 15,140, issued July 5, 1921, applied for August 11, 1919, No. 1,286,017, issued November 26, 1918, applied for October 18, 1915, and No. 1,341,561, issued May 25, 1920, applied for August 8, 1919, sues for infringement thereof. The other plaintiffs have no interest in the patents, but are retained in the suit because of a counterclaim made by defendant.

The first mentioned four of said patents were the basis of similar action in City of Milwaukee v. Activated Sludge, Inc. (C. C. A.) 69 F.(2d) 577, 586, where they were held valid and infringed. Though the parties defendant in the prior case and in that now before the court lack identity, and there is therefore no binding adjudication, the decision in that cause must control unless the evidence bearing upon validity here is so substantially different as to require a variant finding. Likewise, if the patents are valid and the acts of the defendant the same as or equivalent to those of defendant in the Milwaukee Case, it would be presumptive upon the part of this court to enter a decree upon the question of infringement at variance with that approved by the Court of Appeals. Not possessing such temerity, therefore, I have contented myself, so far as these four patents are concerned, with an analysis of the likenesses and differences of the facts in the two records. I have kept in mind, however, the proposition that, if defendant's construction differs substantially from anything before the court in the Milwaukee Case and presents a broader scope of mechanical and scientific development, it is my duty to examine the prior art in order to determine whether the patents heretofore held valid are to be approved now as against such broader scope. In other words, I must determine, despite the previous adjudication, whether I can attribute to the four adjudicated patents an inventive construction broad enough to cover defendant's allegedly different and broader combination.

Defendant in the present case offered as anticipation, proof of the structure and character of a plant of the Michigan Carbon Company. Such evidence was not in the Milwaukee Case; but, upon examination, I find that the construction and working result of this structure were identical with that of the Mather and Platt apparatus before the court in the prior case. So, too, the conclusion is inevitable that the testimony here concerning the plant of the Buffalo Union Furnace Company, installed by the Pittsburgh Filter Company, had to do with structures substantially identical with those installed by the Pittsburgh Company at other places, evidence of which was presented in the Milwaukee Case.

Included in the record of the Wisconsin court was the testimony and documentary evidence of the witness Gregory whose deposition was also here. He produced photographs of certain experimental work of allegedly anticipatory character which he had made in England. Bearing upon the same feature, defendant presented here in addition the testimony and documentary evidence of the witness Kendall, but it was not substantially different from the testimony of the witnesses who testified at Milwaukee.

Defendants offered here, as part of the prior art, two British patents, Shone and Ault, No. 2,125 of 1893, and Beddoes No. 8,722 of 1908, which were not before the court in Wisconsin. Upon analysis, however, I am of the opinion that these patents disclose nothing of anticipatory character. Nor do I find in the fact that the Moore patents, which were before the Wisconsin court as evidence of the state of the art and before this court as evidence of anticipation, anything sufficient to warrant me in concluding that the District Court or the Court of Appeals would have reached any different conclusion, had the said patents been presented in the prior case for the greater purpose.

The only evidence bearing upon the assertion of intervening rights (under patent No. 1,247,542 and reissue No. 15,140), presented here, which was not before the court in Milwaukee, was that of experiments by defendant at its Packingtown plant, ending in March, 1917. It is to be observed that these experiments were abandoned and that the apparatus used was discarded, before the reissue. Defendant ceased to employ them or anything growing out of them prior to the date of plaintiff's reissue patent. As I understand the law governing intervening rights, whether grounded upon estoppel or laches, such experimental work, ceasing as it did before the date of the reissue, is wholly insufficient to establish such rights. Inasmuch as the Court of Appeals found no basis for intervening rights in the prior case, and inasmuch as the additional evidence offered here upon the same contention is obviously insufficient, it follows that the Court of Appeals' conclusion in this respect is decisive of the issue here.

With regard to the validity of the four patents first above mentioned, then, the record here is not substantially different from that before the District Court in Wisconsin and the Court of Appeals. I feel constrained, therefore, to refrain from any further consideration upon the merits of the contention of invalidity of such four patents. In doing so, I am fully conscious of the proposition that, if the attempted application of the patents by plaintiff in this case would result in a broader construction than that attributed to them by the Court of Appeals in the prior litigation, it would be my duty to decide whether, under such wider construction, the patents are valid. I hope my later discussion will disclose clearly the reasons why, under the evidence herein, even with that proposition in mind, I believe validity exists. To such conclusion I feel imperatively impelled by what the Court of Appeals has heretofore said.

Except as to the provision last mentioned, therefore, the ultimate questions submitted to this court for decision then are those, first, of the validity of the two patents No. 1,286,017 and No. 1,341,561, which were not in issue in the Milwaukee Case, and, second, of infringement of all six patents. So far as infringement of the first four patents is concerned, however, the issue is clearly within those decided in the prior case, to the extent, if any, which the evidence discloses that the structures and processes of defendant are identical with such of those of the city of Milwaukee as to which the Court of Appeals approved a finding of infringement. So far as the questions of validity and infringement of the last two mentioned patents are concerned, however, the adjudications of the District Court and the Court of Appeals are of no help to me here, except as to the reasoning of the two courts in their interpretation, analysis, and definition of the claims and specifications of the first four patents and to the extent that such decision interprets the invention of Jones growing out of the entire series of patents.

Both parties seem to agree that, in order properly to determine the question of validity of the two patents in issue here for the first time, this court should consider all the facts bearing upon just what Jones invented. This involves the necessity of some review of the history of the activated sludge process, its growth through various steps, and the effect of such evidence upon the validity of the two patents.

I shall not attempt any lengthy dissertation upon the interesting subject-matter of the nitrogen cycle, its working in vegetable and animal life, and the infinite examples of its constant operation in the multitudinous forms of nature in such life. Both the District Court and the Court of Appeals in the Milwaukee Case have made clear its nature, characteristics, and natural results. Suffice it to say, all these patents and the art with which we are concerned have to do with inventions, intended so to hasten nature's process as to bring about purification of sewage, in the course of so short a time as to make the suggested process of valuable practical value to mankind, struggling with sewage disposal in modern congested centers. The basic key to a successful solution of this problem is aeration, for by the proper use of air, aerobic or purifying bacteria are rapidly developed, and by its absence anaerobic or septic bacteria are fostered. Nature achieves its result through the agency of air, and the search of all who have struggled with the problem here concerned has been for a practical means for bringing about accelerated aeration with resulting increased rapidity of purification. For years bacteriologists experimented. They early recognized that the slime developing upon stones in running streams contained bacteria of aerobic character and might be reproduced in man-made containers under aerobic conditions by aeration. They first conceived the idea that to purify a liquid, therefore, they should insert in tanks, slates or some similar substance of solid character, to which the semisolids containing aerobic bacteria might cling, and then circulate the impure liquid over and among such deposits, and thereby bring it in contact with the aerobic bacteria therein. They learned at a comparatively early date that aerobic conditions were maintained by aeration. Therefore they purified liquid by circulating the same...