Hall Laboratories v. Economics Laboratory

• Decision Date: 21 May 1947
• Docket Number: Civil Action No. 722.
• Citation: 72 F. Supp. 683
• Parties: HALL LABORATORIES, Inc. v. ECONOMICS LABORATORY, Inc.
• Court: U.S. District Court — District of Minnesota

72 F. Supp. 683

HALL LABORATORIES, Inc. v. ECONOMICS LABORATORY, Inc.

Civil Action No. 722.

District Court, D. Minnesota, Third Division.

May 21, 1947.

Walter J. Blenko and George E. Stebbins, both of Pittsburgh, Pa., and Fred N. Furber, of Fowler, Youngquist, Furber, Taney & Johnson, all of Minneapolis, Minn., for plaintiff.

Roger T. McLean, Frank E. Barrows, and W. Brown Morton, Jr., of Pennie, Edmonds, Morton & Barrows, all of New York City, and Montreville J. Brown, of Oppenheimer, Hodgson, Brown, Donnelly & Baer, all of St. Paul, Minn., for defendant.

DONOVAN, District Judge.

This is a suit for infringement of claim 28 of Hall Patent No. 19,719, hereinafter referred to as 719, and claim 10 of Hall Patent No. 2,035,652, hereinafter referred to as 652. Plaintiff seeks injunctive relief against defendant, together with an accounting.

Defendant denies that it committed acts of infringement, and alleges that said patents, and each of them, are invalid.

Patent 719 consists of a composition for softening hard water. Patent 652 is a dishwashing compound. Title to both patents is in plaintiff by assignment, and the products of the claimed inventions have been made available to the public under the trade names of "Calgon" for water-softening purposes, and "Calgonite" for dishwashing.

The two claims we are here concerned with read as follows:

719, Claim 28 — "A washing composition comprising an alkali-metal metaphosphate which is water soluble and capable of sequestering calcium in a but slightly ionized condition and a deflocculative detergent capable of peptizing greases."

652, Claim 10 — "A washing composition for cleansing greasy articles, containing an alkali-metal saponifying detergent and sodium hexametaphosphate, the alkali-metal saponifying detergent being in amount sufficient to produce in aqueous solution a highly alkaline solution having a pH value of at least 10.5, the sodium hexametaphosphate being in amount sufficient to prevent the precipitation of calcium soap in the washing of greasy articles in such highly alkaline solution."

The products of said claims will be referred to as plaintiff's compounds or compositions.

Said patents described methods of water softening and preventing the precipitation of calcium in the manner outlined in the above-quoted claims. It is conceded that hard water is caused almost entirely by the presence therein of calcium and calcium salts. Iron, silica, aluminum and like salts may also be present, and contribute to water hardness, but only in minor proportions.

Plaintiff corporation, together with The Buromin Company and Calgon, Inc., are entirely owned by Hagan Corporation. The parent company was organized in 1918. Defendant company was organized in 1925. The Buromin Company was organized in 1931, and Calgon, Inc., was organized in 1934. It is undisputed that plaintiff and its related companies, i. e., Hagan Corporation, The Buromin Company, and Calgon, Inc., have been closely associated in the promotion and marketing of glassy phosphate material variously described as "Calgon," "Hagan Phosphate" and "Buromin." The first two are identical. Plaintiff entered into a series of agreements with Chemische Fabrik Joh. Benckiser, of Germany, Swann Chemical Company, Victor Chemical Works, Albright and Wilson, Limited, Charlotte Chemical Laboratories, Monsanto Chemical Company, and Rumford Chemical Works, and thereby, in effect, controlled the products of the two patents here involved to such an extent that the only remaining source of supply of glassy phosphates was the Blockson Chemical Company.

John M. Hopwood, President of Hall Laboratories, Inc., testifying for plaintiff, provides a graphic visualization of the method of water-softening prior to the patenting of the methods here in suit, as follows:

"I became acquainted with water softening many years before by association with the Hagan Corporation. I was in charge of a number of mines and at nearly all of those mines we had to use softening plants. By a softening plant, I mean a plant that we precipitated the hardness by the introduction of lime and soda ash. Then we filtered off the precipitated sludge and used the clear water for treating our boilers. I also, of course, had the ordinary common knowledge that I believe all of us have with the packaged water softeners used up until that time. * * *"

As to the commercial water softening methods up to 1932:

"Distillation I would say was the first, where you generate steam and then condense the steam to water, and then use that water as distilled water. Next would be the treatment of water with the different chemicals available for precipitating, so that you got now the hardness precipated. You do that with your own city water system, and you produce a water that is too alkaline to drink, so you acidify it and bring the pH to a point where it is harmless for drinking purposes.

"Then the zeolite system, base exchange system, which was invented, I believe, by Gans about forty years ago. I was quite familiar with that.

"Then the next system that I am familiar with was discovered some forty years later, the system of Hall's whereby the housewife could take a packaged product for the first time in her life and for the first time, I think, in the history of the world, take a packaged product, sprinkle a little of that product in water and produce any type of softening that she desired without a sign of sludge, or without increasing its alkalinity one iota."

The Hall method leading to patents 719 and 652 came about, according to the testimony of Mr. Hopwood, when the patentee approached him with information that he had discovered a new use for Hagan Phosphate. Hall advised Hopwood that said phosphate could be used as a water softener, and proceeded to demonstrate his thesis by taking two flasks of Pittsburgh water (considered hard), pouring liquid Buromin (plaintiff's glass product dissolved in said water) into one flask, and leaving the other flask "just at it was." Into each flask Hall then added the same amount of soap. The result was described by Mr. Hopwood as follows:

"The flask containing the metaphosphate when taken up just sudsed copiously. There was no precipitate in it. It was just a clear crystal water with several inches of soap suds on the top of it. The water that had not received the small quantity of liquid phosphate, Hagan Phosphate, just got milky and there was not a sign of any soap sud in it. * * * I could see, or I thought I could, a future for this material that was beyond anything that we had ever imagined as coming to us from our then established business. I could see the hundreds of thousands, the millions of packages of water softening products that were sold in every store in the United States, every drug store and every grocery store in the United States. * * * These packaged water softeners, consisting of trisodium phosphate by various names — calcium carbonate—by different names, and the different products like washing soda and things of that kind that were sold for softening water. * * *"

The patents here in suit were applied for and issued to Ralph E. Hall, and in due course were assigned to plaintiff. It may be not entirely accurate, but will contribute to simplicity, to say that the products of the patents arise out of a process of melting mixtures of sodium metaphosphate and sodium pyrophosphate, and then quickly cooling the molten matter thus obtained. The result is a glassy material, such as herein referred to as commercial Calgon. (See bottle 3, exhibit 7.)

In the words of the patentee, "the teaching of * * * the patent is the sequestering or tying up of the calcium in water soluble complex." As a consequence, the precipitation of the calcium is hindered or repressed by addition of material which might normally make it insoluble. In other words, the calcium is held in solution in a manner not entirely clear or understandable.

For many years, preceding Hall's discovery, a glassy product known as Graham's salt, or sodium hexametaphosphate, had been known to all familiar with the science of chemistry. The term, sodium hexametaphosphate, was applied to such glassy material in 1898 by Fleitmann and Henneberg. Long prior thereto, Fresenius, in his text, tells how —

"The precipitation of calcium by alkali-metal carbonates is completely prevented or rendered very incomplete by the presence of citrates (Spiller) or alkali-metal metaphosphates (Rube).

"Alkali-metal citrates and metaphosphates prevent or render incomplete the precipitation of calcium by alkali-metal oxalates."

The last quotation, in effect, describes a then recognized interference with, or repression of, or hindering of, the precipitation a chemist would ordinarily expect on adding a carbonate.

The file wrappers in evidence disclose the prior patents considered by the Examiner in the Patent Office. The Fresenius text is not listed among them.

The patents in suit do not specifically refer to "glassy phosphates", but plaintiff claims the patents give it the exclusive right to the use of glassy phosphates during the life of the patents. The term "glassy phosphates" covers a wide range. There are a large number of metal metaphosphates. Mellor lists about fifty of them. It appears from plaintiff's evidence that the only one useful for the purposes of the patents was sodium hexametaphosphate.

The glassy material used by defendant is manufactured by Blockson Chemical Company, which company plaintiff refers to in this case as an "unlicensed source." The record suggests that Blockson's glass is a fused mixture of sodium metaphosphate and sodium pyrophosphate. In the case at bar we are particularly concerned with "metaphosphate" and "hexametaphosphate." As pointed out, Mellor, describing many of them, includes hexametaphosphate in his list.

Defendant has been engaged in manufacturing cleansing products and marketing a compound known by the trade name of "Soilax...