IF Laucks, Inc. v. Kaseno Products Co.

• Decision Date: 15 June 1932
• Docket Number: 659.,No. 621,621
• Citation: 59 F.2d 811
• Parties: I. F. LAUCKS, Inc., v. KASENO PRODUCTS CO. et al. (two cases).
• Court: U.S. District Court — Western District of Washington

59 F.2d 811 (1932)

I. F. LAUCKS, Inc., v. KASENO PRODUCTS CO. et al. (two cases).

Nos. 621, 659.

District Court, W. D. Washington, N. D.

June 15, 1932.

G. Wright Arnold and Raymond D. Ogden, both of Seattle, Wash., for plaintiff.

J. Y. C. Kellogg and Richard J. Cook, both of Seattle, Wash. (Battle, Hulbert & Helsell, of Seattle, Wash., of counsel), for defendants Kaseno Products Co. and George F. Linquist.

Allen & Walthew, of Seattle, Wash., for defendants Chas. H. Lilly Co. and Wilmot H. Lilly.

CUSHMAN, District Judge.

These suits are for the infringement of three patents for cold process glues. In this opinion these patents will be referred to as the Johnson patent, the caustic soda patent, and the carbon bisulphide patent, except where otherwise indicated.

The defendants Kaseno Products Company and George F. Linquist will be referred to as the defendants.

Johnson Patent.

The first of the three patents, in time, is the reissue of the Johnson patent of July 3, 1923, reissue No. 16,422, original No. 1,460,757. Claims 5 and 8 of this patent are not in suit. The claims in suit comprise both product and process claims. Claims 3 and 7 of this patent are as follows:

"3. An adhesive composition comprising the tacky substance of the soya bean, hydrated lime, and sodium fluoride."

"7. The process of making an adhesive composition which consists in extracting the oil from the soya bean, grinding the residue, and then adding to the finely ground residue, hydrated lime and sodium fluoride."

The defendant Linquist testified:

"A. Do you want the formula for the glue?

"Q. From August, 1927. I do not know what you call it.

"A. The glue that was turned out, it had soya meal, 65; tri-sodium phosphate, 6; sodium per borate, 1; sodium fluoride, 1; vegetable casein, 10, and lime, 18."

The foregoing shows infringement by the defendants, if this patent is valid. Tilghman v. Proctor et al., 102 U. S. 707, 731, 26 L. Ed. 279; Hoskins Mfg. Co. v. General Electric Co. (D. C.) 212 F. 422, 428; Schram Glass Mfg. Co. v. Homer Brooke Glass Co. (C. C. A.) 263 F. 903.

Claim 3, it has been contended, is void because the invention of the reissue patent is not the invention taught or disclosed in the original Johnson patent; that the invention disclosed in the original Johnson patent was that the soya bean contains an adhesive constituent which Johnson designated a "tacky substance"; that the file wrapper of the original patent limited the definition of "tacky substance" to nitrogenous matter; that the nitrogenous matter in the soya bean is protein; that there is no disclosure or teaching whatever in the original patent that the tacky substance is soya bean flour.

The plaintiff, after the commencement of these suits, disclaimed chemically isolated protein. No other practical method of isolation has been shown. In the specifications of the original patent it is stated:

"I have discovered from experiments that a high class waterproof adhesive, such as so-called glue, may be realized from soya beans, or rather the residue derived from soya beans after the oily content of the beans has been extracted. This residue, I have found, contains a highly valuable adhesive constituent which provides an excellent base for an adhesive formula. One feature of the same resides in the fact that I can use either the residue as a whole, or else to realize a high grade product, I can extract by any suitable means the adhesive constituent of the residue.

"In carrying out the invention, soya beans are first pressed, or otherwise treated, to extract their oily content and the resultant pressed cake is either finely ground, when the whole of the residue is to be used, or else it is treated to extract the adhesive constituent when the high grade adhesive is to be produced. This adhesive constituent, or even the finely ground pressed cake, may be considered as a base for my formula and the same, on account of its adhesive qualities, I will term a tacky substance." (Italics the court's.)

In view of this disclosure, it is clear the defendants' contention in this particular is not tenable.

Defendants further contend that there was no invention in substituting the protein of the soya bean in place of casein as an adhesive base; that the protein of soya bean, frequently referred to in the prior art as "vegetable casein," is practically identical with the protein of milk, or casein and its equivalent.

Upon this question, even unaided by the presumption in favor of the validity of the patent, the decided preponderance of the evidence is in plaintiff's favor. The evidence shows that with soya bean meal or flour as a glue base there is not the same uncertainty, lack of uniformity, or variation in the result as there is with casein. The prior art taught the necessity of the isolation of the adhesive base. Johnson taught this was not necessary and that what had been considered largely a waste material might be used as a valuable glue base. Further reasons why this contention of the defendants is untenable it is not necessary to state.

The defendants further contend that the patent is void because of insufficiency of disclosure.

The patent specifications provide:

"I have discovered from experiments that a high class waterproof adhesive, such as so-called glue, may be realized from soya beans, or rather the residue derived from soya beans preferably after the oily content of the beans has been extracted. This residue, I have found, contains a highly valuable adhesive constituent which provides an excellent base for an adhesive formula. One feature of the same resides in the fact that I can use either the residue as a whole, or else to realize a high grade product, I can extract by any suitable means the adhesive constituent of the residue.

"In carrying out the invention, soya beans are first pressed, or otherwise treated, to extract their oily content and the resultant pressed cake is either finely ground, when the whole of the residue is to be used, or else it is treated to extract the adhesive constituent when the high grade adhesive is to be produced." (Italics the court's.)

Defendants contend that, if the patent is to be held valid, the specifications must fully and completely describe the method of making "this high class waterproof adhesive," and, as it does not teach the method of extracting "the adhesive constituent," that the patent is invalid. The plaintiff, having disclaimed chemically isolated protein, and now suing on the claims, for the finely ground soya bean cake, after oil extraction, as the adhesive base, this contention is without merit.

Defendants further contend that the patent is void because the claims are too broad, indefinite, abstract, ambiguous, and vague; that it is not shown what is meant by "tacky substance" of the soya bean; and because no proportions are stated.

In the specifications it is stated:

"In carrying out the invention, soya beans are first pressed, or otherwise treated, to extract their oily content and the resultant pressed cake is either finely ground, when the whole of the residue is to be used, or else it is treated to extract the adhesive constituent when the high grade adhesive is to be produced. This adhesive constituent, or even the finely ground pressed cake, may be considered as a base for my formula and the same, on account of its adhesive qualities, I will term a tacky substance * * * the tacky substance and the two agents named being mixed in solution. I, of course, do not confine myself to hydrated lime and sodium fluoride, as any other agents having substantially the same characteristic qualities will be sufficient. In fact, entirely different agents may be used, but I have not as yet experimented further than the agents of this character. The hydrated lime is, of course, a waterproofing solvent, and the sodium fluoride is a so-called liquefying agent; in other words, it prevents the compound from drying out. I have found that the following proportions give satisfactory results: About two and one-half to three parts hydrated lime, one part sodium fluoride, about ten parts of the tacky substance, and sufficient water to make up a solution of the desired consistency.

"The term adhesive, or glue, should not be construed in either the specification or claims as limited to the ordinary accepted meaning of the term, as this tacky substance may be used to advantage in calcimine formulas and other instances where a strong adhesive is not necessarily required. * * *

"Soya beans, or rather the residue, may be obtained at a very nominal cost and the treatment necessary to either grind the residue when it is used as a whole, or when it is treated to extract the adhesive constituent, is very simple. Consequently the base for the formula is realized without expensive equipment or other high cost."

The foregoing disclosures, in the particulars questioned, are sufficient to teach those familiar with the glue art.

Defendants further contend that the patent is void because of lack of invention, in view of the known state of the art, and that it was directly anticipated by certain patents and publications. In this opinion throughout only those patents and publications stressed in defendants' brief as anticipations of the patents in suit will be considered. Among the patents claimed to anticipate the Johnson patent are:

United States patents No. 1,245,975 to Satow, No. 1,143,893 to Dodd and Humphries, No. 883,995 and No. 932,527, both issued to Wiechmann. These four patents are for plastics rather than for adhesives. While the plastic art is not one entirely unrelated to the glue art, it is not so nearly related as to be an analogous art whose teachings are to be considered a part of the adhesive art.

In the adhesive art — particularly in that part of the art having to do with veneering and the ply wood industry, which is here involved — while the property of cohesion in the dried glue line itself is...