Industrial Chemicals v. Carbide Carbon Chemicals Corporation

• Citation: 315 U.S. 668,53 USPQ 6,86 L.Ed. 1105,62 S.Ct. 839
• Decision Date: 30 March 1942
• Docket Number: No. 680,680
• Parties: U.S. INDUSTRIAL CHEMICALS, Inc., v. CARBIDE & CARBON CHEMICALS CORPORATION
• Court: United States Supreme Court

315 U.S. 668

62 S.Ct. 839

86 L.Ed. 1105

U.S. INDUSTRIAL CHEMICALS, Inc.,

v CARBIDE & CARBON CHEMICALS CORPORATION.

No. 680.

Argued March 13, 1942.

Decided March 30, 1942.

Rehearing Denied April 27, 1942.

See 316 U.S. 708, 62 S.Ct. 1038, 86 L.Ed. —-.

Messrs. William H. Davis and Dean S. Edmonds, both of New York City, for petitioner.

Mr. Samuel E. Darby, Jr., of New York City, for respondent.

Mr. Justice ROBERTS delivered the opinion of the Court.

This is a suit by the respondent to restrain the petitioner from infringing claims 8 and 9 of reissue patent No. 20,370. The application for reissue was filed September 25, 1936, and granted May 18, 1937. The original patent was No. 1,998,878, applied for March 22, 1932, and granted April 23, 1935, to Theodore Emile Lefort of Paris, France, for a 'Process for the Production of Ethylene Oxide'. The application was based on earlier French patents. The respondent purchased the United States patent in April 1936, and, as a result of its study thereof, the patentee was persuaded to apply for the reissue.

If the reissue patent is valid, no question is now raised as to petitioner's infringement of the claims in suit. The District Court held the patent valid and infringed.¹ The Circuit Court of Appeals affirmed.² We took the case because of an apparent conflict with decisions of this court and several Circuit Courts of Appeals, to the effect that a reissue patent must, under the statute, be for the same invention as the original patent.³ The petitioner also raised a question as to intervening rights which, in the view we take, need not be considered or decided.

Ethylene is a hydrocarbon gas, C2H4. For a long time it was thought impossible directly to oxygenize it to form C2H4O by bringing oxygen and ethylene into contact, though the formation of ethylene oxide by direct oxidation was commercially desirable. Efforts at direct oxidation, instead of producing the oxide, resulted in less desirable oxygenated compounds such as aldehydes. Lefort conceived the idea of effecting the oxidation by catalytic reaction, that is, the use of a substance, which, in some unexplained way, causes a chemical union or reaction when the two substances to be affected are brought into contact in its presence under given conditions. He recognized one incident of the direct oxidation process as applied to ethylene tending to decrease its efficiency, namely, that, in addition to the principal reaction producing C2H4O, there occurs a side reaction by which a portion of the ethylene is converted into carbon dioxide and water, and, to that extent, the ethylene is wasted. He found that, by certain control of the process, this side reaction could be so restricted as not to decrease the production of ethylene oxide below a profitable level.

According to both the original patent and the reissue, ethylene and oxygen are to be introduced into a heated reaction chamber in the presence of a catalyzer. The petitioner insists that the original patent also treats as a mandatory or necessary step the voluntary introduction of water, whereas the reissue in specification and claims 8 and 9 omits this requirement, and therefore describes a different process. The respondent, on the other hand, asserts that as both patents describe the oxygen of air as that which may be used, and as atmospheric air contains moisture, the first, specifying water, and the reissue specifying air, both contemplate the introduction of water in some form and therefore are for the same process.⁴ This dispute must be resolved by a comparison of the disclosures of the two instruments. If that comparison leads to the conclusion that the reissue is not for the same invention as the original, the reissue is void as not within the terms of the statute.

We shall postpone discussion of the tests of identity or difference of invention, and the use of expert testimony, to a statement of the criteria of judgment furnished by the language of the specifications and claims of the two documents.

The opening paragraph of the original patent is:

'This invention has for object a process for the production of ethylene oxide which mainly consists in subjecting ethylene to the simultaneous action of the oxygen of air and of water in presence of a catalyzer and, if need be, of hydrogen.'

After referring to the use of hydrogen as optional, the specification deals with the character and composition of metals to be used as catalyzers. It then speaks of the elements to be used to obtain the desired reaction thus:

'The ethylene can be obtained from any source of supply: * * *

'Water can be admitted to the reaction vessel, either in the liquid state, or as steam.

'The oxygen can be the oxygen of the air, this latter gas being introduced in the reaction.'

Immediately following, it is said:

'The efficiency of the reaction is increased by diminishing the CO2 which is formed, by introduction, in this reaction, of a suitable quantity of water. A suitable quantity of CO2 can also be previously introduced in the reacting gases.'

The CO2 which it is desired to diminish is that which is formed by the undesirable side reaction above mentioned. This reaction is again mentioned, and the introduction of water again specified thus:

'Moreover, the applicant has found that the reaction giving CO2 is, contrarily to previous belief, a reaction of oxidation independent from that giving ethylene oxide and from that giving aldehydes. From experiments effected by the applicant, it results that, if water is introduced in suitable quantity, the reaction is not only facilitated, as above stated, but, in addition, the reaction giving CO2, probably by direct oxidation of ethylene according to the equation C(2)H(4) 3O(2) = 2H(2)O 2CO(2) is checked, owing, as is probable, to the partial pressure of water.'

It is further said that the experiments indicate that the side reaction producing CO2 and water may be completely checked and the efficiency of the reaction producing ethylene oxide increased if CO(2) is previously introduced in addition to the water and the reacting gases.

Three modi operandi are next indicated as examples. In the first, compressed ethylene and compressed air are led, with or without hydrogen, into a heated tube contain- ing the catalyzer, the tube being connected with a circulating pump to supply water under pressure. In the second, the catalyzer is introduced and the tube heated and then 'a mixture of ethylene, air, water vapour and hydrogen' is sent through the tube. In the third, the catalyzer is introduced into a high-pressure tube filled with water. Pure ethylene is added 'in order that it can dissolve in the water.' The tube is heated and 'air and hydrogen are slowly introduced.'

The specification concludes:

'The experiments * * * have shown that, in presence of the catalyzers indicated, water, in the form of steam or not, considerably promotes the reaction ensuring the production of ethylene oxide.'

All of the seven claims include oxygen and water or steam. Claim 1 is typical. It runs:

'A process for the production of ethylene oxide, consisting in subjecting ethylene to the simultaneous action of oxygen and water, in presence of a catalyst (describing the catalyst) at a temperature between 150 and 400 C.'

In some of the claims the word 'steam' is substituted for 'water'; in two, 'hydrogen' is added.

Various options or alternatives are mentioned in the specifications, but nowhere in them, or in the claims, is the introduction of water treated as optional or permissive. The District Court made no finding directed to this fact, but the court below definitely holds, and we agree, that, in the process defined in the original patent, the voluntary introduction of water into the reaction chamber is mandatory.

Experiments conducted by the respondent just before it acquired the patent demonstrated that ethylene oxide could be produced by passing ethylene and air over a catalyst at the temperature described in the patent without the voluntary introduction of water. Its patent attorney was asked to study the patent and he concluded that Le- fort should have obtained far broader claims. He prepared two oaths for execution by Lefort to support the application for reissue.

In the first it was averred that the specification and claims failed to emphasize the fact that the reaction takes place 'whether or not water is present'; and that the attorney in drawing the application had not been adequately instructed that the 'fullest benefit and application' of the invention was the production of the oxide in the presence of the catalyst 'with or without the inclusion of water in the reaction'.

After rejection, the second affidavit was filed. This stated that a certain amount of water was necessarily present in the reaction chamber due to the side reaction which gives CO2 and water, and that the introduction of additional water and carbon dioxide was merely permissive in order to augment the quantities already formed by that reaction.

Thereupon reissue was granted with a rewritten specification, the seven original claims and two new ones, 8 and 9, which are those in suit.

The substituted specification opens thus:

'This invention provides a specific and novel process for making ethylene oxide. It essentially consists in causing ethylene to combine directly with molecular oxygen at temperatures of about 150 to about 400 C. in the presence of a surface catalyst which favors the oxidation of ethylene to ethylene oxide under these conditions.'

The statement is made that ethylene from any source can be used, and that the oxygen can be that of the air.

The only reference to the introduction of water is:

'The oxidation of ethylene takes place with a giving off of heat, and it is, of course, desirable to maintain the temperature of the zone of reaction within the range specified. This can be facilitated by suitable dilution of the reaction gases, such as that...