Musher Foundation v. Alba Trading Co.

• Citation: 150 F.2d 885
• Decision Date: 18 July 1945
• Docket Number: No. 338.,338.
• Parties: MUSHER FOUNDATION, Inc., v. ALBA TRADING CO., Inc.
• Court: United States Courts of Appeals. United States Court of Appeals (2nd Circuit)

150 F.2d 885 (1945)

MUSHER FOUNDATION, Inc., v. ALBA TRADING CO., Inc.

No. 338.

Circuit Court of Appeals, Second Circuit.

July 18, 1945.

Before L. HAND, AUGUSTUS N. HAND, and CLARK, Circuit Judges.

Eric Y. Munson, of New York City, for appellant.

Joffe & Joffe, of New York City (Joseph Joffe and Benedict Joffe, both of New York City, of counsel) for appellee.

L. HAND, Circuit Judge.

The plaintiff appeals from a judgment dismissing its complaint for the infringement of the two claims of Patent No. 2,221,404, granted to the plaintiff on November 12, 1940, upon the application of Sidney Musher. The defendant did not put in any evidence of the prior art, but relied upon two points: that it did not infringe Claim One and that Claim Two was invalid for indefiniteness. The disclosure is for a process of making an imitation olive oil by infusing a "glyceride" oil — such as cottonseed, or corn, oil — with a "macerated" paste made from dried olives: the first claim is for the process; the second, for the product. Briefly described, the process is as follows. Ripe olives are laid in layers alternating with salt, the optimum proportions being in weight about two of olives to one of salt. The resulting brine is allowed to remain from one to three days, is then poured off, and at the end of from fifteen to thirty-five days the olives have lost about seventy-five per cent of their moisture, and will contain from five to ten per cent of salt. They are then taken out of the brine and dried in various other ways described, until they have lost at least eighty per cent of their original moisture. They are then "ground to a fine paste." (At times it may be necessary to soak them in oil for a short while before doing this.) After grinding, they are put through a "stone or iron rolling or colloid mill," "in order to finely mill and divide the olive into a paste form"; so fine indeed that "when rubbed between the fingers, the individual particles * * * can no longer be felt." It is often desirable during this stage of the process to add not more than half in weight of the oil which is eventually to be infused.

This paste is then thoroughly mixed with whatever "glyceride" oil is to be used, in proportions of not more than twenty-five per cent of paste — the best proportion being less than ten and even as low, at times, as one half of one per cent. This infusion is carried on "preferably while the oil is at a slightly elevated temperature or such as is about 160° F. to 200° F. and desirably at about 175° F." Thereafter the mixture is "agitated" for "from one minute to several hours;" and it is then filtered to take out "undesired solids." When possible, it is "particularly desirable" after the paste and oil have been mixed "at the slightly elevated temperature" to put the mixture through a "colloid mill"; and that dispenses with any period of subsequent "agitation." If "dried salted olive is added to the glyceride oil and the entire composition put through a colloid mill or similarly dispersed, it is unnecessary to apply heat during the infusion procedure." The process may be carried out, though it is "a much less preferable alternative," by using very little salt — "about 1% to 2% — or none at all." We quote the two claims in the margin.¹

The defendant makes its product out of a base of corn oil with a paste of black — ripe — olives (to which it adds an undisclosed proportion of green olives for color only). Upon a deposition taken before trial it described the process as follows: "The black olives are first crushed in a standard olive press and then are ground in a standard grinder commonly called a funnel grinder. This paste is placed in the oil and left for a certain number of days until the flavor of olives and taste of olives is discharged into the oil. This oil is filtered in filter bags, and refiltered by pressure into tanks, and when a clear greenish color is obtained it is packed in cans. * * * We press the black olives in a standard olive press. Then we crush. Then we grind in a standard funnel grinder and that paste is put into the corn oil for a length of time to discharge the flavor and taste of olives. Now when that product is finished we take some oil from the green olives crushed that we have put together that is to discharge a part of the green olive color and place into the finished product to impart a greenish color to the entire bulk of the finished product." The moisture from the black olives is extracted "by mechanical means or dried in the sun"; salt is not used upon the black olives; and the infusion is carried on for three days. It will be noted that the olives after grinding are spoken of as forming a "paste"; but at the trial the testimony was that they were ground only so as to pass through a sieve of a quarter inch mesh. We shall assume that this is the defendant's present practice. When this process is compared with that described in Claim One, two differences, and only two appear: the process is carried on at room temperature and not for a "short time." The judge thought that these differences avoided infringement, and for that reason dismissed the complaint as to the process claim.

The specifications speak of heating as in any case only "preferred" during the infusion. Moreover, when dried salted olives are added directly to the oil, and put through a colloid mill, no heat is necessary; and the period of subsequent "agitation" can be entirely dispensed with, when the paste, after being thoroughly dispersed under heat, is put through such a mill. The undisputed testimony was that temperature and time are correlative factors in the infusion, as is generally the case in all chemical processes: i.e. the time may be shortened, if the temperature is raised, and must be lengthened, if it is not. Claim One selects, as the combination, "a slightly elevated temperature" and "a short time"; the defendant departs from this by using no heat but allowing the infusion to go on for three days at least. When dealing with such a claim, it would certainly be wrong to divorce heat and time into two separate elements; and to hold that, because the defendant left out heat, but greatly lengthened time, it omitted one of the constituents of the claim. The combination of the two correlatives constitutes a single element; and, although the defendant has not adopted the combination specified in the claim, it seems to us that the combination which it substitutes is an equivalent. There was absolutely no prior art; for the passing references in the testimony to earlier processes, on which the defendant relies, were totally inadequate under well settled law; moreover, the invention has had a very considerable success. Of course, the fact that verbally the infringing process is not within the claim is no objection to the application of the doctrine of equivalents; indeed it creates the very occasion which should evoke it. Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 41, 50 S.Ct. 9, 74 L.Ed. 147; Claude Neon Lights v. E. Machlett & Son, 2 Cir., 36 F.2d 574, 575; Black & Decker Manufacturing Co. v. Baltimore Truck Tire Service Corporation, 4 Cir., 40 F.2d 910, 914.

The defendant insists that the plaintiff is estopped to claim any equivalents by its cancellation of three claims (quoted in the margin²), all of which did not contain the element of heat. These claims were not...