Newport Industries v. Crosby Naval Stores, 10720.

• Decision Date: 12 January 1944
• Docket Number: No. 10720.,10720.
• Citation: 139 F.2d 611
• Parties: NEWPORT INDUSTRIES, Inc., v. CROSBY NAVAL STORES, Inc., et al.
• Court: U.S. Court of Appeals — Fifth Circuit

139 F.2d 611 (1944)

NEWPORT INDUSTRIES, Inc., v. CROSBY NAVAL STORES, Inc., et al.

No. 10720.

Circuit Court of Appeals, Fifth Circuit.

January 12, 1944.

Benjamin H. Sherman and Samuel W. Kipnis, both of Chicago, Ill., and R. W. Thompson, Jr., of Gulfport, Miss., for appellant.

Clarence B. Des Jardins, of Cincinnati, Ohio, Toxey Hall and Lee D. Hall, both of Columbia, Miss., B. E. Eaton and Jas. S. Eaton, both of Gulfport, Miss., and Harry C. Robb and Harry C. Robb, Jr., both of Washington, D. C., for appellees.

Before SIBLEY, HOLMES, and WALLER, Circuit Judges.

SIBLEY, Circuit Judge.

The appellant, plaintiff below, sued appellees for infringement of four patents having reference to wood rosin manufacture, and by amendment also sought to enjoin the use of trade secrets alleged to have been obtained from appellant's former confidential research chemist now in appellees' employ. The decree in the District Court found the patents valid but not infringed, and dismissed the claim as to trade secrets. The appeal is confined to two patents and the trade secrets claim.

The patents thus brought before us are No. 1,807,599, entitled Process of Purifying Rosin, and No. 1,794,537, entitled Process of Treating Decolorizing Agents. The former patent teaches how to take dark FF Rosin and by first removing from a solution thereof the terpenes, and passing it through fuller's earth, to remove the color and make better grades. A relatively large amount of fuller's earth is requisite, and it soon becomes choked or fouled, and the second mentioned patent is for a process of cleansing the filtering agent by means of naphtha and alcohol so as to reuse the fuller's earth or other clay indefinitely. We do not deem it necessary to go into the details of the processes and the several claims.

The appellees argue that the patents are invalid for want of invention. Not having appealed from the portion of the decree upholding validity, we do not think this attack is open to them. Morley Construction Co. v. Maryland Casualty Co., 300 U.S. 185, 57 S.Ct. 325, 81 L.Ed. 593. We consider the prior art and the nature of the inventions so far only as is necessary to understand and construe the patents, so as to better test the questions of infringement. It is clear as to each patent that it is not basic or primary, but was preceded by others in the same and allied fields, and that each element is old, and only modification and combination of them can be claimed to be novel. As combination patents they are to be narrowly and strictly construed, and there will be infringement only if the same steps or their precise equivalents are followed by the infringer.

The facts are fully found by the trial judge who heard the witnesses testify and observed many experiments made. There was the usual conflict of ideas and opinions among expert witnesses. We think the fact conclusions are supported by evidence and not clearly erroneous, and we accept them. They authorize the conclusion that neither patent is infringed.

As to the first named patent, no filtering substance is mentioned but fuller's earth, and that is mentioned more than a score of times and in each claim. Appellees use a material mined in Nevada in recent years, ground into granular form and sold under the trade name Coenite. It has been billed as "clay", but not as "fuller's earth". We do not think the trade would think an order for Coenite could be filled by shipping fuller's earth, or vice versa. We think appellant is correct in arguing that there are many...