Oliver United Filters v. Silver

• Decision Date: 31 March 1952
• Docket Number: Civ. A. No. 2613.
• Citation: 103 F. Supp. 935
• Parties: OLIVER UNITED FILTERS, Inc. v. SILVER.
• Court: U.S. District Court — District of Colorado

103 F. Supp. 935

OLIVER UNITED FILTERS, Inc. v. SILVER.

Civ. A. No. 2613.

United States District Court D. Colorado.

March 31, 1952.

Pershing, Bosworth, Dick & Dawson and Winston S. Howard, all of Denver, Colo., and Mellin & Hanscom, Oscar A. Mellin, Leroy Hanscom, and Jack E. Hursh, all of San Francisco, Cal., for plaintiff.

Fairfield & Woods, James A. Woods, and Charles J. Beise, all of Denver, Colo., and Wilkinson, Huxley, Byron & Hume, Chicago, Ill., and W. A. McGrew, Denver, Colo., for defendant.

KNOUS, District Judge.

This is a patent infringement suit involving two patents owned by the defendant Silver covering a process and apparatus for continuous diffusion in the extraction of sugar from sugar beets. The suit was originally instituted by the plaintiff Oliver under the Declaratory Judgment Act, 28 U.S. C.A. §§ 2201, 2202, to test the validity of the Silver process patent No. 2,390,131, issued December 4, 1945, and the question as to whether such patent was infringed by the process performed by an apparatus manufactured and operated by Oliver, which herein will be referred to as the "Morton machine." Silver filed a counterclaim with his answer, and in both charged infringement of his hereinabove-identified patent by Oliver's use of the Morton machine. In addition, Silver filed a second counterclaim in which he charged infringement, by the same acts of Oliver, of a second Silver patent, No. 2,468,720, issued April 26, 1949, covering both process and apparatus.

In this state of the pleadings, and as determined at the pre-trial conference, Silver, notwithstanding his designation as defendant, was permitted to assume the role of plaintiff, with the right to open and close, and so present the issues in the order normally followed in patent infringement suits. Thus, herein, rather than designating the parties as plaintiff and defendant, they will be referred to as Silver and Oliver.

The basic questions for discussion are:

1) The validity of the two Silver patents; and

2) Whether the claims of the Silver patents are infringed in the particulars alleged by the accused Morton machine and its operation?

Oliver first charges that the Silver patents are invalid as not disclosing a patentable invention in view of prior knowledge and the prior art. In support, Oliver argues that Silver merely followed prior knowledge and the prior art and did not produce a new diffusion process and that his apparatus differs from the prior art merely in details of design well within the engineering skill of one skilled in the diffusion art.

In opposition, Silver concedes that he is not the originator of any one of the elemental parts or steps of his inventions, but claims that his inventions consist of new combinations of elements which produce a new and useful result and hence are patentable.

The Court is satisfied that the record and evidence support Silver's position on this point.

Since the inception of the sugar beet industry, the extraction of the sugar from the beets traditionally has been effected by a process of diffusion which is accomplished essentially by the bringing of water into contact with the pulp of the beets, which previously have been sliced into small shreds called "cossettes," whereby their sugar content passes into solution with the water to form a "juice," as the industry terms it, which is subsequently refined into commercial beet sugar. An understanding of the chemical and physical laws relating to diffusion, of course, antedated the industry. In the diffusion process the ideal result sought is the extraction of the highest possible percentage of the sugar content of the beets with a minimum of their impurities into a juice economically low in water content. Essentially, the problem is one of keeping unexhausted cossettes exposed to an unconcentrated portion of the diffusing liquid. This is so, because when the contact is between saturated liquid and undepleted cossettes the extraction ratio necessarily will be low. This situation early suggested to the inventors in this field the necessity for motion and the flow of both cossettes and the liquid in the cells or containers in which the treatment was effected. In fact, experience with what is known as the "Robert Battery," — a batch type of apparatus in which the cossettes as they are depleted are manually transferred from cell to cell to meet fresher liquids — standard equipment in the industry throughout the world for more than a century, suggested the employment of a countercurrent flow, in which the cossettes and liquid would travel in opposite directions not only in the cell but in a battery as well. Whether upon this basis, or some other, the record shows workers in the prior art in their search for economically feasible procedures for continuous diffusion devised and tried straight countercurrent flow systems. However, as the evidence discloses, the countercurrent practices so devised were not functionally or commercially successful. One of its difficulties arose from the clogging effect of the cossettes as they moved against the liquid.

In an effort to overcome the latter difficulty, workers in the prior art devised and turned to what is called the countercurrent-concurrent system of flow, wherein the cossettes and liquid, respectively, were caused to pass through the battery as a whole by movement in opposite directions, while progressing concurrently in the same direction through each cell.

The evidence shows that in actual operation the countercurrent-concurrent flow system did overcome the clogging objection attendant to the straight countercurrent method, but developed a new problem from the discovery that when the cossettes were transferred from cell to cell (an action not required in straight concurrent systems) there was carried with them sufficient liquid of higher sugar concentration to seriously impair the diffusion process in the cells to which they were progressively conveyed. This factor seemingly defeated any commercial acceptance or utilization of an apparatus employing a countercurrent-concurrent flow system.

Such a broad outline was the state of the development of the act when Silver entered the field. At this point, as the Court construes the evidence, it is clear that the problem of producing a commercially-successful continuous diffusion system remained unsolved, notwithstanding, as has been mentioned, that numerous attempts had been made involving almost every conceivable flow system and method of handling the cossettes.

As viewed by the Court, the evidence also indicates that at that time there was a widespread feeling among the workers in the field that acceptable practical results could not be secured from the countercurrent-concurrent flow system, but rather that effort should be made to bestow workable characteristics upon the straight concurrent type of flow.

Indeed, there are indications in the record that Mr. Shafor, who appeared as an expert witness for Oliver, shared the latter view.

Notwithstanding, Silver selected the countercurrent flow type as being the one presenting the greatest possibilities of commercial success. His claimed inventions, therefore, exist in and are restricted to the field of true diffusion systems employing a countercurrent-concurrent flow.

As the result of his study and effort as viewed by the Court, Silver produced, as claimed by him, the following major changes in the prior art:

First: He employed in the process an enforced submergence of the cossettes by causing them to pass from a point above the level of the juice to a point below the level of the juice by giving the cossettes a downward and upward course of movement with respect to the juice level, and

Second: He effected a substantial separation of the cossettes and their associated liquid at the time the cossettes are transferred from one cell to the next (hitherto practically unsolved in the prior art) without the utilization of force as would mash or damage the cossettes (an objectionable feature in prior apparatus employing pressure in expelling the liquid and thereby forcing undesirable nonsugar substances into the juice), or interference with the diffusion activity.

As specified in his patents, the enforced submergence of the cossettes was created by establishing a gravitational flow of the juice from cell to cell in a relatively non-foaming, quiescent condition (a desirable situation never practically achieved in prior art apparatus), while at the same time forcing the cossettes through a path of movement which originates above the liquid level in each cell respectively, and passes downward to a point below the surface of the liquid level into an intimate diffusing relationship with the liquid, and thence upwardly to a point above the liquid where a substantial and effective draining occurs. Although some of these elements may have been old, the combination was new.

There can be little question about the success, both practically and commercially, of the Silver process and apparatus. The record shows that Silver has installed sixteen commercial units at an average cost of $250,000 each. According to the evidence, each of these installations has effected great savings in the cost of operation and reduction in the loss of sugar. Parenthetically, it should be mentioned in this connection that while commercial success in and of itself cannot establish patentability, it is entitled to attention in determining whether a given device constitutes a patentable invention. See Steiner Sales Co. v. Schwartz Sales Co., 10 Cir., 98 F.2d 999, 1005.

In dealing with its contention that Silver practiced solely in the prior art, Oliver dissects Silver's inventions into their elemental parts and proceeds to attack them piecemeal on the basis that such elemental parts, standing alone and separately, are not in themselves new.

That such does not necessarily defeat invention is established by the following language of ...