Otto v. Koppers Company
| Decision Date | 28 December 1956 |
| Docket Number | No. 655-W.,655-W. |
| Court | U.S. District Court — Northern District of West Virginia |
| Parties | Carl OTTO, Plaintiff, v. KOPPERS COMPANY, Inc., a Delaware corporation, and Wheeling Steel Corporation, a Delaware corporation, Defendants. |
O'Brien & O'Brien, Wheeling, W. Va., Pennie, Edmonds, Morton, Barrows & Taylor, and John E. Hubbell, New York City, for plaintiff.
Schmidt, Hugus & Laas, Wheeling, W. Va., and Brown, Critchlow, Flick & Peckham, Pittsburgh, Pa., for defendants.
This is an action for patent infringement, involving two patents owned by the plaintiff, Dr. Carl Otto (hereinafter sometimes referred to as "Otto"), who is a citizen of the State of New York, an engineer, and the head of Otto Construction Company, a New York firm engaged in the design and erection of by-product coke oven plants. Defendant, Koppers Company, Inc., a Delaware corporation (hereinafter sometimes referred to as "Koppers"), has principal offices in Pittsburgh, Pennsylvania, is licensed to do business in West Virginia, and is also engaged in the design and erection of by-product coke oven plants. Defendant, Wheeling Steel Corporation, a Delaware corporation (hereinafter sometimes referred to as "Wheeling"), owns and operates a plant at Follansbee, in the Northern District of West Virginia, where apparatus and processes charged to infringe both Otto patents, have been built and operated.
The original complaint charged infringement of Otto's U.S.Patent No. 2,599,067 which discloses and claims method and apparatus for the production of ammonium sulphate as a by-product from coke oven gas by means of a "spray" type saturator. After answer by Koppers and Wheeling challenging validity of the claims of the patent and denying infringement, Otto served on Koppers a number of interrogatories, to some of which Koppers objected. This Court ruled on these objections, requiring answers to some and sustaining objections to others. Based upon information thus obtained by Otto through interrogatories, an amended complaint was filed expanding the original complaint to include an additional charge that the defendants had infringed an earlier Otto U.S.Patent No. 2,423,794, which discloses and claims apparatus and process for production of ammonium sulphate as a by-product from coke oven gas by means of a special "flare mouth" type dip pipe saturator. The defendants answered this amended complaint denying infringement of the additional patent as well, asserting that its claims were also invalid, and specifying the particular prior art upon which defendants would rely to sustain their charge of invalidity as to both patents.
In considering Koppers' objections to interrogatories prior to the filing of Otto's amended complaint, it became necessary to determine the territorial scope of proof of alleged acts of infringement of Patent No. 2,599,067 and this Court's decision on that question is reported in Otto v. Koppers Company and Wheeling Steel Corporation, 134 Fed.Supp. 886. By the effect of said decision, evidence of infringement as to both patents is limited to structures built and processes used by these defendants in the Northern District of West Virginia.
Explanation of the subject matter of the two Otto patents here involved appears to be necessary. The gas produced from the coke manufacturing process contains ammonia in substantial quantities. For certain reasons, it is desirable, or even necessary, to remove the ammonia from the coke oven gas before the gas can be properly and safely utilized. Over the years, the by-product coke oven industry has faced the problem of removing the ammonia from the gas and at the same time obtaining a by-product disposable to economic advantage.
The generally accepted solution of this problem has been to bring the coke oven gas containing the ammonia into contact with a liquor containing sulphuric acid so that a reaction occurs between the ammonia and sulphuric acid, thus producing marketable ammonium sulphate.
For years, most of the by-product ammonium sulphate in this country was produced in saturators in which the gas was bubbled through a bath of liquor containing sulphuric acid. This bath consisted of an acidified saturated solution of ammonium sulphate containing solid crystals of ammonium sulphate, and the effect of the ammonia reacting with the acid was to produce, directly in the bath, more crystalline sulphate. Crystals were periodically withdrawn and acid replaced to enable the process to proceed substantially continuously. Because some solid salt was constantly being deposited on the apparatus itself, it was necessary periodically to "kill" the bath, or to so dilute the bath with water and acid that such deposits would dissolve. The "kill" did not interrupt the removal of ammonia from the gas which continued to flow and the acid-ammonia reaction continued, but under such conditions of dilution that no crystal formation could take place. The pipe through which the gas passed into the liquor in this conventional apparatus was called a "crackerpipe" and usually dipped some twenty-five to thirty-eight inches into the liquor bath. The result was that the gas had to be forced or pumped against a high pressure head in order for it to pass through the crackerpipe against the seal of the liquor bath.
It seems to be undisputed that the early saturators, known as the cracker-pipe type, were satisfactory when installed, removed a high percentage of the ammonia from the gas and apparently continued to be satisfactory for many years. The true background history appears to be that soon after 1939, the problem of handling more coke oven gas became acute because the steel industry was putting in more coke ovens. The problem which Dr. Otto sought to solve arose soon after he came to this country in 1939 and he stated this problem as follows: (Trans. page 160).
It was only natural that the producing companies should try to keep the cost of producing ammonium sulphate as low as possible, and it follows that a reduction in the high pressure head would reduce the power cost of pumping the gas through the liquor bath in the saturator.
While both patents in suit relate to ammonia saturators and the incidental production of ammonium sulphate crystals, each patent describes and claims different saturator apparatus and different methods of operation. The respective defenses to the charges of infringement of the two patents involve different prior art, different issues of patentability and different issues of infringement. Therefore, each patent, the claim of infringement and the defense thereto will be separately considered.
U. S. Patent No. 2,423,794 (Otto Flare-Mouth)
The application for this patent was filed on August 25, 1943, and patent was issued on July 8, 1947. The original application contained sixteen claims, all of which were subsequently canceled. Claim 1 was a broad method claim and Claim 7 was a broad apparatus claim. These claims attempted to cover broadly the idea of passing the gas "in a generally horizontal direction" between "an upper wall surface" and the surface of the liquor bath. These broad claims were not limited to a flare-mouth but were drawn to include a form in which there was no central crackerpipe but a peripheral type of crackerpipe, broad enough to cover any angle of the "upper wall surface" and were not even clearly limited to having this surface slope downwardly.
All of the sixteen original claims were rejected as being substantially met by a number of prior art references. There followed an extensive interchange between the Patent Office Examiner and Otto's attorney which resulted in an Official Action of October 29, 1946, in which the Examiner made "final" his rejection of the broad claims, but suggested that he would allow a single claim which is identical with Claim 1 of this patent, as hereinafter set forth.
The allowance of this claim was preceded by several interviews between Otto's attorney and the Examiner, but there is no record in the file history of the arguments which persuaded the Examiner to allow Claims 1, 2 and 3 as contained in the patent. The defendants call attention to Rule 133 of the Rules of Practice of the Patent Office, which requires that "a complete written statement of the reasons presented at the interview warranting a favorable action must be filed by the applicant".
The plaintiff's amended complaint charges that defendant Koppers has, since July 1947 and within six years, infringed Patent No. 2,423,794 by, without authority from Otto or his predecessor in title, using coke oven apparatus embodying the patented invention, using methods embracing the patented invention for the continuous production of sulphate of ammonia, and actively inducing others, including Wheeling, to use said apparatus and methods of the patented invention. Said amended complaint charges that the defendant Wheeling, since July 1947 and within six years, infringed said patent by, without authority from Otto or his predecessor in title, using by-product coke oven apparatus embodying the patented invention made for it by Koppers, and using methods embracing the patented invention for the continuous production of sulphate of ammonia.
This patent contains three claims but, from the record, the plaintiff's arguments and briefs, it is apparent that plaintiff's counsel is not relying upon alleged infringement by these defendants of Claim 2, but only Claims 1 and 3 of the patent. These claims are quoted as follows:
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