Palmer v. Sun Oil Co.

• Citation: 78 F. Supp. 38
• Decision Date: 26 May 1948
• Docket Number: Civ. No. 5537.
• Parties: PALMER et al. v. SUN OIL CO.
• Court: U.S. District Court — Northern District of Ohio

78 F. Supp. 38

PALMER et al. v. SUN OIL CO.

Civ. No. 5537.

District Court, N. D. Ohio, W. D.

May 26, 1948.

Edward Lamb, of Toledo, Ohio, for plaintiffs.

Effler, Eastman, Stichter & Smith, of Toledo, Ohio, and Frank S. Busser, of Philadelphia, Pa., for defendant.

KLOEB, District Judge.

This is an action against the defendant based on alleged infringement of the United States Letters Patent No. 2,096,289, issued to the plaintiffs October 19, 1937, upon application filed by Delos M. Palmer on March 8, 1937, on "Machine Drive Arrangement", a patent containing two claims.

A multitude of defenses are set up in the answer. They are noninfringement (Par. 3), invalidity based on prior art patents, of which defendant cites sixty-eight in its answer (Par. 5), invalidity because of prior use by persons named in the prior art patents cited, including the use by defendant at its plant at Marcus Hook, Pennsylvania, and knowledge of its use by its officers and employees named therein (Par. 6), invalidity because of public use more than two years prior to the filing of the application for the patent in suit (Par. 7), invalidity because the alleged invention of the plaintiffs was patented more than two years prior to the application for the patent in suit (Par. 8), invalidity because the alleged invention of the patent in suit involved ordinary knowledge and skill of a person familiar with the art to which the Letters Patent of the plaintiffs relate and is wholly lacking in patentable novelty (Par. 9), invalidity because the description of the alleged invention in the specifications of the Letters Patent in suit is not in full, clear, concise, and exact terms, so as to enable any person skilled in the art to make and use the same (Par. 10), invalidity because the claims of the patent in suit are so ambiguous and indefinite that their meaning and scope cannot be ascertained therefrom (Par. 12), invalidity because the invention is of no utility (Par. 14), defense on the ground of abandonment and laches by the plaintiffs (Par. 15), defense of laches and estoppel as against the application filed by Richard S. Vose, on January 27, 1936, which issued to him on August 1, 1939, as U. S. Letters Patent numbered 2,167,698, disclosing substantially the construction claimed in the patent or disclosing the defendant's construction alleged to infringe (Par. 16), and the defense that in view of the prior art the claims of the patent in suit are only susceptible to such a narrow construction that they are invalid or that the defendant's construction cannot be held to infringe (Pars. 11 and 13).

The principal defenses urged are invalidity and noninfringement.

The Inventor and the Invention

The inventor Palmer is an electrical and mechanical engineer, having obtained a degree of B. S. in electrical engineering in 1921 from the University of Michigan, and a master's degree in physics in 1938 from the same institution. He was a college instructor in electrical engineering, assistant professor in physics and mechanical engineering and dean of engineering, the latter at the University of Toledo. He had an extended experience in industry, having worked for the Westinghouse Electrical and Manufacturing Company in designing, estimating and construction of electrical locomotives and diesel locomotives; as assistant to the factory manager and as parts engineer at the Spicer Manufacturing Company; as plant engineer for the American Propeller Company; as works engineer for the Champion Spark Plug Company, and was engaged in the profession of consulting engineer since August 1, 1945.

Mr. Palmer testified that he thought of his idea while working for the Spicer Manufacturing Company in the fall of 1929. That at this time the Spicer Company used compressors which took gas from the Gas Company's line and increased its pressure for use in the burners at the plant; and it occurred to him that the electrical demand and consumption could be decreased by installing a gas engine and connecting it mechanically with one of the compressor units, to carry the mechanical load of the compressor as well as the electrical load of the induction motor and cause it to generate electricity for use in the plant. That about December, 1932, when he was connected with the University of Toledo, he made up an arrangement consisting of a DC motor connected to an induction machine, with a shaft extension on it, and a prony brake on the shaft extension of the induction machine to simulate a mechanical load, and tried it out. He testified this arrangement embodied in principle all of the essential elements of his patent. Witnesses Baxter and Wheaton testified they saw this model in 1932.

Mr. Palmer testified that about 1936, in conversation with Mr. Wenner, one of the plaintiffs, then representing the Gas Company, whom he sold on the idea, Wenner suggested that they put an installation in Gerber's Grocery on Sylvania Avenue, in Toledo, because he was "kicking about his power bills"; that the Gas. Company induced the grocery company to buy an engine, and they put a shaft extension on the motor, and hooked the engine on to it to run the refrigerator compressor. This was followed by an installation at the plant of the Goon Ice Cream Company, and another installation at the Mather Spring Company. (See affidavits of Goon and Hendrickson, Defendant's Exhibit U, file wrapper, pages 19-24, and articles by Mr. Wenner describing these installations in "Refrigerating Engineering", August, 1937, pages 85, 86, 128, in "Gas", July, 1937, pages 14, 15, 16, 48, and in "Steel", August 9, 1937, pages 57 and 58, submitted to the Patent Office in support of the amended claims by counsel for the applicant, Defendant's Exhibit U, file wrapper, pages 33, et seq.) From these articles it appears that to carry out Palmer's idea it was only necessary to "hook up the gas engine to the other equipment", which would be left exactly as it was, the gas engine "merely supplementing" the existing equipment.

Plaintiffs' Device

In practical operation, as in the only three installations made prior to the trial of this case, the plaintiffs' device is, in effect, an electric power plant, the electrical load being electric lights, electric motors, etc. connected to the alternating current supply line. The prime mover — an internal combustion gas engine — supplies power so greatly in excess, typically twice, of that required to drive the mechanical load (the refrigeration compressor in the Gerber and Goon installations and the blower in the Mather Spring installation), that the motor-generator is operated above its synchronous speed as a generator to absorb the electrical load.

As described and shown in the drawings and specifications of the patent in suit, the apparatus of the plaintiff consists of an ordinary internal combustion gas engine, a compressor, and an induction motor connected to an outside power line. In the drawing is also shown a thermally operated circuit maker which, when actuated, operates to close the electrical circuit when the temperature in the refrigerated space reaches a predetermined point, and starts the motor. The motor cranks the engine, the magnetically operated fuel valve is opened, and the engine is caused to start and operate. The engine drives the compressor and at the same time drives the motor above its synchronous speed, which then generates electrical energy, which, in turn, is used to operate the motors, lights and other electrical devices in the plant, and thus decrease the amount of current used from the outside supply line.

Defendant's expert, Mr. Hutchins, seems to have accurately described the plaintiffs' patent as follows: "A. The Palmer patent, as I view it, consists in applying an internal combustion engine to an electrical motor, which in turn is driving a mechanical load, and for the specific purpose of generating electric power within the plant where this is being done, for the purpose of reducing the cost of electric power." (R. 92)

Defendant's Device

The process used by the defendant, in which the alleged infringing installation is used, is known as the Houdry process, and comprises a new method of producing gasoline by a catalytic cracking process that has gone into widespread commercial use. The Vose patent, No. 2,167,698 (assigned to Houdry Process Corporation) discloses defendant's construction and operation. It is in an art remote from that to which the patent in suit relates. Its title is "Method For Regenerating Catalytic Masses". The application for this patent was filed January 17, 1936, about fourteen months before the filing of the application for patent in this case. No mention is made in its claims of the elements contained in the claims of the patent in suit, although they are shown and described in the drawings and specifications. Inasmuch as the Vose patent discloses the defendant's installation, it would negative novelty on the part of Palmer as not the first inventor, if Palmer had not carried his date of invention back of the filing date of the Vose application. Walker on Patents, Deller's Ed., Vol. 1, page 137, Sec. 26.

In the defendant's installation there are a series of catalytic cracking chambers, in each of which the following operations occur in succession:

1. Admission of oil vapors of high boiling range into the cracking chamber to effect a partial conversion of the oil to gasoline of relatively low boiling range. This involves deposition of carbon (coke) onto the catalyst.

2. Purging of the catalytic cracking chambers.

3. Burning off of the catalyst by compressed air, resulting in formation of carbon, carbon dioxide and carbon monoxide.

When one catalytic cracking chamber is "on stream" or cracking to gasoline, air under compression is flowing through another chamber, while still another chamber is being purged. Each of these three operations is thus continuous. The subjection of each catalytic cracking chamber to these...