Permutit Co. v. Harvey Laundry Co.

• Decision Date: 16 June 1921
• Citation: 274 F. 937
• Parties: PERMUTIT CO. v. HARVEY LAUNDRY CO. et al.
• Court: U.S. District Court — Western District of New York

274 F. 937

PERMUTIT CO. v. HARVEY LAUNDRY CO. et al.

United States District Court, W.D. New York.

June 16, 1921

Philipp Sawyer, Rice & Kennedy, of New York City (James Q. Rice and M. C. Massie, both of New York City, of counsel), for plaintiff.

Livingston Gifford, of New York City, John F. Stout, of Omaha, Neb., and Edward F. Colladay and David P. Wolhaupter, both of Washington, D.C. (Stout, Rose & Wells, of Omaha, Neb., and Shire & Jellinek, of Buffalo, N.Y., of counsel), for defendants.

HAZEL District Judge.

This is a suit in equity by the Permutit Company against the Harvey Laundry Company, a user of the apparatus in question, and the Refinite Company, intervener and manufacturer thereof, to enjoin infringements of letters patent No. 1,195,923, issued on August 22, 1916, on application filed August 5, 1911, to Dr. Robert Gans, of Pankow, Germany, who assigned the patent to the J. D. Riedel Aktiengesellshaft of Berlin, Germany; the latter afterwards assigning to the plaintiff.

The patent relates to an apparatus for softening water by using a mineral substance of relatively small grains of zeolites or hydrated alumino-silicates and their exchangeable bases. In their natural state zeolite grains are found in the soil. Their composition consists of silicates of alumina sodium potassium and calcium, and they possess an appetite for lime and magnesia. Upon water passing through them, the lime and magnesia become separated. Their natural existence and inherent chemical properties were discovered in the year 1849, and afterwards the discovery was made that they were capable of absorbing the lime and magnesia from the water-- the constituents that make water hard--and of exchanging their silicate bases for new bases and returning to their first bases upon giving up the lime and magnesia and again obtaining sodium salt. The exchange of silicate bases includes the capacity of adapting them in an operative apparatus for frequent and continuous use. There are different kinds of zeolites; those found in the soil and those prepared by melting together the various constituents and hydrating them. Plaintiff's zeolites are of the latter class while defendants' material, known to the trade by the name of 'refinite,' after mining is baked and crushed for utilization. The patent, though limited to a zeolite softening apparatus is concededly not limited to any particular class of zeolitic material.

In 1906 the patentee (Gans German patent, No. 197,111) invented a form of artificial zeolites by fusing the constituents, viz clays and soda ash, and hydrating them, to which he gave the arbitrary name of 'permutite,' and he found out that hard water could be continuously softened by filtration through them, and that the artificial zeolites could be regenerated by washing them with a salt solution after the exhaustion of their softening bases. Such discovery, however, was not immediately commercially useful, because the device then used for softening water was defective and, as hereinafter stated, failed to attain the desired result.

At such time those skilled in the art believed, and the possibility was suggested, that zeolites would even prove useful for obtaining gold from sea water, or manganese from water, or purifying sugar juices, as well as softening hard water for domestic and industrial purposes. But such ideas have not come to pass, except that for the latter use they have, in recent years, become highly useful. The utility of the apparatus in suit for producing absolutely soft water is undisputed.

To carry the invention into effect, a cone bottom cylindrical casing is described in the specification, closed at the top by a cover plate (b). Inside there are several perforated plates one at the upper end carrying a layer of gravel or quartz through which the water is first filtered to remove the dirt, while the other, lower down in the casing, supports a bed of grain zeolites through which the water passes; the bed having a free space or distance at the top so that the varying sized grains may adjust themselves when water is admitted. The specification says that the water to be softened passes downward from the supply pipe (k) at the top of the casing, through the inlet valve (m) and inlet pipe (l) to the filter layer (e); thence through the zeolite bed (f), where the lime and magnesia are detained; thence through the supporting bed of gravel or quartz (g), to the water collecting chamber (h), and through the perforated screen (i) to pipe (j) located at the bottom of the casing. When the zeolites are exhausted the inlet valve (m) and outlet (n) are closed, and common salt is run through the filter valve (o) for restoration to their original condition; the salt solution and lime of magnesia entirely leaving the casing at (j) and waste valve (p) at the bottom. There are described means for back-washing the zeolites to completely remove particles of brine remaining from the regeneration and slime or other impurities from the filter. Such means consist of passing the water upwardly through the zeolite bed and filter and to the outlet (l). A stirring mechanism is also described but it is not involved herein. The proofs show that water of zero hardness by the use of zeolites was first produced in large quantities by the apparatus in suit. At such time, concededly, there were known structures for softening water (not zero hardness), but all operated on a different principle, and in the main comprised apparatus of the so-called precipitation type.

Claims 1 and 5 alone are involved herein. They read as follows:

'1. A water softening apparatus comprising a casing, a filter bed consisting of a layer of sand or quartz and a layer of zeolites or hydrated alumino-silicates disposed on the layer of sand or quartz, means for permitting the passage of water through the casing, means for cutting off the supply of water on the exhaustion of the zeolites, and means for passing through the casing a solution of a salt capable of regenerating the zeolites.

'5. Water softening apparatus comprising a casing, a filter bed consisting of a layer of zeolites or alumino-silicates, supporting means for said layer, means for permitting the passage of water through the casing, means for cutting off the supply of water on the exhaustion of the zeolites, means for supplying and passing into the casing a solution of a salt capable of regenerating zeolites and means connected to the lowest point of the casing for removing the salt solution so introduced.'

Nothing is said in the patent as to any novelty in either a downward or upward flow of the water in the apparatus, but on February 26, 1920, during the pendency of this action, the plaintiff filed a disclaimer limiting claim one to means for the downward passage of water to be softened through the layer of zeolites. Thus limited, claim 1 has these elements in combination:

(1) Cylindrical casing.

(2) Filter bed of layer of sand or quartz.

(3) Layer of zeolites disposed on the layer of sand or quartz.

(4) Means for passing the water to be softened downwardly through the casing.

(5) Means for cutting off the supply of water on exhaustion of the zeolites.

(6) Means for passing through the casing a solution of a salt capable of regenerating or reconverting the zeolites.

Claim 5 specifies means for removing the salt solution after the regeneration of the exhausted zeolites at the lowest point of the casing.

The defenses are want of novelty anticipation by prior foreign publications, noninfringement, and invalidity of the disclaimer.

It is contended at the outset by defendants that the disclaimer substantially admits that the patentee was not the first inventor or discover of the apparatus in question, or its substantial counterpart, and that it was filed to avoid anticipation by the prior art and foreign publications, and, in any event, that the flowing of the water in an upward or downward direction in the apparatus and through the zeolites were well-known equivalents.

The first question is whether the patentee was the first to successfully produce absolutely soft water n the use of zeolites by the adaptation of his patented apparatus. In answering it must first be determined what effect shall be given to the prior German patent, No. 197,111, dated April 6, 1908 (application October 28, 1906), and the later American patents, Nos. 943,535-960,887, and reissue, No. 13,686, to the inventor of the patent in suit, and assigned by him to J. D. Riedel Aktiengesellshaft, and the prior foreign publications-- the Centralblatt article of September 7, 1907, containing the lecture or writing of Dr. Feldhoff, and the Zeitschrift article of May 28, 1909, by Dr. Siedler, together with his lecture, delivered in London, copies of which were circulated there and in this country more than two years before the application in suit.

Inasmuch as controlling importance is attached by defendants to what is described and illustrated in the prior foreign publications, the rule as to them may be stated here. Foreign publications, to constitute them anticipations of a later invention, must disclose a complete and operative structure and, indeed, the description given must be sufficiently clear and definite and understandable to enable persons skilled in the art or science to which the invention or device belongs to practice and construct it. Seymour v. Osborne, 11 Wall. 516, 20 L.Ed. 33; Badische Anilin & Soda Fabrik v. Kalle (C.C.) 94 F. 163. Drawings or exhibits, if any, shown in connection with prior publications, must be considered with the published description of the device, which the law requires must be in 'full, clear, and exact terms,' so that those desiring to manufacture the article or reduce it...