Permutit Co. v. Wadham

• Decision Date: 08 June 1926
• Docket Number: No. 4105.,4105.
• Citation: 13 F.2d 454
• Parties: PERMUTIT CO. v. WADHAM et al.
• Court: U.S. Court of Appeals — Sixth Circuit

13 F.2d 454 (1926)

PERMUTIT CO. v. WADHAM et al.

No. 4105.

Circuit Court of Appeals, Sixth Circuit.

June 8, 1926.

James Q. Rice, of New York City, and John W. Peck, of Cincinnati, Ohio (M. C. Massie, of New York City, on the brief), for appellant.

Walter A. Knight, of Cincinnati, Ohio (Cromwell, Greist & Warden, of Chicago, Ill., and Knight & Phares, of Cincinnati, Ohio, on the brief), for appellees.

Before DENISON, DONAHUE, and KNAPPEN, Circuit Judges.

DENISON, Circuit Judge.

This is the usual infringement suit based on claims 1 and 5 of patent 1,195,923, issued August 22, 1916, to Robert Gans, a German citizen, for a device for softening water.

The patent has been sustained upon final hearing in the Western District of New York, and, upon appeal, by the Second Circuit Court of Appeals, and again upon motion for preliminary injunction in the Southern District of New York. A full statement of the situation will be found in the opinions of Judge Hazel in the first of these cases (274 F. 937), of Judge Manton for the Circuit Court of Appeals in the same case (279 F. 713), and of Judge Learned Hand in the second case (292 F. 239). Reference should be had to these opinions for a full history and description. The District Court in the present case reached the contrary result, and held the patent invalid, or, if valid, not infringed.

Without repeating the details found in these opinions, it is sufficient now to say that it had long been known with regard to zeolites, a somewhat rare natural mineral combination, that they had the faculty of taking up the lime from hard water, thereby making it soft. This having been accomplished, and the zeolites then being charged with this lime, it in turn could be removed by putting them in salt water, after which they would again be ready to perform the softening operation. It seems that this process continued practically only a laboratory operation until Dr. Gans invented an artificial zeolite, which could be produced in large quantities at a practicable cost. He was associated with the manufacturing and engineering firm of Ridel & Co., and this firm at once took up with Dr. Gans and other engineers the project of devising and constructing a large scale apparatus which would accomplish cheaply and quasi automatically the softening of water for industrial and domestic uses, and the necessary intermittent regeneration of the zeolites. The ultimately accepted and the successful result of these efforts was the process of the apparatus shown in the patent here in suit.

The process has gone into enormous use in this country, and rarely is there a case where a new art and industry are founded solely upon, and grow entirely from, a patent, so clearly as in this case. It is not claimed that there was ever any practice of the process by any one in the United States before the Gans application, and it is not to be denied that the entire commercial activities of all makers in this country have grown out of the commercial exploitation here by the owners of the patent. The actual savings in the arts and industries, as well as domestically, resulting from the existence of this successful and cheap method of turning hard water into soft, are beyond accurate computation, but are very great; and the practical benefit to the public resulting from the use of this device places it in the front rank of those useful instances of applied science which have distinguished recent years. With this background, it is clear that the patent should be treated with all permissible liberality, and that the courts will go as far as they rightly can in the way of overlooking technical defects and overruling defenses which are not clearly fatal.

In view of the full treatment given in the other cases, and the due application of the familiar rule of comity, the case can well be disposed of by relatively brief comment upon the points now chiefly relied upon in defense and the respects in which it is claimed this record may be distinguished from the former ones. The fundamental defense, and the one by which the court below was perhaps in the end chiefly moved, was that the device, in substance, uses only the common and well-known method by which water is passed through a filter bed to take out its impurities and then the filter bed is intermittently cleaned of these impurities. It is said that the chemical behavior of the zeolites in the presence of lime and salt water being well known, and the zeolites having become commercially available through Gans' first invention, and the operation of a filter being well known, there was no invention in substituting zeolites for the ordinary gravel or charcoal. This is a forceful argument, but we think a mistaken one. It was simple, perhaps too simple to be invention, to work out this process in the laboratory, or even domestically on a laboratory scale; but that was not worth while. The problem was to do it on a large scale, both economically and efficiently. Not only is it the common experience that the genius of invention is required to translate an experiment into an industry, but the history of this one shows it to be no exception. It is to be inferred from the record that Ridel & Co. energetically took up the commercializing of the process, using all necessary effort and capital. They employed one or two, if not several expert engineers, in addition to Dr. Gans, and capable constructors, yet one installation after another in different parts of Germany turned out to be a failure, even if it had seemed to start out successfully. The record justifies no conclusion except that this device, including some details which were not at first fully appreciated, but which are covered by the patent, was the practical solution of the practical difficulties, and for the first time, and after perhaps two years of effort through Ridel & Co., furnished the successful method which every one has used ever since. Such a process calls for chemical actions and reactions, as distinguished from the mechanical work of the ordinary water filter, thereby involving chemical problems which the most competent experts do not foresee, but in which apparently small steps turn out to be vital, as, for example, the necessity of draining the salt water from the very bottom instead of from a more convenient point a little higher. None of the experts seemed to know that even a little salt water remaining would interfere with the efficiency of the process. So, too, the necessity of the downward flow and of the free top to the bed are not taught by the old art of filtering. Upon the whole, we are clear that the novelty of the device is not to be judged merely by the filtration standard.

The records in the New York cases were identical with the record in the present case, excepting that, when the injunction motion was heard before Judge Hand, the record in the first New York case was supplemented by such additional defenses as had been developed up to that time in the present case, and, since Judge Hand's decision, there have been introduced into the record some explanatory matters and the oral testimony of the witness Neumann, who was sworn in open court upon the hearing below. The District Judge was much impressed by his testimony. It was to the effect that he was one of the engineers associated with Ridel & Co. in the development of the process, that its final success was due to him and not to Dr. Gans, and that various earlier devices which were said to be those described in certain publications had worked successfully.

We cannot give any effective force to this oral testimony. Not only was plaintiff left at a disadvantage in not being prepared to meet such unexpected proofs, where the hearing was in Detroit and all the data were in Germany, but neither earlier invention by others than Gans in Germany or earlier use by any one in Germany, is...