Red River Refining Co. v. Sun Oil Co.

• Decision Date: 29 July 1939
• Docket Number: No. 9337,9339.,9337
• Citation: 29 F. Supp. 636
• Parties: RED RIVER REFINING CO. v. SUN OIL CO. PETROLEUM DERIVATIVES, INC., OF MAINE, v. SAME.
• Court: U.S. District Court — Western District of Pennsylvania

29 F. Supp. 636

RED RIVER REFINING CO. v. SUN OIL CO.

PETROLEUM DERIVATIVES, INC., OF MAINE, v. SAME.

Nos. 9337, 9339.

District Court, E. D. Pennsylvania.

July 29, 1939.

Harvey L. Lechner, Roy F. Steward, and Mitford C. Massie, all of Philadelphia, Pa., for plaintiffs.

Frank S. Busser and Geo. J. Harding, both of Philadelphia, Pa., for defendant.

KIRKPATRICK, District Judge.

These two suits are for infringement of three patents, all having to do with the production of lubricating oils from petroleum by distillation. They are Nos. 1,448,709 to Schultze, 2,017,820 to Schultze, and 1,727,380 to Ryder. For convenience they will be discussed as though there was one suit and one plaintiff.

Of the claims in suit 27, 28, 32, 33, 34, 35, 36, 38, 40, 42, 43, 45, 46, 47, 48, and 49 of the '709 patent, 19, 20, 22, 23, and 25 of the '820 patent, and 13, 14, 15, 16, and 17 of the '380 patent are process claims. 13, 14, 15, 16, and 25 of the '709 patent are product claims for oils produced by the process of that patent.

I. No. 1,448,709 — Process Claims.

The first question is as to the validity of the process claims. Claim 45 of the '709 patent may be taken as typical. It is: "In the manufacture of lubricating oils, the process which comprises distilling a lubricant-containing mineral oil material at an absolute pressure not substantially exceeding 15 mm. of mercury and under non-oxidizing conditions."

With the understanding that a number of the process claims fix the upward limit of the vacuum or absolute pressure permitted at 25 mm. of mercury—a point which the plaintiff says is critical — it will not be necessary to extend the discussion very much beyond the question of the validity of the claim above quoted, since its infringement is admitted, and since all the process claims of all three patents describe the process as one in which a vacuum of at least 25 mm. absolute pressure, or less, is requisite.

The degree of vacuum is the essential element of the process; in fact, it is the only element upon which novelty or invention can seriously be claimed for the patent. In his brief the plaintiff has argued that "under non-oxidizing conditions" is another essential, if not equally important, element of the process, but that contention is quite inconsistent with the position which both counsel and expert for the plaintiff took at the time of the trial. See discussion at pages 960-971 of the notes of testimony.

Of the various common distillates of petroleum, lubricating oils are the highest boiling fractions and the last to pass over in a complete process of distillation. They may be taken off through a considerable range of temperatures, and those distilled at the highest temperature will represent the heaviest fractions of the crude, and consequently show the highest degree of viscosity. High viscosity lubricating oils are a very important product commercially.

Because of the high temperatures required, certain difficulties exist in connection with the distillation of lubricating oils — and to some extent of kerosene, a lower boiling fraction — which result in the impairment of the quality and usefulness of the product. They are, in order of importance:

1. Cracking — or rather, excessive cracking, it being impossible to avoid all cracking. At high temperatures (beginning about 570 degrees F. and becoming marked around 620 to 630 degrees) certain chemical changes take place in the oil or oil vapor in the process of distillation, resulting in the formation of light, volatile, "cracked" products, the exact nature of which does not appear to have been definitely ascertained. Although gasoline may be obtained by cracking, it is not sought in the process and does not appear in any useful amounts in the oil distillates.

2. The formation of malodorous unstable products arising from the decomposition of various impurities, largely sulphur compounds, which may exist in the original crude in varying degrees. The art of today distinguishes these contaminants from the cracked products of the hydrocarbon itself and recognizes that they will be often formed long before cracking temperatures are reached.

3. Oxidation during distillation.

4. Entrainment, or the carrying over into the distillate with the vapor of minute particles of residual matter.

If these difficulties are not avoided the product will contain impurities. Some of the product claims of the first patent refer to "tarry matter" — a term having no scientific definition, and apparently not in very general use. The plaintiff's position is that it is used to describe generally dark colored impurities in the distillate arising from the cracked and decomposed products, the entrained residual matter, and the oxidation.

The effect of the presence in any appreciable amount of these various substances in lubricating oil is to make it unstable and to cause it to deteriorate both in appearance and quality so as to render it practically unsalable, though perhaps not entirely useless. This instability is recognized by a progressive change of color from light to dark, referred to as color instability. Color stability is, from the commercial standpoint, probably one of the most important qualities of a lubricating oil. A light clear shade is also important, but principally as an additional selling point.

To remove the impurities in question from the distillate and give it color stability, the prior art universally resorted to chemical refining, which usually consisted of several steps, including treatment with sulphuric acid, washing, and filtration through fullers' earth. Chemical refining had several disadvantages. It added materially to the cost of production; it caused losses of material quantities of useful oil from the distillate; and, according to the plaintiff's expert, it impaired the quality of the final product by giving it a tendency to emulsify and by removing certain constituents whose presence would tend to prevent oxidation and would give superior strength to the oil film in use.

It may be stated, parenthetically, that the patents do not exclude or intend to dispense with preliminary alkali treatment of the crude before distillation, now widely used in the industry. In fact, the Schultze '820 patent claims this treatment as one of the elements of its process.

Stated in the most general terms, all three of the patents have for their object the production of stable lubricating oils, of high viscosity ('380 patent), by straight distillation, without the necessity for any chemical finishing process. The '709 patent is primarily directed to preventing cracking, oxidation and entrainment during distillation, by carrying on the distilling process under an absolute pressure of 25 mm. or less, in an airtight still, thus permitting vaporization at lower than ordinary temperatures. It does not attempt to deal with the decomposition products of the impurities in the original crude, which will carry over into the distillate and, under the '709 process, can only be eliminated by a re-run.

The '820 patent includes the elimination of the malodorous decomposition products and contemplates the use of the poorer grades of crude as charging stock. Its process is that of the '709 patent, plus initial treatment of the crude with caustic soda and an intermediate condensation by which the impurities in question, which are higher-boiling than the lubricating oil components, are carried off before final condensation.

The '380 patent, like the '709, is chiefly aimed at the prevention of cracking, the object being to use higher temperatures without cracking, in order to distill the heavier fractions and obtain final products of higher viscosity. Since cracking is a matter of time as well as temperature, this patent, by spreading the crude thinly over the heat surface, vaporizes it in a much shorter time and so permits higher temperatures to be used. Otherwise it incorporates the process of the '709 patent.

In spite of the great amount of testimony taken, the issue of validity of the process claims presents a single, rather narrow question. It is whether prescribing an absolute pressure of not more than 25 mm. (15 mm. in claim 45) is novel and involves invention.

The art for 50 or 60 years had been familiar with vacuum distillation of petroleum. It recognized that what older publications called "destructive distillation" produced undesirable substances in the final product which impaired its quality. It was fully understood and disclosed that the higher the vacuum, the lower the boiling point could be kept and the less destructive distillation there would be and the better the result. Such expressions as "nearly complete vacuum," "partial or perfect vacuum," "nearly perfect vacuum," "the pressure is kept as low as possible," "the maximum possible vacuum," "as high a degree of vacuum as it is possible to maintain," "a vacuum as perfect as possible," "the vacuum should be as high as possible," appear in a number of prior patents.

The Tweddle patent, No. 72,126, and the von Groeling, No. 1,327,184, fairly epitomize the state of the entire art and show what it knew from a very early date (1867) up to the date of the patent in suit.

It is not necessary to discuss either of these patents in great detail. It is quite true that Tweddle was principally concerned with distilling illuminating oil (kerosene) rather than lubricating oil, that he used steam with his vacuum (it is a matter of argument whether or not the '709 patent forbids steam), and that in his day the very high vacuum of the plaintiff's patent was not commercially obtainable; but when all this is said, Tweddle did disclose distillation of petroleum under what he called a "complete" vacuum with the express object of obviating the necessity of refining or treating the oil with acids, alkalis, etc., to remove the "disagreeable odor" and "bad color" which, he says, is found in "unrefined, firedistilled oil." Von Groeling's...