Sanitary Dist. of Chicago v. Activated Sludge, 5941.
| Decision Date | 16 June 1937 |
| Docket Number | No. 5941.,5941. |
| Parties | SANITARY DIST. OF CHICAGO v. ACTIVATED SLUDGE, Inc., et al. |
| Court | U.S. Court of Appeals — Seventh Circuit |
Arthur C. Denison, of Cleveland, Ohio, and James Hamilton Lewis, Wallace R. Lane, Ernst Buehler, and Ralph M. Snyder, all of Chicago, Ill., for appellant.
Lynn A. Williams, Clifford C. Bradbury, and Warren C. Horton, all of Chicago, Ill., for appellee.
Before EVANS, SPARKS, and MAJOR, Circuit Judges.
This appeal involves the validity and infringement of five United States patents relating to the purification of sewage. They were all issued to Walter Jones, and, together with the numbers of the claims here in issue, are as follows:
Number Date of Application Date of Issue Claims Involved
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1,247,540 October 9, 1914 November 20, 1917 2, 3, 7, 11, 13
1,282,587 November 7, 1916 October 22, 1918 2, 8
(divisional)
1,247,542 October 18, 1915 November 20, 1917 5, 8, 9
1,247,543 October 18, 1915 November 20, 1917
(as reissued July 5, 1921, No. 15,140, under Reissue
Application of August 11, 1919) 3, 7, 8, 9, 10
1,286,017 October 18, 1915 November 26, 1918 3
This suit was originally instituted by Activated Sludge, Limited, of London, England, and its licensee, Edgar C. Guthard. Subsequently Activated Sludge, Inc., a Delaware corporation, acquired the title to all of the patents involved in the original bill, and thereupon, by leave of court, filed its original bill in the nature of a supplemental bill alleging its title to the patents in suit, and the appellant's infringement of them, and also alleging its right to recover for past infringement.
The District Court held each patent valid, and infringed by one or more of the forms of apparatus and process used by the appellant in different units of its sewage disposal operations. For convenience, each patent is hereinafter referred to by the last three digits of its number.
These patents except 017, were involved in two former suits in this court, City of Milwaukee v. Activated Sludge, Inc., 69 F.(2d) 577, and Sewerage Commission of City of Milwaukee v. Activated Sludge, Inc., 81 F.(2d) 22. Some of the patents, including 017, were involved in a later suit in this court, Fehr et al. v. Activated Sludge, Inc., 84 F.(2d) 948. This latter suit was originally brought against Fehr and others as contributory infringers, because, as contractors and material men, they were engaged in constructing an extension to the Milwaukee Sewerage plant. Subsequently the Milwaukee Sewerage Commission was permitted to intervene and defend the action. In each of the first two cases, claims 2, 3, 7, 11 and 13 of patent No. 540; claims 5, 8 and 9 of patent No. 542; claims 3, 7, 8, 9 and 10 of reissue patent No. 140; and claims 2 and 8 of patent No. 587 were held valid and infringed. In the last case claim 2 of patent No. 587 and claim 3 of patent No. 017 were held valid and infringed. These claims are set out in the respective opinions referred to and they will not be repeated here.
By this action we are again confronted with the question of validity of those claims. All the evidence in the Milwaukee Cases pertaining to validity was before the court in this case. The answers in the cases were substantially the same. Two additional prior art patents, however, were given in evidence in the Chicago suit, and there were some differences in the manner in which the ultimate facts were established in the Milwaukee Cases and the instant case. We are convinced, however, that the substance of all the evidence bearing upon the important questions of validity was precisely the same in this suit as in the Milwaukee litigation. The differences in the manner in which the facts were established, or sought to be established, may be briefly noticed.
In the Milwaukee litigation, the testimony of the witness Clark was by deposition, which was also in the Chicago record. In the Chicago case he appeared and testified. We find no contradictions therein, nor is his former evidence materially added to or strengthened.
The Mather and Platt water softening equipment, as disclosed in the Archbutt and Deeley British patents, Nos. 19,829, and 19,830, was fully disclosed as to construction and operation in the Milwaukee litigation. In this Chicago case that evidence was supplemented by the evidence of two witnesses with respect to the construction of the Mather and Platt water softening plant of the Michigan Carbon Company, at Detroit. Neither the blue print of that plant, nor testimony of the two witnesses discloses any material facts which were not disclosed by the Mather and Platt brochure introduced in the Milwaukee litigation.
In the Milwaukee litigation, the installation at various places, of water softening plants manufactured by the Pittsburgh Filter Company, was fully disclosed by the testimony of witness Leopold. In the instant case the same equipment at other places, differing only in capacity, was disclosed by a different witness. The drawings presented by each witness were substantially identical. Furthermore, counsel for appellant notified appellees on May 4, 1936, that appellant in its pending appeal would not rely on the work of the Pittsburgh Filter Company.
In the Chicago case witness Kendall testified as to prior knowledge in the United States of the disclosures of the patents in suit. The testimony of this witness is neither assuring nor persuasive. Similar evidence was in the Milwaukee Cases and was not considered sufficient to overcome much stronger evidence on this question.
In the Milwaukee suit Moore's applications for United States patents 1,271,925 and 1,271,926 were offered in evidence, without prior notice in the answer, to show the state of the art and to form a basis for the argument that no invention was involved. In the instant suit these same patents and applications were offered in evidence under the requisite notice in the amended answer, thereby rendering them available for the argument of invalidity of the patent in issue on the ground of anticipation or prior invention. In the first Milwaukee suit it was argued that Jones' patents 542 and 140 involved no invention over Moore's disclosures. Patent 017 was not involved in the first Milwaukee suit. However, it was involved in the later suit against the Sewerage Commission and contractors, and the same evidence was in the record by stipulation. In the later suit appellants in that case had the opportunity of adducing additional evidence relative to the Moore disclosures and did not do so. It is obvious that if Moore's disclosures invalidate patents 542 and 140, they also invalidate patent 017. Having held that all of these patents, 542, 140 and 017 are valid as against the state of the art as established by Moore, we are further of the opinion that they are valid as against the contention of non-invention over Moore's disclosures.
So far as we are able to observe, the prior art and publication here presented, are identical with those in the Milwaukee Cases, with the exception of British patents to Beddoes, No. 8,722, and Shone and Ault, No. 20,125, neither of which is mentioned in appellant's brief. The latter discloses nothing not disclosed by the former, and the British patent to Beddoes is a duplicate of United States to Beddoes No. 895,229 which was cited in the Milwaukee Case.
In addition to the depositions of world renowned experts in the Milwaukee Case, and in opposition to their conclusions, appellant produced Yeomans, an expert on liquids, their storage and transportation, and on compressed air and its application. He said Jones' patents were mechanically and hydraulically inoperative, hence invalid. The complete answer to this is that Jones' patents have always operated successfully and still are doing so.
Appellant contends that the file wrappers of Jones' British patents No. 22,952 of 1913; and Nos. 729; 19,916; 22,736; and 22,737, all of 1914, are before the court for the first time in this case. It admits, however, that the court admitted them in the Milwaukee record subject to appellees' later motion to strike them, and that that motion was subsequently made but was never passed upon. That being true, they remained in the Milwaukee record. As a matter of fact we so treated them and considered their contents in our conclusions.
The instant record contains a narrative form, which is an abridgment of the contemporaneous correspondence between Jones and his collaborators. There is nothing new in this, however, for the full text was incorporated in the Milwaukee record.
Certain models claimed to portray the prior art, publications, inventions,...
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