Texas Co. v. Globe Oil & Refining Co.
| Citation | 112 F. Supp. 455,98 USPQ 312 |
| Decision Date | 18 May 1953 |
| Docket Number | Civ. A. 3783. |
| Parties | TEXAS CO. v. GLOBE OIL & REFINING CO. |
| Court | U.S. District Court — Northern District of Illinois |
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George I. Haight, Edward A. Haight and Schneider & Dressler, Chicago, Ill., and Brady Cole, Houston, Tex., for the plaintiff.
Thiess, Olson & Mecklenburger, Chicago, Ill., for the defendant.
This is a suit for patent infringement; Texas charges that Globe, at or near Lemont, Illinois, and elsewhere, has infringed U. S. Patent No. 1,883,850, applied for November 21, 1918, and issued on October 18, 1932, to Texas as assignee of the applicant Otto Behimer. (The original application had been by Holmes, Manley and Behimer; prior to the patent issuance, Behimer had become the sole applicant.) The patent in suit is based on a divisional application dated April 6, 1923. It consists of a specification of 3½ pages plus a diagrammatical drawing, and of 44 claims extending over 6 printed pages. The 5 claims in suit (12, 22, 36, 39 and 40) relate to a process of oil conversion sometimes called "thermal cracking", whereby the oil is passed once through a heating coil or heating zone, where it is raised to a cracking temperature, thence to a second zone where the vapors are evolved and where the residue is removed without re-circulation; the lighter vapors are drawn off as the desired product; but the heavier vapors are passed into a reflux condenser and thence returned under maintained mechanical pressure to the charging line leading to the heating coil and so re-circulated.
Globe's answer alleges (inter alia) that its method of making gasoline is wholly different in fundamental principles of operation and in result, from the process disclosed and claimed by the patent in suit; that the patent, if construed to be infringed by any practice of defendant, is invalid because it does not contain any patentable novelty in view of the prior art; that Behimer was not the original inventor of the alleged invention; that the claims of the patent do not cover valid and patentable combinations; that long prior to the making of the alleged invention and more than 2 years prior to the application date, the alleged invention, or substantial and material parts thereof, were described, shown and patented in certain patents (naming them); that the alleged invention of the patent in suit and every substantial and material part thereof were, prior to Behimer's date of invention, known and invented and reduced to practice by one Ellis and one Alexander, who respectively filed patent applications on which U. S. patents issued; that plaintiff has stood inactive for many years with full knowledge of defendant's operation, and has been guilty of laches; that during the course of the prosecution of the application for the patent in suit and during an interference with one Dubbs, plaintiff disclaimed and abandoned the subject matter of the interferences and failed to amend the claims so as to patentably distinguish them from the subject matter thus disclaimed and abandoned; that this disclaimer was executed pursuant to settlement agreement between Texas and Universal Oil Products Company, whereby the alleged invention was apportioned between them and the monopoly of the previously issued Dubbs patent extended beyond the statutory period; that the patent in suit is invalid because neither plaintiff nor Behimer, at the time of the filing of the original application, knew of any commercial means for return of hot reflux to the heating coil inlet.
The patent in suit, the 5 claims in suit (and some others) and many of the issues here involved, have been heretofore litigated in Texas Co. v. Anderson-Prichard Refining Corporation, 10 Cir., 1941, 122 F.2d 829, affirming the decree of the District Court holding the patent valid but not infringed, 32 F.Supp. 347. Defendant submits this decision as persuasive; plaintiff denies that the decision is persuasive and says that the record here is substantially different.1
Trial was before a master; from his report and the accompanying record, it appears that on each side the case has been exhaustively prepared and presented. The hearings occupied 71 court days; the transcript consisted of over 10,000 typewritten pages; numerous exhibits were offered by each side. The oral argument occupied 11 court days; the transcript thereof consists of over 1700 pages. The respective parties submitted to the master numerous printed Findings of Fact and Conclusions of Law, and printed Briefs aggregating over 1400 printed pages. (The master originally issued a draft report and served notice that counsel might file objections thereto; both parties filed objections and subsequently argued these objections; the master then issued his definitive report, being the document now under consideration.) The report is a lengthy document, consisting of 436 printed pages: it makes detailed Findings of Fact — 294 in number and states detailed Conclusions of Law — 129 in number. The master found against defendant on all its defenses except the construction of the claims; he concluded that the claims, properly construed, did not cover defendant's operation and recommended that the suit be dismissed. The matter comes up before me on this report and on the objections thereto filed by plaintiff (69 in number and taking 53 printed pages) and by defendant (148 in number and taking 27 printed pages). The respective counsel have also filed several supporting printed briefs.
The process of the claims in suit, and the defendant's operation, have the same general objective, i. e., to crack or decompose the heavier hydrocarbons into lighter constituents, specifically gasoline. Some forms of cracking ante-dated Behimer. Before his invention, it was well known in the art that cracking could be brought about by subjection of the heavier materials to a proper temperature for a sufficient time; commercial cracking processes to make gasoline had been successfully carried out by heating and cracking in directly fired zones or containers, sometimes drums or tanks, sometimes tubes or coils. As of November, 1918, the date of Behimer's original application, there were in commercial operation, two schools of cracking. The one was the "liquid phase" method where a body of liquid oil was cracked and distilled, generally in a receptacle (usually a tank or drum) maintained under superatmospheric pressure so as to increase the boiling point to such a temperature that the oil would crack while still in liquid form; the other was the "vapor phase" method, where the oil was heated and vaporized either completely or to a substantial degree, and then cracked. The liquid phase method operated at low temperature and with a long time factor, the vapor phase method, at high temperature and with a short time factor; the liquid phase product was a white, sweet natural gasoline low in unsaturates, the vapor phase product was unlike natural gasoline in that it was of bad color, had a foul odor and was rich in unsaturates. Originally the liquid phase product was much preferred commercially. However, with the further development in the 1920's of the high compression automobile engine, it became desirable to procure gasoline of high octane content, the so-called "anti-knock" gasoline, and it was found that the vapor phase product had these high-octane properties and was, therefore, more suited from this stand-point for the high compression engines than the previous liquid phase product, or the natural gasoline. The result has been that the natural gasoline and the liquid phase cracked product both yielded in desirability to the vapor phase cracked product.
In ante-Behimer processes, the principal difficulty was that the subjection of the hydrocarbon stocks to the heat necessary to crack them, produced not only the desired lighter product, but also carbon and heavy carbonaceous materials. This carbon tended to deposit on the highly heated surfaces of the metal "firing zone;" the metal became insulated, was apt to overheat and decrease in strength; the "firing zone" whether drum, tank, coil or tube, was prone to bulge, crack or burst. This was the "carbon problem" that was then so important and so difficult in the practice of the cracking art. Behimer's invention (as his specification explicitly states) was concerned with this carbon problem and had a solution for it. Instead of heating and cracking in the same zone, Behimer's idea was to have two zones, one a heating zone in which the charging stock would be heated under superatmospheric pressure to a temperature just under cracking, and a second zone, unheated or lightly heated, into which the liquid would be deposited from the first zone — and in which second zone, the liquid would be allowed to remain for a comparatively long period and in which the actual cracking would take place. This second, or cracking zone had two outlets; one from which the the carbon residue was drawn away; the other from which part of the cracked liquid passed out to constitute the desired product. In this way, there was only a small or incipient cracking in the "heating zone" and consequently, no harmful deposit of carbon there; the carbon deposit was all in the second or cracking zone, where it could be drawn away with no harmful consequences. Claim 12 in suit is typical and reads as follows:
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