United States Industrial Chemical Co. v. Theroz Co.

• Decision Date: 10 April 1928
• Docket Number: No. 2607.,2607.
• Citation: 25 F.2d 387
• Parties: UNITED STATES INDUSTRIAL CHEMICAL CO., Inc., et al. v. THEROZ CO.
• Court: U.S. Court of Appeals — Fourth Circuit

25 F.2d 387 (1928)

UNITED STATES INDUSTRIAL CHEMICAL CO., Inc., et al. v. THEROZ CO.

No. 2607.

Circuit Court of Appeals, Fourth Circuit.

April 10, 1928.

Frederic P. Warfield, Lawrence Bristol, and Charles E. Hughes, all of New York City (Hersey Egginton and G. Willard Rich, both of New York City, on the brief), for appellants and cross-appellees.

Livingston Gifford, of New York City (Gifford & Scull and Newton A. Burgess, all of New York City, on the brief), for appellee and cross-appellant.

Before WADDILL, PARKER, and NORTHCOTT, Circuit Judges.

PARKER, Circuit Judge.

The Theroz Company, as assignee of letters patent Nos. 1,262,267 and 1,262,268, issued to Jacob Schaub, and 1,313,878, issued to Henry M. Brigham, brought this suit against the United States Industrial Chemical Company, Inc., and the Sterno Corporation, for infringement of these patents. The defendants pleaded anticipation and lack of invention, and denied infringement. The District Court held the two Schaub patents valid and infringed, and referred the case to a master for an accounting. The Brigham patent was held void, on the ground that it was anticipated by the Schaub patents. All parties have appealed.

The patents in suit cover an artificial fuel, the principal constituents of which are alcohol and nitrocellulose, and also the process by which it is made. This fuel is one of the products popularly known as solid alcohol, and is produced by dissolving nitrocellulose in commercial methyl alcohol, which contains acetone, thickening the resulting colloid by the addition of commercial ethyl alcohol, which contains water, and then coagulating or jellifying it by the injection of tiny streamlets of water, or of commercial ethyl alcohol containing water. The difference between the two Schaub patents is that No. 1,262,267 prescribes the use of ethyl alcohol as a thickener and as a coagulant, whereas in No. 1,262,268 water is used as a coagulant and no ethyl alcohol whatever is used.

The Brigham patent, which was obtained some time after the Schaub patents by the attorney who represented Schaub, prescribes the use of dehydrated ethyl alcohol and acetone as a solvent of the nitrocellulose, and of water or a mixture of water and commercial ethyl alcohol as a coagulant. Manifestly the only difference between this method and that of the Schaub patents consists in the use of dehydrated ethyl alcohol and acetone, instead of commercial methyl alcohol, as a solvent; but, as this was merely the substitution of known equivalents well-recognized as such in the art, there was no novelty in the Brigham patent, and the learned District Judge properly held it void for that reason. Crouch v. Roemer, 103 U. S. 797, 799, 26 L. Ed. 426; Smith v. Nichols, 21 Wall. (88 U. S.) 112, 119.¹ The cross-appeal deals only with the validity of this patent, and need not be further considered.

The first question for our consideration on the appeal proper is the validity of the Schaub patents, which defendants assail as being void for lack of novelty and invention generally, and specifically because of anticipation. This involves, of course, a consideration of the prior art, the knowledge, achievements, and progress of which are accurately and painstakingly set forth in the opinion of the District Judge (14 F.2d 629), and need not be repeated here. It is sufficient to say that the prior art in the solid alcohol industry disclosed two classes of products: (1) A spongy soap, containing alcohol in its pores; and (2) a mixture of alcohol, ether, and nitrocellulose, formed by dissolving the nitrocellulose in alcohol and ether, and solidifying the colloid thus formed by evaporating a part of the ether.

Belonging to the first class of products was the "Sterno" or "canned heat" manufactured and sold by the defendant Sterno Corporation during the years 1914 to 1920, and until that corporation began to infringe the patents of complainant. This soap product, however, was subject to a number of objections. The soap would melt during combustion, and the alcohol would spread, producing extended flames, which were offensive and dangerous. After combustion, there would be an objectionable residue. And, if the product were kept for any considerable length of time, dessication would take place, resulting in loss of weight and combustibility. To obviate these objections the ether-evaporation process was tried, but was never successful. It involved a considerable fire hazard and was entirely too expensive, because of the loss of ether, which was evaporated to bring about solidification of the remainder of the mixture. The product itself was objectionable, as it gave off the odor of ether while burning, and contained enough ether with the alcohol to make it not entirely free from danger. As stated, this ether evaporation process was never successful; and, although defendants purchased the Poulton patent covering the process, they never attempted to make use of it, but continued to manufacture the unsatisfactory soap product until the adoption of the infringing process involved in this suit.

It is manifest, we think, that the inventions of Schaub were not anticipated, either by the soap product or by the product of the ether-evaporation process. His product differs from the soap product, in that, instead of the fusible and noncombustible soap, it has a framework of nitrocellulose, which is combustible and leaves no residue. It differs from the product of the ether-evaporation process, in that it contains no ether and gives off no ordor of ether when burning. The process of manufacture, which is also covered by the patents, differs radically from the processes used in manufacturing the other products. The difference between it and the process used in producing the soap product is so obvious as not to require comment. The ether-evaporation process is also radically different. Although in this process methyl alcohol containing acetone is used as a solvent of the nitrocellulose, ether is also an essential ingredient of the mixture; and coagulation is secured, not by the addition of water, or of commercial ethyl alcohol containing water, but by evaporation of the ether, which, as stated above, is a dangerous, expensive, and commercially impractical method. Schaub's product and the process by which it is produced, therefore, is not merely an improvement over prior products and methods, but both the product and the process are radically different from and greatly superior to anything theretofore known in the industry.

Defendants rely also upon the process of the Haddon British patent of 1907 as an anticipation of the inventions covered by the Schaub patents; but this contention in manifestly unsound. Although the process of the Haddon patent involved dissolving nitrocellulose in methyl alcohol, and coagulating the colloid thus formed by the use of water or ethyl alcohol containing water, it was used, not to produce a fuel in which the alcohol would be retained in the pores of a nitrocellulose structure, but to produce a strand of artificial silk from which all alcohol would be eliminated. The problem with which it dealt was the direct antithesis of that in the solid alcohol industry. What was desired there was to obtain a filament or thread of nitrocellulose, from which all liquid which had been used in its dissolution should be eliminated. Here the problem was to coagulate the nitrocellulose as a framework in such a way as to retain as much liquid as possible.

It was not a new discovery in either invention that nitrocellulose could be dissolved in commercial methyl alcohol containing acetone. Nor was it new that nitrocellulose thus dissolved could be coagulated by the use of water, or of ethyl alcohol containing water. What was new in the Haddon patent was the silk-like thread produced from nitrocellulose and the process by which it was produced. What is new in the Schaub patents is the artificial fuel having a nitrocellulose framework, which contains in its pores and pockets nothing but alcohol (plus only the minute quantity of water contained in commercial alcohol), and the process by which this artificial fuel is produced. The only similarity in the processes is that they depend upon the same natural laws and the same qualities of the ingredients used; but, of course, this does not render one an anticipation of the other. No one is given a patent on natural laws or on the chemical properties of matter. The products of the patents are entirely different. The processes are entirely different. And complete knowledge of all the disclosures of the Haddon patent would not have suggested the product or the process of the Schaub patents.

Passing from the contentions as to anticipation, we come to the broader contentions of lack of novelty and invention upon which defendants chiefly rely. Here defendants make two contentions: (1) That Schaub obtained a patent on information given him by employees of the Du Pont Company embodying knowledge familiar to the industry; and (2) that the patents embrace merely the operation of well-understood natural laws and matters which were of common knowledge in the art.

The first of these contentions was examined very minutely by the learned District Judge, who arrived at the conclusion that the Schaub patents were not based upon information furnished by the Du Pont employees, but upon experiments conducted by Schaub and discoveries made in the course of these experiments. See 14 F.(2d) at 633 and 634. We have considered the evidence carefully and we find ourselves in accord with his conclusion regarding the matter. Aside from the testimony of Schaub as to his experiments and discoveries and the corroborating evidence offered to sustain him, it appears that the Du Pont Company itself was at the time engaged in an attempt to produce a commercially practical solid alcohol, and was experimenting on a method for producing same which it subsequently abandoned as a...