Universal Oil Products Co v. Globe Oil Refining Co

Decision Date29 May 1944
Docket NumberNo. 392,392
Citation322 U.S. 471,64 S.Ct. 1110,88 L.Ed. 1399
PartiesUNIVERSAL OIL PRODUCTS CO. v. GLOBE OIL & REFINING CO
CourtU.S. Supreme Court

Messrs. William D. Whitney, of New York City, and Charles M. Thomas, of Washington, D.C., for petitioner.

Messrs. Thorley von Holst and J. Bernhard Thiess, both of Chicago, Ill., for respondent.

Mr. Justice REED delivered the opinion of the Court.

The petitioner sued the respondent for infringement of United States Patents No. 1,392,629, dated October 4, 1921, and No. 1,537,593, dated May 12, 1925. The former was issued to Carbon P. Dubbs; the latter, to Gustav Egloff. These patents cover the Dubbs process for converting heavy crude oils to lighter oils, especially gasoline. The claimed infringement arises from the respondent's use for the purpose of such conversion of the 'Winkler Koch process' in apparatus designed and installed by the Winkler Koch Engineering Company. The district court dismissed the bill on findings of fact to the effect that Patent No. 1,392,629 was valid but not infringed, and that Patent No. 1,537,593 was invalid, without findings on the issue of infringement.1 The majority of the Circuit Court of Appeals found both patents not infringed and did not pass on their validity; Judge Lindley was of opinion that the Dubbs patent was infringed but that both patents were invalid.2 The Court of Appeals for the Third Circuit found the same patents to be valid and infringed by the use of a process substantially similar to respondent's in Root Refining Co. v. Universal Products Co., 3 Cir., 78 F.2d 991. To resolve the conflict thus presented we granted certiorari, 320 U.S. 730, 64 S.Ct. 194.

Where the questions presented by the contested claims of infringement and validity are purely factual, this Court ordinarily accepts the concurrent conclusions of the district court and Circuit Court of Appeals in these cases. Goodyear Co. v. Ray-O-Vac Co., 321 U.S. 275, 64 S.Ct. 593. But in resolving conflicting views of two Circuit Courts of Appeals as to a single patent, we are obliged to undertake an independent reexamination of the factual questions. Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 35, 36, 50 S.Ct. 9, 10, 74 L.Ed. 147.

The patents and the allegedly infringing process concern commercial methods for converting petroleum, as it is found in nature, into the gasoline in everyday use as motor fuel. The experts who testified in the district court have stated some of the theoretical background of the processes used, and a brief summary of this material may facilitate understanding of the process involved.

Layman and chemist alike are of course familiar with the conception of the atoms of 'chemical elements' as the basic building blocks of ordinary chemical compounds.3 The atoms of the 'elements' have the capacity to combine with the atoms of other elements to form the molecules of 'chemical compounds,' whose properties seem to depend directly upon the nature of the molecule. In the field of oil chemistry, the outstanding fact is the extraordinary ability of carbon and hydrogen to combine with each other into molecules containing widely varying numbers of carbon atoms with different proportions of hydrogen atoms in an almost unlimited number of different structural arrangements. These combinations, generically termed hydrocarbons, are present in great variety in crude oil.

The hydrocarbons differ widely from one another in their physical properties, particularly in the property of volatility, which is of prime importance in motor fuels. As one might expect, the hydrocarbons composed of large molecules with many carbon atoms are heavy, sluggish liquids with relatively high boiling points; they are not suitable for use as gasoline. Those with smaller molecules are much more volatile—indeed, the very smallest are gases at ordinary temperatures.

The initial step in the preparation of gasoline from crude oil involves no molecular change; it consists merely in separating the light hydrocarbons in the natural mixture from the heavy hydrocarbons. This step is accomplished by heating the oil until it vaporizes and then carrying the vapors through a device familiar to industrial chemistry under the name of a fractionating tower. Such a tower is in effect a series of condensers in which the vapor mixture is cooled and the liquid condensate drawn off in separate steps. First the high boiling point constituents, reaching a liquid phase after relatively little cooling, are condensed and withdrawn; this process is repeated on the remaining constituents in successive steps as the vapors cool, until there remain only those low boiling point hydrocarbons suitable for use as gasoline.

By fractional distillation alone, a typical sample of Mid-Continent crude oil might yield approximately 25% gasoline, 5-7% kerosene, 30% gas oil, and a balance of 38-40% fuel oil. The fraction remaining after the distillation of gasoline or gasoline and kerosene is termed 'topped crude.'

For many years the commercial petroleum industry carried the production of gasoline from crude oil no farther than this initial step of separating it from the mixture. But with the introduction of the automobile, the demand for gasoline increased rapidly, and it became necessary to develop commercial apparatus for the conversion of heavy hydrocarbon molecules to light hydrocarbon molecules by the chemical process known as 'cracking.'4 Chemists had long known that by heating the heavier hydrocarbons to temperatures of the order of 750-900 Fahrenheit, it was possible to decompose the heavy molecules into lighter molecules with fewer carbon atoms, with the maximum decomposition resulting from fairly prolonged application of heat.5 The breakdown of the heavy molecules into lighter ones was accompanied, however, by a concurrent phenomenon—namely, the formation of even heavier hydrocarbons and the deposit of solid matter called 'coke' or 'carbon.' Likewise, at the temperatures used the oil boiled, and if the vapors were not released (and they could not be if heat was to be applied for a long period of time), high pressures developed in the still. And as the cracking operation yielded products of increasing volatility, this pressure would, apparently, rise as the reaction progressed.

The engineering problems involved in the reduction of the laboratory knowledge of cracking to commercial practice were formidable, since the pressures and temperatures employed carried severe risks of fire and explosion. The first commercial process was introduced about 1913—the so-called Burton process. Burton heated the charge—gas oil—in a simple tank, or shell still. The tank was not continuously fed; a charge of 8250 gallons was pumped into it and brought to a temperature of 700—750 over a period of some 12 hours under autogenous gas pressure of 75 pounds. The cracking operation was then continued for 24 hours. The vapors liberated in the still were conducted through an inclined line to an aerial condenser, where the heavier and less volatile vapors were liquefied and drained back into the still through the same vapor line, there to be mixed with the unvaporized residue and subjected to further cracking. This first fraction of the vapors was called 'reflux condensate'; the unliquefied vapors were carried to a second condenser and liquefied as 'pressure distillate,' a liquid convertible by further refining operations not here relevant to commercial gasoline.

The coke deposited during cracking tended to cause uneven heating of the shell still, with resultant formation of weak spots and danger of explosion. Consequently, it was necessary to shut down the still after about 24 hours of cracking to permit the coke to be cleaned out. The cleaning and pre-heating processes consumed about half the operating time; the gasoline yield ranged only about 25-28% of the gas oil charge; and the menace of explosion was serious. The Burton process was modified and improved somewhat in 1915 by the introduction of the Burton-Clark process, which differed in that it did not apply heat directly to the shell still, but instead circulated the oil in the still by convection through a separate heating coil. This improvement increased the yield to some 30-32%. The Burton-Clark process constituted the general industrial practice at the time of Dubbs' patent.

Chemical engineers in the refining industry were engaged in continuous research looking to the solution of the coking problem and the development of a process which might operate continuously, without wasteful periodic shut-downs of expensive plant equipment. The processes in suit are among the results of their efforts.

Dubbs Patent No. 1,392,629, the alleged infringement of which forms the basis of this action, covers a process first demonstrated in a pilot plant at Independence, Kansas, in 1919. The oil charge is fed through a nest of heated tubes—called 'B tubes'—about four inches in diameter—a heating process not unlike that used in Burton-Clark. The heated oil is then delivered to tubes of about ten inches diameter—'C tubes'—which are only partly filled with liquid oil. The C tubes are insulated, but unheated or only lightly heated to prevent the escape of heat by radiation. Here the vapor generated as the result of heating and cracking passes from the liquid oil and is carried to vapor line condensers of the same general kind used in the Burton system. The first vapors to condense—that is, the reflux condensate—are returned to the B tubes for further heating and cracking; the lighter vapors are carried to a second condenser to become gasoline. The unvaporized residue of liquids and suspended solid particles in the C tubes is continuously withdrawn from the system; thus only the light oils of the reflux condensate, which have but a limited tendency to form coke, are recycled through the B tubes. Such deposit of coke in the lightly heated C tubes as occurs involves no marked...

To continue reading

Request your trial
104 cases
  • International Carbonic Eng. Co. v. Natural Carb. Prod., Civil Action No. 1851-RJ.
    • United States
    • United States District Courts. 9th Circuit. United States District Court (Southern District of California)
    • 15 Julio 1944
    ...& Smith Co., December 7, 1942, 317 U.S. 228, 233, 237, 63 S.Ct. 165, 87 L. Ed. 232, by the same Justice; Universal Oil Products Co. v. Globe Oil & Refining Co., 64 S.Ct. 1110, by Mr. Justice Reed. See also the following Supreme Court cases decided before the case of Electrical Fittings Corp......
  • California Medical Products v. Tecnol Med. Prod., Civil A. No. 91-620-LON.
    • United States
    • United States District Courts. 3th Circuit. United States District Court (Delaware)
    • 29 Diciembre 1995
    ...759 (Fed.Cir.1984) (quoting Universal Oil Prods. Co. v. Globe Oil & Refining Co., 137 F.2d 3, 6 (7th Cir.1943), aff'd 322 U.S. 471, 64 S.Ct. 1110, 88 L.Ed. 1399 (1944)). Tecnol claims that subparagraphs (a) and (b) of claim 1, which claim a neck encircling band and a chin support that are "......
  • Autogiro Company of America v. United States
    • United States
    • Court of Federal Claims
    • 13 Octubre 1967
    ...162 F.2d 857 (9th Cir. 1947); Universal Oil Products Co. v. Globe Oil & Refining Co., 137 F.2d 3 (7th Cir. 1943), aff'd 322 U.S. 471, 64 S.Ct. 1110, 88 L.Ed. 1399 (1944). Allowing the patentee verbal license only augments the difficulty of understanding the claims. The sanction of new words......
  • Diamond v. Chakrabarty
    • United States
    • United States Supreme Court
    • 16 Junio 1980
    ...Oil Co. v. Bicron Corp., 416 U.S. 470, 480-481, 94 S.Ct. 1879, 1885-1886, 40 L.Ed.2d 315 (1974); Universal Oil Co. v. Globe Co., 322 U.S. 471, 484, 64 S.Ct. 1110, 1116, 88 L.Ed. 1399 (1944). The authority of Congress is exercised in the hope that "[t]he productive effort thereby fostered wi......
  • Request a trial to view additional results
4 books & journal articles
  • The Misuse Doctrine-Law and Policy
    • United States
    • ABA Antitrust Library Intellectual Property Misuse: Licensing and Litigation. Second Edition
    • 6 Diciembre 2020
    ...are thus enabled without restriction to practice it and profit by its use”); see also Universal Oil Prods. Co. v. Globe Oil & Ref. Co., 322 U.S. 471, 484 (1944); Gill v. Wells, 89 U.S. 1, 25-26 (1874). 15. See generally Fromer, Patent Disclosure , 94 IOWA L. REV. at 548-549; William M. Land......
  • Tesla, Marconi, and the great radio controversy: awarding patent damages without chilling a defendant's incentive to innovate.
    • United States
    • Missouri Law Review Vol. 73 No. 3, June 2008
    • 22 Junio 2008
    ...I trust that judicial wisdom will come to show the way, in the common-law tradition."). (424.) Universal Oil Co. v. Globe Co., 322 U.S. 471, 484 (425.) 35 U.S.C. [section] 284 (2000).
  • Kewanee revisited: returning to first principles of intellectual property law to determine the issue of federal preemption.
    • United States
    • Marquette Intellectual Property Law Review Vol. 12 No. 2, June 2008
    • 22 Junio 2008
    ...U.S. at 485, and Bicron, 478 F.2d at 1082. (108.) Kewanee, 416 U.S. at 484. See also Universal Oil Prods. Co. v. Globe Oil & Ref. Co., 322 U.S. 471, 484 (1944) (noting that the quid pro quo for patent protection is "disclosure of a process or device in sufficient detail to enable one sk......
  • The future of patent enforcement after eBay v. MercExchange.
    • United States
    • Harvard Journal of Law & Technology Vol. 20 No. 1, September 2006
    • 22 Septiembre 2006
    ...adequate disclosure by the inventor in exchange for a limited monopoly. See, e.g., Universal Oil Prods. Co. v. Globe Oil & Ref. Co., 322 U.S. 471, 484 (1944) (explaining that the "quid pro quo" is sufficient disclosure for the public "to practice the invention once the period of the mon......

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT