# Petition for Writ of Certiorari — Universal Oil Products Co. v. Globe Oil & Refining Co > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386404_0029%3A09 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Certiorari - **Published:** January 1, 1944 - **Citation:** 322 U.S. 471 ## Text : . . ‘ > e i . 2 * . 5 3 - ° -» ‘ — . “ . . os . - . . . : . 4 . . ° . >. ‘ : . ‘ . « ° an Yl . ‘ . - } . e . ss . ~_ ’ . . 7 . é . e ° . - . . J ° * . . * . ‘6 " . ‘ . Gn ‘ . . e ‘ * : . : * . . In THE _ Saree Court of the Huited ies Ocroser TERM 1943 § 392° UNIVERSAL OIL PRODUCTS COMPANY, a corporation, Petitioner, : ae - GLOBE OIL & REFINING COMPANY, a corporation, } Resposident. —— — —— PETITION OF UNIVERSAL OIL PRODUCTS COM. PANY-FOR A WRIT OF CERTIORARI TO THE CIR- -CUIT COURT OF APPEALS FOR THE. SEVENTH CIRCUIT AND BRIEF IN SUPPORT THEREOF ————— = Lc AR F. REICHMANN, \ Winturam F. Hatt, _ CHarves‘M. Tomas, ° Ravpu S. Harris, Watter J. BLENKo, | Attorneys for Petitioner. . Pe a . * . . . 4 » 2 . . 2 . - » . “+ 3 . . INDEX . ~ ‘Seiten FOR ‘Writ oF ee TO THE UNITED UES aS yaceou eh wet ON Bae Questions Presented ee eer rr A te rel ’ Reasons Relied on for the Allowance of the TES See weve kee eee Pasa! _ AFFipavit OF Hrram J, HALLE SuBMITTED IN SuB- THE Unitep States Circuit Count OF APPEALS FOR THE SEVENTH Circuit ee, DAS eRe eae nts BRIEF IN Support | OF Perrrion FOR Wart OF CErR- bl... ELE ‘Fee. ESERSERAG RC wR aehhud yea Opinions of the Courts DE dance sda ea ee . Jurisdiction ............ Ria hava ue se cha ka See of he Come... . 2... 5... Specification of Errors Lwieeseh Corde enSuenh Argument See Wek ee se ee eee ee ‘Point. 1: There is a conflict between different: herein is in conflict with the decisions of this Court and other Circuit Courts of. Appeal. . Point 3: The patent office prosecution of the _ application for the Dubbs patent is irrelevant to the infringement issue ............ ieee ~ Conchtision od Sia Meee sted Boe ci et ne ee ee oe ee Jurisdictional Statement . ae 7" Peak eae maa as Circuits on the same matter ................ : Point 2: The decision of ‘the Court of Appeals - pace” States -Circurt Court OF APPEALS FOR THE. . SEVENTH NNN Se be es'bs os eck cbnewdesan ~~ PORT-OF A PETITION FOR WRIT OF CERTIORARI TO. 32 32 oes OF CASES CITED | | ‘ ak... wees . Carnegie Steel Co. v. Cc ambria Iron Co Q., 185 vu. S. 403 33... Cochrane v. Deener, 94 U-S. (i. | 50 Doble Engineering Co. y. Leeds & Northrup Ct Cir., 134 F. (2d) 78 __. Eibel Co. v. Paper Co., 261 U. ie BeBe Fooege a Hogg v. Emerson, 11 How. 587 ............055... 33 Layne & Co. y. Wester Well W orks, 261 U. S. 3875. 28 Magnum Co. v. Cole BU. G 1 2 oss 28 . - National Hollow B. B. Co. v. Tite rchangeable B. B. CO, FO FG Baa eo 6h a eee tenes 34 Sanitary Refrig’r Cov Winters, 280 USS: _—- ae, Smith v- Snow, 294 U. a See 28, 32, 33, 34, 35, 36, : 2 Tilghman v. Proctor, 0.6: aS ee) 34, 36 | Universal Oil Products Co.-v. Winkler-Koch ; % C. Os, 6 F. Supp. 763, aff'd 3 Cir., 78 F. (2d) 991, cert. eehe 4 den. 296 U. S Peer eae rick wehbe cw eekeene 3 iste STATUTES CITED Judicial Code, Section 240 (a) (28 U.S. C. Sec. 347). 2 Judicial Code, Section 262 (28 U.S. C.’Sec. 377)... 2 R.S. 4903,.U.S. C. Title 35, Sec. 51 2.0.20. bene. 20 | MISCELLANEOUS AUTHORITIES “Elements of Physics” by Prof.. -Hoadley of Swarth- RO RG ee eer ye Peo tae ae re In THE 2 ace | Supreme Court uf the United States OctoBer TERM. 1943. No. 4 -‘Umrversat O1L Paobucts Company, ‘a maser Petitioner, 2 Vv. PRIA ; pon On: & Reriwiae Compan, a corporation, or eins | Resposiden. PETITION FOR WRIT OF CERTIORARI TO THE _ UNITED STATES CIRCUIT COURT OF APPEALS» ee FOR THE SEVENTH CIRCUIT To the Honorable Cc hief Justice and Alsavicte Justices of } . the Supreme | Court of the United States: . Your . petitioner; ‘Universal Oil Products Company, ' prays that-a writ of certiorari issue to review a final, judg- “ment of the United States Circuit Court of Appeals for the _ Seventh Circuit entered June 30, 1943, pursuant to’ its Reps: finding not infringed, if valid, petitioner's patents — ets 629, Carbon’ P. Dubbs, granted October 4, 1921, and $73, 593, Gustav Hgie, —— May 12, 1925, and shows. as Seat i Te ‘ e @ ‘2 . *+* Pi ° ° A certified transcript of the record in the case, in¢luding : ‘the proceedings in said Circuit Court of Appeals, is fur- nished merews & in compliance with: ‘Rule 38 of this Court. a a —_— _ JURISDICTIONAL ST. ATEMENT Jurtediction is invoked under Section 240 (a) of the - Judicial Code as amended by Act of February 13, 1925 (28 U: S. C. Sec. 347), and under Section 262 of the | Judicial Code, Act of March 3, 1911 (28 U. S. C. Sec. .377). The case arises under ‘the patent laws. The judg-— ment, of which review is sought, is dated June. 30, 1943 ‘and is final in that it affirms the judgment of the District - Court contig the complaint (v. VIL,'p. 3585). - _ SUMMARY AND SHORT ST ATEMENT OF THE : MATTER INVOLVED if ‘Petitioner, a corporation of Delaw are, employs a staff . of cheniists, physicists, engineers, and petroleum techiolo- gists, and maintains an extensive experimental laboratory and has for many years been actively engaged. in research _ dn connection with, and in the development of, processes and - apparatus’ for producing ‘gasoline by cracking, and in the commercial introduction thereof. Among such processes __ is that disclosed in and practiced under the Dubbs patent _ - in suit. Ae . | ; bse | References are to the certified transcript ; Roman numerals refer to volume and Arabic numerals to page. »\ - . 5 2Petitioner demonstrated. to the refining indatry the revolu- retry character of the Dubbs process arid its a¢¢gomplishments (p. 5-7, 10, infra), induced important refiners to,adopt it under licenses, in many instances supervised. for them the installa- tions of apparatus. for practicing the process, and in most- in+ stances guaranteed the successful performance thereof. From . — __ Respondent, a corporation of Illinois, is one of ot te mem- bers of a confederacy, or group of refiners, f for the purpose. of defending any infri t suits ‘brought “against any of its members because of their use of the so- ‘called “Winkler-Koch process”. The Winkler-Koch | “process enianated from the Winkler-Koch Engineering - Company, which was organized) in ‘the Summer of 1927, LS _or its alter ego, the Winkler-Koch Patent Company.” The decision and judgment of the Court of. ‘Appeals .in the case at ‘bar are in direct conflict with those of the . _ Third Circuit gn a suit (Universal Oi Products Co.-v.' _Winkler-Koch E. Co., 6 F. Supp. 763, aff'd 3 Cir., 78 F. [2d] 991, cert. om. 296 U. 5. 626), hereinafter referred to as the “Root case”, wherein both the aforesaid Dubbs and. _ Egloff patents were found to be valid and to have been i -. fringed by the practice. of the ‘ “Winkler-Koch process.” In both suits, the same claims-were ‘involved. namely, all. of the claims of the Dubbs patent (except claim 6) and all of the.claims of. the Egloff patent. ‘the oytset petitioner adopted the policy of Jjcensing its patented inventions to all comers—-the smail as well as the large refiner—, for a low royalty per barre! of oi! treated. It has never itself engaged i in commercial refining. *No patent or patent application of this company is ‘identified in the proofs, nor did respondent attempt to establish the proveni- ence of the Winkler-Koch process. _.. *Root Refining Company, like the respondent, was. a ‘member of the confederacy, formed in 1929. which defended both the Root case and the case at bar. Upon pteliminary hearing, the Dis-. trict Court, finding in the instant case that respondent was in. privity with the defendants in the Root case, initially held that the decree in the Root case was “conclusive” against respondent “on the issues ofthe validity and infringement of the Dubbs and Egloff patents” (27 F. Supp. 161, 167). Subsequently, upon motion for rehearing on this issue and upon a showing that the : defendant in the Root case, acting independently, of the other the infringing Winkler- ¢ defendant in the Root case and the Winkler-Koch ‘as practiced by respondent ‘ in the instant case, ough there are some slight differ-. ences in operating conditions, as indicated on Pl. Ex. 598 There is no difference betw Koch process as practiced b ee (v. IV, p. 1863); where there are differences, the notations in red aa to Root Refining Company’ s operations (v. II, p: 695- 7). The differences, however, are of no conse- quence (v. I, p. 697) and were not urged by respondent i i the courts below as distinguishing the two cases; they are _ not so ‘much as mentioned by either of the lower courts in the instant case. . _. Although both ‘patents have expired, ‘there are a num- ber of other suits pending against different defendants in ‘the Third and Tenth Circuits’; all of these suits involve’ the validity of one or both of the patents here in suit and — like infringement questions; none of them has been tried. - _ All of them would. be disposed :of by a decision of this- Seca y ps i | The Dubbs Patent. The state of the art being com- mercially practiced when Dubbs appeared on the scene. was the Burton process and its successor, the Burton-Clark | members"of the confederacy, had settled setisioner’s claim tor damages and profits and accepted: one cf its standard licenses,-’ - the District Court réversed jts holding that respondent was bound by the res judicata: It held that the sett!emént deprived Tespond- . ent and the remainder of the group of the,‘ “opportunity” to pro- ceed further in the Root litigation, and concluded that “the issues _ of the validity of the patents and their infringement by defend- = are open for litigation in this case” (31 F. Supp. 665, fe? : 'The affidavit of Hiram J. Halle filed 1 in support of. this peti: tion 4p. 25-6, infra) enumerates some of the pending cases. « . P process.’ The iatter first appeared about 1915. Neither Burton. nor Burton-Clark was capable of cracking other — than selected light oils produced by distillation of petroleum. These processes were non-continuous “or “‘batch” processes. ‘The formation and accumulation of carbon inside the still ” created a gonstant fire ‘and explosion hazard to life and. " by volume of the oil charged. ‘The productive periods were limited. to 24 and 36 hours, respectively, and were sepa- rated by unproductive ‘periods of equal lengths causéd by the hecessily of ‘shutting down to remove the accumulation. of — _garbon (v. I, p. 486-90). In contradistinction, the Dubbs | process was not limited to the cracking of selected distillate stocks but. could also \ crack crude and other heavy oils; similarly it $0 greatly ‘mitigated the carbon evil as to permit substantially continu- ous cracking operation. For.example, in _a demonstration _ ‘run in 1919, the process ran uninterruptedly for'nine days — and was then shut down, not because of: ‘carbon or other troubles, but - solely hecause the representatives of. the, — National Péfroleum Association and Western Refining As- sociation in attendance stated siting were’ satisfied ( v. Lop. 377). As the District Sides Honorable William H. Holly, found in the instant case (40 F. Supp. 575,.577-8) : a “The Dubbs process was recognized immediately by: the larger oil companies as a great improvement in the art and the older processes of. —s iaeares were. practically abandoned.” - | 1The unit used in practicing the Burton pr ocess is dicen by Pl. Ex. 504 (v. IV, p. 1697); that used in the amicead Clark _ process by Pl. Ex. 515 (v. IV, P. 1699). property: The gasoline yields were between 28%. and 33% . . * volume of the oil charged, a large increase over. the gaso- _- constructed at a cost of almost $46,000,000 for practicing ‘6 ‘One of the large oil companies tilising dee: Dubbs process installed. four 500 barrel units and kept them in operation from 1923 to 1936, treating during the thirteen - year period more han 4,000,000 barrels of oil; each ‘unit _ femained in continuous operation for runs averaging ap- ~ proximately 2214 days before Seing required to be shut down for cleaning, and the gasoline yield was 40.57% by _ line yield achieved in prior. - practices (v. II, p. 615). . ‘Up to December 31, 1929; 256 Dubbs units had been the process (v. II, p. 615-6), and 190,000,000 barrels#f oil _- had been treated therein (PI, Ex. 586, v. IV, p. 1818). After a thorough analysis of the prior art and the ac- _,complishments of the. Dubbs process, Jutlge Holly, in the - instant case, continted inter alia A Soslh F: Supp. 575, 578, si: “With great skill and’ ‘ingenuity counsel for the "defendant have argued that these patents {the art ‘prior to Dubbs} clearly teach all that-is contained © in the Dubbs process. But the stubborn fact re- _. Mains that the great oil companies with their staffs of highly trained technical experts never found it out-* * If the prior art taught clean cireulation so Clearly, how, did it happen that nothing better than the Burton and Burton-Clark systems was — developed ” ; om : ele ere ee. * * _. “This is more than mere commercial success. Here the recognized experts in the art saw the Dubbs. 1The Dubbs process is. generally known in the refining art as the “clean circulation process” for the Teasons hereinafter dis- -cussed (p.8-9; infra). —. See ee F sg? Spineiate wak-aien inid “etidiiaars And who was better qualified to judge?” The Dubbs process,’ as exempliGed in the patent, ia- volves forcing the oil to be cracked, in a stream under high " pressure, through an externally fired pipe-coil consisting of four-inch-diameter tubes, identified in the patent as . “cracking tubes B”. From these ‘ ‘cracking tubes .B”, the oil passes into ten-inch-diameter tubes, identified in the pat- ent as “vaporizing tabes C”. The cross-sectional area of the C tubes is 625 -per cent. of that of the B tubes. In the “cracking tubes _B” the dil travels at high velocity, while in the “vaporizing tubés C” it travels at a relatively low At the temperat‘ire-pressure range given in the “illus- trative run” in the patent specification, from 20 per cent. te 90 per cent. of. the oil stream, ‘while travelling through the “cracking tubes B”, is converted to vapor, é.e., vapor is - - | generated to that extent (v. II, p. 656). Due to the stream velocity and resulting turbulence in the “cracking tubes B”, however, the vapors, so generated, are homogeneously dis- tributed:in the non-volatilized oil with the latter in a con- tinuous external phase, the two forming a foamy mass prior to the discharge of the stream into the “vaporizing tubes C”. In other words, there is no -separation, segre- gation of liberation.of the vapor from the liquid while in the “cracking tubes B” (v.-I], p. 655-6). A velocity through the “cracking tubes B” sufficient for effecting efficient heat — _ transfer to the oil is adequate for obtaining the turbulence — aforesaid. Conversely, as the result of the larger'cross- . ee Se ee ee * 4A! italics are supplied unless otherwise noted: j nen” Ft B= 509, v. IV." p. 1707; esi. emai: p @ 8 travelling through them relatively slowly and tranquilly,. presents a large vapor..liberating surface with an unob- structed ‘super-acjacent vapor separating space,. thereby permitting the generated vapors continuously to separate or liberate themseives fromthe non-volatilized oil. In other words, the .“‘vaporizing tubes C”’,: which. have a much - greater diameter than the ‘cracking tube§ B”, are only par- tially filled- with liquid. and, since the mixed oil and vapor "pass. through them relatively slowly, the. liberation of. the vapor takes place therein (v. II, p. 655). The residue from this vapor liberating step is con- . stantly withdrawn from:the “vaporizing tubes C” and sent to storage in the particular apparatus shown (v. II, p. 654). 'The. separated or liberated vapors pass from the “vaporizing tubes C” to an initial condenser G’, in which: part of the vapors is condensed ; from this initial condenser _G' the uncondensed vapors pass by a vapor line G* to a final . condenser G* which, in turn, discharges into a receiver liav- ing valve-controlled incondensible gas and liquid. draw-off lines (v. II, p. 653-4). Pe nes The condensate ‘fram the initial toitiintian. called ‘ flux condensate”, is cycled through the “cracking tubes: kes uncontaminated. by the residue left behind in the “vaporiz- ing tubes C”. This residue is not cy¢led. At the entrance’ to the “cracking tubes B”, the reflux condensate meets and | is mixed with the fresh charge and. the mixture travels . through these tubes (v. IT, p. 654). The resulting cracking of the reflux adds greatly to the gasoline yield; the reflux _in the fresh feed is of material importance ‘in retarding the formation of carbon in the une tubes (vy. TI, p. Phe: crux of the ‘Dubbs invention lies in the eyeing of the uncontaminated ‘reftux condensate through the “‘crack- 9 ing tubes B”, mixed with the fresh feed, and the non-cy- cling of the apne This is called’ ‘clean circulation” (v. Ii, p. 663). - , Were the residue, or any substantial part crest. cycled during an Operation, the unit would have to be closed down much sooner due to the formation and accumulation of car- bonaceous material in the “cracking tubes B”. 3 | * What we have called the crux of the Dubbs process -is recited in ‘claim 7 of the ‘Dubbs patent as follows ¢v. VII, _p. 3091): (eK ok “returning. the condensaté a id initial - condensation to the inlet side of the: a tubes — . and continuously drawing off the residue from the: eee _ vapor chamber and preventing it from returning to . - the cracking zone * * *.” ee eee 7 In addition to the: Folk recital of the -vitalizing ' feature af the Dubbs invention, that claim-recites that the ‘oil in passing through a series of tubes (‘cracking tubes -B”) seated in‘a:cracking cone, “is heated to the cracking © _temperature but substantial vaporization prevented.” The conflict. between the Root case. and the case at bar - revolves around the meaning given to the word “vapor- ization”’.in the patent claims. .The District Court. in the | instant case succinctly framed the contentions of the re- spective parties as follows (40°F. Supp. 561): “Defendant says that the word vaporization means generation of vapors .and that plaintiff's patent limits his process to one in which no vapor is gen- . _ erated in the initial tube or chamber where the heat *No court has ‘asserted that what we have defined as the - crux of the Dubbs invention 1s’ ‘not exhibited iri (a) the practice of respondent’s process, (b) the process disclosed in the Dubbs patent, (c) the demonstration runs, and (d) the process prac- ticed by eo s licensees. / 2 } j / 10 . is applied. Plaintiff says vaporization means libera- . tion of vapors and that his paterit provides for gen- eration of vapor in the heating chamber, and libera-_ . tion in the second chamber. If plaintiff’s ‘inter- pretatien is correct, defendant infringes.” Respondent coriceded that in the operation of the ac- , ‘ cused process there is substantial generation of vapor in _ the cracking coil and that there is no liberation of vapor until the oil has passed into,the large unheated “separator” — (v. IV, p. 1863), corresponding to the * ‘rene tubes” in the Dubbs patent. ‘In the petitioner’s process a similar phenomenon pre- -vails. This was shown, for oe in \ He ¢ demonstration runs of the Dubtis process. These runs were made by petitioner and Dubbs in 1919 - ‘in a unit. closely resemblirig the apparatus of the Dubbs’ patent (Pl Ex. 519, v. IV, p. 1727). The first was made, prior to the filing of the application for the Dubbs patent’ (v.. I, p. 522), for Daniel Pyzel, a petroleum technologist, in charge of .the technical development and - ‘supervision of refining for Royal Dutch Shell (v. L, p. 505), which subsequently made installations of the process under licenses from petitioner (v..I, p. 514). The other demonstration, contemporaneous with the filing of the. application for the Dubbs patent, was made for a group of © oil technologists and refiners, and. chas been previously re- ferred to herein (footnote p. 2, supra). During these runs substantial vapor generation occurred in the stream of oil passing through’ the “cracking tubes B,” but the vapors were nat separated from the liquid therein. This separa- aan or liberation of the vapors occurred only in the “vaporizing tubes C’” (v. II, p. 687-8). - a -'The same phenomenon was exhibited in the practice of the @ Dubbs process by: petitioner's licensees prior to respondent’s ad-- - vent (v. I, p. 514-5; v. II, p. 551-2, 688-94). Respondent has never denied this. 11 The decisive issyie 1y both the Root case and the instant case was whether the fimitation in the claims of the Dubbs pateyt, that the process.was one in which “substantial vaporization [is] prevented” in the “cracking tubes B,” when properly construed,.excluded. from the patent Dubbs’ “rev olutionary” process, and, by the same token, respond- ent’s process. ‘In construing: the word, “vaporization”, the District - . Court in the instant’case accepted respondent’s contention _and rejected that of the petitioner, saying (40 F. Supp. ' 575, 581, 584): ? , “The generally accepted meaning of the word | vaporization] among scientists and the laity as well seems to be generation of vapor.” 2 ; * -_ #«* , a .* * 7 “IT am forced to the conclusion that the patent ‘does not show that Dubbs used the term vaporiza- tion in any other than the commonly accepted mean- ing of generation of vapor:” The court made no attempt to reconcile this conclusion ' with the “illustrative run” of the: patent specification. The -majority opinion of the Court of Appeals in the ‘instant case states that “we are satisfied to adopt. that part of Judge Holly’s opinion (40 F. Supp. 581)- which deals with infringement of the Dubbs patent.””. ' Antithetically, the opinion also says (v. VIT, p. 3583) : “In defendant’s apparatus the oil: is cracked and vapor- _ ized in what might be-called its B tubes and this is so ‘s whether we ta painif s or defendant’s definition of ‘vaporization.’ This can only mean that in the court’s view. the generated vapors are liberatéd.in the respcndent’s B tubes from the nori- volatilized oil. / Tit < sia. / f ee In the Root case, the Circuit ‘Court of Appeals for the , Third Circuit, after analyzing the same patent, rejected : _ «lt is manifest, in spite of the foregoing, that in the practice. of respondent's process, vapor generation occurs in the cracking tubes, but vapor liberation does not there occur. . : _ Respondent’ 8 expert Smith said (v. III, p..1125): “As yaporization {the terfir religiously. used by this expert as the symbol for vapor generation | proceeds in- defendant's coil the vapors thus formed. remain mixed up with the stream of oil due to the agitation which is im- parted ‘by the velocity of the flow in there so that the vapors and liquid move along: together * * *. The vapors have to travel along the entire length of the coil, Fs = It is a mixed phase cracking operation.” This is precisely what occurs in the Dubbs process. As re- - spondent’s counsel, when acting for the - defendant and the. Winkler-Koch confederacy in the Koo case, said of the opera. tion of the Dubbs. process (78 F.. [2d] 991; 998) : " “The physical condition of the on-rushing stream of oil in these tubes {cracking tubes B] would be such as to pre- ' clude the possibility of a condition where a tranquil liquid level could exist from which vapors might be separated and liberated from the liquid. * * * On the other hand, in . the tea-inch C tubes of the patent,:the velocity of the stream. is greatly décreased. These C tubes are dnly par- . tially filled thereby providing a liquid level from: ‘which ¢ vapors generated in the cracking operation are released and escape through. the vapor lines\D of the patent * * *"” In the Root case it was held that the expression “cracking - tubes .B” in the Dubbs Process was not a misnomer, ihat cracking did occut in these tubes, and therefore that. vapor generation | occurred therein, but. that “vaporization,”.i.¢:, separation of the generated vapors from the non-volatilized oil, did not occur there. In accord with this interpretation, see observations of District . Judge in the instant case (footnote p. 33, infra). — ; The Court of. Appeals. in the instant case is the first even to infer that * ‘yaporization” ( giving the word petitioner's definition) oecurs In respondent’ s cracking coil, saab to petitioner’ s “cracking tubes RB”. *The District Court in the Root case said (6 F. a at 763." 767-70): “3 Wy ccecaatha in .the phrase ‘without substantial vaporization’ in claim 1 of the Dubbs patent and in the ’ 13 ’ the contention that, as “used in i claims of: the’ Dubbs patent; ‘ ‘vaporization” is the symbol for vapor generation, ° ~ and concluded (78 F. [2d] 991, 998) : “He [Dubbs] thus defines ‘vaporization’ by. the - words, ‘liberation of vapors’: It is in this_sense ——— that _vaporization’ is used in ‘these claims.” > ae Thus it appears that the two Circuit Courts of Appeal in construing the same patent have reached ‘diametrically opposed results on the meaning of the claim.: equivalent. phrases of the other claimis, does not mean. cracking” ( id., 767). * * * ee. . * .* me ‘6 ; a a4 P ; ° ° os “The phrase ‘without substantial vaporization’ was manifestly intended to exclude the familiar vapor phase cracking (1d.; 768) * ¥ . eae 2 _“Vaporization can ‘cornote: the ‘mere generation of vapors in a body of liquid. The adoption of this construe- tien would result in o fidtding that the claims in suit are. invalid because they involve a departure from the spect- _ . fication of the patent. On the other hand, vaporization may connote the generation of vapprs in a body of liquid accompanie! by the liberation/or separation. of the vapors . from the liquid or may connote the mere liberation or separation of the vapors from the body of the liquid, The adoption of either of the latter constructions will not result in destruction of the claims’ (1d., 770). - Describing the operation gf the Root process the court said (id. feaps . “In the travelling of the oil through the ishing secyfon considerable generation of vapor occurs but there js no _ liberation of the vapor from the oil antil tt reaches the vaport. ie chamber.” a ae 14 , OF. : To held that the sein of the claim osidbasiaiti vapor- ization prevented”) means that vapor generation is pre- vented in the “cracking tubes B” is to hold that the claimis-~ . at variance with the phenonienom which would inevitably be ~ ~~ exhibited in practicing the Dubbs process according to the operating conditions of the “illustrative run” of the patent _specification (y. II, p. 687). ‘It is submitted that any: petro- leum technologist, including the learned Patent -Office ~ Examiner, would have known that, under said con-": - ditions, the creation or generation of vapors would neces-. sarily occur in the “cracking ‘tubes B”. Hence, it -is — unreasonable to. assume that Dubbs, éducated as a ‘chem- ist and an experienced petroleum technologist (to whom the boiling points of the various fractions of petroleum must . have been as familiar as the boiling point of water), would have deliberately introduced’ into his: application a phfase | (“substantial vaporization prevented’’). which would have been a misdescription of the phenomenon which inev: -ably occurred in the practice of his process. Faire and fortune awaited the issuance to him of a patent adequately cover- ‘ing his process,. Can it be assumed, therefore, that Dubbs would ,have. intended a meaning to be given to ‘the word “vaporization”, as used .in -his patent claims, which would defeat his purpose? | Nevertheléss, the majority of the court below; disre- garding the definition of the word ‘ ‘vaporization” mani- festly intended: by Dubbs, concluded on the basis of their own knowledge, and with the aid of some dictionaries,’ that In any eveat-cthet dictioriaries and textbooks support the meaning advanced by’ petitioner. For example, ‘Elements of Physics,” by Prof.-Hoadley of Swarthmore College, under “Va- - porization” gives its mechanics as follows: “As the molecules of water in their vibration strike against the surface many of them .- the’ meaning’ to es given to “vaporization” in the patent was generation of vapor, a conclusion which, as this Court _-. will observe, is wholly at variance with the inevitable ‘phe- nomenon occurring when oil is subjected. to the conditions prescribed i in-the patent ‘specification. In adoptirig this con- struction, the court below w holly disregarded the context and determined the: question in vacuo. | 1 | Judge Lindley disagreed with the reasoning of the majority. because he believed the patent was invalid but absertved that, if valid; it was infrin ged. Since there is no dispute as to the facts, it would appear that he necessarily. .- adopted petitioner’ s contention as to the meaning | of the. word ‘ ‘vaporization” as used in - claims of the _ Se (b) jaan The Court of Appeals in the instant case also held that an applicant, who uses words of common meaning in . his patent claim and finds that the; do not cover a nh quently created structure, will not be permitted to gi new or different meaning thereto to make it cover such - structure. The court: must have believed that such a doc- trine was applicable to the facts in the present case sink VIT,. ‘ p. 3580). Such doctrine has no application. ’ To the contrary, the © “claim, as construed by petitioner, periectly fits the process as practiced in. the 1919 demonstration runs (p. 10, . Supra). - The proofs indubitably show that the process had been publicly ‘practiced prior to and was being practiced substantially contemporaneously with the. presentation of - force their way through it and pass into the air where they exist as molecules of water vapor. When heat is applied, the tempera- ture i$ raised, which means that the velscity of the molecules is’ - increased ; and the number of molecules that pass into the air increases with their’ velocity” (v. II, p.- 780). we SN 6 rene eit tes ee ee ad hawt L . the claims as ultimately granted (v. Ul, p. 6878). Thus, instead of placing a new or different meaning, on the claim in order to make r cover after-appearing processes, peti- tioner has always Ansisted upon a meaning for the claim — which corresponds to the very process thus publicly demon- » - Stated and upén which Dubbs’ application w was based. . (cs), The Court of Appeals, observing that the claim as orig- inally presented was rejected and was re-submitted after © the: addition thereto of the phrase, “where the oil is heated “to the cracking: tempefature but substantial vaporization -prevented,” said that without this addition “the’ rejection would have stood.” ‘Such assumption is unjustified. The quoted cinins was not relied upon at all for distinguishing the claim from the Patent Office citations (v. IV, p. 1509-48). The step _ Stated in the quoted jPhrase was not novel with Dubbs; it is not asserted to be novel in the patent or in any _—- ment filed irf the proceedings leading to the ‘patent grant. The phrase was pfobably inserted, as stated by Judge Nields (6 F.-Supp. 763, 768), out of an abundance of caution to _ exclude the old, unsuccessful, vapor-phase prdvesses.’ In any event, since the claim, as granted, accur&ely de- "fines respondent's process, the fact that the criticized words - were added by amendment, while ‘possibly relevant to the question of the validity of the patent, has no relevancy to ‘the question of its infringement,” 1The Texas Company found that gasoline produced by the Hall vapor-phase. process cost about 68 cents per gallon (v. II, P 976). . *The Court of Appeals, however, decided the case on the issue of‘ infringement ; it assumed validity. @ 82 ee | : The Eglof Patent. ‘When Egloff eritered the field, the Dubbs process was in extensive use, but Egloff realized that’ some oils were particularly rich in potential carbon forming -— materials and were, therefore, not as favorable for treat- ment by the Dubbs process as other oils. Egioff ’s irfVention ~ is_a process which involves combining with the Dubbs process a preliminary step constituting what might be called a “once through” rocedure, whereby, at a minimum instal- lation and operating cost, these less desirable oils are ‘treated for wtransforming them in considerable part into - crackin stock or “fresh feed”, much more suitable for treatment by the Dubbs process. To this end Egloff pro- . _ vided a low temperature coil (7);,' through which this.less _ desirable oil is passed, for effecting a mild cracking: The ~ oil thus treated then joins the stream from the high tem- perature coil (6) [“cracking tubes B”’ of the Dubbs unit], and the two, intermixed, are discharged into a single vapor-- izing chamber (12). .‘‘vaporizing tubes Cc. The'common_ residue is drawn off and not cycled. The vapors liberated trom the mixed stream in the vaporizing. chamber pass 9ff into an initial condenser (21). The condensate formed in the initial condenser (21) from the vapors emanating from | the oil charged to the low temperature coil (7) constitutes the fresh feed for the coil (6), and the condensate formed geben initial condenser from the vapors of the oil that has f passed through the high temperature coil (6) corresponds * -to the “reflux condensate” of the Dubbs process. The _ Vapors passing from the initial condenser follow the course hereinabove nacre in describing the Dubbs process. *See PI. Ex. 510, v. IV. p. 1709; Egloff patent, v. Val, p. 3095 ; the numbers in the above paragraph eee with those — ‘used in the ee = ce y In, the sestitiee- chee the District Judge found the Egloff patent invalid. The Circuit Court of Appeals, without adopting or disapproving the District Court’s part as ‘to validity and without discussing the claims of the - found it not infringed by the .Winkler-Koch process.’ ea the contrary, the Circuit Court of Appeals for the Thi Circuit, as well as -the ‘District Court, .in the Root case found the Egloff patent valid and infringed by the Winkier- “Koch process (78 F. [2d] 991, 999). : Although the Egloff patent is entitled “process of treat: ing oil” and contains only process claims, the majority opinion of the Court of Appeals in the case at bar re- _ marked that Eglo’ s drawings and specifications “suggest a product patent.” Although fully half the specification is addressed to a description of the apparatus employed, the ‘opinion says that “no apparatus is described”.? The further said that respondent “not only proceeds differently \ by its process but the differences are both additions and - elimination of steps.” The Court did not point out a single + difference, or indicate what additions or eliminations were ’ made by respondent as compared with the process defined _ by the Egloff claims. It inerely observed that the respond- ent’s brief pointed. out the distinction between its process and the “claims of the patent. "Tn fact, that hrief did not point out any claim step allegedly lacking in the accused process. Finally, the opinion: below. stated that “defendant’s ~ structure is ‘far out of the beach of Egloff’s disclosure”’. . ~ ‘Judge Lindley, on the othe) hand, was of-the opinion that the patent is’ invalid, but expressed no opinion on the anagunet question. - *See description of apparatus in Egloff patent (v. VII, p. 3095, lines —t which the. Court\of Appeals evidently over- looked. \s 49 _ This is of no legal significance. The Cizcuit Court of Appeals for the Third Circuit is wholly in conflict on. the controlling question of infringement, for it held. (78 m - [2d] 991, 999) that Root “infringed the Egloff patent whee ais the appellant has or prea. sey QUESTIONS PRESENTED 1. Are the Dubbs and Egloff patents, or diheier of them, infringed by the- Winkler-Koch cracking process, as was held in the Root case, or are they not infringed thereby, as was-held in the case it bar? 2. Is the ride—thet if a wiaim is fairly wisicegtibte’e of two constructions, that construction should be adopted which will secure to the patentee “the fruits of his. inven- “ tion”,-rather than a\construction fatal to the grant—to be applied only. to piorteer patents, or is it to.be applied as well to preven patents for meritorious inventions? 3." ‘lf the Dubbs Gaims in suit are. susceptible of ‘two . ‘interpretations, one of which sustains and vitalizes the ~ patent and the other of which emasculates it, then, since the invention was “revolutionary” and a material aid in the | conservation of one of the nation’s most valued resources, “her courts: in the instant case err in adopting the latter - rather than the former interpretation?. 4. In determining the meaning of a word as used in a . Claim of a process patent, may-a court adopt its own idea general and usual meaning of the word, or the defini- tion found in some dictionaries and textbooks, and disre- _ gard the patent specification, and particularly a typical op- — eration given therein for illustrating the process intended | to be patented! 3 -5. In determining the meaning of a word as used in the ~ claim of a process patent, and the consequent scope of the _claim, may a court adopt as correct its own idea.of such meaning, or the definition found in some dictionaries and textbooks, and by reason thereof place a construction on the claim at variance with (a)-the disclosure in, the patent taken as a whole, ( ‘b.), actual public operations by the pat- . entee for demonstrating his process, made immediately pre- ceding and contemporaneously with the Ail; ing of the patent ' application, and: (c) the’ process as practiced by leading : : refiners under sed licénses ? 6. Does the ‘tule,. that the language in a patent claim will not be given-a new or different meaning from that in- tended when first used in order to bring a stibsequently cre- - ated structure within the purview of the claim, have any application where; as in the instant case, the claim reads on the accused process in the same way that it reads upon the process which the°patentee had publicly demonstrated im- - mediately prior to the filing of his patent application and _ contemporaneously ‘with the - insertion . of said claim lan- — ey guage in. his claim? ‘Ee: Does the re: submissiofi of-a rejected claim, pursuant to RS. 4903, U. S. C. Title 35, Sec. 51, with a non-novel - step added and accompanied by an argument making man- ifest that features appearing both in the original and re-, _ submitted claim were those (a) relied upon for distinguish- ' ing the claim from the Patent Office citations, and (b) which in fact gave the claimed invention, its magic, war- rant the assumption that, without the addition, the Patent Office rejection, wculd have stood and that therefore the claini as granted excludes an accused process which ex- hibits both the novel features and the added features? 2 vom 4k ae 8. Are the Dubbs patent and the Egloff patent, or either of them, valid and infringed b the practice of a process ? o- REASONS RELIED ON FOR THE ALLOWANCE OF THE WRIT Exercise of the discretionary- power of this ‘Court ‘to grant the writ of certiorari herein prayed is asked —_— the following grounds:, (1) The Court of Appeals-in the instant case on the same matter rendered a decision in conflict with that of the - Court of Appéals for the Third Circuit as to both the Dubbs = and the Egil. patent. : ; 7 (2) ie eisai ten: tus ithe - guile: teienest ond corel tn the conservation of the time and labor of the courts in the _. Third and Tenth Circuits, where suits against other parties wh the same ‘patents are now pending. untried, for this ‘Court to resolve the conflict. (3) The Court of Appeals, in determining the meaning, as used-in thé claims of the Dubbs patent, of the word “vaporization”, which meaning is controlling upon the construction of said claims and the infringément question, _ used a method, which is untenable, is in conflict with the decisions of other Circuit Gourts of Appeal, and is yrub- ably in conflict with the applicable decisions “ this Court. (4) The Court of Appeals misapplied to this case the * rule, that the language of a patent claim cannot be given a meaning new or different from that intended when the’ ‘tion, and thereby decidéd an important question of patent 22 claim was allowed i in order to cover a ‘subsequently appear- ing structure, resulting in a d&ision on ‘the: infringement question probably in* conflict with the applicable decisions of this Court. : (5) the Court of Appeals, in finding non-infringement _of the Dubbs patent, which indubitably is for a valuable invention, disregarded the rule, laid down by applicable decisions of this Court, that in such case if the patent claim is susceptible of twa interpretations, one of which will sustain and vitalize the patent and the other. emascu- — late it, the. former will be adopted. : (6) The Court of Appeals, in basing its finding of non- infringement of the Dubbs patent iri whole or in part upon its determination that, following a Patent Office rejection, the claim was granted after it had been re- -submitted with ’ a feature added, in the absence of w hich-the rejection would | have stood, and that such factors are relevant on the in- tringement issue, notwithstanding the fact that the putative infringing process exhibits the whole of the re-submitted claim, has decided an important question of patent law in a way probably in conflict with the applicable decisions of | this Court. : : : . / __- (7) In determining the meaning ofthe claim-word, “vaporization”, the Court of Appeals’ erroneously condi- tioned the meaning of the said claim-word by the asserted circumstance that the patent is for an improvement inven- law ina way probably i in conflict with the —* deci- sior.s of this Court. : 5 | | (8) The holding of non-infringement of the Egloff process patent by:the Court of Appeals, being based in part at least on its finding that respondent’s structure is far out of reach of Eglot’ s disclosure and in part on the finding | that respondent’s process had added and eliminated steps as compared with that of the patent, is probably in conflict — with the applicable decisions of this Court. W HEREFORE, your petitioner respectfully prays that a writ of certiorari be issued out of and under the seal of this Court directed to the Circuit Court of Appeals for the: Seventh Circuit, commanding that court to certify and to send to this Court for its. review and determination,- on a. day certain, to be named therein, a full and complete — transcript of the record and all proceedings in the case nunibered and entitled in its Docket No. 7912, Universal Oil Products Company, Plaintiff-Appellant v. Globe Oil. & Refining Company, Defendant-Appellee, and that said judg- . + ment of the Circuit Court for the Seventh Circuit may be ‘reversed by this Court and that your petitioner ‘may have such other and further relief in the premises as to/this. Court may seem just ; and your petitioner wil’. ver pray. _ Universar O1v Propucts Company, Petitioner. 6 . oe By ALEXANDER F. REICHMANN, WitiraM F. Hatt, ‘Cuartes M. Tuomas, _ Rarpn S. Harris, Wa ter J. BLENKO, - * Attorneys for Petitioner. 2 e* | 25 5 ia — | IN THE ay | Supreme Court of the United States Ocroser TERM. 1943 a No. UNIVERSAL Ort Propucts CoMPAny, a corporation, J Petitioner, Vv. aa Giore Or, & ReFininc Company, a corporation, i i ; Respondent. AFFIDAVIT OF HIRAM J. HALLE SUBMITTED IN SUPPORT: OF A PETITION FOR WRIT OF CER- = TIORARI TO THE UNITED STATES CIRCUIT 4 COURT OF APPEALS FOR THE SEVENTH CIRCUIT - STATE OF New York | f e Ss.° COUNTY OF -WESTCHESTER . Hiram J. Hate, being duly sworn; deposes and says: That-he is a citizen of the United Sfates and a resident of the State of New York and is the President of the peti- - tloner: | 7 .., That he knows that there are now ‘pending, untried, in the United States District Courts within the Third Judicial . Circuit the following cases,. all of which are: based ; . 26 .. upon the Dubbs patent No. 1,392,629, granted October 4, 1921, and one of which is also based — the Egloff patent No: 1,573,593, granted May 12, 1925: Universal Oil Products Company vs. Dictane Oil Refin- ing Company (both patents ) ; | Universal Oil Products sae vs. Crew pee Company (Dubbs patent); and — ' Universal. Oil Products Company ys. Empire Oil and Refining Company ( Dubbs patent). * That he knows that dete are now pending, untried, il}: United States District Courts within the Tenth . Judicial Circuit the following infringement suits based upon one - or both.of the same patents: | . Universal Oil Products Company vs. -Anderson- Pritch- ard Oil Company (both patents ) ; Universal Oil Products: Company vs. Eldorado Refin- ing Company (beth patents) ; Universal Oil Products Company vs. Globe Oil and Re- . fining Company (both patents) , Universal Oi! Products Company vs. Rock Island Re- . _ fining Company (both patents) ; and | ‘Daiveraal Oil Products Company vs. Omar Refining company (Dubbs patent). Hiram J. Hate Sworn to before me this. 25th day of September, 1943. — Leo Morcan HEAty Notary Public, Westchester County Certificate filed in N. Y. Co. No. 850 | Commission expires March 30th, 1944 27 IN THE Dusives Court nf the United States ~ Ocroser Term 1943 ee UNIVERSAL O1L Propucts Company, a corporation, — Petitioner, > 2 ‘Grose Or & ReFintnc Company, a corporation, Sea eee Respondent. ‘ Peat’ <~ BRIEF IN SUPPORT OF PETITION FOR "*_ WRIT OF CERTIORARI - OPINIONS OF THE COURTS BELOW _ ' The opinion of ‘the Circuit Court of Appeals in the’ in- — stant case is reported at 137 F. (2d) 3 (v.. VU, p. 3575): The opinion of the District Court is fini at 40 F. Supp. 375 (v. VI, p. 3035). + Third Circuit in'the Root case is.reported at 78 F. (2d) ‘ 991. The opinion of the- District, Court i in ihe moet case is © sath at 6} F. - Supp. 763. The opinion of the Circuit Const of. hainenle for the : 28 JURISDICTION a The tabs supporting the jurisdiction of this Court are set forth in the petition. oa Cases- believed to sustain the jurisdiction are as fol- _ lows :. | } Layne & Co.% v. ‘Western W ell.W orks, 261 U. . | 387, 392;° | Magnum Ca, v. Coty, 262 U. 3 ‘159, 163; or Sanitary Refrig’r- Co. ,v. Winters, 280 VU, 5. Smith v. Snow, 294.U. S. 1. STATEMENT OF ‘THE CASE : _ The facts are sufficiently set forth in the petition. SPECIFICATION OF ERRORS | ay) is granted, petitioner will ‘urge that the Court © ppeals in the instant case erred in the following i respects :. (1) ‘In not holding that the-Dubbs and Egloft patents are valid and infringed by the practice of respondent’s prc ess as charged i in the. bill. (2) In finding non- “infringement of the Dubbs patent . and the Egloff patent by respondent’ s process. (3) In giving an incorrect meaning to the word, “vaporization” as used in x Dubbs silt resulting in | b 29 an-erroneous construction of its claims and a finding of non-infringement rather. than a finding of infringement. — (4) In finding that the words “substantial vaporization _ prevented” state an action which ‘ ‘points to the heart of-a vital step in the Dubbs proéess,” and ignoring the features _ (a) which vitalize the process as actually pract iced immedi- ately prior’ to, contemporaneously with, and subsequent to. ‘the filing of the patent application, (b) which are neces-- sarily exhibited in ‘the. practice of the process under the operating conditions of the “illustrative run” of the patent ‘ specification, and (c) which were stressed in the prosecu- * tion of: the application; these features being the cycling of the «uncontaminated. reflux-condensate through tthe crack- / ing tubes admixed with the frésh feed, and the‘non-cycling ~ of the residue. © Fit ( 5) In: not findirig’ that. the sa of ieivstiiieae “vaporization” in the “cracking tubes B” was never stated hy Dubbs to be novel, or stressed i in the prosecution of ‘his application. (6) In finding that Dubbs pre e the shies: de- ‘fined by the phrase “but substantial. vaporization pre- vented” by-the use’of different size tubes and the application — of heat and its withdrawal when the cracking point was reached. | ae (7) In ‘finding that in respondent's apparatus the oil” is ‘ ‘vaporized” int what are described as_ the “cracking tubes /B" , even though petitioner’ s ns is given to the: word vaiporization.” (8) In finding that respondent did 10t celal an ap- | paratus for preventing substantial “vaporization”, even ‘if petitioner’s meaning of ‘ ‘vaporization” is accepted. - | 30 (9) In -finding that, no matter what meaning is given the word “vaporization”, there was no prevention but an - encouragement of that phenomenon in the practice of re- spondent’s process. . (10) In’ finding that the oil cannot be heated to the “cracking point without ~ waporizetion” , according to peti- _ tioner’s meaning of “vaporization.” (11) In arriving at the meaning of the word “vapor- ization” as used in the patent claim without, reference to - (a) the whole patent, and particularly the “illustrative run” . of the patent specification; (b) the phenomenon exhibited Dubbs process as publicly demonstrated by petitioner and the patentee immediately prior to and contemporane- ously with the filing of patent application, and prior to and contemporaneously With the first use of the questioned _word in the patent im; and (c) the phenomenon ex- — "hibited in the process as. practiced by many refiners under _ royalty'licenses from petitioner prior to respondent’s advent. ~*~ * (12) In narrowly construing the claims of the Dubbs patent ‘on the asserted circumstance that, at best, the inven- tion: was in the nature of.an improvement and the language ° of the claims should be construed accordingly. (13) In.nat applying the rule that, if the matter were doubtful, the character of the Dubbs patent and its com- ° mercial and practical | success are such as to entitle the in- _,. ventor to broad —_ and to a liberal construction of those which he has (pe ae . i: y (14) In not giving the claim of the Dubbs patent. a con- struction commensurate with the demonstrated worth of 31 the patentee’s invention but rather a ‘construction which emasculates the patent. (15) In finding applicable to the facts of the instant | case the rule that the meaning which the inventor gives to - his .words cannot be made to depend upon subsequent events, and that he will not be permitted to place, on his claim language a, new, or different, meaning from that in- - tended when the claim was allowed, in order to cover a subsequently created structure. (16) In finding that petitioner tried to give a new mean — ing to the word “vaporization”, in order “to cover respond- ent’s structure.” ; (17) In finding that the phrase, “but substantial vapor ization prevented”, which was added to the claims before their re-submission to the Patent Office after their rejec- tion, (a) was “all important”, (b) if absent would have ~- caused the rejection to starid, and (c)-. requires, such a re- ion being placed on the claims as to exclude from their . purview fenpenstent $ process. ? (18) In finding that no dobeniteis is described in he Egloff patent. ~ -emmmerenerarenerererecerare - (19) In basing thie finding a non-infringement of the. Egloff patent in whole-or in part on the ground that “‘de- . fendant’s structure is far out of the reach of Egloff’s dis- \ closure,” and on the ground that respondent’s process, by ' both the addition and the elimination of -_ differs from A Te > i °- - ‘ . “pe ‘“ — @ | ‘ \ ARGUMENT | POINT 1 , _ g@THERE IS A CONFLICT BETWEEN DIFFERENT CIRCUITS ON THE SAME MATTER. “As the petition shows, there i is a direct conflict between the judgment of the Cigcuit Court of Appeals in the instant case and the poattrsdtity Y the Circuit Court of Appeals for . the Third Circuit, on the issues of the interpretation of the claims of the Dubbs and’ Egloff patents, arid the in- fringement of these claims by identical processes. — It is fespectfully. submitted that the conflict aforesaid should be resolved by this Court for the reason given by this Court in its opinions in the cases cited’ (p. 28, supra), and because of the present — of oth¢r suits A Pp. 4, 25-6, supra). POINT Rae THE. louie OF THE ‘COURT OF APPEALS HEREIN IS IN CONFLICT WITH THE DECISONS OF THIS COURT —_ OTHER CIRCUIT COURTS" OF AP- reas. | In Smith v. Snow, 294 U: S. 1, 7, this Court-said : “The question presented here ts what scope may rightly be- given to Claim 1 of the patent; whether . the petitioner has drafted it, in such form as to _ Secure the fruits of his invention.” That is the precise question regarding ty pical claith 7 of ©. the Dubbs patent in the instant case. . a2 a 33 ‘ ent turned on the meaning ascribed by the’ court to the concluded (a) that the word is used synonymously . Vapor generation, (b). that vapor generation a iittedly _ process,-and (c) that in consequence the latter was non- infringing, since claim 7 recites that “vaporization” is pre- vented.' The Court of Appeals said it was “satisfied to - adopt” the District Court’s opinion on the infringement issue. / k ‘In reaching its conclusion the Court of Appeals ig- nored the following : (1) The whole patent, and particularly the sisiieus conditions of the illustrative run of the patent specification, ‘in the practice: of the process. read or interpreted ih the light of. its specifications. Hogg v. Emerson, 11 ‘How. $87; Carnegie Steel Co. v: C ambria Iron Co.; 185.U. $. 403\Smith v. Snow, 294 U. S. 1. It ‘also proceeded’ contrary to the rationale of the deci- sions of the Court of Appeals for the Third Circuit in the Root case (see p. 3, supra), and of the Circuit Court of Appeals for the First Circuit ‘in Doble Engineering Co. v. Leeds & Northrup Co., 1 Cir., *~ F. (2d) 78,84. — 1On the other hand the Distfict Judge | Id that if petitioner’ s « by this Court cdi of a patent are ak.ays to be _ the claim is a: symbol for the phenomenon of which liberation or . Separation of the generated vapors from the non —— oil is a sine qua non), respondent infringed. ? : ° \ In the District Court the disposition of the Dubbs pat- occurs in the cracking tubes in the practice of caiasiaae s. _ In so doing, the court below violated. the rule laid down | interpretation were correct (te., that “vape —, as used in word “vaporization” as used in typical claim 7: That . : h which would inev itably be exhibited, following.the operating # In the latter case the court said that, in ascertaining thé meaning of a patent claim, “the whole instrument is to be — interpreted with reference to the circumstanges surround. ing its inception:’ and the endeavor should be made to ascer- _ tain, “first what a patentee intended to claim as his inven- “tion or discovery and second upon what invention or. dis- ! covery the patent office intended to grant a temporary monopoly.” The Circuit Court of Appeals for the Eighth Circuit - made a like statement in National Hollow B: B. Co. v. Interchangeable B. B. Co., 106 Fed. 693, cited by this Court in Smith v. Snow, supra. In that case, the Court of © * Appeals said the terms of the instrument should be read in the light of the facts and circumstances which surrounded ‘the parties—inventor and Patent, Office Examiner—when. ‘the instrument was. drawn. (2) The operations practiced by petitioner and Dubbs. immediately prior to and contemporaneously with the filing of the Dubbs application, and contemporanéously with the introduction of the disputed phrase in the patent claim. _*. These demonstrations were for acquainting the refining industry with the characteristics of the Dubbs process and _ its accomplishments (see p. 10, supra). . For ascertain- ' _. ing the invention which Dubbs intended to claim and the . scope of his patent claim, the Court of Appeals should have " given consideration to these demonstrations. Tilghman v. Proctor, 102 U. S. 707. | _— ‘Analogous to these demonstrations were the practices under the Dubbs patent by leading refiners over a period of years. prior to the advent of the accused process. The evidence conclusively shows that in such practices there was exhibited the invention covered by the claims thos ¢ ? LQ. *\ | 35 of the Dubbs patent giving the word “vaporization” occur- ring therein. the meaning ascribed to it by petitioner. It is unthinkable that leading refiners would have paid the- royalties they did pay if, as the Court of Appeals found, in effect, their operations were clearly not within the pur- view of the pdtent. Furthermore, a description of the phenomena, exhibited in the practice of the Dubbs process, was given by present counsel for respondent on behalf of the Winkler-Koch con- federacy (including this respondent) in the Root case as hereinbefore set forth (footnote p. 12, supra); and the testimony of respondent’s expert Smith in the instant case as set forth in the petition is to like effect (footnote p. 12, supra). ei 2 . Re (b) . As we have seen, the opinion and judgment of the Cir- cuit Court of Appeals for the Third Circuit sustained and vitalized the patent; the opinion and judgment of the Gir- cuit Court of Appeals for, the Seventh Circuit in effect destroyed it. These opinions are in direct conflict on the meaning of the critical word “vaporization”. We have shown, ‘and ‘respectfully submit, that the word, as used in the Dubbs patent, is not properly susceptible of the mean- ing given to.it by the Court of Appeals. in the, instant case. Even if it might be said that the word, 2: used in the patent, is susceptible of two interpretations because per se it is differently used, then we respectfully submit, that, since the invention’was one of great value, the word should in the Dubbs patent be given that meaning which is calcu- lated to secure to the patentee “the fruits of his. invention”, rather than # meaning which in effect destroys the patent. Smith v. Snow, 294 U.-S. 1, 7, 14 and cases there cited. “ (c) The Coprt of Appeals in the instant case’stated that “at best the invention was in the nature-of an improvement and . the language of the claim should be construed accordingly.” The construction of the claim i in this.case turning upon the meaning, of the word ‘ ‘vaporization” as used in the’ patent, it is submitted that whether the invention was a pioneer or . an improvemeat has-no relevancy. The rule, ut res magis valeat guam pereat, is applicable whether the patent be for - a new art-or for a meriterious improvement. Smith v. Snow, 294 a. I, 14; Eibel Co. v. ‘Paper. Co., 261 U. > 45, 63. : 7° (d) In finding non-infringement of the Egloft patent, ‘ihe Court of Appeals said that the record shows that “defend- . ant’s strueture is far out of the reach of Egloft’s disclos- ure,” and that its process differs both in additions and elim-" } inations ‘of steps of its process. .It is believed oe t apparatus, respondent’s is as accurate a replica of th@appa- & ratus of the Egloff patent as is ever found where a defend- ant. knowingly appropriates ‘the valuable invention . of“ patent, the claims of which he hopes to evade. ! | However, it has been settled by this Court that differ- ence in apparatus has no bearing upon the question of in- fringement of a process patent. Smith v. Snow, 294 U. S. dT; Cochrane v. Deener, 94 U.S. 780; T ilghman v. Proctor, a 102 U. S. 707. a In Egloff, as in the case last cited; the precise tempera- tures used wefe not of controlling importance. Egloff ac- complished an important result by. incorporating with the Dubbs aha a once- — system for giving the Dubbs . re -— fresh feed a preliminary screening action and thereby pro- ducing a better fresh feed for his cracking tubes with but a slight additional expense in installation and opératior: — Manifestly additions to the. Egloff process would not ex- _ culpate ‘respondent. from infringement, nor would the’. | elithination of a step, unless it was one which. is included in the claim; and not even then, if some equivalent for it was : used. On these poms the Court of oo, is silent. POINT 3 THE ‘PATENT OFFICE PROSECUTION OF THE APPLICATION FOR THE DUBBS PATENT IS IRRELE- VANT TO THE INFRINGEMENT ISSUE. The Court of Appeals, noting that claim 7 of the patent was ailowed after there had been added the phrase reading, “where the oil is heated to the cracking temperature but _substantial vaporization prevented,” said that without this addition the prior rejection of, the claims would have stood, — and held, inferentially at least; that the addition excluded responderit’s process from its purview." That the phrase wa’s added by amendment: does not aid respondent, since its process employs the feature, as Judge -- @ Holly in effect found, which is described by the word “vaporization”, in the sense ascribed to it by petitioner. . it must be given that’ meaning if the canons of claim inter-’ . pretation aia by this Court are observed. Smith v. Snow, 294 U. S. 1 and cases there cited. ' The ee “substantial vaporization prevented” was . ~ not.added., to distinguish the Dubbs rejected claim from the ; citations in the Patent Office letter of rejection and the sub- ject matter thereof has nothing to do with the crux of the Dubbs i invention. . : 38 | - - CONCLUSION For the foregoing reasons it is submitted that the peti-. tion should be allowed and the judgment. of the Circuit . Court of Appeals for the Seventh Circuit reviewed: and reversed. . - .Respectfully submitted, ALEXANDER F. REICHMANN, WituiaM F. Har, | CHarLes M. THOMAS, — Rate S. Harris, WALTER J. BLENKO, Attorneys for Petitioner. » _ (68265 --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386404_0029%3A09. Public record. Not legal advice.