Brief for the Petitioner — Universal Oil Products Co. v. Globe Oil & Refining Co

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Supreme Court of the United States: :

_. ‘Octoper Term, 1943

Nes 392

—— —

UNIVERSAL OIL PRODUCTS COMPANY.

ay _ Petitioner,

vs. -

GLOBE OIL & REFINING COMPANY, __

Respondent.

PERT ORSTS TIT ans e tawes ey oe icosminanar cabo

‘ :

Ow Wait or Certiorari To THE Unitep States Circurt

. Court oF APPEALS For THE SEVENTH Circuit

, . BRIEF FOR PETITI

UNIVERSAL OIL PRODUCTS COMPANY.

- : : :

| J

Wo. DwicHt WHITNEY,

Counsel for Petitioner.

3 . Wituiam F. Hatt:

‘CHartes M. THOoMaS,

) Ereperick W. P. LoRENZEN,

eae, Of Counsel.

PAGE.

“T—Orricrau’ REPorTS OF DECISIONS + Severe 1

—Jurtsprction nie hence es aCe eee res SGN aes

TH—Summary ‘STATEMENT OF THE CASE....... eeu: xs

History of the Fn eee a Ome 4

Plaintiff Held Not Guilty of Unclean ik. 4

« Root Case-Held Not Res Adjudicata.....7.. 4

Trial on the voy puts, SO EEO Oe re ae

Do cves, Ceres pete. eee 6

a, EE ay DE rg Baoan 6

Court of Appeals Decision... ............. 7

1V—STaTEMENT oF Facts..:............2:......, a

The Art Involved Prior to Dubbs.:.......... i

. Petroleum Qil, its Distillation and “C racking” = 7

The Problem in the Art Prior to Dubbs..... . . |

The Burton and Burton-Clark Processes . ee

‘The Vapor Phase Processes. .............. 12

The Trumble and Similar Processes. :...... 14

The Carbon Problem... ......-0.2....... 15

Rae Me IID Soc noo dw So ad bv a Shs oa 16

WINNS Oo ps ows weeks 16

Apparatus and Operation . ae fie NOTTS 18

The Vitalizing Feature... .... ieee aes at

The Dubbs Patent’ Serer re ine

History of the Dubbs Application... ... : eae | oe

Demonstrations of Operability of Dubbs In-

NE Series vale pb aeewee red ¥aN% 4 eas & 2 26

Ci Spiiniinses in. the Oil Refining Industry

‘ When Dubbs Made His Invention. ahan’ sas. ae

ee / PAGE

. The —— Coit awed eee se snk ceak ee |

The Royal Dutch-Shell Group...,...... rvs te

The Standard Oil Company of California..... 34

Reception of Dubbs by the Industry - Perey se

. Royal Dutch-Shel! Group..... ee ye

Standard Oil-of California. ......5...... i aa

Royalties Paid by Shelt and eacaaed of Cali--

ena Spare saree rear teary wens a

Independent Refiners”........ eee coed vaas - #7

Cenflicts of Universal with the Standard. Oil

_ Companies of Indiana and New Jersey. . 39

Conflict with The Texas Company....... re

The Winkler-Koch Group (including oe re-

epomdemt Gione) -: «2.62. s nce ienys 40

Application of the Dubbs ae to ihe Accused

SRG octet. Mea ate ee 4)

The Egloff Patent....2:...... rere rae 44

Application of. the Egloff Claims to the Accused .

‘Operation Me PCP Corr eer ee eer rT very rere 48

nny FINDINGS oF Fact, AND CONCLUSIONS

oF LAW OF THE District Court ON THE ISSUE

OF VALIDITY ..... ite Va ere ery <scacds ae

(7) Conclusions of: Law. ek aaen tae be one a

(1) Findings of Fact on Validity of Dubbs. ak ae

(it) Findings of Fact as to Egloff........ ‘<i oe

(tv) Relation of the District Court's “Findings

in Favor of the Validity of ‘Dubbs to the

: Issues Presented on This Appeal as to leva

f+. Infringement of Dubbs ety. Ere eee ee ree 35

| ‘ VI—SPECIFICATION OF ERRors...".... pear heres

VII—Sv MMARY OF ARGUMENT........... ekg Sine!

The Dubbs Patent........... Shaw Riebaee ase

SOO Be FMM wl ieee vee secs resanse. OO

_ ARGUMENT

: Part A: THE Dupes PATENT

‘PAGE

POINT I—The pea SS ee ee ae

fringes the Dubbs Patent. 2... j. 654%, Gee won .+ 67

A. The Patent Document as’ a wholg demonstrates

that the phrase “without substantial vaporiza- .

* tion” means that liberation or separation of

‘vapors from thettiquid oil is precluded, but ‘that

generation: of vapors in the B tubes of the Dubbs

_ process’ is not precluded. ............ 6. vine ae

1. The word “ ‘vaporization’ as used .in the

II.

Dubbs patent cannot mean “generation”... 70

(a) C racking, with vapor generation, sie. 7

| place in “cracking tubes” B...... “=.

(b) ZA part of the vapor is generated in -

Ce crv

“tubes C; the balance in tubes B...... 72°

generated in the B tubes in the opera-

tion of the. illustrative run.-........ 72.

(d) The meaning respondent ascribes to

, the word “vaporization”. violates the |

patent disclosure and the rule govern-

(e) Respondent’ Ss’ contention that ae

- ization’”’ means “vapor generation” is .

rejected by Claims 5 and 6.......... 78

The- word “vaporization” as used in the

Dubbs patent when considered asa whole

‘must mean “liberation”............. ere

‘(a) In the patent “liberation” is used as a

synonym for ° ‘vaporization’ raha ten Pee ate

\. ing claim construction. ...........:. . 76

7 ih

a (2). Commercial Operations Licensed Under the %

iv -

‘ PAGE

(b) Claims 5 and 6 are meaningless unless

_ “vaporization” means, “liberation” ...

* . . permitted in the C tubes; since vapor

/, Seneration occurs in éach, “vaporiza--”

tion” means “vapor liberation”... . . ie

(d) Residue is that which remains after the

vapors have’separated themselves from

the ‘liquid oil..... ei Sais dn east

(e) The expert testimony establishes that .

? “vaporization”. .as used in the patent

connotes ‘ ‘vapor separation” Soescetewe *

The original disclosure reinforces petitioner's

interpretation of the phrase ‘ ‘without substantial

vaporization” eee rrr Pere er eee Te eT

The demonstration runs of the Dubbs process

made just prior to and contemporaneously with

the filing of his patent application and the subse-

quent commercial operations licensed thereunder .

reject respondent's meaning applied to the word

“vaporization” in the Dubbs patent... . . 2 eee

(1). The Independence Demonstration Unit. .

Des Patent ....c ccc ccc cetc conceles ‘sate

. The presumption is that Dubbs allaceii the

operation of his process and did not exclude it

from the purview. of his patent-claims.... ..:..

The: file wrapper history of the Dubbs patent”

application fully supports petitioner’s constrtic-

‘tion of the questioned RS ee

é There is no file wrapper estoppel...:.....:...

The meaning which petitioner asserts for the.

phrase “without substantial vaporization” is one

sanctioned by common’ usage. and by the diction-

—

aaa

e. |

: = , PAGE

‘ary_and isthe mare one which imparts to. the —

_ Claims of the Dubbs patent any practical mean-

jE Oe aves Sve pacukes oe Pa ae reer 99

Meaning of the word ‘ aoe perenne in the

TE Bhs pdensecccccSevcscscccsex. BOR

Dietionary and textbook meanirigs. latent isa

_H. If the matter were doubtful, petitioner’s con-

struction should be upheld in view of the revolu- -

tionary advance which the i inventior has made i in

_ the cracking APte see eee ee eee Pelee, Petree 103

‘I. The Dubbs patent ‘etches to the man skilled in

the art the maintenance of a foam in the B tubes 105.

].’ The construction’ of the patent by the District.

Court and’Circuit Court of Agpetts | in the Third

Circuit was correct.......... 65. e eee eee 111

' The District Court opinion. Sera

The opinion of the Third Circuit Court of Ap-

DT. icp easceduet seavnnescndeshee 6% 2. 400

Pornt IIThe Decisions of the Courts Below Are

Erroneous in Holding the Dubbs Patent: Not In- —

Lie ous caee ue} jvm" &

‘1. The District Court Decision Is Erroneous... .. 414

a. The Cracking’Zone Error............. ‘sos SOS

_b.* The Erroneous Presumption that Dubbs did .

not know the Operation of his Process..,... 117

c. The.error relating to the Patent Application a |

and its Amendments. .... piacnecien ene 117,

_ dd. The error as to the meaning to be given to

the word “vaporization” <anueen canton’ aa oo

s 2 The Circuit Court of Appeals Decision Is Erro-

a PererrrrrrrrrrrTTererir Tier rrr reer 120

Part B: Tue Eciorr PATENT

: “PAGE|

Point 1-The Accused W ietiiens Kéch Process. In-.

— the Egtoff Patent.....5.....:..... a6gee BOO

| The. Egloft process and its, advantages. werTeC ey

Point II—The Dadian of the Courts Below: Are

Erroneous-in Holding the Egloff saa ‘Not In-

fringed 2.36. esc n esc ccccencccesetancccsace 130

The District Court’s Findings Re Egloff Seactds aoe

.The Circuit Court of Appeals’ F eeteas Re — 130 .

CONCLUSION cawken ere ery erp rere rr re yey re 132

"Aprepix—General Meaning of the Word | ‘Vapor-

SET “oSkssbucusessctcunces ie riveneaeans . i

e _*e

-- 7.

te . Os

TABLE OF CASES CITED

PAGE

Américas Laundry. Seting, Co. v. Prosperity Co.,

ee te UN, BPS, chx cn ccdecaeosvnsascnas 86

Apex Electric Mfg. Co. v. Maytag, 7 Cir., IZF. ...

2d 182 venue PAPE POET ET EeTT TEC CCE ORT CCT 103

pore Steel Co. Vv. ‘Cambria Iron Co., 185 U. Ss.

: 403 2. Soe c cece cece eens eeee scent caneake 72,110.

Ceramic Process Co. - General Porcelain E. alee ae

Manuf'g Co., 7 Cir., 129 ci os bs ays 97

Cimiotti Unhairing Co. v. Am. Fur.,.Ref. Co., 198.U. S. he

ee a eae rrp rr ier ere Tree rere ree 68 -

Crown Cork Co. v. Gutmann Co., 304 U.S. 159...99,119

Dennis ¥. Pitner, 7 Cir., 106 F. 2d 142."..... PET ORE 102.

.. Diamond Rubber Ca. v. C onsolidated Rubber Tire Co.,

bene EOE Hoe eee =. 91, 117

od Dick, A. B. , Co. v. Barnett, 2 Cie. 288 Fed. 799... 72

_ Eibel Co. v: Paper Co., 261 U.S. 45......., ‘eon eetP A2L -

Exhibit Supply Company v. Ace _— ms U.-6.. --

a 126 206i ee ee eee i ee ee ; ee ay 18

; Foss v: Oglesby et ey Me Sy errr rr.

Caden v. International Steel Tie C 0., 6 Cir., 2 F. 2d —

Ma Cue eas at wn arent eins aia sé 6 8 coke 97

Goodyear Dental Vulcanite Co. x. Davis, 102 U.S. 222 68

Hogg V. Emerson, ie. pe eee hae A

Hubbell v. United States, 179 U. S.77......... sass OO -

Hunt, C. Howard, Pen Co. v. Radiant Point Pen Corp., _-

2 Cir., 135 F. 2d 870...... eanoka eau doevae as an 97

‘Keystone Manufacturinig Co. Case, Lt U.S. 139.... 104

Klein v. Russell, 86 U.S. acted: paven ars pevseese OY

viii

| 3 Pa i PAGE *

Marconi W ireless v v. United States, 320 U. S. 1 :

: | 69, 86, 87, 89

Papes Bag Paient Case, 210 U.S. 405.. a hal 68

* Samson- United Corp. v. Sears Roebuck & C 0. 2 Cia

103 F. 2d 312..... Pe Ere Se pa oanerere 103

Schriber-Schroth Co. v. Clevieland r rust Co., 31EU. S.

MOR cd scsctransnnss Miarvns veces. Oh, BS

Skelly Oil Co. v. Universal Oil Products. Co., 3 Cir.,

Me aE id ced rakabesd en dtane ds bbe eine peas 15

Smith v. Snow, 294 U.S. 1, | srs

, : 58, 61, 65, 68, 69, 70, 97, 98; 102, 103, 121 -

Sunshade Mfg. Co. v. Tubular Products Co., 2 Cir.,”

Lo Ce 8S Sune bea wip ci sade a 130

Standard Oil. Co. vy. United States, 283 U. S. ‘163,

Q, 28, 34, 39

Strong- -Scott Ca. Vv. Weller, ad Cir.,-112 F: 2d )

389. oer OE Sa a «+2: 08,103

Temco Co. v. Arco Co., 275 U. -_ 319... enbiwace eee 70

“U nited States v. ‘Marcel W ireless . Tele iat Com-

rion dwksakh ass keene eee 89 |

Universal Oil Products Co: v. W. inkler Koch Engineer-

«cing Co., hereinafter ‘called. the “Root. case”, 6 F.

' Supp. 763, affirmed sub nom. Root Refining Co. v.

Universal Oil Products Co., 78 F. 2d 991, cerfiorari

denied 296 U. 5.603, ~.*

) . 2, 3,4, 5, 16, 41, 62, 73, 108, 109, 111

Wood v. Daf Gorin, 222 N: Y. 88. esata roads Pe

In THE

‘Supreme Court of the Huited States.

Univansat Oi: Propucts Company,

. Petitioner, . ZA

-. ] No. 392

Grose O11 & ReFininc COMPANY,.

; Respondent.

On Wait or Certiorari To THE.Unirep States Circyis

‘Court of Appeats,ror THE SeventH CIRCUIT

BRIEF FOR PETITIONER, .

UNIVERSAL Ol: PRODUCTS COMPANY

e .

OFFICIAL REPORTS OF DECISIONS -

The majority and concurring opinions of the Séventh

Circuit Court of Appeals in the instant case are reported

‘at 137 .F: 2d 3, aud appear_in the record (VII, 3575*).

The opinion df the District Court (Hotty, J.) is reported u

at 40 F. Supp. 575 and appears in the record (VI, 3035). :

The decision of the court below is in conflict with the

the Circuit Sout of _Appeals for the Third Circuit on the

*References to the record are by a Roman numeral to indicate

the appropriate volume and an Arabic numeral fo indicate the

page. ‘

same matter in. Universal Oil Products Co.-v. Winkler-

Koch Engineering Co,, hereinafter called the “Root. case”,

6 F. Supp. 763, affirmed sub nom. Root Refining Co. v.

Universal Oil Products Co., 78 F. 24-991, certiorari denied,

296 U. S. 626.

| In addition to his opinion after final hearing, District

Judge Hotty filed threé earlier opinions as follows: (a) an

opinion (27 F. Supp. 161) holding -that respondent was

privy to the defense of the Root case and was bound te its | .

outcome; (b) an opinion (31 F. Supp. 665) which, while.

not reversing the earlier holding that respondent was privy

to the defense of the Root case, held that respondent was

no longer bound» to its outcoitie because Root had made a

settlement with petitioner of the amount of its liability and

therefore respondent would not have a further opportunity

to litig: ite the issues in the Third Circuit on the final ac-

counting; and (c) an opinion, “I, 460; not’ officially re-

ported), denying respondent's contention that the com-

plaint should be dismissed on the ground of unclean hands

_ and holding that petitioner had not € been guilty of unclean

hands. |

_ JURISDICTION’

This Court has jurisdiction under Section 240(a) of

the Judicial ‘Code, as amended by the Act of February 13,

1925, 28 U. S.C.'347, and under Section 262 of the Judicial

. Code, Act of March 3, 1911, 28 'U. S. C.°377. The case

arises under. the patent laws, The judgment of the court

below is fina! in that it affirms the judgment of the District -

Court dismissing the complaint (VII, 3585). Certiorari

“was granted herein November 15, 1943.

. 3 .

I alee,

SUMMARY STATEMENT OF THE-CASE

‘his is a patent infringement suit based on Dubbs pat-

ent 1,392,629, dated October 4, 1921 (@II, 3089) and

i-gloff patent 1,537,593, dated May 12, 1925 (VII; 3095).

Iniringement was asserted of all of the claims of both

patents, except the sixth claim of 1,392,629. Both patents .

expired during the litigation i in the courts below. )

The District Court held the Dubbs patent valid but _

not infringed (C..L.* 2, VI, 3060). It held the Egloff

patent invalid.and did not pass on its infringement (C. L.

‘12, VI,.3061:).. The majority opinion of the Court of Ap-

' peals (opinion by Judge Evans, Judge Mayor concurring)

".. was simply that neither. patent was infringed. Judge

LinpLey, specially concurring, was of the opinion that both

patents were invalid but that if the Dubbs patent was valid

“it was infringed (137 F..2d°8). |

In the Root case the District Court held both patents

valid and infringed, and the Court of Appeals (BuFFrinc-

ton, Davis and THompson, JJ.) unanimously affirmed.

Each of the patents in suit is for a process for pro-

ducing gasoline, from petroleum by “cracking”. Respond-

ent, like the defendant in the Root case, was charged with

' infringement because af its use of a so-called “Winkler

Koch” cracking unit designed and installed by Winkler

Koch Engineering Company of Wichita, Kansas.

The accused process in the case at bar is the same las

that involved in the Root case (II, 695- ay Some minor —

differences in operating conditions appear -(II, 696), but -

none of these has been urged by respondent in the courts

See

its Cactus to ‘ he L.” are to the Conclusions of Law “a the

District Court. — :

below to be of substance. Judge “Hotty (40 F. Supp.

584) specifically recognized a conflict between his decision

and those of the courts in the Root case on the issue of ©

3 infringeient of the Dubbs patent.

History of the Litigation

The original complaint was filed July 22, 1931 OL 15)

in usual form. The origina! plaintiff was Universal Oil

Products Company (a South Dakota corporation). An

"answer setting up the usual defenses of invalidity and non-

infringement was filed March 2, 1932 (1, 23). On October

13, 1936 a bill in the nature of a supplemental bill was filed

by petitioner, the effect of: which was to substitute it (a

_ Delaware corporation) for the original plaintiff (I, 37).

Plaintiff Held Not Guilty of Unclean Hands

Subsequently, respondent amended its answer (1, 66),.

and filed affidavits of respondent's counsel J. Bernhard

Thiess, alleging that petitioner was barred from equitable

relief on the ground-of unclean hands (I, 71-7). Respond-

ent’s contention was. that petitioner had attempted to im-

pair the proof of alleged prior invention by ‘one Otto

Behimer, an employee of The Texas Company. The issue

so raised was preliminartly tried in open court, resulting in

findings of fact (1, 463-8), conclusions of law (I, 468)

and an opinion wholly absolvi ing en of the charges =

_ made (I, we).

Root Case Held Not Res Adjudicata

‘After disposition of the unclean hands defense, the Dis-

trict Court held a preliminary hearing on the issue of res

adjudicata (I, 39-57), which had been raised by an amend-

. ment to the complaint after the denial of certiorari in the

Root case by this Court. This issue was raised upon evi-

dence that both the Root and Globe Companies were mem-

~ bers of the self-styled ‘ ‘Patent Club” of refining companies .

which had been organized by the’ Winkler-Koch interests

to defend fatent infringement suits, and under which each

of the merabers (including both‘ Root and Globe) had made -

contributions to a “defense fund” (I, 41-2, 44-51, 53). The

District Court, on proof of these facts and on proof that

the Patent C lub had‘ controlled the conduct of the defense

‘in the Root case, held the decree in that case to be “¢onclu-

sive against the Globe Oil and Refining Company ‘on the

issues of. the validity and infringement of the Dubbs and

Egloff‘patents” (27 F. Supp. 161, 167).

Thereafter, Root Refining Company, independently of —

the other members of fhe defense group, made a settlement

with petitioner, pursuant to a right which’ Root had reserved:

_ when it entrusted the defense of its case to the “Patent

Club” (27 F. Supp. 162-3). . |

In this state of facts respondent petitioned for a rehear-

ing on the issue of res adjudicata. The District Court

thereupon held thal by the settlement respondent in the case

at bar had been deprived of the opportunity to secure an-

other review of the issues of validity and infringement after _

‘the accounting/ and ‘that consequently “the issues of ‘the

validity of. the patents and their infringement by defendant

herein are open for litigation in this case, and that Globe

is not now. bound by the decree in the Root case” (31 F.

Supp. 667). ,

Petitioner did not urge res adjudicata in the Court of

Appeals (VT, 3068) and does not do so-here .

;

Trial on the Merits

} ‘alidity

The case e then went to final eciaia The District Judge

thereafter filed an opinion in which he dealt at length with

‘the history of the Dubbs invention and.the shortcomings |

of the prior art (VI, 3035-51; 40 F. Supp. 575). He agreed

with and accepted the judgment of “thie recognized experts

in the art” who “saw the Dubbs process as new and revo--

lutionary” (F. F.* 23, VI, 3057; Vi, 3043; 40. F. Supp.

579). He rejected all defenses based on prior patents (F. F.

5-23, VI, 3052- 7) and the defense of prior invention by .

. Behimer (F. F. 24-7, V1, 3057-8) and concluded that the

‘Dubbs patent -was valid (C. L. 2, VI, 3060). :

Infringement

On the issue of infringement of the Dubbs patent, Judge

Hotty held for respondent (C. L. 2, VI, 3060). He did

not differentiate in any way between the accused process

and that described in the Dubbs specification, but based his:

holding solely on the meaning which he attributed to the

word “vaporization” appearing in the claims (F. F. 30-4,

VI, 3059). The holding of non-infringement was a matter

ef construction of the patent document and_did not involve -

any resolution of conflicting: evidence as to the accused |

process, the facts as to its operation having been stipulated .

(1, 473-9). ;

Judge Hotty held the Egloft patent inv silds he did not ”

pass- upon the i issue of infringement. | : - ee

*References to “F. F.” are to 5 the Findings of Fact of the. Dis

trict saa ¥

Ry Mi ee

Pa EOI OIE

ent cinescnnenensne lg

Court of Appeals Decision —

The Court of Appeals affirmed (137 F. 2d 3). The ma-

jority opinion accepted respondent’s conterition as to the

meaning ,to be attributed to the word “vaporization” aid, -

on this ‘singlé. issue (1d. at 6) affirmed the District Court’s -

holding that the Dubbs patent was‘not infringed. On the _

other hand, Judge Linprey, specially concurring, was ap-

parently.convinced that petitioner’s position was the sound

one on this issue for, ‘while ‘stating that he thought, the

Dubbs patent was invalid in view of prior art patents, he-

‘ observed that “if the Dubbs patent is valid, it is infringed —

_by the Globe Oil &.Refinitig Company process” (id. at 8).

- The majority opinion did not adopt Judge Hotty’s opin-

ion-on the Egloff patent, stating : “nor are we disapproving

of it. We rather choose to place our conclusion on the

ground that there was no infringement” (id. at 7).- Judge

LINDLEY was of the view that the Egloff patent was invalid

(id. at 8).

IV ; i

STATEMENT OF FACTS

- The Art Involved Prior toa Dubbs :

Petroleum Oil, its: Distillation and “Cracking”

~ Petroleum, or crude oil, is not.a single chemical sub-. /

siance but contains a large number of different chemical .

substances having different physical properties, e. g., differ-

ent boiling points (11, 635-6). These substances are all

-“hydrocarbons”’; that is to say, their molecules are composed

of atoms of hydrogen and carbon (II, 635; F.-F. 3, VI

3052). The substances differ from one another because

. their-molecules contain differing numbers of carbon and |

——e x

° 8

bydrogen atoms or because the atoms are differently ar-_

ranged within the molecule (II, 635-8; F; F. 3, VI, 3052).

The problem of the oil refiner is to extract from the.

crude. oil the oils of commerce, such as gasoline; naphtha,

kerosene, fuel oil, etc. (11, 639-40). In ordinary distillation

there will be produced after kerosene. and before fuel vil

what is known as gas oil, re ve |

. Taking a typical Mid- Continent crude as An. example,

approximately 25% of- the- crude may be recovered’ as

gasoline by simple distillation, 5% to 7% as kerosene, 30°:

as gas oil, and the balance, 38% to 40%, as fuel oil. The

separation may be stopped after the rémoval ‘cf the gasoline |

or of the kerosene, the balance being then known as topped —

crude, which thus represents about 70% of the total crude

CI, 642). : :

Fuel oil, and topped crude are. ree ier and of lower mar-

ket value than-gas oil, and upon cracking form a greater

quantity of carbon or coke (1, 536-7). They also of course

represent a larger proportion of the crude than d6es gas oil.

“The process of cracking involves the breaking up

_ of, hydrocarbon moiecules so that they re-arrange them-

selves into. lighter molecules “with an accompanying

formation of other molecules heavier than those in the

original oil (II, 648-9; F. F. 4, VI, 3052): The result. is

that cracked oil contains more light molecules, e.g.,“those

coming within the gasoline range, and molecules heavier

than those ‘present, in the original crude oil. . Accordingly,

cracking produces a large yield of gasoline, but, concomi-

tantly, the process produces heavy liquid fractions such as

fuel oils, tars and asphalts and even solid residues generally |

designated in the parlance of the industry by the words

“carbon” or “coke”.

_ The Problem ia the Art Prior to Dubbs

- The history of cracking | prior to the Dubbs invention

. is set out in. the District Court" s findings (VI, 3052- 8) in

much the same manner as stated by Mr. Justice Brandeis,

delivering the opinion of this Court in Standard Oil Ce. y.

” United States, 283 U. S. 163, 167:

Se So ror about half-a ‘century a 1910, gaso-

line had been manufactured from ¢rude oil exclu-

‘sively by distillation and condensation at atmos-

pheric .pressure. When the demand for gasoline

grew rapidly with the widespread. use of the auto-

mobiie, methods for increasing the yield of gasoline

from the available crude oil were sought. It had

long been known that, from a given quantity o

‘crude, additional oils of high volatility could be pro-

~ duced by ‘cracking’ ; _that is, by applying heat and

pressure to the residuum after ordinary distillation

But a commercially profitable cracking method and

apparatus’ for manufacturing ‘additional gasoline

had not yet been developed. The first such process

was perdected by the Indiana Company in 1913; and

for more than seven years this | Was the omy cone

practiced i in America.” 5;

- The Burton and Burton-Clark Processes’

The processes which the Indiana Company perfected :

were known as the Burton and Burton-Clark. processes.

The District Court found that these “constituted the state of |

the art as practiced commercially when Dubbs appeared on

the scene” (F. F. 9, VI, 3054). |

’ The Burton process was a batch* process and was car-

ried out in apparatus illustrated in Plate I of the Supple:

*A batch cracking process is one in which a given quantity of

vit ¢a batch): is subjected to cracking conditions Of temperature - Les

‘and pressure and in which no unv _—— oil or residue is with-

drawn during the ae

ment*. The apparatus included a sat steel vessel or

“shell still” (indicated at 1 in. the drawing ) mounted in a

furnace setting (2). The charge, consisting of a “batch”

of about 8,250 gallons of a light “gas oil”. produced from

crude petroleum by distillation, was ‘placed in this vessel

_ and heated to a temperature of 700-750° F-: (I, 487-8).. -

The heat caused the oil to ctack (F. F. 5, VI, 3052).

Vapors were generated and liberation of vapors from

‘the liquid body took place in the shell still. The vapors

passed off through an inclined vapor line (4) to an aerial

or partial condenser (5). In the condenser (5), the

heavier part of ethe vapors coming from the line (4)

were condensed and part remained uncondensed. The

; uncondensed part passed from the top of the condenser

(5)-into a final condenser (6) where such of them as

were condensible were liquefied’** The liquefied final con-

.densate was collected in a vessel (7). This product, known

as “pressure distillate”, became gasoline after further refin-

ing operations not important here. Those portions of the

vapors which were liquéfied'or condensed in the initial con-

denser (5) were known as “reflux condensate” and flowed

back in copious amount to thé still hy gravity to be again

heated and converted to vapor (1; 486-7; II, 646-7). The

residue remained in the — sence: shell still

‘during the run.

It required about 12 hours after the fires were lighted

to bring the contents of the still up to the proper tem-

perature and oe that is to say, to bring the unit~

*References to the “Supplement” are to ‘the Supplement to

this Brief. '

‘**Some of tlhe vapars formed were uncondensible and existed

as fixed gases. These were a iain off from vessel. (7) through

lines (9). ©

I 11 °

-“on-stream”* (I, 486-7; F. F. 5, VI, 3053). The unit

remained on-stream for a maximum of 24 houts (1; 488;

F. F. 5, VI, 3053). It then became necessary to quench

the fires; withdraw the oil remaining in the still and remove

the carbon or coke which had been formed during the opera-

tion and had adhered to the inner wall (ibid.). This clean-

ing period required another 12 hours (ibid.).

The Burton- -Clark process, another “batch” type process,

‘came into use about 1915 and was an improvement of the

Burton process (1, 489; F. F. 7, VI, 3053). It was carried

out in apparatus shown in Plate II of the Supplement. This

apparatus differed from Burton in that, instead of the fire -

being directly. applied to the shell (1), it was applitd to a

series, of tubes (3) pla€ed within the furnace setting and

connected at their ends to the vessel by hollow legs (3a and

$b), the oil circulating through this system by convection

(ibid.); The oil charged remained a light gas oil. As in

the Burton process, no residue was withdrawn during the |

rtin; all the liquid oil was cycled round and round through

_ the heating tubes (3) and the shell (1) continuously during

the run (I, 489; F. F.-7, VI, 3053). :

The cycle of operation was 72 hours, which included

°15 hours to bring the still up to pressure, 36 hours on\

stream arid the remainder for shutting down, cleaning and

vetting the still ready for the next cycle (T, 490; F. F. 8,

VI, 3053-4):

The Burton and Burgon-Clark processes, tvhile the first

successful cracking processes in the art, had serious dis-

advantages, in addition to the shortness of their on-stream

periods. bis din were workable only with a distillate charging

*“On-stream” is the period of time when the still is produc:

ing gasoline (IT, and

- 12

“stock such as light gas oil (1, 488.9; F. F. 10, VI, 3054).

Even then, the gasoline’ yields were only about 25% to 28%

of the oil charged in the Burton process (I, 488; F. F. 6,

. WVI,93053) and about 30% to 32% in the Burton-Clark

process (1, 490).

The limitations of yield, charging stock and length ot

run were imposed on these processes by the accumulation

of carbonaceous | niaterial in the heating elements of the

stills. This not only required frequent shut downs for

cleaning, but presented a serious hazard to life aS property

_ (F. F. 6-8, VI, 3053-4). These carbon deposits were a

potential cause oi explosion, for they caused overheating

and weakening of the walls of the heated shell or tubes

(F..F. 6, 8, IV, 3053-4). Several such explosions had oc

curred (I, 488). Indeed as Daniel Pyzel, who was in —

charge of refinery operations for the Shell group in the

United: States, ‘testified (I, 520-1):

“At. that time people were still afraid and I would

\ say very much afraid of a cracking plant.”

These proces: s¢s not only were themselves expensive to

operate, but, during the shut-down periods, the equipment

was idle, and the large i investment which it represented was

non-productive. _ \ -

The Vapor Phase Processes

‘Contemporanesusly with the use of the orton and. —

Burton-Clark. processes, and prior to the filifig date of- the

application for the’ Dubbs patent in suit (1916-1918),

__ workers in the cracking art were endeavoring to develop an

essentially different type. of process called the “Vapor

Phase\ process. It derived its name from the fact that in

such a process the purpose was first to convert the oil into.

vapor and then to subject the vapor, separated from or free

of liquid oil, to cracking. eo ae

The vapor phase process was exemplified by the Hall

patent (VII, 32Q0), the Alexander patent -( VII, 3372), the

- Greenstreet patekt (VII, 3476), the Ellis patent (VII,

3352), arid the Biddison and Boyd patent (VII, 3336).

The processes of the Hall and Alexander patents were

- given a fair trial under the aegis of the patentees them--_

_ selves in the refineries of The Texas Company (II, 846-7,

Ps 866-8) ~gnd the Gulf Refining Company (II, 1347-8),

respectively. The Texas Company spent $100,000 in con-

structing a Hall experimental! plant (II, 866). The Gulf -

Refining Company spent $1,500,000 in the iristallation of a

plant embodying the teachings: of the Alexander f pattant

(I, 1348).

The cost of production of gasoline by the Hall process *

was 68 cents per gallon (II, 976, 981). The gasoline

yield based on the charge in the Alexander process was but

6 or 7%. (III, 1351). : ’ i

After extended tests, these. processes were shisitoint

(II, 975-6; III, 1548; F. F. 15, VI, 3055; F. F. 1, VI,

_ 3057). ; ;

They failed because, when, treating charging stocks

other than very light and expensive niaterials such as kero- —

sene and light gas oils,-and when attempting to, produce

substantial yields of gasoline, coke or carhon deposited in .

the heated tubes of the units, forcing their shut-down (11,

852, 867-8; DX* 628, p..12, V, 2427; IIT, 1350-1, 1355).

_ This deposit of coke or carbon was the result of the

. fact that in these operations separation of the vapors

from the liquid oil occurred in the heated tubes (IIT, 1350,

Sy 13645, 1407-8).

*References to “DX” are to: Defendant's Exhibits.

. 14

The Trumbie process was the banal process on which

the Royal Dutch-Shell group was working af the time of

- Dubbs’ advent. It was typical of the processes which the

industry, seeking to improve upon the Burton-Clark proc-

ess, was then endeavoring to develop, such as the Hanna

and Richmond stills of the Standard Oil of California. _

In the Trimble process (Patent 1,281,884, VII, 3295;

Plate VIII, Supplement ), the fresh oil is fed from pipe (43):

and passed by means of pump (8) at a high velocity (VII,

3295, 1.* 80 to 3296, 1.5) through the cracking coil (1)

- where high efficiency of heat transference is obtained

(VII, 3295, l.* 90-4). From coil (1)-the oil, in the form

- of an intimate and foamy mixture of vapor and liquid (VII,

3295, Il. 80-5, 95-99), discharges into the top of a vapor re-

- jeaser (2). There the vapors separate from the unvaporized

oil. The vapors ‘pass through pipes (45) to partial con- \

densers, called “dephlegmators”, (4) where partial conden-

_sation forms retlux condensate. The latter passes through

pipes (66), (67) and (68) to the chamber (3).. The resi-

due from the vapor releaser (2) also passes to the chamber

(3). A large part'of the mixture of reflux condensate and

residue is returned to coil (1) from chamber (3) through

pipes (40) and (41), joining with the fresh feed at the

" pump (8), and is. thereby cycled through the system.

'.- Thus in the Trumble process a large part of the residue

- fromthe vapor separating step—the patent suggests as much

_ as 95% —is ‘cyeled through the heating coil. The balance,

a small amount of heavy oil and included solids (VII, 3296.

ll. 33-51), is bled from the =e through pipe (44).

ie *References, to 1. and It. are to the numbered lines of the

— .

_ The Trumble patent repeatedly. emphasizes that the ~

stream of oil undergoing treatment, including residue,

. is.circulated around and around, or cycled, in a closed ring.

After 1924, the Trumble process was commercially em-

bodied in the so-called “Jenkins” process. Cf. Skelly Oil

Co. V. Universal Oil Products Co., 3 Cir., 31 F. 2d 427.

While the length of run of these modern Jenkins stills ex-

tended materially bevond the length of the Rurton-Clark

run, the charging stock and the yields were as limited as in

the latter. “

The difficulty with Trumble’and other similar processes,

such as the Hanna and Richmond stills of the Standard-Oil.

of California or the processes of the Smith patent 1,239,423

(VII, 3224) and Edwards patent 1,170,884 (VII, 3182),

was that, as the lighter vapors were drawn off, the oil which,

was used in the cycling: inevitably became heavier and

heavier so that, despite the introduction of fresh feed, there

~ was inevitably coking in the tubes of the heating zone when

increased yields of gasoline were sought. The prior art had

. , not realized that the liquid unvaporized oil so cycled would, ;

| upon further heating, form heavy “polymers” which would

‘ rapidly -go to coke. This was the problem with which all

were grappling (F.F_9, V1, 3054).

The Carbon Problem‘

“Carbon was the bane of the indian industry”, as peti-

tioner’s witness Brown stated (II, 649). And respondent’ s

witness Behimer agreed that there was “only one trouble

in the cracking infiistry and that was carbon” (II, 909).°

Indeed, the seriousness of the problem is apparent from the

. facts above stated as to Burton and Burton-Clark. ‘The —

District Court specifically found that (F. F. 9, VI, 3054):

ome

! “The Burton and Burton-Clark processes consti-

tuted the state of the art as practiced commercially ©

when Dubbs appeared on the scene. The problem to

he solved was to crack the heavier hydrocarbons te

preduce gasoline‘ without coking up the vessel .in

which the cracking occurred. Dubbs solved the

problem.”

The Dubbs Process ,

The District Court found that (F. rE 12, VI, 3055) :

“The Dubbs process w as recognized immediately

wy. the larger oil companies as a great improvement’

in the art, and the older processes of producing gaso

line were practically abandoned.”

Similar recognition was found i in the R oot case 6 F. Supp. °*

764-5).

Performance

That Dubbs solved the caition problem is demonstrated

c by the results of the operation ofthe Dubbs standard units

developed to carry out the “‘clean'circulation” principle of

the: Dubbs patent, In the operation of the standard 500

bbls. Dubbs units (Plate VII, Supplement), the approxi-.

mate duration of the runs made on gas oil was between 10 ©

and 20 days, sometimes longer, with a yield of gasoline

based on the charge of 40-50% anid in many cases the yield.

exceeded 50 per cent- (II, 612}. Two examples appear in

‘the record as of March 1925, using cps as —s

“stock (11, 615):

(a) in eka units licensed to the Waite Phillips (later

Barnsdall) Company, the on-stream period extended to

2214 days, with a gasoline yield of 40.57% of the

charge, also yieldigg a saleable residue as a by-product ;

(b) the units licensed to the Arkansas City Refining

Company made runs which remained on-stream 28

(Deer Sewer Se

days, producing yields of gasoline of 48.36% of the

charge,. and making a commercial fuel oil as a by-

- product. .

Moreover, the Dubbs process was not confined to the’

selected gas-oil chargitig stock which was all that could

be cracked by the Burton and the Burton-Clark processes.

Dubbs could crack the more abundant and cheaper fuel oil *

- or topped crude (1, 536):

- On fuel oil, the runs of the 500 bbls. Dubbs units nile

_ lasted from 4 to 10 days, with a yield of gasoline-based on!

the charge of 30 to 45 percent (II, 612).

Indeed, the yields stated, above can be materially in-

creased. Huff. testified that there is “no limit to the yield :

' of gasoline that could be obtained from a charging’ stock

with the Dubbs process.*. The higher the -yield you ob-

tained the more you would. depreciate the residue. It all

depended upon how far the refinery wanted to go in ob-

; taining a high, yield as to what he should do with his

residue” (II, 624).

Thus the Dubbs process increased the, Nields substan-

tially over those that could: be obtained with the Burton.

Clark proeess and perrm ‘ted the use of al. larger, heavi ier

and less costly portion or the crude oil as cracking charge.

Burton-Clark, which could.only treat gas oil, represent-

ing 30% of a typical Mid-Continent crude, thus obtained a

sield of gasoline by cracking of about 10% of the crude.

Dubbs could treat the entire-topped crude, constituting 70%

of a typical Mid- Continent crude, andsthus could and did

obtain a yield of gasoline by cracking. of about 28% of the:

. crude.

*Italics ours throughout this brief, unless otherwise indicated .

' Thereby, Dubbs contributed materially to the conserva-

tion of the petroleum resources of this country.

Dubbs also climigated the hazard to life and property

presented by the prior processes, and removed the refiner’s

fear of a cracking plant.

Apparatus and Operation

“The apparatus of the Dubbs patent is illustrated in

Plate IT of the Supplement. _Referring to tliat drawing, the’

process may be briefly described as follows: The oil to be

cracked, called the “frésh feed”, is supplied through a pump

J to “cracking tubes” marked B in the patent and colored.red

in Plate III of the Supplement. Heat is applied to the out-

side of the “cracking tubes B”, thereby raising the oil as it

passes through the tubes B to the required cracking temper:

ature (F. F. 10, V1; 3054).. From the B tubes the stream

discharges into enlarged “vaporizing tubes C.” —

All of the heat for cracking is imparted to the oil i in the

erqcking tubes B. No heat is added to the oil in the vapor-

izing tubes C,, although insulation or,’ alternatively a light

fire, may be applied to these tubes, solely .to “compensate

for the loss of heat‘by radiation (II, 654). .—

-In the cracking tubes b, there necessarily results, under

the conditions stated:in the patent, a generation of vapors

from the oil (I1, 656, 726). Dubbs does not permit these -

generated vapors to separate from the liquid oil, but carrie’

thein forward in the oil as a froth or foam which fills the

B tubes completely (11, 656-7). It is important to the

_ process that;stratification of liquid oil and vapor, i.e., vapor

separation, in the highly heated cracking tubes B shall be

avoided. If such a tube condition is not avoided, coking

_of the tubes, with its attendant evils and risks, occurs. —

Oe ae

“19

As described’ in the patent, the cracking tubes B are

four inches. in diameter and so restricted in cross-section

that they enable the condition of froth or toam ‘to prevail.

This contrasts with the enlarged diameter of the vaporiz-

ing. tubes C “ten inches, giving a cross-sectional drea

_ over. six. times that of the B tubes), into ‘which the f m

is discharged from the cracking tubes. .The oil only p

tially fills these large vaporizing tubes C. wherein liberati n,

or separation, of generated vapors from the still liquid pdr--

tion of the oil occurs (11, 660). The separated vapors pass

upwardly through tubes D thence through vapor’ tubes.

XE, amanifold G and aerial. condenser G', wherein they |

are in part condensed (II, 653).~ The condensed oil, or

“reflux condensate” : uae oes ihe force of gravity

from the elevated condenser G' through a pipe F’, joins.

with the incoming fresh oil, and is again circulated or

cycled through the system CI, 654) i in admixture with the

fresh oil.

That portion of the vapors ane is not condensed in

the aerial condenser G' passes through a pipe G? into a final

condenser. G* ; ‘and constitutes the end product of the crack-

~ Ing process, (TI, 654, 651). After some refining or ‘finish-

- itig operations, it is the gasoline of commerce.

The Vitalizing Feature a | | e-

It is vital to’ the Dubbs process that none of the liquid -

carbon-containing non-volatilized oil, or residue, remain-

_ ing after the removal of vapors from the vaporizing tubes

C, is «cycled through the heating and cracking tubes B;

“and that the reflux condensate, which is ‘cycled through the

tubes B, is uncontaminated by said non-volatilized oil or

‘residue (II, 663; F. F.. 10-11, VI, 3054-5). The patent

describes that the residue is entitely w ‘ithdrawn from the

system by means of line K (vo 11, 3089, Il. 93-5 seis, ll. 43-

. ) a '

Thus the cracking tubes Bb aré ee free. The

non-cycling of any of the heavy liquid hydrocarbons, which

are inevitably formed by cracking, avoids coke formation

in the heating’and cracking tubes B (II, 656-8). Dubbs re-

alized that it was not sufficient to remove from the system

only the heavier carbon containing residue, while recycling

- the balance of the’non-volatilized. oil,* for the latter upon

further heating will polymerize and form coke. |

Dubbs went deeper into the cracking problem as a whole

than any of his predecessors. To understand this, a dis-

tinction must be drawn between two types of hydrocarbon

molecules. _ | |

Some of the hydrocarbon molecules are “saturated” such

as the paraffin series, in which the compound is saturated |

with hydrogen: it couldn’t hold any more. hydrogen be-

cause the carbon atoms are linked with the maximum num-

ber of hydrogen atoms (11, 636-7}. |

Other hydrocarbon molecules are’ “‘unsaturated”, such _

as the olefins; these molecules do not hold their full quota

* of hydrogen, and compounds of this kind are much more

active than the saturated compounds, for the reason that..

there are links between the carbon. atoms which are avail-

able for uniting with other atoms or molecules’ (II, 638-9).

The heavy liquid products of cracking are highly un-

saturated and very active at the cracking temperature.

These compounds unite together and form still heavier ma-

terial of still more unsaturated character. The resulting

*As- for instance, in the Trumble and like processes (p. 14,

supra).

materials can. be called ‘ ‘polymers’, meaning that they are

formed by the association or coming together or ‘poly meri-

zation” of many other compounds (LI, 647, 649).

These unsaturated heavy polymers are powerful carbon

forming materials and, if they are subjected to cracking

temperatures, they rapidly go.to coke (II, 658)! |

- Dubbs realized that the carbon trouble ‘would not be —

cured short of prev enting the return to the heating zone of

any unvaporised oil. This was a novel and inventive con- |

cept. -It solyed the carbon problem: which had plagued the

cracking art (F. F. 9,°VI, 3054). It is generally ‘called -

‘the “clean circulation” process (F. F.'13,.V1I, 3055):

This solution had theretofore eluded the art. The in-

dustry was working along ‘the Tines of drawing off only

a part the non- volatilized. oi!; and, of course, making

such, mechanical improvements all ‘through the system as

skill or ingenuity could devise. .To draw. off all. of: the

residue—all of the non-velatilized oil;—and run it all off

to storage, might .be described as an idea "so shockingly

wasteful that no great company was willing to entertain

it. The description would be inadequate. The truth’ was

that, other than Dubbs, the employée of only one. great -

company even thought of it. The one who thought of it was

-Behimer of The Texas Company; but neither he nor all

the talent at the command -of «The (Texas Company knew

how to make the. idea work (F. F. 24. V1, 3057), agd in-

~ deed. The Texas Company abandoned it in favor of one

more process Of the old type (1, 327; II, 880-1, 937-8,

946-7, 978).* | a

. 2

° .

*The Texas people used the word “backtrap” for “reflux

condensate”. They mixed it with the residual oi], as in Burton

and Burton-Clark ; they nad no means for returning it to the

heating coil (iI. 978). :

The Dubbs mvention resided 4 in the combination covered

: by the claims of the patent. Should any_of the he steps t there,

recited, be it that expressed as “vaporization [vapor libera-

tion] prevented”’-or that consisting in the non-cycling of the

residue, ‘be omitted,: the operation would fail to realize the

7 benefits of Dubbs’ discovery and would again incorporate

the defects and dangers of the abandoned vapor phase proc .

esses, of the Burton-Clark process, or of the Trumble and

like processes. But among the steps thé vitalizing one was

the total withdrawal of residue and consequent clean circu-

lation of uncontaminated reflux.

It was the startling simplicity, yet successful coceshiiiny:

of the Dubbs discovery that enlisted the remarkable recog- |

nition by small and great companies alike which is recited

infra beginning at. page 28, and on which the District Court. |

made the following finding (F. F. 20, V1, 3056)

“That the prior art did not teach clean circula-

tion is shown by the fact that the great oil com-

panies such as Texas, Gulf, Shell, and the Standard

Oil Company of California, with their staffs- of

highly trained technical experts, never discovered |

- this principle in the pfior art.’ |

The Dubbs Patent Claims a

At the trial, claim. 7 was taken as ty pical of the claims

in suit (VII, 3091):

7: A process of cracking oil consisting in con-

- tinuously passing a stream of oil through a series of_

tubes seated in a cracking zone’ where the oil is

heated to the cracking temperature but substantial

_ vaporization prevented, and thence to an enlarged

vapor ‘chamber where vaporization takes place, re-

. moving the vapors from said chamber, subjecting

apts 23

‘them to an initial condenser where a portion of the

vapors are condensed, subjecting the uncondensed

portion of the vapors to a final condensation, return-

ing the condensate froni said initial condensation to

“the inlet side of the cracking tubes and continuously

drawing off the residue from the vapor chamber ‘and

preventing it from returning to the cracking zone |

and maintaining a pressure on the oil during treat- -

ment.”

History of the Dubbs Application |

The application which eventuated in the Dubbs patent

‘in suit was filed March: 14, 1919. The original. specifica-_

tion (1V, 1511), save for minor differences not important

_ here, was the same. as the specification of. the patent as

isstied, except that the original ——— did not contain

_ the description of the ‘illustrative run” appearing in the

- np patent at page 2, lines 32-65 (IV, 1511-5; V I, 3090,

1: 32-65). The illustrative run was added, at the re-

ae of -the Patent Office (IV, 1519), by an amendment |

filed September 16, 1919 (IV, 1520}, about six months

after the’ filing of the original application and a decade

prior to the advent of the accused process. It is nowhere

suggested that any intervening use occurred between the

~ filing: of the original — and the amendment re-

quired by the Patent Office.

The claims originally filed and the whincative run are

important here because the decisions’ of both courts. went

upon the ground - that _respondent’s process successfully

evaded the patent by generating vapors in its cracking co:] _

(the Dubbs ‘B tubes). ‘The evasion is sought to be sup-—

ported by the phrase in the Dubbs claims stating that the~

operation of that part of the process which takes place in.

—

24 | ;

the B tubes. shall be “without substantial vaporization”

(claims 1, 9, VII, 3090-1), or is to-be carried on so that

“substantial vaporization lis] prevented” (claims 2, 3, 4,

7,8,.V EH, 3090-1), or “while preventing substantial vapori-

zation” (claims 5, VIL, 3090-1): ;

But the Dubbs patent, its file wrapper history, the cir-

CImystances’ surrounding the patent application, as well as_

the uniform practice under the patent, all establish that the .

quoted words prohibit(®apor separation or liberation only ;

generation of vapors. be te cracking tubes B necessarily

occurs under the Dubbs ee

Original claims 1 and 2 called for “passing the oil

through a heating coil. in a cracking zone, passing the oil

‘and generated vapors into a vapor chamber, taking off the

{ Vapors from said vapor chamber,” etc. (IV, 1515-6; F. F.

, VI, 3059). Thus it plainly appears’ that the. Dubbs

jenni as originally described, was known: by: Dubbs, and

claimed by-him, to be one in which vapors were gener-

ated.in the ctacking tubes [3 and in which the vapors were

separated in the vaporizing tubes C. These original claims

remained in the.case until the specification was amended by

the addition of the illustrative run* <VI, 152041; Vil,

3090, Ll. 32-65).

The illustrative run, to those skilled j in oil ériichion, 4 de- .

‘scribes exactly what was defined by the original claims, #.¢.,

a process wherein vapors are iney itably generated as” the

.oil_ passes through the cracking tubes (II, 656, 726; III.

1148-51, 1153-4). These vapors are separated in the vapor:

izing tubes C. The same phenomena occurred in all the

Dubbs demonstration runs and in all licensed operations.

*The Hustrative run gives specific operating conditions for

the process.

*. - |

‘ |

The words “without substantial vaporization” or their

counterpart were never relied upon ‘by Dubbs as differen-

tiating his claims from the prior art upon which the claims

stood rejected; nor were they required by the Patent Office.

They were inserted so that the claims would cover only a

process wherein the B tube.condition—no vapor separa-

tion—was present: and would exclude the condition which

had caused the failure of the vapor phase processes (II,

056-7). While the condition ¢haracterized by this phrase

played ‘an important part in the operation of the process, it -

was not Dubbs’ contribution to the «i. His contribution,’

constituting the clean circulation principle, .was the non-

cycling of the -non-volatilized oil and the ‘cycling of the

uncontaminated reflux condensate.

Through all of the claiins, in varying expression, there

persisted the thought (¢.g. IV, 1524) of passing ghe oil

through “a cracking zone and.a vaporizing chamber, with-

drawing from said chamber the vapors arising from the

oil passing therethrough”, etc. Throughout the prosecu-

tion, emphasis- was consistently placed by the applicant .

“upon the cycling of the reflux condensate free from carbon |

containing residue and the non-cycling of such residue:

that was claimed to be his contribution to the art. And

he advised the patent office that “An apparatus constructed

just as the apparatus shown in the present application .is

commercially operated and by means of this invention ap-

plicant is able’ te avoid these carbon troubles and is able fo

carry’ out his process continuously and uninterruptedly over

a very extended period of time” (IV, 1533).

Ultimately the claims were put in proper form to ex-

press the clean circulation principle for which the patent

stood... The substance of this principle was: summarized

e \

| for example i in oe 7 as follows w II, 3091, page

_ 3 of patent, lines.

em * returning the condensate. from said initial con-

densation to the inlet side of the cracking tubes and

continuously drawing off the residue from the, vapor .

chamber and preventing it from returning to ‘the

' ¢racking zone .* * *.”

Demonstrations of Operability of Dubbs Invention

Dubbs’ represeptation to the Patent. Office that “ |

invention was in actual use and avoided the carbon troubles

which had plagued the art (IV, 1533), was, in fact, a -

modest wes poe of his accomplishment. Prior to the filing

of his patent application in March 1919, he had constructed

the apparatus shown in the patent and successfully. demon-

strated the “clean circulation” process, for which the appli-

cation’ stood, in a plant at oe teats Kansas (1,376:

_ F. F. 11, V1, 3055).

Late in 1918 or early in 1 1919 the process was there |

exhibited to Daniel Pyzel, a world-renowned chemical engi-

neer in charge of the refinery operations .of the inter-

natiorial group of Shell companies “(1, 506-8). Pyzel

(1, 506:8, 517, 519-21) described the construction and

operation of this unit, which followed closely the disclosure

of the patent. The same unit was again demonsfrated in

the summer of 1919 fo a nunber of representatives of the

National Petroleum Association and the We -stern Refiners -

Association at their request (1. 377 ). A flow sheet-of this

unit appears in PX* 519 (IV, 1727) reproduced at plate

NI cf the Supplement.” There were ten 4-inch cracking ~

tubes (tubes B) and an enlarged 10-inch vaporizing cham- —

ber (chamber C), whence the vapors passed to an aerial

sd >

- *References to “PX” are to Plaintiff's Exhibits. —

—

condenser elevated about 20 ‘feet, and the reflux condensate

- was returned from this aerial condenser by gravity for

-fepassage with the fresh feed (a gas: oil stock) through

.the cracking coil. A pressure of about. 130 pounds was

returned or cycled to the heating coil.

-. maintained in the system, and for most of the operation an

active cracking temperature of 850° F. and above was in-

tained (PX 597, IV, 1823-61). The residuum from the

vapor separation step occurring in the enlarged chamber

was discharged from the system, -and no part of it was

During th® summer demonstration, the refiners were -

asked to specify — long ‘they desired the ,plant to re-

‘

tions (1, 394).. No other cracking pr

main on-stream, an they suggested 12 days. -The demon-

stration run, as the \contemporaneous records the ergof

show, .continued tininteraptedly for 9 days and was then

shut down, not because of any undue accumulation of

carbon or because the process could not go further, but

solely because the refinery representatives expressed them-

selves as. fully satisfied (F. F.. I, VI, 3055; PX- 597,

IV, 1823-61). The results were published + in the National

Petroleum News, the Oil & Gas Journal and. cther publica-

we Neste ever before

made a comparable run (i, 377). |

It is undisputed that in the crigmal demonsfration runs.

cracking, with its inevitable vapor generation, ‘gecurred in

‘the cracking tubes B, but vapor liberation did not occur

» therein (II, 687-8), the oil in these tubes being in the form

of a foamy mass of liquid oil containing bubbles of\gen-

erated vapors (II, 687-8). The liberation of the vapors |

trom the, liquid gil o¢curred only. in the vaporizing tubes Cc

(II, 688). This Was the result characterized by the patent \.

claims as ‘sybstantial vaporization prevented’ in the B tubes,

Pe ete Ele, wee)

as 1s distinguished from the C tubes ‘where vaporiuation takes

. place’ (VII, 3091, claim 7). .

These_were the runs which demonstrated the Dubbs

process as “new. and revohitionary” (F. F. 23, VI, 3057;

40 F. Supp. 579; see also F. F. 12, VI, 3055).

- THe Operations of this demonstration unit avere under

the supervision and control of the patentee, Dubbs, and ;

were the basis of his patent application (1, 392-3), filed

-coricurrently with the runs. The application, as we have

- shown, described a process wherein vapors were generated

in the cracking tubes B, but “yaporization” (liberation of

"the vapors) took place only in the vaporizing tubes C.

The principle. of the process.carried out in the demon-

stration unit was embodied by Dubbs and petitioner in the

so called “standard 500 bbls. unit” -( Plate, VII, Supple-

ment), developed to carry out the Dubbs clean circula-

tion’ process; these units .became widely. used by the f

‘dustry under: license from ‘petitioner (11, 607-8, 611).

"all of. the licensed operations there was yapor a

- but: not vapor liberation, in the cracki il (B tubes).

and there was vapor liberation in the separating chainber

(vaporizing tubes C) (I, 514, 546; HI, 599-601, 617, 688-

94).

In- the - Independence qT and in all the

licensed. operations, none of the residue of the process was

cycied.. Clean circulation was achieved.

— . Q

[> Circumstances in'the Oii Refining Industry

_ . When Dubbs Mad His Invention

_ Several of the great refiners were. working in the field

whien Dubbs appear . As noted by Mr. Justice Brandeis ”

in Standard Oil Company v. United States, 283 U. S. 163,

at page 167, enact to hoses 1, 1921;

’

“Meanwhile, since the phenomenon of cracking

was not controlled by any fundamental patent. other

concerns [than the Standard of Indiana] had been -

working independently to develop commercial pro-

of their own. Most prominent among ‘these

were the three other primary defendants, the Texas

- Company, the New Jersey Company, and the Gasp-)\

; line Products Company.” | ;

-And at page 175:

“Up to 1920 all cracking plants in the United States 2

were either owned by the Indiana Company alone,

or were operated under licenses from it.”

The application for the Dubbs patent. in suit was, how-

ever, filed a year prior to the date as of which Mr. Justice

Brandeis marshalled his facts for the above quotations.

The inventor (Carbon P. Dubbs) had been literally born

and brought up amid practical oil men, his father’ ( Jesse

A. Dubbs) having himself- been an inventor ‘and refiner

who worked in the distillation and cracking arts (I, 391,

392). C.P. Dubbs was not affiliated with or financed: by”

any great oil company v1, 376). The Universal Oil Prod-

ucts Company (petitioner herein ), of which Dubbs “was -

quite a substantial stockholder” (1, 376, 392), -and with

which he was associated, was not itself a refiner or mar-

keter of petroleum but was solely engaged in research and

development in the field of oil technology (ibid:). It was

"as a small compaity, privately financed (I, 376), that it en-

abled Dubbs to make this discovery of the principle of

- “clean circulation” and to develop his operable process for

its practice. .

While Dubbs was working, re Standard Oil Company

of Indiana was dominating the field, and The Texas Com-

pany, the Standard of New. Jersey and the Gasoline Prod-

ucts Company, as well as other such companies as the

Royal Dutch-Shell Group, Standard Oil of California, the.

Sinclair and the Gulf Companies, were spending millions

of dollars and employing hundreds of men in cracking re-

search and‘experiment. They were seeking one objective:

“to soive the carbon problem (F. F. 9, VI, 3054). |

All these great companies had realized, ef course, that

“baich” process was insufficient ; they were searching for

_ continuity of operation. In its simplest terms; every process

which was being -dev eloped at the time of Dubbs’ advent, in

the: hope of improving upon the Burton and Burton-Clark

processes, evidenced the workers’ conviction that it. was

- desirable to -have a cirevlation, or cycling, ‘of, the uncon-

ver ted oil to the heating zone. .Every such ‘process dealt

with: a feed of liquid oil to a tubular heating zone; crack-

. ing of,the oil under heat and pressure, part of the oil being

generated into vapor; releasing or liberating the vapors in |

- a drum or shell; obtaining, through condensation of part ot

the released vapors, the ultimate end product known as

“pressure distillate”; and returning part of the non-volatil-

ized oil to-the heating zone so that it might be run through

or cycled again with the fresh feed. Such dev clopments are

_exemplified by the Trumble process of the Shell Company

(I, 508-9) and the Hanna ‘and Richmond stilis of the

Standard Oil of California (11, 554;-p. 14-5, supra).

The dominating thoug’:t was that. a continuous run must

be obtained by cycling round and ‘round ‘the’ oil unconverted

to pressure. distillate, including the unvaporized -residue.

The mechanical ingenuity of the industry was concentrated

on the problem of how to build and adjust plants whereby

~ this could be effected and yet the carbon problem avoided:

This record gives ample: evidence that ingenuity of

mechahics was being displayed to the full by the industry.

Great refining companies were employing a large staff of

engineers und chemists; were building small and large scale

experimental plants (F. F. 20-2, 24, VI, 3056-7). There

. were naturally many variations in the particular types of

‘plants, between the different companies and within each

company. Yet all failed (F. F. 20, VI, 3056).

The Texas Cesaiee a |

The Texas Company was working on the development -

_ of a variant of the Burton process, known as the Holmes- .

_ Manley process, characterized by a vertical shell, heated in

the middle part of its vertical walls, and by the return of

the reflux condensate (or “backtrap”), as in Burton, to

. the heated cracking and vapor liberating: shell, where it

commingled with the residual oil (11, 977-8). It was not

until long after Dubbs’ advent that The Texas Company

converted its Holmes-M: anley stills to. clean. circulation ©

(F. F. 26, V1, 3058).

_ Respondent's witness Behimer, who at the time here.

‘involved’ was-one of The Texas een ’s leading t tech-

_ nologists testified (1, 327):

a “Following the work of my experimental plant

in 1917 they built a commercial experimental plant

which consisted: of two and one stills, with three

batteries, and later they built a pilot plant with four

stills in-order to test the commercial plant of -twenty-

four stills which they interided to build later. Those

preliminary plants and the twenty-four still plant

_ were known as Holmes-Manley, and not Behimer.

“The Holmes- Manley, type of plant did not in-

corporate the return of the reflux to the coil, It. was

not a clean circulation plant.”

The Royal Dutch-Shell Group

The Royal Dutch-Shell Group was working under its

Trumble patent 1,284,884 (issued to the Shell Company of

California on, October ’5, 1918; ], 508). This development .

was under the direction uf the witness, Daniel Pyzel. He

witnessed a run of the operation of the Dubbs plant at Inde-

‘pendence, at the end of 1918.or the beginning of 1919 (1,

505-507; F. F. 22, VI, 3056-7) and compared it with his

_ own Trumble operations and with the Burton and Burton- _

“Clark operations of the Standard of Indiana ie 509). As

to’Trumble, he ‘said (J, 510) }.

= 2-8 after witnessing thie cperation of the

plant in Independence, I realized that we had made

in this work a serious mistake, which was the re- —

turning of the heavier residual liquids from the

ev aporator to the cracking tubes.

“At the Dubbs plant at Independence such heavy

residual liquid was not returned to the tubes, and

only the raw oil mixed with the condensed heavy

distillate entered those tubes. The result was that

in ‘the Dubbs plant at, Independence the difficulties

with coke forming in the tubes were very largely

elinlinated, but this same difficulty .was practically -

the failure of our own efforts with the Trumble

eanal

The District Court found (E. F. 22, VI, 3056-7 ) that

Pyzel, after

“* * * he observed the operation of the Dubbs ex-

. perimental plant at Independence, Kansas, * * *

repotted to his company that the Dubbs process

eliminated the difficulties which Shell had fermerly

-experienced in its efforts with the Trumble process.”

}

”

eer

‘He was candid about his own failure, and contempo-

raneously wrote to a senior officer.of his Company, Mr. Van

. der Gracht (I, 510; PX 520, IV, 1729) that, although it

was “more or less disagreeable” for him to say so, the

Royal Dutch-Shell Group had been “beaten” by Dubbs, —

_ concluding (1, 511):

“T take it that our company intends to act with |

complete fairness in this matter and would consider

it unfair to follow the general miéthod of working:

of the Dubbs process, circulating however a very

small quantity of residuum in order to be able to

call it a converter.” °

Pressed on cross-examination, Pyzel described his feelings”

when he saw the Dubbs invention in operation at Inde-

pendence (I, 533):

“And.then when we saw this apparatus at Inde-

_ pendence, Kansas, I said, ‘My God, why didn’t 1

think of that, to take that residuum out and have

only clean refiux go back.’",And that is the reason

that we wanted to make the agreement with Dubbs,

and that is why I expressed in that other letter in

which I said, ‘Well, we ought ¢o recognize that we

have been beaten by Dubbs.’ That was the only

thing, but in our various. experiments wé tried to,

increase that gasoline production.”

It is a reasonable. inference that this wertb-adte

group of petroleum companies would not have accepted a

license, compelling the payment of current. cash Toyalties

to a little group at Independence, Kansas, ‘unless they were

absolutely convinced of the necessity therefor (F. °F. 20,

VI, 3057). Indeed Pyzel’s contemporanedus letter to Van

der Gracht recognize this factor of pride so difficult to

swallow (I, 511):

34 . C =

“Therefore, I can only -say ‘that, as far as the

cracking of gas oil into gasoline is concerned, we

are already beaten in advance, and I think it is better —

to acknowledge this, than to hang on to a lost cause ,

for sake of .personal or ‘company’ pride.”

The Standard Oil Company of California.

While Dubbs was.making his invention and filing the

application for his patent, Standard Oil Company of Cali-

fornia was working ynder license from Standard Oil of

Indiana for the’ Burton. and Burton-Ciark’ processes (II,

553-4). The work was in charge of the witness, Richard

~W. Hanna, vice-president of the California. Company (II,

553-5).- He found by experience that the Burton process

was unsuccessful in that the cost of production of gasoline

. (25¢ per gallon) was excessive (II, 554),* and that the

Burton-Clark process was likewise “not a practical commer-

cial operation for us” (II, 554), as “The total cycle did not

exceed 60 hours, with a thircy- -six hour production period,

the balance consumed in cleaning the tubes and shell, start-

ing up and shutting down” (II, 554). The licénse fron

Standard of Indiana also “included the right to operate

under all of the Texas Company patents” (II, 554) (cf.

Standard Oil Company v. United States, 283 U. S. 163,

168); but The Fexas.C ompany rights ‘did not — solve

-California’s problem.

California employed seme 200 technicians and had spent

upwards of $5,000,000 on experimental work‘ (II, 554,

- 564). After the Burton-Clark process, it then experimented

_. with the so-called Hanna stills, built 35 of them, but found

*The California Company was working with a heavy type of

gas oil.

35.

them likewise “not commercial” (iT, 554), and then turned:

to the so-called Richmond stills (see p. 30, supra) ; but again «

there were “not commercial” (II, 554). “This was in 1923”

(11, 554). Thus, four years after Dubbs had demonstrated

his work to the Royal Dutch-Shell and to the Mid-C onti-

' nent refiners, the Standard Oil Company of California was

still struggling with the problem, without being able to

attain a commercial result; yet “At this time we had spent

upwards of five millions of dollars and employed around

two hundred technical men in experimental and laborate ry

- work in an attempt to solve cur cracking problems. The cost

ot maintaining this laboratory was a million dollars a year,

“and: I had the full responsibility” (Hanna: 11, 554-5).

_ It was at this point that California’s engineers visited

the Dubbs unit operated by Shell at Martinez, California,

“and there observed absolutely clean circulation, and we

immediately realized that is what we were after and started

to work on that line of development’ ” (II, 555).

There is likewise a letter in the record from Hanna to

one of -his associates in which Hanna, dealing with the

‘engineers’ report .of their visit to the Dubbs plant, said

(PX ‘533, H, 555):

“In studying over these reports, it said ‘seem

- to me that we have picked up the following: -

“First; Cleanliness is next -to godliness. |

“Second : That the. Dubbs people — us in

appreciation of cleanliness.”

Reception of Dubbs = the Industry

Royal Dutch-Shell Group

The first Dubbs license was issued to the Royal Dutch-

Sheli Group on December 12, 1919 (PX 521A, IV, 1734),

and set the model for Dubbs’ licenses. Jt contained no

provisions for restrictions of territory, for control of price

or marketing conditions. It set a fixed royalty of 15¢ per

barrel of through-put and then licensed the Royal Dutch-

Shell. operating subsidiary ( Roxana Petroleum Com-

‘pany ) under ail of the patents and applications tor patents

of the petitioner. ‘The Shell people made it plain, however,

that, what they. were primarily seeking in the license were

rights under the Dubbs patent in suit (I, 523).

Standard Oil of California —

~ When: Standard of California first became aware of

‘the clean circulation principle in operation at the Shell plant’

at Martinez (11, 555), it did not realize that it needed a -

license for the use of the process. But the issue of the

_ Dubbs “overhead feed” patent No. 1,488,325 (VI, 3416)

in March 1924, put the California people.on notice that

there was patent coverage of. clean circulation and caused

a patent search to be inade. Hanna described what followed -

(IT, 555-60): “Asa result of that investigation, Lyon and _

Lyon, our patent attorneys, brought to-our attention an

earlier patent, Dubbs 1,392,629, issued October 4, 1921

_ [the patent.in suit }’” (II, 556). The ’629 patent was then |

in interference with the Behimer application ; Messrs. Ly on

and Lyon made an independent study of. the inter ference

and recommended that a license under the Dubbs patent — >

be obtained from Universal (II, 557, 580).

Liké the Royal Dutch-Shell people, the Standard Oil. :

of California at once concluded that honesty- required.

them to seék a‘license. “We sent for Mr: Halle* who

*President of the petitioner. |

. . »

37 |

arrived in — 1924. We spent several | weeks trading

- and negotiating” (II, 557). jHanna testified that he at-

tempted to obtain the rights ily under the Dubbs patent

in suit and the other.Dubbs patent (No. 1,488,325) but

eventually accepted one of\ p

the cost” (II, (581).

” Royalties Paid by Shell. po Standard of California

By 1930 the Shell people were paying royalties of the

order of $2,000,000 per annum riet (1, 524). In 1931 they

paid $.7,500,000 for a fully. paid-up license for future oper-

‘ ations (1, 523-4; I, 598) ‘and invested a‘further $3,000,000

_- in notes of Universal. :

The royalties paid to Universal on a through-put (fresh —

oil charged) basis by Standard of California amounted °

to $2,500,000; and in 1931 California paid $3,000,000 more

for a fully paid-up license covering future operations (1,

254; II, 598; 560). =

The 1931 payments by ‘Shell and iuiiigel G Cali-

fornia were part of a transaction by: which the stock of *

Universal was purchased by them, and a settlement made

of the pending patent ie with several other large

refining companies (A, 524).

Independent Refiners

After the Royal Dutch-Shell Grew had taken a license

er 1s, Universal, having designed standard Dubbs units,

he rights under the Dubbs patent and improvements

thereof available to everyone in the industry. Prior to-the -

made

installation of theaccused Winkler-Koch (Globe) process.

_Universal’s licensees had over 256 units in operation for

'. practicing. the Dubbs process; these installations cost the

itioner’s standard license |

agreements (II, 557). He did so “with our eyes open as to

“n

~ 190,000,000 Dyrrels of oil (PX 586, -587, IV; 1818-

22). This cover\ the period 1922-1929. In 1922 there wa’

iNe the names of the licefisees, and the:

; of their wnits.. These inchsded re-

fineries in fourteen difftrent states and in fourteen foreign

countries. The licensees Within the United States included

32 independent refining companies in addition to the com

panies of the Royal Dutch-Shell Group and the Standard of

California (PX 587, 1V, 1820-2}.

This policy of Universal,—to license any refiner, and all.

at a uniform royalty, and without limitation as to sales

. price of product, territory of sale, or marketing terms,

remained in effect throughout the life of the patent in suit.

Every Universal license was granted under all patents. and

patent applications, present and future, owned or controlled

by Universal in the licensed field.

Abstracts of exhibits placed in. the record show that the

grand total of royalties paid to petitioner from 1922 ta

December 31, 1930, by the Shell Group and the Standard

Oil of California was $17,146,004.36, and by 37 domestic

,and 11 foreign licensees, duting the same period,

$16,430,492.04 (11, 597).* ay scare

The royalty rate fixed by, Universal at the time of its

first comprehensive license.was 15¢ a barrel through-put.

This was reduced by the company in 1934 to 10¢ a barrel,

and upon the expiration of the 1,392,629 patent in suit was

- reduced to.5¢ a barrel, effective October 1, 1938 (11, 596).

exhibits just cited

numbers and capaci

*The abstract of PX 572 in IT, 597, is in error in attributing :

the grand total’of $33,576,496.40 to the Royal: mous Shell and

Standard of California only, ;

Conflicts of Universal with the Standard Oil .

Companies of Indiana and New Jersey:

Standard of Indiana abandoned the Burton-Clark stills

in favor of the clean circulation process. It called its clean— —

circulation. units “““Holmes-Manley”, which was the name

given by The Texas Company to the.units that it had

developed, -and- in which, long after the Dubbs demonstta-

tion runs, it had applied the clean circulation principle.

‘The Texas Company had thereafter licensed the use’ of

these units to the Standard of Indiana. (under the agree-

ments which were the subject-matter of the anti-trust suit in -

Standard Oil v. United Siates, 283 U. 5.° 163). These

“Holmes-Manley” units were first installed by the Indiana

Company at-Whiting in 1924 (I, 490) ;-and the last Burton

* tube stills ( Burton- Clark) at Whiting were discontinued

about 1928 or 1929 (I, 503).

~ Meanwhile, on January 28, 1926, Universal -had eis

suit against Standard of Indiana (PX. 567; IV; 1790) on

_ the Dubbs patent and several improvement patents.

On April 11, 1930, Universal also brought suit against

- Standard Oil Company of New Jersey for infringement of

- the Dubbs patent in suit and various improvement patents

(PX 568; IV, 1791). P

These suits, as well as certain other litigation, were all

settled in 1931 by cash. payments to Universal: (1, 524; I,

560, ei

Conflict with The Texas Company

When Dubbs made his invention The Texas Com-

pany was developing a process which was .a variant of

the Burton process and did ‘not. embody clean circulation —

(p. 31, supra). But it had filed, in the names of Holmes,

' 40

Manley and Behimer, an application covering the clean

circulation principle, although it did not kriow how to

_work it (F. F. 26, VI, 3057-8). The names of Holmes |

and Manley were later withdrawn, and Behimer’s name

stood alone upon the application. In 1923, the Behimer ap-

_plication went into interference with the already issued

Dubbs patent. The interference proceedings were continued

from. 1923 to 1931, when they were settled through a dis-

claimer by Behimer of the broad claim to the invention of

' - the clean circulation principle and his rétention of narrower -

claims to the operation of that principle with the use of a

‘pump (PX 829; IV, 1868). -Upon. these narrower claims,

. Behimer's patent. No. 1,883, 850 (VIL, 3494): was issued

in 1932.

The Behimer patent. will remain. in ‘effect until 1949:

whereas the Dubbs patent in suit expired in 1938.

The Winkler-Koch Group (including the respondent Globe) |

Respondent is a commercial refiner. The - accused

Winkler-Koch process was practiced at its refinery at

Lemont, Illinois (1, 473).

In an industry with as many independent concerns as

exist in oil refining, it is not surprising that there -

were exceptions to the general rule of universal recog-

nition of the Dubbs patent. It was,. however, only a limited

group ‘of companies in the industry that set out actually’

to ‘!pirate” the Dubbs process,—to use the Dubbs invention

but not to-acknowledge it. These companies were grouped

_ together in a “Patent Club” under the aegis of former

_ employees of petitioner itself,—*‘post-graduates of Uni-

versal” (as they described themselves ; IT, 632), who had —

Seniasd the Winkler-Koch Engineering Company which ne

signed-or built plants for the respondent Globe Company,

a for the defendant in the Third Circuit (Root Refining:

“~Company ), and for several other companies (I; 44-51). |

' From the outset each of the members ofthis Patent Club »

contributed to a common fund with which to retain lawyers

and experts for defense in litigation (I, 40-51).

The accused process is the same as that vhich’ was in-

volved in the Root case. It is illustrated in‘Plate V of the

Supplement (PX 508, IV, 1705), is described in detail by

; petitioner’s expert Dr. Brown (II, 682-7). And its opera-

tion has been stipulated in this case (I, 473),

Application of the Dubbs Claims to the

: Accused Operation — @&.

- In determiniag infringement of the Dubbs patent, it

will suffice to consider claim 7. only, which has been treated

as typical of those in suit (Dis: Ct. Op. VI, 3038; C. C. A.

Op. VII, 3577). 7

This claim is broken down below into its several steps:

and the respondent’s operation is described by reference to

Plate V..

“A: process of cracking oil”,

The accused process is a cracking process.

—‘consisting in continuously passing a stream of |

oil - ‘through a series of tubes seated in a cracking

“zone" sti

The stream of oil is the mixed feed drawh from the bot-

tom of the partial condenser or “bubble tower’ by a high

42 \

pressure pump, which forces it a a pipe comprising

"a series of tubes located in the “ ‘high 1 pressure furnace”

shown at the left hand side of plaintiff's Exhibit 508 (II,

760; IV, 1765; Plate V.).- The furnace chamber in whic

‘these tubes are located constitutes a cracking zone. On

Plate V the mixed feed is shown by. the horizontal line col-

ored green and red near the bottom of we Plate.

—“where the oil is heated to the’ cracking tempera-

ture but substantial gar anae prevented”

The oll 3 in its passage through the pipe coil in the high

pressure furnace is’ heated to a temperature of 940° F.

This is a cracking temperature. In the pipe coil, vapors are

“generated, but the liberation of the’ vapors from the non-

volatilized oil i is. prevented (II, 682-3; 724).

“thence to an enlarged’ vapor chamber where va-

porization takes place” - er...

The oil passes from the pipe coil in the on pressure

furnace into the separator, or vaporizing chamber, which

is 8 feet 6 inches in diameter and 41 feet 3 inches in height.

There, at a point about 20 feet aBove. the bottom of the.

vaporizing chamber, the vapors liberate themselves from

the foamy mass issuing from the cracking tubes of the pipe

coil and rise into the upper part of the vapoxsizing chamber

{1ITp 1158-9). No

“removing the vapors from said chamber”

In the accused process the vapors pass from the top of

the separator (through “heat exchangers”, not material to

the present controversy) into the “buoble tower”, shown

at the right central portion of Plate V (III, 1159).

—subjecting them to an initial condenser when a

. portion of the vapors are condensed” -_

This occurs in the “bubble tower” (the name used by

the accused process for the initial condenser). There part

‘of the vapors which come over from the separator are re-

duced to liquid and form the “reflux condensate”, which

flows by gravity to the. bottom of the bubble tower (III,

1159). '

The vapors not liyuGfied in the partial condenser or

bubble tower leave the top thereof and flow into the final

condenser shown at the right hand side of Plate V, which

effects the final condensation of such vapors into “pressure

distillate” (it, 1159).

—"returning the condensate from said initial con-

densation to the inlet side of the cracking tubes”

The reflux, condensate passes from the bottom of the

“bubble tower” through a pump—(as shown by the red

part of the red and green colored line near the bottom of

Plate V)— into the eritrance end of the pipe-coil in the high

pressyre furnace; through which it is cyeet for further

cracking (IIT, 1160).

& ‘continuously drawing off the residue from the

vapor chamber and preventing it from returning to

the cracking zone”

The residue from the vapor separating step occurring-in

respondent’s “separator”, or vaporizing chamber, flows

from the bottom of the latter thr a cooler to storage. -

“ae

“Iti is not cy cled to the pipe coi! in the high pressure furnace |

(II, 1160).

~S ‘maintaining a Pressure on the oil dorini treat-

ment”

In defendant's operation a superatmospheric pressure |

is maintained in the oil. during treatmefit. The pressure

ovaries from approximately 660 pounds at the inlet to the

‘pipe coil in the high pressure furnace to 16 pounds in the

final receiver for the pressure distillate. In the partial con-

denser it is 24 pounds; and 1 in the vapor separator it is ” .

pounds.

‘The Eglo Patent

Fhe policy of Universal Oil Products Company, as al:

ready described, was'to continue with research and: develop: |

ment designed to dev elop and improve the Dubbs process.

In the cotirse of that work, various improvement patents.

were from time to time granted to- Universal, all of which.

Universal immediately made available to. all of. ‘its licensees

without any additional charge of any sort (see e. 9-1, 557).

The licensees w ere free to use or not to use the various im-

_ provéments* as they saw fit. Some were used; many were

not. Different plants used different improvements, although

all of them were based on the principle of the Dubbs

| patent.

So of infringers. They use the Dubbs patent. Some

used certain improvements, and cthers, others. Some meni-

bers of ‘the Winkler- Koch Patent Club; Root and Globe

| among them, used the E glotf improvement in suit.

*For. a description of some of f these’ improvements, omnet than

Egloff. see If, 609-11.

‘w

PORE E LILES Ds Ee cre GN | Bees S A Sra ITE

co. ae 45

There is no claim that this patent was heechiticnnsy..

But‘the petitioner does claim that the invention is beneficial,

as is perhaps best evidenced by the simple fact that re-

_-spondent used it. It not merely has utility; it has novelty:

it provided a new’ and original conception of improving

_ the quality of the raw oil which is te sd to the Dubbs clean

circulation process. .

Claim 2 of the Egloff patent, which was taken as typi-

; cal in the District Court, reads as follows (VII, 5996)

“2.. A process of-oil conversion, consisting ’ in

maintaining a body of heated hydrocarbons in an

enlarged zoné where substantial vaporization ‘oc-

curs, in subjecting the vapors to reflux. condensa-

tion to condense the heavier fractions of the vapors, .

in passing retlux condensate in an advancing stream

through a heating zone where it is subjected to a

cracking temperature, in delivering the heated con-

densate- to said’ enlarged zone, in simultaneously

heating.an independent stream-of charging stock to

a cracking temperature w hile under a superatmos-

_ pheric pressure, in introducing said heated charging

stock to said enlarged zone in which zone the charg-

ing stock and heated condensate physically com-

mingle, and in maintaining the ‘stream of reflux

_ condensate while being heated under a superatmos-

pheric pressure exceeding: the pressure maintained

on the stream ot. charging stock.”

The apparatus of the E gloff patent (VII, 3095) is illus- .

trated in Plate IV of the Supplement. “When Egloff entered

the field, the Dubbs process was in use. But Egloff realized

that some oils were’ particularly rich in potential carbon

~ forming materials and. were, therefore, not as favorable

a feed stock for the Dubbs :process as other oils, al-

though usable therein. Egloff invented a process which

involves integrating w ith, .the Dubbs proeess a preliminary

. step, Whereby; at a a minimum installation and operating cost,

these less desirable oils are transformed in considerable part

"into cracking stock or “fresh feed’’ more suitable for drastic

cracking in the Dubbs process (11, 666-7).° To this end

Egloff provided a low temperature, low pressure coil (7)}.*

through which the less deSirable oil is’ passed, for effecting

a mild cracking. The oil thus treated then joins the stream

from the high temperature, high pressure coi! (6) [“‘crack-

ing tubes B” of the Dubbs unit], and the two, intermixed,

are discharged into a single vaporizing chamber (12}

[ “vaporizing tubes C” of the Dubbs unit}. The common

residue is drawn of from chamber (12) and not cycled.

The vapors liberated f rom the mixed stream in the vaporiz-

ing chamber pass off into an initial-condenser (21). The

condensate formed-in the initial condenser (21) from the

. Vapors emanating from’ the oil charged to thé low tem-

perature coil (7) constitutes the fresh feed for the coil (6).

and the:condensate formed in the initial condenser from the

vapors. of the oil that has passed through the high temper

ature coil (6) corresponds. to the “reflux condengate” ot

the Dubbs process. The fresh feed and the reflux con

densate thus formed pass together through the high tem

perature coil (6) and thereafter’follow the course above

described. The vapors .passing from the initial condenser

(21) follow the course hereinabove stated in describing the

.Dubbs process (II, 667-9).

——s.

*The numbers in the above paragraph correspond to those

used in the patent. -See Plate 1V, Supplement

The preliminary treatment of the less desirable oil by

distillation accompanied by mild cracking in coil (6) and

chamber (12) creates a more desirable distillate oil for use_

as charging stock in the Dubbs part of the combination.

- Thus the Egloff invention is an important improvement

over D-abbs in that-it preliminarily treats, screens or cleans | -

the raw oil before it ‘travels to the Dubbs part of. the’ unit

and permits cracking of the oil under conditions more ad-

_ vantagéous to its characteristics, with better’ results than

if the less desirable oil were charged directly to the high

temperature coil of the Dubbs part of the combination.

Respondent's expert Smith; in describing respondent’ S-

operation, attributed to it the very characteristics and ad-

vantages of the Egloff combination (IIT, 1123):

“In the low temperature, low pressure furnace

we charge a topped crude, and in the high tempera-

ture, high pressure furnace we are charging a clean

gas oil stock. The reason for that distinction is

that the topped crude would not be suitable for

charging to this high pressure furnace and for sub-.

jection to the conditions prevailing in there because _

the topped crude. contains so much of this dirty

- asphaltic material that if it were cracked to the ex-

tent that the oil is cracked in the high pressure

— furnace -it would very quickly fill up some of .the

_ tubes with coke and our operation would have to be

shut down.

“If topped cruile were fed to this cracking fur- -

nace, then to operate it successiully. we would either

have to operate with a very short run or we would

have to alter the conditions <9 that we would not °

crack nearly so much of the material inte gasoline.”

Application of the Egloff Claims to the

‘. Accused Operation

In ditniiiedag the infringement of the Egloff = it

will sufhice to consider claim 2. a

This claim is ‘divided below into its sev ona steps,. and -

after each is given, the corresponding step of the accused :

process. In this explanation reference is particularly made

to plaintiff’s Exhibit 508 (Pl. V of the supplement ). Thus:

“A process of oil conv ersion”

Defendant’s process is a cracking process.

—‘consisting in maintaining a body of. heated

hydrocarbons in an as zone where substantial

vaporization occurs’

In defendant's operation the enlarged zone is provided

by the 8’°6” x 41° 3” vessel designated ‘separator.’

The body of heated hydrocarbons i is the column of foam

about 20 feet deep in the bottom of this separator w hich

_ contains 16 barrels of liquid oil and vapors. Cracking

occurs in the separator resulting in the formation of vapors,

‘and ‘producing 105 barrels of gasoline per day (II, 671).

‘The vapors thus generated are separated-from the oil. on-

sequently, there i is “substantial vaporization” in the separa-

tor.*:

—“in. subjecting the vapors to reflux ‘condensa-

tion to condense the heavier fractions of the vapors”

| *This.is so, whether the word “gaporization,” as used in the

Egloff patent, be deemed to mean vapor generation or vapor sepa:

‘ration, since both phenomenz occur in respondent's separator

Consequently the Egloff claims do not present, the same issue

as the Dubbs claims.

——

This occurs in 1 the. “bubble tower”. The heavier parts

of the vapors are there liquefied to form ——

—“in passing reflux condensate in an advancing .

‘stream through a heating zone where it is subjected,

to.a cracking rote, sida acl

The condensate. formed in the partial condenser or

“bubble tower” is withdrawn from the bottom thereof and

is forced by a feed pump into and through the pipe coil in

the “high pressure furnace” shown on the lower leit corner

. of Plate V, where the oil is heated ta a drastic cracking -

temperature, 940° F., under a anil bataanien of 500 Ibs.

. oa square inch. . ve

—“‘in delivering. the heated condensate to said en-

larged zone” ,

The sibs aforesaid passes from the pipe coil in’

the high pressure furnace through a-transfer line colored’

red on Plate V into the “separator” aforesaid.

“in simultaneously heating an independent: stream

of charging stock to a cracking temperature while

under ra a superatmospheric pressure”

This occurs when the topped crudé stream is pumped

through the low pressure pipe still (under the flap attached.

to Plate V) under a pressure of 260 pounds per square

‘inch, as indicated by a green line on Plate V of the Supple- _-

ment. The oil is heated during its passage through this

pipe-still to a cracking temperature (720° F.) and is fur-

ther heated by contact with the hotter stream from the

companion high pressure pipe- -still, when the streams from

the two furnaces mix together.

— "in i producing said heated charging stock to said

_ enlargetl zone in which zone the charging stock and

heated condefisate physically commingle”

The independent stream of topped crude charging stock

- initially heated as: stated. passes through the transfer line

colored green in Plate V of the Supplement. After conflu-’

ence thereof with the oil flowing through the (red) trans-

fer line from the high pressure furnace, the two streams

commingled pass ‘into the ‘ ‘separator” as indicated by wa

green and red line leading to the separator on Plate V.

—‘in maintaining the stream of reflux ilies

while being heated under a superatmospheric pres-

sure exceeding the pressure maintained on the

stream of charging stock”

Plate V shows that in respondent's operation the mini-.

-mum (outlet). pressure on the condensate stream, “while

being heated in the high pressure pipe still, is ‘500 pounds —

which exceeds the maximum (inlet) pressure t#260 pounds

on the crude oil stream penning through the- low a.

furnace. |

OPINION, FINDINGS OF FACT, AND CONCLU-

SIONS OF LAW OF THE DISTRICT COURT.ON THE

ISSUE OF VALIDITY |

| (?) C onclusions of Low

_ The ultimate conclusions of law of the District Court

~ were that the Dubbs patent is valid, and that the Eyloff

patent is invalid for lack of invention and for lack of

utility (C. L. 2 and 12, VI, 3060, 3061).

(ii) Findings of Fact on Validity of Dubbs

The relevant findings of fact of the nsiccaia Court on

validity (V1, 3052- 3058), are:

The Burton and Burton- Clark processes of the, Stand-

ard Oil Company of Indiana, constitute the state of the art

as practiced commercially - when Dubbs appeared on the

scene (F. F. 9).

Burton had several disadv antages :

(1) That it obs 700 a 24-hour shutdown after only

a 24-hour .““on stream”; (F. F. 5-6)

(2) That the accumulation of sinielasioneiae mate-

~ rial [coking] w ithin’ the wall and on the bottom of .the

. shell caused “hof spots” to appear with resulting ex-

plosions, causing loss of life-and property damage;

- (¥. F. 7-8). :

(3). That only about 28%0.of the total charge in the

Burton process was recov erable as gasoline, although

the process required “a clean | gas oi? stock” as a charge.

(F. F. 7-8)

Burton-Clark, dient an improvement over Burton,

“had similar disadvant>ges : |

" . (1)-That it also operated only 36 houra ‘on stream” -

__and then had to be’ shut down for 36 hours;

. (2) That otherwise the “hot spots” would result

. from the accumulation of carbon [{coking}-(F. F. 7-8).

This left the problem to be solved—to crack the heavier

hydrocarbons to produce gasoline without coking: up the -

‘vessel in which the cracking occurred (F. F. 9).

Dubbs solved the problem F. a

52 7

The District Court then described the incnetiem of the

~ Dubbs process'as he understood it (F. F. 10}, and its

resuits,—that the depositiot of carbon and carbonaceous

material resulting from the cracking operation occurs: ina *

safe place, and the carbonaceous residue is then withdrawn,

and the reflux condensate is not returned either to the

‘shell or to the C tubes containing the carbonaceous residue

‘but is returned to the entrance end of the B tubes with

the fresh feed, enabling the operator ‘to operate the appa-

ratus for a long period of time as was shown in practice —

ina demonstration rlin at Independence, Kansas fin 1919}

when the system remained “on streain” nine days and was

shut down then because the oil men who.came ‘to witness

the demonstration said they were satisfied (F. F. 11).

The Dubbs process was recognized immediately by the

larger oil companies as a-great improvement in the art

and the older processes,, of producing yasoline were prac-

titally abandonéd (F. F. 12).

.The’ Dubbs process taught what is known: as the ;

2 principle of clean circulation (F. F. 13).

The District Court then considered the teachings of six

patentees that had-been put forward by the respondent as

- constituting prior art, and concluded as to each of them

- that they do not teach the clean circulation process to those

skilled in the art (F. F.13): - -y 7% .

(1) Pielsticker does not disclofe return of clean.

reflux unmixed with residue to the heating tubes, and,

. indeed, it appears ‘to be nothing more than simple dis- :

‘tillation (F. F. 14). a : a1

(2) .Hall describes a vapor phase process, a proc-

ess negatived by Dubbs, does not teach a cy. cling process

at all, and although tried out ‘by The Texas Company,

proved ee (F. F. =): |

+53

(3) Ellis discloses a vapor phase process and does

. not teach recycling oft he reflux, and, indeed, the con-

struction of the system prevents the return of reflux

condensafe to the heating tubes (F. F.,60).

é“ (4) Alexander is very confusing i in its description

and claims, does not teach.the Dubbs process, and, in-

deed, was proven in practice to be of no practical use

because the Gulf Oii Company experimented with at

least one of its variations at a cost of $1, en, with

resulting failure dy F. 17).

(5) Biddison qd Boyd teaches three. systems, of |

which the one asserted to anticipate Dubbs is not clear,

but is, in any event, a vapor. phase system and does not ,

teach a circulation with return-of clean reflux to the:

cracking tubes (F. F. 18). )

(6) Greenstreet does: not disclose the return of

clean reflux, for the reflux contains the carbonaceous

residue (F.. F. 19). |

That the prior art did ‘not teach clean circulation .is

shown by the fact that the great oil companies such as

Texas, Gulf, Shell and the Standard Oil Compaty of Cali-

fornia, with their staffs of highly trained technical experts,

never discovered this principle in the prior art (F. F. 20).

The findings then reviewed; as we havé already done, | -

the failures of those companies in detail—Standard Oil ~

Company of Californa (F. F. 21) and the. Royal Dutéh-.

- Shell Group (F. F. 22). °

The findings-of fact up to this point follow the opinion

almost verbatim (cf. Op., VI, 3035- 3040). and thereafter

the opinion considers in detail, along the same lines as our,

_ Statement of facts above, the failures of the Standard Oil

Company of California, and the Royal Dutch-Shell Group

iin 3041 4043). Te :

As to commercial success, { the District ‘Court found”

that practically all of the large refining companies took out

_ licenses under the Dubbs patents comprising the patents in

suit and certain other patents and paid millions of dollars

in royalties for the privilege. This is more than commer-

cial success. Here the recognized experts in the art saw.

“the Dubbs process as new and revolutionary and no one

was better qualified (F. F. 23).

' The District Court then reviewed in detail the conten-

tion of respondent that Dubbs was anticipated by Behimer,

then an employee of’ The Texas, Company. Experimental

"plants were erected by The Texas Company but abandoned.

Beéhimer did not. know of any ‘means of returning the reflux

to the heating coils (F. F. 24). His testimony that he had

the idea of returning reflux by hydrostatic pressure is un-

» corroborated and is’ negatived by the drawings of The.

‘Texas Company (F, F. 25)... The Behimer application,

caused to be nled by The Texas'Company four months

earlier than Dubbs, was a paper application, as Behimer

had not conceived the workable process (F.-F. 26).

Dubbs succeeded w here Behimer failed, and the suc-

cess, involving the return of the reflux by hydrostatic pres-

sure, did not involve mere mechanical skill on Dubbs’ part;

Behimer’s failure was due to'a fundamental defect (F. F.

27)... : i oe ee as

(ii) Findings of Fact as to: Egloff

As to Egloff, the District Court contented itself with .

‘finding that the evidence does not disclose any benefit re-

sulting from the separate treatment -of ‘the reflux in the

_patent (F. F. 37) and that the patent was never used com-

mercially (F. F. 38). | ff NO ait Aes

_ respondent itself unquéstionably uses Egloff commercially °

re Sa 55

In these findings the Court was clearly wrong, as the

in the accused. process andthe benefit which respoydent de-

rives from that use is proven.

ws.

(iv) Relation of the District Court's Findings in Favor of

the Validity of Dubbs to the Issues Presented on

This Appeal as to the Infringement of Dubbs

** On the question of validity of the Dubbs patent, there

. fore, the District Court had found that-its novelty was so

great as to merit the adjective “revolutionary” and that its

utility was so great, that it solved the problem which none

of the great companies of the oil industry had been able

“to solve.

The District Court then turned to the issue of infringe-

ment. No finding was made that the accused process avoids

infringement of the Dubbs patent, except upon the ground

that the phrase in the Dubbs claims relating to “substantial

vaporization” in the B tubes must be‘construed as meaning »

that any substantial generation of vapors was inhibited by

Dubbs in the B tubes. The consequence is that +the ag-

cused process, while following closely the teachings of this

revoluticaary and useful ‘nvention, escaped. infringement

because its necessary generation of vapors in the B tubes

‘was not covered by the words of the Dubbs claims, con-

struing fhem as the Court construed them.

As this was the sole issue considered in the opinion of

the Circuit. Court of Appeals, and upon which in conse-

quence the judgiments both of the District Court and the

Circuit Court of Appeals were based, it will be the issue

upon which we will submit a more. extended “Argument”

in this brief. It is appropriate, therefore, that we i

cousideration of the findings of fact and conclusions of

law of the District Court on this issue until the argument.

We will content ourselves here by pointing out that the

findings of fact and ‘conchisions of law of the ‘District

‘Court are in this posture: that they break into two clear

halves. In the first of these the Court gives convi

‘reasons to stfpport. its ‘own conclusion that tiie Dubbs patent.

is a patent of most ‘unusual quality, but ‘in the second) the

Court page ‘ds to deterfnine the question of infringement

as if the half of, the opinion and the first findings of

. fact and conclusions of law had aever been written.

SPECIFICATION OF ERRORS

The errors assigned appear at pages 28-31 of. the peti-

tion. All of them are relied upon. Nos. 1 and 2 are formal.

-Nos..3 to 17 inclusive deal with various aspects of the opin-

ion of the court below in its treatment of the question of

infringement of the Dubbs patent. Nos. 18 and 19 deal

with the itglorf patent.

Q-

Vile

"SUMMARY OF ARGUMENT

The » Dubbs Patent _

Respondent does: not contend that the anceend process

was designed from any inv entions of its own. It cannot

seriously contend that its process stemmed: from the prior

art. It'was sponsored by the Winkler-Koch .Engineering

‘Company, of which two officérs (Winkler-and Perdew) had

been employees of the petitioner and fully advised of the -

Dubbs process; they. styled themselves “post-graduates of

~ Universal”. “Respondent has not disputed that the accused

process embodies “clean circulation” which vitalizes the

Dubbs invention. | . |

The Circuit Court of Appeals conceived, however, that

a phrase used by Dubbs in his claims; with respect te what

Dubbs calls’ the “cracking ‘tubes’ “or “cracking zone” (1.¢.

- the B tubes), i is defined in the dictionaries i in such a way as

to exclude from the scope of the patent claims any process

_ tn which cracking, accompanied by vapor generation, oc-

curs in w hat Dubbs calls the : ‘crackin tubes” or “cracking

zone”

The phrase ‘in the claiins i is: “without stibstantial vapori-

sical (or equivalent, Words ), and, the definition relied ..

upon is that vaporization means any ‘generation of v: Pa

; Respondent says, and the courts below have acquiesced, ‘that,

“no cracking process in which vapors aré ‘generated in the

heating and crackirig tubes infringes Dubbs.

If, as petitioner contends, the phrase prohibits the libera:

-tion of vapors but not the: generation. thereof in the B tubes

of the’ Dubbs process; then ‘the: Dubbs claims read_ upon»

respondenit’s process,as stipulated ‘in this case.

jl icciiaeees . mon Bes :

-_ os ‘ 4 , 4

It is settled law that a ‘patent must te construed as a

’ whole and the claims read in the light of the specifications

and drawi ings.. The Dubbs patent, so read, cannot properly .

be construed except as: petitioner contends. It rejects re-

spondent’s contention ‘that the word vaporization as used _

in the patent inhibits vapor generation. Smith v. Snow,

| SU. Sis. | :

Some dictionaries give to “vaporization” the meaning

contended for by respondent, i.c., generation of vapors.

Others giye it the meaning that Dubbs intended, viz. libera-

tion or. separation of the vapor from the liquid within which

the vapor has theretofore been generated: Others again”

give it both definitions for, indeed, vaporization is net‘com-

plete or useful until the vapor has been liberated or sepa-

rated from the liquid oil. | :

We think the Dubbs patent compels the adoption of

the second meaning, i.v., liberation of vapor. We do not

contend that dictionaries or encycl ypedias or scientific werks

compel the exclusive use of the second meaning. We do not

admit the position of the Circuit Court of. Appeals that they

compel the exclusive use of the first meaning. .\And we sub-

mit that the true view is that both meanings are permissible,

and that in ascertaining which was used in a particular

patent, the principles of Smith v.-Snow, 294 U. 5.1, must

govern. — ~ oe _ =

To determine the meaning of the word “v aporization”

in.the Dubbs claims, we ‘turn, ‘therefore, in the argument

. to an extended analy: sis, |

First, of the patent itself, in, which Dubbs distin

guishes the “cracking tubes” B (where, under his teach-

ing, “substantial. vaporization’ "is not to take place)

’

Jes

from the * ‘vaporizing tubes” C locates \' in the ‘ ‘vaporiz-

ing zone’; \ ‘

and in the of ‘vation of which?zeneration. ‘of vapor

must inevitably take place in the cracking tubes B;

and in which Dubbs refefs to. the fact that a “per

cent of vapors” is genérated, within the C tubes, the

balance of the vapors being obviously generated i in ‘the

B tubes ;

- and in which -Dubbs gives an Mustrative run with

temperatures from 750° to. 860°, at 100 pounds pres-

sure, as to which petitioner’ s expert testified that vapor

generation in the B tubes i is compelled by the immutable

laws of physics, and respondent's expert admitted that

generation niust occur, at least within the upper range

of the temperature zone specified ;

and. in which Dubbs describes what transpires in

his € tubes as a “liberation of vapors”, and also de-

- scribes it by. saying that ‘“‘vaporization takes place”

therein, the quoted phrases being obviously used in the

_ Same sense, wherefore in the description of C tube

operations “vaporization” means “liberation of vapors”:

. and in claims of which Dubbs refers to “a vaporiz-

. BE space above the stream” of liquid. oil in the C

tubes, which obviously must be a space to which the:

vapors move after liberation or separation,—and_ the

patent so states, viz. that it is in the C tubes “that

vaporization takes place”; . er |

and in claims of which there is the step of “remov-

ing the residue [from the C tubes] after said vaporiza-

tion”, plainly connoting that vaporization as there used

means liberation.

Second, of the original claims, in which ‘Dubbs re-

‘cited “passing the oil and generated vapors’ non the

B tubes into the C tubes,-—w hich origi

later canceled -by an amendment ‘insertirig the afore-

said illustrative run defining to the skilled in the art

. the same subject matter with respect to the conditions

existing in the B tubes, which subject matter therefore

remained continuously before the Patent Office.

Third, of the actual demonstration. runs made by.

Dubbs just prior to, and contemporaneously with, the

filing of his application: (a) for the witness Daniel

Pyzel, in charge of refinery operations in the United

States for the international group of Royal Dutch- Shell

companies, and (b) for a group of refiners representing

the National Petroleum Association and the Western

Refiners Association, in both of which runs there was

copious generation of vapor in the cracking zone (the |

B tubes), but ia which,.in accordance with the teachings

of the simultaneously .filed application, there was’ no

liberation or separation of vapor until the vaporizing

chamber (C tubes) was reached. |

Fourth, of the commercial “standard 500 barrel

units” licensed by the petitioner under the Dubbs patent,

256 in number between. 1922 and 1929, in 49 different

refineries, in all of which the same phenomena occurred _

in the B tubes as in the demonstration runs.

&B “ifth, of the fact that Dubbs had spent his lifetime

in the petroleum art and that his patent disclosure ‘is

addressed to, others skilled i in the art, and that to adopt

respondent's coritention is to make Dubbs-look ludicrous

because he would have excluded from the operation of

eye ee a)

the cracking tubes of his detmionstrated process ‘the

‘vapor generation which he and others skilled in the art

_knew to be’ inevitable.

Sixth, of the file wrapper aaah which shows thet

the isda phase was not inserted in the Dubbs claims

to avoid the prior art, and that Dubbs distinguished .

from the latter by the non-cy cling of any of the residue

through the B tubes i‘e., clean circulation, and which

shows the adherence by Dubbs to. his conception of the

_ word “vaporization” as teaching to the skilled in art

—theliberation_or separation of vapors from the liquid

oil, and none of which calls into play in any way the

_ principles of file wrapper estoppel ; cf. Schriber-Schroth

Co. v. Cleveland Trust Co., 311 U.S. 211.

Seventh, of the setiitihe of law, ener summar- |

ized and restated. i in Smith v. Snow, 294 U. S. 1; under

which Dubbs’ invention, ‘constituting (as the District

Court found and as was the fact) a revolutionary and

constructive advance’ in the art, is entitled to a liberal

construction of the claims and is such a meritorious

invention that, if the claims be fairly susceptible of two

- , constructions, that should be adopted which will secure

to.the patentee his actual invention, rather than to es

“- construction fatal to the grant.

Eighth, of the knowledge had at the time of the.

Dubbs patent by those. skilled in the art, which, as

_ indeed was laid down in express terms in Trumble

1,281,884, granted the previous year, was that in the’

- the body of the oil due to its’ rapid motion and high

velocity perming ‘a foam.

heating zone the vapor remains intimately mixed with - \

, . Ninth, ot the expert testimony establishing that if

. Dubbs is operated in the manner taught by the. speci-

fications “you inevitably get that condition”, “you can’t

help yourself”, and the principle a ragga ia

‘i condition “was well appreciated” i in the : art.

The opinions . of the District. Court and the Circuit

Court of Appeals inthe Root case ( 6F. Supp. 767, and 78

F. (2d) 996-9) correctly grasped these poin‘s; but the

learn | courts below fell into error ‘upon the ne

grounds :

A. The Distiict Cor ourt

{a) found ‘that no ciihing-s takes place in the B.

tubes and that, therefore, no generation of: vapors

Nes.

takes place in the B tubes was erroneous on the facts.

Petitioner's expert explained that the Dubbs patent.

‘itself. plainly taught cracking in the B tubes, and

that by the laws of physics governing the operation

taught by the. Dubbs patent, cracking and vapor gen-

eration must necessarily take place in the B tubes at

‘the temperatures and pressure specified .by Dubbs.

Even ‘respondent’s expert was compelled to make the .

same.atiission in respect of the upper part of the

temperature range specified by Dubbs; and An re-

. spect of the lower part of the temperature range he

was required, in,order to stipport the meaning as-_

cribed by him to the word “vaporization”, to —

from the teachings of Dubbs.

(b) The learned District Court next ventured

the thesis. that Dubbs himself had no clear idéa of

63 |

what was henoiidenr] in those tubes. But this diemey,

‘inherently most unlikely, becomes entirely unreason- — .

able when one recalls that Dubbs himself-was giv=

ing practical. demonstrations of his process at the’

time that the original application was filed; that in

those demonstrations copious, generation of vapors

always occurred in the.B tubes; and that in the

original application he specifically mentioned ‘the .

'. passage of * ‘generated vapors” from. the cracking

; ‘tubes B to the vaporing chamber or C r C tubes. The —

_same teaching: was given to the man skilled in the.

art by the illustrative run incorporated i in the patent

| prior, to the presentation: of the claims of the patent.

7 _ ec) As to the original Haims the District Court

". erroneously found that Dubbs could derive no benefit

therefrom in construing: the word vaporization be-

cause these claims, although concededly a part of the

original disclosure, were subsequently canceled. The

~. Court overlooked the fact that tie same_ subject

matter was carried through. from the time of the

cancellation of the original claims, by the insertion

ni = illustrative run.

ae oe “(d) To the illustrative run, the District Court

interposed the reciprocally untenable objection that

it could not be considered because it was not in.the

original application. There is no rule of patent law

~ that subject matter. added in the course of the —

\ prosecution of a patent application,. adding no. ob-

». jectionable new matter to the original disclosure and

making explicit that -whi¢h was implicit, may not be

considered in the construction of the patent,

“4

expecta when the subject matter pe the illus- —

__-—-trativé Tun) -is added at the request ‘of the Patent

Office in lieu of the same subject matter appearing

in the stricken original claim (here keeping con-

tinuously before the Patent Office Dubbs’ _

teaching of vapor ‘generation in the B tubes ).

(e) Finally, the District Court held that the

Karey! accepted” meaning of the word “vapor--

ization” is “generation of vapor”. There are at

least dh anes generally attributed to the word,

and if it be true that some dictionaries refer to gen-

eration rather than to liberation, that is. not a

+ ground for rejecting the second and alternative

meaning when the patentee has’ chosen it. Such

leading dictionaries as The Century, Funk & Wag-

nalls and the new Oxford Universal Dictionary, and

scientific authorities of which. some are mentioned —

in the Appendix to this brief, concur. that either .

meaning is available. The error of the District Court —

lay in fajling tq find that Dubbs had clearly ascribed

th second meee [liberation] to the.word.

2. The opinign of the Circuit ‘Court of Appeals: indi-

cates that the Court had not obtained any clear-grasp of the

- issue involved. Several glaring efrors of fact indicate the

“Court's difficulties, for example: \.

(i) The Court assumed that even if it ‘icmined peti-.

not be ‘heated to the ‘cracking point without. such

- Vaporization (i.e., without liberation). Every witness

in the case concurred in teStifying, as the laws of

* physics obviously ome them to do, that with sufficient

velocity and turbulence, the oil would move through

_ narrow: tubes (such as the 4-inch tubes) in a frothing

and foamy mass without any liberation or separation of

the vapors from the liquid, = as , this occurs in re- |

= $ operation. Fe es ee an \:

a +. /

— Gi) The Court ‘said that™ in remsntiat s process

there was “an encouragenfent or at least no prevention

of vaporization” and “this is so no matter what mean-

‘ing is given to the word vaporization”. The undisputed

evidence is that there is no vapor separation ( petitioner's |

‘meaning ). in. the B tubes of the accused proceas. .

(iii) The Court stated that, accepting petitioner's .

| definition of vaporization (liberation), defendant’s

process “heats to a. point where cracking and vapor-

_ ization take place”, and “in-defendant’s apparatus the

oil is cracked and vaporized i in what — be » papel its

B tubes”. ° -

1 - A ee .

_— of law by the Court were: ad PR

(a) Its assumption that the Dubbs claims were not.

entitled to a‘liberal interpretation because “in the nature -

of an improvement” ;

(b) Its assumption (contrary to the salitive of

Smith v. Snow, 294 U.S. 1, and earlier cases to the |

“same effect), that the claims of the Dubbs patent should

be considered alone, without reference to the drawings,

* specifications and illustrative run; and

.(c) Its assumption that the duty of the Court was

essentially to read dictionaries, and to select therefrom

what it might conceive to‘be the weight of authority

among lexicographers. The Court carried this error

to a most unfortunate degree as it quoted. single brief -

sentences out of a number of- dictionaries, in many of,

which a mofe extensive quotation would have shown the -

| alternative meaning.

The Egloff Patent

The accused process involves the series of spe defined

‘by- the Egloff elaims without either “additions or elimina-_

tion of steps”. Infringement is plain without invoking .

the doctrine of equivalents.” There .is : response ‘to

every claim element. :

The utility of: Egloff -is proven by respondent’ s literal

followi ing of it in its own commercial process. The ad-

vantage provided to the respondent and other users is that .

Egloft.treats the raw oil preliminary to its entry into the —

main cracking coil (B tubes), screening and cleaning’ it,

and insuring that the charge to said coil is in all cases a

_ distillate stock from which all ‘heavy-coke forming ends have *

been eliminated. :

ARGUMENT

PART A: THE DUBBS PATENT

The nevada Winkler-Koch Process infringes

the Dubbs patent.

Respondent does not. contend that the Winkler-Koch |

‘process was designed from inventions, the subject-matter

of applications for patent or of patents owned by respondent

or other members of the “Patent Club”. Nor can respond-

ent seriously contend that the accused process stemmed

from the prior art. v§ :

As has been stated {p. 40, supra), ‘it was designed “

self-styled “post graduates of Universal”, ‘It is therefore

not surprising that the accused process closely follows the

\¥

Dubbs patent and the commercial. structures designgd by.

. petitioner thereunder. Indeed respondent does not dispute

the fact that the accused process embodies clean circulation

with all of its advantages.

_ The District Court’ (40 F. Supp. 581) nated the issue

of ‘infringement i in terms perhaps ov ‘er-simplified, but help-

fully clarifying, thus:

“Defendant [ respondent] says that the word vapori-

patent limits his process to one in which no vapor is

" generated in the initial tube or-chamber where the

liberation in the second chamber, If plaintiff’s in-

zation means generation of vapor and that plaintiff's .

heat is applied. Plaintiff says vaporization means —

liberation of vapors and that his patent provides for -

generation of vapor in the heating chamber and

terpretation is correct, defendant infringes. If, on

the other harid, the term is to be given the meaning

for which defendant contends, defendant. does not

infringe.” . ee

Respondent's argument, ‘as the opinions of the courts

below show, is fostered in a grammatical vacuum having

no relation to, the practical aspects of the problem and giv-

| patent as a whole. |

A. The Patent Document as a whole demonstrates that

‘the phrase “without substantial vaporization” means that

liberation or separation of vapors from the liquid oil is pre-

cluded, but that generation of vapors in the B tubes of the

Dubbs ; process is not precluded.

‘The basic principles applicable to the construction of

patents.are fully settled. The patent must of course be con-

strued as a whole, and according to the ordinary. rules gov-

erning the construction of written documents. Goodyear

Dental Vulcanite Co.-v. Davis, 102 U. S. 222; Strong-Scott

Mfg. Co. v. Weller, 8 Cir., 112 F. 2d’ 389. :

ollary of this basic propesition is that the intention

“of the patentee will -be given substantial weight in the con-

struction of the patent. Cimiotti Unhairing Co. vy. Am.

Fur. Ref. Co., 198 U. S. 399, 410; Paper Bag Patent Case,

210 U.S. 405,419; Smith v.- Snow, 294 U.S. 1. Thus a

. patentee may choose his own’ words and adopt such defini-

' , tions as he may ‘deem proper in stating his invention. Cimi-

otti Unhairing Co..v. Am. Fur. Ref. Co., supra.

In ascertaining the meaning to be given to the words of —

the claim, the court is not.confined to ‘the limits of the claim

‘in question but should examine the claim in the light of the

; : 6&9

specifications. .““The claims of a patent are always to be read

_ in the light of its specifications”, Schriber-Schroth Co. v.

Cleveland Trust Company,'311 U.S. 211, 217; Hogg v.

Emerson, 47 U. S. 436, 478; Smith v. Snow, 294 U. S. 1,.

14; Exhibit Supply Company v: Ace Corp., 315 U. S. 126,

134-135.

Moreover, if upon an examination of the claims and

specifications of the patent as granted; there’ still exists

an ambiguity in the mind of the court with respect to the

meaning of the claims, it may examrne the descriptions in

. the claims as originally filed to resolve the ambiguity. Thus.

this Court stated in Hubbell vy. United States, 179 U. S. 77,

80:

| “It is quite true that, where the differences be-

- tween the clair as made and as allowed consist of

mere changes of expression, having su

the same meaning, such changes, made to meet the

views of the examiners, ought not to be permitted

to revive a rejected claim, by a broad construction of . |

the claim allowed, yet the patentee is entitled to a

fair construction of the terms of his claim actually

granted.’ »”

Accord: Exhibit Supply Co..v. Ace Corp., 1S U. S..-.

126, 134; cf. Marconi Wireless v. U jained States, 320 VU. S.

1, 28, 2 |

In construing the nicaning of.a “patent “The Court

should proceed in a liberal spirit, so as to sustain.the patent

ard the construction claimed by the patentee himself, if this

_» an be done consistently with the language which he ‘has

- employed,” Klein v. Russell, 86 U. S.°433, 466; Smith v.

Snow, 294 U. S. 1, 14; and-“if the claim were fairly

to defeat a meritorious claimant. While not allowed —

susceptible of two constructions, that .should be ‘adopted “tl

_which will sécure to the patentee his:actual invention rather’

than io adopt a construction fatal to the grant, ”? Smith v.

Snow, td. . | ‘

' So here we turn to the entire patent as ‘granted. Indeed,

_ in the instant case, the District Court recognized that this

- 1s the criterion for determining the meaning of a patent-

claim, but failed to ‘follow the rule.’ She

“Reading the claim with the specifications and draw-

U.S. 319, 330, and interpreting the claim “in the light

. of the particular form in which the’ petitioner re-

duced the claim to practice as described in the specifica- i

tions,” Smith v. Snow, 294 U.S. 1, 14, it seems clear

~ beyond any possible dispute that. the phrase “without sub-

stantial vaporization” (or equivalent phrases) as used in

the patent means that vapor liberation in the B tubes is

precluded, but that: vapor. generation. in the B tubes is not

bre ecluded. She (

4 Tue WORD “VAPORIZAPION” AS USED IN THE ‘Durss

PATENT CANNOT MEAN: “GENERATION ”.

(a) Cracking, ewith vapor generation, takes place. in

“cracking tubes” B. aa |

The Dubbs patent states eer that the tubes B are

cracking tubes. . In the statement of objects of the. inven-

tion, the patent ‘says (Vv II, 3089, lines 13-19):

“Among: the ‘salient objects of the invention. are to

provide for 4 process in which the oil is continuously

fed oe the crac king sone ane thence —

nd {

— a

‘ the vapor zone, and a portion of. the venerated

vapors condensed and ‘returned to the. inlet side of

the cracking. cone a

The portion of the generated vapors which is condensed -

-and returned to the inlet side of the cracking zone (the re-

flux condensate) is returned to the entrance of the tubes B. j

Hence the cracking zone referred to in the foregoing quo-

tation necéssarily includes the tubes B.g@The description of

the apparatus and of the operation of the process begitis

with the statement that” “BR are the cracking tubes” (VI,

3089, line 52). -Claim 7 refers to these tubes as ‘tubes

seated in a cracking zone” and as “cracking tubes” (WH,

3091, lines 46, SR). _ This makes it clear that. unless the

“specious. arguinent that Dubbs misnamed these tubes is ace.

cepted, at least a substantial part of the cracking occurs

_ in cracking tubes B. 3 as

Respondent's expert Smith concedéd that at the operat-

ing pressure given in the patent “you couldn’t get very much

cracking in the B tubes without substantial vaporization”

(111.1151).

Dr. Brown testified [TI, 654: 5} that the oil i is inchved and

cracked in these tubes and that as the oil passes through

these tubes there is a generation of vapor therein, but there

is no separation of vapors from the liquid: oil.

In contrast, Dubbs never reters to the tubes B as ‘‘va-

porizing tubes” or as “being located in a vaporizing zone.’

The patent also states (VII, 3089, lines 74- 8) that the

material to be treated discharges througii line J’

“** * into and through tubes B and during the time .

_they are passing through said tubes, they periandl

jected to sufficient heat to cause! the desired a

of cracking." wiih ail

ount

This statement clearly indicates that there is a regulated

amount of cracking i in the tubes B (I, 661).

(b) A part of the. ‘vapor is - nerated in tubes c: the

balance in tubes B.

process ‘started. in the B tubes. continues in the vaporizing

tubes C. “The specification of the ponent recognizés this

_ when it says:

_ .“The per cent: of vapors generated ttle thie oil as it

passes through the tubes C will depend on the amount of

heat acquired by said oil while passing through the 4” coils”

(VII, 3089, page 1 of patent, lines 108-12). If but a

“per cent” of the vapors generated is generated in the C

tubes, where is the balance (100 minus that. ‘per cent”) .

generated ?« Obviously in the B tubes. (II, 662). So here

again from this language the conclusion is-inescapable that

the phrase “without, substantial vaporization” (or- equiva-

lent ) in the B. tubes cannot’ exclude generation i in these

tubes.

tn the B tubes in the operation of the illustrative run.

~ We turn next to the illustrative run déscribed in the

specification (VII, .3090, page 2 of patent, lines 35-65).

To the oil technologist* the conditions as to heat and pres-

sure specified for that run spell inevitable generation of .

vapor in the’B tubes (11,726; III, 1148-51, 1153), In-

“Tt i is s settled rule that patents are addressed to as: skilled

in the art to'which they relate. Eibel Co. v. Paper Co., 261 U. S.

45, 65- 6: Carnegie Stéel Co.-v. Cambria Tron Co., 185 U.S. 403,

437; 4. B. Dick Co. v. Barnett, 2 Cir., 288 Fed. 799, 801.

» .

~ EEE

73°

deed, petitioner's expert, Dr. Brown, testified that through- -

‘out the entire temperature rangé specified in the illustrative |

run, there would be very material vapor generation in-the

a tubes. He said (11, 656) :

“Urider the conditions of 750 degrees F. and

100 pounds pressure, this gas oil as described would

contain at least 20 or 25 per cent by weight of gen-

erated. vapors Of the oil as it passes through the

cracking tubes B. At the higher temperature, 860.

degrees F. under. the same pressure conditions this

vit would contain upwards: of 90 percent by weight

cracking tubes B.” |

— his direct testimony, respondent’s expert, Howard

V. Smith, voices the opinion that “vaporization” as used in -

the patent means vapor generation,* but.that opinion cannot

be accepted in the light of his subsequent admissions, for

he was unable to reconcile it with the patent disclosure.

With respect to the illustrative run Smith conceded that,

-except-at the very bottom Of the temperature range speci-

fied in the illustrative run, a “very substantial amount” of

the oil would ‘be conv erted to vapor in the B tubes, even

without cracking; that the amount of vapor would be aug-

mented if eats occurred ;** and that the presence of the

*In the Root case deiendant contended that vaporization. was

the symbol for “cracking” (6 F. Supp. 767). Therein the Courts

rejected that at and found that as used in the Dubbs

patent “vaporization” necessarily connotes the liberation, or ‘sep-

__ aration, of the vapors from the oil, stream.

**It is indeéd significant that operating in the upper range’

of temperatures given in the illustrative run, vapor generation

will necessarily occur in the B tubes, according to respondent's

expert, whether or not cracking takes place in those tubes—crack-

| 74

cycled elbin would still further increase the amount of

* vapor generated (III, 1153, 1148-50). These concessions

forced him to the admission ( II, 1150):

ye | Consequently, considering such a run as

. that and considering your interpretation of the word

‘vaporization’, the two don’t fit at all, do they?

“AL No, they don't fit.

The selina premise of hig direct peatinony hav-

ing been destroyed, Smith suggested on cross-examination

that the stipulated. “[00 pounds pressure” of the illustrative .

run be increased io make the teachings of the patent ‘fit the

Smith theory as to the meaning of its — CII, 1148,

heeds» itera

Again he admitted (III, 1150) t that the very bottom of

the temperature range specified in the illustrative run

“* * * was the only part which ‘by any possibility

would support my interpretation of ‘the word ‘ vapor-

ization’ and make the claim to the patent read upon

the typical run of the patent at approximately 100.

pounds ‘pressure.”’*

But even in that’ ‘‘only part which by any possibility”

would support ‘Smith’s interpretation of the patent, he found

it necessary to depart radically from the principle of the.

ing wottd only increase the amount of vapor generated in the.

B tubes over-that generated without cracking (IIT,. 1149-50).

Thus, if the illustrative run is given its proper significance, re-

spondent’s argument that the name “cracking tubes” given by.

Dubbs to the’ B tubes is a misnomer, and does not “mean that

. cracking, with the resultant vapor formation, occurs in the ti:bes,

becomes immaterial.

*The “100 pounds pressure’ > refetredl to in the testimony just

quoted is that specified for the ustrative run ( VIT, 3090, page 2

ot — line 56).

patent in order to reconcile it with his theory. In his <at-

tempt to show that the specifications disclose a practice con-

sistent with his interpretation, he postulated-that-it-would—

~be necessary “to operate with some mild heating of the C

tubes to maintain the temperature therein in order to opér-

_ate.there successfully” (III, 1088). -The “mild” heating

prorosed by Smith would have to be’ sufficient, under ‘his

assumption, to impart additional heat to the oil in the C

tubes. This is so because heat is absorbed by vapor genera-

tion and cracking (111, 1067- 8), and it would be necessary |

for Smith to add erough heat to the oil to compensate for

this m order to “maintain the temperiture.”” This’ condi-

tion is contrary. to the teachings of the patent, for Dubbs

states that his process may be operated without’ any heat

tor the C tubes,—insulation merely. being. required -(V4I, :

3089, page 1 of patent,” lines 99-105), thereby seameaaatin!

that no additional heat is to’ be supplied.

' Dubbs states as ah alternative that a light fire may be

used under the C tubes, not, however, to furnish additignal

heating to the oil to “maintain its temperature”, but merely

to prevent the loss_of hedting-from radiation,.a ‘very dif-

_ ferent proposition.* (II, 754, 752-3; IL, 1088; 1067-8).

1 Indeed, Smith’s reconstruction of the Dubbs specifica-

tion would endow the Dubbs process w ith the defects of the

a ft werden : 2 Scordlag to the teachings of the patent, the -

temperature of the o'] in the C tubes falls below. its temperature

s when discharged fromthe B tubes. {This is due to the losses of

heat due to vapor generation and eracking which are not compen-

sated for by insulation, or its equivalent, the mild heating of the

C tubes). That this is so appears froni the record in evidence (PI.

' Ex. 597) of one of the demonstrath, ui runs, which shows that the ~

». temperature of the oil in the’ vaporizing tubes was approximately

“100. degrees | rower than: that of the oil in the cracking tubes.

—

. ‘

a 76

Burton process in which the ail temperature Was maintained :

by a fire-under the shell in which vapor liberation occurred,

to overcome loss of heat by cracking and vapor genera-

tion as well as by radiation.

(4). The meaning respondent ascribes to the word “v

porisation” violates the patent disclosure and the rule gov- ;

erning claim construction. ;

. .

Respondent and its expert, in-reaching the view which |

-- it pressed upon the-Court that the word ‘ ‘vaporization’ "in

the Dubbs patent means vapor generation, <ompletely re-

versed the procedure usually followed for ascertaining the

true meaning of a disputed claim-word, or phrase, ‘and ‘de-

parted from the criteria which this Court has approved for .

that purpose. _ ve

it dogmatically iat one meaning: of the word, viz.,

vapor generation, and contended that that was: the sole .

meaning of the word, fortifying its contention on the point -

by reference to a number of dictionaries and’ some text-

books. Petitioner has unreservedly, admitted that vapor

generation’ is one. meaning of the word “ ‘vaporization”.

Respondent having confined, or circumscribed, the dis-

puted word by this rigid, or dogmatic, definition, then im-

posed the claim so construed upon the disclosure found in

the descriptive part of the patent specification and’ all parts

-of the latter were so read as to keep them so circumscribed,

' notwithstanding that does violence to the express language

of the patent and its application as filed, when interpreted i in

the light of immutable laws of physics.

Smith begati by assuming a meaning of the claims

favorable to his cause and then rewrote the specifications to .

fit that meaning. Such procedure is directly contrary to the

Be,

rule of law which requires that the claims be construed i in

accordance with the specifications. No such adroit manip-

ulation can be sufficient to save respondent from the charge

of infringement.

That respondent interpreted the patent by Tlicutag the

testimony of its expert, Smith as follows (HIT, 1148):

“Q. Well, as I understood you, you said there

was no substantial amount of vapor generation in

the B tubes, isn’t that your. representation as to the

Dubbs patent?

“A. That is what the claims call for, yes, sir.

“Q. Well, that is your representation as to the

Dubbs patent, is it not? Isn’t that what you told

the Court?

“A. Well, when you take in the claims, yes, that

is true.”

Nevertheless, Smith was. forced to concede that the |

_ patent does disclose a process wherein there is vapor gen-

eration, but no liberation, in the B tubes (JIT, 1147):

“I didn’t mean ‘to give the impression that a pri-

mary. contention that I miade is that due to the term

the patent, that the Dubbs process is confined to

_ one where. there is no substantial vaporization

[generation of vapors, ‘per Smith’ s use of the word]

in the B tubes. . |

The expert finally said (III, 1151):

“It is not. my view, considering the Dubbs patent as

a whole, that you don’t get vapor generation in sub-

stantial amount in ‘the B tubes and you don’t eet

cracking in substantial amount in the B tubes.”

sealed eeiettneeientticnadienaliiinetinetn tatheentadin aati oe eee Te

procedure just statéd is clear from a brief extract-from the -.

‘without substantial ye Caagpacand as I found it in -—

_ (e) Responde ut’s contention that “vaporization” means

“vapor generation” is rejected by C laims 5 and 6.

_ Claim 5 of the patent calls for - “affording” a vapori-

zation space above the stream” of oil in the C tubes and

“taking off the vapors from said vapor space”: (VII, 3091,

page 3 of patent, lines 11-5). The space above the liquid

level in the C tubes obviously cannot bea space for gen-

eration of vapors, but only for their liberation (47, 661). It

‘must be obvious to the Court that generation of vapor from

_ a liquid body cannot occur abave the liquid. Immediately — .

preceding the words “affording a vaporization space above

the stream,” the claim; in défining the conditions in the B

‘tubes, specifies that the oil is subjected “to a cracking tem-

perature while preventing substantial vaporization” (id.,-

lines 9-11). The word “vaporization” used in sticcessive

lines undoubtedly, means the same thing. Consequently,

claim 5 does not make sense if respondent’s construction is

‘ to be followed. It makes sense only when petitioner’s view

is adopted. ‘pitas

‘The -force of this argument: is emphasized by the lan-

. guage of claim 6, in which provision is made for “a vapor

space ... . above the level of the oil wherein vaporization

takes place” (VII, 3091, p. 3 of patent, lines 33-35). The

existence of a space above the level of the oil “wherein

vaporization takes place”’ is consistent only with the mean-

ing of the word “vaporization” claimed by + In

such a space liberation or separation of vgpors only could

occur. ons ahs

The difficulty which. Smith encountered in attempting

to give substance to the meaning which he attributed to the

Dubbs teachings is well illustrated in his';comment on claim

5 of the patent, the language of which, as we have shown,.

79 ie re /-

cannot be reconciled with respondent’s interpretation: As ..

to this, Smith: said “.'; . we do find words uged in a rather

odd way in a number of places in the patent” (III, 1102).

Tl. THE worp “VAPORIZATION” AS USED IN THE

DUBBS PATENT WHEN CONSIDERED AS A WHOLE MUST MEAN

Neer atinneall a :

(a) In the patent ‘ “liberation” 1s used as a | synonym for |

“vaporization”.

- (1) A fundamental du of the process which’ Diibbs

teaches is the liberation of vapors, or the separation there-

of, from the liquid residue. This occurs in the vaporizing

tubes C. Dubbs says: “C aré the vaporizing tubes” (VII,

3089, line“52). This function of the C tubes is described

in two parts’ of the specification which explain precisely

what Dubbs means when he applies the adjective, “vapor-

izing’, tothe C tubes. First he states, “said of] is then

passed into the tubes(C which are only partially filled with

oil and as the oil passes through these tubes, there is a

. liberation of vapors from same and which vapors pass up

through the vapor tubes D” (VII, 3089, page 1 of patent,

lines 78-83).. Dubbs thus specifies that the “liberation of

“vapors” is a function of the C tubes.

| The process is next, discussed in giving a Soudan

. Of the illustrative run: There Dubbs states (VII, 3090,

_ page 2 of the patent, lines 40-3), “The heated oil:-then passes

to the 10 inch coils C which are maintained about half full

of oil and wherein vaporization takes place. * * * The vapors

pass up through the lines D.”

These ‘two phrases are obviously close paraphrases of

each other, describing the same objects in like functions

ee eS oes

Dubbs has therefore made the word “vaporization”: a

Synonym, - ir the patent, for the phrase “liberation: of

’ vapors”. In the general description of his process, Dubbs

_ says that in his C tubes “‘there is a liberation of vapors”

(VII, 3089, page 1 of patent, liries 81-2) ; in the illustra- -

tive run he states that in his C tubes “vaporization takes

place” (VII, 3090, page 2 of patent, line 43). That “vapor-

ization” is “liberation of vapors”, appears as clearly as if

Dubbs hgd- used an equation sign between the phrases.

Clearer definition cannot be required.

: (2) Wherever and whenever Dubbs in’ his patent

claims refers: to the process taking place in his C tubes, i.e.,

“liberation of vapors”, he follows the language he used i in

describing the function of the C tubes in the illust tive

run and uses the word ‘ ‘vaporization’. In claim 1. Di bbs

states that after the oil has been passed through the crack-

ing zone it is “passed thence to and through a zone where

vaporization takes place” (VII, 3090, page 2 of patent,

jines 72-3). In this, as in every other claim of the patent,

the word ‘ “vaporization” is used to refer to that part of the |

Dubbs process initially. described by him as “a liberation of

vapors” (VII, 3089: page 1 of patent, line __ 4 aes

(b) Claims 5 and.6 are meaningless unless ‘ a

tion” means “liberation”.

In claims 5 and 6\the word “vaporization” can have no

meaning other than “vapor liberation”. |

As stated supra, these claims are meaningless if the.

word “vaporization” appearing in these claims is: given

the meaning of vapor generation. A vaporization space

above the stream (claim 5, line 9). cannot be intended

to designate,a space where vapor generation occurs. It

: ae

is evidently intended to describe the space above the stream

which permits the liberation of the generated vapors from

said stream: ergo the word in claims 5 and 6 must mean

vapor liberation.

C tubes; since vaflor generation occurs in each, “vaporisa-

tion” means “‘vapoWJiberation”’.

With the meaning ‘ef the word “vaporization” so

definitely fixed, it is impossible to imagine that when Dubbs

uised this same word as part of the same claim-sentence to.

_ define the conditions in his B tubes he’ intended it to have

, an. entirely different meaning.

For example, when in claim 7 Dubbs states that * “the

oil is heated. to the cracking temperature but substantial

vaporization prevented, and thence to an enlarged chamber

_where vaporization takes place”, and uses like language i in

the other claims, Dubbs emphasizes that the process taking:

place in his C tubes does not take place in his B tubes.

_ Generation of. vapor takes place both in. tubes B <a

tubes C. Hence the process referred to by the word “

porization” cannot be generation. .On the other hand

“liberation of vapor” is. referred. to only as occurring in

the C tubes. Thus .the phenomenon.which occurs in the C.

tubes but. which is avoided in the B tubes, and which cannot

be generation, must be liberation. ‘Therefore, the word

“vaporization” in the Dubbs patent miust refer to vapor

liberation. - Se . er

- The only reasonable construction of the language used: ‘4

is that Dubbs,” in each of the patent claims, was seéekirig

‘ to.draw a distinction between phenomena in the B: tubes —

and the C tubes of his process. The reason for this em-

phasis is plain. If any substantial amount of. liberation of

‘vapor occurred in the B tubes, a residuary liquid would ‘be

left, and due to the’ heat applied the rapid formation of

_ carbon deposits would result (II, 656-7): The prevention -

of such a condition was one of the essential steps contribut-

ing to’ the success of the Dubbs clean circulation invention.

Accordingly, no vaporization, 1.e., - liberation of vapors,

could take place ‘until-the oil reaches the part of the proeéss

where. provision could be made to separate'thé unvaporized

oil from the vapor in a zone where the oil receives no heat

-and where the separated residue can be drawn off. Such

provisions, as the drawings, specifications and claims of the

Dubbs patent -all show, .are made only in the vaporizing

or C tubes, w here only radiation losses are offset by insula-

tion or mild firing and from#which : the residue can be

withdrawn through the pipe K (VI I, 3089; line 94).

These being the facts, the language of the patent can-

not mean to. the oil technologist anything other than that .

_ the thing forbidden in the-B tubes and required in the C

‘tubes is vapor liberation. This must be so because (a) he

_ knows the patent says alternatively that “vaporizatign takes

place” in the C tubes and that there is a “liberation of -

‘vapors” in the C.tubes} (b) he knows the patent says ‘the

B tubes are cracking tubes and that vapors are formed in ~

the cracking tubes B, but that the heating of the oil in the

. B tubes is “without substantial vaporization”; and (c) the

only meaning for the word “vaporization”, consistent with

these phrases, with the balance of the specification, inchid-

ing the illustrative run, and with the practical usages of the

oil industry, is 8" yais liberation.

‘

; . 83

(d) Residue is that remuins after the vapors

. have separated themselves [¥jm the liquid gil. -

Emphasis is lent -to the foregoing conclusion ‘by the

words of claims 1, 2 and 6 calling for “removing the resi-

due, after said vaporization.” A residue is something left

behind, so this language again indicates that vaporization is

used in the sense of separation or liberation and not mere

generation, i.e., formation of a foam.

The action descsibed in the phrase. just quoted is com-

, won ina Gatiatery process (I11, 1145-6). The meaning

of “vaporization” in the .Dubbs patent cannot be made

doubtful by Mr. Smith's statement (III, 1101) that this

phrase does not mean removing the residue after vapors

are both formed .and separated from the liquid oil in the

C.tubes or by his sophistical contention (III, 1192) that,

because the non-volatilized oil per se is the same before

and after the vapors separate therefrom, it is proper to call

‘it residue prior to the separation. .

To remove the non-volatilized oil prior to the liberation _

of the vapor would be. foolish,- because as to the Dubbs

operation neither the reflux condensate nor -the desired

pressure distillate would be obtained and the process would

not work. But the removal of the non-volatilized oil lef

behind as a residue after the vapors have liberated them-

selves is a useful action, 4It is that which is exhibited’ in

the process-wf the Dubbs patent and which respondent's

expert. finally conceded occurs alike in the process of the

patent and in’ the respondent’s operation (III, 1160-1).

These were the views,of Dr. Brown (IIT, 1366).

The -oil technologist also knows that, as admitted. by

Smith (III, -1163), vapor generation, unaccompanied by

the passing off of the vapors from the non-volatilized oil,

has no useful application in the petroleum refining industry.

(e) The expert testimony establishes that “vaporiza-

tion” as used in the. patent connotes “vapor separation”.

The testimony of the experts shows that the only eel

construction is the one urged by petitioner.

Dr. Brown testified on cross- -examination as to the

meaning of “vaporization:'in the patent: (LI, 407-8) ::.

“Q. Well, what do you think he [Dubbs ] meant

by the term?

“A. I think he means by the term ‘vaporization’

the. complete sepatation of the vapors from the

? liquid, and his process that he defines as ‘vaporiza-

. tion” hasn’t taken place until there is a_liquid residue

left and the vapors have passed off as vapors . . .

. * . * **

“It is perfectly clear that- by ‘vaporization’ he

‘iesian the separation. That is what he-means, that

you must have the separation‘of the vapors from the

liquid’; in order to accomplish vaporization .

“Q. It is not clear whether he means both gen-

eration and separation?

“A. He does not mean geneération by ' vaporiza-

tion’. That is specifically’ excluded. To have vapor-

" ization he-must in all cases have the separation step.

Now, I believe that that ‘is what it is limited to. My

interpretation is that the word ° ‘vaporization’ is lim-

ited to that separation step: . ;

Dr. hin also considered the possible dual meaning of

the word “vaporization” atid concluded, “But in my opinion

the word ‘vaporization’ is used in the Dubbs patent to mean

the separation or the liberation of vapors” (II, 738). |

Respondent's evidence does not meet the testimony just

quated. The testimony of respondent's expert Smith has

been discussed supra, pages 73-77; it.establishés that, in-

Smith’s own views, the patent as a whole discloses a proc-

ess wherein substantial vapor generation takes place in

the B tubes (III, #151). And respondent’s witness, Dr.

‘Cady, a general scientist without practical experience in

the oil industry (II; 805), merely stated that in his opinion _

“The word ‘vaporization’ standing alone, has a definite »

‘meaning which is the change of a liquid or solid into a

‘vapor’ (II, 791).* Whatever may be the merit of this -

definition of the word in a cumplete scientific and gram-

matical vacuum, it is apparent that Dr. Cady. was not

asked, and w as not qualified to give, any interpretation of”

‘the word “vaporization” as used in ‘the patent, and not

“standing alone” but in its context. The same considera-—

tions apply to the testimony of Dr. Reiman (III, 1288-9).

B. The éstaleas discloeure reinforces petitioner's inter-

pretation of the phrase-‘ ‘without substantial vaporization”.

> All that ‘has been said above caboiit the conclusions to

be drawn from the specification, save only that part based

on the illustrative run, is applicable to the specification as

originally filed, and reference to the origifial claims lends

‘strong additional support to petitioner's contention. Orig

inal claim 1 (1V, 1515-6) called for: a

“1.” A process of conv erting sy into lighter hy-

drocarbons, consisting in passing the oil through a heat-

ing coil in a cracking zone, passing the oil and gener-

ated vapors into a vapor chamber, taking off the vapors

from said vapor chamber . . .”

—

*Even on this score respectable ‘authority shows that Dr: Cady

unduly limited the meaning of the wortl (See Append: x at the end

of this weet}

Like language appeared i in claim 2. These claims, “ course,

constituted a part of the original disclosure.

‘The Court of Customs and Patent Appeals in Foss v.

* Oglesby et al., 127 F. 2d 312; 315 said: -

“It is, of c@irse, elementary that original claims

in an application as filed constitute a part of the dis-

closure of such application.”

If the original. clatm language ‘had remained, or if. it’

had been transferred tpsissimis verbis to. the specification,

there could have been no doubt. What was actually done

technologists, to whom the patent is addressed, are con-

cerned. As prev iously stated, the illustrative run was in-

serted at the request of the Patent Office.* It was not until

the time of its insertion ([V, 1520) that original claims l

and 2 were cancelled. (IV, 1521). We have shown. that

this, illustrative run, just as the original claims did,.

tells the man skilled ‘in the art that vapors are generated

in the B tubes; and, consequently, the statement in the

claims of the patent that heating i in the B tubes is “without

substantial vaporization”. certainly cannot mean that no

vapor is: generated therein. So whether we consider the

specification and claims as filed or the specification: and

claims as finally issued, the result is the same.

In Marconi Wireless Co. v. United States, 320 U. S. 1,

28, this Court had océasion to consider the Stone patent as .

a reference against the Marconi patent in suit and com-

. *** * * no applicant can justly be blamed for: acquiesctng in

a command by lawful authority, much less-can he properly be

made to suffer loss by obedience” ; American Laundry Machinery —

- Co. v. Prosperity Co., 2 Cir., 295 Fed. 819, 821.

mented that “Stone’ s patent, * * * makes explicit, as the

patent law permits, what was implicit in Stone’s applica-

tion”. In the case at bar there can be no question but that

Dubbs’ original application was explicit. enough, but the.

Marconi. case settles the proposition that it is of no

moment that the particular verbiage was altered, since the.

essential ‘teaching remained unchanged. -“The law as

outgrown its oti itive stage of formalism when the prec

word was the sovereign talisman, and every slip was

fatal.”*° . Ps

C. The demonstration runs of the Dubbs process made

_ just prior to and contemporaneously with the filing of his

patent application. and the subsequent commercial opera-

tions licensed thereunder reject respondent's meaning ap-

plied to the word “vaporization” in the Dubbs patent.

(1). The Independence Demonstration Unit.

| ’ The facts regarding these runs have been set forth in

some detail (p.-26, supra). . Before the filing of the ap-

lication for the Dubbs patent, and while this application

was being prosecuted, Dubbs had in operation, under his

direct supervision, a‘unit at Independence, Kansas, where

perreeg demonstrations of his process were made to the:

dustry (I, 506-7). | :

) In all the operations of this demonstration unit substan-

tial: vapor generation occurred in the cracking tubes B w ith-

out vapor separation, and the vaporization or vapor separa-

tion occurred in the enlarged vaporizing tube C.

: ‘Chania, J.,in W ‘ood V. Duff- Gordon, 222 N. Y. 88. 91; see

305 U. ‘S. XVI. : ‘

:Pyzel, a practical and. experienced petroleun scientist

representing the Royal Dutch-Shell Company, observed an

operation of the demonstration unit late in 1918 or- early

. in 1919, just prior to the filing of the Dubbs application (1,

506-08). Testifying in respect to his dbserv ations he said

508) : os

“There were vapors formed in the four inch. tubes

but the separation of the vapors from liquid which

would constitute a vaporization took place in the ten

inch tubes. sae ara :

and at (I, 507) he said:

_ “In the ten inch tubes vaporization of the product

coming from the four inch tubes took place that is

to say the vapors were separated from the heavy

residual liquid.” :

At the temperatures ‘and pressures prevailing’ in the crack-

ing tubes B of this unit,, Dubbs or any other technologist.

~ having but elementary knowledge of physical laws, would

have known that very substantial vapor generation occurred

in the oil stream traveling therethrough. — |

Again in the: mid-summer of 1919 the same Indepen-

dence unit was demoristrated to representatives of the Na-

tiona! Petroleum Association and of the Western Refinets

Association -(1,. 377). The operating conditions of - this

‘run have been clearly established by the original records

covering the entire run that continued uninterruptedly over

a period of nine days (PX 597, 11, 830-31). The unit. and

the process carried out therein during this demonstration

_run’did not in any substantial respects deviate from the op-

eration Pyzel witnessed late in 1918 or early in 1939.

The undisputed testimony of Dr. Brown, based upon the

operating conditions prevailing during this demonstration

run, is that substantial vapor genefation did take place in

the cracking tubes, and that the oil therein was in the form

of a foam consisting of liquid: oil containing’ bubbles of

generated vapor. (II, 687-8). No liberation or separation

_of-such generated vapors from the liquid oil occurred in the

but such vaporization or liberation did occur in the vapor- °

- izing tubes C (II, 688).

These demonstr: ition runs, raade under the “supervision

of Dubbs just prior to and contemporaneously with the fil-

‘ing of his patent application, are relevant, material and con-

-vincing in determining the essentials of.the process to which

_ the Dubbs -patent 1s addresse d and the proper construction

to be given ‘the word “vaporization” as it appears therein:

This Court, in Marconi Wireless Telegraph Company

. United States and United States v. Marconi Wireless

re graph Company, 320 U. S. 34, in the construction of

it tT art patent, stated : |

: “We would. ‘ordinarily pe’ slow. to recognize _ -

amendments made after the filing of Marconi’s ap-

plication and diselosing features shown in that ap-

. plication. Cf. Schriber-Schroth Co. v. Cleveland

Rust Co., 305 U. S. 47, 57, {39 USPQ 242, 246] ¢

Powers- -Kennedy Corporation v. Concrete Ca., 282

U.S. 175, 185-6 [7 USPQ 122, 126} Mackay Radio

Co. v. Radio Corporation, 306 U. S. 86 [40 USPQ.

199}. But here Stone’s letters to Baker, whose

authenticity has not’ been questioned in this case,

afford convincing progt that Stone had conceived of |

the idea of tuning all four circuits prior to the date

of Marconi’s invention. Cf. Bickell v. Smith-Ham-

burg-Scott Welding Co., 53 F. 2d 356, 358 [10

USPQ 222, — ~ 2

ns ;

| (2), € “ommercial O perma Lice onsed Under the Dubbs

Patent. , ‘ ,

The operation of the demonstration unit was promptly

-followed bythe dev elopmient of a so-called “standard 500

_ bbl._unit’ for the practice of the Dubbs clean-circulation- «

process.” A total of 256 of such units were installed “and

operated commercially, between 1922 and 1929 by licensees

under the Dubbs Patent. These units were erected in 49 |

different refineries

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