# Brief for the Petitioner — Universal Oil Products Co. v. Globe Oil & Refining Co > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386404_0029%3A12 ## Record - **Collection:** Supreme Court brief - **Document type:** Brief for the Petitioner - **Published:** January 1, 1944 - **Citation:** 322 U.S. 471 ## Text FILE COPY IntHE Supreme Court of the United States: : _. ‘Octoper Term, 1943 Nes 392 —— — é 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 s 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 - *References to “PX” are to Plaintiff's Exhibits. — — % eo 27 Pi 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 S 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; ’ 29 “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- ~ 30 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: 7 31 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.” 32 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.” ~ } 3 4 ” ¢ : eer 33 ? ‘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), 36 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 \ ee *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 38 ~ 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, ; ay 39 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 — i s At 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). 43 —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. - a “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. A te x Be ‘w g 4% BY ee f 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- 46 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 47 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 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 : / / 54 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. Vi 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. 60 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 - \ 62 , . 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 therein. The finding | that no cracking © 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 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-. tioner’s definition of vaporization as liberation, oil can- © 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 65 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. Me 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. : 67 ARGUMENT PART A: THE DUBBS PATENT - 4. ©) Point I 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 68 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- ing no. heed to the history of the Dubbs patent or to the © | 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 — 70 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- ings, which are both.clear”, Temco Co. v. Apco Co., 275 © 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 72 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. But, sincbeehcking involv es a time factor, the cracking © 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. (c) A large amount of vapor 1s nectesanly generated — 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 of vapors generated within the oil as it leaves the © 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. e 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). 75 patent in order to reconcile it with his theory. In his 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 leaves the matter just as free from doubt i in so far as oil © 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- y . *** * * 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. &7 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. : ‘ 88 :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 ee 89 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 ©’ B tubes due to the velocity of the oil passing therethrough, © 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 (p. 32, supra). Ngee . Based upon the conditions prevailing in the operation ; of these units, the undisputed testimony, of Dr. Brown is that very substantial vapor- generation without vapor sep- aration occurred in. the cracking tubes, B and that the oil -and generated vapors as a foamy ‘Mass discharged into the» vaporizing zone where vaper separation or liberation oc- curred (Ii, 693-94). Thus the evidence is that in each and - * every operation of the Dubbs process, from its inception | by Dubbs, and by his’ many licensees, vapor generation in- * “evitably and necessarily occurred. in the B tubes withou: liberation. . It is illogical and unreasonable to assume that practically the entire industry with abundant technical and legal talent at its command would have accepted licenses under the Dubbs patent and paid substantial ‘royalties’ to practice a process that was ypen to the public-and could have been used by all with impunity. ‘DD. The presumption is that Dubbs understood the | operation of his process and did not exclude it from the purview of his patent | claims. Dubbs was an experienced refiner at the time of the operation of his demonstration process: at Independence. He had spent practically his entire life in the oil refining: + 91 art. From 1913 until hé terminated his connection with petitioner in 1930 he was continuously engaged in research and devélopment work relating to the production of gaso- line (1, 392-407).. The demonstration. unit as we have seen was erected under his supervision. Its operations were likewise all carried out under his: ‘direction and supervision for informing the oil refining industry of the characteristics of his: precess. — | ; Respondent's contention as to the meaning of the word “vaporization” in the Dubbs patent requires the illogical and unreasonable assumption that Dubbs, in making known his gréat contribution to the oil industry, which the Dis- '. trict Judge found revolutionized the-art, did so in utter disregard of the actual: operation of ‘his process and the conditions prevailing therein. Respondent's contention re- quires the further. extraordinary assumption that Dubbs failed to recognize in his process that which the skilled in thé art could not fail to, and did, observe. It likewise does violence to reason to assume, as re- - : spondent contends, that Dubbs, fully informed as he was .. as to all conditions prevailing in the operation of the demon- stration process and all of its essential,characteristics, would — have so limited +his patent claims, directed to this revolu- ; tionary irivention :, as to exclude the same. from the scope thereof. | This Court in Diamond Rubber Co. Vv. Cc onaélidaved Rubber Tire Co.. 220 U. S. 428, 436-7, said: “It ig difficult to. suppose ‘that the contriver of a successful device did not understand how it operated — * * * and committed it to the world * * * without understanding or attempting to discover the law and principle of its organization and efficiency. *** - i . We find this the. contention 1 difficult to handle. When ‘a person produces a useful instrument to say that --he did not know what he was about is at least con- fusing. * * * His success: is. his title to considera- * tion.’ E. The file wrapper. history o of the Dubbs patent appli cation fully supports petitioner’s construction of the ‘ques- tioned phrase, The oripinal application was criticized (IV, 1518-9) be- cause of the absence of detailed figures as to operating con- ditions, and the claims were rejected on’ March 14, 1919 on this ground and on certain Xems of prior art. In re- sponse to this rejection, in the first: amendment, dated Sep- tember 5, 1919, the illustrative run that has beeri fully dis- cussed was ‘added, and the claims. were rewritten (IV, 1520 et seq.). - The rewritten claims refer to the C tubes as “a chamber where vaporization takes place” (IV, 1521). But the“amended claims, like those originally filed, fell short of defining clean circulation ; unlike the specification, — they did not affirmatiy ely state that the residue was removed from the system and not cy ‘cled. The next action of the Patent Office dated ‘March 4, 1920 (IV, 1526) indicated that. the specification was now | wholly acceptable. to the Patent Office except for an error _of spelling. . The claims were rejected as failing to. define invention over a patent to Smith and a Trumble British - ‘, patent corresponding to the United States Trumble patent. By the second amendment of July 6, 1920 (IV, 1527) the error in spelling was corrected and the claims were again ‘rewritten. These claims adhered to the language of the ‘ specification and of the first amendment by characterizing ee of _ the C tube zone as one where “vaporization takes biace” | (IV, 1527-31). The claims recited that the reaction zone '. was kept “free from residual products of the vapor cham- _ ber” (1V, 1527-8).. The remarks accompanying the amend- ment (IV, 1533) emphasized the carbon accumulation in- firmity of the prior art’ (including. Trumble) and that Dubbs had cured this infirmity by cycling reflux condensate uncontaminated with the residue from the vapor separating step, or, briefly stated, by the non-cycling of the residue. The next action of the Patent Office dated July 28, 1920 (1V, 1534) rejected the claims for indefiniteness in that they defined the B tubes as a “heated zone of reaction.” The Examiner said “Since this is a cracking process it is _ _ essential that the heated zone of reaction should be raised toa ‘cracking temperature and this expression [“heated zone of reaction’}] should be amended to indicate that stich tem- perature is used.” —Jn this action the Trumble patent was mentioned but not: used_as a reference. The claims were rejected on a combination of an Edwards” ‘patent and a ‘Smith patent, -the ‘Examiner erroneously- thinking that. Smith disclosed “‘a complete removal of carbon from the oil returned to the zone ‘of reaction.”* By the third amendment dated April 13, 1921 (Iv, 1536) the claims were rewritten to the form identical with - claims 1-to 8 ot the patent. In the accompanying nomntee (IV, 1540) it was said: eee | “The processes disclosed in the — and Smith patents are radically different from that dis- closed in the present application, it being sufficient ‘to note that in each the material under treatment *Respondent kas rot contended in-the courts below that the Examiner was right in this. aa ro travels igpa cyclical path, so that at least a portion of- the separated carbon is returned to the cracking It was in this rewriting of the claims that the contro- versial words “‘without substantial vgporization’ * (Or equiv- * alent-words ) first appeared. They were not inserted at the behest of the Patent Office. Dubbs‘did not rely on them é - to differentiate from the Edwards and Smith patents, be-. _ cause, as juststated, the difference insisted on was that, in Smith and Edwards, carbon-was returned to the cracking zone. It will be borne in mind that by the previous amend- ment (IV, 1527-31) the claims had been revised to say that “vaporization takes place” in the C tubes. But they were® not, at that writing, so expressed:as to preclude vapor sepa- | ration in the B tubes. —_. . Dubbs knew that, a Stated. i in his original application, \vapots would be generated in the B tubes. Therefore, he inserted the caveat that the cracking must be accom- plished “without substantial vaporization” (or its ‘equiva- lent), that is, without the liberation of vapors, in the B tubes.* , On this third amnebdatent the application was allowed (IV, 1541). After allowance it was requested that an additional claim be entered and this request was granted (IV, 1545), the claim being claim 9 of. the issued patent. As stated, the “illustrative run” of the Dubbs process - now found in the patent specification was presented in an *This becomes especially clear when it is recalled that’ the . Dubbs patent application in its original form, as amended, and in its final state was based on the actual Gperation conducted by Dubbs in ints plant at Independence. In this actual operation, vapors were generated in the B tubes, but separated only. in the _ C tubes (I, 507-8; II, 687-8). 95 amendment filed September 16, 1919, at the same time that oe claims 1 and 2’ were canceled. These original claims ex- pressly ‘called for. “passing the oil and generated vapors” from the cracking tubes into the vaporizing tubes. The - illustrative run also expressly says to the skilled in the art, by giving (a) character of oil, (b) oil temperature range, (c) pressure, that vapors are generated in the stream trav- elling through the cracking tubes:and pass therefrom, mixed with the non-volatilized oil, to the vaporizing tubes: - . The phrase containing the questioned word was presented by ainendment filed April 13, 1921.* Thus the “illustrative =| run” was in the application when the amendment aforesaid ~ — was filed and is material and relevant in the construction of the disputed phrase. ‘It precludes a construction of the phrase prohibiting vapegageneration | in the B.tubes. Had the amendment been at variance with the specification, the Pat- ent. Office. Examiner would Mave rejected the claim as ‘de- parting from the patent ‘specifitation,: or as attempting to interpolate ‘“‘new_imatter”. That ‘he did not do so is very _persuasive evidence that he "did riot construe the word “vaporization”, as used, to be —e with -vapor generation. . nis, ee Corisidering the patent as.a whole, or’ considering the application at the date of the amendment of April 13, 1921, when the controversial words first appeared inthe claims, | the same conclusion must be reached regarding the meaning of the word “vaporization”, 7712. that, as used in th claims, it does not mean vapor generation. Denier t ie \ 5 .% : A \ ~ *At least eight years prior to the advent of the accused procéss. . and prior to the intervention of any adverse right of the public \ Syhriber-Schroth Co. v. C leveland Trust Co., 305 U. S. 47. \ , 96 - The court below:seemed. to, think that the words “with- out substantial vaporization” (or equivalent) .were what Dubbs' relied on to differentiate his invention from the _prior art; 137 F.2d 7. This, as lias been shown, is not the fact. “The original claims did not adequately define clean circulation, - specifically in that they did not affirmatively recite that the \yesidue, remaining after vaporization took place in the C tubes, was not. permitted to return to the ’ heating zone. i Thus .it appear's that the sole step of the | process upon which defendant in the Root case and respondent im the instant case sought to escape infringment was not used to distinguish. Dubbs from any prior art item ane upon as anticipatory by the Patent Office. Petitioner does not. contend that, because the disputed _ phrase ‘was not novel with. ‘Dubbs ¥ was not so treated either by the applicant for the patent or the Patent Office Examiner, it may be ignored i in applying the patent claim to the accused process. Full effect must be given to the phrase. But it is manifest that it was. not put in the claim to dis- tinguish ‘from the cited prior art. Dubbs distinguished from - it-by limiting the claims tothe non-return of the residue to the cracking coil, t.e., the cycling through the cracking coil _ of teflux Snteilenstiie seicuntienabunted by the residue. + When this feature, repeatedly urged as that ofthe invention, was shown to the Examiner to be new, he deemed that Dubbs’ application disclosed invention, and that ‘the invention was adetuately defined by the claims. . a A There is no file wrapper estoppel. A file wrapper estoppel could only arise if fhe file wrapper showed that the words “without substantial vapor- oN 97 ization” (or equivalent words ) had been inserted to exclude from the claims any process wherein vapor generation oc- curred in the cracking coil. The file wrapper manifests no such intentian, and, in view of the disclosures upon which the claims are based, the words emesives impart no such limited meaning. arias dl cimitigih tar ital deciblintlies iin cn te. . ther than to inhibit a patentee ftom dropping out of his patent claim a limitation which will leave it practically co- extensive with a canceled claim, in order to bring an accused structure within the purview of the patent. (Smith v. Snow, 294 U. S. 1; Godwin v. International Steel Tie Co., 6 Cir., 2 F. 2d 198.) Petitioner has never sought to have dropped from the claims the limitation “but outpetantial vaporization prevented” (or equivalent ).* . _° The question of file wrapper estoppel cannot even be involved here, for the respondent's process infringes upon the patent as finally issued, irrespective of its file wrapper. history. Ceramic Process Co. v. General Porcelain E. & ‘ Manuf'g Co., 7. Cir:, 129 F. 2d 803, 806; see ©. Howard Hunt Pen Co. v. Radiant Point.Pen Corp., 2 Ciz., 135 F. 2d 870, 873. It exhibits ench and every step vecited in the * claims in suit eyen without resorting to the doctrine of . equivalents. In the Ceramic Process case, the court pointed out that where a process infringes upon a claim as finally issued, the decision of this Court in Exhibit Supply Co v. Ace Corp., 315 U. S. 126, is of no assistance to the in- fringer. . * Petiti is not asserting for the present claims the same scope as original claims 1 and 2. These are not, in terms, as the present claims orc, limited to the non-return of any substantial part of the residue to the me tubes, a step essential to om circulation”. » * O8 e The situation, here is like that considered by this Court in Snuith v. Snow, 204 U.S. 1, where the Court said, pp. 15-6: “It is an ‘illuminating fact that the entire writ- ten argument hled in support of Claim 1, as.it was -finaily presented to the Patent Office and allowed, makes no reference to-any order or arrangement of the eges/ or to shifting the location of the eggs in the incubgtor, no reference to the location of the fan, the direction of the air current, or to curtains or partitions. The features emphasized were the . superiority, Ov er drafts caused by variations of temperature, -of - ‘current produced: by mechanical ineans, applied to eggs in staged incubation arranged _at different levéls, the conservation uf moisture, and the elimination of foul air by the restricted air out- ‘lets, all features of Claim 1 which are characteristic oi both petitioner's and ‘respondents’ cn t ©), We find nothing in the. file wrapper to suggest any additior was i..ade to Claim 1 to restrict the _patent to any’ particular order of arrangement of. ‘ _the eggs or-any particular direction or. means. of’: control of the current of air, other than its velocity, and nothing to estop the patentee from asserting that. the claim is:not restricted by such ‘features. | Citations} It is of no moment-that in the course of the. proceedings in the Patent Office the rejection of narrow claims was followed by the allowance. ef the broader Claim 1.” The situation is wholly unlike that in Schriber-Schroth Co. y. Clez eland” Trust Co., 311 i. 211. Inthe Jardine patent there involved, the sole ‘feature of novelty, without which the claims could not stand, was the flexible w eb. The ‘file wrapper showed that Jardine, ‘by the cancellation of 99 ‘ claims, had disclaimed this sole Vitalizing feature. In the present: case no act of disclaimer appears. True, the words “generated vapors” did not reappear after the cancellation of original claims 1 and 2, but in the same amendment the illustrative run was inserted in the specification and this run, together with the other language of the specification already discussed, shows that the disclosure of vapor veneration without liberation. in the B tubes was constantly in the application. Cf. Crown’ Cork Co. v. Gutmann Co.,. 304 U.S. 159. * . G. The meaning which petitioner ‘asserts for the phrase “without substantial vaporization” is one sanctioned by common usage and by the dictionary and is the only one -. which imparts to the claims of the Dubbs patent any prac- tical meaning or utility. The word “ vaporization” is not a term of art. It is a fairly ordinary English word having different connotations | in different contexts. It has tie ‘accepted meanings,. one being that asserted by respondent, the other being that as- - serted by petitioner. -The District Court found that the “generally accepted” meaning is.generation but did not sug- gest that the alternative meaning—liberation—is not sup- _ ported by ample dictionary and textbook authority. Neither ' court below so found. At the very commencement of the triad in the instant case petitioner admitted that the. word “vaporization” is frequently and properly used. as a symbol for vapor genera- tion. But it urged that it is also frequenily and properly ~ used as a symbol for the passing off,-in a practically gaseous state, of molecules from a liquid, or for the phenomenon — 100 ‘of which the passing off or liberation of vapors is a sine qua non; and that the word is used in this sense in the Dubbs patent. | ‘Such was the understanding cee by Judge Lindley in his opinion in the instant case, as we understand it. It was so held by the Circuit Court of Appeals in the. Root case and by the District Court in that case. Dr. brown, expressed the same view in the instant case (11, 707-8, 738). and respondent's expert Smith admitted that the word “vaporization” is often applied to the phe nomenon characterized by the interdependent steps of vapor generation and vapor liberation (II, 1071, 1163).* Meaning of the word “vaporization” in the industry. As to the‘ use & the word “vaporization” in the industry to connote the passing-off of vapors from the body of oil in which they -had been gerierated,’ Dr. Browii testified that in the commercial Gyro cracking process, in connection with the action occurring in the vaporizing tubes, where the vapor is separated from the liquid and conducted to the cracking tubes (II, 702), the term “ as meaning the passing off or liber ation of the vapors (II, 703). - '@ The word vaporization has also been accorded the mean- ing contended for by petitioner in the patented art. In the United States’ Patent to Behimer No. 1883850 fay olume VII, 3494-3504) granted to The Texas Company on an original application filed November 21, 1918. relating to a vaporization” is used . cracking process, claim 30 in part reads: *The Court will have in mind that Smith in his testimony studiously used the word “vaporization” as a synonym for vapor. generation. _ 101 “separating the lighter constituents by vaperisation from the residual oil, passing the evolved vapors ‘through a separator * * *.” Here unmistakably the word vaporization is used as a synonym for vapor liberation and connotes separation of the vapors from the residual oil. aes. No. distillation process would have any utility unless the vapor generation were acct mpanied by vapor separation , or liberation. Smith said (111, 1163): “Ini the petroleum. refining industry I don’t think offhand of any useful application of a distilling operation where you have vapor generation unac- companied by the passing off of the vapors from. the non- volatilized oil. i | Dictionary and textbook meanings: It was by-no means true that dictionaries or encyclo- pedjas unanimously support the construction given: by the Circuit Court of Appeals. — . ; The true weight of authority among lexicographers gives both rheanings. For example, The Century: diction- ary, after defining “vaporization” as “the act or process of | vaporizing” (ift the sentence quoted by the Court below) . proceeds to define “vaporize” as follows: “I. To convert into vapor by the snilieninn ‘of heat, reduction of pressure or other means; cause to evaporate. . “2. To pass off in vapor.” And Funk & Wagnalls’ Standard Dictionary, also quoted — by the Court-below to.the effect that “vaporization” means . ~ i, . . - : . ” . * . . . 9 2° lll Tid J. Tiss construction of the patent by the [istsict Court and Circuit Court of Appeals in the Third Circuit was correct. _ _The same technical defense, Sis on the phrase ‘twith-_° out substantial vaporization”, ‘was presented by the Patent» Club in the Root case, and was specifically rejected “both by the District a and the Circuit-Court of Appeals. opinion of the District Court dealing with this “defense i is instructive (6 F. Supp. 767): . “The whole defense of noninfringement liane . upon ‘the construction and interpretation of «the wor without substantial vaporization’ in the eg ing tubes. Defendant states this ‘is a matter t vital and, so far as infringement goes, control- tr ling importance.’ Defendant holds that “vaporiza- f tion’ in the clairgs of the patént is synonymous with — cracking.*. It stakes its whole defense of non-in- _” fringement upon this position. It contends the Dubbs patent excludes substantial cracking in’ the cracking tubes, whereas defendant's process involves * *y. substantial cracking in the cracking tubes. : 9, "From this statement in Judge Niel’ $ opinion and in the light of what has been said above, it will be seen that the Patent Club in the tria) of the Rout case recoghized-that-there could be cracking in the B tubes of the Dubbs’ patent without a concomit- amt generation of vapor therein. Consequently, the Patent Club found it necessary, in support. of its argument of non-infringe- ment, to contend that the “cracking tubes B” of the patent were not “cracking” tubes and that no cracking occurred therein. Pre- sumably it was‘ because they failed in. these contentions in the Root case that they shifted positions in the case at har and asserted - through Smith that it was possible to.operate under some other conditians laid down in the — patent without vapor — tion in the B tubes. 112 ““Vaporization,’ in the phrase’ ‘without substan- tial ‘vaporization’ in claim’ 1 of the Dubbs patent and in, the equivalent phrases of the other claims, does not mean ‘cracking. This conclusion follows from a ‘consideration of the patent and of the per-- tinent evidence.. In the specification of, his: patent, Dubbs says:. ‘B are the cracking tubes. Care the vaporizing tubes.” From thesé terms one would naturally. conclude that Dubbs designed 4 process with substantial cracking in the cracking tubes. The primary function of the C tubes is.to separate the vapor from the liquid. One: would also naturally conclude that Dubbs had this separation primarily in mind when he called C tubes ‘vaporizing tubes.’ A-patent, like any grant, should be interpréted as a ‘whole and, as: near as may be, a consistent whole. On page 1. of the specification, lines 75 to 83, inclu sive, Dubbs states that the reflux and :fresh charge are discharged ‘through tubes B and during the time they are passing through said. tubes, they are subjected to sufficient heat to cause the desired amount of: cracking. Said oil is‘ then passed into the tubes ‘C which are only partially: filled with the ov and as the oil passes through these tubes, there . is a liberation of vapors-from same and which vapors pass up, "etc. Moreover in the illustrative . run given in the specification ot the patent on page 2, liries 38 to 43, inclusive, Dubbs states: ‘Thence to the #inch coils B which are subjected to a tem- “perature of 750° to 860°. F. The. heated oil then passes to the 10 inch coils which are maintained about half full of ‘oil and wherein vaporization - takes place.’ This. range of heat in the cracking tubes is cracking temperature an@ at the stated ages sure would inevitably result in cracking.: “Again, 1 claim 5, the’ second step of the Dubbs process is defined as ‘affording a vaporization space above the — ~ BTR 8 ec ARDS ta ences seateniind Crit. RTM Saves ep, CETL ALA Cae — 113 ‘@ stream during the- second stage of the travel there-- of.’ Vaporization here cannot mean cracking as a cracking space above the stream would, be mean- ‘ingless. “A ‘vaporization space’ means a space for liberation of vapor. The words in ‘the claim imme- diately preceding the words quoted are ‘while pre- venting substantial . vaporization.’’ *Vaporization’ used in. successive lines undoubtedly connotes the same meaning.” ‘No comment on this opinion is necessary in view Of its obviong logic. Rae \ * The opinion of the Third Circuit Caurt of Appeals \ ‘The Third Circuit Court of Appeals discussed the same métter in detail in its opinion. (78 F.2d 990-9), After reviewing the contentions and expert testimony, that court said (at p. 998): t aii “Tt is s evident that when the patentee said that the oil was heated to a cracking temperature in the B tubes, but ‘without substantial vaporization,’ he “mgant without substantial liberation of the vapor, - for he says on page 2, lines 40-43, when-the mixture enters the half-filled C tubes ‘vaporization’ takes jplace.: This} word as here used means ‘liberation’ of the generated vapor from the liquid, for after . ‘vaporization’ takes place in the C tubes, he says that the vapors pass up through the lines D to the. pipe E, ete. On. page 1, jines 78-84, in describing the process, he says: “Said oil is then passed into the tubes C which are only partially’ filled with the 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, E and into the header G.’ He thus. defines ‘vaporization’ . o ee ERS by the words, ‘liberation of vapors.’ It is in this sense that ‘vaporization’ is used in the claims.” - These opinions are persuasive. They give te ste patent, cov ering.a “new and revolution: iry invention,” a meaning consistent not only with the language used, but with rea- son and common sense. They construe the patent in such a manner that it. covers the useful process which has; in fact, been installed ae its teachings in hundreds of re- ~» finery operations carfied on by many oil companies, both — slarge and omen. Point II The decisions of the courts below are errone- ous in holding the Dubbs patent not infringed. The construction of the patent adopted by the courts below, on the contrary, deprives the patent ofall meaning and is based upon reasoning which fails to take into ac- count the teachings of the patent as a whole, and the actual operations of Dubbs at the time when he applied for the patent. ‘ L. Tue District Court Decision 1s Erroneous. In view of the fact that the Court of Appeals adopted the opinion of the District Court on the issues of infringe- * ment and the meaning of the word “vaporizatien” (137 F. 2d 6), we must look primarily at the District Court's con- clusions. — ; : _ The opinion of the District ‘Sum (40 F. ~~ 575) - is based upon four fundamental errors: 115 a. The finding that no cracking takes place in the B or cracking tubes of the Dubbs process, and that therefore no generation of vapors takes place therein. The error here lies not only in the premise, but also in the conclusion. b. The expressed view “that Dulbs had no clear idea of what happened in the B tubes, and that he ‘did not con- sider it important.” . c. The exclusion from consideration of the illustrative - run contained in the patent on the ground that it was added by amendment ;. and the exclusion | from consideration of the matter taken out of the patent at the time of the amend- °~ ment on the ground that it had been superseded. - d. The application of an unduly restricted definition of the word “vaporization” as used in the patent. a. The Cracking Zone Error. The District Court initially emphasized the distinction - made by Dubbs between the “cracking zone” and the “vapor zone” of his process (40: F. Supip. 582),-but then said that the patent did not state that “the desired amount of crack- ‘ing occurs in the B tubes: and from t the whole ‘patent it is ‘clear that what he is attempting is to impart to the oil in ~ the B tubes the heat that will cause it to crack in the C tubes” (thid.): From this the court concluded that the generation of vapor must take place in the C tubes, and consequently the phrase “without substantial vaporization” means that there is no substantial generation of vapors.in the B tubes. The Court's major premise and its cudesien | ignore the patent as'a whole. 116 T he specification ‘a the patent describes a process “in “which the oil is continuously fed through the cracking zone and thence through the vapor zone and a portion of the generated vapors condensed and returned to the inlet of the cracking zone” (Vv HI, 3089, page 1 of patent, lines 13-9). The Court's conclusion i ignores this teaching. It also ignores the specific definition i in the patent, referring to the illustrated apparatus, that “B are the cracking tubes” (id., jines 52-3). Had Dubbs intended merely to heat in the |} tubes and crack in the C titbes, he would scarcely have labeled the B tubes. as the “cracking tubes” and referred to them-as the “cracking zone”. Dubbs carried this logic through his claims for he refers to the B tubes there (claim 7) as “a series of tubes seated in a cracking sone” (NII, 3091, page 3 of patent, lines 46-7), as “cracking tubes” (?d., lines 57-8), or as “cracking zone” (1d., dimes 60-1). ° Undoubtedly, therefore, the -patent teaches that cracking takes place’ in the tubes B. As petitioner's téstimony con- clusively shows (11, 655), “These tubes,are called the crack- ing tubes andthe: heating tubes. The oil 1s heated and cracked in the: tubes”’. ban Since cracking. involves a time factor, the cracking process continues in the C tubes; accordingly, as the patent indicates, a “per cent. of vapors” is generated in the ¢ tube’ under the conditions specified (V II, 3089; page: 1 of Pe patent, line 108). But this. does not, as the Dis strict Court - held, lead to the conclusion that cracking, the natural fune- tion of the “cracking tubes 1", as described by the Dublb- process, was not carried out therein. _On the contrary, if shows that vapors must be generated in the B tubes for. . only a “per cent.” of the total vapors is generated in the C tubes. PAV eect mere a earn AE DEAE SOAS ates aOR AA 10s FRI Liat Dan hie BY OES Py. 9 eat tensieamnie ce yeas SA bt OU ei Rea But even if there were ‘any: support for, the District “Court's conclusion that when Dubbs said “heating tubes seated ‘in a cracking zone,” and “cracking tubes” he did not mean that cracking would there take piace, none the - less the “heating of -oil to cracking temperatures in the B tube ‘s would in and of itself cause the generation of vapors in these tubes whether or not there -was cracking | therein. ‘The conditions specitied in the illustrative run, as we have’ demonstrated above, make the generation of vapors in the B tubes an inevitable consequence of the heat apjlied ufder ~ the pressure specified even “without cracking. b. The Erroneous Pieiianiieli that Dubbs did: not know the Operation of his Process. °. The.court’s conclusion that Dubbs “had no clear idea of what happened in-the B tubes” is.not supported by the rec- ord, .but is contrary to it, for Dubbs set down his knowl- edge, apparent from the successful operation of his Inde- pendence plant, in‘his original application when he stated, viter alia, that the oH “aid generated vapors” passed from the cracking zone or B tubes to the vapor chamber or C’ tubes ( IV, 151 5-0) and reiterated it to tke man skilled in the art when he inserted the illustrative run, wherein vapor veneration inevitably oceurred in the B tubes. -The court, in reaching a ‘contrary conclusion, without any evidence in support thereof,. acted as erroneously as . did the lower courts in ‘Diamond Rubber Co. v. Consol. - Tire Co., 220 U. S. 42%, 436-7, Supra. ’ c, The error relating to i the Pate nt Application and its Amendments. = / ’ The District Court se¢med to agre: with the petitioner's contention that, if the illustrative run were to be considered oe P —_ in construing the patent claims, a process wherein vapors _ were generated, but not liberated, in the B tubes would be encompassed by the claims; but the court disposed of this contention by saying, “It must be noted, however, that this description of the illystrative run was not in the. origirial application . but was inserted in the first “amend-— ment to the original application” (40 F. Supp. §83). The court then turned to a disctission of the original ap- lication specifically containing in, its claims the statement that “oil and generated vapors” pass into a vapor chamber from the cracking tubes (40 F. Supp. 583). This state- "ment, indicating clearly that Dubbs contemplated the gener- ation of vapors in the 1 tubes, was held ineffective on the ground that this phraseology had been changed and the: specific: reference to generated vapors had been later can- celled. | | . We have fully go..e into’ the history of the patent ap- plication amendments above, and have indicated that Dubbs’ disclosure was in no way changed by. the amend-- nients. We reiterate here only the ~ undisputed: “Tact that, when the claims containing the phrase.’ ‘agtbyener- ated vapers” were cancelled in-the course . of a -ge neral ° amendment, the illustrative run, setting forth in a differeni. way the same subject matter, was by the same amendment added to the application (IV, 1520-1). This. indicated beyond any doubt that Dubbs did not by his amendment ; change ‘hiS process in any way or say that the generation of vapors was not to take place in the cracking tubes B. The — Court thus held, most incongruously, that Dubbs could derive no benefit on the matter at issue from - his original claims because he subsequently cancelled them, and could not have the benefit of the added iHustrative run’ 119 (teaching, as the original claims did, vapor generation in the cracking tubes B) because it was added by amendment. And this despite the fact that by his course of action he kept his teaching of vapor generation in the B tubes con- tinuously before the Patent Office. Crown Cork Co sda _ Gutmann Co., 304 U. S. 159.: The failure to consider the illustrative run in resolving the meaning of the word ‘‘vaporization” is contrary. to the’ “well-established rule that claims of patents must be con- streed in the light of the-patent aS a whole. Also contrary to this rule, the District Court failed to consider claims 5 and 6 of the Dubbs patent, which clearly indicate that the word vaporization in the Dubbs patent cannot mean vapor generation but must mean vapor liberation. | £ d. The error as to the meaning lo beegt en to the word a vaporization.” . vee Re The final miscqnception of the District Court came ' from -his misapprehension that the “generally accepted” meaning of the word vaporization was. the ‘ ‘generation of vapor” and that this must be the meaning of the word in the Dubbs patent, because the other definition of the word, namely “liberation”, could not be spelled out from the patent as a whole. - We have demonstrated that. Dubbs specifically and insistently, throtighout the patert, nsed ae word “vapori- “zation” to mean “liberation of vapors” and not the _ generation thereof. We have shown that it is impossible to give the word “vaporization” the meaning’ of generation of . -vapors throughout the patent. “We-have demonstrated, as a consequence, that an-adoption of the decisions below ERRONEOUS. * tion. ' . ve — would result not only in ascribing to. Dubbs complete ignar- ance of his process but in assuming that all of petitioner’s ~ licensees paid substantial royalties under the Dubbs patent to practice a process beyond the purview of the patent. Certainly, in view of what is shown in the Appendix as to the meaning of the word “vaporization”, it is not so. clearly stamped with the meaning, generation of vapors, that it must have that meaning in the patent, where the patent, its practical background, common sense and reason dictate another meaning—liberation—also —- by lexicographers. -~= THE Circuit Court OF APPEALS DECISION Is The Circuit Court of Appeals adopted the opinion of the District Court on the subject of infringement and the - meaning of the word “vaporization”, saying that it was so satisfactory that it would be inappropriate to add thereto {137 F. 2d 6). sales 2 | However, the Circuit Court: added to -the District Court's opinion quotations from some dictionaries and ref- erence books dealing with the word ‘ ‘vaporization”, without - reference, cf course, _ _In describing the respondent’s process, having all of - _ the essentials of the Egloff patent, Smith paid a glowing tribute to the economy and utility of the Egloff invention (IIL, 1123, 1128). His testimony covering respondent's operation, and the essential features thereof which are common to the essentials of the Egloff patent, has been re- Fred to (p. 47, supra). j ; « The District Court, in concluding that it was unable to ‘determine the benefits or advantages flowing from the Egloff invention, apparently felt. impelled to confine his consideration of the process to a specific example, set forth in the patent, where illustrative temperature, and pressure _ conditions are recited at which the process may De oper; ated. But the patent is not confined to the specific example so given, and temperatures and pressures’ obvious to the man skilled: in the art to carry out the stated objects of the invention may, of course, be used (III, 1169). ' The District Court, in finding the patent invalid, stated . in-so doing that he was Unable to determine what: benefit may yan from t “ 7 “this reheating [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386404_0029%3A12. Public record. Not legal advice.