Petitioners Reply Brief — Universal Oil Products Co. v. Globe Oil & Refining Co

*

IN THE

| Supcene Court of the Suited. States |

Octones TERM, 1943

No. 302

UNIVERSAL OIL PRODUCTS COMPANY.

sas | . . Petitioner,

sar vs.

_ GLOBE OIL & REFINING COMPANY,

Respondent.

On Wait oF Certiorari To THE Un1Tep States Crrcutt 2

CouRT OF APPEALS FOR THE SEVENTH Circuit

REPLY auee FOR PETITIONER,

UNIVERSAL OIL PRODUCTS COMPANY

- Wn. Dwicut Wuirtney,

* Counsel for Petitioner.

WittiamM F. Ha tt, ae

' CHARLES M. THOMAS,

-Frepericx W. P. Lorenzen,

oa Of Counsel.

March’ 1, 1944,

* =...

. INDEX

I—Tne CLEAN Hanbs Issuz............ a ey 2

A. Petitioner has not acted as part of a group _

pool, but as a-characteristically independent

operator which in fact has provided the prin-

cipal competition with the largest group of

associated patent-owning companies....... . 3.

~B. The pendency of the litigation in the Third .

Circuit Court of Appeals should not move

this Court in its discretion to withhold deci-

sion in the present case.......- hituewe Kins 13

C. Petitioners’ methods of obtaining information

for defense against The Texas Company in

the Dubbs-Behinier interference (1923 ) were

clean and legitimate, and. in any event, do

not. provide a defense to the respon7ent, . ...- 9

(i) The Re ne WERene ke 20

(ii) The Law..:....... Wheres bh os rae

II—Tue INFRINGEMENT IssuE..............._. 33 -

Respondent’s “Fireless Cooker” Theory has no .

application to.the Dubbs Patent... . TTT er «33

oe The primary function of the C tubes is not -

vapor generation, but vapor liberation..~... 37

It was the “clean circulation” feature of the

Dubbs patent. that solved the carbon problem... , 38

Respondent’s contention that ‘ the record

shows commercial cracking stills functioned

as well without as with clean circulation is

CUOMO kk bw ccene iNCRORAVECHES EEA SS oo 39 .

PAGE

Meaning of the word “vaporization” in the

_-Dubbs: patent eaten ppd scuneethn cuban cadens

To support its position that vapor genera-

tion does not occur when operating at the bot-

tom of the temperature range, respondent. is

forged to depart from the principle of Dubbs: .

Smith’s“testimony has not been misrepre-

. Staite . 2... Fe ae eee inher aheeaha eas ee

Respondent’s sail of the Dubbs specifi-

cation, with. respect to the function of the C

tubes and the i meaning of the word “vaporiza-

tion” ’ derived therefrom, is incorrect... .. fa 6

— The Dubbs claims were not cnininded to in-

. clude the phrase “without substantial | vapori-

zation” to distinguish the Dubbs invention

from the prior art............ bankas kao 7

| Petitioner’ s meaning of the w onl “vaporiza- -

' tion” is net refuted by the qualifying adjec- .

‘ tive “substantial” WEP ry here ee as ag

Petitioner has not been inconsistent’ with

respect to. the meaning of the word “vapori-

_ zation” in the Dubbs patent... ............

The D bbs - patent adequately teaches the -

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

=~ / - . . e .

Since’ respondent's operation appropriate the

“clearycirculation” principle of the Dubbs pate:

there’ is infringement if ‘the claims read-on such

opefation POPE Cee ee tyre Fe ere ROR eyo +

.

47

/ Respondent has misstated the effects of pres-.

‘sure in a vapor-liquid phase (mixed phase)

PORN 6 cab nbbscernccncdsceess prec neeee

11i—BEHIMER DEFENSE tN re a oo Ol.

(a) ‘The * ‘joker” in Behimer’s concept, in his °

experimental work and in his patent...... 63

(b) The Behimer patent is inoperative and in-- P

effective for anticipatory purposes....2... 73

(c) Respondent cannot be benefited by the pump

of the ‘Thompson patent in establishing

prior invention by Behimer........ ieee 76

(d) Conclusion mine rah eas 78 -

IV —ALLEGED, PRIOR Art Py eae ent as %. | 79

Hall Patent 1,775,910 (VII, 3200)..........« 83

Alexander Patent 1,407,619 (VIL, 3364). 2... . 86

Greenstreet Patent 1,740,691 (VII, 3476). 89:

Ellis Patent 1,396,999 (VI, 3356) vexeanes : 91.

Respondent erroneously contends the vapor- slinae

processes of -the prior art function. successfully 92°.

Pielsticker Patents, U. S: 477,153 and British

1,308 of 1891 (VII, 3126, Sb ~ 94

Respondent’ S process does’ not stem from itte

prior art }ut from the Dubbs patent in suit. 99

| : :

V—Tue mmaarr Parent, . co... esc cand. ~.+ 100

~ (a) Infringement dacek Wiaas Rie ee Veeewets «-100

“(b). Alleged Prior Art.............. aut aane we

“CoNncLUSION ee eee ee eee -echae ee 105 —

a Ores

TABLE OF CASES CITED \

| 3 PAGE|

Agawam W odlen Co. v. Jordan, 74. U.S. 538........ 73°

, Alabama PowerCo. v. Ickes, 302 U.S. 464, 477....... 26

American W ‘ood Paper Co. v. meer rang

5 a le PI Sr a cb oe Sores ec ese. 73

/ _ Associated Press v. Yaternational News Se rvice, S: D.

N. Y. 240 Fed. 983, Mod. 245 Fed. 244, aff'd 248

UW. S. 215... ree SO re Nee a ee 27

~ Baldwin Co. Vv. ‘Howard €6,.256 U.S. 35....0 052.6 BD.

Beidler ¥. United States, 253 U. S. tp. AEE ET f

Borden's Co: v. Ten Eyck, 297 NJ. S; 251, 256 wic0 2. c. 26

Byers Mach. Co. v. Keystone Driller Co., 6Cirn4F |

} (MB) 28S 2s on Phe Ore) Cee Cee ee ee 31

3 Coffin v. Ogden; 85 U. Sa No 63, 73,77

‘ Croz well v. Benson, 285 U. S. We NGS Suna siglen Ue 26

; Davis v. Schwarts, 155 U. S: 631, 636. eaecgs poten 26

‘ Frésch v-Moore,2U1 U. S.1.s. 0... 0005. abut ya gine

a Gasoline Products Company v. | Champlin Refinin g

{ | C ompany, ct te a” eT OH She CGE 9

a F Hazel- Atlas Glass C ompany v. Hartford Empire C om-

: pany, U.S. Sup. Ct. Oct. T. 1943, No. 398... aA Glee: dee

i Johnson v. Mueser, 212 U. S. 283.000.200.220... 29°

| Keystone Co. v. Excavator Company, 290 U. S. 240, rN. I

: 3 26, 28, 31, 32

: Reyatone v. Northwest Eng. Co., 204 U, S:-42. 0.0% an)

{ Langley v. Devlin, 95, Wash. 171, 163 Pac. 395, 401... 20

—_= Loughranv. L ougiran, 292'0.'S::216, 228: : 2... .. 29

__ Mason v, United States, 260 U. S. 545,.556........ . 26

/ Morgan y. bo i, 153 U.S. 120. ee (ieee 30

Vv

_ New York Trust Co. v.-Eisner, 256 U.S. 345..." .. 70

.- Oliver. Machinery Co. v. Gellman, 104 F. (2d) W.... + 71

Paramount Corp. v. Tri-Ergon C orp., 294 U. S. 464,

Pf andedcaekas SUSNN WAG nwa kh cada desks seucet ns 96 .

Rumford Chemical Works v. Hygienic Chemical Co..

- 215 U.S. 156, 160 ..... 2.00... peccadeseseose *

7 \ Skelly Oil Company v. Universal Oil Products Com-

| pomp, SEB. (BB) GBF on. cic cccccccancctee.. ». &

Standard Oil Company v. Globe Oil & Refining Com-

” _ pamy, 82 F, 2d 488 cs. .oiacca ccs... Watecs 9

_ Standard Oil Company vy. United States, 283 U. io 4.

The Texas Company v. Anderson-Prichard Refining

Company, 32 F. Supp. 348... . ,-- 6,7, 8,A0, 29, 36, 59

United States v. Jefferson Electric Co.. 291 U. S. 386,

WO Deen see boxe ductes iad feGkosvstcs hiss 26

Pe Bagg FOP 6a ic ids Sevbecvacece ross.” 10

\In THE

| Supreme Court’ of dha Huited States

“UNIVERSAL Oi. Propucts: Chealaee,

. Petihoner,

" US. a. No. 392 |

GLOBE On & REFINING ComPANY, -

Respondent.

*

On Writ oF CERTIORARI TO THE UNITED States Circuit |

CourT OF APPEALS FOR THE SEVENTH CIRCUIT

REPLY BRIEF FOR PETITIONER,

_ UNIVERSAL OIL PRODUCTS COMPANY

4

‘Three groups « of issues are presented by respondent’ s

brief :

ay Unclean hands.

(2) \ ‘alidity.

( 3) Infringement. |

On the first two issues, the Findings of Fact, Conelis-

_ sions of, Law and Opinions of the District Court ‘were

detailed ahd sweeping in favor of the petitioner. They were

not ‘disturbed by the Circuit Court ‘of Appeals. On’ the

third, the Findings of Fact, Conclusions of Law and Opin-

ions of the District ‘Court were in fav Or of the respondent.

T _ were sustained by the Circuit Court of en

2

In our main brief we reviewed, in brief outline, what

we took to be the essentia! facts on the unclean hands and’ *

validity issues, with particular reference to the Findings of

Fact and Conclusions:of Law ofthe District Court. In_

-- our argument, we. dealt with the_issue of infringement,

which having been the ‘sole ground of the\decision adverse

to the petitioner, was the appropriate ground for kd senta-

tion by the petitioner hege. | ;

The respondent has legitimately exercised its right to

anticipate a decision favorable to the petitioner upon the

infringement issue (the ‘‘sybstantial vaporization”’. issue )

and has, therefore, sought.to sustain the judgment below

by a showing that the decisions of the District Court on

_ unclean hands and validity were erroneous. Respondent

has divided ‘its presentation into five groups, respectively

dealing with (1) alleged unclean hands. (11), infringement

—the “vaporization” issue, (LIL) validity—alleged) prior?

disclosure by Behimer of. The Texas Company, (IV) val

_idity—alleged prior art, and (V) The Egloff patent.

- We will consider each in order.

“THE CLEAN HANDS ISSUE

Respondent: revives the alleged unclean hands issue, on,

two grounds, the first arising out of Hoot Refining Con

_ pany v. Universal Oil Products Company, now pending tm

the Third Circuit (R!-Br. 2, and 90), and the second aris-

ing out of Universal's efforts during the interference

between. the Dubbs: and Behimer applications (1923-1930)

to obtain evidence from employees and former employees

e a : <

oa) ol

of The Texas Company, assignee of Behimer *. Br. 3,

9-18, and 91).

At the outset of respondent’s “Statement of the Case”’

under the heading of “The Parties”, respondent further

seeks to classify Universal. as part of an alleged great

“patent, pool of leading oil refining companies, ineluding

~ (inconsistently enough) The Texas Company: itself (R.

Br. 6-9). - 4

A. Petitioner has not acted as part of a group or pool, .

but as a characteristically independent/operator which in |

fact has provided the: principal competition with the

largest group of associated patent-owning companies.

_. It is true that Universal has always been a patent hold-

ing and licensing company. Its exclusive. interest has been

in research and development, and it has been only through

Universal that the small independent refiners have been

~ provided with modern and efficient appdratus for cracking

and with immunity from patent litigation. Krom the out- .

set, Universal Jicense agreements have been free of all

restrictions, and, on the contrary, have committed Uni-

versal to protection: of ‘its licensees in the defense of any

suit that might be brought against them by any party.

whatsoever, including any of the great oil corapanies. The

exclusive consideration to Universal has been a straight

cash royalty; and this. has twice been reduce..—once from

15¢ to 10¢, and the second i coincident: wich the expira-

_ tion of the Dubbs patent in suit and obviously as a conse-

_ quence thereof, from 10¢ to 5¢ (Pet: main. br., pp. 37-38).

Universal's rhost distinctive position in the industry -has

| been as the small independent, privately financed (1, 378),

4

which pxovided real and genuine competition to the great

oil refining companies, and was even prepated to fight them

in extensive and costly patent litigation ( Pet. br., 39-40).

— It was under these‘circumstances that Carbon P- Dubbs

made the revolutionary invention in suit. aa shi

From the first, Dubbs was engaged ina battle with

‘The Texas Company. Affiliated with The Texas Company”

. were the Standard Oil Companies of New Jersey and Indi-

ana, and the Gasoline Products Company, through the

patent interchange agreements approved by this oy in

Standard Oil Company v. United States, 283 U. S: 103..

But Universal was no party to those agreements. oo in-

decd during the period under consideration was engaged

in patent litigation with all of the primary parties to them. .

During this period (the 1920s) the Royal Dutch-Shell.

Group and the Standard Oil Company of California had

no intzrest in granting licerises, and each of them held

licenses both from Universal, on, the one hand, and ‘from —

one: or more membe rs of the group of great refining com-

panies, on the other hand. The consequence was that Shell

and Standard of California were vulnerable to suit from

both sides. In that position, Shell and. Standard of Cali-

fornia had-a primary interest tm bringing to an end the

patent battle. They accomplished this by purchasing. all

the stock of Universal, and in connection therewith making .

settlements with the anti-trust defendants ( Pet. br. 37 ).

/The record before this Court tells little.of the story

after the settlement in 1931, which resulted in Shell and

_ California taking over the stock of Universal and settling

the patent litigation with the former primary defendants in.

the anti-trust litigation.. Respondent in its brief, has, how-

ever, referred to.the subsequent events, stating (1) that.

Le $$

Gulf. Vehidine Compary joined in the acquisition of Uni-

versal stock (R. Br. 6); (2) that at the time of suit Uni-

versal hdd licensing rights under The Texas Company and

other patents (R. Br. 6); and (3). that there was collusion

between Universal, on the one hand, and The Texas Com- _

pany and others of the former primary defendants in the

anti-trust suit, on the other hand, in the bringing of patent

suits. against the users of Winkler-Koch cracking stills

(R. Br. 8, 9). Respondent is misled on all these points,

and it becomes yecessary, therefore, for us briefly to state

the facts.

a

F irst. It is not’ Gulf, but ‘Atlantic Refining Company,

that now owns. the one+sixth of thé voting stock of Uni- .

versal (one-half being ow ned by’ the Shell Group and one-

third by Standard of: California). There is no criticism

whatsoever on our part of the respondent for having said

‘that Gulf owns the one-si xth, as: that was in fact the testi- °

mony of Mr. Hanna and so appears in the record (II,

560). We are correcting this on our own responsibility,

and with apologies to the respondent. As a matter of fact,

the error on the part of Mr. Hanna, Vice-1 resident of the

" Standard of | California, is symptomiatic of what has in

- truth been the fact, viz. that Standard of California itself,

like the Shell Group, and Atlantic, has never in practice

‘exercised’ any dominating contro! of Universal, which has

remained under the same management and the same presi-

dent (Hiram J. Halle) during all the years from before

the Dubbs invention down to the- ‘present moment. The

mistake of using the name of Gulf ‘Refining Company in

place of the name Atlantic Refining Company is of course

without particular significanee in this litigation, as neither

“ies 6

was actively engaged in any patent licensing in competi-

tion with Universal; but the correction is made in order

‘that there may be‘ no risk of a misstatement of fact ap--

_ pearing in’ the opinion of this Court. The vital point is

that neither Shell, nor Standard of California, nor At-

lantic (nor Gulf, for that matter), was engaged in the

patent licensing business. Hence the acquisition: of ‘the

Universal stock. o

’Second.. The respondent correctly states the essence of

the agreement (made in $937.) between Universal and the

former primary. defendants in the anti- trust litigation, viz.

that Universal

. Ses >

. ‘at the time of the trial * * * had granted immunity

under its patent to each of them and to their licen-

Sees, receiving in return immunity for itself and its

licensees under patents held by these other com-

panies” (R.- Br. 6).

‘It will be apparent that this was purely a liberalizing and

‘non-restrictive patent interchange agreement, for the bene-

fit of the licensees of rival licensing concerns.

_. Third. The sadpondent has, however, -fallen into seri-

_ Ous error in stating or implying that there has been collu-

_sion betweeri Universal and’ The’Texas Company (and the

other former primary defendants in the anti-trust litiga-

-tion) in the bringing of suits aZainst users of the Winkler-

‘Koch stills (R. Br. 8-9). There has, ‘in fact, been bitter

competition between the two.. This is apparent upon the

face of the opinions in the cases referred to in respond-

ent’s brief. See, for example, the decision of the District

Court in The Texas Company v. Anderson-Prichard Re- - —

fining Company, 32-F. Supp. 348. ;

oA

“

‘ite,

7

Texas V. Anderson- Prichard was @ suit on the Behimer:

patent against a member of the Winkler-Koch Patent Club,

-and'counsel for the respondent in this case, appearing for

the defendant in that case, successfully ‘set up the Dubbs

patent, in suit in this case, against the Behimer patent. In

Jutige Kennedy’s opinion, the following succinctly states’

the conflict, 32 F. Supp. 348, 353:

roo

“* * * The matter in dispute between the liti-

gants is as to whether or not in the Patent Office

proceeding the process in the return of the con-

densate was considered in its broad sense or in a

limited sense (technical terms avoided) in connec-

tion with other provisions of the Dubbs patent. .

Defendant contenfls thut it was cofisidered in the

broad sense. and thet Behimer secured it only in

connection with the method of returning the con-

‘densate by a pump or mechanically applied pressure,

‘while Dubbs .retained his cyclic system* with a

method of returning through gravity or any method

distinguished from a machine through which pres-"

sure was applied. Plaintiff contends ‘that the dis;

_tinguishing feature was in another part of the.

Dubbs process | involy‘ng cracking with no substan-

tial vaporization. in the coil.: I think that the ‘pro-

ceedings’ in the Patent Office when taken by. and

large indicate that the matter in dispute was the

consideration of the cyclic system in its broad sense

and that Behimer disclaimed to Dubbs.any claim

which he” might have made upon the ground of

being the discoverer of the cyclic system and accepted

in lieu thereof. the element of its use through a punip

or mechanically. applied pressure.”**°

*The court so designated “clean’circulation”, 2 F. Supp. 348, ©

* 352:

**Emphasis ours unless otherwise stated.

2

= 8

Here was ng“ollusion between Universal gnd The Texas

Company,—quite the reverse. Indeed, 1 Universal's suit

independently orought against Globe, Mr. Richard J. Dear-.

born, patent attorney for The Texas Company and Presi-

dent of The Texas -Development Company, came forward

as a witness for the defendant and adhered to the position,

‘which he had unsuccessfully asserted in the Anderson-

Prichard case, that the basic invention was Behimer's and.

not Dubbs’s. - However,-the respondent in this case, in call-

ing Dearborn and -otherwise, took precisely the 8pposite

position to that which it took. in the Andefson-Prichard

“gaserand in this case put forward Behimer as a defense

against Dubbs.

Neither the rights nor the disabilities of T he Texas °

‘Company's. Behimér patent are involved in this litigation.

The Texas Company is not a party. It is not interested in .

either party. It is adverse to both parties. But the respond-

erit’s counsel has subtly introduced. it here by "insinuating

that it is in alliance with pefitioner, although its officers

_ testified for respondent i in fayor of Behimer and dversely ,

to Dubbs. ae oy

Viewing the present case narrowly on its merits as a

patent litigation, it is entirely legitimate for the respondent.

to bring forward Behimer as a prior art defense, and to,

tevive the issue as to the clean hands of Universal in its’

conduct of the interference proceedings in Dubbs v.

Behimer. Both these defenses were overruled by District

Jucge Holly, after a full. trial and with strong findings.

‘They are ef course: revived here in support of a decree.

which we have submitted shou!d otherwise be reversed upon

the infringement issue. | on

/

‘ But the revival by the réspondent. of the clean hands.

issue forces upon the attention of this Court not, merely

the merits of the Behimer patent, but ir chceuiiieeaed of

its owner ship. _Anfi of this the respondent has taken ad-

vantage by a Citation of the action by The Texas Company

based upon Behimer ‘against another Winkler- Koch user _

(Anderson-Prichard), and by its innuendo that Universal

‘was in.collusion w ith The Texas Company in that htiga- -

tion. Further, respondent has -referred to Stande:d Oil

Company v. Globe Oil-& Refining Company, 82 F. 2d 488,

and to Gasoline Products Company v. C hampygn Refining

Company, 86 F. 2d 552, again with the innuengo that Uni-

versal was likewise in collusion with the plaintiffs in those

cases (R. Br. 9)!

. There is; therefore, forced ‘upon the attention of this

Court an understanding of the interrelation between all .

these. cases and between the parties to them. It will be

obvious that a group of hard-fought cases covering. in effect -

the period of the:last thirteen years (precisely the period

during which the automobile has had its greatest expansion

and the airplane has come to maturity), and involving the

basic process of petroleum refining ‘by which’ anti-knock

and high octane gasoline | have been primarily produced

during that period, must have been ‘most thoroughly pre-

sented and hard-fought, and: have given rise to questions

_ of complexity as well’as magnityde.

’ With appreciation of the dignity of this Sia’ as a

final court of review, we must present a full picture. of

these cases. However, with equal appreciation of the fact -

that in the end the true issue in ‘this litigation may, and in

our submission: should, be narrowed to the question of the

| eens

- ’ mar : P it

meaning of the phrase ‘ ‘without substantia! vaporization”;

we will make that review as brief as possible. Morebver,

conscious of the: peculiar responsibility devolving upon the

“authors of a reply brief when presented with a new issue

in the respondent's brief, we will attempt to be dispassitin-

—“—ate and to state as to these cases only the facts that are

* | apparent upon the face of the enasiene The vital facts dre’

‘these:

Me a )

1.- In all of these « cases the defendants have been mem-

bers of the Winkler- Koch Patent Group. °

\

a In all of chee’ cases s the deteistadite have won, 1, except

only that Universal won upon the. ‘Dubbs patent: ‘and the —

Egloff patent before the District Court of Delaware’ in ~

Unidersal v:-W'inkler- Koc h. Enginee ring Company, 6 F.

7 Supp. 763.*

5, The Winkler-Koch defendants all actedt through the

+ same counsel Who are counsel for -the Respondent. here. ae

» That counsel successfully asserted Dubbs as a defense

against Behimer-in the dnderson-f’rv hard case.

, Sd, Diners is no scintilla- ot evidence of collusion be-

e tween Universal and the plaintifis in the other cases <(all

former primary detendants in the anti. trust hitigation ). |

There was in fact no colluston.

_-—

°

*We expressly omit any reference to the further desist int

_ favor of Universal in the Third Circuit Court of Appeals in Root

Refining Company v. L ‘niversal, 78. F, 2d 991.

ll

*

5. The Dubbs patent ing suit expired in 1938. The

_Behimer patént runs until 1949. Universal has no interest

_whatsoever.in any recovery under the Behimer patent, -

although it has obtained freedom for its licenses from suit

under the Behimer patent. _

_. 6. Viewed’ broadly, these cases must obviously have

.. cost millions ef dollars ix the aggregate to the various

. parties involved. They have represented what Judge Ken-

’ nedy called “A battle .of the titans” involving what has

become the largest industry in the country, and the indus- . *

** try most important not merely in peace but in modern war.

- They have involvéd.the question as to who made the great

e and revolutionary inVerition which, by retidering petro-

;° leum cracking efficient and economical, ushered. in the new —

. era_of petroleum ‘refining with ‘its large: yields and fine

quality of anti-knock and-high octane product.

But alf‘the parties were not “titans. Perhaps the term.

“is justly applicable to such great vertidal companies as The

Texas Company and the Standard Oil Companies of New

Jersey and Indianat but their rival, the petitioner here.

was from the first a small, privately financed enterprise

-. engaged exclusively in research and .development, with-

' out any interest whatsoever in production, refining or mar-

keting. and whose principal revenue has been derived from

licensing of a multiplicity of small independent re-

* finers.

If ever there is to be a case in which a small operator

can make a practicable invention in a great field, and if ever

such an invention is to be recognized by the Courts ih one

of our great industries, this (we respectfully submit) must -

be the case. Here we have the situation, almost unique jn

12

oe:

“me dern times, of the lone individual rising to do battle on

equal terms with the great.

Necessarily, U niversal’s course has* been a stormy cne;

and it has literaily never been out of the courts. For. the

. first twenty years after Dublis’s work, continuous litigation

was necessary against the greatest \c mpanies in the in-

dustry. Eventualiy, the merits of the Dubs patent com-

pelled recognition even by these great companies, and the

reward for Wniversal was to wring from them immunity

for all of its licensees, . present and future, under their. pat-

‘ents in the same field. Within‘a year after that final con-

summation in 1937, the Dubbs ‘patent ‘expired. /

Meanwhile, Universal had ,been compelled to engage

in a second series of’ battles, this time against that minority

. of the small independent refiners which had banded together

in the Winkler-Koch Group and set up a defense. fund. suf-

ficient to retain and maintain the learned and able counsel

who now appear for the respondent. here.

But the terrain upon which both’ battles have ihine.

fought has been essentially the same. In each, Universal

has in effect been forced to oppose the great interests with

The Texas Cotmpany in the forefrent. _ In the first series’

of battles, they were the actual enemy. “In the second; the

_Winkler-Koch Group was the ostensible enemy, but, as

this Group never made » any ' pretense of develop-’

‘ing patentable inventions of their own, their primary de-

\

fense has come to. Fest upon ar assertion ot the alleged

achievements-of The Texas Company, Ashe recifically, of.

seaimer ). : * aon ’

In fighting these uphill battles, Universal has, of course,’

been constantly open to- innuendoes and charges of every

chafacter. Two groups of charges have been presented by

_ the respondent in its brief, and-must be considered.

~

413

t

BL ‘The pendency of the litigation in the Third Circuit

Court of Appeals should not move this Court in its discre-

tion to withhold decision . in the present case.

In our original petition 4or a writ of certiorari; peti- -

_tioner, as well as respondent; advised this Court before the

grant of the writ that there was pending in the Third Cir-’

cuit Court of ‘Appeals an application to reopen ‘the ‘case .of

Koot Refining Company vs. Universal Oil Progucts Com-

fany on the ground that there*had. beerr fraud upon the

Court, and further that a Special Master appointed by. the.

Third Circuit Court of - Ate had —— in a —

_ tothat effect. —

We presume, therefore, that when this’ Court granted

its prerogative writ, after having received that submission

of facts by both parties, this Court's action was not im-

provident. |

The problem is not jurisdictional. This Court has

‘power to review decisions of Circuit Courts of Appeal;

even though there has. been no conflict of circuits. And"

this power has been significantly | exerci$ed in patent cases.

We entirely agree that it is within the Court’s S power,

-having granted a writ-of certiorari upon the ground of con-

flict. of circuits, to withdraw the grant if it appears that

‘there was not in fact’a conflict. But such action would be

pursuant te an exercise of discretion of this C rg ‘in pass-

ing upon its own prov idence or improvidence, t would not

be jurisdictional: And we respectfully submit that it would -

‘be a sad injustice to the petitioner, in the light of the fact’

that the petitioner itself frankly and promptly informed

this Court of the. Master's report, for this Court to set at

14

<

naught the proceedings w hich it thereafter authorized to

be taken here by-its grant of the writ of certiorari.

\In the other recent patent: cases ‘nv which this Court has ©

granted a writ without a conflict of circuits, the petitioner

has been not the patent owner, but the alleged infringer.

' However, we are confident that the fact that the petitioner

‘in this case Was granted a writ on the petition of the patent

owner can betaken only as an example of.the great principle

that justice is blind, and as a refutation of the whisper that

the scales as between a patentee and an infringer now are

; weighted i in advance against the former.

: Furthermore, we assume that in granting the petition

for writ of certiorari, this:Court had in mind the showing

_therein made, by Affidavit of Hiram J. Halle, President of

the petitioner, that there are pending and untried eight .

suits based upon one’or both of the patents in this suit,

to-wit, three suits in the Third Circuit and five suits in-the

Tenth Circuit. If the Third Circuit Court of Appeals sets

aside its decision in the Roet case, there would be nine such

. cases. And no matter how the Third Circuit Court of

Appeals should ultimately decide the issue, there would still

remain the five casefin ‘the Tenth Circuit.

In the preceding paragraph, we have assumed for the

purpose of the discussion that the Third Circuit Court of ©

Appeals would set aside the decree in the Root case. We

respectfully caution this Court, however, against the as;

sumption that this means that we accept the position that

there was in that litigation any fraud or wane -doing upon

the part of the petitioner.

The petitioner has itself taken the position before the

Third Citeuit Court of Appeals. froim the first moment

(LYSINE A aS eT er EL LS :

or #2 1“ 4 ,

15 ie

thatthe i issue arose, that it wished the case to ie reop.ned..

’ The very “suggestion of fraud was so repulsive to the peti-

uioner that it did not.wish to stend for a moment. upon a

decision as to Ww hich even the suggestion had been made.

We entirely appreciate that the issues in the Root case

are not before this Court, and we feel that it ‘would have been

appropriate had no reference whatsoever been made to ,

, them here. Ho ever, the respondent has permitted itself

at the very outset of its Brief (R. Br. 2-3) to submit that

petitioner is under an “imputation. of corruption and. un-

“clean hands”; that the Master has found the petitioner:

guilty of “Such fraud as tainted and invalidated the judg-

ments’; and that if the Master’s report be. affirmed, peti-

‘tioner’s “right to invoke equitable relief with respect ‘to ~

‘these patents in this, or in any other Court.*would be for-

ever forfeited”, for petitioner would “‘sté and’ convicted of

t + most heinous offense of which a litigant could well’ be

-guNty”. Having. spilt. this bottle of ink upon the first page.

of its brief, the respondent compels the petitioner to submit

a statement of the true status in the Third Circuit.) And > |

petitioner will do this in the briefest possible space.

At the very first hearing befor. the Circuit Court of

Appeals (June 5, 1941), petifioner’s chief counsel-in that.

case, Hon. Thomas G. Haight, said to that Court:

| ages a ,

“We are willing and we ‘fer to let Your Honors

take the record in this case, the briefs” with oral

argument or. not, as you see fit, and’ determine

whether this case was properly. decided or whether:

it was not properly decided. -‘We-raise no techniéal

objection. and will raise none.

“If it was properly decided, then we, ought to

have the benefit of it. Ef ¢t was improperly decided, ”

“16

then the other side ought to have’ it. I-make that’ |

_ Offer with a full realization, which I think Your

Honors will appteciate, that the attitude of this:

€ourt as presently constituted is far less liberal in

its treatment of patents than the attitude of your

predecessors, but I make it notwithstanding that

because we believe that this was—it has expired

* nearly three years ago, the patent—-the patent we be-

lieve cov ered a great invention and one that should

receive protection.” (Transcript of Hearing,: June’

5, 1941. Vol. I, p. 19 of Record Before U.S. C.C. As

3d in Root Refining v. Universal Oil Products Com-

pany.) OK

| ‘Aer the Master had: rendered his report, the Objections

and Exceptions filed by the petitioner opened with the fol-

lowing paragraph :

“And now, to wit, November 20, 1943, while

- from the commencement of this proceeding on June

5, 1941, as indicated by its counsel on that date,

Universal Oil Produets Company has at all times -

been willing that the above-entitled causes be ‘fe- -

argued before this Court and now renews its offer

so to do, it hereby oljjects and excepts to the report

filed with the Clerk of this Court on October 19,

1943, by Thomas Raeburn White, Esq., appointed

- Master by order of this Court dated November 26,

1941, inasmuch as he erred: [Here. follow the

ry exceptions.]"" (Record: Before U.S. C. C. A. 3d,

Vol. VEL, P. 3615.) |

The petitioner has not sought to, hold the benefits of the

questioned decision. Compare Hazel-Atlas Glass Company

V. one ge Empire Company, U. > >. Sup. Ct. Oct. T, 1943,

No. 398. —~

2

17.

"The principal j issues in the Third Circuit are two:

(1) While the Root’ eke was pending for de:

cision in the .Third Circuit . Court of Appeals, did -

-Morgan J. Kaufman, one of the Universal attor-

meys, influence Circuit Judge Davis by making to a

cousin of Judge Davis a-secured loan of $10,000?

(2) Was the one privy to this action |

of Kaufman?

The petitioner has iia ade maintained, and will '‘con- -

tinue to maintain, whatever the decision of the Third Cir-

cuit Coiert of Appeals, that it was entirely innocent and

knew nothing of/any transaction or of any improper rela- |

tionship betw udge Davis and Kaufman. . ‘

- All parties agree that there has not been one scintilla a a

direct evidence connecting the petitioner ‘with the loan made

by.Kaufman to the cousin of Judge Davis. The circum-.

stantial evidence relied upon is that the petitioner paid fees

to Kaufman greater than “his legal services, actually per-

7 formed, warranted. In justification of the payments to

Kaufman, fetitioner gave reasons. including particularly

_ the fact that it was at that time standing suits for an aggre- “

gate of two million dollars by two other discontented.

es attorneys, and that it was therefore peculiarly sensitive to.

the threat of such litigation by. Kaufman. ‘

The counsel for the Winkler-Koch Group, being ‘counsel

_ for the respondent here, have conducted ‘the entire proceed-

ings against Universal in the Third Circuit, as volunteer

amict curiae of the Third Circuit Court of Appeals (al-

though concededly compensated by the Winkler-Koch

Group), upon the basis that, aliiough they could not prove

Sy

=

18

, Oe P ; 4 — ee

‘any connection on the petitioner's part notwithstanding

that the petitioner's officers and attorneys came forward

freely as witnesses, the. proposition that * ‘fraud walks in

darkness” should suffice. ' mo |

The respondent is not warranted _in-making the state- -

Op of page 3 of its. brief to this court “that the

fren consisted in the fact that Universal Oil Products °

> - Company through its attorney, one Morgan S. Kaufman,

extended monetary favors to J. Warren Dayis.” Its re-

‘quest. for a’ conclusiori by the. Master to that effect,—that

the petitioner ‘ ‘through its agent Morgan S. Kaufman, by

means of a bribe corruptly influenced_J udge _J.-Warren.

Davis” —, was expressly “denied by the Master (Record

Before U. S. C. C..A. 3rd, Volk VIII, pp. 3571-3572).

The facts “found by the Master. were that Kauiman

made a loan to the cousin of Judge Davis and that the-latter

had an interest in it; but the Master did not find that

the petitioner knew of this. It is true that in the Master's

own opinion, based in the last analysis. purely upon the.

presumption .against petitioner ‘raised by the amount ot

Kauiman’s fees, he concluded that Universal, even though

“it did not know what Kaufman would do with the money

ce

paid him, did know that in somé way the money or prospect.

of receiving it would be used to. irifluence Judge Davis.

| This, of coursé, the petitioner strenuously denies.

And the vital distinction remains between the relation:

between Kaufman and the Judge, on the one hand, and

the issue as to know ledge by the ee, on the. other

‘hand.

_ There are of course in sition the serious 5 procedural 7

\ questions as to whether this Court has pow er, notwithstand-

ing R. S. § 698, Judicial Code. 28 U. S.C. A. § 863, to con-*

————---.- ~~

4

19

e

: 2 ; ‘ .

sider the facts before the Third Circuit Court of Appeals,

“as they are not in the record in this case; or whether, if the

Third Circuit Court’ of . Appeals does affirm the, Master’s-—-

__report, any-effeet- can ‘be given to Such determination as -

evidence in this case in view of the lack of privity on the

part of the respondent to the proceedings in that case,

Rumford Chemical Works‘v. Hygienic Chemical Co., 215.

U.S. 156; 160. Ini any event, if such determination could |

possibly: have any hearing as newly discovered evidence

upon the issue of unclean hands in this ease, there should

‘be considered the-avattabitity to the respondent of the pro-

cedurally: appropriate remedy of Bill of Review, Federal

Rules of Civil Procedure, § 60-b, which, if the respondent

were aggrieved, it might be able to present in the District

Court after the coming downof the mandate from this |

Court in favor of the petitioner, United States v. Knight’ “=

. Administrator, 66 U: S. 488: . We are not presenting these

procedural points .at any length in this brief, as we feel

justified in asserting with confidence ‘the irrelevance of the

entire Third Circuit Court of Appeals question and the

innocence of the petitioner. x

It is therefore respectively submitted that this Court is

. free to determine the present case on the merits. - | |

C. Petitioners’ methods of obtaining information for de-

‘fense’ against The Texas Company ‘in the Dubbs-Behimer

interference (1923) were clean and legitimate, and, in any

event, do not provide a defense to the respondent.

» .*

There are. two answers to. respondent’s claim to an un-

- clean hands defense based upon the Behimer interference

proceedings, —one on the facts, the other on the law. We

will consider. them in order.

' if \., | : 20

District Judge Holly, after a full trial in open court at

' which he heard and saw the witnesses, made Findings of,

a _ Fact and Conclusions of Law ( I, 463-468) exonerating °

the petitioner of the charges. He also delivered an oral

opinion at the close of the testimony (1, 460-463). :

is ‘The. conclusions ‘of the. District. .Court.are, of course \

entitled to to the ordinary presumptions. of soundness. |

=

(i) The Facts

The Dubbs patent had issued in 1921. In 1923 an in-: -

‘terference was instituted in the Patent Office. between the |

Dubbs patent and an application of Holmes (President. of

The Texas Company),° Manley (another high officer of >

The Texas Company) and Behimer, which was owned by |

The Texas Company and contained claims copied from the

Dubbs patent by The Texas,.Company (FF 5; I, 464).

Holmes and Manley later withdrew their names.

Neither the respondent nor any other member of the

Winkler- Koch Group had: anything to do with this inter-

ference proceeding at any. stage. Indeed, the W inkler-

Kock Group had not been formed at that time.

‘ Dubbs described on the witness stand how in 1923, when

’ as a fesult of the declaration of the interference he gained

access to the Behimer file wrapper and learned that Behimer

claimed successful reduction to practice in May 1917 (FF 6:

_ I, 464), he (Dubbs) was dumbfounded, bécause he knew

"that at this time The Texas Conipany had installed at a‘

cost in excess of $3,000,000 a commercial cracking plant

consisting of a battery of 24 stills. that did. not practice

clean circulation (I, 394; and infra).

' Dubbs farther explained that in protracted litigation

which the petitioner had formerly had both with The Texas

Cet re

Company al Standard Oil of Indiana, he had formed the

, belief that The Texas Company had participated in )put-

ting the Adams patent through the Patent Office ty i

proper means (1, 394; FF 6; 1, 464).

We need not try here the issue whether Dubbs was

right or wrong in suspecting the bona fides of The-Texas

Company. The material iact i3 that he did. suspect it, and .

_ that he had at least substantial grounds for so doing (see

further discussion infra under Point III, as to the admis+

sions by Behimer and other Texas Companiy officials that,

- at the time of filing of the application, they knew that there

_ had not been a successful reduction to practice).

It thus became vital to the petitioner and to Dubbs to

- find out what in fact The Texas Company had been doing.

This fhey sought to do by two means: employing Behimer

himself at an increase in salary, and employing an,agent

(one Wannack) to dnterview other employees and ex-em-

ployees of The Texas Company. Both means were entirely

legitynate ; and indeed some such means is always necessary

when it is vital to one party to find out the true facts as to.

the position-of the other and when the first’ party does not

believe that the facts have been truly represented by the

other. The investigation. was commenced “in good faith.

- for the sole object of ascertaining the facts and truth re-

garding the Behimer work” (FF 7; I, 464; I, 395). “All

that was sought by Universal in prosecuting the investiga-

_ -tion, was the ascertainment of the truth and facts concern-

_ ing the work that had been done by Behimer and The _— |

Company. . Theré is no evidence to the contrary” (FF 8

1, 464). ir ee

In dealing. with Behimer, the petitioner was scrupulous

to agree that his knowledge. experience and testimony

22

‘should always be available to The Texas Company in re- .

spect to anything that he had ever done while in its employ,

including in respect of the application at issue in the inter-

- ference. (FF 9; I, 465). His employment contract pro-

__ vided that’ “It is understood between the parties hereto that

the party’ of the first part [Behimer] retains, the right to

execute all proper. papers and testify relative to his former’

patents and patent applications now owned by his former

employers or their assigns” (I, 274).

~ Behimer in thé summer of 1927 was under no contract

_ requiring him to remain in the employ of The Texas Com-*

pany (1, 272-4).. Yis salary with. that company was

DOO $45,000 per year (I, . The simple story behind his hir —

, ing is that he accepted a better offer from the petitioner

| (1, 296). Accordingly, the District Court found

“Behimer was within his legal rights in leaving

the employ of The Texas Company and accepting .

employment with Universal, and Universal was

within its rights in employing him, and there was

nothing ‘reprehensible about Behimer resigning from

The Texas Company and accepting employment by

Universal, or about his eniployment by Universal”

(FF 12; I, 465).

Most of respondent's citations to the wend are cither

‘to the testimony of Wannack or to the testimony of em-

“ ployees of The Texas Company relating to conversations

which they had with Wannack. . It. was conclusively estab-

lished at the trial that Wannack ‘was at the time of the

trial suffering from paresis, of which ove of the usual

symptoms is a delusion of grandeur’and power (I, 451-2,

458). Even twenty years before, Dubbs’s choice of Wan-

~ nack as an investigator may have been unfortunate, but the -

: o”

fact is that neither Dubbs nor Universal gave authority to

Wannack or anyone else to engage in any improper prac-

tices or to make any effort to break into the offices of The

' Texas Company (I, 397). Indeed, upon ‘discovery that

' Wannack had taken it upon himself to engage in any but

" proper methods of- investigation, he was immediately re-

moved by Dubbs from his position as investigator, and was...

given notice of discharge by the company (I, 400-1'). Even

Wannack testified: at the. trial that his only authorization

from Universal wag to ascertain the true facts regarding

the work of Behimer and that he was not requested to keep

or destroy any of the’ records ¢ of The Texas Company (I,

- 261-2).

It had becdane the duty of the judge to, choose between

the witnesses; and he elected to-accept as truthful the tes-

_timony of Dubbs rather than that of Wannack. Dubbs

testified (1; 396): .

_ “Wannack was never directed : or authorized to

get access to the files of The Texas Company; that

was never even discussed. ‘I did not make any such

- statement as Waninack has testificd to—that T told

him to secure run sheets or blue prints, and that. the®

sky was the limit in securing such evidencé.~ I only

-. told him to get such information from people he

‘might contact that they would have in their personal

ereacneal

The District Court made th se findings of fact, among

others:

‘ “9. Universal never had any intention, and no

"attempt was ever made, to pirloin or keep or destroy

any records of The Texas Company, or to suppress, _

impair .or destroy evidence . . . and none of these

; 24

_ results followed from any - the acts done or at-

tempted to be done by Universal.

o a .

“11. - The aforesaid investigation.in no manner

injured or prejudiced The Texas Company or the

a a cause, of anyone else.

. + «

“23. Neither Otto Wannack or anyone else rep-

resenting the Universal Oil Products Company and

making investigations on its behalf, was asked by

. Universal Ojl Products Company to take and keep

any records of The Texas Company, and did not, in

fact, get any such records.” (FF 9, 11, 23; 1, 405,

468.) -

Contrary to what respondent states in the sentence be-

ginning at the bottom of page 3 of its brief, the facts, as

stated by it on page 3 of its brief, were neither woe‘

by petitioner nor found by the District Court.* %

Respondent makes much of the $25,000 loan “against -

Behimer’s first five years’ bonus” (Res. Br., pp. 14-15).

_ The implication that this bonus was paid as a bribe is belied

by the uncontradicted testimony of respondent’s witness, |

Behimer, himself. He testified (1, 295) that in the course

of his negotiations with Universal's representatives, his

. father suggested that he would have to move his home,

that he would probably have to buy a new home and have

higher living expenses, and that “ ‘you hetter put in the con-

*As a single example, respondent's statement (R. Br. 1°)

_ that Mr. Hall (of counsel on this brief) stayed with Behime: in

’. California is not true in fact and the District Court did net »

find. In fact, Mr. Hall caswally met Mr. Behimer at another rote!

tL 298). vs .

&

25

tract an advance of some kmd sa that you would be able

to incur any extra expense or'do what you want to do after _

moving.” Behimer stated that that suggestion was later

incorporated in the contract in the form of the $25,000 ad-

vance against the bonus (1, 295). Respondent's own testi-

“mony thus leaves scant room for the accusation of ee

or the suppression of evidence.

Respondent also endeavors. to make capital out of Be- .

himer’s vacation trip to California immediately after. enter-

ing the employ of Universal (Res. Br.,; p.,15). Again, .

Behimer, himself, destroys respondent's theory. He was

rot spirited away but, on the contrary, he insisted on taking

a vacation Cl, 295), and it was upon such insistence that

Dubbs suggested the vacation trip to California, which -

was taken. Furthermore, it was Behinier himself, who

wished to undertake this trip without advising The Texas

Company of his whereabouts, because he did not “want any

comeback” or any “complications,” not. did he want any

“counter propositions.” “I had decided” (1, 297).2 ~ .

In addition to the finding as to the hiring of Behimer

_ which we quote above, the District Court: made many

others (1, 464-4) wholly exonerating Universal from any -

wrongdoing. The findings point out that Behimér’s where-

abouts could easily have been aScertained at the office or

plant of Universal ; that Universal had at no fime attempted

‘to influence Behimer to testify falsely, or to suppress any

evidence, or to make any, false affidavits of statements

’ (FF 15, 16, 17; 1, 466-7) i that Behimer left his complete

records with The Texas ny,. and these remained

. with-The Texas Company at all times (FF 14; I, 466);

that the hiring of Behimer had no bearing upon the dis-

Claimer filed by The Texas Company in the interference

(FF. 20; I, 467). . Indeed, it is undisputed that within

- approximately two weeks after returning from his vaca- -

tion, ‘Behimer had a conference with the Texas patent

attorney, Dearborn (I, 188-9), and that thereafter he exe-

cuted all documents which were properly submitted for his.

signature. nS ‘

Behimer testified fully in this litigation tes the respord-

ents, not only on the unclean hands issue, but on the

“merits. : ag ae

The District Court’ s disposition of the unclean hands

issue in the findings, and hi opinion rendered. immediately

upon the close of the evidence (1; 460-3), are not only fully

supported by the evidenée, but we believe that no other

result could have been reached.

<\ , ; :

. _ (ii) The Law‘

The case is an apt one for application of the rule that:

‘the findings of the-trier of the facts, particularly where they

* rest largely upon the testimony of witnesses heard in open

court, will not be disturbed if there is any evidence in the

record to sustain. them. Alabama Power v. Ickes, 302

‘ULS. 464,477; Borden's Co. v. Ten Eyck, 297 U.S. or

201; United States y: Jeffe rson E lectric-Co., 291 U.S, 386,

407 7: Crowell v. Be nson, 285 U. S. 22, 51: Mason v. se ‘d

States, 200 U.S. 345, 556; Davis V. Schwartz, 155 U.S.

631, 630; Rule 52( a) Federal Rules of Civil Procedure.

It °: suggestive of the weight to be accorded to re-

_ spondent’s argument’ on unclean hands that it fails to point

éut a single finding w hich is not supported by .ev idence in

‘the record.

The present casé 1s not akin to Keystone. Co. v. Ex-

cavator Company, 290 VU. S. 240, and indeed the action of

:

!

4

27

: | ei

petitioner here was far less serious than that of the plain-

tiff in Toledo Ca. v. Computing Co., 261 U.S. 399. It was

there asserted in a patent infringement suit that plaintiff

liad suppressed evidence of prior invention by buying up,

wherever possible, all scales:embodying the alleged prior in-

vention. In — a decree for the Plaintiff, this Court

-— (p. 422) .

‘“But there is not anywhere in the record, which awe |

can find, or which has been pointed | out to us, any. .

real evidence thac the Toledo Company. was, in the

slightest degree, interfered with by acts of the Com-

puting Company 1 in its search for evidence of the

Phinney prior use. * * * There is nota scintilla of

evidence _to show any effort on the part of the Com-

puting Scale Company to induce any witnesses not.

to testify, or to spirit, them away from contact with

the Toledo Company. There is nothing to show

that .if the Computing Scale Company had not

bought the Phinney scales: the Toledo Company

would have found them any earlier.” _

- Needless to say, if Wannack’s diseased mind led him

_ to push his investigation further than the bounds of pro-

priety. prescribed, Universal, although his prineipal, wou!d.

not be guilty of unclean hands on that account.” In Asso-

ciated Press vy. International News Service, S. D. N. on

240 Fed. 983; mod. 245 Fed. 244, aff'd 248 U.S. 215, the

District Court said (p. 989):

’ “Now ‘the doctrine that he who comes. into equity

must come in with clean hands does not recognize

mere imputations of guilt based upon technical the-

ories of agency. To invoke it a knowledge must, exist

on-the part of the principal of the facts upon which

the charge of unconscionable conduct is based, and

‘in the case of a corporation ‘those facts must be

ae

2

- brought baad to the persons exercising general con-° 4

trol over its affairs.”

Even if impropriety had been found in Wannack’s en-

deavors; and if sich impropriety could be charged to the

petitioner here, there is authority for the proposition that

wre scope will be permitted a party engaged merely

im seeking to determine the truth. In such a:situation equity

is réluctant to apply the doctrine of unclean hands, even

though the conduct complained of, if directed toward an

improper end, would-have been condemned. Vudcan: Detiai-

ning Co. v. Assmann, 185 App. Div. 399, 428-9. While a

‘contrary magpie’ may be found in The Stevens-Davis

Co. v. Mather & 230 iil. App. 45, 124 (Res. Br... p.

92), the court was spt si as the opinion at the place cited

"indicates, directing its remarks at conduct which went far

_beyond, the simple ascertainment of facts.

it is well settled that a plaintiff will not he nried — = :

maintaining its suit on the ground of unclean hands unless |

‘ its conduct bears directly upon the equity sought te-be en--

torced,.and affects the equitable rejations between the par-- &

ties with respect to the subject. matter being litigated? The

rule was so stated by this Court in Keystone Co. v. Ex-

cavator Co., (290 U. 5. 240, 245:

“But courts of equity do net make-the quality

of suitors the test. They apply the maxim requiring -

clean hands only where some unconscionable act of

one coming for ‘relief has immediate and necessary |

relation to.fhe equity that he seeks in respect of the

} matter in litigation. They do not close their door:

because of plaintiff's misconduct, whatever its char-

/ acter, that has no relation to anything iivolved in

the suit, but only for such violations- of conscience

as in some measure affect the equitable relations be-- |

i 29 eee

J -

- tween the parties in respect of something brought

before the court for. adjudication.” |

This is the general rule. Loug ghran v. ‘Lou ghran, 292 U.S

216, 228:

In the present case, not only has the: respondent suffered

no wrong by reason of the awarding of priority to Dubbs.

in the interference proceeding, but it has actually been bene- __

‘fited thereby. At the time the decision was. made, the

Bubbs patent had only, about seven year's to run. Had the

award of priority been ‘made to Behimer, however, the pat-.

ent would thereafter have been issued to The Texas Com-

pany for the full statutory period of seventeen years.. Con-

sequently, defendant would have been subject to a patent

on the ‘clean circulation” process fer a much longer period ;

(FF 22, 1,468)... .... -

In fact, the group of users of the infringing Winkler-

Koch: process, including the respondent herein, who are.

conducting the defense of this suit have, in another suit

brought by The Texas C ompany against one of the group

for infringement of the patent issued to Behimer, relied

upon the ‘decision in the Behimer-Dubbs interference to

defeat the claim of. The Texas Company. Tetas Co. v.

Anderson-Pritchard Refining Corporation, W..D. Okla.,

32 F. Supp. 347, 353, aff'd 10 Cir., 122 F. (2d) 829, 837.

Clearly, the maxim ought not be applied in favor of a de-

fendant who in another case has sought to utilize to its

advantage the patent whose issuance is naw sought to be.

made the basis of the unclean hands charge against the

petitioner, On such facts, “to‘apply the maxims relied on”

by respondent “would but pervert them.” L angley: Vv. Dev-

lin, 95 Wash. 171, 163 Pac. 395, 40T.

Under all of the many cases above cited, it has uni-

formly been held that the maxim of unclean hands will be

j F j ee

ae : as r 7 , ee

) ee ok

applied to bar a plaintiff from equitable relief only where

the conduct in question in some measure affects the equitable

‘relations between the parties in respect .of the matter

brought before the court for adjudication.. Assuming,

plaintiff's conduct prior to the termimition of the interfer-

‘ence proceeding t to have been as reprehensible as. respondent

here suggests, none the less ‘the equitable relations between

the parties here have not been &ffected.

Presumably the respondent: contends that the contact

in question had some bearing <ipon the interferetice

preceding. which, as.a result of disclaimer, resitlted in

Dubbs’s. favor. Assuming this to be so, there is nothing

‘in the complaint (I, 15-22) which relies upon or eyen -

refers to the, interference. Indeed, it is well established.

~ that not enly the decision on the. interference had no

effect as rcs judicata, but eyen had it been against

the Dubbs patent, which had already been issued,

it would note in any. way have invalidated that patent.

Baldwin Co. v. pap Co., 256. U. S.. 35; Johnspn v.

‘Mueser, 212 U. S. 283: eae v. Moore; 211 U. S. 1:

Morgan v. bee. 153 U. S$. 120. - ek. uy.

The case then comes ‘iwi to this: Petitioner sued on,

a cvalidly issued patent, making no claim in the pleadings

with respect te the interference subsequently instituted but

resulting im its favor. The respondent for its own purposes

brought into this case the interference, the disclaimer filed +.

therein, and the Patent Office conclusion reached. Having.

done so, respondent now wishes the Court to hold that:

alleged improper conduct in connection with a determina-

tion, which respondent: itself ‘first brought into this case.

should in some way debar the petitioner from relief. © _

This cfaim of respondent is made in spite -of the fact

that the entire matter of precedence as between’ Dubbs and

.

ee

- . ”

Behimer was fully litigated in this proceeding without ‘re-

gard to the interference, and in spite of. the fact that

_one_ in in_any_way-eonnected with the Behimer invention, in-

‘cluding Behimer himself. “This evidence is considered “dct

ILI, infra.. Respondent's extraordinary. contention is made

even though it does not claim any suppression of evidence, 3

or that any effort was made to suppress evidence, or that

‘respondent was hampered in any way in making proof in

this case. ate

The decision in the Keystone Driller case, 290 U.S. 240;

supra, has nothing in common with’ such a situation. ia

that case the plaintiff affirmatively pleaded and sought to”

‘obtain preliminary injunction cn.the basis of a decision pre-

viously obtained in Byers Mach. Co. v. Keystone Driller Co..

6 Cir., 44 F..(2d) 283. In the second case, the defendant

‘showed that the decision in the: Byers case had been ob-

tained in part by the suppression of evidence of one Clutter,

whose prior use might have rendered the Downie patent

invalid. The plaintiff in the second case, 290 U. S. 240, .

was defeated not, because it had suppressed the evidence of

“Clutter in the first case, but because, it sought.i in the second :

case to obtain injunction on the basis of the prior decree,

which had. been i improperly obtained. And i in the third case.

Keystone Co. v. Northtvest Eng. Co.,.294 U.S. 42, in which

‘the Downie patent was ultimately held invalid, the decision.

was made on the merits in each of the three courts deciding

“the matter, although it’is clear from a- footnote (294 U.S.

44) that this Court at least, and presumably each of the

lower courts, was fully acquainted with the prior ‘litigation

. in which the Clutter evidence had been suppressed,

respondent had available to it and‘called as a witness every- -———

~~ reason of an application of the ordinary equitable. maxim

82.

‘’ The decision in Morton Salt Co. v. Suppiger Co., 314

U.S. 488 (Res. Br., pp. 91 -2), does not change the rule/

here applicable. As this Court indicated in the opinion, the.

_ plaintiff in the Morton Salt case was not denied relief by.

of unclean hands; but was denied relief. on the ground of

public policy. The complaint would presumably have been

dismissed as Surely if the action had been at law. |

‘The basis of tht decision was that the enforcement of

the patent would aid in the violation of a statute. ‘The plain-

tiff was seeking to enforce rights which, under the circum-.

‘stances, were contrary to public pelicy. In that situation:it

has long been ‘settled that the plaintiff's rights, whether con-

_.tractual or otherwise, will not be enforced. Since the de-

cision in the Morton Salt case, the lower federal courts

have .recognized that it does not change the rule of the —

Keystone Driller case, but relates to a peculiar situation in -

_ which recovery is denied because the plaintiff's action is

condemned by statute, and thus is contrary to. public’ policy.

But even if it be assumed’that the decision in the M orton |

Salt case is an extension of the principle announced in the

Keystone Driller case, none the less it would have no appli-

cation here. In the Morton Salt case it was held that the

petitioner in the very suit involved was seeking the aid of |

the court to validate a patent whereby it was then carrying

on an unlawful enterprise. The suit was in aid of inequitable

‘ conduct. No such situation is here alleged.

If there had been inequitable conduct, it ceased years

in fore the present action was instituted or tried. Neither

the Morton Salt case nor any other decision has held that

' coutts of equity will search the record and award relief oily

to suitors.who “have led blameless lives,” 314 U. S., p. 493.

«

meee A fn we aeittes eee Ma a

33

Again, if there ‘id been inequitable conduct, ~~ The

Texas Company would have béen affected.

- The public has no vested interest in the._petitioner’s .

ignorance. If there were facts materia] to the Dubbs-

| Behimer interference which the petitioner would not have

krown but for the exercise of some improper method of

ascertaining them, The Texas Company might have ground

to assert that it had been injured by the petitiofiers” having

ascertained the truth, but the public can never be injured by

ascertainment of the truth by both parties to a litigation. —

Nor could the respondent, be affected. It had no part

in the Dubbs-Behimer interference, and the petitioner was ,

_ hot interested ‘in the respondent at the time that it sought

the information by The Texas Company. If the petitioner

had by improper means learned more about The Texas

' Company and Behimer, the respondent would still- have re-

mained equally free to contest the validity of either the

Dubbs patent or the Behimer patent or both. ,

‘ ,

THE INFRINGEMENT ISSUE

Respondent's “Fireless Cooker” Theory has no applica-

tion to the Dubbs Patent.

This is the catchi name by which respondent designates

its perversion of the process of ‘the Dubbs patent (R. Br.

~ 28-35). |

If what respondent meant, by calling the process of the

‘patent a “fireless cooker” process, wes that, in Dubbs, all

the heat is introduced into the oil in the cracking tubes B

and nene in the vaporizing tubes C, we would agree that

34

these steps are a part of the process of - the patent; the

analogy. would have some meaning. However, respondent «

. does not. stop there. The operation to which it applies this -

éatch name is not the real operatioré but the operation after

there have been grafted onto it the many t unwarranted dis-

tortions by respondent’s expert.

In respondent’s construction of the. process of the pat-

ent, within Me conditions of the illustrative example, | any

substantial formation of vapor is avoided in tubes B. To

reach this résult, respondent confines the operation of ‘lie

process to the use of the lowest part of the temperature —

range of the illustrative example, discarding all the higher

temperatures. specified; alternately, resporident suggests

that, if the higher temperatures of the range Are to be used...

the pressure specified must be discarded? antl Father than

using a pressure of “approximately 100 pounds”, pressures

of the order of 500, 850,.or even 2,000 pounds must on

adopted (R. Br. 47, 118).*

.. Moreover, respondent discards the gperation taught in

the Dubbs patent, wherein the vaporizing tubes C are. in-

sulated ;\it discards also Dubbs’s clear teaching that if the

C tubes are heated, they are heated only to compensate fcr

entnamingal iets ®

*Petstioner agrees that before ‘Dubbs’s advent it was. wel!

known that vapor generation could be decreased or prevented by

increasing the pressure, aS suggested by respondent at page 47 «1

its Brief. Petitioner disagrees with respondent's contention (kk

Br. 47, 104, 106) with respect to the upper range cf tempera:

tures of the illustrative run, that in determining the meaning ©!

' the word “vaporization” in the patent, or sn operating the process

of the claims to fit respondent's construction theteof, one is a!

lowed to first depart substantially from the: operating conditions

specified in such run, to such an extent that the pressure. there

specified of approximately 100 pounds is increased t0- pressures

above 500 pounds.

35

: radiation losses. Respondent makes its position eminently

clear on the latter point at page 124 of its brief. There,

2, subparagraph (b); it is stated that.the cracking tempera-

‘tamed in the C tubes. This requires putting enough heat

into the oil in the C tubes to prevent any drop of tempera-

ture that would result from heat losses due to Vapor genera-

tion and.cracking. Indeed, since, in respondent’s fictitious

operation of the Dubbs process at the lower part of the tem-

perature range of the example, the crackin# operation ‘s

amount of heat introduced to the oil in the C tubes would

be substantial—and the C tubes would be endowed with all

the disadv antages and hazards of the Burton process.

Petitioner’s distinction between loss of heat by radia-

tion, and loss of heat by vapor generation or cracking, ‘is

. not “absurd” (R. Br. 47) in view of the principle of Dubbs

. -and the Yxplicit distinctiorf that the patent itself makes when

it mentians only radiation losses -( VII, 3089, lines 99 to

105). Jn this connection respondent has not fairly tepre-

sentett the testimony of Pyzel, upori which-it ‘relies in sup-

_port of its contention that Dubbs permits supplying to oil

in the C tubes heat lost from vaporization and cracking.

. Pyzel testified on several occasions that in the operation of

“the demonstration run of the Dubbs process which he wit.

nessed, : oa+ \

“* * * the oil was carried over to a series of four

or five‘horizontal ten inch tubes {C tubes], which,

were: also placed in a furnace but were not really .

heated, but only kept at a high temperature, that is

order ‘to avoid loss of heat.” (1,507 yo sf

.

-

under the beading “Process of Dubbs’s Patent” yunder No. ©

- ture which the oil attained in the B tubes must be main- ”

' substantially confined to the C tubes (R. Br. 29), the:

to say, they were placed in part of thefurrace in .

-

o a. % , ¢ »

aad z oe »

“* * * These ten inch.tubes were either in a sepa-

‘rate furnace or they, got flue gas from the other fur-

nace. It ‘was built in’such a way that those tubes’

were not overheated. They were heated to keep- them

‘warm to prevent them from losing heat by radia-

tion. * * * It-was certainly not the object to supply

heat in these large tubes because they were cracking.

That, was done i in the tubes before.” (1, 517)

olly apart from the testimony of Pyzel, the original

cormtemporaneous records of the mid-summer demonstra- |

« tion*( PX 597, IV, 1823-62) establish that in the operation

of ‘the demonstration plant, which was substantially the.

“same as the operation which. Pyzel witnessed, the tempera-

_ ture of the oil at the outlet of the B tubes dropped materi-

\ ally..in the C tubes.

Respondent relies upon the commercial operations

* of the Dubbs process,-in which a large unheated (actu-

ally insulated ) chamber was used (R. Br. Pp. 29), with a

consequent drop.of temperature beyond the discharge of the

B tubes. These commercial operations aré the antithesis of

respondent’s constriction of the patent, in which’ the tem-

perature of the oil in the C tubes must be maintained the

same as that reached in the B tubes by supplying to the «i!

‘sufhcient heat to compensate for temperature drop due to

vapor generation and cracking (R. Br. 46-7, 124).

Again respondent suggests that the success of the com-

mercial Dubbs operation was due to the application:of the

two-step or “fireless sear mere ee respondent

*At p. 127 of its brief, cacaieaia states that in the ease of

_ Texas Co. v. Anderson-Prichard- Refining Corporation, 122 F

(2d) 829, “the Court of Appeals held that Behimer’s claims must .

be interpreted in the light of his specification, which, like Dubbs’s.

teaches a two-step “fireless cooker” cracking process * * *". On

37

finds in. Dubbs (R. Br. 34), whereby -n no substantial sine

ing and vapor generation occur'in the heating coil 6r B

tubes (R..Br. 56). This is ditectly ‘contradicted: by, the.

undisputed ,evidence that in all Dubbs commercial opera-

tons substAntial vapor generation and substantial cracking

occurred in’ the iat coil or B tubes (11, 693-4).

Thé primary function of the C tubes is not vapor generation, .

but vapor liberation.

We have fully pointed: | out in our main brief that a

primary function of the C tubes is to liberate the vapors

from. the oil in, which they are contained. as a foam (P.

Rr: 79-82), and not, as advanced by respondent (R.

Br. 111, 129-and elsewhere), to generate vapors. Respon-

dent's conclusion is based on its unwarranted reconstruc-

_tion of the’ Dubbs specification’. But even. iti this recon-

struction, where generation of vapor is an important func-

tion of the C tubes, the liberation of the generated vapors

in such tubes is at least as importa™m, and an essential of.

the process, - because aceording to ‘respondent’ ‘S expert

vap 1 generation without liberation does not make a useful -.

‘distillation process in. the petroleum refining ar

(iT, 1163).

-. On this point, respondent attacks (R.- Br. 129) the

statement of the District Court’s opinion in the Root case

. that “the primary function of the € tubes is to separate the

vapor from the liquid” ; “by reference to certain testimony

page 60 of its brief, beapeenien seeks to create a similar im-

pression.

The Court did not use the words “fireless cooker” —it did not

say that Behimer's Specification, “like Dubbs’s, teaches” such a

process. en

38 a

of Dr. Brown (II, 750-1). Its argument is not supported

by the cited t y of Dr. Brown. Inthe testimony upon

‘which res t_relies, Dr, Brown was considering a

hypothetical case where separation alone would take place

in the C tubes. Since, according to Dr. Brown, some gen-

eration of Boor also occurs in the C tubes, the hypothetical _

case there considered offers no support for respondent's

_ assertion that grave error was committed by the District

Court in the Root case. The view of Dr. Brown that libera-

tion of, the vapors is the primary function of the C tubes

was correctly adopted by Judge Nields.

ik eu the “tins tintin? tees 6 hs Ot

ae ee NE ae SE Se .

Respondent ( Brief, pp.. 35-36) erroneously contends.

that in the Dubbs patent “clean circulation” is not the .

* solution of the carbon problem but is a minor step in a two-

stage cracking process which is primarily responsible for

the solution of that problem. As a preliminary to its dis-

cussion of. this pojnt, respondent misstates Dr. Brown's

definition of “clean circulation.” Dr. Brown did not testify

- that “clean circulation” is merely:the return of reflux to they

inlet of the cracking tubes B instead of directlyato the

vaporizing tubes C. What he actually said was that such an

operation wapld not - be clean. circulatiuf because there

—would be no circulation at all through the B tubes. | -

wouldn’t consider that. ‘clean circulation’ ” (II, 708, 709).

Such a procedure obviously would not exhibit-one of .thg

essentials of “clean circulation.” Dr. Brown repeatedly,

‘directly and dearly defined “clean circulation” throughout

his testimony as involving the combination of the retarn to

3.

the inlet of the cracking tubes of the reflux uncontaminated

With the residue, and the withdrawal and isolation of the ©

residue from the system (HI, 663, 745). ;

Respondent's argument begs the question. The question

is whether the withdrawal of the residue from the system

together with the cycling of the uncontaminated “reflux to

the inlet of-the cracking oil, solved the carbon problem, or

whether the carbon problem was solved by a procedure in

which the reflux is returned directly to a cracking and

vaporizing chamber. Dr. Brown feferred to the many ad-

vantages of the first described operation or “clean circula-.

tion” as contrasted with the return of the reflux to a vapor-

‘izing and cracking chamber, and described how such “clean ~

circulation” was responsible for the golution of the tarbon

problem (11, 657-9). . Judge Holly tous the “cleah circu-

lation” of Dubbs was’ “new and revolutionary” (V1, 3043)

and that “Dubbs solved the carbon problem” (V1, 3037).

’ The fallacy of respondent's argument is also established

by the comparison ofthe Holmes-Maniley stills without

clean circulation, w ‘ifthe operation of such stills when sub-

sequently modified to include the principle-of clean circtla-

tion. This is next discussed under a suitable caption.

b

nih ont's contentioyAhat the retord shows commercial

— Cracking stilis functioned as well without as wath clean

circulation is errone ous.

Respondent's attempt to disparage the value of clean

circulation is specious. In its brief (pp. 37-8) under a

lieading in bold type it argues that the, record establishes

that commercial cracking stills function practically as well

without clean circulation as With clean citculation. It con-

tends that the sean tai! still (VI, 2721), installed

oo

40

by The Texas Company in 1920, characterized by passing

the oil through a preheater 3 and gerade. the same into

the first’ of four vertical chambers 5’ x 30’ in diameter

seated in a furnace té which hauling, the reflux is re- .

turned to mix with the residue, is for all intents and pur-_

poses as efficient as the Dubbs clean circulation process.

The record is directly to the contrary. In the Holmes-

_ Manley operation, when ‘reflux was returned to the bottom

of ‘the directly- fired vertical. stills or chambers (11, 949,

978) and there intermixed with the residual oil, the on-

-stream period did not exceed above 60 hours with a gaso-

line yield of approximately 3162 (1V, 2099), an operation

‘little better than the Burton-Ciark procedure. When clean

circulation had’ been achieved and the principle embodied

in. the Holmes- Manley stills, these stills had the capacity

to reach, and did reach, on-stream periods up to 500 hours

with gasoline yields of from 35- -38% (1, 491). The on-

stream. period was thus incréased by 700%, with a substan-’

: tial increase in gasoline.) yields. Such runs were attained by

Standard Oil, of Indiana _ with the Holmes- Manley clean.

circulation system. Runs of longer duration with gasoline

yields of 40 to 45% are obtained with the Dubbs process

embodying clean circulation (11, 55$ 1-00),

~The Texas Company fully realized the worth of clean

circulation and_ its amazing advantages. The original

Holmes-Manley stills, upon which respondent bases its com-

parison, were operated as they were oily because The Texas

Conipany. had been unable to achieve clean circulation.

‘When this was achieved, it promptly converted each of its

commercial stills to practice clean circulation’ and never -

again returned to the prior and inefficient, method of return-

ing the reflux directly to the heated drums or retorts.

wet 4i

The District Court, contrary to respondent’s conten-

tions, found that the Dubbs process (clean circulation ) was

“recognized immediately by the larger oil compaiies as* a

great improvement iti the art” (VI, 3039) and was recog-

nized as “‘néw and revolutionary” (VI, 3043 ).

hee of the word “vaporization” in the Dubbs patent:

In our main‘brief (P. Br. 68-87), the’ Dubbs patent as

a whole has been considered, and the specific reasons why

the word ° ‘vaporization”’ as used therein must mean “libera-

tion’ ’ have been stated. To what is there said, we add the

following comments in reference to the illustrative example,

of. the patent and the arguments in respondent’ s brief in

respect thereto. | Eb Ae re /

To support its position that vapor, generation does not occur

when operating at the bottom of the temperature range,

respondent ts- forced to depart from the principle of:

Dubbs.

Respondent, as it must, concedes that, operating accord:

ing to the illustrative example of the Dubbs ety save »

for the lower part of the temperature range, ‘‘i.e., about

750 F.” (R. Br. 46), substantial vapor APE would

occur in the cracking.tubes B. This ‘is substantially in

accord with the testimony of its witness Smith (III, 1150).

Conséquently in an effort to maintain its position, re-

_ Sponeent and its witness Smith find it necessary to, exclude.

fror the. temperature’ range “of 750° to 860° F.” of the

zs illustrative run of the Dubbs patent the entire range there

) given, save the lowest end, or a temperature of about 7 50°

a ee kee

| - 42 8

F.; or, in the alternative, to substitute an operating pres-

sure ok oe irom the pressure of 100 pounds correlated

with the temperature range of the illustrative. example.

Respondent’s witness. Smith testified that, to operate the

Dubbs process with:an oil teniperatitre in the cracking tubes

B at the lower part ef the illustrative temperature range,

. heat would have to be supplied to the oil in its passage

through the vaporizing tubes C (III, 1088 ). -In its brief

(R. Br. 46), respondent says that when Gperating within

- the lower part of this range ‘it would be necessary to supply

mild heat to the C tubes in order to maintain the oil t erein.

_ at a cracking temperature (Smith, IIT, 1088). This

caiise heat is lost in the C tubes due to cracking, vapdrizas

tion,-and radiation.” Respondent further specifies th it the

temperature in the C tubes must be maintained the same as

"that reached iti the B tubes (R. Br. 124). This condition,

gratted upon the Dubl operation by Smith to operate at:

the low limit of the temperature range, is opposed to the:

teachings of the Dubbs patent and to the principie of the

Dubbs ipvention. The. Dubbs patent states that - |

s be-

“A light fire may bé maintained under the C-tubes’

* *.* or said tubes may be heavily insulated with

cel-o-cel insulating material * * * to prevent loss

of heat by radiation” (VII, 3089; Patent, p. 1, lines.

99-104). Pak. |

The “two methods recited by Dubbs are equivalents.

Each functions solely to prevent ldss of heat by radiation.

According to the teachings of Dubbs, when the tubes are |

“lightly fired, this is to prevent only. loss of heat by radia-

tion. This differs radically from Smith's hypothetical oper-

ation where, as respondent asserts in its brief, page 46,

:

43

‘When the oil leaves the B tubes at 750°, which is

* a low cracking temperature, .it must: be maintained

at this: temperature in the C tubes.”

In order to ‘maintain the temperature in the C tubes, it

would be necessary to supply a substantial amount of heat

in addition to that required to offset the heat loss by radia-

‘tion, with all the attendant disadvantages and hazards of

such an operation. Thus at the extreme low end of the tem-

_ perature range Smith was forced to depart from and dis-

“tort the teachings of Dubbs to avoid vapor generation in

the B tubes and, at the same time, to obtain substantial

cracking in the process. Smith’s departure from Dubbs’

teachings is an admission that, had ‘he followed these teach-’

‘ings and avoided supplying heat to the oil'in the C tubes

to promote vapor generation and cracking therein, he would

have been required to decrease the cracking and vapor gen-

eration in the C.tubes. But had he done so he would have -

’ been forced, in order to produce a substantial yield of gaso-

line, to an operation wherein substantial cracking would

occur in the B tubes. This. at the pressure of the illustra-

tive example, concededly would result in substantial yapor

\ generation in the B tubes, «as taught by Dubbs.

' This is evidently the reason why Dr. Brown, confining

himself. strictly to the teachings of the Dubbs patent, con-

cluded that very substantfal vapor generation would occur

_at the low end as well as at the high end of the temperature.

range of-the illustrative run, or — this range (II,

656). .

Petitioner has alw avs contended, and now asserts again,

that in following the teachings of Dubbs, substantial vapor

generation occurs in the B tubes throughout the tempera-

ture range in the illustrative run. It has never asserted,

aia

"as respondent erroneously argues (R. Br. 104), that the

claims of the Dubbs patent were narrowed by amendment

and must be broadened. to fit the entire temperature rangé |

of the example. The claims, properly construed, do fit the

-entire temperature range of the example when the teach-

ings of Dubbs are followed and without warping and dis-

torting the Dubbs disclosure in the fashion to which Smith

‘had recourse in order to sustain his untenable position:

Smith’s testimony has not been misrepresented.

_ .Respondent’s reckless assertions (R. Br. 54-56) that

petitionér has misrepresented Smith’s testimony are inac- -

curate and baseless. ‘Respondent complains that on page 74

of petitioner's s brief, by an incomplete quotation, Smith’s

testimony has ‘been misconstrued. The quotation complained

of is complete. It does not misrepresent Smith’s testimony

on the point in question. ‘In the paragraph in petitioner’s

brief (p. 73), immediately preceding the quoted testimony

and referring to this quot ition, the very bottom of. the

illustrative temperature’ range, which Smith said did not

fit his pe a, sta of the word’ vaporization, Was eX-

; cepted. ‘The testimony ‘which respondent suggests should

be added is to’ the same effect.

Petitioner did say that Smith in construing the claims

began by assunting a meaning favorable to his cause

and rewrote the specification to fit that meaning (R.. Br.

70). Respondent’s argument that this was justified because |

the Dubbs specification is “wholly silent” (R. Br.. 55)

‘as to the presence or absence of vapors inthe B tubes to

the man skilled in the art; and Smith was. “naturally

forced” to first turr to the claims to ascertain the meaning

of the word, is mosé inaccurate. His proper approach

™~

—

- 45

should have beeri to the patent asa whole, particularly the

illustrative run, under which, as Smith, himself a man

skilled in the art, repeatedly conceded, there would neces-

sarily be substantial generation of vapors ‘in the B tubes

save at the very bottom of the temperature range there »

given (II, A150). As to the bottom of the range he sought

to avoid generation. in the B tubes -br. departing from the ¢

teachings. of Dubbs in supplying heat to the we in the C

tubes. . ,

There is no fouridation for respondent's assertion (R. Br.

55) that in the quotation appearing at page 77 of petitioner's

brief,-an attempt was made to gain some advantage from

“poor abstracting.” As evident from the quotations taken

from the original record, appearing in respondent’s brief

(R. Br. 55-56), the abstract quoted in petitioner's brief was

accurate and the quotation correct. ‘Smith plainly said that

“taking~ the patent as a whole” substantial vaporization :

would occur in’the B tubes at ‘the indicated pressure. The

testimony added to petitionér’s quotation by respondent (R.

Br. 56), in which Smith said that the “Dubbs patent calls

for a liquid phasé cracking’, evidently has reference to

Smith’s interpretation of the word “vaporization” in ,the

claims thereof, since he repeatedly contended that this word

“vaporization” in the claims connoted vapor generation.

- Respondent seems to complain because petitioner did not en-

déavor, to clarify Smith’s testimony or to reconcile the

~ vacillations of this witness (R. Br. 100). Tue 4

In view of: what has been said. by respondent (R. Br.

57}, the testimony of Smith relied upon at}page 100: of

petitioner’ s brief is quoted in full’ (III, 1071):

“Now of course the word ‘vaporization’ often”

is applied to an. operation where you do have both

the vaporization itself and a ‘separating or liberating

step in the sense of segregation or passing off but

the v vaporization refers to the formation step of that

operation.”*

“As ev ide nt from Smith’s cross examination on this point

(ILI, 1163), he conceded that in the industry the word

“vaporization” is commonly applied to operations in which

both vapor generation and vapor liberation occur, but ‘con-°

sistently qualified this statement by saying that vaporization

did not include liberation ’as a necessary step thereof. This

qualification expressed Smith’s opinion. It is not the view

of the industry in Ww hich the word is commonly used.

we spondent’s analysis of the Dubbs specification, with

‘respect to the function of the C tubes and the meaning

of the word “vaporization”: derived therefrom, is in-,

correct. . -

. Respondent seems to be greatly disturbed by two phrases

of the specification of the Dubbs patent (p. 1, Hines 78-83.

- and p. 2, lines 40-4) both of which refer to the C tubes and

describe what occurs therein in paraphrase language, lead-

ing, as we have demonstrated im our main brief (P. Br.,

79-80), to the inescapable conclusion that “liber ation”

‘vaporizatton” are used in’ the Dubbs patent as

and

Be Se ee

—

synonyms. °

. When Tespondent analyzes the patent specification with

particular reference to the meaning of the word “vaporiza-

tion” (R. Br, 43-4), it carefully avoids — the two

o- e

*It will be recalled that. Smith, in: the interests of the respdn-

lent. conststently used the word “vaporization” to mean gen-

- eration! aerate: ane ;

7

ae «47

phrasés in juxtaposition. Moreover, respondent does not

~ compare these two phrases, which describe like acts in like

surroundings, but compares one of these phrases with ‘a

phrase of the patent directed to a description of different

acts in a different environment. .The, same misconstruction

is repeated in the part | bf respondent's brief entitled “argu-

ment” (R. Br., 110-1).

Indeed; when re spondent (R. Br., 109) lists the parts of

the patent upon which petitioner relies to show that in the

patent “‘vaporization” means “liberation,” it conveniently

omits quoting one of the two phrases in question—that

appearing in the patent, page 2, lines 40 to 44.

we The Dubbs claims were'not amended to include the phrase

“without substantial vaporization” to distinguish the

_ «Dubbs invention from the prior, art.

Respondent asserts (R. Br. 48. 52). that the phrase

“without substantial vaporization” was insert in. the

Dubbs clainis to distinguish the Dubbs invention from the

patents to Edwards, Smith and Trumble. It centends that

the file history of the Dubbs application establishes that the

"Patent Office refused to recognize patentability of the clean

circulation: principle of Dubbs_ and that the aforesaid limi- |

tation alone distinguished the. claims from the prior art.

a | our-main brief (P. Br. 92-96), we have demonstrated

that respondent’ s argument is. flatly rejected by the file

wrapper whete the vitalizing feature ef the Dubbs process

was emphasized—as clean circulation and where the dis-

puted phrase was not mentioned in the. proceedings leading

_to the allow ance of the applicavien.

ss c

48

_ Respondent bases its entire argument an claims 4 and

5 of the Dubbs patent and the proceedings leading to their

grant. It contends that these claims find. omy response

in the disclosure of ‘the T rumble patent unless the disputed °

phrase “without substantial vaporization” is construed to

mean “without substantial vapor generation.” From this it

concludes that the word “vaporization” must mean vapor

generation in claims 4 and 5 and that it cannot have a dif-

ferent meaning-in the remaining claims. Consequently, it

draws the conclusion that in all the Dubbs claims vapor

generation is prevented in the cracking tubes B.

We will first discuss claim 5. The language of claim 5

cle arly spells clean circulation. It requires that the oil shall

be passed in “‘a stream in an advancing direction from an

inlet point [the inlet to the B tubes] to a discharge point

{the discharge of the residue from the C tubes separated

and entirely disassociated trom the inlet point.” The words. °

“separated” and “entirely disassociated” are most signifi-

cant in meaning. They expressly, exclude any connection

“between the residue- ‘discharge from the C tubes to the inlet:

point of the B tubes, other, of course, than the communi-’

cation through the B and C tubes. This language definitely

excludes the return of any residue from the C tubes to the

inlet of the B tubes. It is in this respect that the claim

sharply distinguishes from the cyclic sy stems of Trumble

and Edwards. To distinguish the claim from Trumble.

where vapor generation occurs in the cracking -coil,: it .

not necessary that the word Be coal mean vapor |

gene ration.

Moreover, the language of the claim rejects respond-

ent’s contention that ihe word “vaporization” connotes

vapor generation. Continuing, the claim states:

|

\

\

49 ;

| “* * * affording-a vaporization space above the

- stream during the second stage of the travel thereof

.to said discharge point [the vaporizing gpbes i

As stated in our main brief (P. Br. 78, 80), ‘inatitiad

of vapors cannot take place in a space above the oil stream,

and the word “vaporization” there used necessarily connotes

liberation. This argument is. not answered by respondent's

empty suggestion that the ' ‘vaporization space” recited in

the claim is Lut an instance of ‘Dubbs’ carelessness in the

use of language” (R. Br. 112). Since the word “vaporiza- _

tion” in claim 5 necessarily means liberation, the same word

appearing in the other claims of the Dubbs patent must

. have the same meaning.

Claim ‘4, in varying expression, is likewise limited to

clean circulation. The claim requires “passing in an advanc-

-ing direction a continuous stream of oil through a heating -

zone”: and “dischargi..s from the chamber substantially.cop-

tinuously a quantity of the residue proportional to he

- amount of oil supplied to the heating zone and said vaporiza-

tion.” These two limitations in the claim spell clean circula-

tion. In this way the elaim patentably distinguishes from.

the cyclic system of the Trumble, and like patents.

_The file history of.the Dubbs patent offers complete —

confirmation of petitioner's interpretation of the two claims.

In the remarks accompanying the amendment of April 14,

- 1921 (Iv, 1540) wherein claims 4 and 5 were inserted, it

was said:

_ 6 : .

“The process discioetd in the Edwards and Smith |

"patents are radically different from that disclosed in

_ the present application, it being sufficient to note tnat

in each, the material under treatment travels in a

.

. 50.

cyclical path so that at least a portion. of the sepa-

rated carbon is returned to the cracking .zone, * * *

“Neither of these patents suggest passing the oj

in an advancing direction from the inlet end ofthe

heating zone through such zone into a‘suitable vapor-

izing chamber with the vapors passing out of the

. chamber to be collected, avoiding t the mixing of the

precipitated. carbon or residue after vaporization

with the oil'in or to be ‘passed through the cracking

zoné.’

*

These claims were then formally allowed. It is to be

noted that the phrase ‘ ‘without substantial vaporization”

was not referred to by Dubbs in distinguishing the subject _

matter of the-claims from the prior art cited; contra, clean

circulation was a cine aaad as the vitalizing feature of the

claims. —

Finally, if-it = concluded that claims 4 and 5 do not

distinguish from Trumble or Edwards by the limitatgn of

the non-return of\the residue to the inlet -of the cracking

“tubes, then they popes than the Dupbs invention,

which is confined to clean circulation, and may be: invalid

for that reason. But this fact could not affect the other

claims of the Dubbs patent; including typical claim 7, which

do in this regard clearly distinguish from Trumble and the -

other prior art.

Petitioner's meaning of the curd * 7 ee. is not

refuted by the qualif ying adjective substantial”.

*e

At pages 45 and 46 of respondent’ a brief it is said that

‘if the word “vaporization” ifi- the Dubbs\claims connotes

separation or liberation of vapors from the\oil the quali-

fying adjective “substantial” in the disputed p rase “with-

Aen a

-

out ‘substantial vaporization” is meanin,,!ess. Respondent

contends that a condition, where a substantial number of

vapor bubbles remain unliberated in the oil. stream while

an insubstantial numbér separate.or pass off from the liquid,

cannot exist. . ve |

Here again respondent's argument is based upon a false

premise. The testimony of respondent’s expert, cited in

support of this erroneous argument, relates to the rise of

vapor bubbles formed in a body of liquid contained in a

vessel with a vapor space above the surface of the liquid

and to what may occur in -heating viscous molasses (III,

1096}. These conditions are in no way ‘comparable to the

conditions ‘prevailing in the cracking tubes B of: Dubbs.

In these tubes the relatively non-viscous liquid. is not quies- |

cent. The vapor and non- -volatilized ‘liquid coursing

through these tubes are in a turbulent condition and in the

form of a foam. Nor is there a vapor space above the.

_-_ liquid 1 in these cracking tubes.

- In the Dubbs claims the qualifying wi rd substantial” |

was used to include a condition in the B tubes where there

might be a localized and temporary release of a negligible’

_amount of vapor from the oil film adjacent the surfaces of

the tubes—or,. as stated by Dr. Brown, where the point

‘where separation would take place is. approached when, -

momentarily, there might be a slight release of vapor from .

_ the foam (II, 699). If this inconsequential release of vapor

.~ did occur, such vapor would soon thereafter, due to the in-

_ creased velocity of the mixture, be again enveloped in st

foam. Consequently, the use of the word “substantial,”

_ word so commonly employed in patent claims, was cate

- edly included i in the Dubbs claims for the’ purpose of pre-

venting anyone from asserting that an | operation in which.

52

this inconsequential and temporary ‘release of vapors oc-

curred: averts literal infringement of the Dubbs’s claims.

Petitioner has not been inconsistent’ with respect to the

meaning of the word “raporizatife” in the Dubbs

patent. 7 ' ~

The implications which run through respondent's brief

that petitioner has not been consistént with respect. to the

meaning it ascribed to the word “vaporization” in the

Dubbs patent are entirely unwarranted (R. Br. 41, 94, etc.)

Petitioner in this ease has never sought to change the

meaning which it asserts the Dubbs patent ascribes to the

word in question. Petitioner's main brief made .it clear ry /)

. that this meaning is the liberation, or passing off, of the

vapors from the body or stream of liquid in order to form a

vapor phase above the oil body (P. Br., 78-84). . This

meaning is in strict conformity with that which Dr. Brown

gave to the word as he found it in the Dubbs patent, as

quoted in our main brief at p. 84, or in the last sentence of

the quotation appearing in respondent's brief, page 4.

purport of respondent's weak and unjustified argu- .

¢

ment rs to be to convince this Court that the word

“vaporization” can have but one meaning, namely * ‘vapor

generation”. .

To accomplish this purpose, respondent advances the

following propositions : |

It states (R. Br. -94) that “in its Brief before this °

Cour petitioner has completely repudiated its expert's °

views.” To support this conclusion, respondent relies on an

' incorrect emphasis of Dr. Brown's testimony and dn a mis-

leading constructiqn of ‘the evidence.

) | |

5 me a eee a

First, respondent quotes Dr. Brown's testimony, which ~~

stated that the “passing off of vapors as trom a tea kettle”

is not the meariing of the word “vaporization” in the Dubbs

patent. But in so quoting Dr. Brown, respondent, by par-

tial emphasis, seeks to focus this Court's attention only on. ,

the words “passing off” in order to be able to say that the

‘expression used by Dr, Brown is the same as similar words

‘used in petitioner's brief. Petitioner is, and has always

been, in complete agreement with the full statement by Dr.

‘Brown. Petitioner never advanced that the word “vapori-

zation” in the Dubis patent connoted a comparable opera-

tion involving the passage of the separated vapor from the

C tubes to the vapor‘lines D and aerial system.

When full import is given to the complete’ language

used by Dr. ‘Grown in the quotation, and to petitioner's

statements (P. Br. 70-84), it is obvious that there is

ins disagreement between .petitioner and its expert. As

stated, Dr. Brown and petitioner have always asserted

’ that “vaporization” as used in the Dubbs patent connotes the

- liberation, or passing off, of-vapor from the oil body to form

a vapor phase above the oil body, as occurs in Dubbs’s C

tubes.

Respondent 1 next cutebions ‘Dr. Brown’s statement, in

another part of the same quotation, that the word “vapor-

ization” in the Dubbs patent does not “mean liberation of

individual molecules so as to form bubbles of vapor within

the liquid.”. It also refers to the testimony of its expert

Cady to the efiect that the very change of state or genera-

tion of vapor may constitute a form of liberation even

though the vapor molecules remain within the liquid (R. Br.,

p. 94). On the basis of these two propositions, respondent

infers that petitioner, when it used the expression “pass off.

54

in vapor,” in support of the meaning which it ascribes to

the word “vaporization” in the Dubbs patent, intended to

designate by those words molecular liberation or conversion

into vapor, in disagreement with Dr. Brown. coe

This absurd view is completely rejected by petitioner’s

brief (P. Br. 19, 70- 84). :

Respondent’ s assertion that petitioner and its expert.

havt disagreed on the questioned word in the Dubbs patent

is. accompanied by a more general but. futile effort on re-

spondent’s part to show that all the definitions found in the’

dictionaries and text books cited by petitioner .(P. Br. 101-2,

and Appendix) mean vapor generation, irrespective of. the

wording of these definitions. “Thereby respondent errone-

ously seeks to convince this Court that the w ord “vaporiza-

tion” has only one accepted meaning, that of vapor genera-_

* tion. eet aers “<ee

In this endeavor, respondent says (R. Br., 41, 94)—

evidently relying on the testimony of Cady—that the “‘pass-

ing off” of vapor is the change of state itself or generation

of vapor. — er | |

lf the expression “to pass off in vapor” and. other —

phrases to that effect found in dictionaries and text books

connoted vapor generation, these reference books, we sub-

mit, would fiot have separated the definitions under ‘ ‘vapor-

ize" the verb to which one is referred by these books.-to

.. find the definition of. the name vaporization) in two dis-

tinct parts. a : |

Furthermore, respondent's fallacious argument is -re-

tected by the definitions given in Webster as “to cause to

“become * * * dissipated” (-P. Br., Appendix vii), and in -

Hawkins as “‘to pass off in vapor, to escape and be dissi-

pated either in visible vapor * * *”- (P. Br. Appendix viii).

%

55

If the definitions in these dictionaries and text: books

are given their plain significance, it is obvious, as petitioner

contends, that the word “vaporization” -has not the sole

meaning tor which respondent contends and that an ac-

cepted meaning of. the word is the liberation of vapor from

the oil body to form a vapor phase above the oil body:

That this. is so is apparent from udge Holly’s fact

statement (VI, 3047, 3059) .that “the generally accapteds

meaning of. the word ‘vaporization’ is Vapor generation.”

There, Judge Holly refused respondent’ s contention: that

" ge neration is the word's only meaning. ’ Petitioner's conten-

tion is. also ‘supported by Judge Lindley’s opinion, finding

that if the Dubbs patent ts valid, it. is infringed by respond-

ent’s operation. In such infringing operation ‘molecular

tO it—does not occur.

liberation or vapor generation occurs, but vaporization—

giving this, word the meaning which it-has in the Dubbs

patent and which petitioner and its expert have .ascribed

‘ o

Finally, if the dictionary and text book defiivitions are

given their plain import, if Dr. Brown's testimony with

respect to the tse of the word vaporization in the: Gyro

‘process and Smitli’s testimony, with respect to the designa-

tion of processes where generation esd liberation take place

as Vaporization processes, be consideréd, respondent’s reck-

less statement (R. Br., p, 111) that “no one ever. heard of

the meaning advanced for the word bv Petitioner. until

someone in Petitioner's camp concocted it im order to have

a theory of infringement ‘in the. Root case,” ‘is obviously

-untru2.

|

The Dubbs patent adequately teaches the maintenance

of.a foam in the B tubes.

We have at some ‘length in our main brief discussed

the teachings in the Dubbs patent ‘of the velocity necessary

to prevent segregation of ggypors from the liquid oil in the

B tubes (P. Br. 105-10). To what is there said we may

add the following: ar

If the disputed word “vaporization” in the claims of

the Dubbs patent is construed as contended for by peti-

tioner, this obviously is in and af itself sufficient-to enable

the man skilled in the art to maintain the desired foamy

condition of the oil and the vapors in the cracking tubes. ”

As we understand it, respondent does not deny this. Re-

spondent complains (R. Br. 99-101) that the Dubbs patent’

does not state the exact maximum ‘proportion of vapor to

liquid beyond which the foam will break and separation of

the vapor from the liquid will occur. To the man skilled

in the art, this may be determined without difficulty. Dr.

Brown had no dificulty in doing so. He testified that as

- early as 1919 it could be determined by calculation, but per-

haps not quite as accurately as at the time he testified. His”

actual.testimony was (II, 724) that in 1919 “data wes

available; it perhaps could not be computed quite as accu-

rately as we do now, but that could be computed.” |

The figure of 99.9%+of vapor whigh Dr. Brown testi-

fied would be approximately the ‘maxiqium ratio of’ vapor

to liquid permissible to prevent vapor séparation was not,

as respondent sugyests (R. Br. 100), an arbitrary one.*

*The Court needs only remember the considerable volume of

air which may‘be contained within the thin film of Hquid in a soap

bubble before.the bubble bursts, to justify the apparently large

~ ratio of vapor to liquid which Dr. Brown testified can be attained

before Vapor separation occurs. ~ | (.

>

57

Respondent’ S footnote on ‘the same page concedes that this

figure was determined by calculations which respondent ©

made no attempt to discredit. :

The fact that this figure is near 100% is no justifica-

tion for Smith’s s attempt to ridicule Dr. Brown’s s-testimony |

on the point (R. Br. 99) dy stating that oil could be vapor-

- ized to 100°% without éver separating vapors from the oil.

In order to assume that 100% vapor could be obtained

without vapor separation, Smith necessarily had in‘ mind

oil characteristics or Sperating Conditions entirely different

from what is stated in the Dubbs patent and formed the

basis of Dr. Brown’s calculations and testimony.

. There is no serious inconsistency, as respondent sug-

gests.(R. Br.-102), between the testimony of Dr. Brown

and the testimony given by Dr. Lewis in the Root case as

to the conditions prevailing in the cracking tubes B of

‘Dubbs. Both testified that the vapor apd liquid must be

in intimate mixture and that there could be no separation

or segregation of vapors from the liqu Dr. Lewis, in

the testimony to which respondent refers, ‘made this clear

by the statement that the oil and vapors were in “intimate

mixture without any separation or segregation” in the B

tubes (78 F. (2d) 991, at p. 997). |

PEST AO

SR re rs ory mere

ahaee”

eet, Paint ated ela Bie Px “AOS RE

a

a “e rem ~

TE A ERG Stn nt en ce a

.

Since respondent’s operation appropriates the ‘clean’

circulation” principle of the Dubbs patent, there is infringe-

ment if the claims read on such operation.

nisinisii lad ning Sassi OE NPI ly ii beds Ay 6AM

~

Respondent argues (R..Br., 123- 128) that even reo

the accused process falls within the language of the Dubbs :

| claims, infringement is avoided. The same argument was.

' ® rejected by the courts below. In support of this contention -

_ it is asserted that the accused process does not embody the |

ee aT 58 =

principle of the Dubbs invention. This obviously is incor-

rect. - es | aes :

In its brief (R. Br., pp. 124-5) by parallel columns an

effort is made to establish that the essentials of the Dubbs

patent, regardless of claim limitation, are not present in

_ the accused operation. The “deadly” parallel ts inaccurate |

and misleading. In describing in separate paragraphs

alleged «operations of-the Oubbs ‘patent, ‘respondent has

not adopted the features of the patent as plainly described

therein. Respondent has distorted the teachings of the:

patent and forniulatéd.a series of fictitious steps, embody-

ing all the departurgs of its expert Smith from the patent

disclosure, and for which it says there is no counierpart

in its operation. In this. comparison, respondent. repeats

its ‘frequently stated contention that in the Dubbs patent

‘no substantial cracking and no substantial-vapor genera-

tion occurs in the cracking tubes B. Such a contention is:

a red herring. It can have no value.

We are in agreement with thé proposition of law stated

_ by. respondent (R. Br., p..123). But it has no application

here’ Inf ringement cannot be averted by mere changes in

shape, form or degree, so long as the accused process ap-_

propriates the essentials or the principlé of the invention

of a patent in suit. Respondent's operation has slavishly,

_ done so. It is bottomed squarely 6n “clean circulation’, the

principle of the Dubbs invention. This underlying prin-

ciple of Dubbs, common to respondent's operation, in-

volves in a mixed phase process the returning * if the reflux

‘to the inlet of thé heating and cracking-coil and the sith

drawal of, all residue without the return of any part thereot

to the coil. This, respondent in its brief (R.Br. p. 125).

“at least tacitly. concedes. > * |

\

- 59°

yas

The decision of the Tenth Circuit Court of Appeals |

in : oo Co. v..Anderson Pritchard Refining Company, —

2 Fed. 2d 829 (R. Br., .P. 127) can be of no benefit to

pone here. it is portant that the court in that

case did find that the principle of the Behimer patent.as

set forth theréin was such as to make the asserted two-.

step procedure an essefitial of the Behimer invention, and

confined the claims to such an operation. The court did not,

as’ respondent infers, intimate or suggest that the Dubbs

- patent was confined to-such a procedure. Significantly

the court did hold in ‘that case that Behimer surrendered

clean circulation in the interference proceedipgs to Dubbs.

It is not ‘surprising, under ‘these .circumstances, that the

mere improvement patent of Behimer was given a narrow

construction and restricted to the two-step operation which

presumably was found to be am essential thereof.

. >

‘Respondent has misstated the effects of pressure in a

vapor-liquid phase (mixed ans process. j

F,

q

Respondent incorrectly. assigns to the | use of pressure a

single and the same beneiit in both coil cracking vapor phase ;

processes and in liguid-vapor phase operations (R.Br. 27).

It is true that the benefit to which respondent refers (econ-

omy on length of coil by compressing vapors into a stnaller

space) is present in both types of processes. But in liquid-

‘vapor phase operations. such as respondent's or Dubbs’s

process, pressure has additfonal benefits. As pointed out

by Dr. Brown, in such process, pressure decreases the

generation of vapors and allows the oil to be heated to’

a higher temperature with less generation of vapors; it

prevents. the danger of sepayation of the vapors from

tlie liquid in the heating tubes and maintains the foamy

rr cnaacaiaaeldd

60

condition of the vapor and of the liquid more readily (II,

660). One result of the decréased vapor generation and of

the compression of the vapor is that for a given length of

coil and the same quantity of oil charged thereto, the time

element, therefore the degree of cracking, can be varied by

varying the pressure.

If the different effects of pressure in these processes are

considered correctly, the vapor phase process cannot be put

in‘the same class with the liquid- “vapor or mixed phase —

process.

The foregoing: shows that veminnied! s criticism of the

District Court in the Root case is unjustified (R. Br. 27,

130). When it said that cracking is the decomposition of

petroleum “by heat arid pressure”, the Court must have

taken a practical view of the processes involved; it under- —

stood rightly that pressure and time element were closely:

iriterrelated, and used pressure as a criterion of time.

Finally, respondent (R. Br. 130) evidently misunder-

stood or misconstrued Judge Nields’ statement (6 F. Supp.

at p. 767) that

“This range of heat in the cracking tubes is cracking

temperature and at the stated pressure: would inevi-

tably result in n cracking’. | ,

Judge Nieltis obv iously meant to discard regpondent” s

construction of the Dubbs patent whereby the cracking is

only initiated in the B tubes; the Court meant that under the

conditions of the illustrative run, including the effect of the

pressure stated therein on the extent of vapor generation

and on the volumé of the generated vapor, sic would

_ occur if the B tubes of the patent. :

_ BEHIMER DEFENSE ,

_ This defense, as presented in the courts below, was dual

in character, including (1). an asserted prior use of the °

Behimer_ scheme by The ‘Texas C ompany in 1917 and ( 2)

prior invention by Behimer based upon his application for

patent having an effective filing date of November 21, 1918,

which matured in patent No. 1,883,850. Although the two

defenses are inseparable and both must stand’ or fall to-

~ gether, respondent here has dropped the first defense, obvi-

ously to-avoid consideration of the sterile and bortive

character of Behimer’s experimental work, amVto avoid

endowing the Behimer patent with the consequent in-

~ firmities.

Concededlvy the disclosure of the Behimer patent is

based solely upon Behimer’s alleged prior experimental use:

If the experimental use be established.to be sterile or abor-

tive, there is no constructive reduction to practice. We

therefore propose first to shaw that the experimental work

was unsuccessful and abandoned; and that Behimer, with

the entire technical staff of The Texas Company,. whose

expert knowledge and practical experience were far supe-

rior to those of the ordinary skilled worker in the art,*

labored in vain for five years in an effort to cure his scheme

of its infirmities. We will then consider.the Behimer patent,

bottomed as it must be on the unsuccessful and abandoned

experimental work.

*It is. idle to suggest (R. ‘Br 79-82) that the solution of

Behinier’s ‘problem was obvie Were this true, it would not

* have gluded tlie skill of Beliimer and of the other, Texas ¢ ompany

ae for five vears.

lA

. e Se

z gs : m

\ . - a

/ 5 has ,

“4 é

62

The defense of prior invention and prior use by Behimer

and The Texts Company was developed by respondent at

great length at,the trial. Testimony was given by Behimer

(1, 290-347; I], 868-959) and by a score of witnesses from

The Texas’ Company. V oluminous letters, drawings,

sketches and records were produced (1, 123-68, 176-243;

- Tk, 969-1022; TIT, 1023-55)... All this evidence served

: merely. to establish that Bchimer and The Texas Company,

notwithstanding persistent and earnest efforts, failed for

five yeats to solve the carbon problem or attain clean circu-.

lation.” The District Court discussed the evidence at length —

and, in rejecting the defense, said (40 F. Supp. 57 5):

“He tRSener} conceived some of the steps neces-

sary, to produce the desired result. He had worked

-out a method of heating the oil to a cracking tem-

perature in one set of tubes, transferring this heated

oil to a separate chamber where cracking should take

place without. the application of additional heat and

carrying the vapors to a°condensing chamber. But

‘here he was balked. It was necessary to the opera-

tion of his system as he conceived it (and as Dubbs

_. worked it out) to-return the reflux to the heating

coilagrt this he did not know héw to do. * * *

| “Behimer at this time was in the employ of the

_ Texas Company and-had the use of all the facilities

of that great corporation... He consulted with

4

Holmes, president of the company and one of the.

outstanding: engineers in the oil industry. Experi

mental plants were erected by the Texas Company.,

but abandoned. As Behimer testified there was a

‘joker’ in his conception of the process, he did not

know of any means ef returning the reflux to the

heating coils. :

s

63

“The failure of the Rehimer system to operate

was not the result of carelessness in construction,

but was due to a fundamental defect; a lack of any

- means,-conceived by Behimer, of successfully re-

_. turning the reflux to the heating coil. 3

The Court of Appeals left these findings undisturbed.

From 1916 to the summer of 1921 Behimer never hel

a conception of a complete and operative idea. H is experi

mental work during this period was fruitless, and his patent

consequently exhibits a worthless and inoperative scheme.

(a) The “joker” in Behimer's concept, in fis experi-

mental ivork and in his pte nt. ;

.

An essential of the process in issue involves the cycling

or cirgulation of reflux coudensate through an elongated

» cracking coil. The highly heated volatile condensate mus!

he forced through the coil under a pressure sufficient to

overcome the substantial frictional resistance opposing its

Taassage. “As the District Court, said, -Behimer conceded

that the joker in his concept. a .joker -which persisted

through all his: experimental work? was the lackyof ‘any

means tor ‘eveling the reflax through the elongated coil.

To be effective as-a defense, a prior conception or ‘use

must be: shows to contain a ce mplete and operative idea or

device embodying each and every feature of the claims ot

a patent in suit. The rule was stated in Coffin v. Ogden,

85.U.S, 120: — as

“The invention or giocosery relied upon as a defense.

must have been cémplete, and capable of ‘producing

the result sought iL, be accomplished; and this must be

~shown by the angen The burden of proot rests

“upon him, and/ every reasonable doubt should be re-

/ - .

/

/ .

solved against him. 1 f the thing were embryotic or

inchoate; if it rested in speculation or experiment;

if the process pursued for its development had failed

__ to reach the point. 6f consummation, it. cannot avail

to defeat a patent founded upon a discovery or inven-

tion which was completed ; -while in the other case there

was only progress, however neaf that progress may

have approximated. to the end 1 in View. * * *”.

With the foregoing legal piincliios | in mind, we turn to

the acts or work upon which the Behimer — s con-

cededly. bottomed. : oe

Behimer, referring to the disclosure of his scheme to

Donaldson (patent attorney of The Texas Company), .in

‘the summer orf fall of 1916, testified that he then told Don-.

aldson that he had no concept hs that: time of any

“means for giving this operation expression” (II, 937). He

“didn’t know of any means, jet or any other means” for .

returning the reflux through the heating coil ((H, 937). °—

Althe nigh his scheme was incomplete and known to be so,

Behimer suggested to Donaldson that it “w ould be- a good

thing for a patentable. scheme, and I thought it was some- |

thing that would eventually work out” (11, ),——a start-

ling admission of ‘Behimer’s erroneous view of the purpose

of the patent laws. }

An equally. vague and incotiplete disclosure was made

to Holmes. Behimer testified that in disclosing his process

to’ Holmes; he told the apres he “didn't have any means to

carry it into execution” (TI, 938).

Smith conferred with Behimer 3 in August or September 2

of 1916 for the purpose of preparing a drawing to illus-

',‘.trate Behimer’s schente: It was on this occasion that, Be-

himer told Smith that the “joker”. (II; 880) in his idea

ad

65

was that he did not know of any way to dein the highly

heated volatile reflux at a high pressure through the crack- |

ing coil. Smith suggested to Behimer that an injector or

jet might be\a suitable means for cycling the reflux (II,

881) and might offer a cure. Thereafter,. in the summer

of 1917, a small laboratory ‘unit,. identified .as Experiment

&, including a jet, was erected by The Texas Company., It

is upon the performance of this experiment that the Be-

_himer defénse of prior invention is bottomed.

From the mouths of ‘Behimer and Holmes, and from’

the contemporary reports. of The Texas Company, it. plainly

“appears that the few sporadic. test runs of Experiment 8 -

.were failures, the experimental\ work was ‘abandoned: as

sterile or fruitless and the unit was ‘dismantled.

The first’ five runs with the experimental unit were in’

the nature of try -outs of the apparatus without any results

upon which any reliance may be placed. - ee

: The next four runs, 6 to 9 dachesive, were ‘made with

gas-oil as the charging stock.* .. The results of. the Se

summarjzed in, PXs 7-and 8 (III, 1325-6). The sujferary

_ of run 6 shows a gasoline yield of -but 16.66% based on the — |

charge. This i is considerably lower than the yield of the

Burton and Burton2Clark stills operating. at that time. Even

with this low gasoline yield, Behimer reported that the.

“lower. tubes. were carbonized” (VI,- -2531).

With higher gasoline yields, carbon troubles became

strikingly more acute. In referring to succeeding experi-

mental run 7, lasting but 19 hours, the summary states that

_ the “2 lower. tubes contained considerable carbon on bottom

*Gas-oil, as previously explained, 1s ‘a light distillate obtained *

trom crude petroleum.

eesees ‘

4

.

*

* 66

of tubes”: (VII, 2547). Experimental run 9, the last of the

Behimer runs with gas-oil, was fully demonstrative of the

failure. In his own summary covering the rum Behimer

said: _ ¥ +

“This experiment, as previous experiments with

Paraffin Base Gas Oil as stock, demonstrates that

the lower tubes carbonize considerably and the run,

consequently, i is of short duration. * ae (11, 905).

Behimer testified that-he uvderstood, as everyone so

understood, that “There was only one trouble in the crack-

ing industry and_that was carbon” (11, 909). In Behimer’s | -

‘letter to Dodge of The Texas Company in 192] he said

that in the operation of Experiment & the “tubés“carbon-

ized too much” (11, 945). He further testified that in one

al

of the runs “the lower heating tubes of the cuil were almost |

completely clogged »ith carbon, forcing me to shut down™

(I, 316). © tan

( Again, a commenting on the operation of Experi

ment &, Behimer said the charging oil “was baked and

stewed like you would in a frying pan and ee ked alung the

bottom” (11, 947) of the cracking coil. In 4 statement pre-

pared for The Texas Company in 1926, Behimer ‘said that -

he attributed this severe accumulation of carbon in the

cracking tubes of Experiment & “to the stratification of

the heavy residuum oil on the bottum of the tube and the

vapor above” (11, 944).

There canbe no doubt from Behimer’s above-quafed

‘testimony and contemporary reports that he. recognized

the complete failure of Experiment & to solve the carbon

problem, which was the bane of the cracking art.

67

After failing with gas-oil, an effort was made to cr.

the still lighter kerosene. Two such runs, Nos. 10 and 1

were attempted, and likewise resulted in failure. In Behi-

mers conteniporary ry covering the final run, it is.

* said (11, 944): “This experiment, as Exferiment.8, Run

10, demonstrates that it is impossible to reach the condi-

tions of rapid decomposition in this apparatus. ***”..

No carbon troubles were encountered in the kerosene

- runs because, ds admitted by Behimer, he was not “getting

any cracking” (1, 339).

The failure. of Scuba on ts tae

. sounded its death knell. It- was dismantled, and nothing

_ ever came of it except that, in contravention of the patent.

‘law and contrary to public poliey, it-was made the basis of

a patent application of The Texas Company, filed at The

direction of Holmes. Yet, as Judge Holly pointed. out

(VI, 3043-4), The Texas Company “knew ‘Behimer had

not then conceived a workable process” and “We have here

a-situation where an application for a patent is filed when

it‘is known that the method described was unworkable.”

it is upon this unlawfully. filed application that respond-

ent now relies to establish prior invention..

After Experiment 8 had failed, a “pilot plant” was

designed in the fall of 1917. The purpose of designing the

plant was*to determine if the “infirmities and defects’ (11,

945) manifesting themselves in Experiment 8 could be

overcome,’ apd specifically whether it would be possible to

‘overcome carbon trouble” (11, 00)" This plant died on

the<irafting board. Despete the factithat its estimated cost

was only $13,000 (11, 976), a trivial sum to The Texas

Company, it was never built. — \

‘

\

\

ioe

° Re

The .$13,000 pilot plant was nt built because it con-’

tained the “joker”. that had led to the failure and abandon-

ment of Experiment 8,.—the tnavailability of “any suitable

means to return the reflux to the heating coil” .( Behimer,

11,947), : | oe

_ At the time that it was decided not to build it, The Texas

| Company proceeded with another experiment, departing

from the principle of Behimer; and’ failing to exhibit clean

circulation, identified as Experiment 18, at a cost in ex:

cess of $200,000 (11; 948).*. ‘

‘In the fall of 1917, Holmes called Behimer to New y ork,

informed hin: that The Texas Company was under “a great

deal of .pressure” to install a commercial cracking process.

and directed him to get busy “making Yasoline commer-

cially” (II, 948). As a result of this contgrence, work, on

Experiment 18 was undertaken. Experiment 18 departed.

fundamentally from the scheme of E xperiment 8. The ri: |

flux condensate was returned directly to the er fired

vertical stills, an operation which Behimer said “is net:

‘clean circulation’ (11, 948). 2

‘ Experiment 1X, conducted at a cost in excess ot

$200,000, involved Batteries 1 and! 2, each consisting of

two large vertical shell stills, and Battery Zz embodying a

single vertical shell still of the same type (IJ, 948).

During the life of Experiment 18, as well as of a sue-

_ ceeding Experiment 18 (Battery 4) the reflux, save for

one exception, was not returned to the Heating coils, but. to

the shell stills or drums Ww here it admixed with the re stdual

oil.

—*The little faith that The Texas Company had in the Behimer

scheme may be measured by its fefusal to spend $13,000 Upon it

and its decision to spend $ 200,000 on another process,

ff

69

It 5 that on one occasion, for a single: run in Feb-

ruary 1919, an attempt was made in Experiment 18, Bat-

tery 3, to retiirn reflux to the tracking coil by a jet, the ’

same device that had failed in Experiment 8. The experi-

ment met the same fate as Experiment 8. The run was

‘unsuccessful, the jet purnp was removed and no attempt .

was ever thereafter made to return the reflux to the crack-

ing coil (11, 950).

Experiment 18 was followed by the erection of 24 com-

mercial stills by The Texas Company in- 1920, at an ex-

pense in excess of $3,000,000 (II, 9489). Each still ,

was patterned after Experiraent 18 wherein the reflux con-

densate was returned to ghe enlarged vertical stills or drums

and there mixed with the residual oil (II, 949). This ad-

mittedly is not clean circulation: :

Holmes testified that from Behimer’s inception of his

incomplete scheme The Texas Company had persistently ©

‘searched Yor some operative means for returning reflux to

the cracking coil. In addition to consulting experts of The .

Texas Company, Behimer had roamed the country contact-

ing experienced engineers in a futile or vain effort to solve

this problem (II, 920-1, 924 an&927 ). Holmes ‘said that”

_the reflux in the commercial units was returned to the ver-

tical stills containing the residue “because we had not found

a means for foreing—this reflux throagh the preheater”

and that The Texas Company. “fad at that time no means

or facilities to force the reflux back against the preheater

pressure’ ’ (IT, 978).

Thus, at this late date, years after Schimet began his

experimental work, the problem of clean circulation had

not been solved-at The Texas Company. Neither Behimer, ;

Holmes, the array of experts of The Texas Company, nor

70

the many other experienced engineers in the oil industry

that Behimer had consulted, had been able to offer a solution

- to the baffling problem that the District Court found (V1. ‘

3043) “balked” Behimer. This history, not mere prophecy

or argument, completely refutes the sophistical arguments

advanced by respondent (R. Br.“ 78-9) to the effect that

the infirmities in the Behimer scheme could be corrected by

e¢ skill’ of the calling or that a solution. of his problem

int be found in the prior art.

“This .is an appropriate occasion for application of the

~~ famous aphorism 2 Mr. Justicé Holmes: “A page of tits

ee )

téry is worth a volume of logic,” Vew York 7unt ee. V

Eisner; 256 U. 5S. 345.

Contrary to respondent's inference (R.. Br. 79) there

was nf item i in the prior art disclosing a high hydrostatic

head for imposing upon the hot volatile reflux pressure ade-

(quate to propel the same through an elongated heating coil”

and to overcome the frictional resistance offered to the pas-

sage of such material through the cracking coil This Was

novel in the oil cracking art w hen Dubbs entered the field,

notwithstanding respondent’ S argument to the contrary

(R. Br. 133). 3 ;

Nor was there anythirig i in the art, prior to the advent

of Dubbs, exhibiting any way or-means for solving the

problem that, had baffled ‘Behimer and his associates.

Respondent infers that the patents: to Burton and .-

Humphreys teach a hydrostatic head that might have been

_. successfully used in the, Behimer process in lieu of, bis un

workable pump (R.Br. 79). These patents contain no

such teachings. Respondent in its brief concedes that. in-

_ these patents the reflux is returned to a shell stil! where “no

problem of frictional resistance existed” such as is present.

in the clean circulation process (R. Br. 79).

ee

_ Respondent next suggests that Behimer. testified that

the use of gravity to return reflux: was evident te him, but |

that he was not interested in ‘such a procedure (R. Br. 80).

Behimer did, by oral testimony, infer that he “had thought

that a hydrostatic head might be used in his scheme. But —

his self-serving declaration has no evidential .value since

it stands wholly uncorroborated and is discredited by the

documentary evidence. Judge Holly disposed of this con-

tention in the following-langinage (F.F. 25, VI, qeacke

“Behimer’s s testimony that he had the idea, of

_ returning reflux by hydrostatic pressure is tijcor-

roborated and is negatived by the fact that on ‘oné

of The Texas Company drawings, he decreased the

elevation of the dephlegmator.”

it is elementary that the uncorroborated testimony of an —

inventor may not be accepted as establishing prior inven-

tion, Qliper Machinery Co. Y. Gellman, 104 F. (2d) 11,

citing many Cases.

The cotimmercial operation of the Holmes-Manley stills,

without clean circulatian, continued uninterruptedly until

the summer of 1921 (IT, 930-1 \. Ae this-time The Texas

Company began converting the commercial stills to the

clean circulation principle, using a surge pump for forcing

the reflux through’ the cracking coil (11, 969). This was

the first time that Behimer: or The: Texas Company ever

achieved clean cireulation. The date i is, of course, too late

to have any legal significance in so far as the Dubbs patent

While Behimer, with all the technical and_ financial

resources of The Texas Company at his command, was

' groping in the dark for a solution ot his baffling problem,

a

.

_ is concerned. - . : a “- i,

72

Dubbs had succeeded. He supplied the spark of genius,

_ making the clean-circulation process possible by utilizing

a high hydrostacic head for imposing upon the hot volatile

reflux the necessary pressure to insure passage through the

elongated cracling tubes against the frictional resistance

developed therein. . His revolutionary invention promptly

went into commercial use on an enormous scale.. From 1919

to 1926, 99 commercial Dubbs cracking units were installed

and operated, in which the reflux was returned by hydro-’

static pressure, or gravity head, as distinguished. from

the unworkable jet (I, 612-3). These units remained

on- oo as long as 281% days, with a. gasoline yield of

48% based on the charge (II, 615). |

ce these circumstances respondent. is driven to the

argument that no more than mere mechanical skill w as re-

quired to convert Behimer’s failure to success or to cure

the fatal infirmities in the Behimer patent. Judge Holly, .

in. holding that the present case is not appropriate for the

application of this familiar refuge ot the iniringer, ob-,

. served (40 F. Supp. 375)?

- - has. been need that even if the jet pump _

was not successful still nothing more than ordinary

mechanical skill was necessary to find a method of

_ returning the reflux. ‘But ‘the fact remains that

~~ neither the Texas Company headed by an outstand- |

' ing oil engineer and with a great staff of experts,

-nor Behimer, a man of great ability, could or did

think of a way. The method of/returning the re-

flux by hydrostatic pressure seems simple now. It.

might seem to a court that ordinary mechanical skiil

would suggest that method, but it is not ‘for the

court now to say, in .the face of the fact that the

method did. not occur to men ot great skill who were

7

eee w nnn

we a

' _ earnestly working on the problem, that just ordinary ©

~ mechaniéal skill was all that was necessary. Barbed

Wire Cases, 143 il; S. 2fo, aoe, **.*

Thus, quite apart from the fact -that ‘the - ndiaslieties

of such an effective ahd operative means for the worthless

jet disclosed in the Behimer patent, is opposed to the rule

of this Court in Coffin v. Ogden, supra, and to the rule that

the patent law recognizés no such thing as a reduction to

practice nunc pro tunc, it is apparent that the elevated

‘hydrostatic head was not a part of the prior art available to

sehimer for the purpose of curing a demonstrated and vital

‘defect in his scheme.

(b) The Rohde pate nt is imoperative and ineffective

_ for anticipatory Peper

All. that has been said in respect to Behimer’ s abortive

‘and abandoned. experimental work applies to the Behimer

patent, which is concededly. based ‘upon Experiment, 8.

' This Court has consistentiy refused to syst: ain a pat-

ent, directed to an invention having no practical value or

utility, Beidler v. United States, 253 U.S. 447. With like

consistency it has refused to invalidate a meritorious patent

fipon an item of the prior art possessing no ~— util-.

ity, dgawam W ‘oolen Co. v. Jordan, 74 U. S. 538, Amer-

ican Wood Paper C o. v. Fiber Distinte pea Co., 90 U.S ~ es

506. ;

Behimer repeatedly admitted that when his patent ap-

plication was filed in 1918, he knew ot ao useful or practi-

cal way.of forcing reflux through the heating coil: Judge

Holly rightly observed that The’ Texas Company caused

the Behimer application to.be filed “though it knew Behimer

74.

had not then conceived a workable process” and that the

Situation her¢ is one where the patent application was filed

when it was known that “the method described was un-

workable” (VI, 3043-4)... The purpose of The Texas Com- {

pany in thus filing in violation of the Patent Statutes and of

public policy was, as observed by Judge Holly, to have this

abortive or sterile scheme (VI,* 3045) “on record as an

anticipation” as against some subsequent and worthy in-

_ventor. In concluding that the Behimer application did not |

constitute an effective constructive ‘reduction to practice of-

the Dubbs invention, the District Court said (VI, 3044 ) :

“If the application for the patent is to constitute

reduction to practice, the specification must-be such

as to enable one skilled in the art to copstruct a

workable apparatus.. Curtis Aer selena hs Wieor

Corporation v. Janin, 278 Fed. 454, 457.

“One is not the discoverer of a new ‘process

until he has worked out all the steps necessary to

produce the. result he.desires. To hold otherwise.

would be, absurd. Behimer in his application stated

that the reflux should be returned to the-heating

zone, but he did not state how that could be em

plished and he did not then know.

“His application and fis drawing accompanying

‘it shows [sic] a jet pump whose function is to re-

turn the reflux to the heating coil, but in his testi-

-mony admits that the jet pump did not work. We

have here a, situation where an application for a

patent is filed when it is kriown: that the method

described was unworkable.”

The evidence fully supports the District Court’s find-

ing. Behimer testified (II, 951) that when he filed his

original application for patent on November 21, 1918, he

—

“intended to incorporate — did incorporate ip. that ap-

“plication” Experiment 8, which had been*abandoned in -

1917 as worthless. ‘The patent application, according to

Behimer (11, 951), “was based on that set-up.” Behimer

- further testified: |

“When I filed the application in.1918, I Tid not .

know oj any satisfactory means for returning reflux

to the heating coil, that would operate on a still of

; practical size. * * *”” (11,951). .

In condemning the jet, the only means ever known to

or ever used by Behimer in his unsuccessful efforts to re-.

‘turn the reflux, he testified that “‘we didn’t feel we knew

how to do the job and the jet pump was ‘out*” (iI, 951 >

_ Holmes, when he directed the filing of the application

bottomed upon Experiment 8, knew that the scheme was a

demoistratedfailure and had been abandoned. He knew

‘that as late as 1920 Behimer was still searching for some

operative and efficient way of means to circulate the retiux —

through the cracking coil_He testified that the reflux in

the 24 large commercial units installed in 1920 was re-

- turned directly to the vertical stills containing the residue ~

only -because his company had found no “means or facilf-

ties” to force the reflux through the cracking coil (II,

978).

Finally, respondent erroncoitsly contends that the Be-

_ himer application, as filed, contains a more adequate dis-

closure of a hydrostatic return of the reflux than is’-found

in the Dubbs patent (R. Br. 79). The Dubbs patent clearly

-discloses an elevated overhead aerial system providing the

hecessary and’ desired hydrostatic head to force the reflux

through the heating coils. The Dubbs specification plainly

teaches in several instances (IV, 1215-6) that from the

=

76

elevated aerialsystem a suitable “drainage line” is provided

fur admitting the reflux to the cfacking tubes B of. the ——

apparatus, and that such reflux condensates produced tn

the aerial system-and aerial condenser G’ are “‘automati-.

cally drained back”, entering the cracking tubes B to pass -

therethrough under such’ hydrostatic: pressure. —

In the Behipter patent, @ hydrostatic head pressure is

not employed for impelling the reflux through the cracking

coils. The head of liquid accumulating i in the pipe 17 is not

“intended to accomplish this purpose. This head of liquid

feeds the jet. and it is the “high pressure at which the oil

in the charging. line passes the jet” (VI, 2659) that is relied

upon to‘propel the’ reflux through the heating ‘coils,—the

scheme demonstrated to be unworkable. It is the jet that

is relied upon in the Behimer application’as compared with —

the hydrostag§e head in Dubbs. And the jet alone was used | |

in behimer’ work upon which the patent a was

based. |

To this may be. added Behimer’ s concession that when

he filed his patent ‘application he had-no concept of any

satisfactory means for returning reflux to a heating coil

in a still of practical size es 951 ).

(c) Responde nt cannot he bene fited by the pump of

the Thompson patent in establishing prior invention by.

Behimer. . <4 “

‘Respond:..t also contends (R. Br. 81-2), apparently as

a last line of defense, that Behimer’s problem was actually

‘solved in the year 1921 when he received a circular from

the Dow Pump & Diesel Engine Company advertising a

, surge pump devised by one Thompson (R.Br. 84). The

Thoinpson pump was patented 1 in 1917, although appare mtly .

77

*

it was not known to Behimer at the time of his experi-

mental work. Respondent, therefore, urges a nunc pro -

tunc grafting. of the Thompson pump on. ‘to inoperative.

Experiment 8, or its counterpart in the Behimer patent,

so-as to spell out an anticipation for Dubbs.

_ Such a’ procedure obviously collides with the rule laid. {

down: by this Court in Coffin v. Ogden, supra; but quite

apart from that, the grafting is not sufficient, for the”

pump of the Thompson patent did not solye -Behimer’s

_.-ptoblem. The District Court found that The Texas Com-

pany “did not use the Thompson pump but worked out a

“pump of its own device * * *” (VI, 3044). The evidence

. fully supports"this finding. It was necessary to make ma-_

terial and extensive modifications of the: om pumyy

to achieve success. |

The surge pump, as actually installed by The Texas

Cotipany, differed from the Thompson disclosure in many |

fundamental respects, including: ‘the followi Ing: a

(a) In the first: installation made by. Tex xas, a

Worthington pump was employed (IT, 1021).

stead of arranging the puinp‘and the valve shor

as exhibited in the Thompson patent, a vertical surge |

~ line, 36 feet high, was interposed (II, 973-4). This.

vis illustrated in DX 730. it was found to be et a

Jsfactory because of the chatteting or vibration of

the long vertical surge line (IT, 974). In. the next

installation, a Worthington pump was, again used.

- In this assembly, double gooseneck linés comparable pa

- in length to the 36-foot vertical lines were employed.

These gooseneck lines were’ interposed between the:

motive end of the-unit and the valve assembiy ( II...

7 =

78

7 974 ). This was done in an effort to avoid chatter-

_ing or vibration. °

(b) Even with the surge Jines elevated 36 feet .

and arranged in double gooseneck form, it was nec-

essary to inject cold raw oil into-the surge lines so

as to keep the motive end of the pump cool and

lubricated.

Not one of these vital things is disclosed by the Thomp-, ,

. son patent. .

Moreover, there is no testimony establishing that the

surge pump, as exemplified in the Thompson patent, w

effectively function wit the high volatile reflux the

high temperatures and pepecnses prevailing in a’ cracking

plant.

No testimony has been offered to the effect that -the

pump of the Thompson patent was ever employed in a

cracking unit of the clean circulation type.

Nor is there an, evidence that the man skill@f in the art

even with knowledge of the Thompson og at a date

prior to the filing of the application for the patent,

would recognize the Thompson pump as appropriate for

use in a gasoline-making process based upon the clean cir-

culation principle.

' (d) Conclusion.

‘Respondent's counsel did not bring Behimer forward as

a defense before the Delaware District Court in the Root

case, although the issue was open to them and indeed they,

pleaded a division of the original Behimer application. Per-

haps they did not rely upon it because they realized the

cogency of the arguments whose submission to this Court

™

we have now completed, Having been unsuccessful in the

- Root case on the other alleged, prior act, however, the re-

. spondent’s counsel have now made great play of Behimer.

We respectfully sabmit that their first view, and District

Judge Holly's cotisidered view, of the Behinier defense is

right and sound; that it is valucless to impair the validity

and quality of Dubbs. |

ss _ : Iv

"ALLEGED PRIOR ART

With but one exception (Elhs 1,396,999: V 1. 3352).

all of the prior patents here relied upon were betore the ;

courts in the Roof case. Even* the Ellis patent had been

pleaded there, but responderg (in privity with Root and

there represented by thé same counsel as here) apparently

concluded in that case that the Ellis patent was without

value. The other prior patents relied upon were specifically

considered both by the District Court iti tne case at bar and

_ by the District C ‘ourt in the Root case, and were rejected

by both as not seriously challenging the, validity of the

Dubbs patent. .

« The Ceurt of Appeais in the case at bar left the District

Count’s findings undisturbed. !n a dissentmg opinion.

Judge Lindley found the Dubbs patent invalid but did not

identif ¥ any anticipatory item or state his reasoris.

Judge Holly, after a specific dis@ussion of each of- the

prior art patents hére relied upon, said (V1, 3040-1):

“With great” skill and ingenuity counsel for

defendant have argued that these patents clearly

teach all that is contained in the Dubbs process. But

the stubborn fact yemains that the great oil com- . .

tf

ek

i |

o 80

;

panies with their staffs of highly trained technical

experts never found it out. “The Standard Oil ‘Com-

pany of Califernia maintained a research department

in w hich some 200 technicians were employed at a a

cost@t over a miJlion dollars a-year. Other great’

- oil Sen such as Texas, Gulf and Shell un-_

* doubtedly maintained laborator’s and technicians to

74+ work or. the problems presented by the process of

obtaining gasoline by cracking heavier petroleum

coils. If the prior art taught clean circulation: so

. cearly,-how did it happen that nothing better than ~

. the. Burton - Burton-Clark systems was. de-

veloped?”

After referring to the way in which the large refiners

learned of and recognized the-virtues of the Dubbs process, 7

he said (VI, 3043):

ees

“Thereafter practically all of the great com-

panies ‘took out licenses under the Dubbs patents

(the patents in suit arid certain ‘other patents) pay-

ing millions of dollars in royalties for the privilege.

“This is more than mere’ commercial success.

Here the recognized experts .in the art saw. the.

Dubbs process as new and revolutionary. And who

was better qualified to judge? H "ebster Loom Co.

. Higgins; 105. U.S. 580, 26 L. Ed. 1177,;°The?

cig Processes * or poration V. Danciger Ou & Re- |

fineries, Inc., 42 U.S. P. ©. 315.”

Treating specifically each of the prior art patents here

relied upon, the District Court in the case at bar made the

following tact finding (NT, 3053) 3

oF he principle of yin circulation taught in the

Dubbs patent is not found in the prior art patents

relied upon by. the defendant which are British Piel-

a

81

sticker patent No. 1308 of 1891, and United States

Pielsticker patent No. 477,153, Hall patents ‘Nos.

1,175,910 and 1,242,796, Ellis patent No. 1,398,999,

Alexander patent No. 1,407,619, * * * and Green-

street patent No. 1,740,691. - These patents do. not\

teach the Dubbs proceés. to those skilled in the art.”

‘%

Not one of the prior art patents relied upon was ever

commercially used. Two of such patents (Hall and Alex-

ander) relating to-a vapor-phase type of operation were

tried out by large oil. companies under the most favorable

auspices, were found wanting and abandoned. Judge Holly, — -

after discussing the inherent defects and infirmities of the |

Burton and Burton-Clark batch. processes, rightly found

that they represented thestate of the art “as practiced com-

mercially when Dubbs appeared on the scene” (VI, 3037).

He thereafter elaborated on the revolitionary character of

» ~ theclean circulation invention of Dubbs which’ enabled the ©

_ commercial manufacture of gasoline by cracking to leap in

one giant, Stride from the static. batch method to the clean

circulation process with jts attendant -advantages. Loe

We have_also in out! main brief (14-5, 21, 30) consid”

ered the Trumble patent 1,281,884 (VII, 3285 |) and éndeav-

oted to make it plain why, when the Dubbs demonstration

“unit was displayéd to’Pyzel, he at ‘once concluded that the

Shell Company, then the assignee of the Trumble patent, —

had been on the wrong track (I, 510). We may add to

, What we have said in reference to the Trumble patent the

following: ©. , etn oa ;

In the Trumble patent ( VII,.3287) residual oil is con-

‘stantly circulated through the cracking coil together with:.

carbon and other deleterious solids. The residual oil con-

tains an insidious: highly unsaturated; high boiling. liquid |

material known as polymers or asphaltenes (III, 1374-5).

It is a hydrocarbon which’ will readily and rapidly upon the

application of additional cracking heat be converted into:

carbon and adhere to the. walls of the cracking tubes. This

-insidious material cannot be“ removed from the Trumble |

system where but a small part of the liquids and solids are

taken from a circulating ring, nor did Trumble appreciate

the baneful effect resulting from any return thereof to the

cracking coil.* This imposes a limitation on the length of

the run and the gasoline yield.** 7

"A characteristic of the Dubbs clean.circulation process,

‘is the withdrawal of all’ residue, boti liquids and solids,

from the system: after each passage of:the oil through:

cracking coil with. the return -of the clean reflux to the coil

for further cracking therein. By withdrawing all the res-

_idue, both liquids and solids, from the’ system, Dubbs ‘pre-

vents the admission to the éracking coil of carbon or other

deleterious solids, as: well as the liquid polymers or asphalt-,

_*The patents to Stnith 1.239423 (VI, 3324) and Edwards

1,170,884 (VII, 3482) discussed in resporiderit’s brief, pp. 48-50,

are directed ty*Similar cyclic processes.. The circulating residue

-in each. instance is loaded with polymers or asphaltenes that are

rapidly converted. to coke, accumulating in the cracking zone

(III. 1322. 1374-6). . . > etree

**In respect to'the footnote in respondent's briet, page 20, 11

suffices to say that in Skelly Ol Company v. Universal Otl Prod-

ucts Company (31 F. (2d) 427), all the evitlence of Trumble’s

early work was before the. Court. <It was-never contended by

"petitioner. in that case that the process of the Trutnble patent was

used’ Commercially for the production of gagoline prior fo the

advent of Dubbs. (See respondent's brief (p. 14) in opposi

tion to application for writ of certiorari .in thig Court in Skelly

Oil Co., Petitioner, v. Universal Oil Products Company, Respond-

ent, Octdber Term, 1934, No. 419.) ; ;

1,176,910.

W. A. HALL, ee

PROCESS. OF MAKING MOTOR FUEL a

APPLICATION Fico JAM. 23, 1085..

Patented Mar, 14, 1916.

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- enes. This brilliant concept made possible an amazing pro-.

longation of: the on-stream cracking operation and a sub-

‘stantial increase in gaseline yields (P: Br. 16-17).

| Hall Patesit 1,775,910 (VII; 3200) ee

ore In rejecting the defense of anticipation insofar as based

on this patent-and its companion, 1,242,796 (VII, 3230), :

the District Court in the case at bar said: (VI, 3040):

__ “The Hall patents describe a vapor phase-process,

a process hegatived by Dubbs, they do not teach a

‘cycling process and the process of these patents when

tried out by the Texas Company proved ‘inoperable.

It is. stated by counsel for defense that the Texas

operation was not that of the Hall patents, but if

it was not Hall was employed by the. Texas Com-

pany to construct a plant, the company had knowl-

edge of his patents and his process or processes were

never used by the company.” ey

In the Root case Judge’ Nields said (6 F. Supp. 769):

“The Hall patent describes a vapor phase proc-

ess. The oil is cracked in vapor form. and dis-

charged directly into a condenser without any vapor-

ee izing chamber. The reflux does not return directly,

to the cracking tubes. It returns indirectly in.con-_

taminated form.” -

The history of Hall’s trials and failure appears in the

record out of the mouths of respondent’s witnesses. “Briefly

summarized, the proofs are to the efrect that The Texas

Company, one of the largest -refiners in this country, in

_ urgent need of a commercial cracking process (II. 975),

' €xperimentally tried the Hall vapor-phase scheme at Bay-

ay

84

onne in 1916 and 1917 ‘at an expense of. approximately-

$100,000 and under circumstances offering every possible

aid to success (II, 846, 866; III, 1045-6). °

Save for a few unsuccessful experimental runs, Ww ater

_ white kerosene ‘was employed as a charging stoek because

it had been learned from previous work that a heavier stock

was unsuitable (II], 1044). The process could not even

treat gas-oil (II, 867 ), the charging material for the Bur-

- ton “method and to respondent’s high pressure cracking coil.

All the runs were of the once-through type. Even with

the selected charging ‘stock, no attempt was ever made ti

cycle reflux (II, 866-7: III, 1044). - This doubtless was due.

to the circumstance that the distillate produced in the plant

Was unsuitable as a charging stock for a-second run | (HI

i referring to:the Hall operations at Bayonne by The

Texas: Company, deidaese s os De Florez, testified

(II, 866):

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“Both the indiiban. lite ai ‘the Bayonne

process were essentially once-through; * * *. ‘(The .

whole idea of this was to get this high conversion

once. through, and it never entered anybody’s mind

to recycle. It is'very simple to look back now on ,.

the early days of 9% and say; “Why didn’t you

do this ¢ or that?’ * * *,” Wes

. Mecheneté testified that an attempt was made to rertin

the light residue or reflux from the unit in a separate and

' inde pendent operation of the process but “was uinsuccess

*In respondent's discussion of this process -(R. Br., 21 ),

. thaccurately says that the oil “‘was-heated and cracked and largely

vaporized”. In fact the oil was first lia ahd thereaiter

cracked, a 7. vapor-phase eperation. es |

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ful due to the rapid carbon formation in ‘certain of the. :

converter tubes” ( V, 2427). . e/ re

An accountant’s tabulation prepared for Holmes, presi-

dent of The Texas Company, covering the results of the

‘Hall vapor-phase process, contains in Holmes’ handwriting .

-. a Notation. of 68¢ as the cost of production of a gallon of _

gasoline (II, 981). Holmes testified that the operation

‘ of the process was discontinued and the apparatus aban-

doned (II, 97546). air a ani

‘(The Bayonne experiments were carried out under the

direction of Hall by a paid employee, De Florez (II, 866).

To escape the’ damaging effect of. the testimony of the ~

Bayonne operation, respondent now suggests that this ex- ,

perimental unit did not embody the substance of Hall pat-

ent 1,175,910: in the circumstances, as indicated by the

District ‘Court, this contention, if true, simply demonstrates

that Hall himself did not see in the ’910 patent any solution

’ of the problem.” — | . |

The “light residue” from the dephlegmator 14 of Hall

(VII, 3201) is said ‘to contain large quantities of carbcn.

5o contaminated, it would be unsuitable as a recycle. stock

in a vapor-phase operation. The patent (VII, 3202; pat.

p. 2; Il. 113-7) says: . Sie ta eaateion S

“Carbon is thrown out in large quantities by the ex-

- pansion of the gases and collects on the filling ma-

_ terial in this and the succeeding dephlegmator.”

Dr. Brown said the action here described is character-

_ istic of a vapor-phase process of: the Hall type. Cracked -

residue, tars and carbon existing as a fog or mist will be

carried to the dephlegmators 9 and 14 and contained in the .

heavy and light residues therein (III, 1381). The patent

a ” | ;

then says that the carbon-laden light residue on dephleg-

mator 14 may be used “as raw material for a second run

through the cracking coil” (VII, 3203; pat. p. 3; Il. 3-5).

This plainly indicates that the light residue is used in a sep-

arate and independent operation of the process (III, 1382).

Attempts were made to so use it in the Bayonne operations

of The Texas Conipany, but these operations demonstrated

that this light residue was not suitable as a charging stock

even for a separate and independent run. When used on |

one occasion, coking of the unit resulted (V, 2427).

- Alexander Patent 1,407 619 (NII, 3364)

In finding the Dubbs patent valid over Alexander, the

_ District Court in the case at bar said (VI, 3040):

“ Alexander teaches eight different variations of

__. eracking process, none of which had sufficient merit

-_ to induce an cil company to actually put them to ‘use.

The Gulf. Oil Company did experiment with some

one of the eight variations suggested by Alexander,

though which one the testimony does not clearly

show, but the experiment cost the company a million

and a half dollars and was a failure. That was the

end of the Alexander processes so far as practical :

' use was concerned. The patent in its descriptions '

‘and claims is very confusing and I am unable to find.

that it teaches the Dubbs Process. ”

In the Root case, Judge Nields found (6 F. Sopp 763,

769) :° |

| “The Alexander patent discloses another vapor

phase“ process. . It. failed although an effort was

made to make it work under favorable conditions.

Copeieraate eatcars produced i in the — Oper- .

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Fig wherein Vaporizer 75 of Fig. 5 is incorporated. page 6 line %.to 100

nc susan _ | tubes under atmospheric

pressure or vacuum

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87

ation Dcafried back with the reflux to the cracking

* tubes.”.- ” oa Ee

_ The Gulf Refining Company employed Alexander to

erect and operate a unit embodying the features of this

. - patent. Construction began in the latter part of 1917, oper-

ations occurring as early as 1918 (III, 1349). In-this work;

in which over one and a half million dollars were spent,

~ Alexander’ had the unlimited technical and financial re-

sources of the Gulf Company at his command. The project

failed and the plant was scrapped (III, 1348). The unit

_ was’ such an abject. failure that Taber; who. authcrized

its installation, testified he “took great pleasure i in forget--

ting it’ (III, 1348).

During the first three months of the Gulf operation, the

unit conformed to Figure 8 of the Alexander patent, modi-

fied by the use of the pipe heater of Figure 5 in lieu of the’

. shell stilf 121, despite respondent's contentions to the con-

. trary (R. Br. 72). In this operation attempts were made

to return condensate from the fractioning tower 117 with .

and without admixed fresh feed to the vaporizing coil (III,

1353-8). .When so operated, carbon deposited rapidly and

‘in large amounts on the walls of the tubes, and the opera-

tion was abandoned as a failure (III, 1355, 1357-8).

The unit was thereafter modified to exclude the return

of reflux to the heating tubes, with the thought that carbon

‘ ‘deposition thetein might be avoided. _It was converted into

a typical once-through vapor-phase operation (III,

1354-7). In the once-through operation, even when using

kerosene as a charging stock, serious coke troubles were

~ encountéred and the yields of gasoline produced by crack-

ing were so low that the pro

This text is long and has been trimmed here. Open the source document for the complete record.