# Petitioners Reply Brief — Universal Oil Products Co. v. Globe Oil & Refining Co > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386404_0029%3A14 ## Record - **Collection:** Supreme Court brief - **Document type:** Petitioners Reply Brief - **Published:** January 1, 1944 - **Citation:** 322 U.S. 471 ## Text * 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 : . ‘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 | 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. 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 _ 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. . 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. . . : . . . . . . . . ‘ . . . fs . . . J . - \ . \ 1 : ® oe \ . vain \ . -\ Prk \. . . Ps ; . : , ° : ‘ P . . Ps ‘ : . .* ~ . ~ r 3 ~, : . Vos : ' : , - . “4 4 ° ‘? > . > . . hed . . P . g = . . : . . . ’ . ‘ * a %. J ss - 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): \ “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 | 85 , . , - . ae hy 7 “44 ,/ 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- . ‘@. . . ’ 9 “ : . o ; a . ¥ . * @° . . . : . ; ; . . ° “ . . 2. . 4 ; 7 . . : . . . . ° . - : ; . . ‘ , a . wy E * . . - cS : . . i ° : : J . * . : . , ? . ‘ ik: . ‘ . . . be ” . ‘ ; . AK” , . . . g ” . ‘ . ‘ 4-@*' sé ‘Aa @& @ «> - ze Shey oil with heavy ols condensed ss SSS from the cracked vapors a 2 fag ame £116 a 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 process was discontinued as hav- - ing no a and the plant was dismantled (III, -1350-1, ; gg 1355).’ The gasoline yield based on the kerosene charge ~ did not exceed 6-89 (IIT, 135i), as compared with a 30% yield in the Burton-Clark process with a gas-oil charge. me It is not surprising that nothing farther was ever done _with this fruitless proces? . . Tae Gulf Company’ s decision to abandon this process was not influenced in, any way by the color or odor of¢the end product (III, 1351-2), as inferred i in respondent’s brief -(R. Br. 24-5). Nor was the action of. The Texas Company in scrapping the experimental vapor-phase Hall process in- fluenced to the slightest extent by the color or odor of the gasoline. As to the latter operation, respondent’s witness Mackenzie testified that the vapor-phase product could be’ - successfully treated to remove any objectionable célor and odor (III,. 1045-6). a 3 Both the Hall and Alexander vapor-phase processes went the way of the horse and ‘buggy, not because of the color or odor of the products, but because the processes © were inoperative in os parame to’ be with-. ° out value. Dr. Brown and respondent's expert, Dr. Reiman, agree. that the Alexander patent exhibits a typical vapor-phase _ operation (IIT, 1256, 1407). It plainly states that the oil vapors are cracked under a pressure not exceeding atmos-. pheric, preferably under a vacuum (VIT, 3377; ‘pat. p. 2; ll. 47-56, 65-9; p..3, Il. 17-18). In the Alexander patent the material discharged from the vapor- phase cracking tubes 13 into the chamber 110 is, not vaporized® therein, but, to the contrary, the oil enter- ‘ *Vapor generation «followed by vapor liberation, or vapor liberation alone. ' ° a . ee . . * . . ee - . iy 7 ‘ ra at an gt ‘ ‘ . . ; . 5 a noet™ onevt ot 7) had . .. As interpreted — - - Greenstreet - Patent No. 1,740, 691. aoe em _ by Dr Brown © Sa 7 | ) Cracking in dt ters essential | - . te \ f@ unusally conversion P lapor phase | Digesters Pressure control valve-47 ~ Preheating coil 0 ieee a ca epee Crached resi : . 3 7 : | cae and Condensate hsm and Candensate ' as unsustlable for lapor phase ie unsuitable for tapor phase a ee, a a ee Pea, 89 _ ing the chamber 110 is practically all in vapor form, and whatever change in its condition occurs in the tower 110 is: ' solely one of condensation (III, 1405). There is no sepa- tation of vapor from the unvaporized residue in the tower. 110 (III, 1405-8). oss ewe : Dr. Brown explained that in the set-up of the Alexander patent, with the vaporizer 75 of F igure 5 incorporated in Figure 8, the scheme was inoperative because the vapors * would not be dry in .the vapor-phase cracking coils 113. Upon the contrary, it would exhibit the “no man’s land” condition with the result that, as Gulf 's experience proved it to be the fact, the process would be inoperative. Greenstreet Patent 1,740,691 (VII, 3476) There is no evidence in this case of any use of the .chimerical process of this patent, either experimentally or commercially. It is another item of the prior art directed to the inoperative and dis;redited vapor-phase type of oper- ation. It does not ex it clean circulation. | In rejecting the patent as an anticipation for Dubbs, the . District-Court in this case said (VI, 3040): ee! “As to Greenstreet, if I correctly understand the testimony of the experts of the respective -parties, the reflux returned for reheating contains the car- bonaceous residue and is not clean.” | ~~ Again, the District Court inthe. casé at the bar made . the fact finding (VI, 3056): ” | “The Greenstreet patent, according to the testi- mony of the experts for both plaintiff and deferyl- ant, does not disclose the return of a clean reflax, for the reflux returned for reheating containg’ the carbonaceous residue and is not clean.” Noe 90. _ In the Root case, Judge Nields said (6 F. Supp. 763, 769) : ; c ae oa a) , “The Greenstreet patent also discloses a vapor phase cracking process.- The material subjected to _a cuacking temperature in one of the cracking coils includes the combined residue of a series of cracking operations to which the vapors are subjected. ‘The cracking digesters load the reflux with carbon and prevent clean circulation.” — »% The experts are in agreemerit that the patent is idsie to a vapor-phase operation (III, 1265-8, 1400). Ail the demonstrated infirmities of the vapor-phase processes of Hall and Alexander are magnified in Greenstreet. This is becafise Greenstreet definitely teaches the return to the : vapor-phase cracking coil of cracked residue rich in asphalt- tenes, polymers and\other unsaturated high-boiling constit- uents (III, 1400-3). ; ioe ; In the Greenstreet patent the crude oil or other charg- ing stock is pumped inom supply tank lia to and through the topping coils 15. The stream issuing from the topping | coils commingles with the vapor. from the vapor-phase cracking coils 2, the mixture flowing to the first digester 22. 7 From the digester 22 the vapors pass successively through - the heavily insulated digesters 24-30 where they undergo continued and material ‘cracking with the product of a cracked residue, loaded with asphaltenes and polymers (III, 1401-3), unsuitable as a recycle stock-for the cracking . process. oe 2s, ek ie Moker Greenstreet places emphasis upon the importance of conserving the cracking heat of the \Yapors during their ' passage through the pipe system and the digesters 24 to 30 \ ‘> MAKING GASOLENE SUBSTITUTE. APPLICATION FILED OCT, 4, 1913. v g ri 8 1,896,999. - * 3 SRECTS—SeEE! 2. ~ OAWAM —. Fraciiowatie CO —WS ee - & to insisre.active cracking thereof. Both the pipe system and the digesters are héavily insulated or may be externally heated to conserye the cracking heat (VII, 3482-3; pat. .p. 2, I. 47-50, p. 3, I. 29-33). This is expressly defined as an essential of the Greenstreet scheme (VII, 3482; pat. p. 2,1 108-24). The cracking in the series of digesters neces- sarily produces carbon and high-boiling unsaturated com- pounds that are returned to ‘the vapor-phase anny coils ; such a recycle stock is yan to the process. Ellis Patent 1,396,999 (VII, 3356) This patent discloses another_typical vapor-phase crack- ing progess. Even though it was pleaded in the Root case, it was not there relied ‘upon, presumably because it was ’ concluded to be inadequate. —~ * In holding the Dubbs patent valid over Ellis, the Dis: trict Court in the case at bar (V1, 3040) said: ~The: Ellis aobent, which shows a vapor shies process, does not teach a re-cycling process. The construction of the system as shown by his draw- ings is such as to prevent the return of reflux con- densate to the heating tubes.” These critical findings of the District Court are “fully ‘supported by evidence (IIT, 1377-9). Indeed, senpendert 6 expert, Dr. Reiman, said (III, 1311-2): g concede that this Ellis patent does not ot: specificalty y say to return’ the condensate from a partial con- ~ denser back to the entrance end of the. cracking coil as a continuous operation, and with its contained heat. * * *” . ene Dr. Brown also testified (III, 1378) that the Ellis patent exhibited a “‘once-through operation using as a charge. kerosene” and that: “‘no means are disclosed for cycling or Teturning any of the reflux to the treating coils.” The : drawings of the’ patent obviously show no means for re- cycling hot reflux through the cracking ‘coils; nor is any such means described in the specification. Dr. Reiman’s concession, in accord with the testimony: of Dr. Brown, _ demonstrates that Ellis does not disclose the’essential fea- tures of: the Dubbs process. : The ¢xperts are also. in accord, as amply supebciet by the patent, that the process is confined to a vapor-phase operation and restricted to the use of kerosene as charging stock (THI, 1244-6, 1312). Moreover, it is the: undisputed testimony of Dr. Brown that Ellis does not suggest a separator interposed between -the cra cking tubes and the | fractionating column froni which the residue,. after vapor- " ization, is withdrawn, as employed in both the Dubbs and _aecused processes (IIT, 1379). ‘ In short, the patent lacks all the characteristics wid essential features of the Dubbs process. | . Respondent crroncousiy contends the vapor-phase processes of the prior art. function successfully. . Dr. Brown testified that for a successful vapor-phase - Operation it is nécessary that the low-boiling oil be con- verted into a “dry vapor” before active cracking begins (111, 1 304). This is so because if the Vapor contains par- - ticles of entrained liquid or non-volatilized oil, sucht en: | trained particles w ill adhere to and rapidly coke the cracking tubes (111@1365 ). His. view is confirmed by 93 actual+observations he had made (III, 1461-4). Largely because they failed to embody this operative requirement, the prior art vapor phase processes were unsuccessful and abandoned. | rs The facts established by this record fully support Dr. Brown's views. and reject respondent's feeble contention to - the contrary (R. Br. 70-2 ).. The vapor-phase processes of. the Hall and Alexander .patents, after fair trial under the. most favorable auspices, were abandoned as inoperative or without practical utility prior to 1920. Nothing thereafter came.of either of them. The Hall process, limited as it was _ to these of a highly volatile water-white kerosene charging stock, produced gasoline ata cost of 68¢ per galton (11, 976,” 981). It was abandoned by The Texas Company when the latter was in urgent need of an operative cracking process.* The colossal: failure: of the Gulf Company clinches the: Proposition. It abandoned the Alexander ‘process, after spending over a ‘million and a half. dollars on it, integ alia, because the gasoline vield based on the charge was but 6 or-7% (II1,1351). | eae ° Respondnt cannot be benefited by wie asserted sucéess- ful vapor-phase operation of the Skelly Oil Company . because’ that operation,. whatever it may have béen, first appeared in 1927, long after the advent of Dubbs. This comment applies likewise to the. experimental vapor-phase plant which Dr. Reiman asserts that ke operated in 1926, Whatever this: process may have been, Keiman conceded *It is an absurdity for respondent to suggest (R. Br. 71) -that the Hall process, abandoned by The Texas MMPANV Was success ful and possessed practical utilitv. Neverthéiess. it is « Jely upon this stegile and abandoned operation that respondent relies t Sup port its. contention that the vapor-phase process prior to Diibbs: Was successful. Ap | 94 that it “was abandoned * * * at the end of 1926” and that * “as a cracking process it was not operated again” (III, 1298). . Pielsticker Patents, U. S. 477,153 and British 1,308 of 1891 (VII, 3126; 3531). We agre with respondent that these two ancient patents . may be considered together, as their disclosures are sub- stantially the same. : Judge Holly said of these patents (VI, 3039) : “The Pielsticker patents were issued early in the ‘90's, the British patent in 1891 and the United States patent in’ 1892. By a rathér strained con- struction counsel . for defendant assert that they teach a withdrawal‘of residue and return of clear /. reflux to the heating tubes, but I do not find such teaching. The process as described by’ Pielsticker appears to be nothing more than simple distillation. -_ A dome appears to. be located with the distillation chamber, but it is not a condensing chamber such as is used as a necessary feature of.a cracking opera- uon. It is ititended apparently to catch the droplets of oil that may be carried with the vapors and pre- .vent their being carried over into the chamber where the vapors are condensed.” In his findings of fact rejecting this defense (VII,. 3055). Judge Holly found: “The Pielsticker patents do not disclose a teach- ing of return of clean reflux, unmixed with residue, to the heating tubes, and the process des- cribed by Pielsticker appears to be nothing more than simple distillation. Pielsticker’s dome is not a condensing chamber suth as is used as a necessary ‘ "Tc : aia a - a i r ed hel ey, Ye As. interpreted by Dr Brown 4 | Vapor phase cracked very Iight oil ar permanent: gas» Semple aistiilation egupment a te ~~) oe : = ~ | ; : -e* Vapor phase cracking eguipment Bs mS Ss i ° : , 5 ‘ =a a ra ~ i) : : : ; on we cae : Entranment knockout dome FlCH on ae . . a » : “tae . ei Nan cracking temperature Furnace Wail . : 6», f — \ : = F : g” oS ; \ aes ok SNES SNR ee Rie nat me : z : : a me -. S \ aa he oe e¢ “we wm . sol . ‘ ; the BEN Sieg Ee ci paler ew i ire e ; | = “dl ‘ ‘ ! " 7 ae. ‘ ; “- ; : z - >. i. ee ae o ES “Ppa -e- - oy . P sa ; e ‘ - r] : aucy x Drrectiy fired siinple distillation retort ' “Op f a een iy Vapor phase cracking tol. | 2 ® } > ads - 2 ss - -@e Coal furnace , aul 3 So a é * — +48 y 7} 3 : eg eee] eo Ss o. ° . | ¥ ; a Ete = ; . . oe! am ai maeicnambiuras cok: See Re ee ER sitet ; ae dE a : . ar Bio ° ea ° . ~y ® ° 1 | . Residue Discharge eae. e e ee se } 4 one 5 . ; a. fe «) ; ‘ E ss Pris | eye Ce , 8 34 ti 3 5. &- 38. Pasi bs #3 3383 ? bo%s = 2 e yy” “; 4 e G hs e-3 ~Joe 3° s ‘3 ; 4 ; (POM oN, seg . +e. > - ‘ . . . , - , ary “e . . ; 3 . allan oo ee ees » ; | P | | . | : | ; F | | ; | . : 1 . feature of a cracking operation but is intended ap- parently as an entrainment. knockout to catch the droplets of oil that may be carried with the vapors - . and to prevent their being carried over into the chamber where the vapors are condensed.” | _ " The above findings of the District Court were not’ dis- turbed by the Court of Appeals. They are fully supported oy the evidence (III, 1385-1400), which establishes that ‘the Pielsticker patents do not exhibit the clean circulation principle of Dubbs. - 96 their disclosures. Such disclosures were av ailable to the re- fining industry for use at no cost throughout the years when the carbon problem was plaguing oil refiners. Nevertheless, during this period millions of. dollars were spent by the refining companies in unsuccessftil pursuit of a solution of the problem. -All this establishes well nigh conclusively that Pielsticker lacked the teachings necessary for success, which were giv en to the art by Dubbs. Paramount C orp. Vv. Tri-Ergon Corp., 294 U. S. 464, 474. .The patents.are directed to the treatment of iydrocar- bori oils and other oils and liquids, such as fats a.d oils in the separationvef fatty acids and glycerine. They further say that the eb a may be used for the continuous pro- duction of distilled water from sea water or the concentra- tion of brine, oikaline solutions — solutions. _ Dr. Brown, whose’ views .wer accepted by the trial court, directly and succinctly pointed out why Pielsticker fails to exhibit the clean principle of the Dubbs invention. His views may be summarized as follows : (1) The operation described by Pietsticker, save .-for the. modification embodying the vapor-phase cracking coil D’, concerns. primarily simple distilla- _ tion with but the usual insignificant or incidental - cracking (IIT, 1394-8). ‘Respondent does not con- tend that the modification, including the once- through vapor-phase cracking’ coil D’, either anticipates or negatives the Dubbs invention. (2) .Jf permanent gas or a very light oil is to be obtained; Pielsticker suggests, as an addition to the simple distillation _—— tubes D and retort. 1,* the wie * Retort 1. in the U_S. patent ; Zio 97 above-stated vapor-phase cracking coil D’. This is the only cracking operation described in the patent (III, 1397). In this operation the gases and vapors issuing from the vapor-phase cracking coil are not " subjected to reflux condensation. . | (3) A characteristic feature.of Pielsticker, il- _ lustrated in every embodiment of his invention, is a - large externally-fired retort of shell I against which the furnace gases directly contact. “Should deep cracking. to produce gasoline be carried out in this set-up, including the large shell or retort I, con- trary to the teachings of the patent, all of the de- fects and infirmities of the Burton scheme would be endowed ‘upon Pielsticker (III, 1390). In such an event carbon would rapidly bake-upon the walls of the shell or retort I, requiring frequent shut- - downs for cleaning and presenting a serious hazard to life and. property. ( 4) In each assembly drawing of Pielsticker, -including the furnace setting, the directly fired shell - | I is provided with a dome completely embedded within the refractory insulating walls of the setting. This dome functions efficiently as an entrainment knockout device, tending to eliminate particles of © liquid from the vapor, desirable in Pielsticker’s simple distillation process, but could not function as a partial condenser producing by heat abstraction substantial _ quantities of reflux condensate | (III, 1393-4). Respondent, in a desperate effort to find some founda- tion for cracking i in Pielsticker’s | scheme elsewhere than i in ° 7p ee wh Pe ag the vapor-phase cracking coil D’ (R. Br. 63), leans héavily on a vague statement in the British patent that the en- trained liquid particles from the insulated dome P,.upon _ return to the retort I, “are reduced in gravity and finally distill over” (VII, 3532; pat. p. 2, Il. 47-8). This language does not connote ‘cracking, as Judge Holly found. In the dome P a coalescence of Fhe particles of entrained liquid. .. carried by the vapor occurs; and it is these coalesced liquid particles containing high and low beiling hydrocarbéns that are returned to the retort (III, 1393-4)- from the dome P, which functions essentially as an-entrainment knockout . 7 device. Upon return fo the retort, the lighter fractions of these. ancabnany ofary distillation and pass on to the condenser, leaving the heavier fractions .as a part of the . residue,—a typical distillation process. can Fs Respondent. next contends that cracking is spelled by .the statement in the Pielsticker patent that when it is “in- tended to produce stil] lighter gravity oils” a valve R may — laced between the retort I and the condenser U (R. Br.” 63). The evidence is directly to the contrary. As pointed out by Dr. Brown, and as the District Court held, the lighter | gravity oils here-described are the products of a simple dis- tillation process carried out under a pressure slightly above atmospheric (III, 1398-9). An increase ofthe pressure of a few pounds correspondingly retards vaporization in 2 simple distillation ‘process and offers @ suitable’ means for . controlling.the quality or boiling point of the final distillate _ and produce such “still lighter gravity oils’ (ILI: 1396). ; Such a control is particularly siseful with a distillatory sys- tem of the Pielsticker type where hand-fired coal furnaces “are employed and difficulty is encountered in maintaininyr - # substantially uniform temperature. The pressure varia- a oe 99 tion stated in the Pielsticker patent to control the quality of the fina! distillate is today used in the simple distillation grocess (111, 1398-9). - Respondent, in its brief, attempts to make much of an -asserted construction placed upon the United States Piel- - sticker patent by petitioner in another suit involving a dif- ferent patent and different parties (R. Br. 64-5). In that = | suit no testimony was presented by either party touching - directly or indirectly,on the Pielsticker patent. What peti- tioner may have stated. in its briefs in that suit was but the _argument of counsel unaided by any-testimony. In the case ® at bar evidence was adduced explaining the Pielsticker pat- ents. It is on the. basis of Such evidence that the District Court concluded these patents had no anticipatory value.* | “* \ | ’ _ Respondent's process does not stem from the prior art but from the Dubbs patentin suit. ; In. spite of its labored efforts (R. Br. 58-9) respondent cannot liken its-concededly mixed phase ‘clean circulation process to the prior art processes. The genealogical charts which it has elaborated (R. Br.'75, 154) in its, own behalf lack the authority and authenticity pi the family\bibles. In its endeavor to find a lineage, respondent has socambled Unaag , \ *Kespondent in its brigf (p. 60) leans heavily on an opinion « ‘ef the Citcait Court of Appeals for the Tenth Circuit in Texas * Ca. v. Anderson-Pritchard. Refining Corp., 122 F. (2d) 829, in sa its effort to give some anticipatory. status .to Pielsticker and, whther prior art patents. Petitioner was not a party to that suit .\. and had nothing to do with it.-- The findings there made can x lave no persuasive effect here and-cannot affect the rule that fact ° . findings of the courts below will not be disturbed if supported by any substantial evidence, &. 7 _ og 100 several families of processes, whose only claim to relation- circumstance that these processes suggested or attempted cracking oil. : | _. ‘ship goes back to the Adam of the art involved, namely, the Respondent's genealogical charts are endowed with the ‘same inaccuracies and errors of interpretation as the testi- mony of respondent’s witnesses, without regard for the dis- — closure of the original document. We have fully explained, from cause to effect, the deficiencies and limitations of some , of the prior art processes and the failure of the others. We _* have demopstrated that none of the prior art processes could do what respondent's operation accomplishes. Its operation x is a mixed phase clean circulation process embodying all the essential features of the process of the Dubbs patent in suit. . ‘ Py . ; Vv - THE EGLOFF PATENT . (a) Infringement: Ge _ To what we have said in our. main brief (P. Br. 4447, . 126-130) including the application of a typicalclaim (claim 2) of the patent to the accused process (P. Br. 48-50), from which it appears that respondent -has slavishly appro- priated the Egloff invention and that: the claims lay them- selves directly ‘on kgspondent’s operation, we desire to add : the following:. mee Q Although appropriatitig the principle of Egloff, respon- dent (R. Br. 147-149) seeks to avert infringement by the erroneous contention that the Egloff patent is confined to liquid phase cracking (without vapor generation) in the 101 cracking ¢oil 6; this, it asserts, spells mere incipient crack- ing in said coil as compared with the substantial cracking - obtaining in the cracking coil of the accused process. Dr. Brown testified decidedly to the contrary. In referring to the cracking of the reflux condensate occurring in the high temperature high pressure coil 6 of Egloff, Dr. Brown tes- tified that “it seems clear that the teachings in the patent is * that the ma jor cracking of the reflux condensate must occur in the coil 6" (II, 779). Considering the cracking of the reflux alone, the proportion of the cracking effected in the cracking coil 6 of Egloff is substantially greater than 20% . (R. Br. 148-9). Such substant‘al cracking would, on re- spondent's own admission (R. Br. 149) cause outetentio’ vapor generation in coil 6 of Egloff. - 5 ver, fespondent could not escape infringement even if/ substantially liquid phase cracking occurred in the . coil 6 of Egloff. The claims of the Egloff Patent measure the invention; they are not limited, in language or other- wise, to liquid phase cracking in the cracking coil 6; they are inclusive of both liquid and nyixed phase cracking. We desire also to discuss briefly respondent's argument (R. Br. 148) touching on the significant statement in the _ Egloff patent (p. 1, Il. 103-7, VII, 3095), which reads: “It will thus be seen that the reflux condensate is | continuously subjected ‘to recracking, but at dif- ferent conditions of temperature and pressure oF both than that to which the Taw oil is subjected. This illuminating statement, following the description of the objects of the Egloff invention and of the manner in _ which the process is carried out, plainly teaches substantial 102 cracking, sufficient to convert the reflux condensate to sub- stantial quantities of gasoline,'in the high temperature high pressure coil 6. Without any foundation in the Egloft © patent, respondent erroneously assumes that but “further slight cracking” is there contemplated (R. Br. 148). — This assumption does violence’ to the teachings of the patent. Plainly it is to a large extent upon the “recrack-: ing” of reflux under high temperature and pressure in the coil 6 that Egloff relies to obtain substantial conversion of the reflux to gasoline. Coil 6 is ‘the oaly. instrumentality provided by Egloff in which recracking of. the reflux can take place under conditions different from those to which the raw oil is subjected (cf. patent, p.-1, Il. 103-7; VII, 3095). The man skied in the art would understand from these instructions that Egloff contemplated » substantial cracking in the coil 6, just as it occurs in the cracking coil “or B. tubes of the antecedent Dubbs patent upon which Egloff was an improvement. , | _ Notwithstanding respondent’s argument to the contrary (R. Br., p: 129), its expert Smith testified he so understood the teachings of the Egloft patent. But he refused to give proper expression to such teachings by confining his con- sideration of the patent to the specific illustrative tempera- . ture and pressure recited in an example thereof.* In his " testimdny in referring to the sentence m question (III, p. 1111), Smith said: a es “The difficulty. with this is that while fic [ Fgloft} says the oil is to be subjected t6 recracking in this “In contrast with: Smith's willingness to depart from Dubbs's specific teachings in order to restrict unjustifiedly the process of _ the Dubbs patent to an operation which would spell non-infringe- _ment by respondent’s process. “ 103 coil, he docs: not provide enough temperature - to accomplish any substantial amount of cracking in the coil; just too low a temperature 770° would not . do it.” Thereafter Smith conceded that if the man skilled in _the art “knew he wanted to crack in the coil 6 he could run to higher temperatures and accomplish cracking” (III, 1169) and that he did not think there would be any dif- . ficulty for the man skilled in the art to design a low tem- perature coil to do what he wanted ‘todo in that coil (Rad, . : 1170). Thus Smith did say, contrary to respondent’ s .con- ~ tention (R. Br., p. 153), that Egloff taught (1) substantial . cracking i in the coil 6, and that if the illustrative tempera- > ture given in the patent was insufficient to obtain: deep cracking therein, (2) it would be within the skill of the calling to use the temperatures reguired to attain the con- " templated end. . . ; Respondent also ‘argues (R. Br. 149-150) that in re- . - jecting claim 3, the Patent Office examiner, in suggesting ‘the word “heated” or the word “cracked” should be in- serted before the word “oil” , Placed Egloff on notice that if a? Te used the word. “heated” in his claims, they would be limited to non-cracking in the coils. In the claims as finally granted to Egloff, including a typical, claim 2, cracking in the coils was not, as respondent 4 Suggests, discarded. In typical claim 2 it is. recited that the reflux passes through ; a heating zone. where it is subjected ’ to a cracking temperature. . In the saine claim, the charging ‘ Stock is recited as undergoing heating to a cracking tem- - perature. Obviously. cracking ° in the coils: was never dis- claimed. cae, 104 ( This was ‘fully understood by the examiner. In ‘the Patent Office letter to which respondent calls attention (IV; 1031), the examiner said “Applicant also mixes his cracked reflux with his cracked oil in the expansion chamber 12.” Thus the Patent Office understood that Egloff’s reflux was cracked, before: it reached the expansion chamber. obyj- ously in coil 6. In the remarks presenting the claims ap- pearing in the patent (IV. 164] ), it is expressly stated-that the condensate is to be heated to a temperature “necessary _ tor property cracking” the same. ; A complete answer to respondent's fallacious argument (R. Br. 151-2) that Egloff does not teach the production of a clean charging stock in situ, such as practiced in the accused process, is’ found in our main brief (P. Br. 44-6, ° 127-8). Nothing need be added to what is there said. (b) Alleged Prior Art Respondent’s contention that if ‘Egloff is infringed, it is anticipated -by the Vapor phase patents to Alexander (VII, 3364) and Greenstreet (VII, 3476) is unsound. The Egloff patent and each of the claims thereof. are character- ized by the low temperature mild cracking coil 5, the high temperature high pressure cracking coil 6 and the common expansion chamber 12. An essential of the patent is the - production of a clean reflux or distillate oil from Vapors generated from the oil passed through the two: coils and entering the expansion chamber’ f2, constituting a clean distillate charging ‘stock, uncontaminated with residue, for return to the inlet of the high temperature coil. | In the consideration of the prior art applicable to Dubbs. we have demonstrated that the Alexander process tried out by the Gulf Company at.a cost -of 1,500,000 dellars and . 105 * abandoned as°a failure, lacks the essentials of Egloff. .To . what is there said‘it may be added that Alexander does not exhibit in a combination unit the low temperature. mild cracking coil 5 of Egloff, or its equivaient, ‘by: which the crude oil is mildly cracked and-the cracking heat utilized to aid in-the production of a clean distillate stock for the high temperature cracking coil 6 of the Egloff patent. Under the same heading in this brief, we have also dem- onstrated that the Greenstreet paper patent is.of no antici- patory value. As a result of the drastic and extensive vapor phase cracking occurring in the digesters 24 to 31- (VII, 3480) the residue admitted to Greenstreet’s vapor phase cracking coil 2 is loaded with polymers and carbon. It is _-not a clean distillate stock. Both of the items of the prior art cited against the Egloff patent relate to the non- antici- patory and discredited vapor phase process. CONCLUSION =— Both of the patents in suit should be held valid and. infringed, and the judgment of the court below should be "reversed. | Respectfully submitted, | -Wa®DwicHt Wuitney, Counsel for Petitioner. WiLiiaM F. Hatt, CuHartes M. THoMas, — Freperick W. P. Lorenzen, e Of Counsel. . @ March ft, 1944. --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386404_0029%3A14. Public record. Not legal advice.