# Brief for the Respondent — 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%3A18 ## Record - **Collection:** Supreme Court brief - **Document type:** Brief for the Respondent - **Published:** January 1, 1944 - **Citation:** 322 U.S. 471 ## Text NY IN THE ‘Supreme. Court of the United States _ OcToBER sha 1943. No. 392 UNIVERSAL. OIL PRODUCTS COMPANY, A CORPORATION, - Petitioner, vs. GLOBE OIL & REFINING COMPANY, a conPoRATIOR, — 2 BRIEF FOR RESPONDENT. J. BERNHARD Tues, , * THoRLEY von Ho st, - Smipney NEUMAN; Rosert W. Poorg, ° Attorneys for Respondent. . yee nT = ~~ THE CUNTHORS. WARNER PRINT MO COMPANY, 810 WEST seGusen, CHIGAee | cy The meaning of the word “vaporization” Petitioner has not shown any use in the art or otherwise of ’ its alleged special meaning for “vaporization” Dubbs's specification gives no special definition for * vaporiza : tion”: it does not use “vaporization” and “liberation” . as synonyms eae One” AEE RR ee ee I The Tnibbs patent teaches means for pretenting substantial i vaporization in the B tubes: it teaches no means for pre- venting “liberation” of vapor from liquid in these tubes The word “substantial” in Dubbs’s claims denotes the. Mean- ing of “vaporization” as formation, and not seperation, of ‘vapors from liquid retanbet : « INDEX ¢ ~ 3 ss Page NY WINN cicitsnnssatnnesatesaiinnsinsenshipsihnsninhniahonnnananyasisiatinnsinttaninintueatisentadgienn ~ EE LEE LILES CA OO The questions presented... cece cceceeeeeeee pee Ms nets etna ences 3 I Ne ID UII ints sas sntsincqnerhisannipnsnnnadarereseespiaenkecoee 6 x The parties... ESS Ee Ey ee I RR A TE DLE ATS 6 v, Petitioner's nae Ce ee ae Re 9 The Dubbs-Wannack-Olsen-Kaufman Episodes... eteaasiotria” | ae Universal's conduct in hiring Behimer away from the Texas - Company ‘for $225,000.00... iad atieinabicast bic ineukenSicasoes RBS Ree ae The nature of the cracking process and the state of the commer; _. 88 BD ES ‘* Temperature and time produce cracking. 0002000000. 18 ° The carbon problem in cracking... pepretesinediigietidaiiagh balioncinie)~ a Commercial processes prior to Dubbs: drum cracking, and coil ‘- cracking, processes, and hdw they met the carbon problem: 20 Residue agra and ‘its non-return to the systenr was old rm ene - GON MN a ee 21 Fractionation and refluxing were practiced in commercial cetuvumed cea L = ee The two schools of cracking: liquid ‘phase, and vapor and liquid-vapor phase... 2 ET OE POA EE TS. 5 eaiaitiaecohadacc: aa The early preference for gasoline produced by liquid -phase cracking and the prejudice against vapor, phase cravking 2% The function and use of superatmospherie pressure in crack- ing processes wis also well understood and practiced long before Dubbs’s entry ‘into the field. 26 The Dubbs patent: its objects and the nature of its process Zz . The objects of the Dubbs patent as siated in the specification 27 The Dubbs patent teaches and claims a liquid phase two-step so - cngy mo ip page ET Sel LE A 28 ‘ In the Dubbs patent “clean circniation” is nei the solution of the carbon problem, but ix a miner step in furtherance of ‘ wo-step cracking process which did solve that problem 35 This record shows conclusively that commercial cracking stills functioned practically as well without. ax with “clean cir- Sh RSSEETRERES = . : : é ; | Miscellaneous: . — Ly ait 4 . m Restatement of the Law of Contracts $2272.00... Eee oo sete 108 | Wigmore on Evidence, 34 -Ed., Vol. IX, Sec. 2466, sien . 108 12 ‘Habra: Law Rey. 417, Holmes, *Theory of Lind Interpretation. . 108 * ; , ; é | x ‘ | ° ’ * w IN THE Supreme Court of the United States Ocrosse same, 1943. No. 392 UNIVERSAL OIL ‘PRODUCTS COMPAN Y, A CORPORATION, Petiticuer, vs. GLOBE OIL & REFINING COMPANY, a CORPORATION, Bex . , Respondent. ‘/_. BRIEF FOR RESPONDENT. “The opinion of the Circuit Court of Appeals for the Seventh Circuit (Judges Evans, Major and Lindley) in the instant case is reported: in 137 F. (2d) 3, and is also found at page 3575, Volume VII of the record herein. The majority of the Seventh Circuit Court of Appeals did not pass on the validity of either the Dubbs or E patents but held that their claims were not infringed. ~The : Court reached this conclusion as to the Dubbs patent by . tefusing to adopt petitioner's theory of a special meaning ‘ a ae for the word ‘‘vaporization,”’ ariel as to the Ke lof aie nt by a consideration of the antithetical nature of its dis- closure when compared with the respondent's process. Judge Lindley cone urred in the result on the ground that. both the Dubbs and Ligloif patents were invalid. The opinion of the District Court for the Northern Dis- trict of Hlinois, -Kastern Division, is. reported in 40° F. Supp. 575, and is also found: in Volume V1 of the record herein at page 3035, District Judge Holly held the Dubbs patent valid but not infringed, and the Egloff: patent in- valid. = in.the interference was changed to the sole application of Behimer,—Holmes and Maniey filing affidavits to the effect 7 that ‘Behiiner was the sole inventor (V, (2047); on June 30th, The Texas Company filed its anowbe (DX. 243, V, 2355) in an infringement suit on the Dubbs. patent and pleaded prior invention by Behimer, and on July 12th, _ Standard Oil of Thidiana counterelaimed (DX. 245b, V, 2355) for an ‘adjudication that Behimer was the: prior inventor and that the Dubbs patent was void. Moreover, on July 15th, another interference, No. 55,610 (DX. 179, P 13 : V, 2118) was declared by the Patent Office between the same application by Beliimer and another application by vy Dette. The issue of this interference “as similar to ‘that in. Interference No. 49,355, but included the requite- - ‘ ment that the reflux be returned to the inlet of the coil ~ under ‘‘forced mechanical pressure” (a pump). ! Universal had learned that Behimer’s father lived at Harlingen, Texas, and maintained a close relationship with his son. On July 17, 1927, Murray, Dubbs and Kerr, agents of Universal, met in Brownsville, Texas, -tg dis- euss means of contacting Behimer (I, 179- 180). At that date, Dubbs wired Universal’ s Vice Pi ident, _Dun- ham, from Brownsville, saying (DX. 225, I, 27 ** Atto {Murray} was unsw ul with Texas party hence have taken matters in nds and hav- ing them help.’ Through the president of the Harlingen bank (a man named Thompson) Dubbs and Kerr secured an introduc- _ tion to Behimer's father and discussed with him the terms upon which Behimer might be employed by Universal (I, a. 171). As a result of these negotiatiogs, Dubbs, on July 20th, wired Dunham, stating (DX. 2: 271): ioe § 2 very necessary to pay the twenty- five. thousand bonus in spot cash. * * * I do not want * my name to appear * * *’’ The mention in this telegram of the $25,060 bonus is sig- nificant in that it shows Universal’s readiness to pay a large sum of money to get Behimer, although Behimer had not, prior to this time, engaged in any discussion as to terms of employment. The reply that this telegram evoked | from Universal's lawyer in Chicago, Mr. Alexander F. Reichmann, is most significant. Mr. Reichmann wired Dubbs o' July 22, 1927 (DX. 230, I, 272): | ‘Suggestions outlined your telegrams wholly un- oe ee Neat acceptable and cannot be considered Stop Understand- ing was that intended negotiations were based on in- formation. that party desired to make change in his employment stop. On that basis company’s understand- “Ing was negotiations: ‘with him would be conductéd openly and in regular manner Stop Combined judg- ' ment and desire is you drop matter and return at — earliest. conv enience for confer ence.’ In explaining the reason fgr M r, Reichmann’s telegram of protest, Mr. penne, then Vice- President of iar ita testified (1, 447): “lt was the question of paying a bonus i in advance. A bonus is not paid in advance.’ Mr. Reichmann’s protest was unavailing, however, for ** after a conference of Universal’s officials in Chicago, Dubbs returned to Harlingen with authority to proceed. | Karly in August, The Texas Company obtained Be- himer’s signature to his preliminary statement in Interfer- ence No. 55,610 (V, 2126). The very next day, August 13th, Behimer was called to Harlingen by a telephone call: froma friend, one McClosky (now dead). Thompson, the bank president stated positively (I, 172-3) that MecClosky was approached to ‘aid i in the plan of getting ‘Behimer to Harlingen and that McClosky ‘based his summons solely upon the ground of Behimer’s father’s illness. When once ; in Harlingen, Behimer, of course, met botli Kerr and | . Dubbs, and after a week's discussion executed an employ- ~ ment contract with Universal. This contract (DX. 531, I, 972-4) was for a period of ten years and prov ided for a -basie salary -of $15,000.60 a year to Behimer, plus ‘a guar- _ anteed minimum bonus of $5,000.00 a year for the first five years, and $10,000.00 a year for the next five years, or a ‘ total of $225,000.00. The contract also provided for an ° Behimer’ s then salary from The Texas Company’ was s $10, 000. 00 a year (¥, 1997). ° 15 - advance to Behimer of $25,000.00 as.a loan against his first five years’ bonus (1, 274). Thus, although Mr. reeoenea had protested against*a bonus of $25,000.00 in ‘‘spot cash,’ Universal paid the bonus cloaked as o/ loan repayable over a period. of five years. Of course, the latter arrangement _ Wad the advantage of helping. to insure Behimer *s alle- — ‘giance for at least that period of time. Behimer did not return to Port Arthur, but, at Dubbs’ $ | suggestion, ‘notified The Texas Company by mail that hie was resigning, - cand left for Ca lifornia, instructing his parents to tell no one where. he Was (I, 296-7). In Los ‘Angeles, Behimer stayed for approximately three weeks with Dubbs, Olsen, Kerr, Hall, and Murray (1, 298) ,—all ‘agents’ or attorneys of Universal. Kerr registered’ for the ~ entire group -under an assumed name as ‘‘MeWade and . party’’ (I, -181). , Murray téstified that on the train to California, Dubbs told: him that ‘now certainly they could get at the facts’’ (1,180). Murray. also’ testifie d that while in California he- looked at various -records with Behimer and. Dubbs (1, 181)... yen * During ‘this period The Texas. Conpany. was searching . in vain for Behimer (L, 208-9). - In the middle_ofSeptember, Behimer a ube re- Ra turned to Chicago and set-up quarters in Dubbs’s home in Wilmette, Here for three weeks: they collaborated (1, 314, 406) in preparing a 95-page affidavit regarding ce Behimer’ s. early work, together with numerous drawings of the apparatus dev eloped by him. On September 28th, “ they were joined by Bevt, Behimer’ s confidential assistant at The Texas Company, who, at that date, executed a ten- - year employment contract with Universal (DX. 237, V, | 9341), Beyt testified that he bronght with-him a batch of 16 ° papers,* including copies, which he. had made, of the. Behimer reecrds (1, 357-8). ° , - Behimer’ s affidavit for Univ reveal was signed on October 5, 1927 (1, 335).. Behimer testified (1, 318) that. this affi- davit ‘‘only recites the more adverse side of. it, [his early — work], and the favorable part is just not stressed. in Nae That this affidavit is inconsistent with the actual facts and with the facts that Behimer,.would have testified to had he remained in The Texas Company’s employ, appears from - a comparison of the Univorsal affidavit (I, 315-7, 319, 321-2, 341-3, 344-5, 346-7) and the statement which Behimer had dictated for The Texas Company wars same summer (I, 312-4, 320, 345-6). 5 : The pernicious effect of Behimer’s change of. allegiance and of the affidavit which he signed for his new employer, is illustrated by events that followed. The Texas Com- pany had found it necessary to file an amended preliminery statement in Interference No. 55,610, between Dubbs and _ Behimer, and, accordingly; on October 6, 1927, presented such an amended statement (DX. 197, ‘I, 206) te Behimer | and requested his signature. Be shimer testified (I, 300) that he. Submitted this document to Universal's attorneys for’ their approval. He did not sign it, and after holding it until . - March 27, 1928, Behimer definitely declined to sign, stating in a letter to The Texas Company (DX. 196, I, 203): co * -° T would not now execute a preliminary state- ment alleging the date of reduction of the invention to practice as it appears in both the original and amended ‘statements, since’I am now of the opinion that the operation on which this date was based did riot consti- tute a legal reduction of the int ‘ention to practice. val _* The lower court declined to require the production of there papers. on the ground that they were immaterial (1, 259 to. 26°. 367 to 375). 17 } Behimer. testified that this letter was composed by Uni- _ versal’s counsel after he had been told by them that his early work was not a reduction to practice (If 301, 304). He admitted that he signed the letter, although he had per- -sonully ‘‘always been convinced’’ that the jet putnp worked in his original experiment (1, 306). In the meantime, on November 16, 1927, Behimer had received his advance of $25,000.00 from Universal and had signed notes for its repayment. The substance of the docu- ments then executed (DXs. 232, 233, I, 274-280) was that — if Behimer should remain in Universal’s employ for the next five vears, or die, or become incapacitated, the notes would be cancelled, but if he severed his connection with the company, his right to future bonuses ended, and he be- came personally-liable for the unpaid notes. By such un- scrupulous means Universal insured ee allegiance. ; In 1936, Hiram J. Halle, Universal’s- president, in" _advertently disclosed’ his real motive in hiring Behimer. He volunteered the remark, while in conference with one Ringolsky, a Kansas City attorney, and his. client, one ‘Danciger, that he, Halie, ‘‘stote ‘Behimer > from. Dear- born (patent counsel for Texas) and: that ‘if Dearborn thinks that he will ever take his deposition or cross-exam- ‘ - ine him, he is mistaken”’ (1, 87, 101)... When Ringolsky’ s testimony as to stealing Behimer was read to Halle, -the latter stated that with certain inimaterial exceptions, Ringolsky ‘s testimony was ‘‘coriect’’ (1, 382). The accuracy of Halle’s characterization of the hiring of _ Behimer is reflected by an occurrence in Mareh, 1937. “At ~ this time, Dearborn approached Behimer for the purpose of eliciting his cooperation in pending litigation involving the Behimer patent in the Tenth Circuit. Behimer told®, Dearborn that his, Behimer’ s, retainer to Universal would .. ima court of equity. 18 ‘not expire until January, 1938, and: that in the ‘meantitne Behimer would prefer not to discuss his early work: with The Texas Company, because, as he said,“‘I would prefer not to be on both sides of the case’’ (1, 308). From August™3, 1927, until December, 1937, The Texas Company, the assignee of the entire right, title, and inter- ~~est to the Behimer inventions, _held no conference with the inventor (I, 308) and by the time that Behimer again became available, when: he felt that ‘on the expiration of his Universal contract he would no longer be on both sides — of the fence, the Dubbs patent had less than one year to run. Petitioner’s unclean hands with respect to the equity here asserted has been such that iti is not entitled to any relief \ \ THE NATURE OF THE CRACKING PROCESS AND THE STATE OF. THE ' COMMERCIAL ART PRIOR TO DUBBS. | ‘Temperature and Time Produce Cracking.—Cracking ‘is a chemical reaction wherein heavier hydrocarbons are decomposed or'.cracked inte lighter material upon. being subjected to a sufficient temperature for a sufficient period of time. Both factors are equally necessary.’ Of the rela- tion of temperature to time, H. V. Smith,* called as a wit- ness hy respondent; testified as.follows (III, 1060-1061) : “*A. Cracking being a chemiga! reaction itis not -brought about by the application of temperature alone. Temperature nest be applied for a period of time in order. to bring’ about substantial cracking. We might make an analogy to this in the operation of _ baking a loaf of bread. -We do ‘not create a loaf of * At the time he testified. Mr. Sniith was Chief henbaal ary neer for the Barber Asphalt Corporation. He had been actively engaged in the buisiness of refining oil sinée -1924, both as a prac: tical worker and as a designer and superintendent of cracking’ equipment (IIT, 1056-7). z bread out of raised dough simply by heating the. dough — to a baking temperature, we have to put the dough - in the oven and heat it up and then keep it there for a period of“time in order to make a finished loaf of bread. * * * In the same way, crackitig is aecom- plished \ applying a cracking temperature to tie oil for a period of time and, of course, the longer we: apply any particular cracking temperature to a par- ticular oil the more cracking we get. * * * The higher or greater the temperature used the faster the rate at which cracking progresses. * * * These facts have led to what has become known as the doubling rule whiclr states that the rate of cracking doubles for _ an increase in “eset of ‘sSpproximately 20° de- grees Fahrenheit.’’ The cracking aaa as well known .long prior to. Dubbs’s entry into the field. In thee earliest” cracking. processes, kerosene was the desired product because of its _ extensive ‘commercial use before the advent of electric _dighting. Neither patent in suit is limited to cracking for . gasoline. Neither even mentions the word ‘‘gasoline’’. The claims of both read equally on a process for cracking |. to make kerosene or gasoline. _Hence, prior art directed to ~-eracking to make kerosene is just. as pertinent as pr ior art directed to cracking for gasoline. The Carbon Problem in Cracking.—The principal prob- lem in commercial oil cracking results from the for mation of carbon or coke. - Carbon forms when the heavy carbon. aceous constituents of -the. oil are broken down by eracking and are no longer soluble in the main “ody of oil. In this condition they stick to whatever surface Phey contact, and on heated surfaces they build up a solid lay er which acts as an insulator against passage of heat into. the oil. with consequent overheating of the metal. Many disastrous ex- ’ plosions and fires have resulted from coke deposition on heated shells and tubes. a ee ae These heavy carbonaceous constituents are - black in color and nonvolatile. Hence, their presence in an oil may * -be recognized by the dark or black color, as inmost crude oils and all cracked residues. “They may be removed from an oil most: readily -by distillation, whereby the distillate, as gas oil‘or kerosene, is reeovered.as an overhead product, free fram_these. -pernicions- materials” -which remain as residue. Oils which contain these heavy constituents are classed broadly as dirty stocks, and those from which they - Mav e been. remov ed as clean stocks. * , Very little cracking of a dirty stock may take place he. ‘ fore carbon begins to form and deposit (Smith, ITI, 1064). W hen a clean stock is cracked, lighter produets predomi- nate, but heavier products also are formed. These heavier products “in turn erack and form both lighter and heavier . products, and. this, continued long enough, will eventually. produce’ heavy carbonaceous constituents whose further cracking forms éarbon. Thus a clean stock may be ‘cracked _ so as to-produce a substantial vield’ of gasoline without producing any, appreciable. amount. of ‘carbon, by stopping the cracking at the. proper stage of degradation’ of the he ‘avier products’ (Smith, ITT, 1064). Respondent? & process ‘avoids carbon formation in this way. : \ ; / The Dubbs patent is directed to a different solution ‘of the carbon problem. Almost all cracking processes, both prior and subsequent, to Dubbs, dealt, and deal, in some way or another, with this problem. . Commercial Processes Prior to Dubbs: — distin and Coil Cracking, Processes, and How They Met the Carbon . Problem.—In the once widely-used Burton gasoline making process of the, Standard of Indiana, ‘a clean gas.oil charge. was heated and ¢racked in a large drum set directly over a furnace and the eyele was limited to forty-eight hours, half of which was productive. ‘Each run was terminated when approximately. 50% of the charge had been converted into pressure distillate. Experience showed that if a higher ~ yield was attempted, the oil under treatment began to de- . posit carbon in such quantities as to make the ‘operation highly dangerous _ (I, ee process was a: ~ batch: operation. : — Coil cracking processes were likewi ise limited mn the use of a clean stock and a restricted amount of cracking, but weré continuous rather than batch: operations. In The ~ ——Texas Company’s gasoline making process, carried on at . Bayonne, New Jersey, in 1916-17, the clean kerosene stock was continuously pumped through the coil, wherein it was heated ‘and cracked and largely vaporized, and was then passed to a vapor separator from the bottom of which the residue was withdrawn and not returned to the system, and from the ‘top of which vapors were taken to.a frac- tional condenser -arid thence to.a final condenser. The operation was of the ‘‘once- through”? type; reflux con- -densate was not recycled to the coil inlet during the run (II, 846-56). This process was Successful and the result- ing product was sold commercially. The too high cost. of operation did not make the process inoperable. These. prior art commercial cracking, processes had this in common,—they cracked. the oil in the same part of ‘the apparatus in-which all the cracking: heat. was. imparted; and, therefore, they were restricted to the use of a clean charging stock, and the cracking operation had to be stopped short of the point of dangerous carbon formation. Residue Withdrawal and Its Non-Return to the System _. Was Old Long Prior to Dubbs.—In both batch drum erack- ing and continuous coil cracking operations to make gaso- line, it was well-understood in the art, long prior to Dubbs, that the dirty residue formed in the “cracking operation could not be used as a charging stock:* “Tn the Burton . process, the residue remaining in the drum after the still was shut down was removed and distilled, ‘and only the -clean distillate stock was used as a chargé to subsequent ” operations (I, 494-5). : ‘ »- In the coil cracking processes, as at Bay onne, New Jer- sey, the residue was withdrawn and not returned to the- coil inlet, either duriyg the run or in subsequent runs (II, 849). The residue was distilled and onty the clean distillate was . used in subsequent operations as a charging stock (Ii, 849-50); Residue withdrawal and its non-return to the system ', Was not new when Dubbs entered the field. Dubbs could not, and did net, ebtain a patent on the step of not re: * eycling the. residue as the ‘‘vitalizing feature’? (Um. Br. ~ pp. 19-22) of its claims. - This step was fully taught to the grt at least as early as the British Benton patent No. ‘1922 of 1887 (VII, 3527). It is also disclosed in prior art patents te) Pielsticker, Hall, Ellis, Alexander and Green- street, hereinafter discussed (post, pp. 61- 75), and in Man- ley No. 1,428,338 VIL, 3382, pat. p. 1, lines 40-1) the applica- tion for whick was filed on October. 10, 1917. In* disregard’ of this prior art, the Royal Duteh Shell and ‘the Standard Oil'C ompany of California reeycled resi- _ due in their operations. This fact i is, undoubtedly, accounted - ©The Trumble process recirculated part of the residue, but it was ot used commercially as a gasoline making process. It was used ‘as a viscosity breaker, i. ¢.,'a process whereby a light crack is given the heavy crude oil so as to thin it out and. make it available as fuel oil (J, 532-4). Notwithstanding. this now admitted. fact, - Universal persuaded the Third Cireuit ‘Court of Appeals in Skelly ' Ou Company v. Universal Qi Products Company (31 F. (2d) 427), that Trumble was a epee: making process with seventeen day runs on stream. ; ; 7) _ 4o% by, the fact. that none of ‘the big oll yefining companies: paid any attention to what went on.in the Patent Office. The ~~ Texas Company searched three years for ‘a hot oil pump when the very one which it finally adopted i in 1921 had been - disclosed in the Thompson patent which issued in 1917. The Standard Oil Company of California did not know of the - Dubbs patent in suit until 1924—three years after it had issued—and even then the discovery was accidental. Hanna, Vice President of that company, discovered the existence of the Dubbs patent in suit only when making a validity search of the prior art as to another later issued, Dubbs patent in which he was interested (see Universal’s Brief, pp. 34-6). While ‘‘cleanliness is next to godliness’? may have been a personal revelation to Hanna in 1924, it was an old story in both the paterit and commercial - long prior to 1919, and by 1924 ‘‘clean cireulatien’® com- | _ mercial operations had been extensively, practiced by The ‘Texas Company. at. Port Arthur during the three eas years. Daniel Pyzel, in charge of iS of cracking proc- esses for thé Royal Dutch Shell, professed (I, 510) to have been greatly astonished and impressed with the residue withdrawal and non- return feature of the Dubbs operation. at Independence. If genuine, this surprise was due to the fact that he had not investigated the patent. art and knew ° nothing of The Texas Company’ s commercial operations at Bayonne. ° Fractionation and Refuxing Were Practiced in “Commer- cial Processes Prior to Dubbs.—Fractionation, or dephleg- mation, of the vapors - resulting from the cracking reaction, and: refluxing the insufficiently cracked por- tion of the vapors, were commonly practiced in : . s* 28 ment substantially free from carbon,”’ this being what peti- tioner calls the ‘‘clean circulation”’ step. - The object which specifies Dubbs's solution of the carbon problem is as follows; ; ; - «fe © © to provide a procéss which permits of the apparatus being operated for an extended period with- out the necessity of cleaning and in which that part of the system. containing the precipitated carbon, is free from subjection to any excessive heat; * * °”’ The part of the system which is ‘‘free from subjection to any. excessive heat’’ is, of course, the insulated or. lightly, fired C tubes i in which carbon, formed as the result of crack- © ing therein is ‘* precipitated,’ ’* without-harm or danger. The Dubbs Patent Teaches and Claims a Liquid Phase Two- Step Cracking Process.—Opposite this page we repro- duce Defendant’s Exhibit 773 (VI, 2805), which is a sim- »plified isometric drawing of the: Dubbs patent.* The, Dubbs patent, in common. with many other patents dealing with. the processes of cracking petroleum, is directed to a so- lution of the carbon problem. ‘The specification teaches ° an operation where’ the oil is raised to a cracking tem- perature in the B tubes, where cracking is initiated, and is then transferred to the larger C tubes, which are either insulated or lightly fired for the purpose of main- taining the temperature of the oil and allowing it sufficient time in which to crack (Smith, III, 1073-5). * Petitioner's drawing (Plate III, Supplement) omits the supply ; tank I described, in Dubbs’s specification and disclosed in his draw- “ing. This supply tank. is provided -as an alternate. method for aa! returning, reflux to the B-tubes. ‘In this tank, the reflux’ is mixed with the fresh charge and the mixture is pumped to the inlet of - these tubes. Petitioner’s drawing also omits: the furnace whict: - Dubbs shows under the C tubes, whereby, in, accordance witii Dubbs’s specification (pat. p.-1, line 99, VIT,- 3089), these tubes may be mildiy heated. BS PATENT NO. 1,392,629 - SERIAL NO. 283,675 led MARCH 19, 1919 - Issued OCTOBER 4, 1921 _ The fact that the cracking operation is substantially con- fined to the insulated or lightly fired C tubes, through which the cracking heat is not imparted to the oil, makes it pos- sible in the process to deposit carbon in these tubes without — | danger. This was Dubbs’s departure from the prior-art - practice of heating and crackitig in the same part of. the— apparatus. In commercial operations of ‘‘The Dubbs Process,’’ a large, unheated reaction chamber (40 feet high © _ and 10 feet in diameter), or a plurality of such chambers, ‘ was substituted for the C: tubes, and the end of the run was reached when these” chambers became filled with coke or carbon (1I, 609- 10). "Reapondent? s witness, Howard V. Smith, aptly com- pared this method of imparting: cracking ‘heat in one step‘and maintaining it to cause eracking i in a second: step, to the ‘‘fireless cooker’’ principle (III, 1074). The mild ~ heat supplied to Dubbs’s C tubes is the equivaleitt of the hot plates used to maintain the temperature in a ‘‘fireless _ cooker.’’ rive While ‘the specification of the Dubbs patent does not State in so many words where cracking ‘occurs in his sys- tem, nevertheless to. a man skilled in the art as of the time that Dubbs entered the field, who was fully familiar, as we have. shown, with the effect of temperature and time in cracking, with the use and effect, of superafmospheric * pressure in oil cracking processes, and with the causes of vaporization therein, the teaching is explicit enough - (Smith, ITT, 1080-4). ‘The B and (tubes are in open communication, and are, therefore, maintained under the same pressure which is stated to be (pat. p. 2, lines 55-6, VII, 30) ‘‘approximately 100 Ibs. to the square inch.’’ ‘In the B tubes, the cracking .. | ee a 30 heat is imparted: The patent says ( p. i, line 8, Vil, _ that “5. a paEre the time they [the piscine are passing through-said tubes {B tubes], they are subjected to sufficient heat to cause the desired amount of cracking ”° °” and that (p. 1,/ine 108) : “oe a The per cent. of vapors ‘generated from — the oil asit passes through the tubes C will depend on ‘ the amount of heat acquired by said oil while passing _ through the 4” coils.’’. | The District Court carefully pointed out (VI, 3048) that the first- quoted passage ‘‘does not say the desired amount -of cracking. occurs in the B: tubes’ and concluded that ‘from the whole patent it is clear that what he [Dubbs] is attempting is to impart to the oil in the B tubes the heat -. that will cause it to crack in the-C tubes.”’ In the second passage above quoted, ‘‘vapors gener- ated from the oil’’ in the large, ten-inch C tubes result entirély from the cracking operation carried on therein (Smith, ITl, 1080), The ‘per , cent”’ referred to in the clause ‘*The per cent. of vapors generated from the oil as it : passes through the tubes C’” ete., is plainly the ratio of the- vapors generated in the C tubes to the unv aporized oil in those tubes. . : The reason thal vepedinniion in the C tubes noni wholly from cracking is as follows: Vaporization of a liquid’ © results Zrom (1) an increase in temperature, (2) a decrease in pressure, or (3 ya change i in the molecular composition of the liquid whereby lighter materials are formed or added,—and, of -course, ‘from a combination of any, or all, of these three factors (IIT, 1681). In the Dubbs patent (1) * Solids also vaporize (¢. g., camphor), but with this phenome- non, called ‘‘sublimation,”’ the-oil cracking at? is ‘not concerned. ~ 31 the oil is at ‘ts highest temperature. at the exit from the B - tubes and upon its entrance into the C tubes; (2) there. is no _reduction of pressure in the C tubes over that which obtains - in.the B tubes; (3) no heat for the purpose of raising the témperature of the oi! in the C tubes is imparted to these tubes. Therefore, eliminating decrease in pres- sure or increase in temperature as thie cause of. the | _“vaporization’’ or ‘‘vapors generated”’ in the C tubes, it necessarily follows that this vaporization must be due en- tirely to the only remaining possible cause, viz., the forma- _ tion, as the result of cracking, of lower boiling materials, which, at. the temperature maintained in thé C tubes, will vaporize in spite of the pressure obtaining therein (III, 1081), To the man skilled in the arf, this is a clear teach-_ ing of cracking in the C tubes (Smith IIT, 1083-4). All conditions necessary to cracking are maintained in _ the C tubes. They are larger in diameter than the B tubes and, therefore, although only half fall, hold more oil. - ' Dubbs’s patent drawing indicates that the.C tubes have six. - times the volumetric capacity of the B tubes which in itself teaches that the oil is to remain in the C tubes ‘a -much_ longer time than in the B tubes. If the C tubes were in- iended, as.petitioner suggests (Br. pp. 79-80), merely to effect *‘separation”’ of liquid from vapor, one tube only, . instead of the. four shown. in the patent, would, on peti- tioner’ s expert’s a adpiissicn (II, 750-1), be sufficient for this purpose. In the latger ( tubes the velocity of the stream is necessarily slower than in the smaller B tubes, thereby . permitting the oil to remain in the C tubes for a sufficient time to be cracked (ITT, 1092). As the oil, is at a. cracking temperature from the time it enters the C tubes until the time it leaves, cracking occurs throughout their length 1 ¢Sinith; THE, 1092-3: Brewn,-II,.750- 4)... On the other hand, ie ee Yen, ~ in the B tubes the oil reaches its highest temperature oniy at their outlet. . The patent specification i is wholly silent as to the physical state of the oil in the B tnbes. Whether or not vapors are present as “foam” or.in any other form is not stated, but ‘the contrary is implied, for‘the stream in those ‘tubes is referred to as oil, and oil is normally a liquid. Uni- versal’s description (Br. p. 18 and elsewhere) of ‘vapors generated but not separated in the B' tubes is not taken from the patent. The patent does not montion what per cent of the erack- ing may occur in the B tubes, but the limitation in the claims, requiring that the oil in these tubes be raised to a cracking femperature but without ‘‘substantial vaporiza- tion,’? puts a limit upon the cracking which may occur therein, even though ‘the pressure should be considerably . increased above the ‘‘approximately 100 Ibs. to the square — inch”’ given jn the specification. Of the relative proportion ' 6f cracking in the B and C tubes, and of the necessity for cracking in the ( tubes to cause vaporization, H. V. Smith testified as follows (III, 1091-2) : ‘‘A. Taking the pressure given in the illustrative run of approximately 100 pounds, very little of the __ eracking could take place in the B tubes without bring- ing about substantial vaporization, so that under those — conditions substantially all of the cracking would have to take place in the C tubes. ‘*By the use of higher pressure, however, one could increase the proportion of cracking which would take | - place in the B tubes. - But in any event a very sub- - stantial proportion of the cracking must take place i in the C tubes because this cycle of vaporization; reflux — condensation, and reflux return, which is an important part of this patent, requires that vapors be formed, that is that we must have vaporization in order to ey . 33 make the vapors for. completing the cycle, and since that vaporization is reserved to the C:tubes we must have enough cracking in the C tubes to accomplish -the ‘vaporization for carrying on the process. Therefore, in any event we must bave a large part of the cracking taking place in the C tubes. - “You could not within the Dubbs patent specifica- tion, as I have interpreted it, do substantially all the ‘cracking in the B tubes and substantially none in the _ © tubes, without. departing from the principles of the — Dubbs invention for the reason that I just stated.*’ Whatever cracking occurs in the B tubes i is substantialiy in the liquid phase (Smith, ITT, 1091), and the cracking which occurs in the C tubes is likewise inthe liquid -phase because the vapors resulting from cracking leave these tubes through the vapor pipes D substantially as soon as _ they are formed and are not subjected to the cracking temperature for a sufficient time tv be cracked _— Ill, 1091). | e Petitioner has always contended, and the Third Cireuit courts held, that the words “B are the cracking -tubes’’ occurring in the Dubbs patent (jp. 1, line 52) indicate that the major part of the cracking occurs in these tubes, and hence that‘ substantial ‘‘ gengration ‘of vapors’” occurs therein. The Seventh Circuit \¢ourts were not misled by* petitioner’s construction of this\nomciuelature. , Respondent’s expert witness, H. V. Smith, pointed out, on direct examination, that (III, 1099): . “* © © Bare the cracking tubes because in B the cracking heat is. imparted to the oil and the cracking is initiated. That is what he ee means by ‘B are the cracking tubes.’ ’’ And on salinities he said ( ITI, 1163): ‘*A. T think a wian skilled in.the art, reading fhis _ patent, would understand that use of the name ‘crack- 34.0 a ing tubes’ to mean just what I have explained it to mean, namely, the tubes in which the cracking heat is applied tg the oil and the cracking is initiated, be-. _ cause he would read the patent asa whole.”” ~ ,, From this testimony it is clear that petitioner is in error - in stating (footnote Br., p. 74) that respondent argues that . the designation of . the B tubes as ‘cracking tubes’’ isa ‘‘misnomer.’? However, that Dubbs intended no. expecial . significance by. this dekxignation is apparent from the fact that his specification alXo twice refers to the B tubes as_ “ ‘ —— Ming = SS : - : SG uel uc s | : . 4 . —— - | SSS ee a : : Total Liquid Producte ea | 95.5 ; ; . | =F | ake teres Y Gas and Lose (by difference) 190. 4.5 | c OSSRE reer see a , A . ' ; = : = | "ay °F = Degrees Fahrenheit ---+------.. P 2 - ; Yi = Pounds per Square Inch Gauge gor > yf #/D = Pounds per . eit tn tide elimina Ripts YY |B/D = Barrels at 60° F per ~» F 7 Mee z Y) *aAPI = Degrees API Gravity at 60° F ? { = Uj, siesiee ee aM ge =” I » . ag] : ; : 4 “y a 4o5* F, —. ee a om Reduced Crude Charged 911 B/D easy 5.8° aPl 3 | 890° F. yah 105 B/D Gasoline 20 B/D P.D; Bot tome ot ia ‘| 120 B/D Gae Of%1 eee 6000 #/D Gas Produéed in : 25a _ Vapor Separator by Bois. ve POTN IO Ip He EN am, — . iia NT ACNE MY SNR iar we: — A, ARP essere, High Pressure Ps ie Furnace . \ : 1 La ' 206. Tubes - ee al : a z ID by. 4" OD. ia SRI anaes 27'-0" long | ; Foam ; q yo ° 1.9% a. ; 64,4 f oe ? >. S ~ P 4/ : an t _ . ™ is . ~ : . - ; ~~ ’ ~~ 4é ™ a> 660 Sas . i \ S . iw ° f > ‘/ P , . . f-; . ~ NN ~ ~ 7 é 500¢ --940° F. 85% by weight... v r _ 95% of Space Occupied 7 5 B/D Gacoline 5 " | ) ene fg : (seg of Total) : 7 910° F. : : may. stented 3 7 10% by weight 3 ms Total Ch 30% of Space ; | ee Occupied by Vapor | in Total’ cr 6940 B/D 123.1° ar “ | >, { : saptaaeaeee g Ef ar eee - f \ 9a os re = P 4 ee ee ae ee cl . i - . . » P ‘ 7 Se ee oe ee eee & - . © -- =| = = ee ~~, o* ’ 595°F. —= =) # Cs /_— eee are Distillate + Gasoline — Gee O11 160. B/D 22.2° aPI ¢ e Xv P. : 37 steps of vapor generation and vapor liberation.’’ Smith testified without any qualification whatever (III, 1065) that ‘‘ vaporization?’ denotes the change of state from _ liquid to yapor.: He admitted the obvious fact that in some instances where vaporization’ occurs there is also — of separation of vapors from the body of liquid, but he made it clear that in such cases the word applied only to — the change of state (III, 1071). et 4 . RESP« INDENT’ 8 OPERATION. Ciibeitie this page, we reproduce Defendant's Exhibit 774A showing the respondent's operation-in isometric sim- plified form. _ Starting with pump 4 chown at the bottom of the draw- ing, a clean gas oil charging stock is fed to thé cracking coils set in the furnace shown at the lower left-hand corner | of the drawing and marked off with e red line. The furnace is carefully designed to provide even heating (Smith; Li, 1121-2) and in the furnace coils the oil is raised to high. cracking temperatures and is cracked and very substan- tially vaporized to the extent-of 85% by weight aud 95% _ by volume (III, 1420). The oil enters the furnace at a tem- perature of about 590° and leaves at a temperature of 940°. All of the gasoline produced from the material charged to the cracking coil is made in that coil (Smith, IIT, 1126). _ On leaving the furnace, the oil passes through the valve B-where pressure is reduced from 500 pounds in the coil to 26° pounds ih the vapor separator. This. is an inten- | tionally abrupt drop, obtained by the. use of thepressure reduction valve marked B; itis not a gradual reduction due te irictional resistance. — i ms Just ‘prior to entering’ the separator, the highly 58 heated stream f rom the high pressure furnace is cooled so as ‘to stop the cracking (a) by the reduction in pressure, and (b) by the introduction of a cooler. stream of topped erudé from the low pressure furnace (ITI, 1127). From the bottom of the separator, residue is continu ) ously withdrawn and not returned to the system. From the. top of the separator, the vapors af the cracked stream. from the high temperature furnace and those formed by + distillation-of the toppéd crude from the low pressure fur- nace, pass off into the bubble tower. There, a further _ separation is made between the vapors of the desired prod- uct, which pass off from the top of the bubble tower and into a condenser, and the vapors of the fresh gas oil and . the insufficiently cracked- materjal, which are condensed and returned to the pump A, thus completing the cycle. The red line shown on the drawing indicates the division of the operation into the heating,. cracking, and vaporiz- ing step, which occurs in the high pressure furnace, and thé > distillation and fractionating steps, which occur in the re: -mainder of the apparatus. In the high pressure furnace, the oil is heated to a high te mpe rature, cracked. with a short time factor, and substantially vaporized; beyond the pressure regulating valve B, the cracking operation is stopped by cooling, and the only cracking which occurs in the separator (amounting merely to 24% of the topped crude charged) is that slight cracking of the topped crude which is incidental to its distillation (Smith, ITI, 1128-9). Only enough liquid is kept in the separator to effect a liquid seal. At the end of a long run only a few wheelbar- rowfuls of-carbon are found in the separator (Smith, Ill, .1130). Like the prior coil cracking. art, and unlike ‘Dubbs’s _ « 59 pes process, the respondent applies botli the cracking heat and the cracking timé to the oil in the same part of the appa- ratus (the coil), and reduces pressure and checks the crack- ing operation beyond the pressure reduction valve, so that practically no cracking ocenrs in the vapor separator. ‘Also, like all the continuous prior art cracking processes, respondent withdraws residue continuously during the run. _ Like all cracking processes of the prior art, (except Behimer’s),,and unlike the process of the Dubbs: patent, respondent's process is limited to the use of a clean stock . ‘as charge material to the coil, and to the necessity of limit- ing the cracking operation in the directly- fired coil to that point short of which carbon would begin to deposit on the highly lieated metal (Smith, IT, 1126). Unlike the process de fined in the claims in sutt of the Dubbs patent, there is very snbstantial vaporization of the ou in respondent's cracking coil. | . _ Like the process of the Dubbs patent, respondent: returns - reflux to the-coil inlet, a step, however, which is-disclosed in the prior patent art (post, pp. 61-77), and which-in re spond. ent’s process, has solely the functions and benefits which it: had in that prior art, namely, conservation of the contained heat of the reflux. In respondent's operation this step does . not have the distinctive function that it has in the Dubbs patent, for respondent deliberately cools the stream enter- ing the vapor separator to stop the crackin: reac tion. The product made in respondent’ s process is the typieal unsaturated, off-color, strong-smelling, hard-to-treat gas- . oline characteristic of high temperature vapor phase pro- cesses. This product is no longer objectionable, but is to- day at a premium becatise it contains the valuable anti-— knock qualities requisite for use in modetn high compres- sion engives (Reiman, III, 1230; Smith, III, 1135). 60 a" THE PRIOR. PATENT ART DISCLOSES “CLEAN CIRCULATION”. The District Court held against the respondent, and in favor of pétitioner, on the question of whether ‘clean cir- cuiation’’ was disclosed in the prior patent art, and the majority of the Court of Appeals did not pass on the ques-* ‘tion. Judge Lindley, however, concurred in the affirmance of the judgment on the ground that the Dubbs patent.‘‘ was - invalid because the prior art patents showed anticipation” (VII, 3584): Moreover, in the recent Tenth Circuit case of The T exas Company v. Anderson-Prichard Refining Cor. . poration, 122 F. (2d) 829, the Circuit Court of Appeals” held that certain of the same prior art paténts relied on in. the case at/bar disclose the so-called ‘clean ‘circulation”’ | steps in a cracking process. The patent there in suit was - Behimer 1,883,850 (post, p. 77) which, like Dubbs, solved the carbori problem by a two-step cracking process. The Texas Company, like petitioner here, sought to ignore the basic cracking process of the Behimer- patent, and.to secure. ; for its claims an interpretation covering ‘‘clean circulation” . broadly in any type of cracking process. The decision of the Court was that this construction was inadmissiblé , and, - that the claims, if so construed, were invalid in view of the prior patent art. : *.The prior art wilinnin which the Tenth Cireuit Court held were disclosures ‘of “clean circulation” are Piel-. sticker, British" No. 1308 of 1891 (DX. 790, VII, 3531) and —- United States No. 477,153 (DX. 792, VII, 3126), Ellis No. 1,396,999 (DX. 804, VII, 3352) and Halk No. 1,175,910 (DX. 793, VII, 3200). Not-one of these patents was cited against the Dubbs appiic ation during the Patent Office prosecution. ° a oh A - Affirming District Judge Kennedy's decision reported in 32 F Supp. 347. The decision on appeal was handed down after District Judge Holly rendered his Opittion in the, case at bar. 2 2 “ “ ae Se al ee ———— . - i | (1892) - BRITISH PAT. NO. 1308 (4 891) . Fic.. oy )R, REIMAN INTLRPRETED — R US. PAT NO. 477153 61 _ These patents do not teach. Dubbs’s two-step ‘‘fireless cooker” cracking system. and, therefore, only anticipate Dubbs’s claims ‘if, as petitioner contends, they depend -for novelty entirely upon the ‘‘clean cireulation’’ idea. Pielsticker British Patent No. 1308,. and Pielsticker . United States Patent No. 477,153.—These two patenfs may be considered together because their disclosures are sub- stantially the same. The figures shown in the drawings of these patents are not assembled to show a complete ap- - paratus. Accordingly, respondent’s witness, Dr. C. K: — Reiman, prepared an assembled drawing (VI, 2819) which is reproduced opposite this page. Dr. Reiman’s testimony us to these Pielsticker patentx appeats in Volume III, at pages 1207-18 of the Record. _ _ Referring to the drawing, the supply of oil tobe charged to the system is contained in the tank A. From this supply — tank, the charge is introduced by the pump C into the crack- ing tubes D, from whence it is passed ta the retort I. Both. cracking tubes and retort are fired and cracking takes’ place in both.’ From the retort, vapors pass to the de- phlegmator or condensing dome P, from the top of which the ¥apors of the desired product are led off to a final con- denser, and from the bottom of which the condensed vapors of the insufficiently cracked products (réeflux) are’ returned, according to the specifications of both the United States _ and British. patents, either to:the retort I or ta_the oil supply tank A. The return to the tank A is shown by the line carrying the reference letter P’. . wt In both the United States and British patents, residue from the cracking operation is withdrawn through a draw- off line marked N on the drawing and is not returned to the evstem. F MIS PURPOSE SELF EVIDENT Ol, PUMP IS AVAILABLE REFLUX CONDENSING Dome USE OF PUMP FOR THs SATISFACTORY HC ve atisse * ** . . wre cagee ' HEATING AND CRACKING. TUBES ] SEE-CLAm © BRITISH Par. POR REFLUX RETURN. STEAM 4 cCoIL ;- @& _ In the supply tank A, the reflux from the condensing | dome’ P mixes with the fresh charge, the mixture then pass- ing to the cracking tubes D via the pump C. Fhe return of reflux to an oil supply tank is one of the “clean circulation’’ _ alternatives disclosed in the Dubbs patent in suit wherein _the supply tank is designated by the letter L. Petitioner. has omitted from its Plate TIT this alternative teaching of . clean circulation. It should be noted that this method, disclosed in both ‘Pielsticker and Dubbi, of returning reflux to a supply ta presents no mechanical] difficulties whatsoever. No hot Bil pump is. needed, nor is it necessary to elevate the dephlegyator to‘any subalantial height. The reflux simply flows back to the supply tank where it mixes with the fresh ‘charge. From this tank the mixture is pumped into the coil. The British PielSticker patent No. 1308 teaches, in claim: -6, another alternative—that of. returning the. reflux: from the ¢ ondensing dome directly into the heating coil (the other ‘‘clean circulation”’ alternative of the Dubbs patent). This reflux return line is shown on the drawing as a branch of ‘the line P’- leading to and. through the pump. marked ‘*Reflux Pump" on the drawing, and from there to the coil, where thie reflux mingles with the fresh charge. Pielsticker, _ does not disclose this reflux pump, but ‘it is an obvious ex- pedient once a pump capable of handling bet gil became - available (Brown, IT, 718: Reiman, IIT, 1211). ‘Claim 6 of the British. Pielsticker patent is as : follows: (WH, 8534) : Tn. apparatus for the evistinuces distillation. of _ hydrocarbon and other oils and liquids, a dote, con- “necting a retort with the goose neck and condenser, provided inside at its base with an annular cup, in which |the heavier portions | of the oil vapours con- 63 . densed in the dome collect, and from where they can ’ be returned inio the supply tank, or into the heating coil, or into the retort, substantially as described.’’ The Pielsticker patents describe cracking of the hydro: earbon oils in the following terms feel No. 1308, p. 2,. lines 45-49, VII, 3532) : ue This dome may be hint with a number of baffle plates S, which force the vapours to come in contact with the inner surface of the dome P, where the heavier portion of them are caused to condénse and ~~ returning to the more heated surface of the retort, are reduced in gravity and finally distil] over and condense in the condenser. Fe, =% To reduce i in gravity is to dgnck the oil (IIE, 1204). The further statement that when reduced in gravity the oil “‘finally’’ distills over also shows that cracking precedes, and is distinct from, distillation. If mere distillation were intended, as found, by the District Court, the word ‘*fi- nally’’ would be entirely superfluous. The patent also states (p. 3, lines 7-13, VII, 3533): “When it is intended to produce still lighter gravity oils, a valve-K may be placed between thie outlet of the: retort I and the condenser U”’ ete. The production of ‘‘still lighter gravity oils’” likewise teaches cracking (ITT, 1208-9). ‘The corresponding passages in the United States 'Piel- sticker patent No, 477,153 are found on page 2, lines 76-83, and lines 106-117 (VII, 3136). . The function of the dome P is expressly deséribed i in the Pielstic ‘ker patents Qs a condenser. Thus, the British pat- ent says in the frst passage quoted above that the “heavier portion’’ of’ the vapors ‘‘are caused to condense’” by ‘contact with the inner surfaee of the dome P’’ which is, of course, air-cooled (Reiman, ITT, 1209-10). Ue 2 _ Claim 6 of the same patent also describes the function ‘of this dome as a condenser. The claim says that the dome is ‘‘provided inside at. its -base with an annular cup, in which the heavier portions of the oil vapours condensed -in . the dome collect, and from where they can be returned into the supply tank, or into the heating 7 or into the retort, substantially as described.”’ Petitioner conu sided in the lower courts that the crack- ' ing process disclosed in the above quoted passages from ' the Pielsticker patents, “is not a cracking process, but is mere simple distillation. But in a former case* petitioner construed the United States Fielsticker patent as teaching &-cracking process with condensation of the reflux and its returh ‘to the system for further c.acking (DX. 827A, VI, 3013)—a construction which is in agreement with the plain — disclosure of the patent. ; . Opposite this page is reproduced a drawing showing in }- . Figure 1,+ the drawing of Pielsticker’s British and United ". States patents as interpreted by respondent's expert in the - case at bar (DX. 791, VI, 2819), in Figure 2, Wniversal’s in- _terpretation of the. United States: Pielsticker patent in the Warner-Quintan case (DX. 827B, VI, 3015), and in Figure ‘ 2, petitioner's present interpretation of the patent (PX. 837, 1V, 1875). From this drawing, it is apparent that in the Warner-Quinlan case, when Universal was defendant, its construction of Pielsticker agreed ‘with respondent's eee ee 1 —_—_— —— * The Teras Co. ¥. Warrer-Quinlan, Inc. (U.S D.C. for Dis. _ trict of New Jersey, 1927). Warner-Qiinlan, Inc, was a Uni- versal licensee, and Universal, by counsel who also appear for it in the case at bar, successfully defended that case and wrote the “Brief, excerpts from ‘which are here iv evidence (VI, 2997.3015) - t This ‘Figure uses the reference characters of the Pritish patent, and where these are not the same as the U.S. patent, the corre- ‘sponding referencé characters of the U. &: patent are also shown in red. 7 ve % +. AS INTERPRETED. Fic... | (Seren END tom é SLren Np sea . sine DR. “REIMAN | Le Ee olay ee PIELSTICKER U.S. PAT. NO. 477153 (1892) ne es BRITISH PAT. NO.1308 (1891) © oe Olu a “TANK: - STEAM ae rae | re | | | | >> 2S 3. PSOE > SS DADA YS AWA LY SV Da Y sath —— : Conmoenser | 7 | . — i FF: 2OSEO) (Pr . > \ y . . qs: . y , ~ ‘ . as ‘ ‘ ya eo RAN } Liquio On ‘ e.y / «° + , ' , * eASOS LN EN %: 9° Sa ae os pan ; : , \ AN vw AWW A 9 i i an. a “ASE N AQ ~ a. Ne ' ' a ‘ . & BS ASA SS Sw ' ' s oe ASAAN SAN QAY NN wN*A Ce VS e ' ‘ ' he Br ADs Awa h SS NOSAY SN AY Qn tt = = FAR HANEY YS 8 ~\ \) SANSNAA ES Qt 8 Sige 3 ene = on = eek ‘ RS Mecca nae ae SX AAARAAAY SYA RN AAAY SAA Tena end comes . 'y NN) WAS DVO AN S\N aN WWWX ~n“e ces a " RYN DAAAN QO QMO: FY IWS QYHSAA WS QL SOY RSy J ) M2 s—_ OOOO Owmo ws Baan Sonos} SN Mea a a a it Pid — ° * pda oe ae yr ar ma aes Us eee Continuous Jar DiscHarse \o * * Ke 41S. be _ DX-827B U. 8S. Pat. 477153 (Ex. 181; as Interpreted by :- Defendant in Warner~Quinlan Caeé, Plaintiff in: Instant Case) | | Paria, Comocnsce PrecsticKeRr -Der’t Exe. 181. | ee , ws SY kro ; wt Ny ATMOSPHERIC ae a SS — | Heating Con S Ay | ~. La CATING N | S a Emcanceo Varun CHameer : a. | varons 4 \ .Y song ‘ RECO ART AR CHATS TATA AT TATE SH SSSIOSESSS, ASSESS ASSIS SE. 7] —_—— € ‘ Conoenser | ie 5 N's ' bed BSSSSSSES SS vg ds -- ee ad ft OS Bec cc coc ce y Ss \ RAANNS WY \ . 7 BN AANS See Ss ae SG---7-- ~=--aNY ei WYP WME PMHYNLEN RY SSS LMAO s0gQ vey \y ' Ry MAAN WQS LY RS DYAn~e goer Y. . RS J ] ~ S&S) BISOOAO SOS Ni bess SY a: = a Mine oR Os oe Pn , 6 re tort L, and isolated from the sy whan? and that “charging oil and reflux’’” are returned -“‘for recracking’? from ‘the _ supply tank A (VI, 3013).° Thus Universal has previously admitted that Pielsticker discloses the two ‘“elean cireula- ; tion’’ 1”? steps w which it now asserts —— the Dubbs patent. Ellis Patent No. 1,396,999 (DX. 804, VO, jn —Oppo- site this page, we reproduce Figure 3 of the Ellis: pat- ent. "The process of this patent is fully described by Dr.. Reiman’ (ITT, 1243- ea — ; The feed for the .process, which is a distillate stock, is foreed inta the cracking coils 4, 4a, 4b, and te at the point ~ marked 5. Mt this point also, steam may be introduced ats into the charge. The oil is vaporized and cracked in the ~ cracking coils and the effluent from the four cracking coils’ combines i in the pipe 7 and enters the large digester 8, in which : further cracking : ‘is carried ‘on.’.From the digester 8, the hy drocarbons, in vapor form, enter the fractionating device 10 through the dine 9. This fractionating device - - is described i in the patent-as (p. 1, line 104, p. 2, line 2): ei: ier dephlegmator or fractionating column which preferably is of a ty pe used in the rectification - of aleohol and the like in place of the ordinary coarse dephlegmator used in the present day rectification of oil s * ail ge “This shows that the pe ee used is a bubble tower—the most effic ‘ient of all fractionators. All the va- pors entering the bottom of the bubble. tower are cooled. and condensed therein except the gasoline vapors which . are taken off ov erhead. ‘ The ‘bubble tower is ae three petcocks 11, 11a, and ‘11h, from Which three sidestreams of ‘condensate - of dif- fering gray ities are to he withdrawn TI, 1245- 6). * eT oy” 6. ELUIS. | MAKING GASOLENE SUBSTITUTE. © APPLICATION FILED OCT. 4, 1913, © Patented Nov.-15, 1921. 3 SHEETS—SHEET 2. % — AvancscanT or 3 . . oer ; pee ee oe aR bert a i —_—_————— ACTIONAIING COLUMA “je 26 COMDENSER © ] WGoasTor 9 4 a iY | i af —6~ gb —_ = 6° - ; eS ho - | 4 4c e ; 4 ‘ . FOSIVG VUES 1 entor: . e e e * . é ; 5 ° . . . So’ s@ : - ; . es. ; : ; | | . I . " . ad . 7. ‘ * ‘ . ‘ ad . “ * al 4 * 623 ; . ® ren . a io ° . ~ . ° . . Aw : e . . . . . ® + . : ° ‘ . ° ° . . rs . ‘ . . ‘ 4% ; e P . a ' - a . . . . ve: The Texas Company's Behimer process, with a hot oi! © _ pump, used a coil moge than 3000 feet long in commercial operations -(DX. 799, VI, 2829). With this length of coil and using hydrostatic head, the dephlegmator would have - had to be elevated so high as to be impractical ( Behimer, II, 918). Hevee, The Texas Company never attempted to _ use hydrostatic return in commercial operations. Behimer '. testified (11, 937) that to him tlie use of gravity was evi- dent, but that he was interested in positive return by mechanical means. There is not a word in the Dubbs patent we the prob- lem of overcoming frietional resiftance in retubning reflux to a coil inlet, or of solving the problem by elevation of the dephlegmator to the requited height. Dubbs left the solv- ing of this very simple problem entirely to the skill of the reflux and charging stock in Dubbs. ; “EK. Petitioner attributes to Eglott the- disclosure of. the ye of preparing im situ a clean charging stock for a ‘coil. cking operation, by distillation of ‘ a heavy charging oil in the expansion chamber: “Such an idea is completely lacking in Kegloff’s disclosure. It. would serve no pur- pose in Egloff’s process where the streams from both * furnaces “are conmmingled- and. are cracked together in: the expansion chambyr. If given this construction, the . | Egloft patent is invalid because asiticipated by the Green- street patent, and because lacking invention over the Alex- _ ander patent. F. The Egloff salah is invalid for ink of utility and disclosure. In Egloff’s process there is no advantage i in the ie: separate heating of reflux and fresh charge, and he does” not disclose conditions: which would cause: cracking. G. The Egloff patent, if construed to read upon respond- ent’s éperation, is invalid. because it would cover a com- bination of the steps of the prior art which function in that combination no differently than they did in the prior art. :Neither the Greenstreet nor Alexander patent: was cited by the Patent Office against Egloff’s application, and his patent, therefore, dees not gave any seca of : validity ageinat this prior art. -H. The claims of the Egloff patent must be construed in the light of the specification, and when thus construed are - not infringed. The respondent's coil cracking, liquid- vapor phase, process, is not taught by Egloff’s antitheti- ‘eal disclosure of keeping’ the oil in substantially ~ liquid phase in the coils ‘and conducting pressvre distillation, ‘Itquid phase cracking in the chamber. The two processes are fundamentally different. ° ARGUMENT. VE TIT IONER SHOU L. LD BE BARRE DP FROM ALL EQUITABLE RE- LIEF BECAUSE IT IS NOT IN COURT WITH CLEAN H ANDS. At this ine not much can be said about petitioner’s con- duct with respect to the decision of the Third Cireuit Court _of Appeals in the Root case. While it is true that a Special | Master has found that Universal was guilty of corrupting © a former circuit judge in order to obtain a favorable de- cision in that case, it is also true that as of this writing . that matter is in an interlocutory stage, for the Court of Appeals has not yet rendered its opinion on Universal’ s “objections and exceptions.to the Master's Report. It is also true that the record now before this Court does not . contain the facts as to petitioner’s corrupt conduct in the. ' Root case. The investigation in that case Was ordered in November, 1941, and the proofs in the instant Globe case were closed, and the case was submitted to the District . Court, by August, 1940. If the Third Circuit Court of Ap- peals should affirm the Master’s Report and vacate its own. decree in the Root case as having been void ab initio be- cause obtained through bribery ofa judge of the court © which rendered it; then ¥niversal will have no right in any court with respect to the Dubbs and Egloff patents. In the . Globe case in the Seventh Circuit; Universal asserted the ’ Root decree as res judicata and as a precedent—a position _ from whieh it withdrew omy on the suggestion of the f raud y 91 investigation to the Circuit Court of Appeals for the Third Cireuit. \It still asserts the decision as a precedent. . a ‘Universal's earlier corrupt conduct in the ' Dubbs-Béehimer priority contest was discovered in time to adduce the proofs pertaining’ thereto in the record herein. | It would seem clear that the attempt to obtain a false affi- davit from Maurice Beyt, the bribery and attempted brib- — ‘ery of employees of The Texas Company, the making of.a . duplicate set of keys to Behimer’s private fling cabinet, and, finally, the hiring away of Behimer from The Texas Company’s employ by offering to pay him $225,000.00, and then causing him to repudiate his early work as a valid reduction to practice, all as set forth in the Statement ot the Case (ante, pp. 9- 18) constitute such conduct as re- quires, -without more, the dismissal of the petitioner from a éourt of equity under the decision in Keystone Driller Co. v. General Excavqtos Co., 290 U. 8. 240. Petitioner does not controvert the facts. Its excuse in the courts below was that it was only “searching for the truth”’ in bribing The.” Texas Company’s employees and in seeking to pilfer its _~~files, and was merely seeking to add a good chemist to its staff in hiring Behimer. Neither excuse is conv incing or furnishes an¥ extenuation for such conduct. The District Court.refused to dismiss the case because uo one—neither The Texas Company nor respondent—had been injured. ‘This was the very grouncé on which the District’ Court ‘in the Keystone Driller case had refused to dismiss the bill of ~. complaint, and, like ise, tbe very ground on Ww hich it was _ reversed by the C ae of Appeals (62 F. (2d) 48), whose - decision was affirmed by this Court.” This Court has also said, in Morton Salt ‘Co, v. G. S. Suppiger Co., 314 U.S 488, that (p. 494): “Tt is the ady erse effect upon thie a inte ‘rest of \ “a. ~~ * °* * the patentee’s course of conduct, “whieh dis- qualifies him * * * regardless of whether the particular defendant. has suffered *.* *."° The eventual failure of . petitioner's efforts to’ steal ‘its adversary 's blueprints and drawings is also immaterial. As the New Jersey Chancery Court said in 1 Pe ndletot v. Gondolf, 96 Atl. 47, 50: **But complainant! ’s moral turpitude i in the transae- tion was in no way lessened by the misearriage of his ° -plans.”’ ‘ The attempted | justification that petitioner was merely searching for the truth is a casuistical argument of the same kind that was expressly repudiated i in The Stevens- Davis Co. v. Mather & Co., 230 I. App. 45, 124. ‘ ON, a EE _ NON-INFRINGEMENT OF THE DUBBS RATENT. o ent contain the limitation’ ‘inserted by amendment to:obtain allowance after rejection) that the oii, in the.first step, ia, to: be brought to the cracking temperature (in a coil) but with. ont permitting ‘‘substantial vaporization’’ of the oil i in that. \ first step. In respondent’s operation ‘substantial vapor- ization’’ in the corresponding step unquestionably occurs, for 85% by weight of.the liquid oil is converted into vapor, — with the result that 95% by volume of the coil is oceupied — by vapor. The conclusion of noninfringement is, there- fore, ineseapable—and i in fact conceded—anless. ‘* vaporiza- tion’’ in the Dubbs patent means something different to what it has alw avs meant to ev ervone else. - “2 fo o+ ae 93. - As this Court has f1 ‘roquently said, the claim is a a statutory requirement, preseril ibed for the very purpose of making the patentee define precisely what his invention is; and_it is unjust to the public, as well as an evasion of the law, to “construe it in a manner: different from the ‘plain imiport’* . of its terms. White v. Dunbar, 119 U.S. 47, 52; Howe. Ma- chine Company v. National Needle C ompany, 134- U.S. 388, 394; Minerals Separation, Limited et al.v. Butte-& Supérior Mining Company, : 250 U. S. 336, 347. The public should not be deprived of rights supposed to belong to it, without being clearly told what it is that limits these rights. Me r- rill v. Yeomans, 94 U. 8S. 568, 573. | The Seventh’ Circuit courts. were not persuaded that Dubbs made a unique vocabulary in his patent, altering the ‘plain import’’ of the language used. The Third Cir-. cuit courts, swayed by a showing of great commercial. success of Something known as “The Dubbs Cracking — Process’’ conformed the claims to the commercial opera- tions,*and, in effect, read the limitation out of the claims “ by holding that ‘‘vaporization’’ to Dubbs meant “ibera- _tion’’ of vapow from liquid. By this strained construc- “tion, those courts found rng of. ¢ claims limited to “‘without substantial _vaporization”’ ..in Root’s process where 58% by weight, of the oil was vaporized. in the coil. In very limited extenuation of’ the Third ‘Circuit views (and assuming that the decision on appeal was not. cor- . rupt), if should, be said that the defendant's counsel imethe Root case did not offer in evidence, (because they did not” “eiak it necessary ) any proof of the meaning of ‘the: word. raporization.’ >. Such proof was very fully developed in the Seventh Circuit litigation. ° 9. ey rization”’ is a word familiar to every high-school _ boy or air] who has ever ‘studied physies or chemistry. The . 4 rs definitions contained in the Appendix te this Brief show that we are not here dealing with a term of unusual or doubtful meaning. . ‘‘ Vaporization’? means the change of state from liquid to vapor. That change occurs when molecules are freed as vapor, either aja quiescent liquid surface, as in the evaporation of water from ponds or lakes, or inthe bubbles formed ima boiling liquid. Vapori- nation, always signifies the **liberation’’ or “passing off" * of molecules as vapor (Cady, 11, 805-6). In this sense, to convert into vapor is to pass off in vapor. Such molecular liberation, or ** passing off"’ in vapor, occurs Very substan: tially in respondiynt’ s coil. Donbtless for this reason the Seventh Cirenit Court of Appeals said that Globe's opera- ‘tion did not infringe Dubbs "sx clainis (VII, 3583) ‘“whethe T we oe plaintiff's or defendant’ s definition of vaporiza. tion.’ : : In attempting escape from this dilemma, petitioner's expert witness, Dr. George Granger Brown, of Michigan, U hiversity, testified (IIT, 1363-4) that in the Dubbs patent separation of the vapors 4nd their passing off ax from a teakettle, nor does it mean the segregation of vapors from a liquid with the vapors passing on and leaving _the liquid behind, nor does it mean liberation of indi- vidual molecules so as to form bubbles of vapor within . the liquid. It means, just what it says, the liberation wield ‘ie he vaya docs net mean the - Se of vapors or ‘the liberation or freeing of bubbles of LQ. vapor entrained in a liquid phase, so that these bubbles may ‘coalesce to, form a continuous vapor phase.” _ "Dr. Brown expressed the opinion that where *‘vaporiza-_ tion’* is used in the Dubbs patent (once in the specification, and repeatedly in the claims) it has this strange and nar- row meaning. In its Brief before this: Gourt, petitioner has completely repudiated its expert's views, for it says that ‘‘vaporization’’ in Dubbs‘s patent does mean to ; . % “95 ° \ “pass off in vapor."’ If petitioner cannot agree with its own expert witness, whom it summoned to the stand as a man ‘skilled in the art, it is quite evident that, if the accepted meaning of ‘‘ vaporization” be departed from, all certainty ix at an end and the patent is invalid for in- definiteness. e B. The File-Wrapper History of the Dubbs Patent Ex- cludes Petitioner's Meaning for ‘“‘Vaporization.”" We have shown (anfe, pp. 48-52). that the ‘‘vaporization”’ Jimitation in the.claims was inserted after their rejection upon prior art references (Trumble and Edwards) which. disclosed the very ‘‘vaporization’’ in the coil which is also— present ifi responderit’s. coil, and that if ‘*vaporization”’ ‘in Dubbs’s claims 4 and 5 be given petitioner's meaning those claims do not distinguish at all from the references, from which it follows that ‘‘vaperization’’-in all the claims means the same thing®-i. ¢., the formation of vapor from liquid. This file-wrapper history is, in itself, fatal to _ petitioner's theory of infringement. This Court/ held in LT. S. Ribber Company v. Essex Rubber Company, 272. . U.S. 429 (pp. 443-4), that a patentee is *‘estopped to clain: _* * * such a construction of his amended claim as would be equivalept’’ to his rejected claim. If petitioner's ‘argu- ment were adopted this is precisely what would follow. -It is true, as petitioner says (Br. p. 25) that ‘* Through- out the prosecution, emphasis was consistently placed by the applicant upon the cyeling of the reflux condensate free from carbon containing residue,”’ but it is also true that Dubbs never got a patent on that concept. His claims were consistently rejected, and instead of appedling, hergeepted a patent with claims distinguishing from the references on another ground, namely, *‘ without substantial vaporiza- tion’ in the heating step. That the Examiner may have * > \ wr “without. indies :* 96 heen wreng in holding that ‘the references disclosed re- cycling of reflux uncontaminated by residue, is of course immaterial (7.° 7. S. Rubber Company v. Essex’ Rubber Company, 272 U.S. 429). If wrong, Dubbs’s remedy was an appeal. But petitioner cannet now ask this Court to coriect. What petitioner believes (Br, p. 98) to have been tic Examiner’s orror, and, int effect, to grant to Dubbs a _ patent with claims equivalent to those which were refused ~ him by the Patent Ofce. .* 'In Schriber-Schroth v. wigan Trust Co., 311 U. S. 211, this Court pointed eut ‘that (pp. 218, 220-1) ; “It is a rule of patent construction consistently observed that a claim in a patent as allowed must be read and interpreted with reference to claims that have been cancelled or rejected, and the claims allowed - cannot by construction be read to cover what was thus eliminated from the.patent [citing cases |." Dubbs's original claims 1 ‘and 2 specified the. presence ‘in the heating step (in the B tubes) ing whether this ‘generation’? was substan- Substantial (IV, 1515- 6}. These, and all other Clas submitted: prior to the final amendment, were re- » 2 of ‘*generated vapo: tial or is jected and either cancelled | or rewritten. The allowed cpa stem: ed. for the first -time: ‘that the pigeon a the RE claims) was to be hr agelateitied. he But in petitioner * s view (Br. pp. 24: 85-6) there is no more’ limit- placed on. the ‘‘generation’? of vapors in the final, than in the eriginal, claims. Hence, petitioner's argument destroys: the validity of the allowed claims, under the doc- trine of the Schriber-Schroth case, for to petitioner they mean the same aith respect té ““Saporization” in the first. step as the original. claims Ww hich were cancelled. 97. Furthermore, it — be noted’ that if, as petitioner says, ‘vaporization’? in the allowed claims means ‘vapor liberation’’ they are invalid because not supported by any diselosure in the application as filed. The only reference in that disclosure to the physical condition of the oil inv » the B tubes was the mention of ‘‘oil and generated vapors in the two original claims, which, we agree, form part af the original ‘disclosure. But that disclosure did not vive any indication at all as to whether or not. vapors were: liberated, nor did it attempt, to measure the amount of “vapors. ge nerated,’’ in the B tubes. It would certainly not support ¢laims referring to “‘liberated”’ vapors. ‘Neither would it ‘support claims having no “generated vapors** or all “generated vapors,’’ in the first step. But it would support claims mired any given proportion of “oil to ‘generated vapors.’’ — It Joes support claims “limited to ‘without substantial’’ vaporization, provided “vaporization?” means the same thing as ‘‘vapors gener. . ated,?” and the applicant had the right to distinguish from the references suchas Trumble, having. an inidefinite pro- _ portion of cil to generated vapors, by wee his claims . to a prov ess where the ‘vaporization "’ i. ¢., Vapor genera- tion, was insibstantial. C. Dubbs Himself Used ““Waporization”” in Its Accepted ‘Sense.—-It nugst be emphasized that the patentee, Carbon P. Dubbs, although. living and available es a witness, and although in fact called by. petitioner, to testify on its behalf , on the *‘unclean: Jhands”’ issue, was not called to testify as: -to his own inv ention ‘nor to support petitioner's theory as to his use of the word ‘“vapofization”’ in the pat: ent in suit. This was doubtless due to the fact that in another - patent, No. 1,686,654 (VIT, 3468) Dubbs. had used the word in its accepted sense, and that in the file wrapper of that 5 98 other patent (VII, 2976a) he had explained that the formation of vapors’in a coil (a. ©., ‘‘vaporization’: in the accepted sense) causes carbon to form, which, in turn, he thought would cause ‘‘trouble.’’ The use of this other patent is sanctioned hy this Court’s decision in Weber . Electric Co. v. EB. H. Freeman Electric Co., 256 U. S. 668, where'a doubt as to the sense in which Weber had used the ** word ‘telescopic’? in the patent in. suit was resolved by reference to another and subsequently issued patent: to the same patentee. This Court also approved (p. 678):the use by the Conrt of Appeals, for the same purpose, of diction- ary definitions of the word used by the patentee. -D. Petitioner’s Theory of Dubbs’s Claims Renders Them — Invalid for Uncertainty. Petitioner says (Br. p. 25) that - the words ‘‘withont substantial vaporization’ were in- serted “so that the claims would cover only a process a? wherein the B tube condition—no vapor sepatation—was * present, and would exclude the condition which had caused the failure of the vapor phase processes’’’ giving pages 696-7 of the reeord in support of the last statement. Peti- - tloner elsewhere states (Br. pp. 109-110) that this .**10 "vapor separation’? condition is ae thieved, as was: well known in the art, by flowing: the v vapor through the tubes ut a sufficient velocity to keep the oil and vapors mixed up | in the condition ef a foamy mass. ° | Of course if this is what Dubbs had meant, he would net have hidden his meaning in such a phrase as ‘without - ‘substantial vaporization,’ nor would he have merely hinted at it in an obseure way by referring to a high pressure pump (which of course couid be run fast o¥ slow), or to the relative dimensions of the Band € tubes. ‘If he had meant to teach a high velocity and a turbulent flow he could have’ found language just as appropriate as that used by Trumble + . 9 =) ‘ to teach these very things. There is not a word about velocity in the Dubbs patent, and the phrase ‘‘ without sub- stantial vaporization" does not mean ‘with a high veloc- ity.’’ As the District Court said (VI, 3049) © “yf * * *. the number and length of the B tubes -was such as to require forcing the oil there through at high velocity, and this velocity was tiecessary to prevent ' substantial vaporization’ therein, the patent is wholly silent upon these critical factors of the inven- tion.” pls ) » It should be likewise noted that if “without substantial vaporization” means without permitting a condition w here vapors would liberate ‘themselves from a stream of liquid flowing along the bottom of the B tubes, the word ‘“sub-- stantial’? becomer Ine aningless. Vapors ‘liberate’? them- selves in this sense becausesbeing lighter they rise to the top of the liquid. But of course, they must all rise. * An insubstantial number cannot remain behind while a sub: stantial ‘nimber rise and are ‘liberated.’ There is a further insuperable obstacle to peti- tioner’s assertion as to the ‘meaning of the phrase ‘without substantial vaperization.’*- As Howard Smith’ pointed ‘out (IIT, 1094-5) you could -vaporize the oil upto 100% in the - coil without ever reaching a-condi-’ tion where vapors would be ‘‘separated’’ ¢in pe titioner’s sense) from the oil, provided vou used sufficient velocity. But with 100% vapor in Dubbs B tubes, it is at onee apparent that, entirely apart from the crass absurdity of ‘saying that ‘‘without substantial vaporization”? is a con. dition satisfied even if all the oil be \ ‘aporized, there is no longer any distinction between Dubbs and the vapor phase” processes, which of course: causes the collapse of petition- er’s argument that by the limiting amendment Dubbs was . 4 . 100 distinguishing from thése, rather than from mixed phase processes, such as respordent’ s. Therefore petitioner and its expert stopped short of 100% vaporization, and arbitrarily pitched -on 99.9%* vapors in the coil as being within Dubbs’s teachings (III, 1364), and anything beyond that as being outside the reach of the claims—a permissible range of operation fora non-: infringing process of less than one- tenth of one per cent. The supposed justifieation for stopping short at 99.90 Vapor is that up to that point the liquid phase is continy-, ous—the stream is a. ‘foam,’? which is a beneficial Dubbs conditions—whereas beyond that. point the. vapor phase be- comes continuous—the stream becomes a **spray,’’ which is a harmful non-Dubbs condition. This means aed some: Where in the transition trony **foani”’ to ‘spray’ we hav e, in Dr. Brown's, and, we suppose, in Reread s view, the demarcation between the permitted insubstantial, and the —— substantial, *‘vaporization,’’ of the claims. A. ‘foam’? is permitted 3a substantial ‘*spray’’ is prohibited. Again the word-‘*substantial’? becomes meaningless, for how, could anyone tell whether ‘cr not, in the B tubes, a ‘“apray’® has become substantial. rather than. ‘insubstan- tial? Petitioner and its learned expert were undisturbed | by the fact that the Dubbs patent may be searched ‘from: beginning to end for any hint of such teachings. To assert such theories is to proclaim the invalidity of the Dubbs patent.’ All certainty as to the -boundaries of ee eee were ae SERENE eee ee ere * This is ‘calculated from Dr. Brown’s statement (TIT, 1364) that ‘‘liberation’’ ‘df vapors begins “‘whenever the volume of the generated vapor exceeds a certain value times the. volume of the liquid, and that value may be somewhere around 500-or 1000-46 1. regardless of the velocity of, the material — passing through the fur-’ nace tnbes."” 1000 parts vapor in 1001 total —_ vepor and — equals 99.9% vapor. 101 the claims is at once destroyed. (General Electric Co. v. Wabash Appliance C orp.. 304 U.S. 364, 369; United Carbon Co.. V- Binney & Smith Co., 317 U. S. 228, 232, 236. Peti- tionér’s expert, as a man skilled in the art, conceded (II;, 724) that a determination of when a foam*will become a spray involves calculations ; that he did not know ‘whether’ someone could have made those calculations as of 1919”; that he doubted that those skilled in the art in 1919 could ‘predict exactly. ‘where that: break’’ from foam, to spray “would come’*’ without experiment (11, 699); that in. his ‘opinion velocities of: one-half a foot or three-quarters of a foot per second w ould be the minimum to prevent libera: tion or separation of vapors from liquid and that (11, 767 .«* © © at half a foot per second, certamly you are vetting pretty close to it, and I don’t, know ‘exactly where\that will come ‘in, but somewhere at those veloct- ties, *\* ° you may get separation * * *.”’ In Minerals Se paration, Ltd. v. Butte & Superior Mining Company, 250\U. S. 336, this Court said (p. 350): | “To give such a construction to the patent would subordinate the clear description contained in it * *. * to an implied and vague description arid classification which would leave the whole subject again at large, to become a field for further experimentation ede cen A disclosure which may bé folluwed only after experi- mentation is too vague and indefinite to constitute invention. Tyler v. Boston, 74 U. S. 327; Standard Brands, Inc. National Grain Yeast Corp., 308 U. S. 34, 37. ‘As a matter of fact, no experiments have been, or could ‘be, devised to determine, in a closed pipe in a highly heate “d furnace, when turbulence of the stream ‘substantially exists or does not exist, or when a ‘*foam ** breaks into a,Aspray.”” The extreme uncertainty imparted to Dubbs’s daiinn by petitioner’s: interpretation is glaringly: illustrated by the 102 fact that in the Root case (78 F. (2d) 991 at p. 997) ‘peti- tioner’s then expert, Dr. W arren AX. Lewis, testified that : permitted both a and a ‘‘spray,”’ whereas in the Globe case, peti- “without substantial vaporization’ “foam” tioner’s expert said that a ‘*foam’’ was permitted, and a ‘‘spray,’’ prohibited. - When’ two experts, both testifying for the same -client, one from Massachusetts Institute of Technology, and the other fronr Michigan University, can- not agree on what Dubbs meant, it would seem. that no fur- ‘ther proof is needed of the fallacy of their theories. Fur-— thermore, it, now appears that petitioner disagrees with its latest expert on the subject; for Dr. Brown said that’ . i] cas vaporization did not mean toe ‘pass off in vapor’ and petitioner's Briet savs that it does. The conflict in Views between- petitioner’ s experts, and © ; be tween petitioner and its expe rt Brown, in itself proclaims the invalidity: of the Dubbs patent in :petitioner’s interpre- tation therbef. When experts disagree the man, merely skilled in the art, would of course be hopelessly at sea. The uncertainties and ambiguities, which arise only when it effort is made to impose upon Dubbs’s..claims a ‘strained meaning for vaporization, suffice. to make ‘the’ claims invalid under the doctrine of —— Carkon Co. \ Binney & Smith Co., 317 U.S. 228, 23 2, 236. What Judge Coxe termed his cy aa ad Hom- nem” in Bracewell v. Passaic Print Works (C. C. N. Y.),° 107 Fed. 467, 481, is apposite : “Tf the patent be couched in language | perspic uous and distinet, why is it necessary to present 2,000 pages of: record and 390 pages of argument directed almost exclusively fo the task of finding out what the patent means? The most learned chemists in the land differ radically and almost acrimoniously upon every vital 103 point and not infrequently those enlisted ‘upon the same side are not in perfect accord. Were the patent taken bodily from Holy Writ no more antagonistic dogmas and warring theories could be deduced there- from. Where so many accomplished specialists dis- agree, Where so many propositions have been advanced tentatively and withdrawn, where reasons for certain phenomena are conceded to be wholly unknown, the ordinary layman may, perhaps, be pardoned for sug- gesting that a document: which has brought about such a condition. of affairs-is not written in the clear lan- guage which the patent law requires. And .yet the patent, if interpreted according to the ordinary mean- ing.of its language, is plain enough.” , : . &. ‘Petitioner’s Contention That the Word ‘*Vaporiza- tion’’ in Dubbs’s Claims Cannot Have its Accepted Mean- — ing in View of the Temperature and Pressure a | ‘Given in the Illustrative Run.—-Petitioner says“ Brief pp. 72-9) that the limiting clause in Dubbs’s claims,. requiring that the heating step in the B tubes be accomplished ‘‘but — i without substantial vaporization’’ of the oil in the B tubes, must be given some meaning other than the obvious one, because, it says, the illustrative operating data given in the amendment to the specification are such that substan- " tial vaporization, ‘in the accepted meaning of the word “vaporization,” is bound. to oceur in these tubes. When the illustration was added to the ‘specification, the claims - had not yet:been limited by the clause requiring the oil to “bé heatest in the coil “but without substantial vaporiza- tion.” , | Petitioner’s argument is fundamentally unsound. It ' proceeds on the false assemption‘that if a patent specifica- =%| tion does not give conditions within which may be prac- -ticed ‘the invention defined Jy the claims as limited by the | ae \ carrying amendment, then the: lintitation must, in effect, be read-out of the claims so as.to make them conform to — the specification. Such a doctrine would destroy the basic ‘principle of patent law that the claims, and ‘not the specifi- cation, measure the invention. The effect of any claim amendment could be nullified, if the specification were broad: enough to stipport the claims without the amendment. Were it true, as petitioner insists, that Dubbs’s specifi- cation contained no disclosuie of the process of the claims as amended, the only effegt’ would be the total invalidity of * the claims. However, 7 in the case.at bar, if ‘‘vaporization”’ be given i its accepted meaning there is adequate disclosure in the specification for practicing-the process of the claims.’ The — most that can be said is that if the operator rigidly limits . himself to the 100 lbs. pressure (which the patent itself gives as merely approximate), the upper temperature range of the specification is inapplicable, and the operator must stay in the lower part of the range (III, 1088). Therefore, petitioner “must, and does, argue that the claims, although narrowed by ‘amendment, must be broad- ened to fit.the entire temperature range of the unamended specification. This Court has baja that such a thing cannot be done. . In Railroad C ompany Vv. Mellon, 104 U.S. 112, this court said (p. 118) = * “In this case the description of the apoelies’ s inven- tion is much broader than his claim, It seems quite clear from the present form of his specification, and from the fact that his application for a patent was twice rejected, that he was compelled by the Patent Office to narrow his claim to its present limits before the com- missioner would grant him a patent. In doing this he. _ neglected to-amend the descriptive part of his speci- a * 105 applied the doctrine of the Railroad case as follows (p. 471): A xa «se © © Tt is true that in patentee’s application he states that hie object’is to provide a drinking glass of any of the numerous forms generally used, The pres- ence of that broad statement is due to the fact that patentee failed to amend it to ‘consist with the claim which was finally allowed. He cannot go beyond what he has claimed and insist that his patent covers. some- thing not claimed merely because it is to be found in the descriptive part of the specification. Lehigh Valley Railroad Co. v. Mallon, 104 U. S. 112, 26 L. Ed. 639. The claim in the patent is the measure of the inven- tion, and, while the specification maybe referred to to explain aiy ambiguity in the claim, .it cannot be. re- es claim.”’ In Sky Writing Corporation of America v. Phillips Pe- -troleum Co., 97 F. (2d) 218, the same Court said (p. 222): did not specify a separate. preheating chamber: It was cancelled and amended claims were offered in which a preheating chamber was specified. However, the specifications were not amended. It seems appar- ent, therefore, that the patentee inserted theadditional “element in his ce™bination claim in order fo avoid ®* This was precisely what happened in the prosecyfion of the application for the Dubbs patent... The illustrative ru: ‘was inserted in September, 1919 (IV, 1520). When the final. elgims limited to “without substantial vaporization’ in ‘the B.tubes/vere submitted in April, 19217 no further amendment was tute the specifica-’ -tion (IV, 1536). | ‘ y a. ferred to for the purpose of expanding or changing the «* ©® Claim (i) of the application originally filed 106 - anticipation. The element thus added became a vital é rt of his claim and the specifications describing the page nae of the cancelled claims cannot be relied upon ' ‘to enlarge the claim finally allowed, nernewed by the inclusion of an additional element.’’ ‘Thus, Dubbs’s failure to amend. his specification by can- celling the inappropriate portion of the temperature range, - .or by suggesting a higher pressure, cannot compel a special meaning for the clan limitation. (** without substantial’ vapgrization’ ’) in order, to reconcile it with the now in- appropriate and abandoned portion of the range. | : Petitioner suggests (Br. p. 95) that the Examiner wouild have rejected the final claims as interpolating new matter had he not understood ‘‘vaporization’’ in petitigner’s sense. This is stretching hypothesis too far. Rathér, the | léxaminer would have understood that Dubbs was aha “ doning, the upper part of his temperature range. ,The’. Examiner would. never have troubled bimself witb w orking the necessary calculations from Dubbs’s illustrative. run to arrive at petitioner's strange meaning for vaporization, for he knew from Dubbs’s copending application® . that Dubbs used “ vaporization in its acéepted sense. In any event, petitioner's entire argument based. on the ‘illustrative ffm” of the Dubbs patent is fallacious because it ignores ny fact that the man skilled in the-art, wishing ‘to practice the process of the’ claims, cotild very easily pre- yent *‘ substantial vaporization’’ in the coil, even at the high temperature, by merely. increasing ,the pressur e. ° Peti- tioner has no. answer to this point. en ee — * That the Exaniiner in charge of the applicat ation for, Dubbs’ s patent in suit, knew of Dubbs’s other applications is apparent, from his remark (IV, 1519) that ‘‘Care should be taken to maintain a . proper line -of division between | this and applicant’ s numerous co-pending cases.’’ c 3 Nees F. To Support Its Meaning for ‘‘Vaporization”’ Peti-. tioner Cannot Rely on Strained Inference from Words Used-in the Patent; the Patentee Must Definitely Make His Own Vocabulary.—In its opinion in the: instant case the Court of Appeals-said (VII, 3580) : \ ‘Plaintiff's right to define the terms used in its pat». _ ent isclear. Its language and its meaningvof the words seleetéd, govern. * * * Equally clear is the rule that words will be given their ordinary and decustomed nieaning unless:it appears that the inventor used them _ differently. aa 8 the meaning which the inventor gives to his words can not be made to depend: upoti subsequent events, but should appear when the appli- ~ eation is filed.”’ | ~~ * ° . ° _It is. inconceivable that this leading refiner would have en ———— ne * Royal Dutch Sheil and: Standard of California, when Pyz . and Hanna testified; owned or controlled practically all ‘the stock - in Thiversal Oil Produets Company. ‘ 117 | used this language in August, 1921, and that later he- . > should have understood the clause in Dubbs’s claims requir- . ing that the oil be heated ‘but substantial vaporization _prevented”’, to mean that this’ prevention permitted up to 99.9% of the tube to be filled with vapor. As for Pyzel, he, like Dubbs, believed that vapor in the coil was detrimental to the. process, although for a differ- -. ent reason. Thus, i in his patent No. 1,597,821 (VII, 3438), filed June 25, 1924, in 'referring to the effect of geiting _ vapor ‘into.the heating coil through the use of piston pumps, _ Pyzel says (pat: p+ 2, lines 30-8, VEI, 3440) : «9 “© © This results in serious injury ‘to the heat- ing coil, since the presence of vapor in the ‘heating coil prevents the heat delivered to the exterior there- of which is ordinarily rapidly absorbed in the liquid therein, from being promptly carried away and the use of piston pumps for this purpose has been ‘previously _ found to be impractical and dangerous. * * °”’ It is significant that Hanna got an opinion on the Dubbs. 629 patent from his patent attorneys, Lyon and Lyon of Los Angeles (II, 557), and that neither this opinion nor Lyon’s letter of July 3, 1924, was produced*® when he testi- fied (II, 579, 591). The loss or destruction of .the opinion + - and correspondence is not easily understandable save for the inference that, if produced, they would have shown the " utter fallacy of petitioner’s contention that its licensees “understood the Dubbs patent claims, as petitioner wants * them interpreted for the parpose of this suit. Petitioner (Br. p. 88) relies upon Pyzel 's statement (1, 508). that in the Indepéndence operation which he saw: ‘There. were vapors formed in the four ‘inch tubes — * This non- pledaction is inexplicable in view of petitioner's ’ production of Hanna’ s other correspondence abeuat the ** Dubbs Process.”’ ~ mus. but the’ separation. of the vapors from liquid which * | would constitute a vaporization took ,place in the ten ‘inch tubes.** wt Universal -cliaracterizes | this’ testimony —as Pyzel’s *‘ob: ° , We submit ‘that it is utterly impossible for anyone to ‘‘obs¢rve’’ the physical condition of oil in a servations.’ four-ineh. steel tube ‘inside a furnace at temperatures ex- ceeding 700° F., and therefore that this testishony has no- - significance whatever. No tests were taken at Independ- ence to detemmine the amount of vapors generated in the © four-inch coil and “the ‘record is. entirely lacking in‘any proof that in 1919 the boiling points of the multi- tudinous components of petroleum under 100 pounds pres- - sure-had been determined with suffici ‘lent accuracy to enable any’ sort of calculations to’ be madé,~ Much more than an ‘‘elementary knowledge of physical laws’? (Un. Br. gy 88)- is needed to make ‘sue | a computation. This’ is clgarly shown by a contradictio) mitted a vapor pressure chart (DX, 776, VI, 2811) purport: 1 in which Dr. Brown himself be-: ‘eame irvolved., When testifying in the Root case he sub- _ing to show the boiling range of a-gas oil stoek such as the | defendant Rootyas charging to its process. In the instant case Brown testi ed (11, 778) that a pressure of about 2 000 pounds would be needed to prevent all Vuporization in the ° Dubbs B tubes of the” gas oil stock specified in the Dubbs illustrative-run at the maximum temperature of 860° stated. therein. However, Brown's « 1 chart prepared in the Root case shows that a pressure of only 850 poundy ‘at the temperature of 860°, would be sufficient to prevent all" : vaporization of an oil even more volatile (because containing | mere gasoline) than the gas oil specified in the : illustration in the Dubbs patent ({], 1184). his discrep- ancy is incompatible, with the supposedly elementary na- ture of the problem. 7 i . : # rd ~ 119 H. The Limited Process of Dubbs’s Claims Cannot Be Broadened to Make It Conform to Commercial Operations or Demonstration: Runs.— ‘That the claims measure the in- vention has been held too — by this C ourt to require the ae ‘ ¢ citation of cases. monopoly granted to Dubbs was for the process i’ fined by. the claims of his patent. According to game this process was never practiced’ commercially, for peti- . tioner, says that, in commercial installations of the ‘* Dubbs aS racking Process” there was alw ays. substatifial vaporiza- “tion of the oil in the heating coil corresponding to -the B tubes of the patent. From this it follows that. petitioner's proofs of commercial success are so much surplusage in this’ record. Jo be.relevant and material, such proofs must- -be | of the invention of the claims. In The Cuno Engineering “ot Corporation v. The Automatic Devices Corporation,: U. S. 84, in a special coneurring option, Mr. Chief Justice in” Stone said (pp. 98-4); ; ie ‘*The commercially. pele structure for' which: respondent claims. ‘the protection of the Mead patent and which the court below thought’satisfied a felt need, is not the structure described by Mead. s had fo * ‘ 2 , * ~The commercially exploited device because of. the differences in its structure frem’ that shown by Mead - js the more’compact and easily operated. Its utility asa lighter to be located on the dash of an.automobile, which is said to be the merit of the Mead invention, is obvious. If the improvements resulting in euch ~. utility involved ‘invention it is not the invention of . Mead. If. they exhibited only the skill of the art their success cannot be relied on to establish’ invention by Mead. who did not show or make thém.” The case is ° therefore not: one for the application of the doctrine © that commercial success or the’ manifest satisfaction _-of a felt need will turn the scale in favor " of inven- — tion.”’ P YA y > “ “ | ‘ 120 The point as applied to the question of infringement was forcibly expressed by Judge Learned Hand, in Dorsey v. Pilot Electric Co.; 32 Fed. (2d) 211, when, in speaking for the Court of Appeals for the Second Circuit, he said (p. 213): ‘ ° °. . a “The cldims cannot, therefore, cover the defendant's apparatus, unless we are so far to generalize the dis- closure as to include in the invention a quite different "combination of parts; that is unless we omit from the system one of its’ necessary elements. Driggs sug- gested nothing of the kind, but by. the language of his claims incorporated thé specific organization which he disclosed.. The putative congmercial enibodiments of the patent, Exhibits 8 and 9,\Are not made in accord- ahce with its disclosure at all. Like the defendant's, they are units which subsist independently of the shaft. The patent can gain nothing from their popularity, _ unless the very question at issue is hegged.”’ It cannot be the law that an applicant for patent, upon obtaining allowance of hik claims through inserting there- ‘ in a narrowing limitation, may disregard this limitation pa ee in commercial operations. purporting to embody the in- - vention, achieve tremendous cominercial success of the process not thus limited, and then invoke this success as 4 ‘reason for misconstruing or ignoring the claim limitation. ‘Under such » rule, the patent system would be completely destroyed. The claims would no longer measure the: in- vention; the supposed invention, if successful enough in commercial operatio..s, woutd—-measure the claims. This was the heresy of the Third Circuit courts in the, Root case. Petitioner also stresses (Br. p. 27) the asserted fact _ that in a demonstration run of the so-called Dubbs process at Independence, Kansas, in the summer of 1919, there was generation of vapors in the B tubes. The fact is without — significance. At that time the Dubbs patent had not issued, 6 ~ fe and fo claims had as yet been submitted limiting the proc- exs to one wherein the beating step is accomplished but ‘substantial vaporization prevented,” . Farthermore, it should be recalled that the Dubbs’ Cracking Process,’’ under which licenses were taken, did nof embody the "629 patent alone, ‘but- literally hundreds ,of other patents and applications for patents. For. instance, in Jangary, 1924, pe\tioner advertised (DX. 592, V. 2402): - ‘‘The Dubbs Cracking. Process is based on and pro- - tected by more than 1200 issued patents and yaading ‘patent applications.’’ Universal licensed Mt@-Vontinent Petroleum Corporation (PX. 569, I], 595) r more than four hundred patents. This Court pointe out in John ER. Thropp’s Sons Com-, pany v. Seiberling, 264 U. 8. 320, 329, that licenses granted under several patents cannot be viewed as tributes to one only and that commercial success is often due-to the prestige of a great company, and to the desire of the infringer to purchase his - Petitioner stmnuously urges (Br. pp. 103-105) that the alleged revoluti@ary charaeter of fhe Dubbs patent should — resolve any doubt as’to which congtruetion of the Dubbs claims should be adopted. _. > Petitioner ignores completely the position in the art as- cribed to the Dubbs patent by the Court of Appeals, that is, that. ‘VII, 3582) “the invenfion was in the nature of an . improvement” in a field that ‘*was well oceupied."’ Thus, where the invention is a narrow one, the applicable rule is that the claims should be construed strictly with regard to the prior art and to alleged infringing devices. Kokomo Fence Machine Co. v. Kitselman, 189. U. S. 8: Cimiotti Un- harring Co. v.- American } toe Refinina Co., 198 U. S. 399: 122 But even were the Dubbs patent revolutionary, petition- er’s pretensions on its behalf far transcend the limits of the rule of McClain vy. Ortmiayer, 141 °U. S. 419, 425, and Smith v. Snow, 294 U.S. 1, 14, for the construction. whieh - petitioner would have this Court adopt so. expands Dubbs’s . claims as to do vielence to ‘the language chosen by Dubbs’ to express kis invention. The rule of which petitioner seeks in part to av ‘itself, was. ‘stated in its entirety by this Court in. McC ‘e Ortmayer, as follows: ¥Tt is true. that, in a case of doubt, where the prow i, is fairly susceptible of two constructions, that one will be adopted which will preserve ‘to the patentee his actual invention;. but if the language of the specifica- tion. and claim shows clearly what he desired to secure as a monopoly, nothing can be held to be an infringe- _ ment which does not fall within the terms the —— * has: himself chosen to express his invention. a ‘Thus the inquiry ‘is returned té a determination of the © - Theaning of. the language ‘employed in. the claims. - This — ‘meaning. must -be arrived'at indep endently of the putatiy re use of the patented invention. ; It should be remembered that the doable of McClain v/ Ortmayer and Smith v. Snow, invoked by. petitioner,.is a” _ rule of construction and not*ot Tec onstruction. Nowhere in the field of patent law will any authority or justification be found for carrying the rules favoring liberality in con- struction into the: boundless urea of reformation. Marconi Wireless Co. v. U. S., 320 U. 8.1, 34, does inot, as petitioner seems to contend: (Rr. . p. 89), modify the re- quirement of the patent “statutes that the disclosure of an, invention must he by ‘‘full, clear, concise and exact’’ de- seription made in the application for patent: Nor does it ‘permit reading limitations ‘out of claims by conforming ° them to experimental runs. .From the opinion. in that case: Silo Se ie . ‘- a : . +. 123 ae immediately preceding petitioner's (uotation, it ‘appears that Stone’s original application (relied upon to anticipate Marconi) sufficiently disclosed the ‘‘desirability that ‘the - " antenna circuits in transmnitter and receiver be resonant ‘to the same frequency as the closed circuits’? and that the 1902 amendments merely madé ‘‘explic it what was already implicit.’” The question in issue was, of course, rot the scope of Stone's claims, put what Stone, as an anticipating reference, ‘disclosed in ‘theespecification’ and made known ‘to the world. ” See also. Minerals Separation v. Magma Co., 280 U.S. 400, 402; Alexander Milburn Co. v. Davis- ~ Bournonville Co.. 270 U. 8. 390. This © ourt did not use Stone’s letters to. Baker, as petitioner asks this C ‘ourt to use. Dubb’s Independence operation, to alter the plain: meaning -. _ of a word used in the ¢laim limitation,.and thus to broaden. the scope of the claims. Marconi W ireless Co. y. U.S. did - not depart from the principle that ‘‘the patent monopoly _ does not extend beyond the invention desctibed ‘and ex- plained as the statute requires.’” “Schribe ‘r-Schroth Co. v. Clev eland Trust C On, et al, . 009 U.S. 47, ae i * Respondent's Process. Also Does Not infringe the Process of the Dubbs Patent Because the Two Are Funda- . mentally Different.—In W estinghouse Vv. Boyden Power BrakeCe., 170 U. S. 537, this Court announced that infringe- _ ment depends not on claim language alone, but also on identity of principle betw een the patented inv ‘ention“and the ’ ‘accused: process or devi ice.” Quoting: from the W esting- house case (p. 568) : ‘The patentee may bring the defendant. within the letter of his claims, but if the latter has go far changed the principle of -the device. that the claims of the pat- ent, literally construed, have ceased to represent his actual: invention, he ‘is as little subject to he adjudged \ 124 . Daaeee + an infringer as one who has’ violated the letter of a ° - statute has to be convicted, when he has done nothing ~ . in confiict ‘with its spirit and intent. ‘An infringe- | ment,’ says Mr. Justice Grier in Burr v. Duryee, 1 Wall 531, 572, ‘involves substantial identity, whether that identity: be described by the terms, ‘‘same ——.- same ‘*modus eperandi,’’ or any other * Bl There is no “substantial identity’’ between. the proc-. @ss. of the- Dubbs patent and respondent’ s operation. in fact the two are antithetical as appears from the follow. ving contrasting. tabulation : _ Process of ‘Dubbe’s - Patent. - 1. Heating the oil to a crack- ing temperature in the liquid phase in the B tubes, where cracking is initiated. 2, Doing the major part of - the cracking of the process _ in. the unheated or mildly _ heated 10-inch C tubes, this _ being accomplished (a) by maintaining full still pressure on the © tubes, these being in open communication wi tubes ; (b) by ninigabahig in the ae tubes the cracking tem- } ‘perature which the oil at- tained in the B tubes ;. (c) by: providing in the C - ‘tubes the necessary time factor to permit the pre- acquired temperature .of the oil to become effective to cause cracking. the B- ipesietchtent's Operation. | 1. ‘Heating. the oil to pro- gressively increasing crack- . ing temperatures and doing | substantially all the cracking in the mixed asta in the ‘coil. : ; 2. ‘Stopping the cracking op- eration at the coil outlet so ° ‘that practically ‘no cracking — ‘occurs: beyond .the pressure reducing valve, this being accomplished (a) ) by reducing pressure in the vapor. separator to, 26 lbs. by means of the pressure regulating Valve; (b) sy reducirig the tem- perature of the oil by cool- ing it through expansion and by the introduction of . cooler quench oil from the low temperature furnace: Te). by éutting the time factor in the vapor sepa- rator to a minimum, so ‘as .to prevent cracking there- in. aes ak . 1295 -3. Dealing with the carbon problem by the ‘‘fireless cooker’’ principle, so that carbon may be formed and deposited. with complete safety in the unheated or lightiy fired C -tubes” in amounts only. limited by their capacity, thereby mak- ing it possible. to feed even the dirtiest carbon-laden | stocks. to the system: _. 4. Major cracking in the | liquid phase inthe C tubes, -vapors formed therein as . the result of cracking not time in- having | sufficient which to crack,: for they leave these tubes substan: tially as soon as formed. 5. Using comparatively low: cracking temperatures and long time factor, thereby making the type of gasoline . preferred in the early ‘days ’ of cracking.. and 3. Dealing with the carben ‘problem by. feeding only clean stock to the coil, and stopping the cracking there- in at the point where carbon would begin to form, and by ° eliminating cracking from - the vapor separator so that . very little carbon is depos- ited in the separator, or > anywhere else in ‘the* sys- tem. 4. Cracking i in the mile-long “coil in mixed liquid and va- por phase, vapors formed in the coil being unable to es- cape therefrom and being, therefore, together with the liquid, subjected to cracking conditions of temperature time throughout the length of the coil. . Using high cracking tem peratures and a short time actor, thereby making the . type of gasoline which was undesired in the early days of cracking but which today ‘is the preferred product due to its, anti-knock qualities. These wihbhe of difference are not mere superficial, fea- tures, but are, rather, the very esse sentials’ of the respective processes. + _ The fact is that the only process steps common to both: Dubbs and respondent are those of withdrawing. residue and .returning .reflux to the coil inlet—what petitioner calls ‘“elean circulation.’? Of these; the residue. withdrawal ™_ is admittedly old. The Patent Office refused Dubbs a et 126 - patent with residue withdrawal and non-return‘ as the al- leged novel feature of his invention (IV, 1535): Thisleaves petitioner in the position where it must, and does, contend that the heart of Dubbs’s invention, whereby he solved the’ carbon problem, was the step of immediately returning re- flux to the coil inlet or supply tank instead of.to the crack- ing drum. This step, besides being also old, had’ prernie to do with the solution of the carbon protiem to “en the- Dubbs patent is directed. Whether reflux be returned to the B tubes or to the C tubes makes no difference save as-it affects Dubbs’s basic two-step process which, in itself, constitutes Dubbé’s solu- - . tion of the carbon problem. If reflux went back to the C tubes, it would tend to cool the oil therein and hamper Dubbs’s purpose of maintaining this oil at the cracking temperature which it had acquired in the B tubes, but the - i function of the ( tubes as the safe repository of carbon would’ be unaffected. Cracking stills of The Texas Com- ° pany operated just about as well with reflux going back to the drums as with reflux going hack to the coil inlet (TI, 968-9). In the respondent's operation, the distinctive benefit of reflux return to the coil inlet in the Dubbs patent is en- - tirely lacking. By return of -reflux to its coil, respondent _ is not seeking to prevent cooling in its. vapor separator, for it deliberately effects ogling there. The only ad- vantages gained by: respondent through returning reflux . immediatgly is the saving of the heat ‘contained in the re- ues. ‘flux which, would be, lost were it storéd and charged at ‘another time, and the saving of equipment which would: _ have.to be used for this storage (Smith, ITI, 1131-2). _ J. Dubbs’s Claims Reflect ‘the Two-Step Heating and Cracking Process of the Specification. —Every claim in suit v it ets ae, ‘of the Dubbs patent ealls for a first step where the oil is _ heated to a cracking temperature but without permitting ° . substantial vaporization of the oi], and for a.second step _ where vaporization occurs. None of the claims calls for cracking the oil in the first step, or B tubes. Even disregarding the limitation against substantial vaporization, it is apparent that the claims: ‘describe i in apt language the specification ‘teaching of a two-step cracking. process. 3 = Cracking is a function, not of temperature alone, but of temperature and time, and as this was’ well understood _ in the art long before Dubbs entered the field, the man skilled in the art would know that a call for heating the oil to a cracking temperature i is not a call for cracking the oil because ‘the: application of temperature alone’? will -- not bring about cracking (H. V. Smith, ITT, 1060). Dubba’s claims express the second,. or cracking, iy in terms of ‘‘vaporization,”’ and, as ‘we have shown (ante, — pp. 30- 1) the vaporization which occurs in the second step (C tubes) is vaporization resulting entirely from erack- ing. .Therefore, the Dubbs two. step cracking process, which solved the carbon problem, and which respondent . does not-use, is reflected i in the claims. In the Tenth Circuit” Court of, Appeals’ decision in’ Texas Co. v. Anderson-Prichard Refining Corporation, 122 F. (2d) 829, in passing upon the question of infringement: of the Behimer patent, No. 1,883,850. (whose application | was involved with the Dubhs patent in Interference No. 49,355), the Court held that Behimer’s claims must. be interpreted in the light of his specification, which, like Dubbs’s, teaches a two-step ‘‘fireless cooker?’ cracking “process, and that when thus construed, Behimer’s claims 128 "were nét infringed by Anderson- Prichard’ 8 Winkler- Koch ig: coil cracking process. . In the Anderson-Prichard case, the Conti ‘saldy-epeck>— ~~ ing through. Judge Phillips (p. 841): ‘‘Behimer solved the carbon problem by inhibiting cracking in the coil, and effecting the cracking in a drum to which substantially no external meat is ap- ac. 7 ‘*So construed, the alleged infringing process is clearly distinguishable. It cracks. in the coil, not in the drum. It is a vapor liquid phase process with a. short time factor, whereas Behimer’s is a liquid phase — high pressure, long time factor process. * * * It releases the pressure at the exit from the furnace and: prevents cracking in the druth or vapor separa-- tor, whereas, in Behimer’s, the same pressure is main-, tdined in the coil and drum and substantially all the cracking takes place after the oil reacties the drum. Behimer’s process: is designed. to handle heavy oil, whereas the. alleged mfringing process can use only: a Clean charging stock. In Benimer’s, the carbon problem is solved by effecting the cracking in the drum to which no substantial amount of external heat is applied. _ In the alleged infringing process, the _eracking takes place in the coil to which external heat is applied atid the carbon problem is solved by methods distinet from .Behimer. - Behimer’s process produces a sweet product, low in ungaturates, like natural gaso-_ line, while the‘aHeged infringing process .produces a yellow colored, foul smelling, unsaturated. product.”* ‘ae _ K. The Third Circuit Courts in the Root Case Erred in Their Interpretation of Dubbs’s Specification.—District Judge Nields undertook to enumerate the features dis: . closed in the Dubbs patent (6 Fed. Supp. 763, at page 766), and in doing so he interpolated a description of the condi-- tion of the hydrocarbons in the B tubes which is wholly lacking in the patent specification. The patent nowhere 129 states that in the B tubes ‘cracking occurs without sub- stantial separation of the. generated Vapors from ‘the ——--—fiquid,”? nor-does it state that “the vapors generated i inthe _ cracking tubes’ are homogeneously dispersed in the liquid - oil and pass with the liquid as a stream through the tubes whereby carbon deposits - are preventea.’’ The patent pcos says nothing whatever about .the condition _ -of the hydrocarbons, whether vapor, or liquid, or both, in . the B tubes, nor does it claim that ‘the passaye of vapors _ homogeneously dispersed in the liquid_eil_prevents ¢ arbon deposits. Subsequently in the opinion,.the District Court. fell into further grave error. It ‘said (p. 767) ‘‘the pri- mary function of the.C. tubes is to separate the vapor from. . the liquid. r" ‘This, as we have shown, is directly contrary to ‘the fact. -In the Globe case petitioner’s expert, Dr. Brown, admitted (II, 750-1). that if the function of the C ‘tubes were merely to liberate vapors for med i in the B tubes © it would be entirely unnecessary to provide, as ‘Dubbs does, ° four C tubes, because any vapors fermed: in ‘the: B. tubes - ; would liberate: themselves within a few feet, or af most at . _ the end of the first C tube. Judge N ields also stated (p. 767) that. uae Dubbs called the C tubes vaporizing. tubes he ‘‘had this separation pri- ~ marily in mind.’’ To vaporize.means to change from liquid | to vapor. Hence, if any significance is to be attributed to is nomenclature, it would indicate that Dubbs had. pri- marily in mind the generation of vapors in the C tubes when he called them vaporizing tubes. * 133. | of returning reflux to the heating coil. J ndge ariel said (Opinion, VI, 3043) : : ‘‘It, did not oceur to him {Behimer], as it did to Dubbs, to retyrn the reflux by force of gravity.” The District Court’s Conclusion of Law No. U leas follows (VI, 3061) : “11. The method of returning reflux by Selieiitla ‘head was not the exercise of. mere mechanical skill but constituted patentable novelty.’’ The Court. of Appeals chose not to pass on the Behimer : defense. In tke District Court’s view, (1) hydrostatic return of * reflux was taught by Dubbs, and not’ by Behimer, (2). . | such return was a vital, patentable feature. But we have . shown in the Statement of Facts (ante, pp. 78-9) that Behimer’s disclosure of hydrostatic return is at least as good as, if. not better than, the similar ee: disclosure in the Dubbs patent. Obviously, therefore, the. District Court was either right about the Dubbs patent-and wrong about the Behimer ap- plication, or vice-versa.’ He could not essai been right . ont both. ; Ca In any event, gravity or hydrostatic ote of: reflux was ‘old and well-known at the time when Behimer and Dubbs ~ entered the field, It had been extensively used i in returning reflux: to cracking drums, and mere mcchanical . skill was irivolved in increasing the hydrostatic head by raising the dephlegmator higher when returning refiux to coils. Nor has petitioner ever had an answer to the use of the supply: tank taught in Pielsticker, and disclosed in Dubbs, which dispenses with both hydrostatic and pump return. ¢ : 134. This Court said ix. Carnegie Steel Co. v. Cambria Iron. Co., 185 U. S. 403: ‘‘That which is common and. well known is as if it were —— out in the potent and ) delineated in the _ drawing.’’ It follows that the only obstacle that has ever hes as- _.serted to the anticipatory effect of Behimer is without validity in fact and in law. = B, Behimer’s Application Constitutes Prior Art Which, in View Also of the Availability of a Hot Oil Pump Prior ‘ - to Dubbs’s Filing Date, Negatives canary? in Dubbs.— This Court | has held ‘in many cases,* (1) that’ an earlier filed application. is prior art, to ore subsequently filed and (2) that a prior art disclosure may be supple- .. mented by mer [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386404_0029%3A18. Public record. Not legal advice.