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

Supreme Court brief1944

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sitieeenetene AS 2 <eeERReeRmeRmntme ;

Supreme. Court of the United States

OcToBE R TERM, 1943,

No. 392

UNIVERSAL OIL PRODUCTS COMPANY,

, 7 A CORPORATION, :

. Petitioner,

vs.

GLOBE OF & REFINING COMPANY, A CORPORA “ION, -

Respondent.

REPLY BRIEF OF RESPONDENT.

J. Bernuano THIESs,

Tuorney vox Hoist,

Sipney NEUMAN, -

Ronert W, Poore, -

Attorneys for Respondent.

ns ne 5 Seebnme

THE GUNTHORP. waRRen rae wTING COMPAMY, BIO wast «acrBoe, cnuesee

. ‘ } ‘a :

eerie s

+=...

The Dubbs ‘Patent Has ‘Never Been’ Asserted as an Siiaiaiimi

-catexersntiasiea-oen aca Cee OT et oa 1

Petitioner's Errors of Fact ‘ ‘and Law With Regard to the Unclean -

WE UD issn sists sc ea sla iuevapsee decebels cus! oe. 3

500 Pounds Pressure May Bs Legitimately Used If Necessary to Pre- .

vent Sabstantial Vaporization i i 4 PSS ee ia aoe s

Petitioner's Expert Was Not Considering a Hypothetical Case When

Tle Stated That One € Tule Would Be Sufficient to Effect Liberation :

OB WUGUMD RAINS oh 5 6 o.o oj den snssccenneddcecesicccicc..,.. 8s

Petitioner's Expert Was Unabie te State How “Clean Circulation”. .

Solved the Carbon Problem and Petitioner Iw in the Same Dilemma... 9.

The Holmes-Manley Stills Without Clean Circulation Were an Im-

— on Burton and . Solve the Carbon Problem... . eseee Me

Its Meaning . Iéhsiniepd a te te TE LTP ET CE rT Pepto n 18°

Behimer’s Early Experimental Work Was Snecessful and Was Re-

carded as Successfal at on san cage EEN EOE oe ETRE TRO i9

for It Contains No Such Dise losure fadebabannsence te tees os ebsiec 23

Petitioner's Reply Brief Attacks cae Pree Ate... ESS, s aie tousas 25

- Egloffs Claims Do- Not Denote Cracking... . spaaa musk vcoccl ee 28

CITATIONS

- Bassick Co. rv. Faultless Caster Corporation. 105 * |b er 17

W. H. Butcher _— Ce. v. Cincinnati Bate hers’ Supply Co., 35 F. ¥

Oe sone eg edinsr We ctkvidesneecdechucscesc., sede veseaca 28

Curtis Aeroplane & Motor Corporation, et al. r. Janin, et al., 278 Fed.

ee PPP Se eas one Medes eydeciocnnessetéséees chr nm oc cea 23

Keystone Driller Co. General Excavator Co., 200 U. 8. 240........ —t

Smith vr. Hall, 301 U. gs. EE Pree mae E cawetu ory Te See , 8B

Spalding r. Wanamaker, 256 Fed. 530....__.. fakneedhd eke eee dlea tak 5

| The Texas Company r. Anderson-Prichatd Refining Company, 82 Fed.

Supp. 347 (aff. 122 F. (24) 829)......... POOR bs sednnNeikbewnéc vs 1,2

United Chromium, Inc. r. Geveral Motors Corp., 85 F. (24) 677...... 22

IN THE

Supreme Court of the United States:

OCTOBER Team, 1943.

ees oc 2 8. No. 392 ;

U NIVERSAL OIL PRODUCTS COMPANY,

A CORPORATION,

GLOBE: OIL & REFINING COMPANY, i conponation,

_ Respondent.

- 98,

‘REPLY BRIEF OF RESPONDENT.

Seeeeaneeeete

. Pursuant to leave of this Court eremted at the argument

_ of the case held on Friday, March 3, 1944, respondent will

undertake to answer ir this Reply Brief matters raised for -

the first time in ‘*Petitioner’s .Reply Brief’? (served on -

“March fray and not already deaJt with in our brief here-.

‘ofore filed.. We ask that it be understood that: in follow. .

ing this plan, any failure to reply to petitioner’s charges

of error in no wise indicates aequie scence on our part in’

the soundness of such charges, for we stand firmly on the:

allegations of fact and on the principles of law set forth

in our opening Brief: Ae

The Dubbs Patent Has Never Been Assorted ‘as an ‘An-.

ticipation Against Behimer.—in referring to the Tenth”

Cireuit cases entitled Phe ‘Texas Company v. Anderson-

Prichard Réfining € ‘ompany, 32 Fed. Supp. 347 (alirmed —

122, F. (2d) 829), petitioner says (Rep. Br. pp. 7-10) that ”

in those cases the defendant’s counsel, who are also coun-

"sel for the respondent herein, “successfully asserted Dubbs

as a defense against Behimer’’ (Rep. Br. p. 10), thus con-

veying the impression that i i the Anderson-Prichard case

_ the defendant sought to anticip te Behimer on the disclosure

‘ of the Dubbs patent here in sbit, in the same manner ‘as

respondent now asserts invalidity of Dubbs on the diselo-

sure. of the Behimer application filed on November.21, 1918.

Such is not the fact, as petitioner well knows. In the Tenth -

Circuit litigation, the defendant success filly contended that

_ because Behimer, .after becoming involved in interference

a .. With all the claims (save claim 6) ét the issued Dubbs pat

__ent now. in suit, finally filed a disclainer of the counts of |

‘that interference and amended other claims of his applica

tion to'inelude the element of pump return of reflux, there

fore Behimer had abandoned the subject matter disclaimed,

.. the steps of residue withdrawal end, reflux return to

the coil'inletsas patentable elenients of his claims, and as

Judge Kennedy said (Pet. Rep. Br. p. 7) ‘‘aceepted in lieu

théreof the element of its [clean circulation'’s| use through

a pump or mechanically applied press@re."’ Judge Ken- °

nedy’s finding in this respect -was cdnfirmed by thesCourt

of Appeals, as appears from paragraphs 7 to 10 inclusive

of Judge Phillips’ opinion (122 F. (2d) 829, at pages 841-2)..

The defendant in the Andegson- -Prichard case never con

tended that Dubbs was earlier than Behimer, or anticjpated

him, and the courts did not so hold. Thus, petitioner's

statement (Rep. Br. p. 8) that ‘‘the respondent in this case,

in calling Dearborn® and otherwise, took precisely the

_ © Petitioner, by this statement: atid by a further ‘atetement that.

Mr. Dearborn ‘‘‘came. forward as .a ‘witness for the defendant’’

seeks to convey the impression. of volunteered assistance by Mr.

Dearborn in the case at bar. As a matter of fact, Mr. Dearborn

testified in obedience . toa subpoena issued and served upon him

(I, 182).

*."

opposite position to that which it took in the Andersap-

Prichard case * *~<’’ is wholly erroneous. Furthermore,

respondent was not a party to the Anderson-Prichard case.

‘Petitioner's Errors of Fact and Law With Regard to the

Unclean Hands Issué.—Petitioner asserts (Rep. Br. p. 22)

that before leaving The Texas Company’s employ Behi-

mer’s salary was $15,000.00 per year. This is an error, |

as petitioner's counsel pointed.out at the argument. Behi-

mer’s salary with The Texas Company was $10,000.00 per

year, and when he accepted employment with Universal his

basic salary was increased to $15,000.00 a year, plus a

guaranteed minimum bonus of $5,000. 00 a year for the first

five years, and $10,000.00 a year for the next five years,

making a total of $225,000.00'ts be paid to him over a period

of ten years. Over same period of time (unless his

salary should havé increased) he would have received .

from The Texas Company the sum of $100,000.00:

_ Petitioner asserts as a fact that ‘neither Dubbs nor Uni- |

verszi gave anthority to Wannack-:or anyone else to engage

in any improper practices or to make any effort to break

into the offices of The Texas Company”’ citing Dubbs’s tes-

timony at Volume I, page. 397 of the record in support of

the assertion. However, Dubbs admitted (I, 397-8) that he

met with hig investigator, Wannack, and with Morris Beyt

and G. H. Brunow, Texas Company employees, at Beau-

mont, Texas, on January 29, 1926. The purpose of this

meeting was to satisfy Beyt that Wannack bad authority

to act on behalf of Universal (I, 252).° Both Wanrn<ck and

Brunow testified (1, 253, 110-1) that Dubbs then considered

the’ possibilities. and dangers of obtaining copies of The

Texas Company records from its files. Dubbs's denial (I,

. 398).of any such conversation is completely refuted by the

affidavits prepared for |niversal’s benefit, one for Brunow

—_—"

a '

« ‘ ‘ a a

5) 4 %

’

. 7 X

* and ‘signed by him on Mareh 11, 126, und one for Beyt,

but, never signed. Both affidavits state that the subject

of obtaining copies of The. Texas Company records was

. discussed with Dubbs (V, 9944-5, 2257). The further self-

serving statement in the affidavits that Dybbs said he was

content with affidavits, may be disregarded in. view of the

fact that Dubbs admitted receiving from Wannack certain

photographs of Texas Company records, and that these

‘photographs had never been returned to THe Texas Com-

pany (I, 424). That Dubbs. knew of the nature of Wan-

naeck’s employment is further indicated by the undisputed

facts” that Dubbs and Wannack corresponded. under as-

suined names; that, Wannack’s expense money, amounting |

to over $13,000.00,"was sent to ‘him in cash; and that Wan- -

nack’s expetise aceounts,.as Ww ell as the telegrams and cor-.

respondence with Dubbs, show frequent trips by Wan-

nack to Chicago for conference eS, as well: as meetings with

Dubbs in other places. . S-

Petitioner also states that “ upon discovery that Wannack

had taken it: upon himself to engage in any but proper

methods of investigation, he was immediately removed by

Dubbs’ from his position’ as _investigator, and was given

notice of discharge. by the « company. ‘* The reference (I, 3

400-1) is again to the testimony of Carbon P. Dubbs. How-

ever, it cannot be denied that after Dubbs had learned of

~ the key episode he sent Wannack east to work with Olsen

(another Universal ‘‘investigator’’) for a short time on a

related, matter (I, 255), and that Wannack then returned to

.Beanmont and stayed/there for a substantia} period during

which he continued to work oir the ‘investigation.’ An

exchange of telegrams between Dubbs and Wannack, datéd

August 9, 1926: (V, 2357, 2375) refers to Wannack'’s ‘‘sceing

Ward,’ who had assisted in the Behimer irivestigation, and

Wannack’s letter to White, bearing Olsen’s New York ad-

dress on the énvelope, and dated August 27, 1926 (DX. 203,

V, 2167-2168) shows that as of that time (after. Dubbs’s |

knowledge of the key episode) Wannack was, still engaged

in endeav: oring to secure affidavits and to interview wit-

nesses. That Dubbs knew of Wannack’ s continued activity

on thé investigation is. apparent from Wannack’s wire of

ie August 23, 1926, adé@ressed to ‘‘Egeler’’ (Dubbs’s alias)

stating that Wannack had returned to ‘‘old field.’’ His .

-expense accounts for Agust and September, 1926, ( 321-

2) show payment for a hotel room in Beaumont, Tbxas,

from August 20 to September 17, and ‘also list a retainer .

of $75.00 to Ward $200.00 to Brunow, and $100.00 ex-

penses to Bramow and VaNie Coons,—all of them employees:

of The Texas Company whio were supposed to know. about

* Behimer’s early work. Wannack did not leave Universa}’s

employ until the fall of 1927 (1, 259). |

‘Regardless of what view the -District Court must have

taken of Dubbs’s honésty, he is, on this record, a disered-

ited witness by reason of the fact that on December 2, 1931,

after he knew of, and claims to have been horrified. by,

Wannack'’s tactics, he executed an affidavit (DX. 248, I,

435-6) extolling Wannack’s character in-a manner that

Dubbs must have then ‘known to. be wholly false.

Petitioner asserts (Rep. Br, p. 21) that throughout the —

‘investigation’? its sole purpose was to aseertain the truth.

‘This is: clearly refuted by a letter written by Morris Beyt

on September 7, 1926, to sever his relationship with Wan-

nack. In this letter Reyt’ stated (DX. 202, I, 218):

_ «* © © T have declined to make the affidavit which

~, you left * ° * for me to sign * ® ° the affidavit does not

contain the truth in a ‘great many subriantial. and

material particulats, ae

: | . > . 6 .

Petitioner asserts (Rep. Br. p. 26) that within two weeks

after returning from his vacation Behimer had a confer-

ence wgh The Texas Company patent attorney,Dedrborn,

‘‘and that-thereafter he executed ail documents which were

properly submitted for his signature.’’ This is not true,

for he refused to sign the amended preliminary statement

‘in Interference No. 55610 (Respondent’s opening Brief, p.

16). |

Petitiqne? asserts as a matter of law (Rep. Br. pp. 29-

33) that it cahnot be held guilty of unclean hands in the

case at bar as the result of what o¢eurred between it and

‘the Texas Company in the interferences. We submit that

the governing authority is A¢ystone Driller Co: ». General

Excavator t'o., 290 U.S. 240, where the facts were that

when about’ to’file an carlier suit against Byers Machine .

Company, the Keystone Company, having learned of

possible prior use by one Clutter of the subject matter

of one of its patents, obtained. from Clutter, for valuable

considerations, an affidavit to the effect that his work was

an abandoned experiment; and also an agreement by him to

suppress, -so far as he was able, the evidence regarding

this work.” The Keystone Company prevailed in its suit

against the Byers Machine Company, and used the decree

therein as a- basis for a motion for preliminary injunction

_in it's subsequent’ snit against the- General Excavator Com-

pany. These facts present a remarkable parallel to those

in. the case-at bar. In the Dubbs-Behimer. interference

Universal used impreper means to interfere with and sup

press the free aud full elucidation of facts by nnoprejudiced

witnesses regarding prior invention by Behimer and, -hav

ing prevailed in the interference, successfully asserted its

patent against the Root Refining ( ompany in the Third

Circuit litigation wherein the Behimer defense was not

‘

alias x

raised. Thereafter, petitioner used the decree recovered

in the Root case as a precedent against this respondent in

the Seventh Circuit® and as a basis for the contention that

the Root decree was res adjudicata as to respondent.

In the General Excavator case -all the facts regarding

the Clutter prior use were fully developed, just as in the

case at bar all the facts regarding Behimer’s éarly work

were fully adduced. Indeed, the only real difference is

that in the General Excavator case it was conceded that

the Clutter prior usé was an abandoned experiment,

-whereas in the case at bar not only is there no such con-,

cession, but .the-Behimer application is | relied on as an

anticipation ef the Dubbs patent. on

Neither in the Wannack investigation nor ‘in the hiring

of Behimer was there any genuine effort. to ascertain the

truth. The attempt was rather to shape the truth to-pe-

_titioner's ends. The affidavit which petitioner’s agents

sought to get Behimer’s confidential\clerk, Beyt, to sign,

did not, on Beyt’s own contemporaneous: statement, ‘‘con-

tain the truth in a great many substantial and material

particulars"’ (I, 218), and in hiring Behimer, ee iat

did not merely want to hire another chemist. Rather

sought to cripple its adversary. by getting the rival inven-

tor to change his allegiance, and to color ariy testimony he

might subsequently give regarding his early experiments,

as shown by the tenor of the affidavit which it L.amediately

obtained from. Behimer setting forth only the ‘‘adverse

side”’ of his early work (J, 318).

eg ae ee oy —_ .

Court—see petitioner's opening Brief, pages 113-4—although in its

Reply Brief (footnote, p. 10) it seems to disavow any advantage

from that decree,

500 Pounds Decnnens May be Legitimately Used if Neces-

sary to Prevent Substantial Vaporization i in the B Tubes.—-

Although agreeing that hefore Dubbs’s advent it was well

~ known that vaporization could be decreased or prevented.

by increasing the pressure (footnote Rep. Br. p34), pe.

iitioner’ seems to. infer that the use of pressure of the

arder of 500, 850 or 2000 pounds would be outside the

teachings of the’ Dubbs patent.* ‘Indeed, it says that the

“use of 500 pounds is an unwarranted departure from the

ci eh illustrative rua. In taking this position

petitioner 4A apparently: forgotten that in respondent’s

operation the oil enters the high. temperature furnace un-

der a pressure of 660 pounds and leaves under a pressure

of 500 pounds, the decrease being, of course, due to the

frictional resistance in the coil (see diagram opposite

page 57 of our opening Brief): If 500 pounds pressure in

the coil is a departure from Dubbs, then on this score alone

‘respondent. does not infringe the Dubbs patent. Tf «the |

use of such a pressure dpes not in itself take the opera:

tion outside the conditions of the patent, ‘then. oby, Kae

such a pressure, and higher pressures, may he used,

necessary,.to carry out the claim, teaching against: Le

stantial vaporization in the B tubes,

Tt is net true that cracking immediately results in vapor.

ization... Under: sufficient pressure, ‘*one may crack to a;

considerable degree \ without substantial viporization”™

(Smith, 117, 1086): The oil in respondent's cracking coil is

éracked té the extent that the stream contains Six or seven

per cent gasoline before any "vaporization hegins (Smith,

HIT, 1424).

Petitioner’s Expert Was Not beni a Sicitliaiitons

Case When He Stated That One C Tube Would Be Sufficient.

to Effect Liberation of Vapors From Liquid.—Pctiti mer

challenges respondent’s assertion - that petitioner's ex."

* In Dubbs’s patent No. 1,686,654 (VI, 3470, 3473), the pressure

- — is from 0 to 1000 pounds per square inch. : ge ‘

pert conceded ‘that if liberation of vapors were the function

of the C- tubes, one tube alone would be sufficient. Peti-

tioner says (Rep. Br. p. 38)-that Dr. Brown was merely

‘considering ‘‘a hypothetical case’’ where separation alone

would.take place in the C tubes. Such is not the fact. Dr.

Brown was testifying to the actual Dubbs operation as he

understcod ity He said (II, 750) -

.‘*In the Dubbs operation the oil, as it leaves the B

‘. tubes goes through the transfer litie, comes up into the

C tubes from the bottom. If there was any vapor in

this transfer line when it was fed with the liquid into

this C tube I think the vapors would separate from

.the liquid very rapidly, within a very few feet or so of

that ‘point, anyway, of where that ‘pipe entered the

C tube.

“The purpose, ‘under thos: circumstances, of the

remainder of these four C tubes, is, as stated in the

patent, additional vapors were genérated in the ;C

tubes by. a continuation of the eracking reaction

pendent upon the heat which the oil has received dn

going through the B tubes, so that + is substanti ly

correct that-the greater part of these C tubes are pre

vided so.that you would get cracking im the C ‘tubes.’

(Emphasis ours. )

’

Petitioner's Expert Was Unable to State How ‘‘Clean

Circulation’” Solved the Carbon Problem and Petitioner Is

in the Same Dilemma.—It-is noticeable that neither in its

opening Brief nor at the arguinent, nor in its Reply Brief

has petitioner undertaken to explairi to this Court the ad-

vantages of what it. terms ‘‘clean circulation,’’ ner how

_ that so-called principle solved the. carbon problem. Gn:

page 39 of its Reply Brief petitioner says that its expert,

- Brown, ae

co ce * referred to the many advantages of

‘clean’ ciyeulation’ as contrasted with the

réturn of the reflux to a vaporizing and cracking cham-

ber, and: described how such ‘clean. circulation’ wes

responsible for the solution of ‘the carbon. problem

* s 7. %” 7

At the trial petitioner’s expert claimed several advan

tagex from the refurn of reflux tu the: inlet of the coil or

-B tubes’ rather than to the © tubes or “reaction chamber.”

He said (11, 709); that by so doing ¢1) it becomes practical

to operate at a low cracking per pass and «still obtain high

vields, (2) the solvent action of the. reflux retards the

formation of carbonaceous material, (3) it acts as a diluent

of this material, and (4). heat is saved which would other

wise be lost in cooling the. reflux and again bringing it up

to temperature. However, Dr. Brown*had to admit, on

: cross-examination (11, 713), that all these advantages, save

that of heat coriservation, would. be present in a once

through operation where the reflux iS taken out and mixed. .

with the raw charging stock instead of heing returned im.’

‘mediately in a cyclic process.

What ‘petitioner terms ‘‘clean circulation’’ ix, in. reality,.

inerely the return of the reflux to the B tubes rather than

to the C tubes, but whichever wayetfenes has no effect

upon the carbon problem, nor dees the Dubbs patent make

any claim that it has. Petitioner repeatedly, asserts (e. ¢.,

- Rep. Br. p. 40) some virtue in the fact that by returning

it to ve coil inlet, the reflux is prevented from mixing with

the ¢ rbonaceous residue in the U-tube or reaction cham-

ber. This is entirely wrong. It is quite apparent that in any

event the reflux always mixes with the residual oil in the C °

tubes or reaction chamber, and it makes no difference what-

soever, so far as the carbon problem is concerned, whether

the reflux reaches the C tubes by a ‘short cut directly from

the dephlegmator or whether it reaches them ly the longer

‘route via the B tubes. The reason for the specific instruc:

11.

tion in the Dubbs sti ha 3090, lines 28-31) that the

reflux condensate ’

se © 6° ip all dhses is pine off ie the vapor

lines in such manner as to prevent their [sic}] retura-

ing direct to the vaporizing tubes C”’ |

is that, being cooler than the oil‘in the .C tubes, the dies

would tend to lower the temperature therein: if returned

directly, thereby teiding to defeat Dubbs’s intention to

maintain cracking conditions in these tubes.

In respondent’s operation.the sole advantage, and that

a slight one, of ‘returning the reflux directly to the inlet

of the coil, is the conservation of heat which would other-

. wise be lost ‘were the effluent from respondent’s bubble

tower drawn off to storage tanks, allowed to cool, and

then charged to the inlet of its cracking coil. . There is

also, of course, the saving of such" equipment as ‘storage

tanks and pipes (IIT,: 1131-2). Respondent, in contrast to -

Dubbs, deliberately cools the stream before it enters the

vapor separator in order to stop cracking in the very

step where’ Dubbs promotes it.

In respondent's operation reflux return to the coil inlet

has no effect ox the.carbon problem (Smiih, ITZ, 1132).

Obviously the withdrawal and nonreturn of. residue can”

not be relied on as a novel element in Dubbs, for it was

_ very well known in the prior art, and Dubbs was reftised *

a patent with this concept. as the vitalizing feature.

. The Holmes-Manley Stills Without. Clean Circulation

- Were an Improvement on and Did Solve the Carbon

_ Problem.—On pages 39-40 of its Reply Brief, petitioner as--

serts® that the comn al operation of the Holmes- Manley

; © The record peleousen given by petitioner at line 12, page 40,

of its Reply Brief should be to Volume VI. rather thar to Volume

Iv of the Record. ©

stills without clean. circulation li.e., with: continuous’ resi:

due withdrawal and nonreturn, but with reflux return to

the still instead of to the coil jnlet) was ‘little better than.

the Burton-Clark procedure." Petitioner’s statement is

_ based, however, upon operating data of an experimental

_ run of Battery 3 of Experiment No. 18 (DX.’s 705, 707,

VI. 2677-9, 2685), and not upon the commercial operations®

of The Texas Company. Furthermore, petitioner arbi-

trarily adopts the single factor of length of run. as the

criterion of a successful and profitable operation. |

° Petitioner would hav ¢ it appear that increased “length of

run’’ is attributable to the change in the manner of ‘Te-

turning reflux in the Holme s-Manley stills. The Texas

Company's records. show that this is not so. -'Phus, Run

3 of Battery 4 of Experiment No- 18, the pilot plant-and —

forerunner (HI, 921), of the comniereial’ Holmes- Manley

operations, had an on stream period of 64 hours, almost

twiee as long as Burton’ s, whereas Run 63 of Battery 14,

which was selected by Behimer as a typiegl run, made -

six months after incorporation ‘of the ad, a Pump

to- return reflux to the coil ‘{‘*clean circulation’’),: was

started October 31, 1921, and ended’ November 3, -1921,

which, allowing for bringing up.and closing down periods,

leaves no more than approximately 60 hours. for the .on

stream: period. The conditions noted on Defendant's Ex.

- hibit 732 (V1, 2727) are the averages: for the last 50 to

535 hours under operating conditions (II, 932). The 500.

: hour runs mentioned by —— (Rep. Br. p. 40). oe:

By Battery 3 of nr a Ne 1s ‘e-ynprised a“ ‘preheater. coil

and a single vertical stil! (TI, 918), wheras the Holmes- Manley

merciai battery comprised « preheater and four vertical stills’

(DX. 729, VI, 2721). Hence. Battery 4 of Experiment No. 18 (a

pcr bean and four stills) is moré tepresentative of the commercial

batteries (TI, 921). ; Fst

ea,

curred in 1924, three years after the Holmes- Manley stills

had been in oferation at The Texas Company’s plant (i,

490-1). ; ear

Howard V. Smith. testifie , without couiiniiiatien. that

length of run ‘is not the sole criterion of the commercial

value of a process ; that investment and ‘operating costs, _

_type of material, whether expensive or cheap,* which could -

be charged, and ‘the quality and yield of pr: duct, all en-.

ter into the question. (ill, 1135). Moreover, later engineer-

ing developmerits such as better fractionators, improved.

_ furnace design, ‘better materials and equipment, and more

efficient and accurate gauges and meters (II, 1287-8), all -

undoubtedly contributed tu the increased length of runs.

The tar problem was soivcd in the Holmes- Manley —

\. stills in the same way it is solved in the Dubbs patent,

not by ‘‘clean circulation,’’ but. by imparting the cracking

heat in the coil and doing the major part of the.cracking,

with the consequent deposit of carbon, in an unheated —

or lightly fired drum where carbon .in large quantities —

_ could be deposited without harm. ‘This was true of the

“Holmes-Manley stills both. before, and after, they were

; equipped with hot oil pumps to retnrn reflux .to thé coil

inlet. > :

In the operation of the Holmes- -Manley stills, the carbon-

containing residue was always withdrawn and was never

circulated through the coil. This feature likewise was

practiced when, before. the installation of the reflux pumps,

reflux was returned to. the still, instead of to | the coil inlet.

—-* rf was always Universal’s boast (V, 2333- 2403), that even the

dirtiest and cheapest stocks such as fuel oil or ‘refinery slops”’

(V, 2394) could be charged to the Dubbs cracking unit, but in

- charging such stocks the runs did not average more than three

days on stream (VI, 2978-84). \e

> y

‘ A 14.

_ Petitioner's Attempted Evasion of the File Wrapper

| Estoppel.--At pages 47-50 of its Reply Brief, petitioner

seeks to avoid the effect.of the file wrapper estoppel dis-

cussed at pages 48-52, and’ 95- 97 of respondént’s opening

Brief, by asserting ' (i). that Dubbs's claims. 4 and 5 are

not dirty circulation claims, and (2) that the ‘‘remarks”’

of Dubbs’s solicitor accompanying the submission of the

final claims show that he was still insisting on the ‘‘elean

circulation’ feature to distinguish the Dubbs process from

the. references on which the previous claims had been re-

jected, ‘and: that, consequently, the limitation against va-

porization (without which the claims stood rejected) cannet

lave the effect contended fr ‘r by respondent.

As its first point, petitioner Says (Rep. Br. pp. 48-9)

that Dubbs’s claims 4 and 5, submitted for the first ‘time

in, the final: amendment, are clean, and not dirty, circula- -

tion claims, because’ they call, for ‘‘a stream im an ad-

vancing direction” which petitioner says is present in

_ Dubbs and not ‘present in the references.

The ‘‘advancing stream’’ is-as present in Trumble as

in Dubbs. Dubbs contemplates a gasoline making process

‘comprising Wlstream. advancing from its inlet as oil to its .

outlet as gasoline (pressure distillate). True, in Trumble,

the reflux comes back and goes around again,—but 80 a

does in Dubbs. ‘True, in Trumble, the advancing strear

continually bled of a-part of the residue,—but so it is in

Dubbs, (by claim 4,—by claim 5 this bleeding is not even

‘called for at all). Pi

ae Ybvionsly, an *‘advanving stream” has nothing to do

with the question of whether the reflux is contaminated’ by

residue“ Both Dubbs’s claims 4 and 5 read.squarely on.

Trumble’ . * prices if ‘‘vaporization’* be giten petitioner’ “

- a x)

meaning, because neither claim calls for reflux uncon-,

contaminated with residue. If given respondent's mean-

ing, these claims differentiate from Trumble, but not with -

respect to residue withdrawal, for as to this they are

' broader than,any claims theretofore submitted b =

That is why claims $ and 5 were drgwn. It is tha grodnd

on which they differentiated from such a elaim as 7. It iny

_ absurd to contend that the patent solicitor was seeking in

claims 4 and 5 to cover precisely the same ground Las in .

claim 7. ty oh : P

It is not pore je conceive of the Du process

as being an ‘‘advauging stream’ and of Trumble ax not

being an ‘advancing stream.’* In this respect, they are

alike. Not only ix this’ obvious, buf it was expretsly

pointed out to Dubbs by the Office im its letter of July 2s

uv, 1539), that Trimble ‘* continuously passes ol in one

direction,” and Ditbbs acquiesced. It ig now foo late for

petitioner to assert such distinetions.

Petitioner alxo relies (Rep. Br., p. 4%) on, language

of claim 5 whiely says that the stream of oil is passed from

an inlet point to a discharge point "aapaeates and entirely

disassociated front the inlet point.’ Petitioner contends

that this language.“ ‘definitely excludes the .re turn of amy

residue fromy the ( tubes to dhe jnlet of the B tubes.*’

Obtvionsly it does no such thing. It reads squarely on a

process *such as Trumble’s, where {he stream is taken off

and condensed as product. Even if the “discharge point"’,

should be assumed to be the residue withdrawal line from

the C tubes, there is nothing in claim 5. which requires, as

does claim 7, for example, ‘‘preventing it [the residne|]

from returning to the cracking zone. * * *’* $

That claim 5 is, ax we contend, a ‘dirty cireulation*’

—

claim is confirmed by the fact that petitioner itself was -

formerly of this. view. ‘In the Dubbs-Behimer. Interference

No. 49,3595. wherein the issue counts were all the claims,

save claim 6, of the Dubbs patent, petitioner said, (hrough |

one of the same counsel who subser ibe its briefs before this

Court, that (DX. 178, y, 2078) : ‘.

“The broader counts’6f this interference, of which

count 5 {elaim 5]. may be taken, as an exaniple, in-

Volve a treatingnt of hydrocarbon oil characterized by

the heating of t iT toa cracking temperature, during

its pa®age froman inlet point to a remote. discharge

point, without effecting material disassociation of the

molecular structure of the oil, then causing the il in

its passage to enter # zone where substantial vapori-

zation takes place, then taking off the vapors from the

zone. where vaporization, occurs and condensing the °

heavier ‘portions thereof, and returning this conden-

sate to the oil stream so. that it will be again snbjected

_to the eracking temperature; ihe whole. being ‘cen-

duc ted ander -the pressure of the wenerated vapors.

-” **Some of the counts specify that, in addition to the

« foreqoua, the carben-containing residuum shall be dis

charged without any substantial portion thereof intr*-

mingling with the oil which is m, o¥ to be pissed

through, the heating zone,”’ (Emphasis ours.) - —

This clearly shows pet: tioner,’s ante litem motam under-

standing that claim 5 of its patent*(Count 5 ‘of the ‘inter-

ference} was rot a claim calling for residue withdrawal a

and nonreturn, and Was, therefore, br oader in this respect

‘than other claims which did so eali.

_ As to petitioner's second point, we submit that it can-

not be the law that the Inniting effect of a narrowing

reais: That is, without substantial cracking. it will he obae rved that

petitioner was then of the same opinion as the District Court and

respondent,—namely, that in the Dubbs Process material cracking

does not oeeur in the B tubes. -

{ ae 17 -

amendmenf to patent claims can be nullified by ‘remarks.

accompanying the amendment. Otherwise, any amendment

could be neutralized and the claims be left with the same

scope and meaning after, as before, the amendment, merely

by accompanying ihe amendment with the ‘‘remark*’ that

ne change had been made in the claums, .and that their

meaning remained the same as before. The attempted use

of such file wrapper arguments - “Was condemned by the

Court.of Appeats for the Seventh © ircuit iv Bassick Co. v.

I ‘aultless Caster C erporation, 105; F, (2d) 228, where the

Court, in referring to Spalding vy. W SRN Hig 206 Fed.

930 (C..C. A. 2), satd (p. 231): ies

oe * * That case and similar cases go to the propo.

or extended ‘by mere extraneous remarks of the ap-

plicant in argument without an actual amengdment. of

the claim to that effect. Whether the established rule

is contrary to this principle is beside the point now be-.

sition that the terms of a claim should not be Jimited |

tore us, for appellee is not bere asking that its claim’,

he jimited but, on the other hand, it is asking that it

be not so limited. Undér these circumstancess-we shall

not consider the applicant’s argument to, the Comunis.

sioner for the purpose of iow changing: the plain word.

ine of his aa So

Petitioner concludes itS Scetion onthe file ‘wrapper es-

toppel with thy’ contention + (Rep. Br. 3. 00) that even

., Though Dubn="s ‘claims 4. and 5 do not -aistinguish fran

Trumble or Edwards, the. only effect would be their in-

validity, because broader than Dubbs’ s inventign.-Péti-

tioner cannot so easily escape from its dilemma. The va-

lidity of these claims is not in issue'on this aspect of the

case, Even though itivalid, they show clearly that Dubbs

| used ‘‘vaporization’’ in ‘its aegepted, se use in.these two

: claims, for other wist' they do not distinguish. tion Trum-

bie, and if “vaporization” in claims 4 and 5 means, as it

”

-—

18. _ } ;

mast, the generation or fofmation.of vapor from liquid,

then the word must mean. the same in every other claim,

and respondent does not infringe.

_ Petitioner Has Not Ascribed any Intelligible Meaning for —

‘the Word ‘‘Substantial’’ as: Used in Dubbs’s Claims if.

‘‘Vaporization’’ be Given Its Meaning.--The first full para-

eraph qn page 51 of petitione’’ s Reply Brief fails to throw

any light at_ all on the use of the word “substantial” i in,

Dubbs? s claims.

’.Petitioner asserts that the word “substantial” “(hettom

paragraph, p. 51) indicates a point ‘when, momentariiy,

there might be a slight release of vapor from the foam,”

and the record reference »(1T, 699) is to Dr. Brown's ‘testi-” |

‘mony on this point. A reading of that testimony _diseloses

that Brown: fairly conclusively ‘demonstrated that in his

the word .

asserted meaning of the word ‘‘vaporization”’

‘«*substantial’’ became meaningless, and in fact that the

whole clause indicated a condition of such vaguenéss and

confusion as would necessarily ‘result in the invalidity of

the claims. Immediately following upon the- testimony

cited by petitioner (II, 699), the District Court took a hand

in questioning Dr. Brown on the meaning of ‘¢substantial."’

The Court asked cH, 700) :

“Just to clear up suppose when there is - separa.

tion, there is seperation. There isn’t any such thing as

a dividing line“between substantial and unsubstantial

separation?” Would you mean that separation sub-

stantially or insubstantially would be in the-amount of |

~ what? . Separation would be Separation or it would

not, wouldn’t it?’’. :

Dr. Brews’ s answer spoke veluizes (TI, 700) :

_ “There is a sort of ‘twilight zone. where perhaps

scientists may be on a ground for debate.’

> a

. \\ -

giving ‘“eround for debate’;

‘There is no ‘‘twilight zone

(and, hence, also giving ground for holding the patent in: -

valid for lack of certainty) .if an ordinary English word,

used. in the patent, be given its plain meaning.

Behimer’s Early Experiments] Work Was Successful and

Was Regarded as Successful at the Time.—Petitioner con-

tends that the anticipating effect of Behimer’s application -

filed on November 21, 1918, must stand or fall with the sue-

cess or failure of Behimer’s éxperimental work upon which

* this application was based. We deny the validity of this

premise, and we have shown in our opening Brief: (pp. 77-

82, 132-6) that Behimer’s application discloses all the

process steps of the Dubbs patent and, in any event, con-

* stitutes prior art, which, in view of the availability of the

hot oil pup or Piélsticker’s supply tank prior to Dubbs’s

filing date, negatives patentability in Dubbs.

In the jower court the reason that full ‘proofs were

adduced by the respondent regarding Behimer’s concey

tion and actual reduction to* pfractice in 1916 and 1917

was that it was not then known whether petitioner would

endeavor to carry back the date of Dublis’s: invention.

Petitioner subsequently attempted to do so, not by. calling

~ Dubbs, or any other fact witness, but by having its expert

witness, Dr. Brown (III, 1416- 36; 1466- 96), try to find a

suitable disclosure in an abandoned Dubbs applic ation filed

in 1917 (IV, 1891). This attempt was unsuccessful ine the

court below, was wholly abandoned on appeal, and has

not been renewed before this Court. Thus, while there

was no occasion to refer in our opening Brief to Behimer’s

‘early work, it becomes necessary to do so now in order to

refute petitioner’s Reply Brief charge that this work was

“6 ‘sterile and abortive.’

Eee oa

The opérating- data and results of sever] runs, con-

ducted by Behimer in 1917, under the name of ‘*Experi-

ment 8,'" were fully’ and accurately recorded: (DX.'s 676-

680, VI, 2499-2615), according to the usual practice of

The ‘Texas Company, and were reported contemporane-

ously by Detwiler and Behimer. These reports, and the

operating data: therein, have never -been challenged by

petitioner. © The operation conducted in these puns (Il,

887-8, 898-900) was the same as the operation: described

in the application as filed.

~ Run 6 (DX. 676, VI, 2499) was conducted from May 36.

1917, until June 1, 1917. The overall running’ time (in-

cluding starting up and shutting down) was 50} hours.

During the run, 1259 gallons of paraffin. base gas oil of a

gravity of 37.5° were charged to the unit. The average

‘pressure maintained in the system was 200 pounds, and

‘ the average temperature of the oil in the. last tube of the

‘coil was 825° (11, 899): A préssure distillate was obtained

of O17 gravity in the amount of 363.72 gallons, or 28.88% ,

of the fresh charge (IT, 903). This distillate had an”

initial boiling point of 121° and 60% thereof was driven -

off at 394°. The overall yield of Zasoline in the run as

computed at that time was. 16.66% (TI, 904), not including

losses by way of samples‘ and evaporation of about 3%

additional gasoline (17, 941). .

Run 9, which repeated the operating conditions of Run

6, was conducted from June 26, 1917, to June 29, 191%.

The overall running time ‘was 549 hours. During the run,

1324 galfons of paraffin basé gas oil of a gravity of 38

were charged to the unit. The average pressure mait-

tained on the system was 200° to 225 pounds, and the aver-

“age temperature of the oil in the last coil was 25° higher

than in Run 6, or 850° (II, 900). In this run, Behimer

alae

produced a pressure distillate of: oLS-gravity in the

amount of 435.75 gallons, or 32.91%. of the fresh charge

(HI, 905). The overall yield of -gasoline in the run was: -

18.54% ( I, 905, TAB), not ineludins 3% for—losses.*

As to tices’ runs, Behimer testified that he wanted to

force the backtrap (reflux) continuously through the coil

as it was ‘formed, and that hts system did that uniformly

(II, 902);. that the jet had to work or else the system

would ‘‘puke’’ and contaminate -the poten (LI, 888,

889), and that at no time did the apparatus — (il,

889). He stated (II, 899):

“The best evidence that the backtrap was. forced --

into the heating coil was whether the backtrap line

_ was hot, and the next evidence, the color of the dis-

tillate. As far as I know the backtrap line was hot

and the distillate was never off-color. is .

Detwiler also so testified (II, 1009).

The foregoing establishes that between May 30, (1917;

and June 29, 1917, Behimer employed the series of steps

comprising the process here in. issue: in apparatus cor- .

responding. -to that shown in his application. (ineluding a

jet), that he satisfactorily demonstrated -the process, and:

that he atiained his desired object of producing a satis--

factory vield of gasoline. Behimer testified that his.vieid -

of 21% on the cHarge, was very good for that period (II,

943).

m On page 67 of its ‘Reply Brief, “petitioner SAYS that the failure

of runs 10 and 11, using a kerosene charging stock, ‘‘sounded’’ the

‘*death knell’’ of Behimer’s Experiment 8. This is contrary to the’

“facet. The failure to make gasoline with a kerosene stock was wholly

due to the inability of the crude apparatus to withstand the high

' pressure (300 Ibs.) needed to prevent-vaporization of this light

material before a cracking temperature was reached. thus result-

ing in the eseape of the keroserje' from the drum, in vapor form,

before it could be cracked (11, 906-7; 944). :

oN, We here note that in 1919, two years after Behimer’ a

_Tuns were conducted, Universal,.in connection with the

issuance of.a licénse to the Shel! companies, guaranteed a

gasoline yield of only 21 per cent, nt, based.on a yas oil eharg-——~

~~ ing stock (IV, 1737). If this yield was good enough for

‘Shell, it would seem to be good enough to show a satis-

. factory yield in Behimer’s runs.

‘Subsequently,. Behimer endeavored to embody his: proc-

ess in large scale semi-commercial operations, and he then _

found that oes following the design of that which ping been

ment 8 were Ea NE This v was due to the pened capac-

ity of the apparatus, and to the increased frictional resist-

ance (Ii, 918, 919) in the two-inch coil, 1500 feet in length,

then being used (II, 917)... However, the unsuitability of -

| the jet in large-scale apparatus did. not, as petitioner con- —

- tends, cause the abandonment, of Behimer’s work. The

Texas Company caused an application for patent to be

filed, which, ‘in itself, negatives —— (U Tnited

Chromium, Inc. v. General Motors Corp., (. C. A. 2, 85 F.

(2d) 577 at 579) and continued its efforts to find a suitable —

‘pump (although never thinking to look in the right place |

—in the Patent Office-——where the Thompson. pump had

been revealed to the publie in December, 1917), and when.

such a pump was at length brought to Behimer’s .atten:

‘tion, it was installed on the commercial. batteries of

Holmes-Manley stills which had been erected with special

provision for the installation ‘of pumps as ‘soon as a suit-

able one should be found (II, 923-4; 967-8). The impres- “

sion which petitioner seems to wish to convey that the

Holmes-Manley stills erected at a cost of $3,000,000.00,

represented wasted capital, is wholly erroneous. Thesi-

stills continued to function successfully and profitab!y with

clean circulation just as they had previously without_ eS

‘The case of C urtis Aeroplane €é Motor fae gpeml et

al. v. Janin, et al., 278 Fed. 454 (C. C. A. 2), appearing

in the quotation from the District Court’s opinion at page

74 of petitioner’ s Reply Brief, has tio application | to the

facts in, the ease at bar, In the Curtis case Janin’s appli-

cation for a liydro-aeroplane disclosed only a boat-shaped

body which, in-the language of the Court, “could. _never

be lifted from the water by any~ power compatible with

aN flying and-placed in a flying machine.’’ In other words,

Janin’s disclosure was conipletely inoperative. This case

would only be pertinent as against Behimer if the jet dis-

closed. by Behimer had _not:functioned-at all in Experiment

8, and, ‘hence, that the process disclosed in Behimer’s

application could not be perfornied at all with the appa-

ratus disclosed. si

If the Invention Resides in the Sufficient Elevation of the —

Dephlegmator in Commercial Operations, Then the Dubbs |

Patent Is Invalid, for It Contains No Such Disclosure.—In

seeking to disparage Behimer as an anticipation of Dubbs,

petitioner makes the extraordinary claim that Dubbs suc-

ceeded and - Behimer failed, . because Dubbs = ‘Br. *

72)

_ 2 * © © supplied the spark of antine, atin the |

lean circulation process possible by utilizing a high

sn ae head for imposing upon the hot volatile |

-reflux the necessary pressure to insure passage .

‘through. the elongated cracking tubes. against the fric-

tional resistance déveloped therein.’’ _

Petitioner contrasts this ‘“revolutionary invention” which

went into commercial use ‘fon an enormous scale’’. with

Belimer’ s ‘unworkable jet.”’ ;

| We have here an-edmission, that the thing which made

‘the clean circulation process work in commercial opera-

tions was the great-elevation of the depblegiator, as

shown in the model. produced in court at the argument,

and as shown also on plate 7 of the petitioner’ s ‘*Supple-

ment’ to its opening Brief.

If this was indeed the ‘‘spark of genius’’ necessary to

‘make theinvention work, then the Dubbs patent is wholly

“invalid, for it contains no hint whatsoever cither of the

problem, or of its solution by utilizing a ‘thigh hydro-

static head.’’ ? : dart

| ‘Asa matter of fact, of « course, petitioner is wrong, a and

‘Dubbs and Behimer- were right. -The drawings in “the

_ Dubbs:and the Behimer patents show an elevated dephleg-

". mator. Neither patentee thought it necessary to teach the

obvious-fact, well known to the art, that the ‘height. of the

dephiegmator could be increased if necessary to overcome

‘resistarice in a longer length of. coil.

s. in claiming for Dubbs the ‘‘spark,of genius’’ in » ‘*utiliz-

“ing a high hydrostatic head’) petitiqner is again at odds

with its own expert, ‘for Dr. Brown testified (III, 1484-5)

‘that the elevation of a vessel containing liquid “perhaps ~

20 feet in the air or 25 feet: in the air’? would have been.”

an obvious oe in 1917 for overcoming frictional re-

sistance ina pipe.* ale

* Dr. Brown was then endeavoring to aid petitioner in carrying

-hack Dubbs’s date to the 1917 application, and on being pressed

as to the availability of .a pump as of that time to pump hot va- -

_pors, he stated that the lack of availability of such a- pump would

" not make Dubbs’s 1917 disclosure. inoperative because, as he said

(III; 1484), in referring to the drawing of this 19f% dieelosure

(TV, 1883): .

' . “All that would be necessary would be to increase the

height of the retorts A-1, A-2, A-3, A- 4 and A-5, in reference

to the furnaces B-1, B-2, B-3, B-4 and B-5.”’

. %

a o¢ ce t

ae we ses.

Petitioner’ ‘s further statement (Rep. Br. 72) that the

; “spark of genius”’ in greatly elevating the dephlegmator

to give an ‘adequate hydrostatic or gravity. head. resulted

in the installation “from 1919 to 1926°" of “99 commercial

. Dubbs cracking units’’ is calculated to conv ey the impres

sion of widespread commercial use of. Dubbs ‘units in 1919,

prior to The Texas C ‘ompany’s.equipment of the Holmes:

Manley stills with reflux pimps in 1921, As a matter of

fact, the only ‘Dubbs operation in 1919 was with the demon-

station unit ut Independence, Kansas, and it the operation.

-of the first commercial unit at Wood River, known as Rox-.

ana No. 1, in the summer. of 1921, considerable engineering

difficulties were experienced (Pyzel, 1, 539). which. were

not d6vercome until-the No. 1-A unit avas. put into operation

in June, 1922 (IT, 603), a year after The Texas Company's --

Holmes. Manley stills were SUC ‘eessfully operating with the

hot oil reflux pumpe.

Petitioner's Reply Brief Attacks on the Prior Art._—Most

of petitioner's arguments with respect to the prior patent

art were ‘anticipated in our. opening Brief. We deal here

7 only with sue +h points ‘as were not therein mentioned.

_ On pages 81-2 of its Reply Brief, petitioner again refers

to the Truinble patent ¢VTT, 3287) and again claims. the

advantage fer Dubbs in withdrawing all the. residue over. 4

‘Trumble’s partial withdrawal, This distinction which pe- ~

titioner calls a ‘brilliant concept” cannot, of course, refer.

to Dubbs’s claims 4 andk5 whieh -are outright “dirty cir-.

_enlation™ claims, nor to claims -1, 2, and 9, which merely

prohibit the return of substantial portions of ‘the residue.

“But in any event petitioner cannot base patentability in |

Dubbs on the ‘brilliant concept’? of residue withdrawal

and nonreturn, for this step was first taught in a continn-

"ous process ini Benton (British) ‘No. 1922 of 1887 (VII, .

3927), enti was thereafter taught in the continuous proc-

esses of Pielsticker (British 1308 of 1891, U. 8. 477 ,153,

VII, 3531, 3126); Hall, 1,175,910 (VIL, 3200), Ellis, 1,396, -

999 (VII,"3352), Manley, 1,428,338 (application filed Octo-

“ber 10, 1917, VII, 3382), Alexander, 1,407,619 (application -

file February 21, 1917, VII, 3364), Greenstreet, 1,740,691

(application filed August 4, 1917), and the Behimer ap-—

plication filed November 21, 1918 (VT, 2653-69). Petitioner

could only contend for invention in Dubbs’s total residue

withdrawal over Trumble’s partial withdrawal if Trumble

represented the whole state of ‘the prior arf. But ‘total

withdrawal and nonreturn of residue was an old story both

‘in continuous drum-cracking processes (Behimer’s 1918

application and Manley patent No. 1,428,338). and in con-

tinuous coil-cracking processes (Benton, Pielsticker, Hall, ©

Ellis, Greenstreet, and Alexander) long before Dubbs en-

tered the- field. r °

_ On page 85 of iis Reply. Brief, petitioner. ‘soli. to the

statement in the Hall patent a ‘1,175,910 (VII, 3200, pat.

p. 2, lines 113-7) about carbon being thrown out in the

dephlegmators, and argues: therefrom (pp. 85-6) that —

- - Hall’s’ reflux would “be “unsuitable for. recycling hecause

contaminated by this carben.: .

This contention is untenable, because, first, since Hall i is

a 1 Vapor phase operation, the ‘‘iarge quantities” of carbon,

referred ta in this statement in the Hall patent, would be

insignificant as compared with the tons of carbon obtained:

a See

* We believe that a a possible misapprehension should be corrected

because of petiticner’s reference to ‘‘throwing away"’ the residue

withcrawn in continuous processes. We assume petitioner used

such language figuratively. As a matter of fact the residue was

re-distii’ed to make. further clean charging stock and even the ~

heaviest tar was frequently used for some punpems, ¢. q...in road

surfacing. .

p *

in the process of the ‘“fireless cooker’? 2 type (Reiman, Ill,

1225); second, nothipg is said about how this carbon is

' distributed between the first..and second. dephlegmators, itis

and the greater part of it would be deposited in the first ©

dephlegmator as stated in the ‘796 Hall patent (VII, 3232,

p. 2 lines 40-51; Reiman, III, 1225); and, third, some car-

bon could be deposited in the second dephiegmator with-

out’ contaminating the condensed reflux withdrawn from

the bottom thereof (Reiman, ITI, 1318-19), this reflux be-

ing suitable for direct return to the coil ‘without filtration

‘or other preliminary treatment’? as taught in Hall’ 's "796°

patent (VII, 3232, p. 2, lines 40-51). . |

_ A. smell deposit of carbon in ‘the second dephlegmator

‘of the Hall ‘910 process, in the bubble tower used in re-"

spondent’s operation, or in the dephlegmator of.the Dubbs _

commercial process, does not affect the cleanliness of the -

recycle stock snfficiently to make it an unsatisfactory feed .

for the cracking tubes. Howard V. Smith testified (III,

1130) that some carbon accumulated in the bubble tower of

.. the Winkler-Koch. commercial: operations, and Hooker,

Ede, and Backus (II, 810, 820, 840) each stated: that slushy

'- earbon was present in the dephlegmator and reflux leg

‘in the Dubbs ‘commercial operation. Backus stated that -

carbon was. also present in the dephlegmator and reflux

leg ofthe 1919 demonstration unit at Independence, Kan-

’ sas (II, 831). In no ‘instance was’ the recycle stock, ¢on-

. taminated se-as to cause trouble in the’ coils.

In dealing with the Pielsticker patents petitioner par-

_tieularly emphasizes a criticism which it directs at the

prior art in general, namely, the alleged lack of commer-

cial use of its’ teachings. This argument really begs the ©

question. It assumes from the admitted lack of commer-

- cial operations under the name of Pielsticker or Ellis that

the so-called steps of clean circulation are not disclosed

in their patents. But, obviously, if the steps are disclosed,

then, both patents, according to petitioner’ s ‘proofs, have

been used exténsively. In any event the patent statutes

do not make commercial use a condition precedent to the

anticipating effect of a prior art patent or use Smith v.

. Hall, 301 U.S. 216, 233; W. H.. Butcher Packing Co. v.

| C ‘incinnati Butchers’ Supply Co., 35 ud (2d) 567 (C. CLA

10).

Petitioner seeks . to escape : hen. Br. p. 99) ‘tet its -

former interpretation of Pielsticker in the Wartier-Quin-

lan case, when it agreed with respondent’s position, by. the

assertion (not based on anything in the Record) that its

former views were ‘merely ‘argument. of counsel unaided

by any testimony.”’ This view is distinctly stultifying to

oe ‘members of the bar, for it seems to lend support to the

- 6pinion too often ‘expressed. by’ laymen that lawyers are

_ lacking in intellectnal infegrity. But in az ny event, peti.

tioner’s argurient j is too unrealistic to be credible. Even

though no expert witness testified in court for petitioner.

with respect to Pielsticker in the Warner-Quinlan case, it is

‘not.to be. doubted that petitioner’ s courisel had the benefit,

in construing Pielsticker, of the advice of its experts, if

expert advieo were needed. The ‘change in petitioner's

‘iews of Pielsticker is not due to advice .or lack of advice

om experts, but rather to the change ‘in. its. atatus from

défendant to plaintiff. . .

Egloff’s Claims Do Not Denote Coil Oracking. —On pie

103 and 104 of its Reply Brief, petitioner seeks to e

. * the ‘file-wrapper estoppel based on Egloff's choice’ o the

adjective “‘heated’’ instead of ‘‘cracked’” as being properly

descriptive of the effluent delivered to the expansidn cham-

ber from the coils, by asserting that the claims finally al

lowed teach cracking in the coils because they recite that

the oil in the coils is subjected to ‘‘a tracking temperature’

(emphasis petitioner’s). This is a further and glaring in- .

' stance of petitioner's attempt to blind the Court to. the

significance of the time factor in cracking. Petitionér re-

peatedly seeks to convey the impression that when oil is

_ raised to the cracking temperature it immediately cracks—

a proposition that is no more true than that a loaf of bread

dough immediately. becomes baked bread when the dough

is inserted in an oven and raised to a baking .temperature.

Indeed, the call of Eglotf’s claims for subjecting the

reflux ‘‘to a cracking temperature’ and *‘‘simultaneously

heating an independent advancing stream of charging -

. stock to a cracking temperature,’ so far from being a cail.

for cracking, is, in itself, a strong indication that cracking:

is not to ocenr. (substantially) because the necessary ele-

ment of time is not given. And’ when we consider that it is

_ given with respect to the oil in the expansion chamber, the

conclusion is itiescapable that it is in this- chamber, and

~ not in the coils, that the major cracking of the process is

intended to occur.. The claims all speak of**‘a process of,

oil conversion consisting in maintaining a body of heated

hydrocarbons in an enlarged zone where substantial vapor-

ization occurs * * *."’ The words ‘‘maintaining a body’’,

of oii clearly denote the time factor, and we know f rom the .

specification that, as the oil is delivered to the expansion

chamber i in its _liquid , state and as there is no reduction in

psessure or increase in temperature in the chaniber, the

vaperization which occurs therein must -be entirely the

result of.¢racking. Thus, the language of Egloff’s claims

’ “ is confirmatory of the file history wherein Egloff made his

election and told the Examiner that the effluent from both

cuils was delivered to ‘the chamber in a ‘‘heated”’ and ‘not .

‘‘eracked’’ condition.. ; .

Petitioner further states (Rep. Br. p. 104). that the Ex-

aminer ‘‘understood that Egloff’s reflux was cracked, be-'

fore it reached the expansion chamber.’ We cannot. un-

- derstand how such a point can be advanced with sincerity.

The Examiner used the language quoted by petitioner in

the same letter (Paper No. 4, IV, 1630-1) in which he

called on Egloff to choose between ‘‘heated’’ and ‘‘cracked’”’ .

as the proper description of the oil and reflux in his coils

5 and 6 respectively. Thus, the cxamuner, ‘then laboring

-under a misapprehension, characterized the material as -

‘eracked'’' before he had received the answer to his re-

quest for clarification. . Upon the receipt of this answer

(Paper No 5, 1V, 1631-2) in the submission of new claims

all of w hich designated the niaterial as ‘heated’? and rot.

-‘‘eracked,’’ neither the ‘Examiner: nor the applicant ever

thereafter ebaracterized it as “cracked.”’

The ‘remarks (Pet. Rep. /Br. op. 104) presenting the

rr laims appearing in the patent, ‘ys as we have already pointed

out, cannot possibly alter the effect of an amendment, and

in any event there is nothing in the statement that the con-

densate ‘‘is to be heated to a temperature ‘necessary for .

properly cracking’ the same’’ which indicated that the _

cracking isto oecur in the coil. In Egloff, as in. Dubbs,

the cracking heat is to be imparted in the coil and main-

‘tained in the chamber where, combined with the time factor,

it will cause efacking to take place. :

irenapaias:: submitted,

J: Bernnarp Tress,

TrHoriry vox Horst,

Swrry Neuman,

Resert W. Poore,

Attorneys for Respondent.

| id

SUPREME couRT oF THE UNITED STATES.

No 392.—OcTQBER TERM, IS43.

Universal Oil Products Company,) Ou Writ of Certiorari to

Petitioner, { the United States -Cireuit

. 3 vs. 1: ; Court of Appeals for the

Globe Oil & Refining Compan. | ‘Seventh Cireuit.

‘ ’

7 May 29, 1944.

(May e

Mr. Justice Reep delivered the opinion of the Court.

The petitioner sued the respondent for infringement of United

P i

States Patents No. 1,392,629, dated October 4, 1921, and No.

1,537,593, dated May 12, 1995. The former was issued to Carbon

P. Dubbs: the latter, to Gustav, Exloff. These patents cover the

_ Dubbs process for converting heavy erude eils to Tighter oils, es-

‘pecially gasoline. The claimed infringement arises from the re-

‘spondent’s use for the purpose of such conversion ‘of the ‘‘ Winkler

‘Koch process’’ in apparatus designed and installed by the Winkler

Koch Engineering Company, The district court dismissed the

bill gn findings of fact to the effect that Patent No, 1,392,629 was

‘valid but not infringed; and that Patent No, 1.537.593 was invalid,

without findings om the ‘issue of infringement.'| The majority of

the Cirenit Court of Appeals found both patents not infringed

and did not pass.on their. validity; Judge Lindley yeaptestarcean

MOOT 2 ep Tine Ow BLE AEE AEA OOND | that_the Dubbs ~~»

pateht was infringed hut that both patents were invalid.2 The *

“Court of Appeals for the Third Cireuit found the same patents

to be valid and infringed by the use-of a process substantially

similar to respondent's in Root Refining Co, v. U niversal Oil Prod-

ucts Co, 78 F. 24-991... To. resolve the conflict thus presented we

granted certiorari, 320 05S. 730.

Where the questions presented by the contested claims of in-

fringement amd validity are purely factual, this Court ordinarily

accepts the-eoncurrent conclusions of the district e vort andl Ci ircuit

1 Universal Oi} Prod: iets Ma. v. Globe Oi & Refining Co., 40 P. Sup”. 975 5

2 Universal Oil Products Co. v. Globe Oi] & Rifsiing Co., 137 F, 2d 3.

: /

2 Universal Ou Products Co. vs _ Glove oil & Refining Co,

Court ef Appeals in these cases. Goodyear Co. v. Ray-O-Vae Co.,

821 1S. 275. Put in resolving conflicting views of two Circuit

Courts of Appeals as to a single patent, we are obliged to, under-

take an independent reexamination of the factual questions. Sani.

. tary Refrigerator Co. ¥. Winters, 280 U. 8. 30, 35-6. |

The patents and the allegedly inftinging process concern com-

mercial methods for converting petroleum, as it is found in nature,

into the gasoline in everyday use as motor fuel. The experts who

testified in‘ the district ecurt have stated some of the theoretical

background 6f the processes used, and’a brief summary of this

material may facilitate understanding of the process invoived.

. Layman and chemist alike are of course familiar With the con-

ception of the atoms of ‘‘chemical elements’’ as the basic building

blocks of ordinary cHemieal compounds.’ The atoms of the ‘‘ele-

ments’ have the capacity to combine with the atoms. of other ele-

ments to- form the molecules of ‘‘chemical compounds,”’ whose

properties seem to depend directly upon the nature of the molecule.

tn the field of oil chemistry. the outstanding fact is the extra-

ordinary ability of carbon and hydrogen to combine with each

other into molecules containing widely varying numbers of carbon

“atoms with differeft _pro; vortions of hydrogen atoms in an almost

unlimited number of uferent structural: arr anvements. These

combinations, genericatty tertied hydrocarbons, gre present. in

' great variety in crude oil. : ‘

The. hydroearbous differ widely from oné another in their. physi-

eal properties, particularly in the property of wolatility, which is

of prime importance in motor fuels. - As one might expect, the

hvdcocarbons composed of large moleeules with many earbon atoms —

are heavy, slvggish lianids with relatively high“*boiling points;

they ‘are not suitable for use as gasoline. Those with smaller

molecules are much more volstile—indeed, the very smallest are

vases at ordinary temyesstures,

' The initial step in the preparation of gasctine from. crude oil

involves no mnclecular change; it consists merely in separating the

light hydrocarbons in the natural mixture from tke heavy hydro-

carbons. This step is accomplished by heating the oil until .it

vaporizes and ‘then varrying the vapors through a deviee familiar.

to industrial chemistry under the name of a fractionating tower.

3 This case does not ‘re quite ‘consideration of any theory as to the internal

character of the atom,

‘

Universal Oil Products Co. vs. Globe Oil & Refining Co. 3

Such a tower is in effect a series of condensers in whieh the vapor

mixture is cogled and the liquid condensate drawn off in separate

steps. First the high boiling: point constituents, reaching a liquid:

‘phase after relatively little cooiing, are condensed and withdrawn;

this process. is repeated on the remaining constituents in sueces-

sive steps fs the vapors” cool, yntil there remain only those low

boiling point hydrocarbons suitable for use as gasoline.

By ‘fractional distillation alone, a typical sample of Mid-Con-

tinént erude oil w ight yield approximately 25{;, gasoline, 5-7%

‘ kerosene, 30% gas ‘oil, and-a balance of 38- 40°; fuel oil.’ The

fraction remaining after th? distillation of ‘gasoline or gasoline

and kevosene is termed ‘‘té pped crude.’

For many, years the commercial petroleum industry carried the

prodaction. of gasoline from erude oil no farther than’ this initial

sten of separating it from the mixture. But with the introduction

of the automobile, the demand for gasoline increased rapidly, and

it became necessary to.develop commercial apparatus for the con-

version of heavy ‘hydrocarbon molecules to light hydrocarbon mole-

cules by the chemical process known as ‘‘eracking.’"* Chemists

had long known that by heating the heavier hydrocarbons to tem-

peratures of the order of 750-00° Fahrenheit, it was possible to de-

compose the heavy molecules into tighter molecules with fewer ear-

_ bon atoms, with the maximum decomposition resulting from fairly

prolonged’ application of heat.*” The breakdown of the heavy mole-

cules into lighter ones was acc ompanied, however; by a concurrent

phenomenon—namely, the formation of even nen eepaneetanene

and the deposit of solid matter called * “voke’ ‘or ‘‘earbon.*’ Like-

wise, at the temperatures used the oil” boiled, and if the vapors

were not released (and they could not be if heat was to be applied

for a long period of time). high presstires developed in the still.

«And as the cracking operation yielded products of increasing vole-

tilit*. this pressure would. appareritly, rise as the reaction vro-

rressed. | ee

The engineering probiems involved in the reduction of the labor-

atory knowledge of cracking to commercial practice were’ formid-

able. since the presses and. temperatures employed earried sovere

a a

a ——— eee ye

4 See Standard rah ge . United, States, 283 T. 8. 163, 147.

5It has been stat however, that cracking is an almost instantaneous

reaction in the vapor phase processes carried out at temperatures above 950°

F. See de Florez, Profits from Cracking in Vapor Phase, XIX National

Petroleum News No. 49 (Dee. 7, 1927), pp. 32, 33.

4 Universai Oil Produits Co. vs. Globe Oil & Refining Co.

risks of fire and _ explosion. The first commercial process was in-

troduced about 1918- --the so-called Burten process. Burton heated

the charge—-gas oil—in a simple tank, or shell still. The tank

was not continuously fed; a charge of 8250 gallons | was -pumped

‘into it and brought to a temperature of, 700- 750° over a. period

-of some 32 héurs) under autogenous gas pressure of 75 pounds.

The ‘eracl.ing opyration was then continued for 24 hours. The

vapors hberdted in the still were conducted: through an inclined

‘line to an aerial condenser, where tiie -lreavier and less volatile

vapors were liquefied and drained back into the still through the

same vapor line, there. to be mixed with the invaporized’ residue

and subjected to further cracking. This first fraction of the vapors

was called ‘‘reflux condensate’’: ‘the unliqué ‘fied, vapors were car-

ried to a second condenser and liquefied 2g ‘pressure distillate,’

a liquid cohyertible by further refining operations. not here rele-

vant to commercial gasoline. — +

The coke depesited during cracking tended to cause uneven

heating of the shell still, with “resultant formation of weak ‘spots

and danger of explosion’ Consequently, it was necessary to shut

down the stub after = 24-hours of eracking to permit the coke

to ‘be cleaned out. The cleaning and pré-heating processes | con-

sumed about half the operating time; the gasoline yield ranged

on'y about 25-28 of the gas oil charge, arid the menace of ex-

‘plosion was serious. The Burton proeess was modified and. im:

proved soniewhat in 1915 hy the introduction of the Burton-Clark.

process, which differed in that. it’did not apply beat directly to

“the shell still, but instead cirenjated the oil in the still by convec-

tion through a separate licating coil. This improvement increased

the vield to some 30-327. The Burton-Clark ‘process constituted

the general industrial practice at the time of Dubbs’ ‘patent,

Chemical engmeers in the refining industry were engaged in

continuous research ooking. to the solution of the coking problem

and the development 6f a process which might operate eontinu.

ously, withent wasteful periodic shut-downs of expensive plant

‘equipment. The processes in sui’ are among the results of their

‘efforts. . :

Dubbs Patent No. 1,392,629, the alléged infringement of which

forms the basis of this action, covers a process ‘first demonstrated

in a pi.ot plant at: Independence, Kansas, in 1919. The oi! charge

is fed through a nest of heated »s—ealled ““B tubes’ ‘--about

Universal Oil Products Ce. vs. Globe Oil & ‘Refining. Co. 5

four inches in diameter—a heating process not unlike that used.’

in Burton-Clark. The heated oil is then delivered to tubes of _

about ten inches diameter—‘‘C -tubes’’-—-which are only _partly———

‘filled with liquid oil. The C tubes are insulated,-but wu :heated

—or onl¥ lightly, heated to prevent the escape of heat by radiation.

Here the vapor generafed as-the result of heating and cracking

of the same. general kind used in the Burton system. The first

vapors to condense -that is. the reflux condensate-—are returned

to the B inbes for-further heating and cracking ; ‘the lighter vapors”

are earried-to a second condenser to become gasoline. The un-

_ pavorizged. residue of liqnids-and suspended solid particles in the

( tubes is continuously withdrawn from the system ; thus only the

light oils of the reflux condensate, which have but a l.mited ten-

dency ta form coke, are recycled, through the B tubes. Such de- .

marked danger of explosion, and it precludes clogging of the

smaller _syperheated B tubes. Gas oil subjected tothe Dubbs

process has been made to yield 40-50°% zasoline, and continuous

runs of from ten to twenty days*are usual). . +

An the commercial! practice of the Dubbs patent, a simple vapor

separation. tank usually takes thé place of the C tubes.’

The points of similarity and dissimilarity te the Burton-Clark

process are worth noting. Burton-Clark subjected to prolonged -

heating the unvaporized hydrocarbons as well as. the light reflux

condensate. Since. these heavy. -hydrécarbons havé.the greatest

tendeney to. form still heavier oils and to deposit earbon, their

withdrawal from the apparatus was an important advance. The’ .

continuous feed system of the Dubbs apperatus was also regarded

as an improvement on Burton’s batch provess, Purton-Clark_cir-

culated through the heating tubes the heavy oils formed during

eracking: Dubbs permitted only a mixture of fresh oil and. reflux

condensate to pass through. his furnace coil.’ . ; |

‘The Evloff patent covers an imprevement or. the Dubbs process.

As we pointed out at pp. 2-9, supra, the initial step in the sep-

aration of gasoline from erade oil is fractional distillation; then.

. gas oil, the fraction. next below gasoline and kerosene, is subjected sie

to cracking In a special apparatus. The fuel cil fraction has such

A song tendency to form very heavy hydrocarbons’ and eke that

it Is undesirable as a charge for the high-temperature heating coil

6 Universal’ Qil Products Co.-vs. Globe Oil & Refining Co,

in the eracking systems. What Egloff-propesed was ‘a relatively

“mil -heating-Of the heavy oils in a separate furnace—thus fuel

oil or topped crude might be used aS a charge. The temperature .

and pressure would be sufficient, to oceasion a mild cracking; the

vapors might then be delivered to the same vapor separation tank

used with the high temperature heating tubes, and the -reflux’ con-

densate from these vapors might be used as the charge for the .

high temperature tubes. The substantial effect is to subject fuel

oil or topped crude, from which the charge for a Dubbs plant was,

often separated by: seNarate distillation,-to a distillatiori and inild -

cracking operation, usin the vapor separating tank and the con-

denser ‘apparatus of the. Dubbs plant instead of using separate

apparatus to prepare the Dubbs charge. ro

The apparatus of respondent’s Winkler-Koch process’ closely

resembles the apparatus of the Dubbs-Egloff system. Oil’ is heated .

in either ihe iigh-temperature or low-temperature furnace, de-

pending on the kind of oil used; the heated o:l-is delivered to a

vapor separation tynk; thie. reflux condensate flows back to the

_high- -temperatare coil for further cracking. — - e

The differences between the processes, as. distinguished from

the apparatus, are more marked. Dubbs taught the heating of ‘

the oil charge. in the -B tubes “without substantial vaporization.’

Thus the illustrative rup inthe’ patent suggests the heating ‘of oil

to a te mperature of 750° to 860° F.” with a pressure of about 100

pounds to the square. inch, resulting from, vaporization, maintained

the heating coils at,“q temperature of 590° and ieaves at a tem-

peratiire of 940°: a pressure of 500 pounds to the sijuare inch is

-maintamed in the heating eoil, Some 85% of the -o:! by weight

‘and 95° by volume reaches a vapor phase ia the ‘heating coils’ Pos.

The oit ip mixed liquid and vapor phase enters the vapor separa-

tion tank threngh-a pressure reduction valve, so that the pressnre

in the tank is 26 pounds as compared to the 500 pounds of the

heating coii.

The courts below bethoved that these differences were sufficient

to prevent the respondent’s-process from infringing the claims of

the Dubbs: patent. A typie:.! aim is Claim 5, ar follows: +

, & Fuel oil can be di reetly charged to a Dubbs system; “but the ran must we

greatly shortened.

rok

~~ "Universal Oil Products Co. vs. Globe Oil & Refining Co. 7

‘*5>. A continuous process for cracking hydrocarbons consisting

-in passing thé same in a Stream in an advancing. direction from.

an inlet point. toa discharge point separated and entirely disasso- -

ciated from the inlet point, subjecting the material in the first

stave of its travel to a cracking temperature while preventing sub-

stantial vaporization, affording a vaporization space above the

stream: during the second stage of the’ travel thereof to said dis-

charge point, taking off the ‘apors from said vaper space and’

subjechig them toa condensing action, discharging into the stream

at a point remote from that where vaporization oceurs a portion

of the condensates and miintaining a Vapor pressure on the ma-.

: terial under treatment during Costillation and eondensation.’ .

It is apparent.that the issue of infringement of the Dubbs patent

turns on the construction to be given the words, ‘without sub-

stantial. vaporizatiyn,’’ as they are used in the claim. The peti-

tioner argues that what is ciaiméd is that there is'no release of

vapors from the liquid in the B tubes; the respondent argues that

it. is meant that no liquid oil passes into a vapor phase in the B

tubes, that is, that there is no vapor generation in the B tubes.

Either’ construction would be consistent with the operation ofa

cracking process. By a applying” sufficient pressure, it is possibl-

to prevent the generation of vapor from oil even at the: relatively

° high cracking lemperatures, The gasoliné yielded by erackite cil

in liquid phase is cheinically different from that yielded by vapor

phase. cracking, and at the date of-the patent, the liquid phase -

product Was preie ‘red. The yield of vapor cracking was a malod-

orous yellow mixture requiring additional refining operations to

make it marketable: however, since 1919 gasoline formed by vapor

‘eracking has beceome more highly regaridest beeanse of its superior

antiknock character istics,

The parties are wholly at odds us to the nature of the process

tauch it by Dubbs in his patent specific ‘ations, The .petitioner.con-

tends that cracking takes place in, the B'tubes with resultant gen-

eration of vapor, and that in the C tubes the vapor is merely set. |

free from the liqnid oil. The respondent argues that the only

function of the B tubes is to furnish enoveh heat to cause eracl:-

ing. and that the oil actually cracks while it is in the C tubes.

The cracking process, it will be remembered, requires that the oi]

be kept at a high temperature for some time if substantial gasoline

is to be formed, and the respondent compares the process taught .

‘by Dubbs to the familiar fireless eooker. iti which a ve esse with

8” Universal Oil Products Co. vs. Globe Oil & Refining. Co,

heat-keeping qualities~is first. heated and then removed from the

flame while cooking goes on. with the heat first supplied.

The patent several times refers to the B tubes~as ‘‘eracking

tubes’’ or as the ‘‘eracking zone:”’ In its relevant parts, the patent

- describes the process in the following terms:

; ** Deseribing the operation of the process, the material to be

treated is Grawn from any suitable source by means of the pump

J and discharged therefrom through line J' into and through |

tubes B anc during the time they. (sie) are passing through said

tubes, they “(sic) are subjected to sufficient heat’ to cause the de-

oo amount of eracking. Said oil is then passal into the tubes

“wheh are only partially filled with the ol and as the oi! passes’

a ‘ame these tubes, there is a liberation of Vapors. from same and

whiel; capors pass up through the vapor tubes D, E.

‘A tight fire may be majntaified cunder-the tubes C as shown in

the aeael ings or said tubes-miay be heavily insulated . . . to pre-

‘vent lass of heat by. radiation and thereby dlispense with the fire

cunder the tubes Co...) The per cent. of vapors generated from

the oil as it passes through the tubes C will depend on the amount .

of heat aequired by said oil while passing through ‘the 4” coils.”’

zation Space ‘above the. stream’’ in the C tubes. These words, we

are told’ must necessarily refer to a space in whieh vapors are

released, not generated, This does not advance petitioner's argu-

‘ment, however, as the space referred: to, as shown by the subse-

quent words of Claim 5, is simpiy space to ‘hold réleased vapor,

that is: ‘!vaper space."’ Neither vapor*separation ner vapor gen- -

eration taker plaee in the spacé ahove the stream.

Respondent too supports its argument that not even generation

of vapors was, ehvisaged by the Dubbs patent limitation against

‘‘substantial vaporization’ by r*ference to. the patent. It points

out that as the-patent does not define ‘‘vaporization,’’ the word

is used in the accepted sense of cheinical nomenclature. The use

of the word ‘‘Vaporization’’ in the patent to show what takes place

‘in the C coils is stressed by respondent as indicative of. the mean-

ing with which the. word was used by Dubbs.? The respondent

says this theans generation as” well as release of vapors because -

the patent says, “‘The per cent of vapors generated from the oil

as it passes through thé tubes C will depend on the ameunt of heat

7**The heated oi] ther passes te the 10 inch C coils whieh are naintpined

about half full of oil and whe rein vapo rization takes place. _

Universal Oil Products Co. vs, Globe Oil & Refining Co. 9

acquired by said oilewhile passing through the 4” [B]. cois.’’ It

iv. said that the patent consistently describes the charge in the B

tubes as ‘“‘oil,”’ and never as vapor or mixed oif and vapor or—

‘foam. : .-

The petitioner argues that the reading of the patent which re-

spondent asks would result ia-an inoperative process under the

evnditions of the illustrative run. It seems to .be conecded that”

oil heated to 7,0 at 100 pounds pressure would not vaporize, but

‘in order ‘for cracking to take place in the V tubes, it would be

necessary to furnish Some additional heat to replace that con-

sumed in the -eracking reaction. At-the higher temperatures sug- .

ested in the illustrative run, much higher pressures than the 100 _

‘pounds ealled for bécome necessary to ‘preclude vaporization, al-

though the heated oil would, in cooling from the higher tempera-

tures, previde the heat necessary for the cracking reaction in the

C tubes. But even though ‘experimentation at low pressures would. !

show generation of ~—_? in the B tubes, this will not control. fhe--——— :

language of the claim. -

‘We agree with respondent's position as to the tesching of the

patent. We are of the view that ‘‘ without substantial vaporiza

tion’ as used in the ‘patent means that the generation and. release

of vapers inthe B tubes is to be avouled so that the charge will

enter the ( tubes for erackitig as nearly as may be*in the liquid

phase. It clearly appears from the history of Dubbs’ appliea-

tier! in the Patent Office thar the use of the phrase was purposeful.

It was inserted after the Patent Of ce had-disallowed claims with.

ont the phrase and it was evidently added -to clarify the. deserip-

tion of the steps ef the process and the claims of novelty. Cf.

Erhihit Supply Co. v. See Corp. 315 US. 126, 136.. The impor- °

tance is evident. fron: the history of the trade since, ak pointed

“out above, at the time of Dubbs’ application gasotine obtained by * 4

cracking the charge in Jiqmid phase was.more desirable than the \

gasoline obtained fr: vm vapor phase eraecking.*

The distinction’ made by the. eontroverted phrase is .of practical

importance. Dubbs patented a process for converting -hydcoezr

bons through cracking. The diffieu!ty in the prior art was carbon

deposit or eoking. Tf in this process the cFackjng Operation is

pressed to substantial completion on the B tubes, the patent See ris

—_—--- ee

® But see Universal Oil Produets ¢. Globe ¢ Oi! ‘« Refining Co., 40 -F. Supp. =

975; -137 F. 24 3. ,

10 Universal Ou Products Co. vs. Globe OW & Refining Co.

to fail to teach a ensthed of preventing coking in those tubes.

Coke there will certainly be as a result of the cracking; what

would prevent its deposit ? It may be possible to prevent the de-~

posit of carbon, by. maintaining q rapid turbulent flow; indeed,

We are told that this is the device used in the commercial appli-

cation of. both parties’ processes, and Behimer, another engineer

_ working in the cracking field, attributed the failure of a similar

apparatus (See Patent No. 1,883,850) to the want of a pump of

sufficiently high pressure to maintain the necessary velocity of flow.

But the patent, while it calls for a pump to inject the charge into

’ the B tiibes, does not point oft the need of using rapid fiow for this

purpose; the pressure within the apparatus is expressly referred

solely to vaporization. One building a device according to Dubbs’

teaching might, if he read the patent as teaching that ecracki

was to occur in the B tubes, content himself with using relatively’.

short B tubes and a correspondingly slow flow to furnish cracking \

tinie. That procedure would presumably lead ta coking; the pat-

ent, however, does not describe how that result may be avoided.

There is a reason of controlling importance why the protection .

of the Dubbs patent must be limited to a process in which —«

takes place largely in the C tubes:

As a’ reward for inventions and to encourage their disclosure,

the United States offers a seventeen- year monopoly to an inventor

who refrains from porn hig invention a trade secret. But the

quid pro quo is disclosure of 4 process or devieg in sufficient detail

to enable one skilled in the art to practice the‘invention once the

period of the monopoly has expired; and the same precision of

disclosure is likewise essential to, warn the industry concerned of

‘the precise seope of the monopoly asserted. Biné v. Jeantet, =

US. 683. 685-86, Gene ral E. wis es Co. Vv. Wabash Corp., 304 U.

364, 368. ‘

In a process patent in the refining of oil, preciseness of deserip-

tion is essential. It is a crowded art. Hope. for suecess for new-

patented processes with slight variati 1s from those in use caused’.

large expenditures in testing their e ikieney by importart com-

panies with staffs of specialists who were skilled i in the art. Among

the -processes cited to us as prior art advances on Burton: Clark,

_ those ot Hall Patent No. 1,175,910, Alexander, Patent No. 1,407,619,

and Rehimer Patent No. 1.883.850 were embodied in experimental

plants, and the testimony is replete with references to Sach other

Universal Oil Products Co. vs. Globe Oil & Refining Co. 11

Holmes-Maniey, Fleming, and Cross processes. The claim is the

fs required to be ‘specific for the very purpose of protecting the

publie ‘against extension of the scope of the patent. White v.

Dunbar, 119 U. 8S. 47, 52; Minerals Separation v. Butte &e Min’g

Co., 250 U. 8. 336, 347; Knick v. Bowes *‘Seal Past’? Corporation,

"25 F. 2d 442, 443. The applicants for the patent thought the

phrase ‘‘ without substantial vaporization’’ in the B tubes impor-

‘tant. While varying the details of 2 process does-not avoid in-

fringement, Tilghman v. Proctor, 102 U.-S. 707, when the accused

_ process does not substantially follow the mode taught in the patent,

there is no infringement. In view of the importance of the direc=

° tion as:to the ndp-generation of vapors in the B tubes, as herein-

2 beforé pointed out, we do not rhink a process which relies on vaper-

ization in the B tubes ean be said to infringe the patented ‘process.

The Egloff patent does aot ‘require extended consideration. It

may fairly be said that the Egloff patent, deseribed above at pp.

5-6, was an improvement on the Dubbs. sy stem. - The improvement

consisted in providing a clean: é¢harging stock for the B tubes by

_ heating erade or fuel oil in oils which are contained in a separate

~ heating apparatus from the one nsed to heat the cleaned stock,

anddischarging it ina liquid phase into an expansion chamber.

~The unvaporized oil is withdrawn from the expansion‘ chamber

and does not reetiter the system. The vapor is liquefied in a par

tial condenser or’ dephlegmator, and the reflux condensate is

pumped as a charge into the B tubes of ° apparatus substantially

i “ -eondensate after. passing _— the B ceils rekaters, the same

expansion chamber that is used’ for its preparation.® Nothing: is

sail in the Evloff patent as to vaporization in the, B tubes.

” x typical dain (5) reads as " $llows:

‘5. A Process of oil cofversion, consisting in maintaining a body of heated

ik in an enlarged zone where substantial vaporization cceurs, in

* subjecting the vapors to reflux coridensation to condense the heavier vapors,

“ qheating an. independent stream of charging oi! for delivery to said enlarged

none to a temperature sufficient to cause a substantial vaporization thereof in

ssid zone, in introducing said heated charging: oil to the. enlarged zone, and

in withdrawing unvaporized oj] from said énlarged zone without permitting

the same to again enrer either of said oil streams.’’ .

P= measure Of the grant. Smita vy. Snow, 294 Ul S. 1, 11. The claim.

in passing the reflux condemsate in an advancing stream through a heating’

' gone where. it is subjected to cracking conditions of temperature and pressure,

in delivering heated condensate +o said enlarged zone, and simultaneously:

: _ contemporary experimental or working cracking systems as the —

Similar in form and operation to the Dubbs patent. The reflux”

12 Universal Oil Products Co. vs. Globe Oil & Refining Co.

It seems obvious that the: Dubbs patent anticipated all the steps

of the process except the separate treatment of the heavy oil. The _

- clean charge of the reflux condensate was brought about by the

withdrawal of the residue of unvaporized oil, and this withdrawal —

was old in the art."° As there is nothing in the elaims or speci- 5

: fication to show any reliance upon where vaporization, whether -

by generation or liberation, takes place, such difference ax there

may be between this patent and Dubbs as to that phenomenon ~

not significant, But.we see nothing in the addition of.the extra

still that involves invention. In retrospect, it appears almost in-"

evitable that once a satisfactory continuous feed cracking “ap-

paratus was developed, chemical engineers would promptly design

equipment for integrating the initial distillation of erude or fuel

oil, with whatever cracking might be practicable, with the gas oil

oe’

_ eracking | process, to form a ‘coptinuous operation. heneieiiee F

simplicity is often a misleading test of invention where it appears

that the patentee’s conception in fact solved a reeognized probleva

that had baffled the contemporary art; but in this case Egloff ad-

vanced ‘his | improvement shortly after Dubbs disclosed the under-

iving process and before Dubbs s stem had had wide commercial

use; heneé contemporary workers had no oceas‘on to ‘deal with

whatever engineering problems might have been involved. We

have, therefore, a conception which .is, on its face too obvious to

constitute patentable invention, ‘and which was advanced shortly

after any need of it frose. We think the district court was right

_ in finding the Egloff patent invalid. (>.

| Affirmed.

«°)

19 Eglo was ant the firat patentre to. realize the > advisability of withdrawing

the heavier oils; Dubbs certainly anticipated him, as did Piehimer, No.

1,883,850; Greenstreet, No. 1,740, 691; Alexander, No. 1,407,018; and Hall,

No. 1,175,910. . ;

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