Petition for Writ of Certiorari — De Stubner v. United Carbon Co.

pow. 5 ai

A NITED ‘CARBON Goupane and.

INITED CARBON COMPANY, INC.

Ropreeont:

\ #*

. [PETITION FOR WAT OF CERTIORAS TO THE

UNITED STATES ‘CIRCUIT COURT OF .-

- APPEALS FOURTH CIRCUIT

y and’. #3 55

i ms

Uae Geisha ake

710 Charleston Natl. Bank Biae,

Charleston, W.Va: |

Grama C. Parser, ©

Charleston, W. Va.

Sam L. MacConera;

Richwood, W. Va.

Attorneys for Petitioner.

JARRETT PRINTING COMPART, CRARLESTOR, W. VA,

—

INDEX

Page

Petition for Writ of Certiorari

eee er i SR oa otitmninienehimnmetaniidh 1-11

Brief in Support of Petition._....------------------ 13

It was the de Stubner Pioneer Invention of leaving

Pigments in their pure state as produced in the first

instance which greatly interested respondent, United

Carbon Company, as also the pigment consuming

REED cnnccnsctaccdansdosngussdsecehhiannaen 16

All sucessful carbon black aggregates are dispersions

whether shaped or not, whether dried or not-__----- 18

Exposed surfaces cause particles to adhere and form

DENESE GRIGIIANS ocncnunscncabontsecssinsacecas 23

Thorough ‘‘ Wetting’’ of the Particles and the Teeg-

CARTE: DEIR. co nnacnencnnsvanGncccnenéannenene 24

Structure is the Conditio Sine Qua Non of the proc-

ess for making proper aggregates -_..------------ 29

Smith transfers the petitioner’s invention for the

‘Wet and Dry Process’’ as disclosed in petitioner’s

confidential notebook into the ‘‘Fingerprint’’ Appli-

cation of Hanson-Skoog, Ser. No. 205,139 filed April

Sk BNI nei tei ia ectisalininsasiesictpitclase dansalaasaeiebabaanieateaebidins 31

The ‘‘Dry and Dustless Carbon Black Dispersions’’

of Petitioner on or prior to November 13, 1934, and

the resultant of the Teegerstrom Process are Identi-

[it anndniintennenesmhnnnenaarannhotmideemas 33

Devastating Result of Error__------------------- 35

UNTIL Sachunkak piel heated ihuiithsbtipcspi i ina Manns 36

TABLE OF CASES

de Stubner v. Microid Process, Inc., 124 W. Va. 591, 21

RRR CGR EG es EERE sng renee 5

Binney and Smith Co. v. United Carbon Company, et

al., 37 Fed. Supp. 799, 317 U. S. 228, 63 Sup. Ct.

In THE

Supreme Court of the nited States

OCTOBER TERM 1947

EMILE C. de STUBNER, Petitioner,

Vs.

UNITED CARBON COMPANY and

UNITED CARBON COMPANY, INC.

(MARYLAND), Respondents.

PETITION FOR WRIT OF CERTIORARI TO THE

UNITED STATES CIRCUIT COURT OF

APPEALS FOURTH CIRCUIT

and

BRIEF IN SUPPORT THEREOF

To the Honorable Fred M. Vinson, Chief Justice of the

United States, and the Associate Justices of The

Supreme Court of the United States:

Petitioner prays that a writ of certiorari issue to re-

view the decretal judgment of the Circuit Court of Appeals

for the Fourth Circuit rendered and entered on the 25th

day of September, 1947; the order denying petition for

rehearing on December 8, 1947, and the mandate which

issued five days thereafter.

OPINION BELOW

The opinion of the Circuit Court of Appeals, filed Sep-

tember 25, 1947, is reported in 163 F. 2d 735.

2

BASIS OF JURISDICTION

Jurisdiction is invoked under Judicial Code as amended

April 20, 1940, 54 Statute 143; 28 U. S. C. A. See. 41 sub.

(1) and sub. (1) (b).

QUESTIONS PRESENTED

The fundamental questions presented in this petition

are:

(a) The finding and holding of the Circuit Court of

Appeals, affirming the District Court, that the agreements

of August 18, 1936, (dated July 31, 1936) were not intended

to and did not cover the field of dustless carbon black.

(Opinion, page 741, bottom, right column.)

(b) Was petitioner in possession of information which

enabled the respondents to secure the dustless carbon black

patents or to engage in the successful manufacture of the

product? (The opinion says the petitioner never possessed

this information, page 745.)

(c) May the respondent, United Carbon Company, Inc.,

be confirmed in its adjudged right to use the inventions set

forth in the ‘‘fingerprint’’ patents and application, free

of the claims and rights of petitioner as herein asserted?

(The opinion says petitioner is not entitled to an assign-

ment of the patents or to royalty upon the use of the proc-

esses therein, page 745.)

SUMMARY STATEMENT

The essential facts are contained in the bill of complaint,

with exhibits thereto, and the joint and separate answer

of the defendants. (Printed Appendix Vol. I, page 1 et seq.)

The petitioner was born in Switzerland and came to this

country in 1915 and for many years, until his association

with defendants in 1934, resided in New York where he

practiced his profession of physicist as a consultant and

3

was publicly recognized long prior to his association with

the defendants as having made outstanding contributions

in the field of pigment dispersions. (App. Vol. ITI, pages

1223, 1224.)

Petitioner came in contact with respondent, United Car-

bon Company, and its president, Oscar Nelson, in the fall

of 1933 through Charles A. Greene. (PIff.’s Ex. 2, App.

Vol. III, pages 1050, 1051.) As the result of this contact,

petitioner in 1934, at the request of Oscar Nelson as Presi-

dent of United Carbon Company, one of the three large

companies controlling the carbon black business in the

United States, conferred in Charleston, West Virginia, with

said Nelson and his chief engineer.

Option

Petitioner entered into an option agreement with United

Carbon Company on May 1, 1934, by the terms of which

petitioner, as inventor, patentee and sole owner of a num-

ber of patents and applications relating te apparatus, meth-

ods, processes and products pertaining to the art of pigment

dispersion, did grant unto United Carbon Company the

option or right to have exclusive license, with exclusive

right to sub-license, for the United States and all other

countries, all said patents and inventions which were to be

transferred to a company to be organized as Vacuum Mi-

croid Process, Inc.; such license to extend for the term of

any and all such letters patent, less five days. The option

provided that the transferee company was to act and fune-

tion as a holding company and licensor to manufacturers

in pertinent branches of industry. The option agreement

further provided, inter alia, that it was the intent and pur-

pose of the parties to demonstrate the practicability and

commercial possibilities of the processes and products of

the optionor; to this end optionee agreed to furnish the

funds and facilities necessary for a demonstration at a

location to be designated by it. During such period of

4

demonstration the optionor was to give such aid and per-

form such services in connection therewith as should be

required by the optionee.

The option agreement further provided, in detail, the

stock interest optionor was to receive in licensee company

to be formed. There is also contained in this option agree-

ment a list of patents issued, the date and subject matter

of such patents, as also a list of patents granted but not

issued and applications pending. The term of this option

was for one year, provided optionee should not be in default

in the performance of its obligations in respect to furnish-

ing the facilities and funds therein set forth. On March 25,

1935, the optionee caused the United Carbon Company, Inc.

to be formed and incorporated under the laws of the State

of Maryland and transferred to it the option rights of

United Carbon Company. The transferee company was

organized with the same officers and directors as United

Carbon Company, which owned all its capital stock, and

used the same offices. The first extension was for a period

of six months, expiring November 1, 1935. Further exten-

sions were granted to July 31, 1936.

License Agreement Between Petitioner and

Microid Process, Inc.

Petitioner and Microid Process, Inc., incorporated for

the purpose, on July 31, 1936, entered into a license agree-

ment by the terms of which Petitioner granted to Microid

a non-assignable (except a license to United Carbon Com-

pany, Inc., for the treatment of carbon black as therein

provided) sole and exclusive license to use, together with

the sole and exclusive right to sub-license the use of the

inventions, improvements or discoveries disclosed in the

patents or applications therefor, fully set forth in an at-

tached schedule, and all inventions, discoveries or improve-

ments relating to any idea, machine, apparatus, formula,

fact or process pertinent or valuable to the science and

5

art of pigment dispersion of whatever kind and nature

theretofore or thereafter made, discovered, compiled or

developed by licensor or with respect to which he has a

right to grant a license.

Microid Process, Inc., the licensee, was organized with

authorized capital stock of nine thousand (9,000) shares

of common stock, without par value, divided into Class

‘A’? stock in the amount of three thousand (3,000) shares

and class ‘‘B’’ stock in the amount of six thousand (6,000)

shares, each having the same voting privileges. The Class

““A’’ stock was issued to petitioner and the Class ‘‘B’”’

stock to respondent, United Carbon Company, Inc. The

Company had three (3) directors composed of petitioner

and two selected by said respondent. The licensee was

never solvent.

This license agreement provides for its termination, and

when terminated, all licenses lawfully granted shall remain

in force and effect and all royalties and license fees re-

served to Microid shall become the property of plaintiff

who shall become licensor. This license agreement was

cancelled by decretal judgment, because of the insolvency

of Microid, effective August 1, 1942, in the case of de Stub-

ner v. Microid Process, Inc., 124 W. Va. 591, 21 S. E. 2d 154.

License Agreement From Microid to United Carbon

Company, Inc.

By license agreement dated July 31, 1936, Microid Proce-

ess, Inc., granted to United Carbon Company, Inc. (referred

to therein as ‘‘Microid’’ and ‘‘United’’) a license to use

and to sub-license others to use any and all patents owned

by Microid or under which Microid had a right to grant

such license,

“for the treatment of carbon black or other pig-

ments produced by the combustion or decomposition

of hydro-carbon gases, petroleum or petroleum prod-

ean tne Oe hee ee eae eee

6

ucts and lamp black, throughout the world, under al]

the inventions and discoveries, whether patented or

unpatented, relating to such use, and including the

patents and inventions more particularly set forth

in the said schedule of patents, applications and

inventions attached hereio.’’

Microid agrees to instruct United in the use of such inven-

tions. United accepted the license agreement subject to all

its terms and conditions and agrees not to use said inven-

tions or patents or grant sub-licenses relating thereto ex-

cept in accordance with the license agreement; agrees to

disclose fully and promptly to Microid all inventions, im-

provements, secret processes, formulas, or discoveries

made, acquired or used by licensee and relating to or useful

in the exercise of the license granted,

‘‘and at the request of Microid agrees to assign or

cause to be assigned to it and does hereby assign to

it all such rights as licensee has or may have a

right to acquire in said inventions, improvements,

secret processes, formulas or discoveries, * * *”’

Agreement Between de Stubner and United Carbon

Company, Inc.

Plaintiff and United Carbon Company, Inc. entered into

an agreement dated July 31, 1936, which said agreement

was fully set forth in, and adopted as a part of the by-laws

of Microid Process, Inc. on said date.

In the minutes of the first meeting of the stockholders of

Microid Process, Inc. held on July 31, 1936, there appears

this recital :

‘‘There were presented to the meeting for discussion

drafts of three (3) agreements in writing, each dated

July 31, 1936, one agreement being a license from

Emile C. de Stubner to Microid Process, Inc., one

being a license from Microid Process, Inc. to United

Carbon Company, Inc., and one being an agreement

y

7

between Emile C. de Stubner and United Carbon

Company, Inc.’’

A resolution is thereupon adopted approving:

‘the plan of organization set forth in the three (3)

agreements dated July 31, 1936, this day presented

to and discussed at this meeting, and that the Board

of Directors take action in conformity therewith.”’

Thereupon follows the by-laws which were adopted and in

Article VII of which is contained the agreement between

de Stubner and United Carbon Company, Inc. which is

preceded by a recital that previous to the incorporation

the agreement had been entered into and

‘*is hereby adopted as a part of these by-laws inso-

far as the same prescribed methods for the conduct

of the business of this corporation and defines the

rights, duties and obligations of its stockholders,

officers, agents and employees, and in case of conflict

between any provision of these by-laws and any pro-

vision of said agreement the latter shall prevail so

long as it remains in effect.’’

The agreement refers to the first party as ‘‘de Stubner’’

and United Carbon Company, Inc. as ‘‘ United’’ and recites

the option of May 1, 1934, from de Stubner to United Car-

bon Company to which United, Inc. has succeeded and its

election to exercise the same; recites that the parties there-

to have caused the incorporation and organization of Mi-

croid Process, Inc. with the amount and character of stock,

and the execution of the license agreement between de

Stubner and Microid.

The schedule of the de Stubner patents, applications and

inventions, including the disclosures docketed but not

filed, with numbers and titles thereto are the same as con-

tained in the agreements filed with the pleadings in this

case.

8

Petitioner’s patent attorney from 1932 to March, 1939,

was Arthur M. Smith of Detroit, who became a member of

the firm of Dike, Calver & Gray in about 1933, with offices

in Boston and Detroit. Petitioner had Smith come to

Charleston, West Virginia, in February, 1935, when as

petitioner’s attorney he first contacted the officers of the

respondents. Petitioner was then engaged in preparing a

report requested by Nelson on November 13, 1934, and

wanted Smith’s aid in its preparation. (This report is PIff.’s

Ex. 114, App. Vol. ITI, page 1125.)

Petitioner’s patent attorney, Arthur M. Smith, later pre-

sented to him a bound book containing certain of the de

Stubner disclosures as set out in the schedule of same

attached to the license agreements, which bound book is

filed as PIff.’s Ex. 68, App Vol. I, page 288. Said disciosures

contained a writing which is in part as follows:

**August 14, 1936

Memorandum

Re: Disclosures in E926

Title: Manufacture of Dustless Carbon Black

This information was disclosed by Mr. de Stubner

during my visit in Charleston on July 30, 1936, asa

part of the general discussion of the dustless carbon

black situation. * * *’’

In the schedule of patents, applications and inventions

in the license agreements are the following:

‘‘A. Issued U. S. Letters Patent

5. 1,866,017

Title, Pigments, Process of Making Same

Date, July 5, 1932 (Applied for September 23,

1926)

> * .

—

Te i i

ano &

7. 1,955,738

Title, Method of Dispersing Pigments

Date, April 24, 1934 (Applied for January 18,

1929)

8. 1,965,764

Title, Method of Processing Finely Divided

Solids

Date, July 10, 1934 (Applied for February 1,

1932)

B. Pending U. S. Patent Applications

8. 729,913

Title, Processing Pigment Dispersions

(Applied for June 9, 1934—now U. S, Patent No.

2,086,997 issued July 13, 1937)

+ + *

10. 757,469

Title, Dispersion Method and Device

Utilizing Pressure (Filed December 14, 1934)

* *

C. Docketed but not filed

1. C510

Title, Utilization of Dustless Carbon Black

* * ">>

The petitioner was engaged during the option period of

two years and three months in demonstrating on pilot plant

scale in the pilot plant at Charleston the practicability and

commercial possibilities of his inventions as contained in

his patents, applications, and disclosures set forth in the

option which were thereafter carried into the license agree-

ments.

During this option period petitioner carried the financial

burden of maintaining and developing his patent estate

in the U. S. and foreign countries.

10

A. M. Smith of Detroit, Michigan, was engaged by peti-

tioner in 1932 as his patent attorney and counsel, and con-

tinued as such until March, 1939, when he terminated his

employment with petitioner.

Said Smith in May, 1937, accepted employment from

the respondents and prepared for them the applications

for the patents for the manufacture of dustless carbon

black. (App. Vol. II, 865 bot., opinion page 745.)

These patents designated in this record as ‘‘the finger-

print patents’’ were issued to employees of respondents

who operate thereunder in the manufacture and sale of

dustless carbon black.

The application which did not ripen into a patent is

found disclosed in U. S. 2,213,056 issued to Skoog and

Bradford August 27, 1940, and applied for April 29, 1938.

Said application Ser. No. 205,139 was likewise filed April

29, 1938, in the names of Hanson and Skoog. This appli-

eation is for the treatment of carbon black by a wet and

dry method.

No assignment of this nor the other ‘‘fingerprint pat-

ents’? has been made to the licensor as required by the

license agreement.

Reason for Granting the Petition

The Cireuit Court of Appeals for the Fourth Circuit has

decided :

(A) That the agreements, including the option, were not

intended to and did not cover the field of dustless carbon

black, thus ignoring the language of the agreements and the

acts of the parties thereunder.

(B) It is also decided that petitioner ‘‘was not in posses-

sion of information which enabled the defendants to secure

the dustless carbon black patents or to engage in the suc-

cessful manufacture of the product.’’

1l

(C) It is also decided that petitioner ‘‘can lay no claim

to novelty.’’

Thus is ignored the intent of the parties as expressed in

the language cf the agreements, and also deciding, in effect,

that petitioner is not to be hereafter protected in the rights

granted him by the U. S. Patent Office, whereas, no such

question could be properly determined in this suit which is

predicated upon contract, and not infringement. (Alan N.

Mann, Orig. Tr., page 1347.)

WHEREFORE, it is respectfully submitted that this

petition for writ of certiorari to review the judgment of

the Circuit Court of Appeals for the Fourth Circuit shonld

be granted.

ee a ae a a a a ee ee ew we ee ee ee ee

Sraice Davis,

710 Charleston Natl. Bank Bldg.

Charleston, W. Va.

GranaM C. ParnteEr,

Charleston, W. Va.

Sam L. MacCork ez,

Richwood, W. Va.

Attorneys for Petitioner.

In THE

Supreme Court of the Rnited States

OCTOBER TERM 1947

EMILE C. de STUBNER, Petitioner,

vs.

UNITED CARBON COMPANY and

UNITED CARBON COMPANY, INC.

(MARYLAND), Respondents.

BRIEF IN SUPPORT OF PETITION

The Circuit Court of Appeals, as also the District Court,

gives consideration to the language of the option and testi-

mony with reference thereto in arriving at the intention

of the parties and as a justification for the conclusion

reached that the agreements were not intended to and did

not cover the field of dustless carbon black, notwithstanding

the language of the agreements and the conduct of the

parties with reference thereto.

The opinion of the C. C. A. says inter alia:

‘*But we do not find that the attorney disclosed to

the defendants information regarding said processes

and apparatus which had been entrusted to him in

confidence by the plaintiff. On the contrary, the

proof convinces us as we have shown that the plain-

tiff was working in the laboratory in the field of

pigment dispersion and was not in possession of

information which enabled the defendants to secure

13

a

14

the dustless carbon patents or to engage in the suc-

cessful manufacture of the product. In short, we

do not find that the attorney violated his profes-

sional duty to the plaintiff by accepting employment

from the defendants in a different field.’’ (Opinion,

page 745.)

In the joint and separate answer, duly verified, of the

respondents filed in the State Court (Defts.’ Ex. No. 247 in

this case) is found the following averment:

‘*Tt is true that on or about the month of December,

1933, plaintiff was brought in contact with certain

officers, agents and representatives of respondent

United Carbon Company; that said respondent was

greatly interested in the patents and processes of

the plaintiff and desired to meet the plaintiff; that

thereafter the plaintiff had conferences and corre-

spondence with said respondent’s representatives,

including its President, Oscar Nelson, its general

counsel, Osman E. Swartz, and Walter Grote of its

technical staff and possibly other representatives of

said respondent.’’

Only the U. S. 1,866,017, Defts.’ Ex. 10, issued July 5,

1932, (App. Vol. IV, page 1432) for ‘‘ Pigments and Process

of Making Same,”’ could excite this great interest because

in this patent the petitioner discloses his process for mek-

ing pigment pulps, without any addition of other substances

which might interfere with the purity of the pigment, thus

advancing the science and art of pigment dispersions, which

by conventional methods usually used dispersing agents

or materials which left the treated pigment in an impure

state, particularly in the case of carbon black.

The claims of this patent are based, inter alia, on the

disclosure :

‘<* * * and the fine precipitated form of the pig-

ment in the form and fineness produced by the pre-

cipitation in the first instance, is preserved and

—

15

maintained without the same undergoing any treat-

ment tending to destroy or alter such fineness.’

(App. Vol. IV, page 1433, right lines 71 to 79.)

‘“‘The treatment of the finely divided pigment by

water, either when ‘said pigment is produced by

precipitation from solutions, or when the pigment

is otherwise produced in finely divided form * * *.”’

(Id. 1434, right 122, 125.)

The language: ‘‘or when the pigment is otherwise pro-

duced in finely divided form’’ includes carbon black pro-

duced by combustion. The petitioner’s treatment is that

of ‘‘wetting’’ as he states in the paragraph following (Id.

page 1435 top) without the aid of any other substance ever

being employed so that wetted carbon black consisted solely

of carbon black and water but no other substance, no dis-

persing agents. ‘‘Wetting’’ is the impregnating of the sur-

faces of each of the solid particles. (App. Vol. ITI, page

1128.)

A photostatic copy was introduced as Defts.’ Ex. No. 10

and attention is called to the marking on page 3 bottom

thereon showing the emphasis placed on pigments pro-

duced otherwise than by precipitation from solutions,

It clearly appears that on November 8, 1933, the respond-

ents were interested in the treatment of carbon black by

“wetting”? for the purpose of obtaining it as granular

carbon black which must be pure, i.e., without being ad-

mixed with binders or similar agents. (Defts.’ Ex. 195,

App. Vol. ITI, pages 1051-1052.)

In said Defts.’ Ex. 247 in paragraph 4 it is further

averred :

‘Respondents say that it is true that said re-

spondent was interested in said inventions, patents

“1d processes so far as they related to the field of

pigment dispersion, and that it is true that said

respondent made some study of said inventions, pat-

_—

16

ents and processes and of the plaintiff personally

and that said respondent entered into negotiations

with the plaintiff and subsequently entered into a

temporary option agreement with plaintiff, as al-

leged in said paragraph ‘4’.’’

IT WAS THE DE STUBNER PIONEER INVENTION OF

LEAVING PIGMENTS IN THEIR PURE STATE AS

PRODUCED IN THE FIRST INSTANCE WHICH

GREATLY INTERESTED RESPONDENT,

UNITED CARBON COMPANY, AS ALSO

THE PIGMENT CONSUMING INDUSTRY

In contradistinction to conventional methods which in-

corporated by grinding pigments directly into vehicles of

of the ultimate or consumer product, always using a dis-

persing agent, de Stubner prepared the pigment separately

without any dispersing agent and before it reached an ulti-

mate dispersion medium by making intermediary disper-

sions of preliminarily, initially wetted pigments which he

wetted with a selected wetting agent, but without dispers-

ing agents. de Stubner obtained his results by controlling

the consistency of proportions of wetting agent to pure

pigment for making his pulps. Such initial, intermediary

dispersions are ex necessitate, related to ultimate disper-

sion media, as for example, wetted carbon black inclusive

of wet carbon black aggregates which finally will be dis-

persed in rubber by coaction of the ultimate dispersion

medium with the preliminarily prepared pigment of his

intermediary dispersions.

David D. Cochrane, an expert witness for respondents,

testifies :

‘<* * * but a good carbon black and rubber mix is a

dispersion.’’ (Original Tr. page 1105)

Petitioner’s pioneer invention was published as early as

March 13, 1930, in the ‘‘Paint, Oil and Chemical Review”

(Plff.’s Ex. 61) and is as follows:

we.

17

‘*Pigmented Lacquers Without Grinding Intro-

duced. A new method for incorporating pigment

without grinding in the manufacture of lacquer

enamels has been invented by Dr. E. C. de Stubner,

an engineer of Swiss descent who has been responsi-

ble for a number of important inventions in varnish

and allied fields. The underlying basis of this useful

invention consists in bringing together pulp colors

or rather pigments in a water-wet condition with

nitrocellulose in the same condition and displacing

the undesirable water in both products by dehydra-

tion methods similar to those used by the nitro-

cellulose industry.

‘“‘This product then, namely, alcohol-wet pig-

mented nitrocellulose, may readily be incorporated

into a lacquer without any grinding ever having

been done, either in the production of the pigment

or the lacquer. Furthermore, inasmuch as the

original state of subdivision of the pigment has been

maintained throughout, a dispersion in the finished

lacquer is obtained which is said to be far superior

to any made by ordinary grinding methods.

‘‘Dr. de Stubner features the point that modern

theorists state there is no such thing as grinding;

that it simply consists of properly ‘wetting’ each

pigment particle.

“This process has come into commercial being

and a concern is manufacturing ‘pigmented nitro-

cellulose paste’, a product made by dissolving the

pigmented nitrocellulose in ethyl acetate or other

suitable solvent.

‘‘A number of prominent lacquer manufacturers

have tested and are now using the new product with

marked success.

‘‘The features of the new pigmented paste which

appeal particularly to the lacquer industry are its

adaptability which is due to the elimination of

18

undesirable constituents, its speed and economy of

production, which is obtained by direct mixing with

clear lacquer and which requires only a few minutes

and finally the excellent quality of the lacquers pro-

duced as a result of the remarkable dispersion ob-

tained which gives smoothness to the film and good

adhesive and covering power.’’ (Italics ours).

This is the invention which de Stubner brought to the

respondent, United Carbon Company, and which is recog-

nized and covered by the license agreement.

ALL SUCCESSFUL CARBON BLACK AGGREGATES

ARE DISPERSIONS WHETHER SHAPED OR NOT,

WHETHER DRIED OR NOT

To prove the point we need merely quote from the opin-

ion of the C. C. A., which says:

‘‘While it is being cooled immediately following

its production, it adsorbs natural atmospheric

gases to such an extent that it sometimes occupies

only 5 per cent of its own apparent volume, the rest

consisting of adsorbed gases and also of gases which

are free to move between the particles (occluded

gases).’’ (Opinion, page 739, left.)

The Court then emphasizes why this is a dispersion as

follows:

‘(In fact carbon black when originally produced

is a sogasoid, i.e. a system wherein carbon black

particles are suspended in a gaseous state. We

might compare this sogasoid to a dispersion in that

the carbon black is in a sense dispersed in natural

gases.’’ (Id., page 740.)

The opinion then says that the production of pure carbon

black pellets must, as an essential step, remove the gases

of the original dispersion in such manner that the dispers-

ability of carbon black particles is preserved, for the opin-

19

ion says that it is the particles which constitute, when sus-

pended in a gaseous state, the original dispersion. (Page

740.)

The essential steps are all confined to the portion of the

process during which the treated particles are in the wet

state, the opinion saying that it is obviously necessary to

dry the moist pellets for finishing same. (page 744.)

This identical process is found in the report of Smith,

dated March 5, 1935, which Smith submits to United Car-

bon Company on the basis of Smith’s having witnessed the

process in actual operation. (See February 16, 1935, letter,

App. Vol. III, page 1125.)

Smith abridges petitioner’s U. S. 2,086,997 which at the

time of the Smith report was still in the application stage

under its Ser. No. 757,913. Smith’s abridgement is found

in App. Vol. III, page 1142-1143. Smith says therein that

two commercial processes had been demonstrated to him,

the basic principles of which are included in this appli-

cation, now U. S. 2,086,997.

This patent is PIff.’s Ex. 27 and is found in Vol. IV, page

1473, et seq. The title of this patent says: ‘‘Processing Pig-

ment Dispersions’’ and the first sentence says that it re-

lates to the utilization of sogasoids. The patent also shows

that it is related to U. S. 1,955,738. (Id., left line 50) which

Smith abridges in his report of March 5, 1935. (App. Vol.

III, page 1136.)

Here Smith precisely states that this patent covers the

process for preparing a water-wet pigment pulp for dis-

persion. The patent discloses the basic principle which is

included, as Smith points out, in the U. S. 2,086,997 and

discloses a process whereby from carbon black particles

the original gases are removed in such manner that the

carbon black remains pure and the original dispersability

of the particles remains preserved.

20

This patent No, 1,955,738 is found in Vol. IV, pages

1450-1453. The principle governing the preservation of

the nascent state is disclosed in these words.

«* * * and the fine precipitated form of the pig-

ment in the form and fineness produced by the

precipitation in the first instance, is preserved and

maintained without the same undergoing any treat-

ment tending substantially to destroy or alter such

fineness.’’ (Id., page 1451, left lines 60-65.)

The removal of the original gases of the original dis-

persion in a manner whereby remains preserved the origi-

nal dispersability, i.e., without adding any created dis-

persability if such a thing were possible, is disclosed in

the following words:

‘Tn carrying out this improved process I may dis-

perse carbon-black in water, preferably warm, in

order to facilitate the escape of air therefrom which

tends to cause agglomeration of the pigment particles

or contamination or discoloration of certain other

pigments such as lead pigments, etc. The air is

formed by condensation on the black pigment during

cooling in its process of manufacture. The amount

of water is governed by the quantity required to make

a sludge of the consistency of heavy cream. The

dispersion is considered complete when no more

clusters or conglomerates of pigment particles are

any longer noticeable substantially larger than those

precipitated from a fluid state such as a gas as above

indicated.’’ (Id., page 1452, left lines 8-23.)

And again this principle is found in the first step in

Claim 7 in the words:

‘«* * * dispersing the carbon-black in water in a

state of subdivision substantially the same as that

produced by precipitation of the carbon black by

the method of incomplete combustion of a suitable

inflammable gas * * *.’’ (Id., page 1453 right, lines

125-127.)

ee

21

Neville testifies that there is no dispersing agent found

in this process. (Orig. Tr., page 1391.)

We call attention to the fact that the resultant pulp or

intermediary dispersoid of petitioner’s U. S. 2,086,997

are not finished or ultimate dispersions but are prepared

pigments which is expressed by the language:

“The present invention has for its object the

utilization of sogasoids to form intermediary dis-

persions * * *.’? (Id., page 1473, left lines 21-23.)

This patent states that such a dispersoid is suitable for

processes disclosed in U. S. 1,955,738. (Id., page 1475, left,

lines 44-48.) The reason therefor is the basic principle

which we have described, supra, and which underlies also

the process (patented by Claim 3) of this patent, U. S.

2,086,997, namely, to leave unaltered the nascent state of

the pigment. While the earlier patent removes the original

gases by warm water in its liquid state the later patent

removes these gases by the vapors of liquids including

water. The process is disclosed as follows:

‘‘According to the laws of physics gases are com-

pletely miscible in and with each other. The laws

of vapors are somewhat similar to the gas laws. in

this respect and for this reason the vapors of the

pyridine in this example mix perfectly with the ad-

sorbed gas film around the carbon particles, and

when condensation of the pyridine vapors into the

liquid phase takes place the air escapes and the

liquid pyridine can reach the exposed carbon par-

ticle to completely wet it and thus forms a pulp or

intermediary dispersoid ready for conversion into

the final and ultimate end or consumer product.’’

(Id., page 1475, left lines 28-40.)

The object of this treatment (in both patents) is as stated

by Smith in his report dated March 5, 1935, to obtain ‘** * *

a more thorough ‘wetting’ that is, the impregnating of the

22

surfaces of each of the solid particles * * *.’’? (App. Vol. ITI,

page 1128[b].)

Such treated particles ex necessitate form aggregated

particles for the law of molecular attraction of surfaces is

operative.

Respondents’ witness Cochrane testifies:

‘“When water wets carbon black it pulls it to-

gether and makes it into aggregates.’’ (Original Tr.,

page 1093, bot.)

Respondents’ witness Neville corroborates Cochrane. (App.

Vol. II, page 808, last paragraph.)

The Binney and Smith Company printed the patent num-

ber of the Wiegand and Venuto patent which it owned on

the shipping containers, thereby serving notice of infringe-

ment. (Swartz, Original Transcript, p. 1127.)

Smith in his report of March 5, 1935, describes aggre-

gated particles.

He there says that the products are ‘‘unique,’’ (Vol. III,

1551, bot.) and describes their features as distinguishable

from the products offered by competing companies, that

de Stubner’s patent situation as to processed carbon blacks

from a product point of view becomes a defensive weapon.

(App. Vol. II, page 1153.) United at that time had under

commercial test several thousand pounds of extrusion ag-

gregates (Plff’s. Ex. 62) and Smith’s sole purpose for

coming to Charleston was to give to both Nelson and

de Stubner his opinion regarding any patent legal risks

involved, i.e., whether or not to expand into large scale

manufacture.

Swartz testifies to the report of Smith:

‘“‘That is a statement that was prepared by Mr.

Smith as Mr. de Stubner’s attorney, to give us a pic-

ture, not only of the then. status, but of the potenti-

—

23

alities of the de Stubner patent situation, in order

to enable us to determine whether or not we wanted

to go on with the de Stubner business.

‘“‘Mr. Stone: We ask that this paper be introduced

in evidence, the same being dated March 5, 1935.”

(Orig. Tr., page 889.)

United did go on—the uniqueness of the products was

challenged in the suit of Binney and Smith Co. v. United

Carbon Co., et al., in the United States District Court for the

Southern District of West Virginia. Judge Barksdale in

his opinion in this case held that the products were dis-

tinguishable as to degrees of purity, porosity and size.

Binney and Smith Co. v. United Carbon Co., et al., 37 Fed.

Supp. 779.

The thorough wetting of carbon black particles as stated

by Smith in the March 5, 1935, report, supra, is the result

of impregnating of the surfaces of each of the solid par-

ticles (App. Vo. III, page 1128) ; and aggregate formation

of such surface treated solid particles necessarily follows.

(Testimony of Neville, App. Vol. II, page 808.)

Exposed Surfaces Cause Particles to Adhere and

Form Proper Aggregates

The utilization of the principle of a thorough wetting of

the surfaces of the carbon particles is patented to de Stub-

ner by the grant of Claim 3 of his U. S. 2,086,997. (App.

Vol. IV, 1476.)

This claim is based on the process disclosed in the body

as follows:

““* * * the exposed carbon particle is completely

wetted.”’ (Id., page 1475, left lines 37-38.)

(2) This wetting results from displacing the adsorbed

gas film around the carbon particles as well as causing

the total air to escape. (Id., lines 34-37.) (Gases which are

_ ee

24

not adsorbed are defined by the opinion as ‘‘occluded

gases.’’ Opinion, page 739, left.)

In fact there is no sharp dividing line between the two

kinds of gases because according to the gas laws, gases

expand into each other indefinitely. The situation between

adsorbed gases and occluded gases is comparable to the

relation of the wool of a sheep to its skin or of the feathers

of a chicken to its skin, the skin representing the adsorbed

gas and the wool or feathers representing the occluded

gases, so when the skin is removed the wool or feathers

are inevitably removed also.

(3) This treatment preserves dispersability: ‘‘ * * * the

carbon black particles are dispersed in and wetted by the

condensed liquid.’’ (Id., page 1476, end of claim 3.)

Result: The finely divided character of the particles is

preserved in the pulps or the intermediary dispersoids

which are not ultimate products. (Id., page 1475, left lines

38-40.)

This process Smith witnessed early in February, 1935.

He testifies:

‘‘There was some preliminary treatment to the

pigment, I might say so as to make it what we call

an intermediate pulp, * * *.’? (App. Vol. II, page

869, top.)

Thorough “Wetting” of the Particles and the

Teegersirom Patent

Smith is architect of the Teegerstrom patent as well as

of the other ‘‘fingerprint’’ patents, the ‘‘fingerprint”’ ap-

plication and the ‘‘fingerprint’’ reissue of the Grote pat-

ent. He testifies:

‘«* * * while the substance in all of these appli-

cations were given to me by these men, the language

in each instance was my responsibility.’’ (Id., page

893, bot.)

enema

25

Smith most carefully conceals from the Court his true

understanding that ‘‘wetting’’ means surface treatment of

particles and when testifying offers his pseudo-familiarity

with this term instead of his true understanding. Smith

says:

‘“‘The term is one of general use signifying a ma-

terial or an agent which wets something.”’ (Id.,

page 890.)

Smith repeats this pseudo-familiarity, (Id., page 894.)

In the above expression Smith uses a general expression

which is virtually meaningless. He fails to say that the

“‘wetting’’ means the surface treatment of particles, as

stated in his report of March 5, 1935, to United Carbon

Co., ‘‘a more thorough ‘wetting’, that is the impregnating

of the surfaces of each of the solid particles.’’ By this

failure he makes more striking the contrast between his

testimony and the above report.

As did the opinion, so shall we address ourselves pri-

marily to the Teegerstrom patent to locate petitioner‘s

intellectual property which petitioner claims in Claim 18

of his application Ser. No. 757,469 and also in Claim 3

of his U. S. 2,086,997.

While prosecuting Claim 18, supra, Smith analyzes the

whole de Stubner patent situation in his March 5, 1935,

report, supra, and says:

““* * * a more thorough ‘wetting’, that is the im-

pregnating of the surfaces of each of the solid par-

ticles with the selected dispersion medium.”’ (App.

Vol. III, page 1128 under [b]).

Claim 18 (Id., page 1118) is directed to causing aggre-

gated particles, dispersed in liquids or in the form of a

paste to become deformed by forcing an unshaped mass of

yielding aggregate through a plurality of small apertures.

Defendants’ witness Neville testifies that particles be-

7

come aggregated when making contact between them. (App.

Vol. II, page 808, bot.)

26

Defendants’ witness Cochrane testifies:

‘“When water wets carbon black it pulls it to-

gether and makes it into aggregates.’’ (Orig. T:.,

page 1093, bot.)

The pulling it together is the process whereby the con-

tact of Neville’s testimony is made.

Petitioner, in his application Ser. No. 757,469, puts it

in these words:

‘<* * * to utilize the strength of the thin film re-

sulting from the molecular attraction exerted be-

tween the contacting surfaces of the immiscible sub-

stance * * *.’’ (Vol. III, page 1111 as the basis for

his Claim 18 [the aggregate claim] Id., page 1178.)

Smith, when preparing the claims for the Teegerstrom

patent 2,118,059 (Vol. IV, page 1497) says: ‘‘The process

of forming readily dispersible but substantially dustless

earbon black particles which comprises wetting dusty car-

bon black with substantially equal amounts by weight of

water, working the wetted mass te form a substantially

homogeneous paste in which the wetted carbon black par-

ticles are substantially uniformly distributed * * *.’’

This claim of Teegerstrom is based upon the specification

in the body of the patent where is said:

‘‘The relative proportions of liquid and solid are

preferably such as to form a paste or wet plastic

mass which may be formed into the desired form

of aggregated particles.’’ (Id., page 1496) (Empha-

sis ours.)

Smith has transferred petitioner’s invention into the

Teegerstrom patent, as will be seen from the following:

—

27

(1) Petitioner provides a mass of yielding aggregate in

the form of pastes or solids dispersed in liquids which he

forces through a plurality of small apertures. (App. Vol.

III, Claim 18 of PIff.’s Ex. 34, page 1118.)

Teegerstrom provides a mass of aggregated particles

comprising a liquid and a solid to form a paste, (App. Vol.

IV, page 1496, left lines 12-15) and forces the paste through

a plurality of pelleting openings. (Id., right lines 46 and 47.)

(2) Petitioner’s small apertures are of predetermined

size. (App. Vol. III, page 1111, first paragraph. )

Teegerstrom says: ‘‘Pellet size is controllable by the

size of the pellet openings.’’ (App. Vol. IV, page 1497, left

lines 14-15.)

(3) Petitioner is granted Claim 12 for removing water

with conditioned air. (App. Vol. IV, page 1463.) Said air

is conditioned by heating it under pressure. (Id., page 1458

right lines 100-103.) The air is heated. (Id., line 108.)

Teegerstrom dries the pellets with heated air under pres-

sure. (Opinion, page 744.)

(4) Petitioner uses heated air under pressure as a con-

trol system which permits a calculation of the time in which

all or any desired quantity of the water may be removed.

(App. Vol. IV, page 1458, right lines 117-124.)

Teegerstrom adjusts proper time for the drying step

which controls the operation throughout the entire process.

(Id., page 1497, left lines 9-12.)

(5) Petitioner’s demonstration at Bullitt Street included

“a problem which consisted of ‘Drying’ a pigment pulp of

75% water content’’ as shown by the Exhibit 25 of defend-

ants, dated August 10, 1934. (App. Vol. III, page 1070.)

Under date of November 2, 1934, petitioner received a

dryer on the screen principle. (App. Vol. V, page 1644.)

ay

On or prior to November 13, 1934, the ‘‘ Drying’’ problem

has been solved; petitioner has predluced ‘‘ Dispersions of

Carbon Black in dry and dustless form.’’ (App. Vol. ITI,

page 1105 under C.)

28

Nota bene, that the statement ‘‘on or prior to November

13, 1934’’ supra, is made because Nelson inquires as to

progress in his letter to petitioner dated November 13,

1934, (Id., page 1102) and petitioner’s reply thereto,

dated November 14, 1934 (Id., page 1103) contains the in-

formation that the ‘‘Drying’’ problem was solved.

Teegerstrom implies that it was he who solved this prob-

lem when testifying:

‘‘Our drying problem was a major problem there;

that was a major problem.’’ (Vol. II, page 770, bot.)

His problem was indeed solved by a dryer which oper-

ates on the screen principle as shown by Defts.’ Ex. 129,

(App. Vol. IV, page 1400.) But the ‘‘fingerprint’’ patent

issued to Hanson-Skoog and applied for on April 29, 1938,

which is the application date also of the ‘‘fingerprint”’

patent to Teegerstrom, shows that ‘‘the conveyor drier

comprises a screen in the form of an endless belt * * *.”

(Id., page 1504, left lines 14-15.)

Swartz testifies to Hanson’s activities. (Vol. II, page

712):

‘‘He was rather frequently at the Bullitt Street

laboratory. It was my understanding that he co-

operated with Mr. de Stubner in the installation

operation of the machinery there and I know, at least

that much * * *.’’

(6) Petitioner’s patent provides for the wetting of the

bulk (mass) by wetting the particles. (App. Vol. IV, page

1476 lines 37-39, left)

Teegerstrom claims wetting the dusty carbon black

29

(mass) by wetting the particles. (Id., page 1496 left, lines

45-46.)

(7) Petitioner’s process is based on obtaining the carbon

black particle completely wet. (Id., page 1475, left lines

37-38.)

Teegerstrom’s process is based on thorough wetting of

the particles. (Id., page 1496 left lines 45-46.)

(8) Petitioner’s process is based on the displacement

of the adsorbed gas film around the particle. His result is

a pulp (unshaped mass) or the intermediary dispersoid.

(Id., page 1475, left lines 33-40.)

Teegerstrom’s process is based on ‘‘displacing readily

the gases adsorbed on the carbon black particles.’’ (Id.,

page 1496, right lines 36-38.) Teegerstrom likewise obtains

his particles free from gases prior to shaping them into

pellets, (Id., left, lines 22-26) where he says:

‘*After the gas has been expelled, the particles are

ee

(9) Petitioner’s process is for wetting ‘‘by the con-

densed liquid’’ (Id., page 1476 left, last line of Claim 3),

which claim is based on the condensation of vapors into the

liquid phase. (Id., page 1475, left lines 34-36.)

Teegerstrom obtains wetting by ‘‘admixing the powder

and the vapor phase of the liquor, after which the vapor is

condensed and the powder thereby wetted.’’ (Id., page

1496, left, lines 6-8.)

Structure is the Conditio Sine Qua Non of the

Process for Making Proper Aggregates

Petitioner discloses in his application Ser. No. 757,469,

which is filed under date of December 14, 1934, and is in this

record as Plff.’s Ex. 34 (Vol. III, page 1109 et seq.) that

it is internal structure which is form-sustaining but yield-

30

able to stresses imposed thereon that imparts to compounds

the physical characteristics of plastics. (Id., page 1114.)

On this disclosure, inter alia, are based his Claims 7 and

18 which are found on pages 1115 and 1118 of Vol. ITI.

It is important to know that the aggregate structure

which is microscopic is already in the properly wetted

carbon black—drying does not impart structure.

Skoog informs the Court on this most important be-

havior, when testifying to pellets:

‘‘The drying itself does not change them; they

are virtually the same when they come out of the

dryer.’’ (Vol. II, page 780, bot.)

We now find petitioners invention in all of the ‘‘finger-

print’’ patents as follows:

(1) Teegerstrom uses a ‘‘wet plastic mass which may be

formed into the desired form of aggregated particles.”’

(Vol. IV, page 1496, left lines 13-15.) His pellets retain the

original ‘‘internal structure.’’ (Id., page 1495, right line 15.)

(2) Hanson-Skoog (extrusion process) use a ‘‘wet plastic

mass * * *’’ (Id., page 1503 left, lines 10-13) and their

pellets retain the original ‘‘internal structure.’’ (Id., page

1502, right, first line.)

(3) Skoog-Bradford use ‘‘a plastic mass of the dry

flocculent powder which has been wetted * * *.’’ (Id., page

1491, right lines 38-40.) They retain structure. (Id., left,

line 48.)

(4) Hanson-Skoog (spherical pellet process) use a

‘‘wetted mass of carbon black,’’ (Id., 1508, right, lines

16-17) and retain ‘‘structure.’’ (Id., page 1507, right, line

10.)

(5) Respondents’ advertisement in the trade paper,

‘India Rubber World,’’ (Vol. I, page 278) is read into the

31

record on page 280 and shows they retain structure, as

follows:

‘‘Kosmobile 66 and Dixiedensed 66’’

‘*These brands of gas black are free flowing, offer-

ing superior advantages in clean handling and reduc-

ing to minimum the possibility of flying dust, in

mixing with rubber on the mill. They are new types

of dustless carbon of irregular shape, with a strue-

ture sufficiently strong to withstand handling but of

such texture as to insure immediate disintegration

when subjected to the action of the Banbury Mill.

Besides their dustless characteristics they have ex-

cellent processing reinforcing properties for rubber

compounding and are manufactured under rigid con-

trol to assure high uniformity in physical and chem-

ical characteristics.’

Smith transfers the petitioner’s invention for the “wet

and dry” process as disclosed in petitioner’s confidential

notebook into the “fingerprint” application of Hanson-

Skoog, Ser. No. 205,139, filed April 29, 1938 (App.

Vol. IV, page 1491, end of first paragraph).

The process for using preliminarily wetted carbon black

particles to which are caused to adhere dry carbon black

particles by the function of the law of absorption, is dis-

closed in petitioner’s confidential notebook entry dated

April 11, 1938, (App., Vol. V, page 1663) where it appears

that 6% Ibs. of carbon black were wetted with % gal. of hot

water in the heated 5-gal. mixer. The third addition of dry

carbon black absorbed the water so as to become wetted

from already wetted carbon black particles as distinguished

from free water.

We now find this ‘‘wet and dry’ process in the finger-

print’? application of Hanson-Skoog. (App. Vol. IV, page

1493, left 7-12.)

32

The modus operandi of the ‘‘fingerprint’’ ‘‘wet and dry”

process is disclosed (Id., page 1492, right side, last parag.)

and states that wet spherical agglomerates are made as the

initial step. (Lines 54-58.)

Thereafter dry carbon black is caused to adhere to the

wet particles and to absorb moisture from the wet pellets.

(Id., page 1492, right, lines 70-75.)

Upon the trial petitioner was denied the right of access

to this ‘‘fingerprint’’ application. (Original Tr., page 361,

et seq.)

Grote reissue patent is another ‘‘fingerprint’’ patent.

(App. Vol. IV, page 1517.)

Smith is found again to be the transfer agent of peti-

titioner’s property rights to ‘‘wetting’’ as surface treat-

ment and hence aggregate formation, when he obtains for

Grote the reissue patent in the manner which he describes

in his testimony. (Vol. II, page 894.) Here Smith refers

again to his familiarity with the term ‘‘wetting agent.’’

He again succeeds in his concealment of his true under-

standing of ‘‘ wetting as surface treatment”’ and grafts this

upon the original Grote patent.

Smith, answering the Court’s question with reference to

petitioner’s process of his application 757,469, says ‘‘I

never saw the process demonstrated.’’ (Vol. II, page 899.)

Yet, in his report to Microid Process, Inc., dated February

3, 1939, which begins on page 1565 of App. Vol. V, Smith

states with reference to this application:

‘‘The process was tried experimentally at the Bul-

litt Street laboratory by Mr. de Stubner and appears

to have commercial possibilities in several fields,

although not now used as far as is known. The art

is close and only possible patent coverage will be

narrow. Former interviews with Examiner indi-

cate a willingness to reconsider the final rejection

33

and to allow specific claims if supported by affidavit

of Mr. de Stubner. Such amend’t and affidavit should

be prepared shortly and filed in the case.’’

We submit that the Smith report of March 5, 1935, supra,

covering ‘‘the de Stubner Patent Situation’’ (App. Vol. ITI,

page 1126 et seq.) and especially page 1128 under (b) and

page 1142 bottom and 1143 where he says: ‘‘the basic prin-

ciples * * * in both of the commercial processes which were

demonstrated by Dr. de Stubner to the writer * * *’’ when

compared with the testimony of Smith that he used no

material in the ‘‘fingerprint’’ patents which was derived

from de Stubner (Vol. IT, page 896) cannot be reconciled.

This testimony of Smith is accepted and relied upon as true

by the trial court and also affirmed by the Circuit Court of

Appeals.

The “Dry and dustless Carbon Black Dispersions” of

petitioner on or prior to November 13, 1934, and the

resultant of the Teegerstrom process are identical.

The opinion says that the causes for dustiness is the

natural atmospheric gases which are adsorbed on the car-

bon black while it is being cooled and other gases are mixed

with it which move between the particles. (Opinion, page

739, left, bot.)

The opinion says that the resultant is the original dis-

persion and goes on to say that ‘‘water when mixed with

carbon black eliminates the gases.’’ (Opinion, page 743,

right top.)

Petitioner when making the dry and dustless carbon black

dispersions (App. Vol. III, page 1105) starts with the

“original dispersion’? (sogasoid), mixes it with water to

eliminate gases and then places it in the dryer. While this

treated carbon black is being cooled in the atmosphere the

laws of condensation are operative and air at normal tem-

perature condenses wherever it finds the space. Petitioner’s

34

patent U. S. 1,965,764 which was under demonstration at

the Bullitt Street Plant says that the air is caused to bubble

through the product to be dried, thus leaving channels or

making the dried product porous. The pores are the spaces

within which the gases become condensed, i.e., being ad-

sorbed and occluded. (App. Vol. IV, page 1458, line 144.)

This product is in reality a dispersion such as the opinion

describes as a sogasoid, i.e., a system wherein carbon black

particles are suspended in a gaseous state. (Opinion, page

740, left top.)

It is for this reason that de Stubner names the resultant

of his process ‘‘Dispersions’’ of carbon black in dry and

dustless form. (Vol. III, page 1105, under c.)

The opinion says that Teegerstrom eliminates the gases

(both adsorbed and occluded) by mixing carbon black with

water and then dries the pellets with heated air under pres-

sure. The Teegerstrom patent says the heated air for

drying is forced ‘‘over and through the mass.’’ (App. Vol.

IV, page 1496, right lines 65-66.) Here we have the cause

for channels which make the dried product porous and

under such conditions the law of condensation causes air

to fill all spaces not excepting the porous exterior of the

pellet. The openings or pores in the exterior cause com-

munication of the interior pores or interstitial spaces with

the atmosphere.

We submit no difference can be pointed out between the

original dispersion which is bulky and the treated disper-

sion which is less bulky, except as to the amount of gases

retained by the treated black while it is being cooled, thus

becoming a treated dispersion.

We submit that the resultants of the operativeness of the

laws of condensation in the Teegerstrom process as well

as in petitioner’s process can not be distinguished the one

from the other. Whereas, the opinion says:

35

‘‘We believe that the processes are clearly dis-

tinguishable.’’ (Page 744, right.)

To prove the point we need merely put them both to the

test. de Stubner states that the de Stubner dry and dust-

less dispersions belong to the family of reversible colloids

and therefore disperse completely upon contact with water.

(App. Vol. IV, page 1105, last paragraph.)

Teegerstrom characterizes the resultant of his process

as being readily broken up to make the dustless particles

available for dispersion in the dispersion medium, for ex-

ample, as water. (App. Vol. IV, page 1497, right top.)

We submit that if the sogasoid of dusty carbon black is

a dispersion, then it inevitably follows that the pellets pro-

duced by the process described in Teegerstrom’s patent are

likewise dispersions.

DEVASTATING RESULT OF ERROR

The acceptance and adoption of the erroneous term of

‘“‘microscopic’’ for the correct term ‘‘macroscopic’’ as used

by petitioner in his application No. 757,469, is the apparent

cause for the conclusion reached by the Circuit Court of

Appeals in affirming the opinion of the District Court, The

C. C. A. opinion, page 744, says: °

‘*We believe the processes are clearly distinguish-

able, and to prove the point we need merely quote

from plaintiff’s language in this very application

as follows:

‘* * * the resultants of the former are usually

three dimensional microscopic bodies * * *’.”’

(Italics ours.)

The District Court in its opinion (App. Vol. I, page 149)

quotes two sentences, pages 5 and 6 of the application, and

then in its discussion of petitioner’s testimony concerning

the extrusion process says:

36

««* * * plaintiff knew it has no relation and that

his attempt on the witness stand to show otherwise

was @ deliberate fraud on the Court.’’ (App. Vol. I,

page 149.) (Italics our.)

Smith three times reads this error of microscopic instead

of macroscopic into the record, (App. Vol. II, pages 900-

(901.) when purporting to read from page 6 of Plaintiff's

Exhibit No. 34. Respondents’ witness, David D. Cochrane,

testifies from this identical file wrapper (Certified by U. §, |

Patent Office) correctly, using the term macroscopic. (Origi-

nal Tr., pages 1110 and 1112 bot.) The devastating charac-

terization of petitioner by the District Court finds no justi-

fication in this record.

We submit that the answers of respondents’ witness,

A. M. Smith, to the trial court’s inquiries concerning the

form-sustaining structure produced by the extrusion metb-

ods (App. Vol. II, page 896 et seq., and especially page

901), cannot be reconciled with the principles disclosed in

petitioner’s application Ser. number 757,469, prepared by

Smith and filed December 14, 1934, (App. Vol. III, page

1109, et seq., and especially page 1114) wherein is disclosed

the principle of the process of the invention and the me-

chanical device and apparatus for use therewith, for ob-

taining a colloidal dispersoid of an internal structure of fine

subdivisions of solid particles which is form-sustaining.

This is reflected in Claims 7 and 18 in said application.

(Id., pages 1115 and 1118.)

CONCLUSION

We submit that there is highly prejudicial error in the

decision of the Circuit Court of Appeals for the Fourth Cir-

cuit in affirming the findings of the District Court.

———————

37

First: ‘‘ * * * that there was no error in the findings of

the court below that the agreements of August 18, 1936,

were not intended to and did not cover the field of carbon

slack.’’? (Opinion, page 741.)

Second: That the plaintiff did not disclose to the defend-

ants the processes covered by their patents and that he is

4 not entitled to an assignment of the patents or to royalties

upon the defendants’ use of the processes therein described.

(Opinion, page 745.)

Third: That the plaintiff was not in possession of in-

formation which enabled the defendants to secure the dust-

less carbon black patents or to engage in the successful

manufacture of the products. (Opinion, page 745.)

We further submit that petitioner could not use, nor

could he license others to use, his inventions, processes or

discoveries, whether patented or unpatented, which related

to the treatment of carbon black or other pigments produced

by combustion or decomposition of hydrocarbon gases, pe-

troleum or petroleum products and lamp black, upon which

as a physicist he had expended money and labor during

many years, without incurring liability under his license

agreement.

We further submit that documentary evidence establishes

the fact that respondents have used, and are using, peti-

tioner’s processes as disclosed to them in his patents and

writings, in violation of the terms of the license agree-

ment; that plaintiff is entitled to have and receive under

the license agreement one-sixth of what may be determined

to be a reasonable royalty after the cancellation of the

38

license to Microid Process, Inc. (App. Vol. I, page 51)

Microid, as lessor, was to receive one-half of what wag

to be determined as a reasonable royalty. (Id., page 46 [d]),

Respectfully submitted,

fame tae, i

710 Charleston Natl. Bank Bldg,

Charleston, W. Va. F

«+ Granam C. ParntTER,

Charleston, W. Va.

Sam L. MacCork gz,

Richwood, W. Va.

Attorneys for Petitioner