This is a bill by the Dovan Chemical Corporation against the Corona Cord Tire Company, to enjoin infringement of a patent issued to Morris L. Weiss, assignor of the Dovan Chemical Corporation. The District Court
The patent in suit relates to the vulcanization of rubber. Vulcanizing consists in mixing a small amount of sulphur with rubber and subjecting the mixture to heat for a period of time, during which a chemical combination of the rubber and sulphur takes place and commercial rubber is made. The patentee recites that the object of his invention is to "improve rubber compounds so that the finished product shall be of superior quality and so that the time required for vulcanization shall be greatly reduced over that ordinarily required for such a purpose. It is known that when certain organic substances are added to the rubber mix during the compounding, a catalytic or similar action is produced which causes the rubber or similar gum to unite or react more rapidly and thoroughly with sulphur or other vulcanizing agents." The patentee continues:
"I have discovered that disubstituted guanidines, particularly diphenylguanidine, is particularly effective for this purpose." (This substance is indicated by the formula given in the patent.)
He says further:
"I am aware that triphenylguanidine has been suggested, and probably used to some extent, as an accelerator
"I have found that diphenylguanidine is much more powerful and efficacious as an accelerator in vulcanization than triphenylguanidine. For example, in the vulcanization of hard rubber articles the use of diphenylguanidine not only hastens the vulcanizating action but results in a final product much superior in texture, strength, durability and aging qualities over that when the triphenylguanidine is used."
The patentee makes a short reference to a formula by which he produces the rubber mix, in which he says:
"The rubber may be compounded in the following proportions: 50 parts by weight of new rubber, 45.5 parts by weight of zinc oxide, 3.5 parts by weight of sulphur, 1 part by weight of diphenylguanidine. These are mixed together in any suitable way, such as by milling, and then vulcanized or cured in the usual molds or otherwise under heat corresponding to a steam pressure of about 40 lbs. per square inch. This vulcanizing temperature should be continued until the compound is suitably vulcanized, which requires from 10 to 20 minutes depending upon the shape and size of the articles being vulcanized."
The patent contains twelve claims. Those mainly relied on are: the fourth, for "The process of treating rubber or similar materials which comprises combining with the rubber compound diphenylguanidine"; the eighth, for "The process of treating rubber or similar materials, which comprises combining with the rubber compound a vulcanizing agent and diphenylguanidine"; and the twelfth, for "A vulcanized compound of rubber or similar material combined with a vulcanizing agent and diphenylguanidine."
Vulcanizing is old and well known. Its present high state of development represents an evolution of about 80
It has been long known that a "cure" can be hastened by mixing with the ingredients a small quantity of what
The patentee in his specifications speaks of triphenylguanidine and compares its operation as an accelerator with that guanidine, the utility of which as an accelerator he claims to have discovered, called diphenylguanidine. Guanidines are a group of organic substances which have become prominent and important in this quest for useful accelerators. The monophenylguanidine and the diphenylguanidine and the triphenylguanidine are closely related chemically. Their long names, used to indicate the variation in the component elements, have been shortened so that it is usual to refer to diphenylguanidine by letters, as "D.P.G.," and the triphenylguanidine as "T.P.G."
So closely do the chemical compositions of these two resemble each other that the petitioner contends that the patent is invalid because the utility of D.P.G. as an accelerator was plainly indicated by general chemical knowledge and did not involve patentable discovery after T.P.G. had proven to be a good one for this purpose. But we can not agree with this view. The catalytic action
The respondent attempts to show that the resulting improvement in the rubber product by the use of diphenylguanidine was something different from that in the use of other accelerators. The good results of the use of diphenylguanidine are chiefly or wholly due to its greater activity and the lessened time of the cure. The expert evidence seems to show that T.P.G. as an accelerator develops the same desirable qualities, set forth on behalf of respondent, in the vulcanized rubber as does D.P.G., except that the cure of the latter is more rapid with its to be expected advantages. Moreover, claims of peculiar usefulness of D.P.G. in other than its "activity" and speed as an accelerator, even if proven, could not in any degree affect the issue in this case. If employment of D.P.G. as a useful accelerator was a discovery by Weiss, prior to anyone else, Weiss, or his assignee, is entitled to all the advantages that flow from that increased activity or from any other quality in its use as such. Roberts v. Ryer, 91 U.S. 150, 157; Stow v. Chicago, 104 U.S. 547, 550; Lovell Mfg. Co. v. Cary, 147 U.S. 623, 634.
It does not, on the other hand, give Weiss any more right to appropriate D.P.G. as an accelerator because he may have elaborated in his specifications other advantages from its use than if he had not mentioned them. Nor, on the other hand, does it minimize or affect the priority of completed discovery by some one else before Weiss that the prior discoverer may not have perceived and stated all the advantages of an earlier use of D.P.G. as an accelerator.
Judge Hough, of the Second Circuit, truly said, therefore, that this patent meant, condensed in one sentence: "I claim the use of D.P.G. as an accelerator, because I
The patent in suit was applied for November 12, 1921, and was granted March 28, 1922. Weiss had referred in the specifications of this patent to another patent of his which was applied for July 2, 1921, and granted July 11, 1922. This latter patent was for a process for making D.P.G. in large or commercial quantities. In the application for that patent, the patentee pointed out that before his process was discovered D.P.G. could not be made except in small quantities for chemical research because the cost was prohibitive. The validity of the Weiss patent for a process in making diphenylguanidine is not attacked. The new patented process by reason of the lessened cost has resulted in the very great use of D.P.G. for commercial purposes and has been very profitable. But the purpose of securing the patent in suit and maintaining its validity is more ambitious. It is not to protect and preserve the new process already being safely enjoyed, but it is to prevent the use of D.P.G. as an accelerator, however made by any process that may be subsequently discovered. It is to enlarge a monopoly of D.P.G. as an accelerator, and is thus in effect to discourage effort to find other and cheaper means of making it. What we have to decide here is not the priority of discovery of the cheap process of making the accelerator D.P.G., which it is conceded Weiss invented, but whether he was the first person to discover the efficacy of D.P.G. as an accelerator, made by any process, cheap or costly.
The issues and the evidence in this case can not be considered and discussed without reference to a paper read by Dr. George Kratz, a rubber chemist, at the Philadelphia meeting of the American Chemical Society, between the 2nd and the 6th of September, 1919. It was entitled "The Action of Certain Organic Accelerators in the Vulcanization of Rubber," and was a review of the comparative excellence of a number of well-known and used accelerators, as well as that of D.P.G. with T.P.G., in which he found D.P.G. to be very much more active than T.P.G. Then under an experimental part he described the kinds of rubber used, the proportions of rubber and sulphur in the mixture, and the manner in which the accelerator was incorporated and the method of vulcanization. He said:
"The rubber used was good quality, first latex, pale crepe, and the same lot was employed in all mixtures. All mixtures were made under standard conditions; the average time of each batch on the mill was 17.5 min. The same proportion of rubber and sulphur — 92.5 parts rubber, and 7.5 parts sulphur — was employed in each instance, but the amount of accelerator was varied, according to the conditions of the experiment.
"All the accelerators soluble in alcohol were dissolved in the smallest quantity of this liquid and introduced into the rubber in solution. Those not soluble — and this applied to the anhydroformaldehyde bodies only — were
"Table 1. — RELATIVE ACTIVITIES — THIOUREA SERIES. "Parts required to Equal one Part Aniline. "Aniline .................................... 1.000 Urea ....................................... 0.250 Thiourea ................................... 0.300 Monophenylthiourea ......................... 0.450 Diphenylthiourea ........................... 0.850 Monophenylguanidine (a) .................... 0.075 Diphenylguanidine (Sym.) ................... 0.075 Triphenylguanidine ......................... 0.500"
The activities of the various substances were compared in the mixture previously mentioned — 92.5 parts of rubber and 7.5 parts of sulphur — taking as a standard the effect obtained with one part of aniline, vulcanized for 90 min. at 148° C. The amounts of various substances in the urea series required to effect the same degree of vulcanization as obtained with one part of aniline are shown in Table 1.
The paper thus shows that the activity and superiority of D.P.G. as an accelerator over T.P.G. is approximately as 7 is to 1.
In the answer to the bill in this case, the Kratz paper was set up as a defense, but although read before September 6th, 1919, it was not published until April, 1920.
Under § 4886, Revised Statutes, a person who claims to have invented any patentable improvement, is not to be denied a patent because of any printed publication subsequent to his discovery, unless there was publication or public use or sale more than two years prior to his application. Kratz's article was not printed until less
The main and only issue here is divided, by reason of the evidence and the lines of argument pursued, into two parts. The first is the effect of that part of it devoted to Weiss' discovery and his reduction to practice. The second is that part devoted to Kratz's discovery and his reduction to practice.
First. It is contended by the petitioner that the file wrapper and evidence show, that the patent was secured by false evidence and is not entitled to the presumption of validity which ordinarily accompanies the grant. The examiner in the Patent Office three times rejected the Weiss application, the third time by a reference to the Kratz paper. The hearing on that reference was exparte. The third rejection was followed by acquiescence by the examiner because of two affidavits, one by Weiss and one by his fellow chemist Daniels, who claimed to have been with him at the time in the laboratory of the Republic Rubber Company of Youngstown. In these final affidavits, Weiss had said that D.P.G. was produced and actually used "in the vulcanization of rubber goods" during the early part of the year 1919, and Daniels said, "These tests were also carried out in the compounding laboratory for the various departments of the Republic Rubber Company at Youngstown, Ohio, and the accelerator proved to be highly efficient in the actual vulcanization of rubber goods, such as hose, tires, belts, valves and other mechanical goods." It now appears, without contradiction, that the only rubber Weiss made during the early part of the year 1919 from D.P.G. was test slabs of rubber in which D.P.G. was the accelerator, and
Then it is claimed that the reference to the Kratz paper, which was not attacked by the applicant for its insufficiency as a reference under § 4886 of the Revised Statutes, should be treated as equivalent to a prior patent, the priority of which could only be overcome by evidence eliminating all reasonable doubt. The Barbed Wire Patent, 143 U.S. 275; Deering v. Winona Harvester Works, 155 U.S. 286, 300; Clark Thread Company v. Willimantic Linen Company, 140 U.S. 481, 489. But the Kratz paper was not a prior patent, and while it may be that other circumstances such as a reference to a publication made before the application for the patent may have the effect to require the same convincing proof of earlier discovery to avoid its effect (Westinghouse, etc. Co. v. Catskill, etc. Co., 121 Fed. 831, 834; New England Motor Co. v. Sturtevant Co., 150 Fed. 131, 137; Wendell v. American Laundry Machinery Co., 248 Fed. 698, 700), we do not think that the mere failure to invite the attention of the examiner to the defect of the reference under § 4886, Revised Statutes, calls for the strict rule of proof
It is also claimed that because the trial court in this cause found, after hearing the witnesses, the weight to be with the petitioner and against Weiss, assignor of respondent, its conclusions of fact, except for manifest error, are to be treated as unassailable. Adamson v. Gilliland, 242 U.S. 350, 353; Davis v. Schwartz, 155 U.S. 631; Kimberly v. Arms, 129 U.S. 512; Tilghman v. Proctor, 125 U.S. 136, 149; and Mason v. United States, 260 U.S. 545, 556. We do not think that this rule applies in the case before us, at least to its full extent, first, for the reason that the Circuit Court of Appeals, having considered all the evidence upon which the trial judge reached his conclusion, declined to approve of his findings, and second, because in the National Aniline & Chemical Co. case, which is in conflict with the case here, the trial judge reached a different conclusion on the same issue and the same evidence which we have here. Thomson Spot Welder Co. v. Ford Motor Co., 265 U.S. 445, 447. We think, therefore, that the respondent is entitled under these conditions to retain a presumption of validity for his patent in the consideration of the case before us. This brings us then to the evidence which Weiss adduces in support of his first discovery of D.P.G. as an accelerator.
Morris L. Weiss received a degree in chemistry from the Cooper Union of New York City late in 1917, and attended a course of chemical study in the Polytechnic of Brooklyn. He entered the employ of the Republic Rubber Company of Youngstown, Ohio, in October, 1917. That company manufactured rubber articles largely from shoddy or reclaimed rubber. It was seeking to find an improved accelerator in T.P.G. and was building a plant
Number X 2034 Made for Accelerator tests — E 50 D.P.G. 1 Sulphur 4 Zinc 43 M.G.O. 2 ___ 100 Cure 20/30 Stretch 14 1/2 Strength 3000 Set 1/2 Date 2.10.19
As it appears now, the date is February 10, 1919. Weiss does not deny that the first figure of the date has been changed, but says that it was probably changed because it
Then, it is said he did not claim discovery until his application for this patent in November, 1921, while in an application for employment as a chemist at another rubber company in March, 1920, he did claim credit for the new process in commercially making D.P.G., but he attributed its importance to the revelation of the Kratz paper. His explanation is that he then supposed that accelerators were not patentable and he was absorbed in cheapening the production of D.P.G.
Other circumstances are detailed at length in the brief of counsel to show that Weiss' real knowledge of the use of D.P.G. as an accelerator was prompted by Kratz's paper and could not be independent discovery on his part before his hearing of and reading it. But after full consideration of all the doubt-giving circumstances, we do not think that the attack on Weiss's proof of February 10, 1919, as the date when he first discovered by a completed
Second. Kratz's discovery. — Dr. Kratz had been engaged in the chemistry of rubber and in its manufacture for more than seven years. He read his paper on D.P.G. and other accelerators in September, 1919. He had been employed as a chemist with the Diamond and Goodrich Companies, and, subsequently, with the Norwalk Tire and Rubber Co. of Connecticut, for several years, and after April, 1917, with the Falls Rubber Company, of Cuyahoga Falls, near Akron, Ohio. He had directed his efforts to the subject of vulcanization almost exclusively and was intimately familiar with the commercial practice therein. His first work with accelerators was as research chemist in 1913. On April 1, 1914, he went with the Norwalk Company in the capacity of chemist, and in April, 1917, he became chief chemist of the Falls Rubber Company.
In 1916, while with the Norwalk Company, Kratz prepared D.P.G. and demonstrated its utility as a rubber accelerator by making test slabs of vulcanized or cured rubber with its use. Every time that he produced such a slab he recorded his test in cards which he left with the Norwalk Company, and kept a duplicate of his own. By these tests he arrived at figures representing the degree of superiority of D.P.G. over T.P.G. and other known accelerators, so that he could determine exactly how much D.P.G. it would be necessary to use to produce the same accelerating effect as would be produced by a larger amount of T.P.G., or of other accelerators, in the same time. This work was known to, and was participated in by, his associate in the Norwalk Company, his immediate superior and the chief chemist of the Company, Dr. Russell,
"The following formula was used to try out the activity of various substances more or less closely related to sulphocarbaninide:
White Para .......................... 100 Zinc oxide .......................... 100 Sulphur ............................. 5
"The following effects were recorded and, in cases where an acceleration was produced, the amounts required to give a cure in one hour equal to the cure produced by 3% of S-Carb, were as follows [in the first column]:
| [As shown in | Chemical Society | Paper, Sept., 1919 "Aniline ............... 3.50% | 3.5 Di phenyl thio urea .... 3.0% | 2.975 Mono phenyl thio urea .. 1.5% | 1.575 Thio urea .............. 1.0% | 1.050 Tri phenyl guanidine ... 1.75% | 1.750 Di phenyl guanidine .... 0.25% | 0.262 Urea ................... 0.33%" | 0.875]
These results were confirmed by Kratz at the Falls Rubber Company in 1918, and 1919, and were reported
These values were determined by Kratz in some eight or nine tests, in 1916, with each of the substances named, for which test slabs were made in each instance, and the series was extended until the desired result was obtained. The first substance is aniline and the second is thio (diphenylthiourea). These substances were generally known and widely used as accelerators and therefore were used as standards of comparison. They show that Kratz's tests taught him in 1916 that D.P.G. was seven times as strong and as active as T.P.G. The report to the Norwalk Company also shows two different formulas by which Kratz made his own D.P.G. in 1916.
In the fall of 1917, when Kratz was chief chemist of the Falls Company, he received a special order for 1,000 inner tubes for automobile tires. In filling three hundred tubes of this order of 1,000 tubes, which were made under Kratz's personal supervision — for he had then become chief chemist of the Falls Company — he used D.P.G. as an accelerator.
A little later, in 1918 and 1919, Kratz conducted at the Falls plant a series of tests with D.P.G. closely paralleling the series of tests which he had made in 1916 at the Norwalk plant and confirming those already reported as above. At Norwalk he had used mostly zinc oxide as part of the rubber mix, and he desired to verify the results obtained in tests of the same accelerators in other compounds of rubber with other than zinc oxide. All this was part of the preparation of his paper on accelerators to be read before the 1919 meeting of the American Chemical Society. The year before, he had attended the 1918 meeting of the Society expecting to hear the subject discussed, but nothing was said, and so he and his assistant,
The only lack of corroboration of Kratz and the only challenge to his testimony of fact in this case is in reference to his account of sending to a customer the 300 inner tubes for automobile tires accelerated by D.P.G. He says that they were sent to the purchaser whose name he gives and that they proved to be satisfactory, as he knew by having tagged them and having received approval of the whole lot by the purchaser. He says that this was a special order; that he had at the time a small supply of D.P.G. which he himself had made; that these 300 tubes exhausted his supply, and that in filling the remainder another accelerator was used. This sale and the use of D.P.G. as an accelerator took place in August, 1917, as shown by the memoranda that Kratz produces. The record of the shipment of the 1,000 tubes, the memorandum shipping order by Kratz and the O.K. by the President of the Falls Company are introduced.
Kratz says he did not tell anyone of his use of D.P.G. in these 300 tubes. This is urged by respondent as a reason for discrediting it. Were this an isolated instance not taken out of the history of all of Kratz's relation to accelerators and to D.P.G., it might reasonably give rise to such question. But the undoubted fact that Kratz had demonstrated the utility of D.P.G. in his eight or nine tests in 1916 at Norwalk, and the corroboration of Dr. Russell as to his work there, and the memorandum which
Kratz was not seeking a patent. He inferred, with reason, that D.P.G. would not make a successful business accelerator because of its then cost. He is wholly disinterested pecuniarily in the result of this case. The fact that he is the only witness is not fatal or any reason for denying the weight of his testimony in connection with other circumstances. Reed v. Cutter, 1 Story, 590, Fed. Cas. No. 11,645, 20 Fed. Cas. 435; Coffin v. Ogden, 18 Wall. 120; Egbert v. Lippmann, 104 U.S. 333.
But even if we ignore this evidence of Kratz's actual use of D.P.G. in these rubber inner tubes which were sold, what he did at Norwalk, supported by the evidence of Dr. Russell, his chief, and by the indubitable records that are not challenged, leaves no doubt in our minds that he did discover in 1916 the strength of D.P.G. as an accelerator as compared with the then known accelerators, and that he then demonstrated it by a reduction of it to practice in production of cured or vulcanized rubber.
This constitutes priority in this case. It was not followed by commercial use thereafter, because of the then cost of D.P.G. But this patent is for the mere discovery and application in the making of rubber of a particular accelerator. It was the fact that it would work with great activity as an accelerator that was the discovery, and
It is said that these tests of Kratz were mere abandoned laboratory experiments. There was no abandonment in the sense that Kratz had given up what he was seeking for in demonstrating a new and effective accelerator in D.P.G. If he had been applying for a patent for the discovery, he clearly could have maintained proof of a reduction to practice. A process is reduced to practice when it is successfully performed. A machine is reduced to practice when it is assembled, adjusted and used. A manufacture is reduced to practice when it is completely manufactured. A composition of matter is reduced to practice when it is completely composed. Walker on Patents, § 141a. Hunter v. Stikeman, 13 App. D.C. 214, 226; Mason v. Hepburn, 13 App. D.C. 86, 92; Lindemeyr v. Hoffman, 18 App. D.C. 1, 5; Roe v. Hanson, 19 App. D.C. 559, 564.
Nor were the tests of Kratz abandoned laboratory experiments. If so, then the cure by Weiss, tested in February, 1919, was of the same character and was not of itself a reduction to use. Weiss showed his production of vulcanized rubber with D.P.G. in February, 1919, only by a so-called laboratory experiment. He demonstrated the value of D.P.G. as an accelerator by exactly the same kind of experiment as that which Kratz had used two years before. Weiss founded his claim on the cured slab of rubber which had been vulcanized with D.P.G., and this Kratz had done two years earlier with slabs of the same kind and composition deposited in the same way in a platen mold.
It is a mistake to assume that reduction to use must necessarily be a commercial use. If Kratz discovered and completed, as we are convinced that he did, the first use of D.P.G. as an accelerator in making vulcanized rubber, he does not lose his right to use this discovery when he chooses to do so, for scientific purposes or purposes of publication, because he does not subsequently sell the rubber thus vulcanized, or use his discovery in trade, or does not apply for a patent for it. It is not an abandoned experiment because he confines his use of the rubber thus produced to his laboratory or to his lecture room. It is doubtless true that Kratz, by his course in respect to his discovery as to the use of D.P.G., has abandoned any claim as against the public for a patent, but that is a very different thing from saying that it
The conclusion we reach then is that, so far as this record shows, the first discovery that D.P.G. was a useful accelerator of the vulcanization of rubber was made by George Kratz and not by Weiss.
We come then to the question of the validity of Claims 1, 5 and 9 of the patent, which seek to appropriate to the patentee the process of treating rubber by combining with the rubber compound "a disubstituted guanidine." Now the class of disubstituted guanidines includes not only D.P.G. but all other derivatives of guanidine in which two of the hydrogen atoms of the guanidine nucleus have been substituted by other groups. The fact that disubstituted guanidines have been used as accelerators appeared in an article published by one Du Bose, July 15, 1919, a fact which would defeat the claims applied for November 24, 1921. Moreover, the experts show that there are between fifty and one hundred substances which answer this description, of which there is quite a number that are not accelerators at all. Weiss could certainly not claim the entire group of such compounds. He makes no showing that there is any general quality common to disubstituted guanidines which makes them all effective as accelerators. Claims for their exclusive use cannot therefore be sustained. This is shown by the decision of this Court in the Incandescent Lamp Patent, 159 U.S. 465, where the Court said, at page 475:
"If, as before observed, there were some general quality, running through the whole fibrous and textile kingdom, which distinguished it from every other, and gave it a peculiar fitness for the particular purpose, the man who discovered such quality might justly be entitled to a patent; but that is not the case here."