Appeal from the District Court of the United States for the Northern District of Illinois, Eastern Division; Wm. H. Holly, Judge.
Before EVANS and MAJOR, Circuit Judges, and LINDLEY, District Judge.
Plaintiff brought suit on two patents, one to Carbon P. Dubbs, No. 1,392,629, issued October 4, 1921, and the other, No. 1,537,593, issued to Gustav Egloff, May 12, 1925.
Defendant challenged the validity of both patents and denied infringement of either patent. It also vigorously contends that plaintiff's conduct necessitated a denial of all relief by a court of equity because of Dubbs' unethical conduct. It invokes the plaintiff's unclean hands as its third defense.
The court held the Dubbs patent to be valid, but not infringed, and declared the Egloff patent, invalid. As to the defense of unclean hands, the court reached the conclusion that "there was no conduct on the part of plaintiff proven in this case which should bar plaintiff from maintaining this action," etc.
While defendant insists that the Dubbs patent is invalid and that plaintiff was guilty of subornation of perjury in the interference suit which resulted in the allowance of the Dubbs patent, we will discuss only the question of infringement of the Dubbs patent. On this issue as to this patent we agree with the District Court. It is unnecessary therefore to decide the other two questions, so elaborately and ably argued by opposing counsel.
The District Court made careful and complete findings upon each issue and filed an excellent opinion on this vital question of noninfringement. We set forth in the margin extracts from this opinion.*fn1
Counsel and the lower court both give more serious consideration to the Dubbs patent than to the Egloff patent. The latter might be described as an improvement over the former. The Dubbs patent is represented by nine process claims. Speaking from the application, it may be said:
"This invention relates to improvements in processes of converting hydrocarbons and refers more particularly to an improved form of cracking process of the continuous type. Among the salient objects of the invention are to provide a process in which the oil is continuously fed through the cracking zone and thence through the vapor zone, and a portion of the generated vapors condensed and returned to the inlet side of the cracking zone for further treatment; to provide a process of the character above referred to in which the carbon containing residue is continuously removed from the cracking zone while the reflux condensate is returned to the cracking zone for further treatment substantially free from carbon; to provide a process which permits of the apparatus being operated for an extended period without the necessity of cleaning and in which that part of the system containing the precipitated carbon, is free from subjection to any excessive heat; to provide a process in which the reflux condensate is continuously removed from the refluxing condensing apparatus and returned to the inlet side of the system; to provide a process in which the vapors not initially condensed are finally caused to pass through a single passage for a secondary condensing action and in general to provide an improved process and also a novel apparatus of the character referred to."
Claim 7 is a typical one, and reads:
"7. A process of cracking oil consisting in continuously passing a stream of oil through a series of tubes seated in a cracking zone where the oil is heated to the cracking temperature but substantial vaporization prevented, and thence to an enlarged vapor chamber where vaporization takes place, removing the vapors from said chamber, subjecting them to an initial condenser where a portion of the vapors are condensed, subjecting the uncondensed portion of the vapors to a final condensation, returning the condensate from said initial condensation to the inlet side of the cracking tubes and continuously drawing off the residue from the vapor chamber and preventing it from returning to the cracking zone and maintaining a pressure on the oil during treatment."
The so-called "cracking process" as applied to the gasoline production art was old when Dubbs entered the field. The chemists in the college laboratories had long previously made the discovery that heat applied to oil, crude and refined, resulted in the molecules' cracking. Out of this heating of the oils ultimately came gasoline. This fact information was old and well known in the trade engaged in gas production.
Likewise, and we here more nearly approach the art in which Dubbs worked, there had been variously devised apparatus to commercially practice that which had been taught in the chemist's laboratory. As in many instances there was a giant step from the teachings of the laboratory to the production of gasoline by cracking on a commercial basis. It was a step so necessary and yet hard to take, where theory was converted into the practical, where a scientific discovery became a usable commercial process.
The need for gasoline was great. Yet there was a maximum price beyond which the producer could hardly go. The production of more gas from the given amount of crude oil was desirable, but only if the price at which it was produced made its use possible. The task therefore was to devise a means whereby more gasoline could be produced by the cracking process and the cost thereof kept down through production on a large scale basis. Large were the inducements for success and numerous were the operators in the field. Many different kinds of apparatus were devised and many were in use. Success was a relative term. The fact significant to us is that the field was far from a virgin one when Dubbs entered. It was more completely occupied when Egloff approached it, viewed it, and then entered it.
The practice common to all was to use large retainers, apply heat as economically as possible and keep the oil continuously moving in pipes of sizes, shape, turns, etc., as the designer deemed wisest.
The District Court described the first commercially successful process devised by Dr. Burton in 1912 so ...