Esso Research & Engineering Co. v. Kahn & Company, Inc.

379 F. Supp. 205, 183 U.S.P.Q. (BNA) 582, 1974 U.S. Dist. LEXIS 8751
CourtDistrict Court, D. Connecticut
DecidedApril 30, 1974
DocketCiv. 12140
StatusPublished
Cited by7 cases

This text of 379 F. Supp. 205 (Esso Research & Engineering Co. v. Kahn & Company, Inc.) is published on Counsel Stack Legal Research, covering District Court, D. Connecticut primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Esso Research & Engineering Co. v. Kahn & Company, Inc., 379 F. Supp. 205, 183 U.S.P.Q. (BNA) 582, 1974 U.S. Dist. LEXIS 8751 (D. Conn. 1974).

Opinion

MEMORANDUM OF DECISION

BLUMEiNFELD, District Judge.

Esso Research and Engineering, plaintiff in thi¿ action, is a wholly owned and controlled Í affiliate of the Exxon Corporation (formerly known as Standard Oil of New Jersey, Inc.). Plaintiff is incorporated under the laws of the State of Delaware and has its principal place of business in New Jersey. It is engaged in research and engineering work for Exxon an I its parent’s other affiliated companies. It does not manufacture or sell any ! products to third parties. Plaintiff does, however, have a combined patent and licensing department which licenses technology originating or controlled by the company.

Defendant Kahn and Company, Inc. is a corporation located in Wethersfield, Connecticut, where it maintains its main offices and also has manufacturing facilities. Kahn and Company, Inc. is engaged in the manufacture and sale of various commercial and institutional driers and gas separators as well as other test equipment and measuring devices.

Defendant Chandler-Evans, Inc. is incorporated under the laws of the State of Delaware and maintains a regular and established place of business in West Hartford, Connecticut, where it operates a Kahn and Company heaterless drier for the removal of moisture from air.

Jurisdiction

Plaintiff, as assignee of Charles W. Skarstrom, is the owner of U.S. Letters Patent 2,944,627 for Method And Apparatus For Fractionating Gaseous Mixtures by Adsorption. Plaintiff alleges that defendant Kahn and Company, Inc. has induced infringement of plaintiff’s patent by its manufacture and sale of infringing devices to defendant Chandler-Evans, Inc., and has itself infringed and contributorily infringed said patent by its manufacture and sale of heater-less driers within the jurisdiction of this Court.

This action arises under 35 U.S.C. §§ 271 and 281. This Court has jurisdiction under 28 U.S.C. § 1338(a). The Court is a proper venue for this action by virtue of 28 U.S.C. § 1400 (b).

I.

Preliminary Analysis

Entitled “A Method And Apparatus For Fractionating Gaseous Mixtures by Adsorption,” the Skarstrom U.S. Patent No. 2,944,627 describes a process for the separation of one gas from a mixture of gases through selective adsorption by performing a combination of specific designated steps in a particular sequence and manner under defined conditions. Defendants admit that they perform each and every step described and defined in the Skarstrom patent in the *207 same sequence and manner and admit that they obtain the same result as specified in claims, 9, 12, 14, 16, 17, 24 and 34. These are method claims. Both defendants Kahn and Company, Inc. and Chandler-Evans, Inc. have entered into a stipulation stating that if said claims are valid in accordance with the patent laws then the claims are infringed by heaterless driers manufactured and sold by defendants.

Defendants challenge the validity of the claims in suit on the ground that they are invalid because they do not satisfy the requirements of non-obviousness as set forth in 35 U.S.C. § 103, see note 4, infra, in that the subject matter of the Skarstrom invention “and the prior art are such that the subject matter as a-whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.”

History

The invention of the patent in suit was made in September 1956 at plaintiff’s laboratories. At the time of the invention various methods for the separation of one gas from another were well known and long in existence.

The specification of the ’627 patent commences with a general description of the invention as being one which describes a method and apparatus for removing one gas from a mixture of gases. It then goes on to describe that “one specific adaptation of the invention relates to the drying of a gaseous mixture, such as air by removal of water vapor.” Although the patent in suit is in no way limited solely to the removal of water vapor from air the patentee selected this example to describe and explain the operation of his invention. 1

Dr. Skarstrom’s Development

Dr. Charles W. Skarstrom, a graduate chemist from Columbia University and the University of Virginia, was employed by the plaintiff for approximately 27 years prior to his retirement in 1970. During that time he had been studying and devising ways to separate gases' and measure the separations accomplished thereby. In 1956, immediately prior to the invention in suit, Dr. Skarstrom was working on a water analyzer and also on an analyzer to determine the composition of bottled gas during its manufacture. Both of these projects required dry air, and, consequently, Dr. Skarstrom had conventional, commercially available driers in his laboratory at the Bayway Refinery in Linden, New Jersey.

These particular driers were of the then common, everyday type of commercial drier, known as the heat regenerating drier, operating on twelve-hour cycles. They removed water from the air by passing moisture-laden air through an enclosed bed of desiccant at high pressure where the desiccant adsorbed the moisture; the dry product air, still at high pressure, continued on through a pipe leading from the top of the bed. Although this drier had two beds of desiccants, and was referred to as a two-bed drier, it is more accurately described as a pair of driers, each a mirror image of the other, each being used alternately to remove water vapor from separate feeds of moist air, and so connected to each other as to provide reciprocally a portion of the dried product gas to each other. Before the time that one bed became saturated with water, the stream of air to be dried was switched to a feed pipe leading to the other bed. Meanwhile, heat was used to evaporate the moisture out of the satu *208 rated desiccant. The most common method employed a heater within the desiccant itself.

Dr, . Skari strom’s unit had such internal heaters. During regeneration of a saturated desiccant bed the heaters, in conjunction with a counterflow of some of the dny product gas called “purge gas,” would remove the accumulated moisture from the desiccant bed leaving it ready fór a subsequent adsorption operation. Thus, while one bed was adsorbing, the other one was being desorbed.

One day in 1956 when Dr. Skarstrom was conducting his experiments on analyzers, th.4 heater in one of the drier beds burned out, thereby incapacitating the unit’s normal operation. This incident led Dr. Skarstrom to decide that he would attempt to operate the drier without a healer.

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379 F. Supp. 205, 183 U.S.P.Q. (BNA) 582, 1974 U.S. Dist. LEXIS 8751, Counsel Stack Legal Research, https://law.counselstack.com/opinion/esso-research-engineering-co-v-kahn-company-inc-ctd-1974.