Fullerton Walnut Growers' Ass'n v. Anderson-Barngrover Mfg. Co.

166 F. 443, 92 C.C.A. 295, 1908 U.S. App. LEXIS 4882

• Court: Court of Appeals for the Ninth Circuit
• Decided: December 7, 1908
• Docket: No. 1,533
• Status: Published

Opinions

GILBERT, Circuit Judge

(after stating the facts as above). The invention covered by the patent relates to the preparation of English walnuts for the market by bleaching their shells. The principal sources of these walnuts are Southern California and Southern Erance. From the evidence it appears that the French nuts are naturally clear and bright in appearance and require no bleaching, while a portion of the California product is discolored by black splotches, caused by rains, dews, fog's, sunburn, bacteria, or other causes, and unless bleached is unsalable, or can only be sold at a largely reduced price. Prior to the invention of the Farrell process, there was but one process used in California for bleaching the nuts, and that was the sulphur process. One method of this process was to place the nuts on superimposed trays, stacked in a dryhouse, and burn sulphur on the floor beneath them. Another method was to place the nuts in sawdust impregnated with sulphuric acid. Both methods were unsatisfactory. In the first, heat, generated by the burning sulphur caused the nuts to expand and open, thus permitting the sulphur fumes to affect injuriously the kernels. In the second, the sulphuric acid at times penetrated the seams, of the shells and injured the kernels. In addition to this, the bleaching by either method was not uniform. Daniel Farrell, the patentee, a walnut grower and an amateur chemist, made various experiments to discover a better process, and as the result thereof discovered one which proved highly satisfactory and successful, and went into almost instantaneous and universal use, and for which he obtained the letters patent.

The appellant earnestly contends that the process covered by the patent is devoid of any originality or invention, and that it was anticipated by prior patents, by prior printed .publications, and by prior use. Considering first the prior patents and publications, we find that the first so relied upon is that of George Lunge, of date September 8, 1885, for an invention involving “the application of ehlorid of lime for bleaching and other purposes.” It relates wholly to the bleaching of textile fabrics, and consists primarily in the use of ehlorid of lime and acetic acid. The specifications state that hydrochloric, sulphuric, or oxalic acid, when, used with ehlorid of lime, causes the evolution of free chlorin, “which acts too strongly upon the fabric, and is injurious both to the health of the workmen and the machinery.” For this reason and others, the inventor uses acetic acid in connection with the chlorid of lime. Ilis claim reads as follows:

“Increasing tuicl hastening the action of chlorid of lime and saving the usual operation of souring after the bleaching without injuring the fiber in any way by the action of acetic or formic acid, as described.”

Clearly this is a process fundamentally different from that of the Farrell patent. In the reaction which occurs under the Lunge process no free chlorin is evolved. In that fact is to be found, in the opinion of the inventor, the principal value of the process, for he points out in his specification the well-known fact that, in bleaching textile fabrics, free chlorin is destructive of the fiber. In the Farrell process, on the other hand, the nascent chlorin which is evolved is the active agent which accomplishes almost instantaneously the desired bleaching. In addition to this, the Lunge process dispenses with one of the ingredients used by Farrell, and one essential to the reaction, which his process involves, namely, sal-soda.

Reliance is especially placed upon Ironmonger’s patent of date May 7, 1872, an invention relating to the cleaning and bleaching of the shells of peanuts. In, that patent the process calls for the use of 100 gallons of water, in which are added 50 pounds of chlorid of lime and 12½ pounds of sulphuric acid. In this solution the peanuts are to remain one hour, more or less, until they are sufficiently whitened. Then they are to he washed in, clear water to remove the chlorin. It is obvious that the first step in the process has nothing to do with the bleaching further than to remove the dirt from the nuts. The bleaching process consists in the use of chlorid of lime and sulphuric acid in solution with water. The reaction which occurs is as follows:

“The acid unites with the calcium to form calcium sulphate. The hydrogen in the acid unites with the oxygen to form water, and the chlorin is released.”

A wholly different reaction takes place in the Farrell process. The acid is not added until after a reaction has taken place between the sal-soda and the chlorid of lime, whereby sodium chlorid and sodium hypo-chlorite have been produced. It is upon these products that the acid acts to release chlorin. The Ironmonger process, if applied to walnuts, would result in the deposit of calcium sulphate on the shells, involving further treatment for its removal, and would require an hour, more or less, for the bleaching operation, whereas in the Farrell process from 7 to 10 seconds is all that is required.

It is unnecessary to discuss in detail all the other patents relied upon by the appellant. The Haserirk patent of July 23, 1872, for an improvement in bleaching wool, woolen yarns, and fabrics, covers a process in which the essential bleaching clement is sulphurous acid, and in which chlorin or chlorid of lime is wholly dispensed with. The Spencer patent of date November 29. 1887, for a process for cleaning nuts, beaus, and like articles, consists of the mechanical process of using a quantity of damp sawdust to which has been added sulphuric acid, and it is not a bleaching process 'in any sense of the term.

But it is said that the process described in the appellee’s patent is a bleaching process which has been known and used for many years, and is essentially the same as that which is described in the United States Dispensatory, p. 824, by use of the solution known as the “Da-barraque solution,” which is an aqueous solution with several chlorin. compounds of sodium formerly used for bleaching textile fabrics. The solution is composed of chlorinated soda, and is formed by combining triturated chlorinated lime with a solution of sodium carbonate, in a manner described. The textile fabric was first soaked in the combined solution. Then it was removed therefrom, and dipped in an acid solution which acted upon the chemicals carried in the fiber and produced hypochlorous acid, which bleached the fiber, care being taken to avoid the release of free chlorin which would injure the fiber. In the feature last noted the process differs materially from that of Farrell, which depends wholly upon free chlorin as its bleaching agents.

It is further claimed that the appellee’s process is anticipated by a formula which was promulgated by Prof. E. W. Hilgard, of the Agricultural Department qf the University of California, about a year before the date of the Farrell invention. Certain walnut growers of Southern California, discouraged at the failure of the sulphur process to bleach their product, applied to Prof. Hilgard for assistance in their dilemma. In answer to their application he and his associates conducted a series of experiments, and, as the result thereof, published a process which it was suggested would be an improvement upon the sulphuring process then in use. It was recommended that a bleaching dip be used, in which the nuts were to be immersed for a definite time, that the bleaching agents cheapest and most readily procured were bleaching powder (also called chlorid °of lime) and bisulphite of lime, that experiments indicated that the corresponding soda compounds act more rapidly and satisfactorily, that the soda-chlorin, compound is obtainable by mixing bleaching powder with sal-soda, that the chlorid of lime or soda when used alone is objectionable in that it softens the shells and turns them to an undesirable color — but this it was suggested could be prevented by following up with a dip in the bisulphite or by light sulphuring — and that very satisfactory results had been obtained by placing the nuts in a cane or splint basket and dipping them in a solution of bleaching powder and sal-soda, after which they were removed, rinsed with a hose, and then dipped into another solution containing a small percentage of bisulphite of lime, and then finally rinsed with water, or, instead of the second dipping, the nuts were sulphured 10 or 15 minutes. It is unnecessary to consider this process further than to say that it is radically different from that of the appellee. It makes no suggestion of the use of an acid to release chlorin, and it is not different in its essentials from the process of bleaching textile fabrics that had long been in use. The evidence, moreover, indicates that the process proved a failure and was abandoned.

Upon a careful consideration of the record, we are convinced that the appellee’s process is not void for want of invention. When the solutions of chlorid of lime and 'carbonate of soda are mixed together in a common vessel, reactions take place which result in the formation of a compound solution of sodium hypochlorite and sodium chlorid. It is into this solution that the acetic or other weak acid is added. A reaction then takes place, which results in the release of nascent chlorin. It is the well-known law of gases that their power is greatest when they are nascent, and that the greatest affinity of chlorin is for hydrogen, with which it unites to form hydrochloric acid. The coloring matter adhering to the shells is of course of vegetable origin, being composed of organic matter, the elements of which are carbon, hydrogen, and oxygen. The union of the chlorin with the hydrogen breaks up the organic matter and leaves the carbon and the oxygen free to unite and form carbonic acid. It is not in the use of chlorid of lime or carbonate of soda or of a weak acid, or of all of these combined, that the appellee’s invention consists. It is in so employing these ingredients that in the final reaction chlorin gas is freely liberated in a nascent state so as almost instantly to destroy the organic matter which stains the walnut shells, and this particular combination and reaction may be sought in vain in any of the prior patents and processes known, published, or used before the date of the invention. In brief, the inventor discovered a new process of utilizing well-known laws in the production of a new and useful result.

It is contended that the patent is void for the reason that it does not contain a description of the process, nor of the manner of using it in such full, clear, concise, and exact terms as to enable a person skilled in the art to compound and use it, in that the proportions of the ingredients of the compound are not specified, nor is any method suggested for arriving at tlieir proper proportions in use. It is true that the specifications do not specify the proportions of the sal-soda and the chlorid of lime solutions. A fair interpretation of the specifications, we think, Would be that they call for a compound solution composed of equal proportions of saturated solutions of chlorid of lime and sal-soda. But the evidence is that it is not essential to the operation of the process that the proportions be equal, and that the bleaching is as well effected if either of the ingredients largely exceeds the other. The inventor was not required to specify how the process could be most economically used. It was enough if he so described it that one skilled in the art could use it. Tt may he conceded that clearer information would have been afforded if the precise proportions of each solution had been indicated, but we are not prepared to say that for want of such precise information the patent should be held void. A patent for a process is not to he held to the strictness of. specification required in a patent for a composition, and the decisions holding void applications for patents of the latter class are not necessarily applicable to process patents. We think that one skilled in the art of bleaching could, from the terms of the specification, without further information, make a compound solution such as would render the process practicable. The specification is not, we think, more indefinite or uncertain than those which were sustained in Tilghman v. Proctor, 102 U. S. 707, 26 L. Ed. 279, and Carnegie Steel Co. v. Cambria Iron Co., 185 U. S. 400, 22 Sup. Ct. 698, 46 L. Ed. 968. In the first of these cases, Mr. Justice Bradley said:

“The mixing of certain substances together, or the heating of a substance to a certain temperature, is a process. If the inode of doing it, or the apparatus in or by which it may be done, is sufficiently obvious to suggest itself to a person skilled in the particular art. it is enough, in the patent, to point out the process to be performed, without giving the supererogatory directions as to the apparatus or method to be employed.”

In the second case, Mr. Justice Brown said:

“The specification of the patent is not addressed to lawyers, or even to the public generally, but to the manufacturers of steel, and any description which is sufficient to apprise them in the language of the art of the definite feature of the invention, and to serve as a warning to others of what the patent claims as a monopoly, is sufficiently definite to sustain the patent.”

When we come to the acid which releases the bleaching agent, we find that the necessary in*formation as to proportion is afforded in the specification. It is 1 part of weak acid to 20 parts of the solution. But it is said that the term “weak acid” is indefinite, and that the appellant, which used diluted sulphuric acid, was not precluded from such use, since sulphuric acid is not a weak acid, and no standard of acidity is fixed by the term “weak acid.” But by specifically referring to the use of vinegar, the patentee has made known the standard of, acidity of the acid which will operate successfully with the solution. He declares in his specifications that he has found that, while many acids might produce the result of liberating the gas, a safe acid for the purpose is acetic acid or vinegar. In his claim he confines himself to no specific acid. The appellant has found that by the use of diluted sulphuric acid the bleaching process can be as effectually accomplished as by the use of vinegar. But it does not thereby avoid infringement. It uses a weak acid within the terms of the claims. By no fair construction of the language of the specifications can it be said that the patentee disclaimed the use of sulphuric acid. The reference therein to the injurious effect upon nuts from the use of sulphuric acid relates wholly to the prior processes of bleaching nuts. He testified that he had experimented with sulphuric acid, nitric acid, and muriatic acid, but that he preferred acetic acid on account of its harmlessness, not in the process itself, but in the incidental handling and use thereof. Obviously he was not required to experiment with all kinds of acids, and to state in his specifications what acids would and what would not be suitable for the purpose, and we think it does not extend the patent beyond its proper scope to say that it covers the use of any acid which, by chemical reaction, will release the chlorin in the bleaching solution. A strong acid would cause a violent and sudden evolution of chlorin, which would almost instantaneously be dissipated. A weak acid releases the chlorin gradually and continuously. There doubtless are acids known to chemistry which will not accomplish the reaction incident to the release of the chlorin, but the acids commonly known, such as acetic, sulphuric, muriatic, oxalic, and nitric acids, when diluted to the acidity of vinegar, may, it is shown, be successfully used in the process. In Rubber Company v. Goodyear, 9 Wall. 795, 19 L. Ed. 566, it was said:

“Patent should be construed in a liberal spirit, to sustain tlie just claims of the inventor. This principle is not to be carried so far as to exclude' what is in it, or to interpolate anything which it does not contain. But liberality, rather than strictness, should prevail where the fate of the patent is involved, and the question to be decided is whether or not the inventor shall hold or lose the fruits of his genius and his labors.”

> And in Klein v. Russell, 19 Wall. 466, 22 L. Ed. 116, it was said:

“The court should proceed in a liberal spirit so as to sustain the patent and the construction claimed by the patentee himself, if this can be done consistently with the language he has employed.”

Applying these settled rules of construction to the claims of the patent here in question, we find in the record sufficient to sustain the invention of the patentee, and the infringement thereof as found by the trial court.

It is earnestly contended that by virtue of the proceedings in the Patent Office upon the application for the patent, and by the admissions therein made by the attorney for the patentee, the appellee’s invention, if it be an invention, is limited to the coincident immersion of the nuts with the addition of the weak acid to the bleaching solution. It appears from the file wrapper that the patent was at first rejected by the examiner for want of invention, and that, in the argument which ensued, the attorney for the applicant insistently pointed to the fact that the applicant’s invention differed from all prior bleaching processes in that the nuts are plunged into the bleaching solution at the very instant of adding a weak acid thereto, and again the attorney made the same contention on appeal to the examiners in chief, who also rejected the application. But it appears that on appeal to the Commissioner the ruling of the examiners in chief was reversed, and the, patent was allowed as to both claims. The question arises whether those claims are to be limited in their scope by the arguments or admissions made by the patentee’s attorney in the proceedings in the Patent Office. It is true that where an applicant presents to the Patent Office a claim, which is rejected as being anticipated by prior patents or publications, and in consequence thereof he amends his claim so as to avoid such anticipation, he may not thereafter contend that the claims are to receive the construction to which they would have been entitled if such limitation or restriction had not been inserted. But in the present case there was no amendment or restriction of the claims. They were allowed in the terms in which they were originally formulated. Said the court in Goodyear Dental Vulcanite Co. v. Davis, 102 U. S. 222, 227, 26 L. Ed. 149:

“We do not mean to be understood as asserting that any correspondence between the applicant for a patent and the Commissioner of Patents can be allowed to enlarge, dimmish, or vary the language of a patent afterwards issued. Undoubtedly a patent, like any other written instrument, is to be interpreted by its own terms.”

And in Westinghouse v. Boyden Power Brake Co., 170 U. S. 582, 18 Sup. Ct. 728, 42 L. Ed. 1136, the court, after alluding to the fact that in case of ambiguity it may be allowable to consult the application and file wrapper, “and possibly written communications which may throw light upon claims that are ambiguous or capable of different constructions,” said:

“But where the claims allowed are not uncertain or ambiguous, the courts should be slow to permit their construction of the patent actually granted and delivered to be affected or controlled by alleged interlocutions between the of-' fleers in. the Patent Office and the claimant.”

So in Palmer Pneumatic Tire Co. v. Lozier (C. C.) 84 Fed. 659, 665, Judge Eurton said:

“There is no estoppel growing out of the opinion entertained by the Patent Office as to the legal effect of the language employed by applicants, either in their specification, or claims, nor as to the scope and meaning of earlier patents. It is undoubtedly the duty of the Patent Office to allow or disallow applications as it may deem the matter patentable or not, and for this purpose to inquire into the state of the art and compare with patents supposed to interfere. But we are not aware that the conclusions of the Patent Office operate as an estoppel upon the patentees, except in cases where the applicant is required to abandon some part of his claim or accept alterations narrowing their scope. Neither are the courts any more concluded by a construction of the claim presented by a patentee which removes a supposed conflict with an existing patent than they would be by an interpretation of a patent whereby it was distinguished from the old art. That some claim has been rejected, or that some amendment has been accepted which was imposed as a condition to the allowance of a claim, is essential to an estoppel on a patentee.”

In the light of these authorities, it is clear that the claims of the patent, unambiguous as they are, are to be interpreted according to the meaning of their own terms, and are not to be controlled or limited by any argument or representation made in the Patent Office by the applicant’s attorney as to the scope of the invention or the features wherein it differs from the prior art. The force of these considerations becomes apparent when it is considered that in the actual operation of the appellee’s invention it is not practicable to plunge the nuts into the bleaching solution at the very instant of the addition of the acid. • Even if the protection of the patent is to be limited to coincident immersion, the term should receive a reasonable interpretation, and should be held to mean an immersion of the nuts in the bleaching solution practically at the time when the acid is added, and while it continues to accomplish the result of releasing the nascent chlorin. It is shown in the evidence that acetic acid accomplishes that result for a period of 20 minutes, during which time, in the practical operation of the process, crates of nuts are consecutively dipped and allowed to remain for the space of a few seconds. Any immersion of the nuts during the space of time during which that reaction is taking place, it is reasonable to say, is an immersion coincident with the addition of the acid.

It is contended that, conceding the validity of the patent and the infringement thereof by the appellant, there was a total failure of proof of profits realized by the latter from the use of the process, and that the decree should have awarded nominal damages only. The accounting was had before a special master. Voluminous testimony was taken. It was shown that at first the appellant used the patented process under a license and paid a royalty therefor, but that during the years 1901, 1902, 1903, and.1904 it deliberately used it without license until enjoined by a decree of the court. The findings of the master upon the evidence are, in brief, that at the beginning: of the annual nut harvest the nuts are generally bright, but toward the latter part of the season their shells are so darkened and blackened by rains and from other causes as to be unsalable; that prior to the date of the invention tliere was but one method of bleaching nuts, and that was the sulphur process; that there are certain classes of nuts which this process will not bleach at all, nuts damaged by rains, disease, or other causes so as to become spotted; that the proportion of such nuts is at least 10 per cent, of the total crop; that the patented process will successfully treat them, and convert them into first-class nuts; that if they arc treated by the sulphur process they will be classed as culls, and will bring in the market but 3 ½ cents a pound; that by the patented process the nuts handled by the appellant were brought into the market as first-class nuts; that the difference between what they actually brought as first-class nuts and what they would have brought if they had been sold as culls constituted the savings or profits to the appellant from the use of the patented process; and that the books and records of the appellant showed the quantity of nuts actually handled during the time of the infringement, and the actual cost of treating and handling the same. Every reasonable presumption is in favor of a master’s report based on oral testimony, and it is not to be set aside or modified unless there clearly appears to have been error or mistake. Tilglunan v. Proctor, 125 U. S. 136, 149, 8 Sup. Ct. 894, 34 L. Ed. 664; Callaghan v. Myers, 128 U. S. 666, 9 Sup. Ct. 177, 32 L. Ed. 547; Camden v. Stuart, 144 U. S. 118, 12 Sup. Ct. 585, 36 L. Ed. 363. In Walker on Patents, § 725, it is said:

“The advantage which the defendant derived from using the complainant’s invention, over what ho conhl derive' from using any other process or tiling which was known prior to that invention, constitutes the profits which the complainant is entitled to recover.”

Of course, it cannot be ascertained with absolute certainty what was the exact sum total of the profits realized by the appellant from the use of the patented process. The evidence fully sustains the reasonableness of the conclusion of the master that at least 10 per cent, of the appellant’s crop must necessarily have been sold as culls but for the use of the appellee’s invention. The total amount of the appellant’s crop during the years of infringement was definitely shown by its own books. The market prices during those years were ascertained. Here were definite figures upon which to calculate the profits. The law requires no more than a reasonable degree of certainty in such a case. Suffolk Co. v. Hayden, 3 Wall. 315, 320, 18 L. Ed. 76; Doten v. City of Boston, 138 Fed. 406, 70 C. C. A. 308; Bigelow Carpet Co. v. Dobson (C. C.) 10 Fed. 386.

But it is said that if any profits were realized they accrued to the walnut growers who composed llxe Fullerton Walnut Growers’ Association, the appellant herein; that the appellant owns no walnut trees, and acquires no nuts of its own, but that it received from the stockholders of the association the nuts which they produce, prepares them for the market, ships them, collects the proceeds, deducts the expense, and turns over the profits to the growers. This argument suggests a point which was not raised in the court below, and which is not specifically embraced in any assignment of error. The record shows that the appellant is a corporation. Individual growers of nuts are its stockholders. They turn in their nuts to the corporation to be treated and sold. The nuts are all pul into one common stock. The appellant treats the nuts by the patented process, then sells them in the market through brokers. Out of the proceeds it deducts the cost of treatment and of sale, and then distributes among the stockholders the net proceeds in the form of dividends. Until a dividend is declared and the profits are distributed, they belong to and are the property of the corporation. The corporation was the infringer. We see no reason for holding that the appellant should not be held liable as would any other corporation be held for the profits so realized. It may be, as suggested in the briefs, that the appellant possesses no property out of which the judgment may be satisfied, but that is not ground for holding that it is not in law liable to the appellee.

The decree is affirmed.-