88
INDUSTRIAL AND ENGINEERING CHEMISTRY
in the mercerized cottons are indicated by the upward displacement of the “knee” of curves in Figure 3 and by the greater intercepts obtained upon extrapolation of the flattened portions of these curves to zero time. Sisson and Saner (8) observed that a crystallite-to-amorphous conversion may occur during mercerization. It is possible, therefore, that new amorphous cellulose may be formed as a result of incomplete reversion to the original amorphous-crystallite distribution. An enhanced chemical reactivity of the crystalline component of cotton cellulose would explain the progressive divergence of curves for mercerized and unmercerized cottons in Figure 3. After 4 hours of acid digestion about 80 per cent of the unmercerized and about 70 per cent of the mercerized cotton appear to remain unhydrolyzed, yet the smaller residue breaks down the more rapidly. This suggests that mercerization increases the susceptibility of native crystallites to acid attack. X-ray evidence has shown that mercerization alters the native crystalline pattern and produces slightly expanded crystals. These lower density crystals and the new amorphous cellulose formed as a result of the process would account for the higher specific volume of mercerized cotton as compared with native fiber (1). Measurements b y the present method indicate that tension retards or inhibits the development of maximum effects. This is shown by both the various hydrolysis curves and the data in Tables I and 11. Apparently, tension opposes the tendency of the fibers and yarns to shorten and restrains the lateral swelling of fibers. I n other words, the separation of anhydroglucose chains in a direction perpendicular to the fiber axis is limited; as a result, a higher density, more acid-resistant, and less hygroscopic product is obtained than in free swelling. One effect of tensions of the order employed may be to restrict the formation of amorphous cellulose, but there may be others.
Vol. 34, No. 1
The ratios in Table I are derived from K values which are directly proportional to initial breakdown velocities. A survey b y Neale (5) suggests that the measurable properties of cellulose, except strength and cuprammonium viscosity, are increased b y mercerization in about the ratio 1.5 to 1. The present values do not differ greatly from this more common ratio. A fair correlation between K values and moisture-regain percentages is evident from the data in Table 11. This indicat’es a parallelism between the entrance of water vapor and hydrolytic liquid into the fiber, and may mean that hydrolytic attack involves mainly the surfaces and capillaries where moisture is adsorbed. There are reasons for supposing that continuity of fiber structure is supplied by amorphous links between the discontinuous crystallites (2, 3, 4 ) . The present observations suggest that the amorphous links are augmented b y mercerization. The dependent properties may be increased in proportion. A more complete characterization of different celluloses by means of the hydrolysis-oxidation method is in progress.
Literature Cited (1) Davidson, G. F., J . Tertile Inst., 18, 175T (1927). (2) Frey-Wyssling, A., “Submikrosoopisohe Morphologie”, Berlin, Gebruder Borntraeger, 1938. (3) Kratky, O., Silk and Rayon, 13, 480, 571, 634 (1939). (4) Mark, H., J . Phys. Chem., 44, 764 (1940). (5) Neale, S. M., J. SOC.Chem. Ind., 50, 177T (1931). (6) Nickerson, R. F., IND. ENQ.CHEM.,ANAL.ED., 13, 423 (1941). (7) Nickerson, R. F., IND. ENQ.CHEM.,33, 1022 (1941). (8) Sisson, W. A., and Saner, W. R., J. Phys. Chem., 45, 717 (1941). PRESENTED before t h e Division of Cellulose Chemistry at t h e lOlst Meeting of the AMERICAN CHEMICAL SOCIETY, S t . Louis, Mo. Contribution X X X I V from t h e Cotton Research Foundation Fellowahip, Mellon Institute.
Patent Liti ation in 1940 an NELSON LITTELL Hammond & Littell, New York, N. Y.
T
HE last two years in the field of litigation concerning patents and their uses have been characterized by numerous suits and prosecutions under the antitrust laws to stop alleged improper uses of patents for the control of prices and competition. The effect of this litigation has been to clarify somewhat the border line between lawful and unlawful exercises of patent rights under the antitrust laws, but i t may be said that there still remain many conflicts between existing “court law” and the attitude of the government departments charged with the enforcement of the antitrust laws as to what may be done lawfully in the exploitation of patent rights. In the case of Ethyl Gasoline Corporation v . United States of America (309 U. S. 436) the Ethyl Gasoline Corporation had made license agreements with most of the principal producers of gasoline for the production of gasoline treated with tetraethyllead under its various patents. It had also made license contracts with approximately 11,000 of 12,000 jobbers handling gasoline throughout the United States, the effect of which was to license the jobbers to sell “Ethyl” gasoline purchased from licensed refiners and to subject the jobber to possible cancellation of his license contract in the event of violation of the terms of the license contract. While the jobbers’ licenses were not shown to have been canceled because
of failure to maintain the policies and prices of the refiners, the effect of the jobbers’ license contracts was to give the Ethyl Gasoline Corporation the right to cancel the contracts for failure to observe any conditions specified therein. The Court held that the license to the refiners to produce “Ethyl” gasoline had exhausted the patent rights, that the license to the jobbers to sell the gasoline which had been produced by the refiners under the license was beyond the scope of the patent monopoly, and that the jobbers’ licenses were therefore a n illegal extension of the monopoly. The Court, however, set forth (page 456) the criteria which distinguish between the proper and improper uses of a patent under the antitrust laws in the following language: The patent law confers on the patentee a limited monopoly, the right or power to exclude all others from manufacturing, using or selling his invention (Rev. Stat. See. 4884, 35 USCA Sec. 40). The extent of that right, is limited by the definition of his invention, as its boundaries are marked by the specifications and claims of the patent (Motion Picture Patents Company u. Universal Film hIanufacturing Company 243 US 502, 510, 61 L. ed 871, 876, 37 S Ct 416, LRA1917E 1187, Ann Cas 1918A 959). He may grant licenses to make, use or vend, restricted in point of space or time, or with any other restriction upon the exercise
January, 1942
I N D U S T R I A L ‘ A N D E N G I N E E R I N G C H E MI S TRY
of the granted privilege, save only that by attaching a condition to his license he may not enlarge his monopoly and thus acquire some other which the statute and the patent together did not give. I n the suit of United States u. Masonite Corporation et al. (40 Fed. Supp. 852) the complaint alleged that the Masonite Corporation illegally controlled prices on its “hardboard” product covered b y U. S. Patent 1,663,505. The patent had previously been held valid and infringed, and the Masonite Corporation in the sale of its hardboard products made under the patent had appointed several agents, such as the Celotex Corporation, Certain-Teed Products Corporation, etc., who in written agency agreements had agreed to sell the patented hardboard a t the minimum selling prices and under the terms and conditions set by the Masonite Corporation and to accept a selling commission on the sales made. Where shipments of hardboard were made to the agents on consignment, these shipments were t o be held subject to the control of the Masonite Corporation in case the agency should subsequently be terminated. The Government contended that the various agency agreements were not true agency agreements, and that they were illegal under the antitrust laws because they regulated the prices at which the hardboard products were to be sold by the various agents. The Court held that the Masonite patent having been previously sustained gave to the Masonite Corporation a monopoly on the products covered thereby and theright to control the sale of this product in the hands of its agents. It held that the agency agreements were bona fide agency agreements, and that the Masonite Corporation had not parted with title t o the wallboard it sold until the wallboard was delivered t o the customer purchasing the same. The Court said (pages 858-9) : With respect to the regulation of prices, there is no contention by the Government that the Masonite Corporation does more than determine the price at which its own agents may sell its own hardboard products; it is not even suggested. that there is or has been any attempt by the Masonite Corporation, or by any of the agents, to influence or control the price after title has once passed. * * * * The question of monopoly raised by the Government is fully answered by the General Electric decision and requires little consideration. The validity of the Mason patent No. 1,663,505 was sustained by the Circuit Court of Appeals in the Third Circuit on July 6, 1933. * * * * Whatever monopoly the Masonite Corporation has in the production and sale of hardboard is derived from the ownership of this Mason patent, and I find nothing in the evidence to show that it has in any respect misused any of its patent rights or violated any of the provisions of the Sherman or Clayton antitrust laws.
In the case of United States v. The Univis Lens Company, Inc., et al. (51 U. S. P. Q. 113) the Univis Corporation held several patents on bifocal and trifocal lens blanks and also on the finished lenses made from these blanks. It had licensed The Univis Lens Company to manufacture the rough lens blank, and had licensed a large number of wholesalers and finishing retailers t o grind the lens blank according t o the user’s prescription. On this phase of the litigation, the Court held (pages 117-19) : Hence it must be concluded that what the Lens Company manufactures and sells to the wholesalers or the finishing retailers is not a lens. Thus the patent monopoly is not exhausted by the manufacturing o erations of the Lens Com any. The monopoly is not exhaustecfuntil the article is compyete according to the *** terms of the several patents. The situation is not pne in which the patentee seeks to control an unpatented element of a combination and so differs from Carbice Cor oration u. American Patents Developments Corporation, 283 U. 27 (8 USPQ 211). Nor does it fall within the condemnation of Ethyl Gasoline Corporation w . United States? 309 U. S. 436 (44USPQ 614). Here the owner of the patents neither manu-
E.
89
factures nor sells a roduct covered by the patents. The rough lens blank made by tge Lens Company as alicensee is not a standard article of commerce; The Univis Corporation, by its system of licenses to initial and final manufacturers, has established its own system of manufacture and seeks the reward of the invention defined in the patents and not in any dissociated element in the patents. * * c The right to complete the manufacture of an article falls within the control of dominion of the patents of the Univis Corporation. As has been indicated, up to now there has been no resale violation, and since the holder of a patent may exclude all others from making, using or selling the patented invention, he is likewise free to desigqte those who may exercise any or all rights conferred by the patent. Thus he may arbitrarily carve his monopoly into as many segments as he elects by giving territorial rights to some, manufacturing rights to others, and the right of use t o still others. He may establish his own royalties. He may fix prices at which manufacturing licensees are to sell their products and limit the sale thereof t o designated purchasers. * * * * Nor does the owner of a patent violate the Sherman Antitrust Law by fixing prices in license agreements under which articles may be manufactured and sold by the licensee. * * * * I n United States u. General Electric Company, 272 U. S. 476, at 491, Mr. Chief Justice Taft quoting from Bement v. National Harrow Company, said: The very object of these laws is monopoly, and the rule is, with few exceptions, that any conditions which are not in their very nature illegal with regard to this kind of property, imposed by the patentee and agreed to by the licensee for the right t o manufacture or use or sell the article, will be upheld by the courts. The fact that the conditions in the oontracts keep up the monopoly or fix prices does not render them illegal.
* **
Thus it must be concluded that price fixing agreements in respect to patented articles or methods, m the Government contends, are not illegal per se. So that up to the time that there is no resale of the patented product, the agreements between licensor and licensee cover a field of valid control. It is only after that oint is reached that price fixing, under a patent license system, gecomes unlawful. While the decisions in the Masonite and the Univis Lens cases are decisions of the District Courts, they follow previous decisions of the Supreme Court, and unless and until the Supreme Court reverses its decisions as t o the rights of a patentee in cases such as United States v. Ethyl Gasoline Corporation and United States v. General Electric Company, these decisions of the District Courts, defining proper and improper uses of patents under the antitrust laws, appear to be proper interpretations of any conflict between these two sets of laws. The Government has appealed the Masonite case to the Supreme Court, but i t has not yet been argued.
Adjudications on Validity This period has likewise witnessed a further extension of the strict construction doctrine outlined in previous decisiohs of the Supreme Court with reference to the degree of inventive genius necessary to sustain the claim to a patentable invention where the invention is admittedly novel and has utility. In the case of The Cuno Engineering Corporation v. The Automatic Devices Corporation, decided November 10, 1941, the Supreme Court was considering the Mead patent (No. 1,736,544) covering the thermostatically controlled cigar or cigaret lighter now commonly used on automobiles. The novelty of the invention consisted in so arranging a thermostat that, when the heating element of the lighter had been heated to the desired degree, the thermostat would release the lighter so that i t could be propelled b y springs out of contact with the heating circuit to prevent overheating. The patent had been previously sustained in the Circuit Court of Appeals for the Second Circuit and had been held invalid in the Circuit Court of Appeals for the Seventh Circuit, and t h e case came hefore the Supreme Court on the conflict of decisions in the Second and Seventh Circuits. The Circuit Court of Appeals for the Second Circuit in sustaining the patent had held (117 Fed (2d) 361) on pages 363-4 of the decision:
90
INDUSTRIAL A N D ENGINEERING CHEMISTRY
Complicated machines, which are in the day’s work for skilled mechanics, will appear magic t o a tyro who may find nothing but the obvious in a combination that has failed of discovery for a decade after the need arose. It would indeed be absurd t o rate this as a major invention, yet it did bring t o what appears to be its final form a contrivance which had become a standard fixture in motor cars; and upon every detail of these as much human ingenuity has been expended as perhaps on any machine. Just such trifles often he1 sales; in the severe competition of motor car industry the pergcting of even a triflmg furnishing like this may be the object of study and experiment. The art itself shows that this has been true here, as we have already seen; and the best test of what persons of routine ingenuity can do is what they have done. Perhaps,, given the same technological stage of development, the same inventions are sure t o appear and at about the same time, patents or no patents; but it is certainly unwarranted t o assume that the small ones need less stimulus than the great ones; rather the contrary, for minds of the first order are more apt t o express themselves without other inducement than the work itself. If patents are to go to those who contribute new appliances that are beyond the limited imagination of the ordinary skilled person this invention seems to us t o merit a patent. B u t the Supreme Court held that in view of the previous use of thermostatic controls on other heating circuits, such as electric irons, it did not involve invention to use a thermostatic control on cigaret lighters for automobiles, and t h a t the application of the knowledge existing in the other fields to the manufacture of an automobile cigaret lighter did not involve invention. The language of the Supreme Court lays down the following test of invention: That is to say the new device, however useful it may be, must reveal the flash of creative genius, not merely the skill of the calling. If it fails, it has not established its right t o a private grant on the public domain. While the courts have long required an act of invention as distinguished from the ordinary skill of the calling to sustain a patent, they have not generally applied this test. The standard by which the “flash of creative genius” is to be measured is rather nebulous and depends largely on the skill and experience of the court applying it. If this test is applied strictly in all instances, it would rule out of the patentable field all those inventions which are the result of exploratory research and would sustain only those resulting from a rare flash of pure genius. A court unversed in the mysteries of chemistry dealing with a chemical invention might well sustain a patent to a simple step as revealing the flash of creative genius, while the step to many chemists would appear commonplace. The same court, dealing with a patent in a mechanical field with which it is more familiar, might strike down a patent which had solved a problem long existing in the industry because it did not appear that the solution had revealed the flash of creative genius. If we accept the definition of one of the greatest inventors, Edison, that genius is nine tenths hard work, the test indeed becomes difficult to apply. While some standard of invention must be applied, i t is questionable whether the subjective test of the present Supreme Court, requiring a “flash of creative genius” or the familiar rule that invention is a question of fact to be determined objectively from the circumstances, will better promote “the progress of science and the useful arts”, according t o the Constitution and the Patent Statutes. If the lower courts, taking their cue from the Supreme Court, should similarly strike down patents which have led to commercial developments not previously existing, then inventors and industry alike may rightfully become discouraged in putting money and time into development work and new ventures. Without the prospect of valid patent protection many of the specialty businesses now successfully operating would never have existed. The record of patents before the Supreme Court over the past five years is not encouraging to those people who have
Vol. 34, No.
P
put money into the development of products or processea covered by patents, and in the event the trend toward adverse construction of patents and adverse application of the patent laws continues, it may become necessary for Congress t o clarify the public policy involved so t h a t the progress of science and useful arts may in fact be promoted according t o the provisions of the Constitution. Such clarifications of law t o correct adverse court decisions have been asked for and made in other situations in the past. The principal need in the patent field is a better assurance that patents, when granted, will be enforced by the courts or will be refused enforcement only because of plainly compelling circumstances.
Correction of Patents by Reissue I n the case of Sontag Chain Stores Company v. National N u t Company (310 U. 8.281) Reissue Patent 20,024 for a nut treating apparatus had been originally taken out with four narrow claims, and within two years an application for reissue was filed and the patent reissued with seventeen claims. The machine charged to infringe had been acquired on April 1, 1935, between the date of issue of the original patent and the date of application for the reissue. The machine did not infringe any of the four claims of the original patent but did infringe some of the claims of the reissue patent. The Supreme Court affirmed the decision of the lower Court and held that a broadened reissue within the two year period was valid and that the enlarged claims covered the defendant’s machine, but it held (pages 293-4) :
It is now accepted doctrine that “the claim of a specific device or combination, and an omission t o claim other devices or combinations apparent on the face of the patent, are, in law, a dedication to the public of that which is not claimed. . . This legal effect of the patent cannot be revoked unless the patentee surrenders it and proves that the specification was framed by real inadvertence, Also, that a reissue with enlarged accident, or mistake.. claims, not applied for within the two years after the original, is void in the absence of extraordinary exculpating circumstances. In the case under consideration the patentee might have included in the application for the original patent, claims broad enough to embrace petitioner’s accused machine, but did not. the public to understand” that whatever was not Thjs claime
