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ing to 40-60” C. This oxidized the hydroxylamine to nitric acid, and the ammonia was determined by making the mixture basic, distilling into a measured quantity of standard acid, and back-titrating.
Separation and Purification of Reaction Products
At the end of the refluxing period in the experiments described, the reaction mixtures consisted of two layers, an upper crude fatty acid layer and a lower crude hydroxylamine acid sulfate layer. Attempts to obtain normal hydroxylamine sulfate directly from the reaction of 0.5 mole of sulfuric acid with 1 mole of nitroparaffin always resulted in less than 50 per cent conversion of the nitroparaffin to fatty acid, leaving the salt in the form of hydroxylamine acid sulfate. Several methods were used for separating the products from one another. Separation of the layers by means of a separatory funnel was not satisfactory, since each layer was saturated with the other component. Seeding the mixture with a crystal of hydroxylamine acid sulfate and filtering, using a fritted glass funnel, gave somewhat better results. Still better separations were obtained by extracting with ligroin. By repeated extractions all of the fatty acid was removed from the mixture, but the method was not the most desirable because it contaminated the fatty acid with ligroin. The most satisfactory separation was made by vacuum distillation. The fatty acid was distilled from the mixture a t a pressure of not more than 10 mm. of mercury, and the temperature of the residue was not taken above 140” C. This gave nearly complete separation. After the separation by any of these methods each product was purified. The fatty acid was simply and easily purified by rectification. Since hydroxylamine acid sulfate is very hygroscopic, it was converted to the normal sulfate by one of the following methods: (a) The crude material was dissolved in water and the excess acid neutralized with calcium carbonate or calcium hydroxide. When the mixture reacted basic to methyl orange it was filtered, the precipitate was washed with water, and the filtrate and washings were evaporated. Successive crops of crystals were filtered off until the last of the filtrate had evaporated. (b) The acid
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sulfate was treated with about five times its weight of 95 per cent ethanol. This threw out a white precipitate of the normal sulfate which, after filtering and washing with several portions of alcohol, was quite pure. A considerable amount of hydroxylamine sulfate remained in the alcohol. In either case the salt was recrystallized from hat water, giving pure hydroxylamine sulfate. ‘
Acknowledgment Thanks are hereby extended to the Commercial Solvents Corporation for defraying the expenses of this investigation and for furnishing the nitroparaffins used.
Literature Cited (1) Bamberger, E., and Rust, E., Ber., 35,45 (1902). (2) Donath, J., Ibid., 10,771 (1877). (3) Gabriel, S.,and Koppe, M., Ibid., 19, 1145 (1886). (4) Geuther, A.,Ibid., 7, 1620 (1874). (5) Haas, H. B., Vanderbilt, B. M., and Hodge, E. B., U. S. Patent 1,967,667(July 24, 1934), IND.ENQ.CHEM.,28, 339 (1936); Haas, H. B.,and Patterson, J. A.,Ibid., 30,67 (1938); Hass, H. B., and Hodge, E. B., U. S. Patent 2,071,122(Feb. 16, 1937). (6) Henry, L., Bull. Acad. r o y . Belg., 36,iii, 149 (1898); Rec. trav. chim., 17, 399 (1898). (7) Junell, R.,Arkiw. Kemi, Mineral. Geol., B11, No. 30 (1934). (8) Mel’nikov, N. N., J. Gen. Chem. (U.S. S. R.),4,1061 (1934). (9) Meyer, Victor, Ann., 171,53 (1874). (10) Meyer, Victor, and Locher, J., Zbid., 180, 163 (1876); Ber., 8, 219 (1875). (11) Meyer, Victor, and Wurster, C., Ber., 6, 1168 (1873). and Isacescu, D. A., BuZ. SOC.Chim. Romania. (12) Nenitzescu, C. D., 14,53 (1932). (13) Preibisch, R.. J. prakt. Chem., I21 7. 480 (1873): 8. 309 (1874). (14) Scott, W. W.,“Standard Methods of Chemical Analysis," 4 h ed., Vol. I, p. 352, New York, D.Van Nostrand Co., 1927. (15) Werner, H., Jena. Z. Nuturw., 10,70 (1875). (16) Worstall, R. A.,Am. Chem. J.,21,218 (1899). (17)Ibid., 22, I64 (1899). (18) Zublin, J., Ber., 10,2083 (1877). RIUCEIVIUD July 7, 1938. Presented by H. B. Hass a t the 7th National Organic Chemistry Symposium of the American Chemical Society, Richmond, Va., December 28 t o 30, 1937, under the title “Syntheses from Natural Gas Hydrocarbons.” This article contains material abstracted from the doctoral dissertation of 5. B. Lippincott.
Patent Litigation in 1938 NELSON LITTELL Hammond & Littell, New York, N. Y.
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0 REVIEW of patent litigation for the year 1938 can hope to cover more than a few of the outstanding decisions which are of general importance or which indicate general trends in the field. From the records contained in the Oficial Gazette of the United States Patent O$ce, 239 patents were adjudicated in the Federal Courts between November 1,1937, and November 1, 1938. Of this number, 92 were held valid and infringed, and 147 were held invalid. When it is remembered that the idea of monopoly is essentially abhorrent to the common law and that it is only by virtue of strict compliance with the patent statutes that one is able to secure a monopoly in the form of Letters Patent for invention, the number of adjudicated patents which are sustained represents a fair percentage of success in the attempts on behalf of the public to secure and sustain the patent monopoly. As only about one per cent of the patents granted are involved in litigation, it can be stated khat only
those patents as to which there is serious doubt of validity or infringement are ever passed upon by the courts. Any system of administering justice in a field so complicated as that involved in the weighing of questions of inventions over prior progress in the field of science can, at most, hope only to do a rough justice, and it is believed that the present system works admirably to this effect. When only 38 per cent of the adjudicated patents are upheld, it cannot be said that the patent system holds out too great a reward to the inventive genius of the country. It should not be forgotten in the antimonopoly agitation that patents are often the most important asset of the individual or the small business in struggling against the advantages, resources, and established position of the bigger competitor. Any legislation designed still further to limit and restrict the patent monopoly will probably take more away from the public, the individual inventors, and small business than it can hope to take away from the larger business enter-
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prises. In many instances the larger business enterprises can thrive without the patent monopoly, and it is often only by virtue of the patent monopoly that an individual can start in business or that a small business enterprise has any opportunity to survive. The following cases in which decisions were handed down during 1938, we believe, are fairly illustrative of the trend of decisions and of the elucidation of some of the important points of patent law which were made during the year.
Licensing The patent infringement suit which received most publicity was probably the case of General Talking Pictures Corporation v. Western Electric Company, Inc., et al., originally decided by the Supreme Court on May 2, 1938, by a decision of Justice Butler, with Justice Black dissenting (82 L. Ed. 843). A petition for rehearing was granted on May 31, 1938, and a second decision affirming the original decision was rendered on November 21, 1938. In this case the Western Electric Company had given The American Transformer Company a nonexclusive license under the patents in suit to manufacture and sell patented amplifiers for radio amateur, experimental, and broadcast reception only. The American Transformer Company affixed a notice to the amplifiers sold by it stating that the amplifiers were licensed only for radio amateur, experimental, and broadcast reception. But it sold the amplifiers to the General Talking Pictures Corporation for commercial use in motion picture theaters, a field which the patent owners had reserved for themselves. The General Talking Pictures Corporation contended that the licensed sale of the amplifiers gave the right t o use them in all fields and that the restrictive notices were ineffective once the amplifiers had been sold in the ordinary channels of commerce. Justice Black thought that this contention should prevail, and that to sustain a patentee’s right to restrict the use to which a patented product could be put would give an undue extension of the monopoly. The majority of the Court held otherwise, however, saying in the original opinion:
Petitioner puts its first question in affirmative form: “The
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Company v. Good ear, 9 Wall. 788, 799, 800; Gamewall FireAlarm Telegraph eompany v. Brooklyn, 14 Fed. 255). So far as appears, its legality has never been questioned. * * * As the restriction was legal and the amplifiers were made and sold outside the scope of the license, the effect is recisely the same as if no license whatsoever had been granted to%ransformer Company. And as Pictures Corporation knew the facts, it is in no better position than if it had manufactured the amplifiers itself without a license. I t is liable because it has used the invention without license t o do so. This case is of importance to any patent owner, particularly to the owners of chemical product patents, because it reaffirms the already established principle that he can license an invention capable of general use to one licensee for use in one field and to another licensee for use in another field, or can license one field and reserve other fields exclusively for himself. The criticism that this is an illegal extension of the monopoly is not well founded because, if the monopoly extends to these various fields, the patentee has absolute control within the fields of the monopoly and he can under the present status of the law either grant or refuse the right to use the invention in the entire field covered by the patent or in any portion in which he pleases. Assume that the patent covers a chemical product. When sold for use in the medicinal or pharmaceutical field or for toilet purposes-for example, in soaps and shampoos-the product may have a high value. When sold for ordinary industrial uses, the product may have a low value and retail for only a few cents per pound. The patentee, who may be engaged in manufacture in the pharmaceutical field, may wish to retain this field for himself and license someone else to manufacture and sell in the lower priced industrial field. Yet if the licensee for the industrial field is permitted to disregard the restriction in his license and to invade the higher priced field, he can do untold injury to the patentee’s business, which is often in products advertised a t high cost for use by the general public. The licensee in the industrial field can do such injury to the premium market of the patentee that the patentee, if restrictive licenses were not possible, might prefer not to license others a t all. Thus the use of patented products might be restricted instead of expanded, if the construction sought by the infringer and by Justice Black had been made,
owner of a patent cannot, by means of the patent, restrict the use
made of a device manufactured under the patent after the device has passed into the hands of a purchaser in the ordinary channels of trade and full consideration paid therefor.” But that proposition ignores controlling facts. The patent owner did not sell to petitioner the amplifiers in question or authorize the Transformer Company t o sell them or any amplifiers for use in theaters or any other commercial use. The sales made by the Transformer Company to petitioner were outside the scope of its license and not under the patent. Both parties knew that fact at the time of the transactions. There is no ground for the assumption that petitioner was “a purchaser in the ordinary channels of trade.’’ * * * There is here no attempt on the part of the patent owner to extend the scope of the monopoly beyond that contemplated by the patent statute. * * * There is no warrant for treating the sales of amplifiers t o petitioner as if made under the patents or authority of their owner.*** Petitioner, having with knowledge of the facts bought at sales constituting infringement,did itself infringe the patents embodied in the amplifiers when it leased them for use as talking picture equipment in theaters. and in its opinion on rehearing: The question of law requiring decision is whether the restriction in the license is to be given effect. That a restrictive license is legal seems clear (Mitchell v. Hawley, 16 Wall. 544). As was said in United States v. General Electric Company (272 U. S. 476, 489), the patentee may grunt a license “upon any condition the performance of which is reasonably within the reward which the patentee by grant of the patent is entitled t o secure.” The restriction here imposed is of that character. The practice of granting licenses for a restricted use is an old one (see Rubber
Contributory Infringement Another decision of the Supreme Court which is of substantial importance is that in the case of Leitch Manufacturing Company, Inc., v. The Barber Company, Inc. (82 L. Ed. 276). The patent in suit (No. 1,684,671) covered a process of using a bituminous emulsion to form a film on the surface of newly constructed concrete road to retard evaporation of moisture during curing. The Barber Company, Inc., did not grant written licenses under its patent. It had adopted a method of doing business which was the equivalent of granting a written license with the condition that the method covered by the patent could be practiced only with emulsions purchased from it. In the suit against Leitch Manufacturing Company, which had sold the unpatented bituminous emulsion to a road contractor who used it in a process which infringed the patent, there was no proof that the Leitch Manufacturing Company had actually been engaged in an act of contributory infringement. There was no proof that it had connived with the road contractor to bring about the sale and the direct infringement, or that it had in any manner contributed to the infringement other than to sell to this particular road contractor the road emulsion which it was free to sell as an unpatented composition of matter. The Supreme Court held, under the rule previously announced in the Carbice Case, that “every use of a patent as a means of obtaining a limited mo-
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nopoly of unpatented material is prohibited. It applies whether the patent be for a machine, a product, or a process. It applies whatever the nature of the device by which the owner of the patent seeks to effect an unauthorized extension of the monopoly.” The Court also held that the attempt of The Barber Company to enforce the monopoly of its process patent in this way was an attempt to secure a limited monopoly on an unpatented product and that the Bill of Complaint should be dismissed. This decision was followed by the Circuit Court of Appeals for the First Circuit in the case where the American Lecithin Company brought suit against J. C. Ferguson Manufacturing Works, Inc., on the Working patent (No. 1,781,672), covering the use of a small percentage of lecithin in chocolate to prevent or retard “graying” of the chocolate [94 F. (2d) 7291. The J. C. Ferguson Manufacturing Works was not a manufacturer of chocolate but supplied the lecithin to manufacturers of chocolate for use therein. The lecithin itself was an old and unpatented material. The suit was for contributory infringement although there was no proof of any actual conniving on behalf of the J. C. Ferguson Manufacturing Works t o bring about the infringement. The Court held that theplaintiff could not prevent the sale of lecithin, an unpatented commodity, under the guise of a suit for contributory infringement: Under the law as it now stands it seems clear that a patent on a process, a product, or a “composition of matter,” may not be extended under the doctrine of contributory infringement, to monopolize the sale of unpatented staple material, used in such product, process, or composition. Broad expressions as t o contributory infringement used in earlier cases relied on by the plaintiff must now be read with the Carbice and Leitch cases in mind.”
A still further extension of the doctrine contained in the Leitch Case is found in American Lecithin Company v. Warfield Company (23 F. Supp, 326), in which the District Court for the Northern District of Illinois held that the owners of the Working patent could not maintain a suit against a direct infringer. This decision, however, involves an undue extension of the doctrine propounded by t h e Supreme Court in the Leitch Case and is aptly illustrative of what frequently happens in the growth of the law. The Supreme Court will frequently define a certain doctrine which is then extended by the lower courts much beyond the scope originally set forth in the decision of the Supreme Court. Eventually these extensions of the doctrine overreach themselves and a new case involving the same point will reach the Supreme Court, whereupon the extensions of the doctrine will be corrected and the doctrine put in its correct position. This will no doubt happen to the undue extension laid down by the District Court in the case of American Lecithin Company v. Warfield Company. These decisions should not be construed as having destroyed the doctrine of contributory infringement, but they do indicate that contributory infringement will not be assumed from the mere proof of sale of an unpatented commodity which might be used in a patented process or composition of matter. They also make it clear that the owner of such a patent must be prepared to prove actual contributory infringement-that is, some conniving on behalf of the seller to bring about the infringement. Otherwise, the owner must be content to sue for the actual infringement of his patent. Such suits are necessarily against a potential customer rather than a competitor. These decisions tend to promote competition and to stop the illegal use of patents to restrain competition, but should not be interpreted as putting any restriction on the enforcement of the monopoly within the legal confines of the patent.
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Clear and Distinct Claims Two other decisions during the year bring up a fundamental aspect of patent law which is frequently overlooked in the solicitation of patents. In the case of General Electric Company v. Wabash Appliance Corporation (82 L. Ed. 912) and in the case of National Carbon Company, Inc., v. Western Shade Cloth Company [93 F. (2d) 941, the sufficiency of the claims in suit to define the invention with that degree of definiteness and certainty required by the patent statutes was involved. In the case of General Electric Company v. Wabash Appliance Corporation, the Pacz patent (No. 1,410,499) in suit related to tungsten filaments for incandescent lamps. The patentee had undertaken to remedy the defects of offsetting and sagging which existed in prior tungsten filaments. A typical claim in suit read: A drawn filament for electric incandescent lamps or other devices, composed substantially of tungsten and made up mainly of a number of comparatively large grains of such size and contour as t o prevent substantial sagging and offsetting during a normal or commercially useful life for such a lamp or other device. The Court held: We need not inquire whether Pacz exhibited invention, or whether his product was anticipated. The claim is invalid on its face. It fails t o make a disclosure sufficiently definite to satisfy the requirements of Rev. Stat. Sec. 4888,35 U. S. C. A. Sec. 33. That section requires that an applicant for a patent file a written description of his discovery or invention “in such full, clear, concise, and exact terms as t o enable any person skilled in the art or science to which it appertains * * * to make, construct, compound, and use the same; * * * and he shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery.” We may assume that Pacz has sufficiently informed those skilled in the art how to make and use his filament. The statute has another command. Recognizing that most inventions represent improvements on some existing article, process, or machine, and that a description of the invention must in large part set out what is old in order t o facilitate the understanding of what is new, Congress requires of the applicant “a distinct and specificstatement of what he claims to be new, and to be his invention.” (Merrill v. Yeomans, 94 U. S. 568,570, 24 L. Ed. 235,236.) I n the suit of National Carbon Company, Inc. v. Western Shade Cloth Company, the patents involved were those of Chaney (Nos. 1,497,543 and 1,497,544). Typical claims relied on in the suit were as follows: As a new article of manufacture, adsorptive carbon having a retentive value for chlorpicrin in excess of 20 per cent of its weight, As a new article of manufacture, adsorptive carbon having a retentive value for chlorpicrin of approximately 40 per cent of its weight.
The Court held all of the
