January, 1924
INDUSTRIAL A N D ENGINEERING CHEMISTRY
Patent Litigation-Its
89
Causes and Its Results'
By James Otis Handy PITTSBURGH TESTING LABORATORY, PITTSBURGH, PA.
N THE writer's professional work, patent litigation has had a very important place. Strife is always interesting, even if it is not always satisfactory in its results. The endeavor to defend successfully what one believes to be a valid and valuable discovery, or to help to eliminate a patent which one thinks should not have been granted, is a task worthy of one's best efforts. One cannot help being impressed, however, with the thought that many conflicts might have been avoided if the patents had been bel ter drawn, and had not included things which the author did not invent, or omitted details which were discovered by him. The further thought also comes that the courts should have the benefit of unprejudiced analysis of the scientific facts involved in the case at issue. Patent litigation arises primarily because an invention has in it certain commercial value. In only a few cases have there been simultaneous independent inventions of practically the same thing, as in the case of Charles M. Hall, the inventor of the aluminitim reduction process, and Paul Heroult, who simultaneously invented practically the same process. In most cases, however, litigation arises between owners of patents and real or alleged infringers thereof. The bases for litigation are found chiefly in imperfections in the patent, arising either from ignorance of the prior art, or from overzealousness in making the claims of the patent too broad. Occasionally, the claims are made too narrow, and in that case defense of the patent from infringement is almost impossible. The patent system of the United States is of vital importance to the chemical and metallurgical industries, and members of the AMPRICAN CHEMICAL SOCIETYhave contributed their best thought to the perfection of the system, and have pointed out how chemists should function, first, in the preparation of the patent specifications and claims so that they thoroughly cover the invention, but nothing else;*second, in lending their influence to the strengthening of the organization of the Patent Office so that the patents which are issued will be only those which are truly novel and valuable;* and third, in making available to the courts in case of litigation unprejudiced opinions by chemists and metallurgists concerning the technical points bearing on the interpretation of the patents i n ~ o l v e d . ~ A Federal judge has recently said that the patent expert is simply 1.he attorney testifying under oath. Some attorneys have no use for scientific men except to have them testify to a narrow range of facts and opinions, or t o function as partisans laying stress on every point which would favor, technically, commercially, or otherwise, the clients who have engaged their services. Furthermore, they are expected to withhold or ignore all other points, even if they have important bearing on the case. The writer is confident, however, that there are few patent attorneyb and chemists whose zeal for the right as they see it will cause them to condone either overemphasis or evasion, and that there are many judges in our Federal courts who add wide technical knowledge to their knowledge of the law. Nevertheless, an arrangement should be possible by which the court may appoint a technical adviser satisfactory to both contestants. This adviser might be regarded as an umpire who would eliminate really irrelevant matter and restate basic scientific facts. He might also give his opinion based on these facts.
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1 Presented before the Division of Industrial and Engineering Chemistry at the 66th Meeting of the Amencan Chemical Society, Milwaukee, Wis., September 10 to 14, 1923. 2 Hessc, THIS JOURNAL, 5, 854 (1913). a Princlle, Chem. M e f . Eng., 25, 417 (1921). 4 McElroy, THIS JOURNAL, 13, 469 (1921).
The need for reformation in respect to all the points mentioned may be briefly illustrated by specific decisions which have caused great hardship: 1 -A patent declared invalid because too broadly drawn. A compound for carbonizing steel had been patented and found t o be novel and commercially valuable. Royalties were being paid by the larger manufacturers in the art. Litigation with an infringer brought to light a fifty-year old patent, which, when interpreted as the court understood it, anticipated the patent in suit. The thing described in the old patent was worthless and had never been used commercially, but the specification of the patent in suit was not sufficiently definite in certain details clearly and unmistakably to distinguish its product from the one described in the old patent. The later patented product, which had proved valuable in the art, was in fact a granular material: made up of fragments of carbon of a material size, these fragments being coated with some such hydrocarbon as melted asphaltum or oil, and this coating carrying in it a covering of powdered chemicals such as lime or soda ash. As actually manufactured under the patent in suit, and by the inventor, this material had always consisted of separate granular particles ranging from I/IO to a / ~inch in thickness, the coating being in the form of a frosting or paint upon the surface of the carbon fragments. The old reference described merely saturating pulverized charcoal with a solution of soda ash, then pouring over the resulting product, after it was dried, kerosene enough to saturate it. The court, because in its opinion the patent in suit did not clearly distinguish the patented product and the form of the resulting material from this old compound, held the commercially valuable patent in suit invalid. A careful search of the prior art and a description of the actual product made by the later inventor in terms clearly distinguishing it from the old material would have saved the patent, and have protected the inventor in th-e valuable discovery which he actually made. 2-A patent declared invalid bat afterward sustained, although given a limited scope so that infringement was possible. In this case an improved metal composition for rolls used in the steel industry had been discovered and put into service. Rolls made of the new material lasted four times as long under the severe conditions ol sudden change 01 temperature and extreme strains as any roll previously made. The discovery was undoubtedly new and valuable. Rolls made of the new composition brought higher prices and the manufacturers paid royalties to the inventors. The infringement suit brought out the defense that 0.03 per cent more sulfur was present in defendant's roll than the patent claims indicated as the maximum which should be used. The composition claimed in the patent was essentially that of highgrade cast iron, except that its high carbon had been all retained in the combined state by means of chromium in small amount. (Cast iron usually contains most of its carbon in the form of graphite, which causes brittleness.) A small addition of nickel overcame the hardness and tendency toward brittleness caused by chromium. The defendant used slightly less chromium and more sulfur, and stated that sulfur acted as chromium did to retain the carbon in the combined form, and that i t had the further specific effect of making the casting more smooth and dense. The lower court denied the validity of the patent on the grounds of anticipation and lack of invention. It also denied that there had been infringement. The Court of Appeals was a unit in reversing the invalidity decision of the lower court, but it disagreed as to infringement, the majority decision being against it. The chief ground for the majority decision was that substantial identity between the two metals in physical properties had not been shown. Thus, a material undoubtedly new and useful was left with only partial patent protection. The responsibility for such a state of affairs may reasonably be divided in this case between the somewhat faulty definition of the invention and the interpretation of the patent. Other instances might be given to substantiate the thesis that the responsibility for patent litigation often rests on faultily drawn patent applications, insufficiently criticized and modified: during consideration by the Patent Office, and afterward interpreted by courts without the benefit of unprejudiced technical advice.
