From what has been said, it follows that, as to these process claims, infringement may be found if the process covered is used by the defendant, even though it is impossible to prove that the product manufactured by the defendant contained lead suboxide. Where the product claims are the only things in issue, suboxide is necessary to their validity over the prior art, since small quantities of a powder having generally similar physical characteristics had undoubtedly been produced before, and consequently infringement cannot be found without proof that lead suboxide exists in the accused mixture. But where the question is the use of a commercial process to obtain a product in quantity and the description of the product is more or less incidental, it would be more than unfair to deny the inventor the rights to which he would be otherwise entitled because of a misdescription.
What has been said may be taken as applying to the suboxide process claims of '149 and '150. The five claims in suit of '151 and the four claims of '479 are process claims, but they stand upon a slightly different basis. They begin with the product of '150 and treat it in order to produce something different. In every case this initial product or element of the process is described as being or containing lead suboxide. Now, as has been held, it will not necessarily invalidate a process that its final product is given a name which is scientifically incorrect. But in these claims the use of the described powder is the first and vital step of the process. It is the suboxide constituent which gives them novelty over the prior art. Therefore they really stand with the product claims -- presumptively valid, but in the present state of scientific knowledge not susceptible of proof of infringement.
Patent '149 and Double Patenting.
Patent '149 claims a process for the formation of lead powder by abrasion of masses in a rotating vessel plus "removing said powder from said vessel by means of" a current of air (claim 2). This patent is not invalidated by Japanese patent '563 for reasons already given in connection with that patent. The erroneous use in the Japanese patent of air as an example of an inert gas is not sufficient to make it identical with a patent which claims the use of air and nothing else.
Whether or not '149 is for the same process as U.S. patent '150 is immaterial, so far as the question of validity of either is concerned. There is no double patenting involved. The two patents issued on the same day. They both expire on the same day. There can be no extension of the monopoly and one is not prior art against the other.
The fact that '149 does not disclose the oxidizing function of the air or refer to the highly important element of the process having to do with the temperature control necessary to its successful operation might throw doubt upon its validity in view of the prior art. This is, of course, upon the assumption that it is not for the same invention as '150. The whole matter, however, is rather academic since '149 is coincident in duration with '150, and the defendant's process infringes the somewhat more precise, if not narrower, claims of '150.
This patent is therefore held valid and infringed.
Infringement of Process.
There can be no question that the process used by the defendant is substantially the same as that of the plaintiff's patents. In fact it is almost identical. As a fact finding upon this point, the report of Dr. Wilson, an independent expert appointed by the court who made a complete study of the defendant's operation at the Crescentville plant, is adopted by reference.
The apparatus patent ('020) is closely related, of course, to the process patents. Practically all the considerations which apply to the one apply to the other, including the Tudor mill and other alleged prior art structures. Having held the process claims valid and infringed, the same conclusion is reached with regard to the apparatus patent.
Claims 1 and 2 of patent 1,584,149 are valid and infringed.
Claims 1, 2, 3, 4, 6, 8, 9, 10, 11, 12, and 13 of patent 1,584,150 are valid and infringed.
Claims 14, 15, 16, and 17 of 1,584,150 are valid but not infringed.
Claims 1, 2, 3, 4, and 5 of 1,584,151 are valid but not infringed.
Claims 1 and 2 of patent 1,584,152 are valid but not infringed.
Claims 1, 2, 3, and 4 of 1,584,479 are valid but not infringed.
Claims 10 and 11 of patent 1,896,020 are valid and infringed.
The statements of fact contained in the foregoing opinion may be taken as special findings of fact and the statements of law may be taken as conclusions of law under rule 70 1/2 (28 U.S.C.A. following section 723).
Decree may be submitted.
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