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October 8, 1940


The opinion of the court was delivered by: KIRKPATRICK

This case at first involved the validity and infringement of a group of six patents having to do with the production of lead powder for use in making storage battery plates. They will be referred to by their abbreviated numbers. We are now directly concerned with the validity and infringement of one of them (1,548,149) and, incidentally, with the scope of another (1,548,150). These two patents issued on the same day, May 11, 1926. '150 was the more explicit of the two and included a statement of what the patentee believed to be the underlying scientific principle of the invention.

This court held certain claims of '150 valid and infringed. 17 F.Supp. 42. '149 was also held valid and infringed, but was dealt with very briefly, for the reason that, '150, being the narrower patent, if it was infringed, '149 would also be infringed, and hence it made little practical difference to the parties whether '149 was valid or not. The opinion of this court will have to be read in full and what was said in it need not be repeated here.

 This court's decree was affirmed by the Circuit Court of Appeals, 3 Cir., 98 F.2d 831, upon a per curiam opinion, but the Supreme Court, 307 U.S. 5, 59 S. Ct. 675, 83 L. Ed. 1071, reversed as to '150, holding it invalid because of evidence of a prior public use in this country more than two years before its application date. The Supreme Court directed this court to dismiss the bill as to '150. As to '149, the mandate was "to proceed, in the light of the dismissal as to those patents (1,896,020 was also included, but is unimportant in this connection), to determine whether U.S. Betters Patent 1,584,149 is valid and infringed." Hearing, in accordance with the mandate, has been had. *fn1"

 Both sides agree that, if '149 is for a patentable process, it is substantially the process disclosed by '150. Claim 2 of '149 is as follows: "A method of forming a finely divided chemically reactive lead powder of such fineness and activity as to be readily changed chemically on exposure to air, which comprises introducing relatively large masses of lead into a rotatable vessel, rotating said vessel at a relatively low speed, introducing a current of air into said vessel, forming said lead powder by attrition of said lead masses resulting from the rubbing of said lead masses against each other, and removing the said powder from said vessel by means of said current of air." Claim 2 may be taken as typical of the process claims of '150. It is as follows: "A process of manufacturing a fine powder of lead suboxide intermingled with powder of metallic lead, comprising in putting in a rotatable vessel pieces of metallic lead in a dry state, introducing into the said vessel while rotating blasts of a gas containing oxygen, such as air, causing such blast to blow the powder produced out of the vessel." Other claims of '150 specify certain temperatures, putting the range between 60 degrees C. and about 200 degrees C.

 The fact that '149 issued on the same day as the anticipated and hence invalid '150 does not affect the validity of the former. It may be assumed that the Supreme Court would not have sent the matter back for re-examination had the court not been satisfied on that point at least.

 A review of the development of the process by the patentee is to be found in the first opinion of this court. The experimental period covered nearly a year. Rumbling pieces of lead in a rotary mill was found to produce some fine powder, in an early stage. Then an air blast was introduced, originally to separate the fine powder from the coarse. This idea came as a result of finding that some fine powder had accumulated on one of the bearings. As soon as the air blast was arranged to work satisfactorily, it was found not only that the fine powder was separated and carried out but -- a much more important matter -- that there was a tremendous increase in the quantity of it produced. This discovery came in the spring of 1919. The increase in quantity made the difference between success and failure, as pointed out in the first opinion.

 The scientific principle which underlies a process is, of course, not the invention, and it need not be disclosed or even understood by the inventor of the process. Diamond Rubber Co. v. Consolidated Rubber Tire Co., 220 U.S. 428, 435, 436, 31 S. Ct. 444, 55 L. Ed. 527; Driven Well Cases (Eames v. Andrews), 122 U.S. 40, 55, 56, 7 S. Ct. 1073, 30 L. Ed. 1064. The process consists of the series of acts one performs in order to get a desired result. Combining these steps constitutes the invention.

 The process (as distinguished from the principle) of claim 2 of the '149 patent is (1) putting pieces of lead into a rotatable vessel, (2) rotating the vessel at a low speed, (3) forcing an air blast into and through the vessel, (4) permitting the lead masses to be reduced to powder by surface attrition, and (5) carrying the powder out of the vessel with the air.

 The question is simply whether this process, with such development of practice as ordinary operating skill would normally add to it, will produce the kind of powder which the industry had been demanding, and produce it in sufficient quantities to make the process commercially useful. If so, the same reasons which led me to conclude that '150 disclosed an important invention would apply, and, since the defendant's prior use does not affect this patent, it would be valid.

 It is interesting to compare claim 2 of '149 with claim 2 of '150 (held valid and infringed by this court). The only substantial difference is that, in the latter, the final product is described as containing lead suboxide. This will be discussed later on, but the point here is that it has nothing to do with the steps of the process. It would be hard to argue that, so far as these claims are concerned, they do not disclose the same steps and the same process. To put it in the converse, I do not believe that an operator, using the process of '149 faithfully and with reasonable skill, could avoid getting commercially available quantities of lead powder of the desired quality -- the result of '150.

 The defendant's main argument against the validity of '149 is that the specification forbids oxidation of the balls in the drum and hence entirely misses that which was the turning point in the inventor's development of the process and which proved to be the essence of the invention.

 If there were nothing but the claim, it could not well be contended that oxidation of the lead balls is not inherent in it. Even an unskilled layman knows that heat will be generated when a mass of lead balls is rumbled in a drum and that oxidation follows heat. Everyone who has blown a fire to kindle it knows that oxidation is increased by a current of air.

 The controversy really centers about a portion of the specification which states that lead "easily oxidizes and spontaneously ignites, so that it is necessary to provide with a cooling apparatus to radiate the heat generated by friction, when treating easily oxidizable metals, such as lead." The defendant contends that is a direction to eliminate all oxidation and that the patent is therefore no advance over the earlier 45,563 Japanese patent which plainly contemplated nothing more than the removal of the powder, and which did entirely prevent oxidation by using an inactive medium for removal.

 I do not think the defendant's point is well taken. The patentee was pointing out a danger which might arise from too great heat and too much oxidation -- the melting point of lead is only 330 degrees C. There is no reason to believe that in providing for a cooling apparatus to radiate the heat he was intending to do more than guard against that danger. Nor is "radiate the heat" to be read as meaning "radiate all the heat." It is entirely proper to speak of the cooling system of an automobile as radiating the heat generated by the engine, though no one imagines that it radiates all the heat or that it does more than prevent overheating. In order to give to these three words, in the description of a system the essence of which is friction, the interpretation which the ...

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