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PALMER v. SUN OIL CO.

May 26, 1948

PALMER et al.
v.
SUN OIL CO.



The opinion of the court was delivered by: KLOEB

This is an action against the defendant based on alleged infringement of the United States Letters Patent No. 2,096,289, issued to the plaintiffs October 19, 1937, upon application filed by Delos M. Palmer on March 8, 1937, on 'Machine Drive Arrangement', a patent containing two claims.

A multitude of defenses are set up in the answer. They are noninfringement (Par. 3), invalidity based on prior art patents, of which defendant cites sixty-eight in its answer (Par. 5), invalidity because of prior use by persons named in the prior art patents cited, including the use by defendant at its plant at Marcus Hook, Pennsylvania, and knowledge of its use by its officers and employees named therein (Par. 6), invalidity because of public use more than two years prior to the filing of the application for the patent in suit (Par. 7), invalidity because the alleged invention of the plaintiffs was patented more than two years prior to the application for the patent in suit (Par. 8), invalidity because the alleged invention of the patent in suit involved ordinary knowledge and skill of a person familiar with the art to which the Letters Patent of the plaintiffs relate and is wholly lacking in patentable novelty (Par. 9), invalidity because the description of the alleged invention in the specifications of the Letters Patent in suit is not in full, clear, concise, and exact terms, so as to enable any person skilled in the art to make and use the same (Par. 10), invalidity because the claims of the patent in suit are so ambiguous and indefinite that their meaning and scope cannot be ascertained therefrom (Par. 12), invalidity because the invention is of no utility (Par. 14), defense on the ground of abandonment and laches by the plaintiffs (Par. 15), defense of laches and estoppel as against the application filed by Richard S. Vose, on January 27, 1936, which issued to him on August 1, 1939, as U.S. Letters Patent numbered 2,167,698, disclosing substantially the construction claimed in the patent or disclosing the defendant's construction alleged to infringe (Par. 16), and the defense that in view of the prior art the claims of the patent in suit are only susceptible to such a narrow construction that they are invalid or that the defendant's construction cannot be held to infringe (Pars. 11 and 13).

 The principal defenses urged are invalidity and noninfringement.

 The Inventor and the Invention

 The inventor Palmer is an electrical and mechanical engineer, having obtained a degree of B.S. in electrical engineering in 1921 from the University of Michigan, and a master's degree in physics in 1938 from the same institution. He was a college instructor in electrical engineering, assistant professor in physics and mechanical engineering and dean of engineering, the latter at the University of Toledo. He had an extended experience in industry, having worked for the Westinghouse Electrical and Manufacturing Company in designing, estimating and construction of electrical locomotives and diesel locomotives; as assistant to the factory manager and as parts engineer at the Spicer Manufacturing Company; as plant engineer for the American Propeller Company; as works engineer for the Champion Spark Plug Company, and was engaged in the profession of consulting engineer since August 1, 1945.

 Mr. Palmer testified that he though of his idea while working for the Spicer Manufacturing Company in the fall of 1929. That at this time the Spicer Company used compressors which took gas from the Gas Company's line and increased its pressure for use in the burners at the plant; and it occurred to him that the electrical demand and consumption could be decreased by installing a gas engine and connecting it mechanically with one of the compressor units, to carry the mechanical load of the compressor as well as the electrical load of the induction motor and cause it to generate electricity for use in the plant. That about December, 1932, when he was connected with the University of Toledo, he made up an arrangement consisting of a DC motor connected to an induction machine, with a shaft extension of the induction machine to simulate a mechanical load, and tried it out. He testified this arrangement embodied in principle all of the essential elements of his patent. Witnesses Baxter and Wheaton testified they saw this model in 1932.

 Mr. Palmer testified that about 1936, in conversation with Mr. Wenner, one of the plaintiffs, then representing the Gas Company, whom he sold on the idea, Wenner suggested that they put an installation in Gerber's Grocery on Sylvania Avenue, in Toledo, because he was 'kicking about his power bills'; that the Gas Company induced the grocery company to buy an engine, and they put a shaft extension on the motor, and hooked the engine on to it to run the refrigerator compressor. This was followed by an installation at the plant of the Goon Ice Cream Company, and another installation at the Mather Spring Company. (See affidavits of Goon and Hendrickson, Defendant's Exhibit U, file wrapper, pages 19-24, and articles by Mr. Wenner describing these installations in 'Refridgerating Engineering', August, 1937, pages 85, 86, 128, in 'Gas', July, 1937, pages 14, 15, 16, 48, and in 'Steel', August 9, 1937, pages 57 and 58, submitted to the Patent Office in support of the amended claims by counsel for the applicant, Defendant's Exhibit U, file wrapper, pages 33, et seq.) From these articles it appears that to carry out Palmer's idea it was only necessary to 'hook up the gas engine to the other equipment', which would be left exactly as it was, the gas engine 'merely supplementing' the existing equipment.

 Plaintiff's Device

 In practical operation, as in the only three installations made prior to the trial of this case, the plaintiffs' device is, in effect, an electric power plant, the electrical load being electric lights, electric motors, etc. connected to the alternating current supply line. The prime mover -- an internal combustion gas engine -- supplies power so greatly in excess, typically twice, of that required to drive the mechanical load (the refrigeration compressor in the Gerber and Goon installations and the blower in the Mather Spring installation), that the motor-generator is operated above its synchronous speed as a generator to absorb the electrical load.

 As described and shown in the drawings and specifications of the patent in suit, the apparatus of the plaintiff consists of an ordinary internal combustion gas engine, a compressor, and an induction motor connected to an outside power line. In the drawing is also shown a thermally operated circuit maker which, when actuated, operates to close the electrical circuit when the temperature in the refrigerated space reaches a predetermined point, and starts the motor. The motor cranks the engine, the magnetically operated fuel valve is opened, and the engine is caused to start and operate. The engine drives the compressor and at the same time drives the motor above is synchronous speed, which then generates electrical energy, which, in turn, is used to operate the motors, lights and other electrical devices in the plant, and thus decrease the amount of current used from the outside supply line.

 Defendant's Device

 The process used by the defendant, in which the alleged infringing installation is used, is known as the Houdry process, and comprises a new method of producing gasoline by a catalytic cracking process that has gone into widespread commercial use. The Vose patent, No. 2,167,698 (assigned to Houdry Process Corporation) discloses defendant's construction and operation. It is in an art remote from that to which the patent in suit relates. Its title is 'Method For Regenerating Catalytic Masses'. The application for this patent was filed January 17, 1936, about fourteen months before the filing of the application for patent in this case. No mention is made in its claims of the elements contained in the claims of the patent in suit, although they are shown and described in the drawings and specifications. Inasmuch as the Vose patent discloses the defendant's installation, it would negative novelty on the part of Palmer as not the first inventor, if Palmer had not carried his date of invention back of the filing date of the Vose application. Walker on Patents, Deller's Ed., Vol. 1, page 137, Sec. 26.

 In the defendant's installation there are a series of catalytic cracking chambers, in each of which the following operations occur in succession:

 1. Admission of oil vapors of high boiling range into the cracking chamber to effect a partial conversion of the oil to gasoline of relatively low boiling range. This involves deposition of carbon (coke) onto the catalyst.

 2. Purging of the catalytic cracking chambers.

 3. Burning off of the catalyst by compressed air, resulting in formation of carbon, carbon dioxide and carbon monoxide.

 When one catalytic cracking chamber is 'on stream' or cracking to gasoline, air under compression is flowing through another chamber, while still another chamber is being purged. Each of these three operations is thus continuous. The subjection of each catalytic cracking chamber to these successive operations and the shift of each operation from one chamber to another is controlled by a complicated automatic valve system.

 It is necessary in this operation to drive the compressor at a predetermined fixed speed. If the pressure, temperature and volume of the gases driving the turbine were absolutely constant, the turbine would operate at a constant speed, but some variation in these factors occurs. In order to control the speed of the turbine, a motor-generator, connected with the main source of current supply, is geared to the turbo-compressor. If the speed of the turbo-compressor falls slightly below its desired speed, the motor-generator, functioning as a motor, will pick up a little current from the supply line and bring the turbine up to the desired speed, functioning just as in the Dean patent disclosure hereinafter referred to. If the speed of the turbine slightly exceeds its desired speed, the motor-generator, functioning as a generator, will supply a little current to the supply line and bring the turbine down to the desired speed. In that way the motor-generator acts as a speed regulator for the turbine. The deviation of the motor-generator from synchronous speed is small.

 The power unit in the installation of the defendant consists of a starting motor of 200 horse power, a motor generator of 1500 horse power, having a synchronous speed of 1800 RPM, and a turbine of 6660 horse power, the speed of which, corresponding to the synchronous speed of the motor generator, is 5180 RPM. At synchronous speed the motor generator simply floats on the system. The purpose of the starting motor is to bring the turbine up to about 2000 RPM, so that the load is carried by No. 2 burner. The starting motor is then shut down and is not motoring while the cases are in operation. The No. 2 burner is used to bring the system up to 5180 RPM, the running speed of the turbine. Then the motor generator is actuated by closing a switch, and No. 1 burner is then lit for the purpose of heating up the catalyst in the cracking cases. When the entire system is heated up to approximately 800 degrees in the cracking cases, the plant is put 'on stream', that is, the oil vapor is cut into each case at stated intervals, and No. 1 and No. 2 burners are put out. When No. 1 and No. 2 burners are turned off, air is taken in through the filters by the compressor and is compressed to about 50 pounds per square inch pressure and picks up some heat from compression. It then passes through the air heater where it picks up additional heat by indirect heat exchange with molten salt circulating in tubes at 800 degrees to 820 degrees. The molten salt gets its heat by circulation in tubes which run through the cracking cases during the process of combustion. The temperature of the air as it is discharged from the compressor on its way to the air heater is approximately 350 degrees. The temperature of the air is increased by the salt solution to 685 degrees, so that the sale heat exchanger raises the temperature 335 degrees. The air then passes into one of the cracking cases and burns off the carbon which has been deposited by the cracking reaction of the catalyst. The carbon dioxide, carbon monoxide, water vapor, nitrogen and air then passes through the combustion case, which is filled with catalyst to permit the combustion of any oil fumes or carbon monoxide left in the fuel gases. These gases then proceed to the turbine and out of the stack. The compressor is a necessary part of the system because without the compressor there would be no means of providing the air necessary for its operation. The function of the compressor is to furnish enough air at about 50 pounds pressure to burn the carbon off the catalyst so that the cracking reaction can proceed. The gases produced drive the turbine or give energy to it. If it speed falls below 5180 RPM, the motor generator operates as a motor to bring it up to that speed. If the turbine exceeds 5180 RPM, the motor generator acts as a generator and delivers a little current which is absorbed in the operation of the plant.

 Vose stated in his specifications that he found that when the regeneration step was carried out by means of air pressure of 17.5 pounds per square inch absolute the regeneration time was 90 minutes, while when the regeneration was carried out at 40.5 pounds per square inch absolute the regeneration time was cut to 15 minutes, resulting either in the diminution of the amount of catalyst necessary for a given throughput or greatly raising the capacity of a given amount of catalyst, but that the disadvantage of this pressure regeneration was the cost of compressing the air for use in the regeneration, and that he discovered that this cost could be reduced by utilizing the combustion products of pressure regeneration emerging from the catalyst for furnishing the power necessary, through the use of the turbo-compressor, for the compression of the regenerating medium. It was this process which was covered by the claims in his patent and which was followed in the defendant's installation. The patent did not claim but fully disclosed the use of the combination of a gas turbine as the prime mover, a compressor as the mechanical load, the induction motor, electrical load and alternating current supply line.

 The defendant's apparatus is clearly described by the defendant's expert, Mr. Hutchins, in his testimony, as follows:

 'The defendant's apparatus consists of a very complicated arrangement of apparatus set up for the purpose of manufacturing gasoline and other by-products of the cracking process. During this operation there appear large amounts of energy in the form of heat from the burning away of carbon that is deposited in the cracking chambers on a substance known as the catalyst which facilitates the process. In order to reclaim the energy so represented, the hot gases are conducted through a gas turbine, which in turn drives an air compressor which furnishes air for the process.

 'This air for the process is heated in several different ways: first by compression as it goes through the compressor; and secondly, in a heat exchanger, which is referred to both by the operatives at the plant and in descriptive literature of the plant as a salt air heater, which, as I saw it, consisted of a means of circulating molten salt through a series of tubes that this processed air passed over, and at the same time molten salt was circulated through these cracking chambers to pick up the heat used. The circuit is a closed circuit process. This air is taken in from the atmosphere and goes around through the process, picks up energy, goes through the turbine, gives up energy to drive the compressor, and then returns to the atmosphere through a stack.

 'In order to regulate the speed of the compressor, which is driven by the turbine, an electrical machine is connected to the shaft; and this machine is of comparatively small size compared to the mechanical units involved, and there may be a certain amount of electrical power supplied or a certain amount of electric power taken away, -- a rather minor amount of power in either respect because the machine acts in this case as a sp-ed regulator rather than either a motor or generator.

 'The whole process is a matter of setting up the most economical system for the purpose of manufacturing gasoline and its by-products.' R. 90-91.

 The Claims of the Patent in Suit

 The patent in suit contains the two claims which are set forth below. The differences in the two claims are italicized. It will be noted that these consist of --

 (1) The inclusion of an additional element of 'control means' at the end of claim 1, and (2) The specific inclusion in claim 2 of 'an internal combustion engine' in place of the general description of a 'mechanical prime mover' in claim 1. Claim 1 Claim 2 /-- /-- (1) A driving arrangement for a (1) (The same) system having a mechanical and electrical load including, (2) an induction machine mechanically (2) (The same) coupled to the mechanical load and electrically (2) (The same) coupled to the electrical load (3) an alternating current supply line connected to (3) (The same) said induction machine and said electrical load, (4) a mechanical prime mover (4) and an internal combustion engine delivering a power output greater than said induction machine and adapted to drive said mechanical load and adapted to drive connected to drive said induction machine said mechanical above its synchronous speed and thereby operate load and to drive the same as a generator to absorb said said induction electrical load, and machine above its (5) control means for said mechanical prime mover synchronous speed interlocked with said alternating current and thereby operate supply line operable to shut down said prime mover in the same as a event of failure of said alternating current generator to absorb supply. said electrical load.

 Claim 1 may be disposed of, so far as infringement is concerned, by the statement that there seems to be no evidence indicating that the structure of the defendant includes the control means, which is the last element of Claim 1, to-wit: 'and control means for said mechanical prime mover interlocked with said alternating current supply line operable to shut down said prime mover in event of failure of said alternating current supply.'

 It seems to be the law that a patent for a combination of several known elements is not infringed by a device which omits one of the essential elements of the combination. In Stedman on Patents it is said on this subject: 'A patent for a combination of several known elements is not infringed by a device in which less than all of them are used, even though the element omitted from the second device was immaterial, and totally unnecessary to the successful operation of the first combination, since neither the patentee nor the court can declare an element, made a material part of a claim, to be immaterial. An improved process, consisting of several old elements of combination, is not infringed by a process which omits one of the essential elements of the combination.' (pp. 475-477, citing many cases.)

 We do not understand that counsel for plaintiffs are insisting upon any relief based on infringement of Claim 1.

 Claim 2

 The invention of the plaintiff as claimed in Claim 2 consists of the following elements in combination:

 'A driving arrangement for a system having a mechanical and electrical load including,

 '(1) an induction machine

 '(a) mechanically coupled to the mechanical load and

 '(b) electrically coupled to the electrical load,

 '(2) an alternating current supply line

 '(a) connected to said induction machine and said electrical load, and

 '(3) an internal combustion engine

 '(a) delivering a power output greater than said induction machine and

 '(b) adapted to drive said mechanical load and to drive said induction machine above its synchronous speed, and

 '(c) thereby operate the same as a generator to absorb said electrical load.'

 It will be seen that the combination consists of (1) an induction machine; (2) an alternating current supply line; and (3) an internal combustion engine. All of these elements are admittedly old, but plaintiffs contend the combination is an invention because it produces a new and useful result, to-wit, generating, and motoring when necessary. R. 241.

 The defense contends there is nothing in common between the driving arrangement of Palmer and the installation of defendant that is not a well known device which has been applied in the prior art to other fields of use having varying objectives, and that it is not, therefore, patentable; that the combination of a prime mover, a mechanical load, and an induction machine capable of functioning both as a motor and generator, arranged on a common shaft, with the induction machine connected to an electrical supply line, is old, and disclosed in the prior art patents offered in evidence.

 Proceedings in the Patent Office

 The file wrapper of the patent in suit is in evidence as Defendant's Exhibit U. When the application was first filed (March 8, 1937) it contained three claims, which were rejected by the examiner on the following ground: 'Claims 1 to 3 are rejected as unpatentable over Dean in view of Griffiths. The Dean patent shows an induction motor 2 (See lines 61 and 62 of page 4) coupled to a turbine 2 and pump 1. No invention would be involved in substituting an internal combustion engine such as engine 21 of Griffiths for the turbine 3 of Dean.'

 Dean disclosed the combination of a prime mover, mechanical load, induction machine and alternating current supply, but the motor was not intended to function as a generator.

 The original three claims claimed as new and as the invention the same elements in combination as Claim 2 of the patent in suit. The significant differences were that original Claim 1 stated that it was intended that the internal combustion engine drive the induction machine 'at or above its synchronous speed'; Claim 2, that the engine should be governed to rotate the induction machine 'at about its synchronous speed'; and Claim 3 made no reference to the relative speed the induction machine was to be driven. In none of the claims was it stated that the induction machine was intended to operate as a generator; whereas, Claim 2 of the patent in suit, as amended and allowed, stated that the engine was to drive the induction machine 'above its synchronous speed' and 'thereby operate the same as a generator' to absorb the electrical load of the plant to which it was coupled. Claim 1 was similar, excepting that it included a 'prime mover' instead of 'internal combustion engine', as included in Claim 2 and in the three original claims, and also included a 'control means' not included in the original claims. No change was made in the drawings or specifications.

 In the argument of counsel for the applicant, distinguishing the new claims from the claims of the ...


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