Appeal from the District Court of the United States for the Eastern District of Pennsylvania; William H. Kirkpatrick, Judge.
Before BIGGS, CLARK, and GOODRICH, Circuit Judges.
Genzo Shimadzu and another sued The Electric Storage Battery Company, alleging the infringement of six patents for the production of fine lead powder suitable for use upon the plates of storage batteries or for the manufacture of paint. The District Court held all of the claims of the patents in litigation valid and furthermore held claims 1 and 2 of Patent No. 1,584,149, claims 1 to 4, 6, and 8 to 13 of Patent No. 1,584,150 and claims 10 and 11 of Patent No. 1,896,020 to be infringed. The court held all other claims in issue of the patents to be not infringed. See 17 F.Supp. 42, 53, 54. An appeal was taken to this court and the decision of the court below as affirmed in a per curiam opinion. See 98 F.2d 831. A petition was filed in the Supreme Court of the United States, which granted certiorari.
The Supreme Court in its decision, Electric Battery Co. v. Shimadzu, 307 U.S. 5, at page 8, 59 S. Ct. 675, at page 679, 83 L. Ed. 1071, passed upon three questions. Mr. Justice Roberts stated them as follows, " In an infringement suit by the owner of a patent for an invention, made but not patented or published abroad, to restrain an innocent use, the inception of which antedates the application for patent, may the plaintiff prove that his actual date of invention was earlier than the commencement of the asserted infringing use?  Is the delay of the patentee * * * in applying for patent a bar to relief for alleged infringement?  Does commercial use of the patented process and apparatus in the alleged infringer's plant for more than two years prior to the application for patent preclude redress?" The Supreme Court answered the first and third questions in the affirmative and the second question in the negative. It found, construing R.S. §§ 4886, 4887 and 4923, 35 U.S.C.A. §§ 31, 32, 72, that the criterion of novelty required before a patent can issue from the United States Patent Office is " * * * the same whether the invention was conceived abroad or in this country. The test is whether the invention was 'known or used by others in this country, before his invention or discovery thereof' * * * "; that the foreign inventor is entitled to the filing date of his application in the foreign country provided his domestic application is filed within twelve months of the foreign filing date; and that a patent " * * * shall not be refused or held void by reason of the invention having been known or used in a foreign country, before his invention or discovery, if it had not been patented or described in a printed publication."
The court also held that abandonment under R.S. § 4920, 35 U.S.C.A. § 69, is an affirmative defense which must be pleaded and proved and that since abandonment was not pleaded in the trial court, that defense could not be asserted successfully upon appeal.
Specifically the court determined that Patent No. 1,584,150 was invalid because of prior public use of the invention disclosed by it in this country prior to the filing of the application in the United States and that like prior public use had been pleaded and proved in respect to Patent No. 1,896,020 which was likewise invalid. The Supreme Court reversed the decree of this court and remanded the cause to the District Court with directions to dismiss the bill as to '150 and '020. As to Patent No. 1,584,149 the Supreme court directed the District Court " * * * to proceed, in the light of the dismissal as to those patents, ['150 and '020] to determine whether 1,584,149 is valid and infringed."
As we have already indicated, the District Court in its original opinion held claims 1 and 2 of '149 valid and infringed, but dealt with this patent rather 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." See the opinion of the District Court upon remand, 35 F.Supp. 745, 746. The validity and scope of '149 is the sole issue in the appeal at bar.
Upon remand the District Court held claim 2 of '149 valid and infringed and specifically found (Finding of facts No. 6) that "The process set forth in Claim 2 of United States Letters Patent No. 1,584,149 is not for the same invention as disclosed or claimed in Japanese Patent No. 41,728 or Japanese Patent No. 42,563." The District Court also found (Finding of Facts No. 5) that "Claim 1 of the United States Letters Patent No. 1,584,149 does not specify any air blast." The learned District Judge found claim 1 to be invalid over the prior art. He stated, page 748 of 35 F.Supp., that he was quite sure that the Supreme Court did not intend to make any rule affecting the validity of '149, and we concur in this view. We think that the Supreme Court expressly left open all questions relating to the validity of '149 or its infringement by the appellant's processes, aside from the defense of prior public use which was held not to have been made out. Not unnaturally a great deal of effort has been expended by the parties in attempting to read into the law of the case as expressed by the Supreme Court support for their respective views. In our opinion, however, the Supreme Court did not decide any issues other than those which we have pointed out. It must be remembered that the Supreme Court did not pass upon questions of invention or prior art. It broke patents '150 and '020 upon prior public use only. We therefore deem all other questions to be open for our review.
No better exposition of Shimadzu's process can be found than those contained in the opinions of the District Court. Nothing can be gained by our attmepting to rephrase in other words a description of processes which the trial judge treated at length. It all be necessary to read all the earlier opinions. We will condense what we have to say about the Shimadzu processes and patents into as brief a space as we can, pointing out those particulars in which we disagree with the trial court.
Shimadzu in 1918 got the idea that a fine lead powder suitable for the purposes described in the patent could be made by tumbling lead balls against each other in a revolving container. From his first experiments he seems to have gotten very little fine powder and that which he did get was made by the friction of the lead balls rubbing against each other. He attempted to increase the output with little success by putting a metallic lining in the container and by vertical grinders. He then tried to separate the fine powder out of the heavier in the drum by an air blast. The air blast did remove some of the fine powder from the receptacle, but left the coarse powder undisturbed. In December, 1918, Shimadzu thought of shooting the air blast directly into the drum and at the same time providing the drum with an outlet by which the fine powder could be blown out. Shimadzu thereupon made an air inlet and an air outlet into and out of the drum itself, and he shot air under pressure into the drum while it was revolving.
At this point Shimadzu became the inventor of a new and useful process. As the District Judge stated, page 44 of 17 F.Supp., "It was at once observed that the amount of the product increased tremendously." Shimadzu apparently did not know why it increased as the result of this precise process, but the fact was the air thus shot into the revolving drum formed a layer of lead oxide upon the surfaces of the lead balls which, being brittle, was easily reduced to powder by the friction of the balls against each other. As the District Court succinctly stated, "Full commercial realization of the process did not follow immediately upon the installation of the mill [thus arranged] in Shimadzu's plant * * * . That came only after more experimenting. * * * What was actually being worked out, whether consciously or otherwise, was a second and highly important element of the process, namely, temperature control. Production in satisfactory quantities depended upon abrading the balls to powder as rapidly as possible and that in turn depended upon determining and maintaining a temperature in the mill which would be high enough to produce rapid oxidation, but not so high as to melt the metal or to over-oxidize the product." Judge Kirkpatrick went on to say, page 45 of 17 F. Supp., "The process was unquestionably invented when the idea of blowing an air blast into a rotating mill in which lead pieces were being abraded and keeping the whole at a controlled high temperature by means of regulating speed of revolution and air pressure had been evolved and successfully practiced * * * ."
The elements just referred to were embodied in '150 and were and are the vital elements of Shimadzu's process. The specifications of '150 specifically refer to " * * * putting in a rotatable vessel pieces of metallic lead, keeping these pieces at a temperature not less than 60 degrees C., and while rotating the vessel sending air, or other gas containing oxygen thereinto, or sending any other oxidizing agent thereinto, thus oxidizing the surface of the peaces of lead and reducing them by abrasion into a very fine powder which is chemically very reactive." Shimadzu also says that the surface of the lead balls gradually becoming oxidize dand being covered " * * * with a layer of lead suboxide which is comparatively brittle * * * will be abraded into a fine powder."
In his first Japanese Patent, No. 41,728, Shimadzu speaks of throwing 250 kwans of lead balls having a diameter of one and one half inches each into a rotating cylinder; then rotating the cylinder about twenty-five revolutions a minute, " * * * the lead balls rub on one another and on the inner walls on the vessel, so that they are gradually reduced by friction to small particles, and in an hour's time about 10 kwans of irregular, fine powder is made and can be collected." The specifications of Japanese Patent '728 also state, "An important point of this invention is the reduction of lumps of lead to fine particles in a rotating vessel by their frictional rubbing on one another and on the ...