U.S. Chemicals, Inc. v. Carbide & Carbon Chemicals Corp.
315 U.S. 668 (1942)

Annotate this Case

U.S. Supreme Court

U.S. Chemicals, Inc. v. Carbide & Carbon Chemicals Corp., 315 U.S. 668 (1942)

U.S. Chemicals, Inc. v. Carbide & Carbon Chemicals Corp.

No. 680

Argued March 13, 1942

Decided March 30, 1942

315 U.S. 668

CERTIORARI TO THE CIRCUIT COURT OF APPEALS

FOR THE FOURTH CIRCUIT

Syllabus

l. A reissue patent must be for the same invention as the original patent. R.S. § 4916. P. 315 U. S. 675.

2. Original Patent No. 1,998,878, to Lefort, for a process for the production of ethylene oxide, called for the introduction into a heated reaction chamber of ethylene and oxygen, in the presence of a catalyzer, and also, as an essential, the voluntary introduction of water. Reissue Patent No. 20,370, in describing the process, treats the voluntary introduction of water as permissive, but not mandatory. Held, that the reissue is void. P. 315 U. S. 677.

3. Although it is the duty of a court to determine for itself, by examination of the original and the reissue, whether they are for the same invention, it is permissible, and often necessary, to receive expert evidence to ascertain the meaning of a technical or scientific term or term of art, so that the court may be aided in understanding not what the instruments mean, but what they actually say. P. 315 U. S. 678.

4. It is inadmissible to enlarge the scope of the original patent by recourse to expert testimony to the effect that a process described and claimed in the reissue, different from that described and claimed in the original patent, is, because equally efficacious, in substance that claimed originally. P. 315 U. S. 678.

5. The omission from a reissue patent of one of the steps or elements prescribed in the original, thus broadening the claims to cover a new and different combination, renders the reissue void, even though the result attained is the same as that brought about by following the process claimed in the original patent. P. 315 U. S. 678.

121 F.2d 665 reversed.

Certiorari, 314 U.S. 603, to review the affirmance of a decree of the District Court upholding a reissue patent in a suit for infringement.

Page 315 U. S. 669

MR. JUSTICE ROBERTS delivered the opinion of the Court.

This is a suit by the respondent to restrain the petitioner from infringing claims 8 and 9 of reissue patent No. 20,370. The application for reissue was filed September 25, 1936, and granted May 18, 1937. The original patent was No. 1,998,878, applied for March 22, 1932, and granted April 23, 1935, to Theodore Emile Lefort of Paris, France, for a "Process for the Production of Ethylene Oxide." The application was based on earlier French patents. The respondent purchased the United States patent in April 1936, and, as a result of its study thereof, the patentee was persuaded to apply for the reissue.

If the reissue patent is valid, no question is now raised as to petitioner's infringement of the claims in suit. The District Court held the patent valid and infringed. [Footnote 1] The Circuit Court of Appeals affirmed. [Footnote 2] We took the case because of an apparent conflict with decisions of this court and several Circuit Courts of Appeals, to the effect that a reissue patent must, under the statute, be for the

Page 315 U. S. 670

same invention as the original patent. [Footnote 3] The petitioner also raised a question as to intervening rights which, in the view we take, need not be considered or decided.

Ethylene is a hydrocarbon gas, C2H4. For a long time, it was thought impossible directly to oxygenize it to form C2H4O by bringing oxygen and ethylene into contact, though the formation of ethylene oxide by direct oxidation was commercially desirable. Efforts at direct oxidation, instead of producing the oxide, resulted in less desirable oxygenated compounds such as aldehydes. Lefort conceived the idea of effecting the oxidation by catalytic reaction -- that is, the use of a substance, which, in some unexplained way, causes a chemical union or reaction when the two substances to be affected are brought into contact in its presence under given conditions. He recognized one incident of the direct oxidation process as applied to ethylene tending to decrease its efficiency -- namely, that, in addition to the principal reaction producing C2H4O, there occurs a side reaction by which a portion of the ethylene is converted into carbon dioxide and water, and, to that extent, the ethylene is wasted. He found that, by certain control of the process, this side reaction could be so restricted as not to decrease the production of ethylene oxide below a profitable level.

According to both the original patent and the reissue, ethylene and oxygen are to be introduced into a heated reaction chamber in the presence of a catalyzer. The petitioner insists that the original patent also treats as

Page 315 U. S. 671

a mandatory or necessary step the voluntary introduction of water, whereas the reissue in specification and claims 8 and 9 omits this requirement, and therefore describes a different process. The respondent, on the other hand, asserts that, as both patents describe the oxygen of air as that which may be used, and as atmospheric air contains moisture, the first, specifying water, and the reissue specifying air, both contemplate the introduction of water in some form, and therefore are for the same process. [Footnote 4] This dispute must be resolved by a comparison of the disclosures of the two instruments. If that comparison leads to the conclusion that the reissue is not for the same invention as the original, the reissue is void as not within the terms of the statute.

We shall postpone discussion of the tests of identity or difference of invention, and the use of expert testimony, to a statement of the criteria of judgment furnished by the language of the specifications and claims of the two documents.

The opening paragraph of the original patent is:

"This invention has for object a process for the production of ethylene oxide, which mainly consists in subjecting ethylene to the simultaneous action of the oxygen of air and of water in presence of a catalyzer and, if need be, of hydrogen."

After referring to the use of hydrogen as optional, the specification deals with the character and composition of metals to be used as catalyzers. It then speaks of the elements to be used to obtain the desired reaction thus:

Page 315 U. S. 672

"The ethylene can be obtained from any source of supply: . . ."

"Water can be admitted to the reaction vessel, either in the liquid state, or as steam."

"The oxygen can be the oxygen of the air, this latter gas being introduced in the reaction."

Immediately following, it is said:

"The efficiency of the reaction is increased by diminishing the CO2 which is formed, by introduction, in this reaction, of a suitable quantity of water. A suitable quantity of CO2 can also be previously introduced in the reacting gases."

The CO2 which it is desired to diminish is that which is formed by the undesirable side reaction above mentioned. This reaction is again mentioned, and the introduction of water again specified thus:

"Moreover, the applicant has found that the reaction giving CO2 is, contrarily to previous belief, a reaction of oxidation independent from that giving ethylene oxide and from that giving aldehydes. From experiments effected by the applicant, it results that, if water is introduced in suitable quantity, the reaction is not only facilitated, as above stated, but, in addition, the reaction giving CO2, probably by direct oxidation of ethylene according to the equation:"

"C2H4+3O2 = 2H2O+2CO2"

"is checked, owing, as is probable, to the partial pressure of water."

It is further said that the experiments indicate that the side reaction producing CO2 and water may be completely checked and the efficiency of the reaction producing ethylene oxide increased if CO2 is previously introduced in addition to the water and the reacting gases.

Three modi operandi are next indicated as examples. In the first, compressed ethylene and compressed air are led, with or without hydrogen, into a heated tube containing

Page 315 U. S. 673

the catalyzer, the tube being connected with a circulating pump to supply water under pressure. In the second, the catalyzer is introduced and the tube heated, and then "a mixture of ethylene, air, water vapor and hydrogen" is sent through the tube. In the third, the catalyzer is introduced into a high-pressure tube filled with water. Pure ethylene is added "in order that it can dissolve in the water." The tube is heated, and "air and hydrogen are slowly introduced."

The specification concludes:

"The experiments . . . have shown that, in presence of the catalyzers indicated, water, in the form of steam or not, considerably promotes the reaction ensuring the production of ethylene oxide."

All of the seven claims include oxygen and water or steam. Claim 1 is typical. It runs:

"A process for the production of ethylene oxide, consisting in subjecting ethylene to the simultaneous action of oxygen and water, in presence of a catalyst [describing the catalyst] at a temperature between 150

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