Badische Anilin & Soda Fabrik v. Kalle

LACOMBE, Circuit Judge

(after stating the facts as above). It would certainly seem a work of supererogation to undertake to add anything to the exhaustive discussion of the issues in this cause which is found in the opinion of Judge Coxe, sitting at circuit. 94 Fed. 163 . Inasmuch, however, as the record is voluminous, the briefs and arguments most elaborate, it may be well to indicate, as briefly as the nature of the ease will admit, the reasons why we concur in his findings and conclusions.

Certain propositions are now either expressly conceded by both sides or are undisputed upon the proof. A preliminary statement of them will somewhat simplify the discussion.

The "earliest date of invention'’ is January 2, 1892, the date of the filing of the complete specification for the British patent. The chemical product safranine azo naphthol was old; the patent asserting, and the complainant contending, however, Unit the literature of the art discloses no prior safranine azo naphthol available as an anticipation which was soluble in water. It will, of course, be readily understood that a dyestuff which is insoluble in water is not as available in the art as is one which is water soluble. “I agree with the statement,’" says one of defendants’ witnesses, “that the nonsulphonated compounds, when once prepared, cannot be dyed on account of their insolubility.” The product in suit belongs to a group of chemical compounds prepared by the action of a diazo compound and an oxy, that is a phenolic body, which are referred to in the prior literature as insoluble in water; but prior to the patent it had been found that by the introduction of a sulpho-acid group they could be so transformed as to be rendered soluble for application in dyeing processes. The chemistry of this transformation need not be discussed here. It is sufficient to say that all the witnesses recognize two distinct varieties of azo dyes of the kind under discussion, — the unsulphonated and the sulphonated. Moreover, the solubility secured by sulphonation is gained at the cost of rendering the product unlit for cotton dyeing generally.

*806 There is no prior American patent, and although the answer, as amended, sets up a prior use at Buffalo, N. Y., no evidence was produced to establish it. There is no proof which would warrant a conclusion that the patentee at the time of his application did not believe himself to be the original and first inventor or discoverer. Therefore, under section 4923, Rev. St. U. S., testimony tending to show knowledge or use in a foreign country need not be discussed. It will be sufficient to inquire if there is proof that Julius’ invention was, prior to January 2, 1892, “patented or described in a printed publication”; and that description must be such as to show that the article described in the patent can be certainly arrived at by following the description (Atlantic Co. v. Parker, 16 Blatchf. 295 , Fed. Cas. No. 625), without the assistance of local'prior knowledge or local prior use in the foreign country where the description is published..

Much time and space have been devoted to an effort to establish “prior use” in Germany. Since such prior use, if established, would be no defense, under section 4923, it is difficult to understand .why the record is thus incumbered. The various patents or publications on which defendants rely are the following:

Holliday Patent.

British letters patent were granted April 14, 1881 (No. 1,637), to Thomas Holliday, of the firm of Bead, Holliday & Sons, of Huddersfield, for an invention of “improvements in obtaining coloring matters for use in coloring cotton and other textile fabrics.” This is the first printed publication on the subject of safranine azo naphthol as a coloring matter. The specification states:

“The improvements relate to the employment of the coal-tar color, known in commerce as ‘safranine,’ and which color I treat with nitrous acid, and combine the product with alpha or beta naphthol. or mixtures thereof, and which combination may be made in the presence of the fiber. As an example for carrying out these improvements, I prepare — First, a solution of. say, 2 parts of naphthol, 1 part of caustic soda, and 100 parts of water; secondly, a solution composed of 1 part of safranine in 1,000 parts of water, with two parts of muriatic acid, 22 degrees Beaume; to this latter solution add 10 parts of nitrite of soda solution, 30 degrees Beaume. I do not, however, confine myself to this means of azotizing, as other methods may be adopted. By mixing these respective solutions, the coloring matter will bo precipitated. I prefer, in mixing these solutions, to add the second to the first, but this may be varied. The combination of the solutions in the presence of the fiber may be effected by first impregnating the fiber with the first-mentioned solution, and then with the second solution, and finally with an alkali, so as to fully develop the color. The order of the impregnations, as well as the strengths of the solutions, may be varied; care being taken that the azotized safranine, the naphthol, and the fiber are simultaneously present when an alkali operates to develop the color.”

It will be noted that this patent calls for a combination to be “made in the presence of the fiber”; tliat is, the fiber is first impregnated with one constituent, and then with the other. This was at the time a common method for dyeing with colors which, in combination, were insoluble, and at that time no dyes were produced on the fiber save those which were insoluble in water. A direction, therefore, to dye in presence of the fiber may fairly be taken as a- *807 declaration that the coloring' matter is insoluble. The three experts who testified for the complainant all stated that they had repeatedly experimented, following the directions of this Holliday patent, and that the product was inrariably insoluble in water. They were not cross-examined as to these experiments, nor did any witness for defendants contradict them in this particular. Therefore although the Holliday patent does not expressly state whether its product is soluble or insoluble, it must be understood to be water insoluble, and, indeed, defendants brief seems to concede this. The Holliday patent, therefore, does not describe a water-soluble safranine azo naphthol.

Chemische Industrie 1882, p. 7.

This is a mere reference to the Holliday patent. It is not separately discussed in appellants’ brief, and is referred to here solely to indicate that none of defendants’ alleged anticipations have been overlooked.

The Moniteur identifique.

In September, 1885, the firm of Beyer & Kegel applied for a German patent in manner following:

“Preparation of Xew Blue Coloring Matters.

“It is known that the safranines obtainable from primary aminos can be transformed with nitrous acid into diazo compounds. We have now found that the combinations of these diazotizod safranines with phenols or its sulpho acids form dyestuffs, which are distinguished by a dark blue, indigo-like shade. We give the following examples: (T) 32 kg. phono safranine are dissolved in a sufficient, quantity of water, mixed with about 25 kg. muriatic, acid, and converted into the hydrochlorate of the diazo compound by adding an aqueous solution of 7 kg. of sodium nitrite. This diazo compound is then poured into an alkaline solution of 22 kg. B-naplitlioI. whereby the coloring matter is formed. (2) Tu order to prepare a corresponding dyestuff from the safranine which is obtained by oxidation of dinmidoiolnol and a mixture of o. toluidin and aniline, we. proceed as follows: 35 kg. of the saf'rjmine referred to are dissolved in water, and transformed into the corresponding diazo compound, with muriatic acid and 7 kg. of sodium nitrite. If this diazo compound is allowed to mm into an alkaline solution of 35 kg. B-naphthol monosnlphonate of soda (for instance, of the soda salt of the so-called ‘Schaef-fer Acid’), a blue dyestuff is formed, dyeing mordanted cotton indigo blue shades. Quite analogous results are obtained with phenol, resorcine, B-napli-thol. the other naphthol monosulpho acids, and naphthol di and tri sulpho acids.

“Claim: Process for the preparation of blue dyestuffs, which are formed by combination of diazotizo.d safranines of the said class with phenols or its sulpho acids.”

The German patent office aslted for more detailed statements, which, presumably, were furnished. Inspection of this application shows that it dealt with two distinct products, — the nonsulphonat-ed, example 1, and the .sulphonated, example 2. Opposition developed, and the Holliday patent was cited, whereupon Beyer & Kegel wrote to the patent office:

“AVe have noted and convinced ourselves that * * * tho firm Bead, Holliday & Sons have taken an English patent for azo <-' ors by combination of diazo safranine and naplithols. * ⅞ * and see fm a it that it is Holli-day’s only object to produce on the fiber the color insoluble in water from safranine and alpha and beta naphthol, or from mixtures of both. .Xow, according to our researches, two substances are formed by the action of diazo *808 safranines on the naphthols, one soluble in acid, and one insoluble, which can be separated by acids. Now, we use the coloring matter soluble in acid, whilst the insoluble one, which is probably identical with that of Holliday produced on the fiber, remains behind on filtration. But as now Holliday did actually first effect the combination of diazo safranines with naphthol, as we have convinced ourselves, we therefore withdraw' our application for a patent for the combination of the diazo safranine with phenol, resorclne, alpha, and beta naphthol; but, on the other hand, there is probably hardly anything to be objected against the patenting of a process for the preparation of azo coloring-matter from diazo safranines and the phenol or naphthol sulpho acids, such as are particularly mentioned in our patent application L 3,337 III., and the amines or their sulpho acids of the supplement patent L 3,337 HI.”

Thereupon the German patent office issued patent 88,310 to Beyer & Kegel for "process for the preparation of blue coloring matter by the combination of diazo safranines with naphthol sulpho acids”; the process set forth being that described in example 2 of the application supra. It contains a list of dyestuffs prepared under the patent, giving their shades, with a statement whether or not they are soluble in water, — presumably the further details required by the patent office. Inasmuch as the German patent, as issued, is confined to the sulphonated product, it is not available as an anticipation. 1

Applications for patents in Germany are confidential. They are not published, although their contents are divulged to persons seeking to oppose issue. For that reason this original German application is not set up as an anticipation. But in 1886 the Moniteur Scientifique, a French periodical, published what purported to be a copy of the German application of Beyer & Kegel. This transía-' tion need not be repeated here. It is substantially as set forth above, with the additibn of a table or list of shades and constituents. In this list appears the following:

“Diazo safranine with:

T Mol. alpha naphthol: Blue, insoluble in water.

“ beta naphthol: Blue, violet, insoluble in water.”

The "description in a printed publication,” therefore, which the Moniteur Scientifique discloses is the description of a safranine azo napthol insoluble in water, and therefore not an anticipation of the water-soluble product of the patent in suit. Defendants have introduced much testimony in a hopeless attempt to strike these words “insoluble in water” out of the description. There is no ambiguity in them which calls for expert enlightenment to interpret them. We have no hiatus to be filled by appeal to the general literature of the art. It would make no difference if the inevitable result of following the process of example 1 should be a water-soluble product. (The evidence by no means establishes this.) Nor would the knowledge or experience of any number of chemists (unpublished to the world) that the phrase was "erroneous,” or "a mistake,” or "an interpolation” change the situation. The "description in a printed publication” of the statute is to be found within the four corners of such printed publication. Judge Coxe tersely and accurately expresses .the law and the reason for it in the following passage:

“Tbe question is, wbat does tbe prior publication say? not wbat it might have said, or wbat it should have said. If prior patents and publications can *809 be reconstructed by extrinsic evidence to fit the exigencies of the case, the inquiry will no longer be confined to what the publication communicates to the public, but it will be transferred to an endeavor to ascertain what its author intended to communicate.”

Table in Schultz’s Book, 1887-1890.

There is a tabulation in Prof. Schultz’s “Chemie des Steinkohlen-theers,” in which appears the following:

It is contended that the absence of any statement in the last column, headed “Remarks,” and the statement of the shade, import that the product is water-soluble. Judge Coxe dismissed this from consideration as being a mere skeleton, falling far short of the clear and precise statement required by the law. Upon its face it refers to the product of “German patent No. 38,310,” and that, as we have seen, was confined to the sulphonated product. It is immaterial to inquire what German chemists might have supposed that Prof. Schultz meant, nor what he now says he meant, nor what he really did mean, nor whether the reference to the German patent is a “mistake,” nor whether it is, in the opinion of chemists, “absurd.” Schultz confined the “description in [liis] printed publication,” not to the chemical products referred to in Beyer & Kegel’s application, but to those which they were content to cover by their patent. Such reference cannot now he stricken out, and the limits which he thus, intentionally or not, set to his publication, cannot now be disturbed.

Beyer & Kegel’s French Patent.

This was issued October 31, 3885, for a “process for the production of dyestuffs derived from safranine.” It covers process for both non-sulphonated and sulphonated products, in which respects it differs from the German patent. It contains no table or list giving shades and solubility of the different varieties of product. The material portion reads:

“(1) Dissolve 32 kg. of plieno safranine in the necessary quantity of water, add 25 kg. of mnriatic acid [acide ehlorhydrique], and form the diazo chloride by the addition of a watery solution of 7 kg. of nitrite of soda. By running *810 this diazo compound into an alkaline solution of 22 kg. of beta naplitliol, the coloring .matter is formed. (2) To produce a corresponding coloring matter from ⅜ * ⅜ [safranine T], proceed in the following manner: Dissolve 35 kg. of the mentioned, safranine in water, and transform the same into the corresponding diazo compound by means of muriatic acid and 7 kg. of nitrite of sodium. By adding the formed diazo compound to an alkaline solution of 35 kg. of the soda salt of beta naphthol monosulfoacid (e. 9, the sodium salt of the'acid known as Schaeffer’s), a blue coloring matter is formed, which dyes mordanted cotton an indigo shade.”

This second recipe, it will be perceived, deals with the sulphonated product, and it is of the product thereby produced that the statement is -made that it “dyes mordanted cotton an indigo shade.” Whatever implication as to solubility there may be in this last-quoted phrase therefore applies to this sulphonated product, not, as some of defendants’ witnesses suggest, to> the product of the first recipe. Indeed, the testimony of one of these witnesses as to the alleged “direct statements” of the French patent are so contrary to its text that it is difficult to believe he could have had the document before him when he testified. With the sulphonated product this case is not concerned. Discussion may be confined to the first recipe of this French patent. This recipe gives exact quantities, save in two particulars: It • fails to state what percentage of acid is to be taken and what amount of what substance shall be used to produce the alkalinity of the “alkaline solution of 22 kg. beta naphthol.” Alkalinity might be produced by caustic soda or by carbonate of soda, but it was known that naphthol would not dissolve in water with carbonate of soda alone; it will dissolve in water with caustic soda. RTow, it is a fact established by the testimony'in this case that,-if the blank in this recipe be filled with a certain quantity of caustic soda alone (or with a certain other quantity of the same to produce solution, the alkalinity being thereafter preserved with carbonate of soda), the result will be water-soluble safranine azo naphthol; but, if the blank be filled with a certain larger quantity of caustic soda, the result will be water-insoluble safranine azo naphthol. Where, then, are we to turn for information as to how this blank should be filled when we are trying to defeat a patent by reference to what has taken place in a foreign country? Not to the individual experiences of foreign dyestuff makers, nor to the unpublished theories of foreign chemists, but to the literature of the art, — to the “description in a printed publication,” which the statute calls for. The literature of the art of producing safranine azo naphthol is brief. Defendants’ witness, Dr. Schweitzer, says:

“The English Holliday patent is the only one (prior to Julius) giving kind or quantity of alkali to be used in the preparation of safranine azo naplitliol. This Holliday patent is the first printed publication on the subject. The subsequent publications do not mention the quantities or qualities any more, because these details were unnecessary for everybody skilled in the art at the date of those publications.”

Individual experimenters might, in the light of information derived from their own experience or from the general literature of chemistry, have used, some one quantity, some another, when practicing the first recipe of the French patent; but certainly one skilled in the *811 art would be expected to determine the “kind and quantity” unspecified therein by reference to the authoritative literature already quoted. It he did so, and used the kind and quantity specified in the Holliday patent, he would inevitably get a water-insoluble product, which is precisely what he would expect to get, because recipe 1 of the Beyer & Kegel .French patent is substantially identical with recipe 1 of the Beyer & Kegel application its published in the Moni-teur identifique, and that publication itself declares that the product is water insoluble. The description in the French patent, therefore', when completed by the descriptions in the other printed publications which treat of safranine azo naphfhol, does not disclose the invention of Julius.

The Agenda and the Textile ‘Colorist.

The Agenda du Chemiste is a French periodic-til, which in 1890 published an article on azo colors. Jn September, 1890, the Textile Colorist, a periodical issued in Philadelphia, published a translation, or, to speak more accurately, a paraphrase, of this article. During the cross-examination of one of complainant’s witnesses the article in the Agenda was produced, a translation verified, and both put in evidence; the witness being examined thereon at considerable length. After all the testimony was closed and printed, and the case was on the calendar ready for final hearing, defendant s’ counsel applied to the circuit court (the writer of this opinion then sitting) for leave to reopen, (he case to put in the article from ¡he Textile Colorist, and to take further testimony thereon. The expressed ground for this application was that by reason of inadvertent mistakes of translation the article in the Textile Colorist, although purporting to be a copy, conveyed a different meaning from the meaning of the article in the Agenda, already in evidence. Upon an examination of the two articles the court was not satisfied as to the truth of this assertion. Nevertheless, since they were not textually identical, it was deemed best to grant the motion. The case was thereupon reopened, the article put in evidence1, and testimony taken, the cause going over to the ensuing term. The result is thus stated in the brief of defendants’ counsel: “With, the exception of (he first paragraph of the Agenda, which is omitted in (he Textile Colorist, the two are identical.” It will be sufficient, therefore, to quote from the Agenda:

“Colors Formed Directly on the Fiber.

“The greater number of the azo (leriyatiyes employed In dyeing are snlplio derivatives, and this introduction of a snlpho group into their molecule has for its purpose to render them soluble in water, and to permit of their use in dyeing. For several years it has been sought to produce ¡hese compounds directly on the fiber, by a successive impregnation with tint diazo derivative, and then with the phenol or naphthol, which develop the desired shade by (heir combination. The ingrain colors of Brooke, ¡Simpson & Spiller, which contain as basis the primuline, a derivative of tliiotoluidine, are the first example's of this class of products. The pieces of cotton exhibited in the show case of Mr. Horace Koechlin have demonstrated that the reaction giving rise to the azo derivatives can be accomplished on the tissue as smoothly as in the vat of the factory, and that one also obtains perfectly even and regular dyeings. Hr. Horace Koech-lin. aided by M. Georges Galland, has found that to insure success it is necessary to invert the usual order of the operations, by first impregnating the cloth with the phenol, and afterwards with the diazo solution. For instance, *812 one impregnates the cotton tissue first with B-naphthol. 25 gr.; caustic soda at 38°, 25 gr.; water, 1 litre. One pads, one dries in the hot flue, and one passes for thirty seconds through the following diazo baths made by mingling the three solutions mentioned, in the order given. * * *

“Blue:

1st. Safranine of 10 p. c. 1 litre.

Hydrochloric acid. 73 gr.

2d. Nitrite of soda. 20 gr.

Water . ⅝ litre.

Ice . 250 gr.

3d. Acetate of soda. 250 gr.

Water 1. 2 litres.”

The full test of this article thus quoted seems to be a complete answer to the far-fetched inference, sought to be drawn by defendants, that it contains a description of a water-soluble dyestuif formed in substance; that is, as a separate product apart from the fiber. Prom the beginning to the end of the article it deals with formation on the fiber, first produced by Brooke, Simpson & Spiller, and improved upon by Koechlin. There are two references only to any other process, — one (in the first paragraph), to the sulphonated group; the other, a bare statement of the fact that the reaction which gives rise to azo derivatives can be accomplished in the vat of the factory. Manifestly, this last reference is to a reaction already known, and, since the result of following the process of the Agenda is to produce a water-insoluble product on the fiber, the “reaction accomplished” in the vat “as smoothly” must refer to a reaction giving a like product in substance. Certainly, this Agenda article contains no description of a water-soluble safranine azo naphthol.

Other Prior Publications.

An article in the Textile Colorist for 1887 is referred to in the brief as giving precisely the treatment prescribed in the acid portion of the patent in suit. We find no evidence sustaining this proposition, and the article itself shows that it refers to those bodies which “are by treatment with sulphuric acid transformed into sulpho acids,” —the sulphonated group, with which we are not here concerned.

Two remaining prior publications, viz. Priedlander’s Fortschritte and Andressen in Berichte, have not been discussed in appellants’ brief, and therefore need not be here considered.

The next branch of the case presents the question of invention. That is sufficiently disposed of in the exhaustive discussion contained in Judge Coxe’s opinion. He has stated every argument suggested in defendants’ testimony fairly, fully, and more forcibly than do the witnesses themselves. Having thus summarized the argument against invention, he answers it clearly, categorically, and comprehensively. The entire discussion is too long to quote here; to undertake to give excerpts from it would not fairly present the argument.' It is sufficient to say that we concur fully in his findings and in his conclusions.

Besides a reiteration of the arguments thus disposed of at circuit, —upon which appellants’ counsel has, as he was entitled to, asked the opinion of this court, — he criticises Judge Coxe’s reasoning as being founded on a fundamental misapprehension. The brief contains these statements:

*813 “The learned judge [must have] supposed that the color in suit was the first and only coal tar derived substitute for vegetable indigo, to say nothing of the supposition that safranine azo beta naphthol of the prior art was a worthless body. Both suppositions -were completely contrary to the fact. * * * It is to these misapprehensions, particularly the misapprehension that the complainant’s color stood alone in the art as a substitute for vegetable indigo, and was its first known substitute, that defendants largely attribute his decision in favor of the patent.”

The evidence in this case abundantly shows that the water-insoluble safranine azo beta naphthol of the prior art (the italicized words are carefully omitted in the brief quoted from) was, as Judge Coxe called it, “a comparatively worthless and neglected body.” There is no warrant for the supposition that the judge supposed that the "color in suit was the first and only coal tar derived substitute for vegetable indigo.” What he said in the opinion is this:

“To produce a cheap, artificial soluble substitute for indigo, possessing many of its advantages, and in some respects superior to indigo, was surely no mean achievement. Learned chemists in Germany and England, and probably in other countries, had long been experimenting to produce a result the importance of which was universally recognized, but Julius was the first to succeed.”

Defendant enumerates many “coal tar derived substitutes for vegetable indigo, all blue cotton dyes,” including alizarine blue. None the less the statement in the opinion is accurate. Alizarine blue is dyed with a more expensive mordant. Some of these enumerated dyes are inferior in fastness to air, or to water, or to soap, or in cheapness, or in convenience of dyeing, or in shade, or otherwise. No one of them is indicated which combines as many resemblances to indigo as does the color in suit. The most persuasive evidence to the fan that Indoine Blue is a substitute for indigo so superior to others as to justify all that Judge Coxe has said of it: is found in this record itself, where a determined, acrimonious, persistent, and extended assault upon the validity of the patent has been made by 11 expert witnesses marshaled by the defendants and by other infringers. It is not usual to go to such trouble and expense to get a product out of the monopoly of a patent if it be only one of a large class all equally available to the manufacturer. The Bengaline Blue of defendants is identical with the Indoine Blue of complainant, and we find nothing in the record to challenge the accuracy of the following statements which defendants publish of this dyestuff:

“The newest anil most perfect substitute for indigo on cotton, [requiring! only about half the quantities of these mordants necessary for other basic aniline colors.” “The resistance to strong boiling alkalies or acids far exceeds vat-dyed indigo, and the cost of dyeing is from 38 to 30 per cent, less (according to shade) than indigo vat. The fastness to light, air, rain, etc., is most remarkable.”

The identity of defendants-' Bengaline Blue with the product of claims 2 and 4 is overwhelmingly established. In selling this product with directions for producing (he lake of claim 1, and promoting such sales by distributing sample swatches thus dyed, they also infringe claim 1. The decree of the circuit court is sustained, with costs.