
    388 F. 2d 346
    BOWSER, INC. v. THE UNITED STATES
    [No. 25-61.
    Decided December 15, 1967]
    
      
      Clarence E. Threedy, attorney of record, for plaintiff. Bernard Hoban, of counsel.
    
      William W. Fleming, witli whom was Acting Assistant Attorney General J. William Doolittle, for defendant. Thomas J. Byrnes, of counsel.
    Before Cowen, Chief Judge, Laramore, Dureee, Davis and Collins, Judges.
    
   Per Curiam:

This case was referred to Trial Commissioner Donald E. Lane with, directions to make findings of fact and recommendation for conclusions of law. The commissioner has done so in a report and opinion filed on December 21, 1965. Exceptions to the commissioner’s findings and recommended conclusion of law were filed by tbe defendant, and the case has been submitted to the court on oral argument of counsel and the briefs of the parties. Since tbe court is in agreement with the opinion and recommendation of the commissioner, with modifications, it hereby adopts the same, as modified, as the basis for its judgment in this case, as hereinafter set forth. Plaintiff is, therefore, entitled to recover reasonable and entire compensation for the unauthorized use of claims 1, 2, and 3 of patent Be. 24,136, and judgment is entered to that effect. The amount of the recovery is to be determined in further proceedings before the trial commissioner pursuant to Buie 47 (c).

Opinion of Commissioner

Lane, Commissioner:

This is a patent suit under Title 28 U.S.C. § 1498, in which plaintiff seeks to recover reasonable and entire compensation for the unauthorized use of a patented invention. Plaintiff alleges infringement of claims 1, 2, 3, and 5 of reissued U.S. Letters Patent No. Be. 24,138 which issued to the plaintiff April 3,1956, on an application filed January 19, 1956. The reissue application was based upon patent No. 2,725,986 issued December 6, 1955, to the plaintiff as assignee, upon an application filed August 25, 1950, by Harvey E. Marvel, the inventor and assignor. The reissued patent No. Be. 24,136 will be referred to as the patent in suit and patent claims 1, 2, 3, and 5 thereof as the claims in issue. Plaintiff is the owner of the entire right, title and interest in the patent in suit. It is found that the patent claims 1, 2, and 3 are valid and infringed and that patent claim 5 is valid but not infringed.

The invention disclosed and claimed in the patent in suit relates to a separator for removing water entrained or suspended in liquid fuels used in internal combustion engines. If the water is not removed from fuel subjected to low temperatures, the water will crystalize and plug screens, filters and other parts of an engine fuel supply system thereby restricting the flow of fuel to the engine possibly causing power failure. This problem is particularly dangerous for jet aircraft flying at high altitudes or in low temperature weather.

The invention as defined in the patent claims in issue relates to a water-fuel separator comprising a tank having an inlet for receiving a liquid mixture of water particles suspended in a liquid fuel and having two outlets, one for fuel disposed in the upper portion of the tank and the other for draining the water from the bottom. A baffle or deck plate is horizontally positioned between the inlet and the outlets forming an upper chamber and a lower chamber to prevent direct liquid communication between the inlet and outlets. Holes or ports are formed in the deck plate defining a liquid flow path between the chambers. Tubular shaped coalescing cartridges having closed lower ends and containing compressed resin-bonded fibrous material depend from the deck plate and receive therein liquid passing through the ports. The liquid mixture then flows radially outward through the fibrous material wherein the water particles wet the individual fibers and coalesce into drops. The water drops are dislodged from the fibers and are carried along by the liquid fuel. A straining shroud disposed externally of each cartridge receives the mixture issuing from its corresponding cartridge and passes the fuel therethrough but retains the water drops on the inside thereof. The water drops gravitate to the bottom of the tank to be drained therefrom. The fuel passing through the shroud continues on and flows out through the fuel outlet.

Plaintiff has charged that water-fuel separators purchased by the defendant from the Kichmond Engineering Company, Inc., hereinafter referred to as the accused device, infringe the claims in issue. The parties have agreed that the issue of reasonable and entire compensation be deferred until the liability of the defendant has been established. The issue of liability, i.e., infringement and validity of the claims in issue, is now before the court.

Defendant contends that the patent in suit is invalid and also that the accused separator device does not infringe the patent claims in issue.

The claims in issue have previously been held to be valid in Richmond Engineering Co., Inc. v. Bowser, Inc., 264 F. 2d 595, 120 USPQ 508 (4th Cir. 1959). Richmond Engineering Co., Inc. is the supplier of the accused device purchased by the defendant.

The patent laws provide that an issued patent carries a presumption of validity placing the burden of establishing invalidity of a patent in the party asserting it. Title 35 U.S.C. § 282. The strength of the presumption varies with the substance of the assertion, e.g., if the asserting party relies on prior art that previously has been considered either by the Patent Office or by another court then the presumption of validity is strong, or if the asserting party cites prior art that is more pertinent than that considered by the Patent Office or another court then the presumption of validity is considerably weakened. See Preformed Line Products Co. v. Fanner Mfg. Co., 328 F. 2d 265, 271, 140 USPQ 500, 505 (6th Cir. 1964), and Ransburg Electro-Coating Corp. v. Proctor Electric Co., Inc., 203 F. Supp. 235, 243, 133 USPQ 3, (D.Md. 1962), aff'd, 317 F. 2d 302 (4th Cir. 1963).

The more pertinent prior art disclosures cited by the defendant were considered either by the Patent Office or by the court in Richmond Engineering Co., Inc. v. Bowser, Inc., supra. There is a strong presumption that the patent here in suit is valid.

Defendant contends that the claims in issue are vague, ambiguous and indefinite. The patent statute Title 35 U.S.C. § 112 requires that the claim language be sufficiently definite to point out and distinctly define the scope and boundaries of the claimed subject matter. Defendant asserts that the word “compressed” in claims 2 and 5 and the phrase “fibrous filter material” in claims 1 and 3 are too broad because they fail to incorporate the limitations recited in the preferred embodiment described in the patent specification. It is fundamental in the patent law that the claims are not confined to the particular embodiment disclosed in the description, as it is the claims rather than the specification which measure and define the invention. See Smith v. Snow, 294 U.S. 1, 11, 24 USPQ 28 (1935). The claims in issue adequately define the metes and bounds of the invention.

Defendant also contends that the patent specification is defective and fails to comply with Title 35 U.S.C. § 112. The statute requires that the description be sufficiently explanatory to enable any person skilled in the art to practice the invention. The disclosure called for need not be greater than that which is reasonable under the circumstances, having due regard to the nature of the subject matter involved. It is found that the description contained in the patent in suit clearly meets the minimum requirement of the statute.

Defendant further contends that the invention is inoperative based upon the fact that the first separator embodying the invention failed to remove 100% of the water from jet fuel. The evidence of record is clear that the said separator did remove a substantial amount of the water from jet fuel and was operable.

Central to the Government’s defense is its argument that the invention defined by the claims in issue did not satisfy the requirement of “nonobviousness” dictated by 35 U.S.C. § 103 (1964).

For the reasons hereinafter stated, we reject defendant’s contention and find that the invention was not obvious within the meaning of section 103.

We recognize there is some disagreement among the courts and commentators of the extent to which section 103 was intended to codify earlier judicially declared standards of patentability. We find ourselves in accord with those who have interpreted section 103 as providing, along with, the section 101 and 102 requirements of “utility” and “novelty”, respectively, the sole tests of patentability in all cases. We feel, therefore, that section 103 has eliminated the need to apply “severe tests” of patentability such as “unusual and unexpected result” and “the whole must in some way exceed the sum of its parts,” and the fact that a patent in issue is a combination patent provides no exception. We do not say that a finding, for example, of an “unexpected result” should be disregarded; clearly it can be considered as one of the factors contributing to “nonobviousness”. However, we think that such a finding is only one of the factors which may be considered, and that its presence or absence alone is not dispositive of the issue of obviousness.

In our view the question of “nonobviousness” is properly resolved by a straightforward application of the objective guidelines announced by the Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966), to wit,

Under § 103 the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy * * *.

The more important prior art cited is identified and discussed in detail in the accompanying findings of fact.

Defendant contends specifically that the claimed invention was anticipated by Robinson patent 2,555,607 and a commercially used separator substantially identical with the separator shown in said Robinson '607 patent. The Robinson device relates to the same liquid-separating art as the invention in suit. The separator is comprised of an elongated horizontal tank enclosure having a coalescing unit in one end and a separating unit in the other end. The coalescing unit comprises a tubular fiber glass coalescing mat horizontally positioned therein for coalescing the water particles into drops as the mixture flows radially inward therethrough before moving horizontally to a separating unit at the other end of the enclosure. The separating unit has a number of disc-shaped sheets which are pervious to a hydrocarbon liquid and impervious to water. The Eobinson patent '607 does not show a straining means disposed externally or surrounding the tubular fiber glass coalescing mat in an economically compacted space arrangement.

In 1947, Eobinson developed a gasoline-water separator, a number of which were sold and delivered to the Army for removing undesired water particles from gasoline to be used in flame thrower devices. In 1948, Eobinson, while employed by Fram Corporation, developed two experimental-model separators (AX-4075 and AX-4872) which were subsequently successfully tested by the defendant’s Bureau of Ships under a testing program to determine the availability and suitability of gasoline-water-dirt separator-filter for filtering aviation grade gasoline aboard aircraft carriers. In 1949, Fram supplied the Navy Department with a separator-filter unit, designed by Eobinson, for experimental use in a security-classified installation located at the Bayonne Annex of the New York Naval Ship Yard to simulate a high capacity fuel supply system for servicing airplanes with aviation grade gasoline aboard an aircraft carrier. At the completion of the testing, the Navy purchased eight additional separator-filter devices for use aboard aircraft carriers. The procurement contract was unclassified. Four of the separator devices were delivered to the Navy in April 1950, and the remaining four were delivered in August 1950. These separators did not have a straining means disposed externally of the coalescing cartridge as recited in the claims in issue. It is concluded that neither the separator devices designed by Eobinson nor his '607 patent anticipates the invention defined in the claims in issue.

Defendant places reliance upon the teaching of Wilson patent 1,463,990 when combined with Cottrell patent 994,377 or Hills patent 1,787,577. The Wilson '990 patent discloses an oil separator for separating entrained particles of oil from compressed air and not a separator for separating entrained particles of water from the liquid fuel used in internal combustion engines. The Wilson device has a cylindrical solid wall spaced from and surrounding the oil coalescing unit for deflecting downward the flow of the air and oil mixture flowing from the coalescing unit. Both the Cottrell '377 patent and the Hills '577 patent disclose what may be termed a cylindrical straining shroud or bag for removing drops of one liquid carried in the stream of another liquid by permitting the carrier liquid to pass therethrough while retaining the carried liquid drops. Defendant urges that it would be obvious to one skilled in the fluid filtering art to substitute the Cottrell or Hills shroud or bag for the Wilson deflecting wall. Such a substitution would change the Wilson deflecting wall to perform a different function to produce a different result. Such a substitution would not have been obvious to one skilled in the art at the time the Marvel invention was made unless the patent in suit was used as a blueprint to reconstruct the Wilson device.

Besides analyzing the patent claims with respect to the prior art to determine whether an invention was obvious at the time it was made, it is relevant to look at the circumstances before and after the invention was made and the acts and reactions of those skilled in the art during this period. See Berner, et al. v. I. Leon Co., 285 F. 2d 501, 503-504, 128 USPQ 25, 27-28 (2nd Cir. 1960), cert. denied, 366 U.S. 929 (1961). There was in 1953 a definite and substantial need existing for a separator that could effectively and economically remove water from jet fuel. The military services were particularly mindful of this need and went to considerable effort and expense in an endeavor to find a separator to adequately perform the task. The plaintiff’s separator embodying the invention here in suit was the first separator to successfully pass rigid military testing. Subsequently the military purchased over 1,000 separators from plaintiff. Bobinson, one extremely skilled in the art, was actively attempting to solve the problem. Not until 1954, 4 years after the invention in suit was made, and knowing tbat the Army desired a separator of a vertical configuration, did he combine the elements as taught by the patent in suit. It was unobvious to Eobinson in 1950 to combine the elements in the compact space arrangement as disclosed and claimed by Marvel in the patent in suit.

It is concluded that none of the prior art citations before the court either singly or together overcome the statutory presumption that the Marvel invention was novel and un-obvious at the time it was made.

The defendant also contends that the invention claimed is a mere aggregation of old elements. As a point of clarification, “aggregation” is generally used in two different contexts. The term is used to mean that the combination of two or more elements in the patent claims, each of which is unrelated, each of which performs separately and without cooperation, does not define a composite integrated mechanism. Such a claim should be rejected on the basis that the claim does not properly set out the invention as prescribed by Title 35 U.S.C. § 112. See In re Gustafson, 331 F. 2d 905, 141 USPQ 585 (CCPA 1964). The term aggregation is also used to mean that two or more coacting and cooperating elements are each individually shown in the prior art and that together they do not produce a new and useful result. See Colgate-Palmolive Company v. Carter Products, 230 F. 2d 855, 108 USPQ 383 (4th Cir. 1956), cert. denied, 352 U.S. 843. Defendant uses the term aggregation in the latter context. Each of the elements of the claim in issue is shown in the prior art; however, as has been previously stated, the combination of the elements as recited in the claims in issue taken as a whole is new and unobvious and produces a new and useful result. It is significant that the defendant purchased 1,000 separators that embodied the claimed invention.

Defendant further suggests that the claims in issue over-claim the invention. It is concluded that the patent claims in suit do not overclaim in reciting in the combinations certain elements admittedly old per se.

Defendant also asserts that if the patent claims in issue are valid, the accused separator device does not infringe. The question is, do the patent claims in issue read on the accused device; i.e., does the accused device contain every element and limitation contained in the claims in issue? To resolve this question we apply the standard this court announced in Autogiro Co. of America v. United States, ante, p. 68.

In summary, the determination of patent infringement is a two-step process. First, the meaning of the claims in issue must be determined by a study of all relevant patent documents. Secondly, the claims must be read on the accused structures. In doing this, it is of little value that they read literally on the structures. What is crucial is that the structures must do the same work, in substantially the same way, and accomplish substantially the same result to constitute infringement.

Applying this test we find that the accused device contains every element and limitation or the mere colorable variation thereof found in the claims 1, 2, and 3. However, the evidence is not sufficient to conclude that the accused device infringes claim 5.

Summarizing, it is found that plaintiff is the rightful owner of the reissue patent in suit, that claims 1, 2, 3, and 5 thereof are valid in view of the prior art before the court, that the accused device infringes claims 1, 2, and 3, that the plaintiff is entitled to recover reasonable and entire compensation for such unauthorized use, and that the extent of liability should be determined in further proceedings pursuant to Hule 47 (c).

ColliNS, Judge, took no part in the decision of this case.

BINDINGS 03? FACT

The court having considered the evidence, the report of Trial Commissioner Donald E. Lane, and the briefs and arguments of counsel, makes findings of fact as follows:

1. This is a patent suit arising under the provisions of Title 28 U.S.C. § 1498 for reasonable and entire compensation for unauthorized use or manufacture 'by or for the United States of an article of manufacture disclosed and claimed in claims 1, 2, 3, and 5 of U.S. Keissue Patent No. Be. 24,136, entitled “Water-Fuel Separator”, issued April 3, 1956, to the plaintiff as assignee, pursuant to an application for reissue filed January 19, 1956. The reissue application was based upon an original U.S. Patent No. 2,725,986 issued December 6, 1955, to the plaintiff as assignee, upon an application filed August 25, 1950, by Plarvey E. Marvel, the inventor and assignor.

2. Plaintiff, Bowser, Inc., is a corporation organized and incorporated under the laws of the State of Indiana, having its principal place of business in Cookeville, Tennessee.

3. Counsel for the parties agreed, at pretrial, that the issue of liability, i.e., validity and infringement of the patent in suit, be first determined upon full proofs, findings of fact, and argument of counsel and that the accounting issue be deferred until after the entry of the order of the court on the issue of liability.

4. Claims 1, 2, 3, and 5 of the U.S. Patent Be. 24,136, hereinafter referred to as the patent in suit, have been previously held valid by the United States District Court for the Eastern District of Virginia, in Bowser, Inc. v. Richmond Engineering Co., Inc., 166 F. Supp. 68, 118 USPQ 278 (1958). The validity of the claims in issue was upheld by the United States Court of Appeals for the Fourth Circuit, Richmond Engineering Co., Inc. v. Bowser, Inc., 264 F. 2d 595, 120 USPQ 508 (1959). Bichmond Engineering Co., Inc. is the contractor that furnished accused devices to the defendant.

5„ In an unreported suit, Bowser, Inc. v. Filters, Inc., Civil Action No. 39722, brought in the U.S. District Court for the Northern District of California—Southern Division, the parties thereto in 1961 entered into a consent judgment. The judgment was approved by said court and provided that the claims 1, 2, 3, and 5 of the patent No. Be. 24,136 were valid and that the Filters, Inc. devices infringed the claims. It further provided that Filters, Inc. was enjoined from making, using or selling the infringing devices and that Bowser, Inc. waived its right to an accounting. No costs or damages were awarded to either party. A subsequent motion by Filters, Inc. to vacate the Consent Judgment was denied.

6. The patent in suit relates to a separator for removing water entrained or suspended in liquid fuels used in internal combustion engines or the like. If the water is not removed from fuel subjected to low temperatures, the water will crystalize and plug screens, filters and other parts of an engine fuel supply system thereby restricting the flow of fuel to the engine possibly causing power failure. This problem has been particularly dangerous for jet 'aircraft flying at high altitudes or in low temperature weather.

7. The object of the patent in suit is to provide a separator that will mechanically remove the suspended water from the fuel in an efficient and effective manner while the fuel is moving at a relatively high rate through the separator, without any appreciable liquid pressure drop.

8. The patent in suit, of which figs. 1 and 2 are reproduced herein, discloses a water-fuel separator comprising an enclosed tank 1 having a water-fuel inlet 15 near the top of the tank, a fuel outlet 3 in the upper portion of the tank and a water outlet or drain 4 in the lower portion of the tank. A horizontal deck plate 9 is shown attached to the wall of the tank and located at a position between the water-fuel inlet 15 and the fuel outlet 3 to prevent direct communication of the fluid therebetween. The plate 9 has a number of threaded holes or ports 11 formed therein for receiving threaded neck portions 17 of cylindrical separator cartridges 13 mounted thereto in a vertical depending position and for defining the flow path.

9. Each cartridge 13 has two co-axial tubular members, perforated tube 37 and screen 39, mounted between a top head 16 and a bottom head 43. Layers of resin-bonded fiber glass 41 are positioned between the perforated tube 37 and the screen 39 and are compressed between the heads 16 and 43. A cylindrical cloth tube or shroud 53, made preferably of linen which is pervious to fuel and impervious to water, is attached to the top head 16 and extends downward forming a space between the shroud 53 and the screen 39. The shroud extends below the bottom head 43 and terminates in a conical portion 61. The compact space and coordinated functional arrangement of the shroud 53 with the cartridge 13 and the shroud 53 and cartridge 13 with the deck plate 9 and tank structure optimize the use of the available tank volume thus enabling the size of the tank to be relatively pmall without decreasing the flow rate of the separator.

10. In operation, fuel containing entrained or suspended particles of water enters the separator tank through the inlet 15 and flows through the ports 11 into the center space of the cartridge 13. The liquid mixture then flows radially outward through the perforated tube 37, fiber glass material 41 and screen 39 into the space between the screen 39 and the shroud 53. As the liquid flows through the fiber glass material, the fine water particles wet the individual fibers and coalesce together to form larger particles or drops that are capable of precipitating from the fuel. The drops of water are dislodged from the fiber's 41 by the force of the moving liquid and pass into the space between the screen 39 and the shroud 53 enabling the larger drops to separate from the fuel and gravitate to the cone 61. The specific gravity of water is greater than that of fuel. As the liquid mixture flows radially from the center of the cartridge, the velocity and turbulence of the mixture decrease due to the increasing available sector volume. The cloth shroud being pervious to the fuel and impervious to the water permits the fuel to flow therethrough but retains impinging water drops on the inside thereof enabling the drops to further coalesce until the drops are of sufficient mass to gravitate down the inside of the shroud and into the cone. When the weight of the accumulated water in the cone reaches a sufficient magnitude to overcome the restraining force of the cone, it will flow there-through and settle in the bottom of the tank displacing the fuel to form a stratification of the fuel and water into distinct layers of liquid. The fuel flows from the tank through the outlet 3 and the water is drained from the bottom of the tank through the water outlet 4.

11. Claim 2 of the claims in issue is representative thereof and is set forth in clauses to facilitate understanding and analysis.

PATENT CLAIM 2

A water-fuel separator comprising

a. — a tank having

(1) —a fuel inlet and

(2) — a fuel outlet, said fuel outlet being disposed in the upper portion of said tank and

(3) — a water drain disposed in the lower portion of said tank,

b. — a deck plate disposed substantially borizonally in said tank to prevent communication between said fuel inlet and fuel outlet, said plate having a port therein,

c. — a water and fuel separating cartridge disposed in the tank and connected to the plate, said cartridge having

(1)- — an opening for receiving a mixture of water and fuel through said port, said cartridge comprising

(2)- — -a compressed bonded fiber glass pack for coalescing particles of water in the fuel into drops when a mixture of water and fuel passes there-through, and

d. — straining means disposed externally of said cartridge to i*eceive the mixture issuing from said separating cartridge for retaining the water drops but passing the fuel so that the water drops may flow toward the drain and the fuel towards the fuel outlet.

12. Claims 1 and 3 of the claims in issue recite a cartridge having “resin-bonded filter material” whereas claim 2 recites a cartridge having a “compressed bonded fiber glass pack”. The “straining means” of claim 3 is further limited in comparison with claim 2 to “a bag surrounding but spaced from the fibrous filter material and extending toward the lower portion of said tank”. Claim 5 is similar to claim 2 except that the cartridge is limited to having “compressed, phenol formaldehyde resin-bonded fiber glass filter material”.

Validity Issue

13. The date of priority to which the invention recited in the claims in issue is entitled is August 25, 1950, the filing date of the original application. The subject matter shown in plaintiff’s drawing entitled “Gasoline & Water Separator” disclosed by Marvel on January 2, 1950, and having a date of reduction to practice in the latter part of January 1950 is not the same subject matter claimed in the patent here in suit.

14. The word “compressed” used to modify the fiber glass coalescing material in claims 2 and 5 and the phrase “fibrous filter material” recited in claims 1 and 3 are sufficiently definite and certain to indicate the scope and boundary of the claims to a person skilled in the liquid separation art. The patent description is sufficient to enable a person skilled in the liquid separation art to practice the invention as described in the preferred embodiment.

15. The defendant, particularly the Department of Defense, was interested in 1953 in preventing fuel line icing in its jet aircraft. The Engineering Research and Development Laboratories (ERDL) of the Corps of Engineers at Fort Belvoir, Virginia, had the responsibility for testing and evaluating separators submitted by potential contractors to determine whether the separators would be approved for use in filtering jet engine fuel on military installations. Separators that previously had been satisfactory in filtering water from gasoline were found not acceptable when used to filter water from JP-4 and JP-5 jet fuel.

16. The first separators submitted to ERDL by the plaintiff, which embodied the claimed invention, did not pass the qualification testing because they were unable to remove all of the water from the jet fuel. For this reason the defendant contends that the invention is inoperative. The evidence is clear that the first separators did remove a substantial amount of the water from the jet fuel. The invention as described in the patent hi suit is not inoperative within the meaning of Title 35 XJ.S.C. § 101.

17. The plaintiff proceeded to add additional elements to the filtering cartridge and to change the material of the straining shroud. Plaintiff was issued Marvel Patent No. 2,800,232 and Daley et al. Patent No. 2,918,173 for the improvements to the filtering cartridge. Separators, embodying the invention recited in the claims in issue and the patented cartridge improvements, passed the qualification testing and were the first separators approved by the Department of Defense for use hr filtering water from jet engine fuel. The defendant proceeded during the period of 1954 to 1963 to purchase over 1,000 of the approved separators from the plaintiff.

18. The defendant urges that the claims in issue are invalid because the invention recited therein is not novel withing the meaning of Title 35 XJ.S.C. § 102 or that the invention would have been obvious to a person of ordinary skill in the fluid filtering art in view of the prior art within the meaning of Title 35 XJ.S.C. § 103.

19.In support of its contention, the defendant has relied in part on the following prior art patents and publications:

Patentee Number Sate
Howes**__ 360,441 1887
Dornbirer_ 407, 854 1889
Cottrell_ 994, 377 1911
Bowser_ 1, 107, 485 1914
Wilson_ 1, 463, 990 1923
Smith_ 1, 548, 288 1925
Gard, etal_ 1, 739, 834 1929
Hills*(**)_ 1, 787, 577 1931
Norquist, etal_ 1, 905, 738 1933
Frentzel, Jr_ 1, 906, 565 1933
Kamrath....__ 2, 079, 910 1937
Walton_ 2, 230, 278 1941
McDermott**_ 2, 426, 405 1947
Slay ter, et al_ 2, 489, 242 1949
Kirkbride, et al_ 2, 494, 392 Jan. 10, 1950
Robinson_ 2, 555, 607 June 5, 1951 (filed Feb. 23, 1946)
Printed Publication
Article entitled “Desalting of Petroleum by Use of Fiberglas Packing” by T. A. Burtis and C. G. Kirkbride appearing at pages 413 through 439 in the June 25, 1946 issue of the Transactions of American Institute of Chemical Engineers published by the American Institute of Chemical Engineers, 15 North 7th Street, Philadelphia 6, Pennsylvania.

20. The Cottrell, Wilson, Hills, Walton, and Kobinson patents are the more important of the many cited patents and publication.

21. Cottrell patent No. 994,377, the drawing of which is reproduced herein, relates to a process for mechanically separating and collecting particles of one liquid such as oil suspended in another liquid such as water. The liquid mixture is piped into the cylinder 2 and flows by gravity into a depending cotton bag 4 which has been previously wetted with water. The oil flows through the bag and into the shell 5 and the water particles coalesce with each other at the surface of the bag and flow down the surface of the bag and

then to the bottom of the shell 5 forming a sharp separation of the liquids into distinct layers, which may be separately withdrawn. Cottrell does not disclose or suggest the placing of a coalescing fiber glass filter element inside the bag 4. The Cottrell patent does not anticipate the invention in suit.

22. Wilson patent No. 1,468,990, the drawing of which is reproduced herein, relates to an oil separator for separating entrained oil from compressed air for use downstream from an air compressor. The oil and air mixture enters the sepa-

rator through a pipe located in the top of the separator and passes into a chamber 6 having a perforated cylindrical wall 8. The mixture flows radially outward through the wall, through a mass of compressed asbestos fiber 9, and through side wall 11. The asbestos fiber 9 separates the oil from the air. A cylindrical wall 5 spaced from and surrounding the side wall 11 deflects the separated oil and air downward to prevent the separated oil from being carried with the air out the pipe 15. The Wilson patent does not pertain to the separate of liquids, nor does it disclose a shroud spaced from a coalescing cartridge for straining the undesired coalesced liquid from the continuous phase liquid. The disclosure of the Wilson patent does not anticipate the invention as recited in the claims in issue.

23. The defendant urges that it would be obvious to one skilled in the fluid filtering art to substitute the bag 4 of the Cottrell disclosure for wall 5 of the Wilson disclosure. To do so would change the structure and purpose of the wall 5 of the Wilson disclosure from a solid material for deflecting both oil and air to a material that is pervious to fuel and impervious to water for separating the coalesced water from the fuel. Such a substitution would also change the characteristics and performance of the Wilson device which is not suggested by or inferred from the Wilson disclosure. It would not have been obvious to one skilled in the separator art to make such a substitution.

24. Hills patent No. 1,787,577, fig. 3 of which is reproduced herein., relates to a filter for removing foreign matter and moisture (water) from a liquid cleaning solvent. The liquid mixture enters the filter casing 10 through an inlet 27 located in the lower portion of the casing. The liquid moves upward through screen 26, filtering medium 28 of rags or waste, and screen 23. The filtering medium physically retains the foreign matter and coalesces the water into larger drops. A bag 17 having an inner basket-shaped screen supporting structure 16 is positioned in the upper portion of the filter casing and permits the solvent to flow therethrough from the outside to the inside but retains the water drops on the outside thereof to further coalesce and gravitate to a catch pan 32. The solvent then flows out the top of the casing through the outlet pipe 22. The Hills disclosure does not show a straining means disposed externally of the coalescing means nor does it disclose a compressed bonded fiber glass coalescing element. The flow of the liquid in the Hills disclosure is from the outside of the straining means to the inside which tends to increase the velocity and turbulence of the liquid during the separating process. Both the U.S. Patent Office and the U.'S. District Court for the Eastern District of Virginia considered the Hills disclosure and held that it did not anticipate the invention recited in the claims in issue.

25. The defendant urges that it would have been obvious for one skilled in the fluid filtering art to substitute the bag 17 of the Hills patent disclosure for the wall 5 of the Wilson patent. Such a substitution is not suggested by either of the disclosures nor would it have been obvious to one having ordinary skill to make such a substitution at the time the invention in suit was made.

■26. Walton patent No. 2,230,278, figs. 1 and 3 of which are reproduced herein, shows an oil separator for separating small oil particles suspended in a gaseous stream. The mixture enters the separator through the bottom inlet opening 6 and then flows radially outward through a foraminous unit 1, of cylindrical screen elements la, lb, lc, and Id. The inner screens la and lb are of a finer mesh than the outer screens lc and Id. As the stream flows through the screens the oil particles are coalesced into drops as the particles move through the series of screens enabling the oil to separate from the gas stream and gravitate to the bottom of the separator. Tire Walton patent does not disclose a shroud or straining means to receive the mixture issuing from the coalescing unit for retaining the oil drops and allowing the gas to flow therethrough. It also does not disclose a resin-bonded fibrous material for coalescing the oil. The Walton patent disclosure does not anticipate the claimed invention in suit.

27. The most pertinent prior art disclosure, Bobinson patent No. 2,555,607, filed February 23, 1946, fig. 1 of which is reproduced herein, relates to the mechanical separation of immiscible liquids, such as water and a hydrocarbon liquid. The elongated horizontal tank enclosure 10 has a coalescing unit 22 in the left section and a separating unit 35 in the right section. The liquid mixture enters the enclosure 10 through the conduit 24 and moves into the inlet space 28. The mixture then passes through the capillary passages in the fiber glass to coalesce the water particles into drops. The drops are dislodged from the fiber glass and move with the stream through the space 62 into the enlarged chamber 34 in the left section. The mixture passes from chamber 34 horizontally to the right and into thin spaced cylindrical compartments 45 of the separating unit 35. The ends of the compartments 45 are formed with disc-shaped sheets 40 which are pervious to the hydrocarbon liquid and impervious to water. The hydrocarbon liquid flows through the sheets 40 and into adjacent thin cylindrical compartments 44 and then out through the end space 53 and outlet connection 55. The water drops further coalesce at the surface of the sheets 40 to form larger drops which gravitate to the bottom of the chamber 34 and into a collecting vessel 59.

28. The Robinson '607 patent does not show a straining-means disposed externally of the coalescing element to receive the mixture flowing from the coalescing element. The Robinson patent discloses a straining means located in a distant section of the tank enclosure and is enclosed within the separating unit 35. The patent in suit provides a straining means disposed externally or surrounding the coalescing element in an economically compacted space arrangement. The Robinson patent does not anticipate the claimed invention in suit. The Robinson patent was considered and rejected by the district court in the Richmond Engineering Co. case noted in finding 4.

29. The defendant submits that the patent in suit is invalid on the ground that the invention is not novel in light of five separator-filter devices designed and developed by J. W. Robinson during the period of 1943 to 1950. Robinson was a chemical engineer by education and training and became interested in the separation of immiscible fluids. While employed by Selas Corporation of America, Robinson developed a 2-stage water-fuel separator substantially identical with the separator described in Robinson patent 2,555,607, referred to above. The water-fuel separator was exhibited to the public at the Chemical Exposition in New York City in 1946.

Several of the separators were sold to various chemical companies. These separators do not anticipate the invention defined in the patent claims here in suit.

30. In 1947, while employed by Selas Corporation of America, Robinson designed, built, and delivered to the U.S. Army at Edgewood Arsenal, Edgewater, Maryland, a gasoline-water separator constructed in accordance with the Selas drawing SE-14,445, defendant’s exhibit 17c. The drawing shows a cylindrical tank casing having an inlet near the bottom thereof and an outlet near the top. There is no water drain in the tank casing because the separator was designed to be expendable after its use by the Army to filter gasoline used in a flame thrower device. A tubular fiber glass coalescing element is positioned within the tank casing forming a space between the casing and the element. A bag made of fiber glass is positioned co-axially within the coalescing element. In operation, the liquid mixture flows through the inlet into the space between the casing and the coalescing element. The mixture then flows radially inward through the coalescing element to coalesce the water into drops. The gasoline passes through the bag and flows upward and out the outlet. The water drops are retained on the outside of the bag allowing further coalescing. This device did not include a bag disposed externally or surrounding the coalescing element to obtain the efficiencies of the invention recited in the patent claims in issue and therefore does not anticipate the claimed invention in suit.

31. In 1948, Robinson joined the technical staff of Fram Corporation and continued his work on water-fuel separators that were to be submitted to the Navy Bureau of Ships. The Bureau of Ships was at that time conducting an investigation at Annapolis, Maryland, to determine the availability and suitability of gasoline-water-dirt separator filters for filtering aviation grade gasoline aboard aircraft carriers. An experimental separator, Fram Model AX-4075, was delivered to the Bureau of Ships at Annapolis, Maryland, on April 23, 1948, and successfully tested between April 29, 1948, and September 3, 1948. A second experimental separator, Fram Model AX-4872, was delivered to the Bureau of Ships on May 31, 1949, and successfully tested between June 3, 1949, and June 29, 1949. Neither of the separators, Fram Model AX-4075 or Fram Model AX-4872, discloses the invention claimed in the patent in suit.

32. The Navy Department on August 24, 1948, entered into a contract with the Fram Corporation to purchase a separator-filter device, designed by Bobinson, for experimental use in a land-mockup located at Bayonne Annex of the New York Naval Ship Yard to simulate a high capacity fuel supply system for servicing airplanes with aviation grade gasoline aboard an aircraft carrier. The contract document was unclassified. A Fram Model FS1200 “Graso-line-Separator-Filter” as illustrated in fig. 2, reproduced herein, taken from defendant’s exhibit, lb, was delivered and installed in the Naval Ship Yard in March of 1949.

33. The area in the Bayonne Annex in which the aircraft carrier aviation gasoline system mockup was set up was classified confidential and only those persons who had the requisite need-to-know were admitted to see the mockup. Test reports of the tests conducted at the mockup were classified confidential. Following the tests of the “Gasoline-Separator-Filter” unit in the mockup fuel system, the Fram Corporation on December 30, 1949, sold to the Navy eight additional units for use aboard aircraft carriers. The contract document was unclassified. Four of the units were delivered to the Navy in April of 1950 and the remaining four were delivered in August of 1950.

34. The Fram FS1200 “Gasoline-Separator-Filter” unit discloses an elongated horizontal tank in which the gasoline-water mixture enters through dual inlets located in each end of the unit. The mixture flows through a number of cylindrical coalescing cartridges horizontally positioned in each end to remove the solid contaminants and to coalesce the water into drops. The coalescing cartridges contain resin-bonded fiber glass material. The flow through the cartridge is from the outside to the inside. The mixture then flows toward the center section of the tank enabling some of the larger water drops to gravitate to the bottom of the tank. In the upper portion of the central section are located a number of fiber glass tubes forming a separating element for removing the remaining water drops from the gasoline. The gasoline passes from the tank through the outlet located in the top of the unit. The Fram FS1200 unit does not structurally or functionally suggest the cooperation of structure and function disclosed and claimed in the patent in suit. The Fram unit has a separate straining means positioned at a substantial distance downstream from the coalescing cartridges. The fluid flows through the cylindrical coalescing cartridge from outside to inside resulting in increased liquid velocity tending to decrease the ability of the water to coalesce and of the water drops to precipitate from the gasoline. The patent in suit on the other hand provides a structural and functional cooperation of elements not shown in the Fram device. The Fram FS1200 unit does not anticipate the patent claims in suit.

35. Defendant asserts that the invention is an “aggregation” of old elements and more specifically that each of the elements performs the same function in the combination as they do singularly and that no new result is accomplished by the combination of the elements. Each element of the claims in issue is shown in the prior art. However, the novel combination recited in the claims in issue produces a new and useful result. The functional and structural cooperation of the strainer means with the coalescing cartridge and the strainer means and coalescing cartridge with the horizontal deck plate, and the tank structure including the inlet and outlets thereof are new and unobvious and produce efficiencies of space, flow, and performance that theretofore were not obtained.

36. Summarizing findings 13 through 35, it is found that the cited publications, patents, and constructed devices taken singularly or collectively, do not anticipate the invention defined in claims 1, 2, 3, and 5 of patent No. Ee. 24,136.

Infringement Issue

37. In 1954, Eobinson left the Fram Corporation to accept a position with the Eichmond Engineering Company, Inc. After being informed by the Army Engineering and Development Eesearch Laboratories at Fort Belvoir, Virginia, that it desired the separators submitted for testing to be of the vertical configuration to facilitate standardization, Eob-inson developed the alleged infringing water-fuel separator shown in plaintiff’s exhibit No. 5. The accused device was tested and approved by the Army in 1955. It has been stipulated that the defendant has purchased one .or more of the accused separators from the Eichmond Engineering Company, Inc., during the 6-year period preceding the date of plaintiff’s petition.

38. The accused EECO separator, as shown in figs. 1 and 2 reproduced herein, has a water-fuel inlet A located in the bottom of the tank, a fuel outlet O extending into the upper portion of the tank, and a water drain located in the lower portion of the tank. A horizontal deck plate G having a port H formed therein is located in the lower portion of the tank between the water-fuel inlet A and the fuel outlet 0 to prevent direct fluid communication between the inlet and outlets. A separator cartridge D is vertically connected to the deck plate G in an upright position. The cartridge (fig. 2) has several cylindrical layers of compressed resin-bonded fiber glass material for removing solid contaminants and for coalescing the water particles into drops. A tubular shroud or sleeve N, see fig. 1, is made from a treated nylon cloth and is positioned surrounding the cartridge 4 for retaining the water drops issuing from the cartridge and for passing the fuel therethrough.

39. In operation of the KECO separator, the water-fuel liquid mixture flows through the inlet A into a lower chamber /. The mixture then flows through the port H and into the central portion of the cartridge D. The mixture flows radially outward through the cartridge, wherein the solid contaminants are removed from the mixture and the water particles are coalesced into drops. The water drops are retained by the strainer aaid gravitate toward the deck plate G for removal through the water outlet K. The fuel flows through the strainer N and out the fuel outlet O.

40. Defendant asserts that the accused KECO device does not infringe the claims in issue because: (1) if the claims in issue are construed to be valid then the claims could not encompass the accused device and (2) the plaintiff is estopped from asserting a broad interpretation of the claims in view of statements made by plaintiff during the prosecution of the patent application before the Patent Office.

41. The drawing of the accused KECO device shows, whereas the prior art does not show, a straining means disposed externally of the coalescing cartridge to receive the mixture issuing from the cartridge for retaining the water drops but passing the fuel. The drawing of the accused device shows a fuel outlet passing through the bottom of the tank and terminating in the upper portion of the tank. This structure is in essence the same as or a colorable variation of the claimed fuel outlet being disposed hi the upper portion of said tank. The statements made by the patentee before the U.S. Patent Office do not show a position taken then concern-

ing the construction to 'be given the claims in issue that would be inconsistent with the plaintiff’s present position. The plaintiff is entitled to assert a reasonable range of equivalents and is not restricted by the doctrine of file wrapper estoppel.

42. The accused EECO device has every element and limitation therein, or a minor variation thereof, recited in claims 1, 2, and 3 of the patent in suit. Both the claimed invention and the accused device are intended to mechanically remove suspended water from liquid fuels by the means of a cartridge for coalescing the suspended water into drops and a straining shroud for separating the water drops from the fuel issuing from the cartridge. Both tank structures are the same or the mere variations of the other. The accused device has a fuel outlet conduit that enters the tank bottom and extends upward terminating in the upper portion of the tank and is thus disposed in the upper portion of the tank. The fuel enters the conduit in the upper portion of the tank. The deck plate in the accused device performs the same function as that in the claimed invention, i.e., providing a means to support the cartridges and preventing direct fluid between the inlet and the outlets. Both cartridges have compressed bonded fiber glass or in the alternative resin-bonded filter material for coalescing the suspended water into drops. The straining or separating shrouds of both are disposed externally or in the alternative surrounding but spaced from the fibrous filter material and extend toward the lower portion of said tank, to retain the water drops 'but passing the fuel therethrough. The elements cooperate in the same manner to perform the same result as recited in claims 1, 2, and 3 of the patent in suit. Claims 1, 2, and 3 read on the accused EECO device and plaintiff need not rely upon structural equivalents to make out infringement.

43. The record does not show that the accused device has a cartridge with phenol formaldehyde resin-bonded fiber glass filter material as is recited in claim 5.

44. Summarizing findings 37 through 43, claims 1, 2, and 3 of the patent No. Be. 24,136 have been infringed by the defendant’s use of the accused separator illustrated. The accused device does not infringe claim 5,

Conclusion of Law

Upon the foregoing findings of fact and opinion, which, are adopted by the court and made a part of the judgments herein, the court concludes that claims 1, 2,3, and 5 of patent Ee. 24,136 are valid, that claims 1, 2, and 3 have been infringed by defendant, and that plaintiff is entitled to recover with respect to claims 1, 2, and 3 and judgments are entered to that effect. The amount of recovery is reserved for determination pursuant to Eule 47 (c). 
      
      Cited by the U.S. Patent Office.
     
      
      Of record in Bowser, Inc. v. Richmond Engineering Co., Inc.
      
     