Ex. C.R.] EXCHEQUER COURT OF CANADA 185 BETWEEN : 1935 UNIVERSAL BUTTON FASTEN-Dec. , 5. ING & BUTTON CO. OF CANADA PLAINTIFF LIMITED 1936 AND Jun. 6. PETER C. CHRISTENSEN DEFENDANT. Patents—Impeachment action—Patent invalid—Sec. 61 ss. (1) (a) of Patent Act not applicable where one party to action does not claim invention—Person interested. Defendant is the grantee and owner of two patents; number 338,100 relates to the production of buttons and similar articles and more particularly to an improved method of producing such articles, preferably from a material which is composed principally of casein; and number 341,399 relates to an improved composite casein material peculiarly adapted for the production of buttons therefrom. The plaintiff's action is to impeach both patenta on the ground that the Letters Patent are and always have been null and void. The Court found that the plaintiff is an " interested person " within the meaning of the Patent Act; that as to patent number 341,399 it lacked invention, since the composition was known and used previously by others, and what is described and claimed did not call for the exercise of the inventive faculty; that as to patent number 338,100, the method or methods described therein lacked subject-matter, that practically every step in the method was substantially known and practised by others, prior to any date claimed by the defendant; that the method described and claimed is a mere aggregation of known distinct and interdependent steps in the manufacture of buttons from casein; that the invention is a mere aggregation of methods, a series of distinct and different steps—not a combination—in the manufacture of buttons, each of which is carried out independently of the others, and none of which was invented by the defendant. Held: That if a process of manufacture is known the industrialist must be free to use his skill in the art in working it and modifying it.
186 EXCHEQUER COURT OF CANADA [1936 UNIVERSAL 2. That if any variation of an existing process could be made the subject BUTTON of a monopoly, merely because it had not been done before, patents FABTENINO AND would exist and be supported for innumerable trivial details and BUTTON Co. industrial effort would be hampered. OF CANADA 3. That s. 61 (1) (a) of the Patent Act is not applicable since the plain- LIMITED. tiff lays no claim to invention, seeking instead to impeach two patents CHRI v ST EN- on the ground that they are and always were invalid and void. S. 61 ISBN. presupposes that there are two inventions and two inventors, each of whom claims priority, and that a patent has issued to one only. ACTION to impeach two Canadian Patents for Inven- tion, numbers 338,100 and 341,399. The action was tried before the Honourable Mr. Justice Maclean, President of the Court, at Ottawa. O. M. Biggar, K.C., and M. B. Gordon for plaintiff. S. M. Clark, K.C., and Alastair MacDonald for defend- ant. The facts and questions of law raised are stated in the reasons for judgment. THE PRESIDENT, now (June 6, 1936) delivered the following judgment: In this action the plaintiff seeks to expunge two patents, granted to and owned by the defendant Christensen, on the ground that the Letters Patent are and always have been null and void, (1) because no invention was in fact made by Christensen having regard to the general common knowlege of the art prior to the alleged date of Christen-sen's inventions, (2) because the invention described in each patent was known and used by others before they were known to Christensen, and (3) before the date of the applications for said patents the same had been made available to the public. Upon the material before me, I think, the plaintiff is an " interested person " within the meaning of the Statute. The first patent, no. 338,100, issued on December 26, 1933, on an application filed on June 10, 1933, This patent relates to the production of buttons and similar articles, and more particularly to an improved method of producing such articles, preferably from a material which is composed principally of casein. The second patent numbered 341,399 issued on May 8, 1934, on an application filed on June 10, 1933. This patent relates to an improved composite casein material and is said to be peculiarly adapted for the production of buttons therefrom.
Ex. C.R.] EXCHEQUER COURT OF CANADA 187 I shall first refer to the last mentioned patent, no. 341,399. 1936 It will be sufficient to make reference to one paragraph only UNIVERSAL of the descriptive portion of the specification and which is BUTTON FASTENING as follows: AND My improved material consists principally of casein, and in case the BUTTON CO. OF CANADA same is to be used for the production of buttons, is preferably formed of LIMITED. a suitable mixture of casein, water and alum. The casein employed may V. be any of those commercial forms known to the trade as rennet casein, CHRISTEN- hydrochloric acid casein and acetic acid casein but I find that where the SEN. material is to be used for buttons and similar articles, best results are Maclean J. obtained by- using rennet casein. Also while I prefer to use alum in _ producing the mixture referred to, any one of a number of other materials including a weak solution of acetic acid, a weak solution of any of several acid salts such as aluminum ammonium sulphate, aluminum sodium sulphate, aluminum potassium sulphate and ammonium sulphate, and a weak solution of any of several alkalis such as sodium hydrate, potassium hydrate, sodium phosphate, sodium carbonate, potassium carbonate, sodium bicarbonate, potassium bicarbonate and sodium tetra-borate, may be employed to advantage instead of alum. All the claims of this patent have been abandoned with the exception of claims numbered 5, 6, 9 and 10, and they are as follows:- 5. A composition of the character described comprising a mixture of casein, water and alum, the amount of water in the mixture, exclusive of that in the casein, being from 10 per cent, to 25 per cent, by weight of the casein, and the amount of alum in the mixture being from 1 per cent, to 5 per cent, by weight of the casein. 6. A composition of the character described comprising a mixture of casein, water and alum, the amount of water in the mixture, exclusive of that in the casein, being substantially 15 per cent by weight of the casein and the amount of alum in the mixture being substantially 2 per cent. by weight of the casein. 9. A composition of the character described comprising a mixture of materials including casein and alum, the casein being the predominating ingredient of the mixture and the amount of alum in the mixture being from 1 per cent, to 5 per cent, by weight of the casein. 10. A composition of the character described comprising a mixture of materials including casein and alum, the casein being the predominating ingredient of the mixture and the amount of alum in the mixture being about 2 per cent, by weight of the casein. The invention described in patent no. 338,100, as already stated, relates more particularly to an improved method of producing buttons and other articles, preferably from a material which is composed principally of casein, which . is the material described in the other patent in suit. The specification states that the material consists principally of casein, and is preferably a suitable mixture of casein, water and alum, although other mentioned substances may be used in place of alum. The specification states:— In producing the composite material, the casein, water and alum or other substance instead of the alum, are merely all introduced into an
188 EXCHEQUER COURT OF CANADA [ 1936 1936 ordinary mixing machine and the latter is operated until these substances are thoroughly commingled and a uniform mixture is obtained. This U B N U IV TT E O R N SA b L usually takes from 5 to 10 minutes. If the buttons or other articles to eproduced are to be of a sing g l e solid color, a suitable dy y e ing material, AND or where the finished articles are to be solid white, a white pigment may BUTTON Co. be advantageously added at this point to the casein and other substances OF CANADA LInsITED. and mixed therewith in the mixing machine. The mixing operation may v, be carried on at ordi nroaormyt em P e rature. CHRISTEN- The mixture produced as just described, is in granular or rather BEN. coarse powder form, and is now preferably highly compressed in a suit- Maclean able extrusion press into a solid coherent material. This solid material J. as extruded from the press, is of uniform cross section and is usually, though not necessarily, cylindrical. As it issues from the press the said material, which is fairly soft and flexible, is cut into rods of any desired length, usually a length of from three to four feet. The press may be adjusted to produce cylindrical rods of any diameter from 0.1" up to 2.5" which may be desired. The rods thus produced are immediately immersed in water which is at substantially room temperature, and left therein for about one-half an hour. They are then removed from the water and maintained in the open air at ordinary room temperature for a period of from twenty-four hours up to a month or more, depending on when it is desired to use the rods for the production of the buttons or other articles to be made therefrom. After being removed from the water, however, the rods should be kept where the air is of such humidity as to prevent the moisture in the rods from drying out to any appreciable extent. By the simple treatment just described, the material of the rods is hardened and stiffened somewhat but is still wholly uncured and relatively soft. The specification then states that where buttons are to be made in accordance with the invention, the rods produced and treated as just described, and while still in what is called an uncured or unhardened condition, are usually each formed into a large number of blanks which substantially conform in size and shape to the button finished by a turning machine, which turning machine is preferably of the type disclosed in a patent to Emanuel Clemens, and which automatically faces, edges, backs and cuts off the blanks from the rod by successive operations. The button blanks when cut are next cured or hardened by subjecting them to the action of formaldehyde. After being cured the buttons are scoured by subjecting them to the action of a mixture of pumice and sawdust in a rotating drum; then the buttons are drilled to provide the desired number and arrangement of holes, and that is followed by a preliminary polishing treatment by drumming the buttons in the usual manner with a mixture of powdered chalk, sawdust and bran, or other suitable mixture. Next follows an additional polishing, either mechanically or chemically, according to the finish or appearance desired. If a chemical polishing
Ex. C.R.] EXCHEQUER COURT OF CANADA 189 is desired the specification recommends the following pro-1936 cedure: UNIVERSAL A solution for treating the buttons is made by thoroughly mixing BUTTON about 50 parts by weight of water, one part by weight of chloride of lime, FASTENING AND and one part by weight of any one of the following substances: carbonate BUTTO N Co. of soda (soda ash), bicarbônate of soda or potassium carbonate. This OF CANADA solution is heated to a temperature which is preferably within the limits LIMITED. of 170 degrees and 212 degrees F. v. CHRISTEN- the buttons are then introduced into this heated solution. SEN. The buttons are thereafter dyed, subjected to the action of Maclean J. a fixing bath, washed, dried and finished. I think this sufficiently sets forth the substance of the invention de- scribed in this patent. The claims in this patent number 17, but all have been abandoned except claims numbered 3, 4, 7, 8, 11, 14, 15 and 16, and they are as follows: 3. The method which consists in forming a solid but uncured member consisting principally of casein, cutting a plurality of buttons or like articles substantially in their final shape directly from said member while still uncured, and curing the shaped articles. 4. The method which consists in intimately mixing casein, water and alum, pressing the resulting mixture into a solid uncured member of cylindrical form, successively cutting a plurality of buttons substantially in their final shape directly from said member while it is uncured, and then subjecting said buttons to the action of formaldehyde to cure the same. 7. The method which consists in forming buttons or like articles substantially in their final shape from uncured material consisting principally of casein, curing the shaped articles, and subjecting the cured articles to the action of a solution of a mixture of chloride of lime and one of the group of materials consisting of carbonate of soda, bicarbonate of soda and potassium carbonate. 8. The method which consists in forming buttons or like articles substantially in their final shape from uncured material consisting principally of casein, curing the shaped articles, subjecting the cured articles to the action of a solution of a mixture of chloride of lime and one of the group of materials consisting of carbonate of soda, bicarbonate of soda and potassium carbonate, and then dyeing said articles. 11. The method which consists in forming buttons or like articles substantially in their final shape from uncured material consisting principally of casein, curing the shaped articles, subjecting the cured articles to the action of a solution of a mixture of chloride of lime and one of the group of materials consisting of carbonate of soda, bicarbonate of soda and potassium carbonate, then applying dye only to portions of the surface of said articles, then subjecting the articles to the action of a fixing solution, immersing the articles in a dye solution, and then again subjecting the articles to the action of a fixing solution. 14. The method which consists in subjecting cured buttons or like articles formed of material consisting principally of casein, to the action of a solution of a mixture of chloride of lime and one of the group of materials consisting of carbonate of soda, bicarbonate of soda and potassium carbonate, and then dyeing said articles.
190 EXCHEQUER COURT OF CANADA [ 1936 1936 15. The method which consists in subjecting cured buttons or like articles formed of material consisting principally of casein to the action U B N uT IV To E lc R SAL of a solution of a mixture of chloride of lime and one of the group of FASTENING materials consisting of carbonate of soda, bicarbonate of soda and potas- AND sium carbonate. BUTTON Co. 16. The method which consists in subjecting cured buttons or like O L F IM C IT A E N D. A DA articles formed of material consisting principally of casein to the action U. of a solution of a mixture of chloride of lime and one of the group of CHRISTEN- materials consisting of carbonate of soda, bicarbonate of soda and potas- SEN. sium carbonate, then applying dye only to predetermined portions of the Maclean J. surfaces of said articles, then subjecting the articles to the action of a fixing solution, then applying dye to said articles over their entire surfaces, and then again subjecting the articles to the action of a fixing solution. The point in issue in respect of patent no. 341,399 relates entirely to the employment of alum in a casein mixture. In the case of patent no. 338,100 the controversy largely revolves around the matter of the cutting of buttons from an uncured rod made from the casein mixture described in the other patent, and the liquid chemical solution used for the polishing of buttons. The issues for determination being largely questions of fact it is desirable to review at some length the evidence given in respect of both patents, particularly in respect of the points mentioned. I will first refer to the evidence of Mr. Jaeger, presently, and since July or August, 1928, in charge of the manufacturing of casein plastics in the George H. Morrell Corporation, hereinafter to be referred to as Morrell, at Muskegon, Michigan, U.S.A. About that time Morrell, as I understand it, took over a concern known as the Kyloid Company, manufacturers of casein material in the shape of sheets, rods and button blanks, and this company had been in business, in Muskegon, at least four or five years prior to 1928; and about the same time Morrell took over George Morrell Inc., a company that had been manufacturing celluloid articles at Livingstone, Massachusetts, and buttons in a small way in New Jersey. Jaeger joined the latter company in May, 1925, and he entered the employ of Morrell when it acquired the business of Kyloid, in 1928. Kyloid manufactured button blanks, which were sliced or cut from the rod in an uncured state and which would be subsequently cured; they were then sold to button manufacturers who turned, drilled and finished them. There was in the Kyloid plant a hand machine for rounding uncured rods to the desired diameter, and also a machine for cutting button blanks from the uncured rods. Many of these
Ex. C.R.] EXCHEQUER COURT OF CANADA 191 straight button blanks were capable of being used, and 1936 were used, as buttons after curing, drilling, dyeing and UNIVERSAL polishing the same. Kyloid had not on hand any machine BUTTON FASTENING for turning, that is for shaping and finishing cured casein AND buttons, did it have anydrilling machine. In Au g s us t t , , BFTTANCo. OFCANADA 1928, Morrell installed a drilling machine at Muskegon, LIMITED. and it also installed nine other machines, which would cut CaIueTEN- button blanks from cured or uncured rods, and which would sm. also turn or pattern the buttons. These machines were Maclean J. known by the name of Syble Pandorf. As I understand Jaeger's evidence, shortly after August, 1928, Morrell was selling more ;finished buttons than they were selling button blanks. When Jaeger went to Morrell the material used comprised casein, water, pigments and dyestuffs, and that practice continued till May, 1929, when Jaeger, through correspondence with friends of his in Germany, got in contact with a consulting casein expert who supplied him with a book of formulae, which formulae it was said were known, or were being used, in Germany at that time. This book, now in evidence, reached Jaeger in February or March, 1929. Three formulae contained in this book were particularly referred to. Formula no. 1 called for a mixture of rennet 'casein, alum, turkey red oil and water, no. 2 for a mixture of casein, water, glycerine, and alum, and no. 3 fora mixture of casein, glycerine, and alum. In each case the proportion of each constituent is mentioned but I need not refer to them except to say that the proportion of alum to be used in formula no. 1 is only a small part of one per cent, in no. 2 it is five per cent, and in no. 3 one-tenth of one per cent. Morrell then obtained the services of a German chemist, a casein expert, to demonstrate these formulae, to Jaeger I assume. This casein expert, a Mr. Haupt, arrived at the Morrell plant towards the end of April, 1929, and he remained until the middle of October following. In May, Jaeger, under the direction of Haupt, commenced the use of alum in all their casein mixtures and that is established by the evidence. The percentage of alum used varied from one-half of one per cent to five per cent, according to the character of the alum which was bought in the open market. Jaeger stated that they found the alum to be of special
192 EXCHEQUER COURT OF CANADA [ 1936 1936 help in obtaining the proper plastification of the material UNIVERSAL and to obtain even extrusion of the plastic rods out of FBST TO Na the machine. They found the material firmer and easier AND to cut, and afterwards to turn. The percentage of alum BUTTON CO. OF CANADA used in a given material was determined by a trial and LIMITED. error method; if the material did not extrude freely from CHR STEN- the machine with one per cent it was immediately in - SEN, creased, but not more than five per cent was ever used; Maclean J. the usual proportion was one or two per cent, one per cent for one type of alum, and two per cent for another type. As I understand it some casein is more uniform than others and in that case the percentage of alum required was rather constant, whereas, for example, in the case of imported French casein, the proportion of alum had often to be varied. The quantity of water used in the mixture ranged between twenty and thirty per cent by weight, depending largely upon the moisture content of the casein, the size of the rod, and in some instances on the colours used. In 1928 and 1929, 25 per cent of Morrell's button production consisted of buttons that were never turned, that is to say, they were cut from the uncured rod and then pierced, dyed and polished. Of the balance only about 5 per cent would be turned uncured, this because it was found to be more economical to cure the blanks and turn the button out of the cured blank. The only difficulty Morrell encountered in connection with the buttons turned out in 1928 and 1929 was not in the manufacture but in the selling of the same. Customers objected to a wax finish, that is to say, the buttons were finished with a wax in the tumbler. When garments to which these buttons were attached, were pressed in the ordinary steam presses in tailoring establishments, the flats of which are canvas covered, it was found that the heat would soften the wax and the canvas would absorb it, thus leaving the button with a dull surface. At that time German trade journals, which Jaeger was receiving, were advertising chemical finishing solutions, and he wrote to some of such advertisers. One of such journals, called Butonia, of date August 15, 1929, now in evidence, mentions in an article the existence of liquid polishing materials that are used in the casein industry, on buttons and other articles, and the following is a translation of that article.
Ex. C.R.] EXCHEQUER COURT OF CANADA 193 Art Horn material (casein) can be polished and will accept a beau-1936 tiful lustre without polishing wheel, without barrel or without lacquer by simply immersing it into a liquid composition which is still kept secret by UNIVERSAL the manufacturer. This simple procedure should be of special interest to FAsTENI N G fabricators of articles made of this composition material especially as this AND polishing liquid is suited advantageously for certain articles such as BUTTON CO. buckles, combs, buttons and beads made in quantity production. of CANADA LIMITED. The same journal on December 15, 1929, carried an adver-v tisement of a Berlin firm, by the name of A. Troitzsch, c$ sEN.N advertising a liquid polishing material for certain articles. Maclean J. Another advertisement in that journal advertised a liquid — polishing material under the trade name of Rotoxyl. As a result of the appearance of advertisements of this nature Jaeger went to Germany early in April, 1930, having previously had correspondence with concerns advertising such liquid polishing material; in fact, Jaeger had previously sent samples of Morrell buttons to Berlin, where they were polished by Troitzsch, and as I understand it, they were finished and returned to Morrell before Jaeger left for Germany. Jaeger took with him to Germany several pounds of Morrell buttons and there he experimented with several samples of liquid polishing materials advertised in Germany, such as Rotoxyl and Oxygenol, and buttons polished with such liquids in Germany are in evidence; a third sample, known to the trade as Alepolit, he did not use. A liquid was recommended to him by a fourth person, one Brandt, who gave him a formula of application and the source of supply, and this hé then considered the most adaptable. Brandt finished some Morrell buttons with this liquid polishing solution in the presence of Jaeger, and some of such buttons are in evidence. Jaeger then entered into a written agreement with Brandt respecting the use of the liquid polishing material, and he bought some of the liquid, 10 kilogrammes, from a chemical supply house that made the solution for Brandt, and this Jaeger brought back to Muskegon. In this connection Jaeger agreed to pay Brandt $100, and Brandt agreed to assist Jaeger (Morrell) with suggestions in respect of any difficulties that might be encountered later on, in the application of this liquid polish, but not in securing supplies of the liquid because apparently it was not expected there would be any difficulty in obtaining such supplies. On Jaeger's return to Muskegon a sample of this liquid procured through Brandt in Germany was sent to the 21014-2a f
194 EXCHEQUER COURT OF CANADA [ 1936 1936 Miner Laboratories, consulting chemists, in Chicago, for an UNIVERSAL analysis of the same. The report from Miners Labora- BUTTON tories, dated June 11, 1930, was that on an analysis of the FASTENING AND sample submitted, which they described as Javelle water, BUTTON A. O o F C C p A NAD i A t was found to contain so much available chlorine and so LIMITED• much total alkalinity as sodium carbonate. The Miner CHRISTEN- Laboratories, following their analysis, prepared a sodium sEN• hypochlorite solution which they thought was sufficiently Maclean J. close to the German Javelle water to justify Morrell proceeding with its use in their plant. The next step was that Morrell communicated with the Matheson Alkali Works, at the suggestion of the Miners Laboratories, in respect of supplies necessary for the making of the liquid polish and this concern sent two men to the Morrell plant to assist in making the first batches of the solution. In a letter dated June 16, 1930, they instructed Morrell as to the percentage of chlorine and caustic soda to use, and how to make the solution, and on that date they shipped Morrell a stated quantity of liquid chlorine and flake caustic soda; in a later letter they suggested using bleaching powder instead of liquid chlorine. The first batches of the solution made by Morrell consisted only of caustic soda and liquid chlorine. Later about July 1, 1930, soda ash, was added as a third ingredient to overcome certain difficulties experienced with the diffusion of the gas in the bath. A bleaching powder, known as H T H, containing a high percentage of free chlorine was experimentally added to the caustic solution. After further experimental work it was found more convenient to make the solution with chloride of lime instead of liquid chlorine gas, and caustic ash and caustic soda, and this solution was used for more than a year and a half, commencing Sep-tember, 1930; now Morrell is back to the original formula of liquid chlorine gas and caustic flakes because a way had been found of diffusing them satisfactorily. It will be remembered that the chemical polishing solution described in patent no. 338,100 is made by mixing fifty parts by weight of water, one part by weight of chloride of lime, and one part by weight of carbonate of soda (soda ash), or bi -carbonate of soda, or potassium carbonate. Jaeger stated that either of these alkalis could be used in the compound instead of caustic flake or soda. I think
Ex. C.R.] EXCHEQUER COURT OF CANADA 195 it may be assumed upon the evidence that the polishing 1936 mixture described by the defendant is the chemical equiva- UNIVERSAL lent of that used by Morrell, and so fax as I can recall F eTEN°iN. that was not contested by the defendant. The precise AND BUTTON behaviour of these different chemical elements I have no OF CANADA doubt would be well known to chemists. The only real LIMITED. point in this connection is whether or not there was inven- C RR STEN- tion by Christensen in compounding his chemical polishing sEN. solution, or in introducing it into the method described Maelean J. by him. This will be determined later. There are two methods of dyeing buttons. One is by mixing the dye or pigment in the original mixture which is extruded from the press, and the other is to surface dye them at some subsequent stage in their process of manufacture, and both methods have long been known. In surface dyeing operations buttons are exposed to a solution consisting of water, and natural dyes, wood dyes or aniline dyes, and in some cases acid, to obtain penetra- tion. Morrell used its solution on its buttons regardless of colour, but inasmuch as the solution acts as a bleach on surface colours, the surface dyeing is done after treatment in the polishing solution. I do not propose commenting on the dyeing operations described by Christensen, or that practised by others. In my opinion it is not an element of importance in this controversy. The evidence of Jaeger was confirmed in some important particulars by that of Renkenberger, an attorney at law, practising at Muskegon; he became legal adviser to Morrell some time after its organization. He also had a general knowledge of the Kyloid plant before it was taken over by Morrell. I do not think it necessary, however, to review the evidence of this witness. Mr. Parsons of the American Plastics Corporation, of Bainbridge, N.Y., manufacturers of casein plastics, includ- ing button blanks, also gave evidence. He was employed by this corporation either as production manager, or assist- ant production manager, since 1925. The product of this company was sold in the shape of sheets, rods and tubes, until recent years when it commenced to make button blanks. In August, 1925, and continuously since that date, this company has been using a formula which it obtained from Erinoid Ltd. of Stroud, England, and this formula 21014-2ja
196 EXCHEQUER COURT OF CANADA [1936 1936 directed the use of alum aluminum sulphate in casein mix-UNIvErtsm, tures, for the production of rods from an extruding press, F T T EN T IN O G N in the proportion of one-half of one per cent of the casein. AS AND For reasons which I need not delay to explain this corpora- BUTTON CO. OF CANADA tion experimented with larger proportions of alum, late in LIMITED. 1926, on the advice of a German casein expert, up to five CHRISTEN- per cent, but finding no advantage in the increased quantity BEN• they gradually reverted to the proportion of one-half of one MacleanJ. per cent, and Parsons stated that with their casein that was all that was required. The inclusion of . alum in the mixture would, Parsons stated, be known to employees in the plant of the corporation. Mr. Dunham, a graduate chemist, one of the vice-presidents of the same corporation, also gave evidence. After the formula mentioned by Parsons was acquired Dunham, in 1924, spent several months in Stroud, England, with Erinoid Ltd., in order to become acquainted with the various processes and practices relating to the production of casein plastics, prior to erecting the plant of American Plastics Corporation at Bainbridge, N.Y. And he stated that one formula called for the use of alum, particularly for use in black material. He confirmed the evidence of Parsons that as satisfactory results were obtained by the use of one-half of one per cent of alum as with a greater quantity. His opinion as to the cause of this was that in the plant at Bainbridge, the milk was precipitated with rennet whereas in ordinary casein it was curdled with acids, which, he thought not a desirable practice. He gave further reasons why only a small percentage of alum was used by his company in casein mixtures, but it is hardly necessary that I should repeat the same. The fact is that this corporation has been using alum in casein mixtures since 1925, and the proportions are not, I think, of importance, because apparently for one reason or another this may vary, and Christensen would appear to concede this. Dun-ham visited the Morrell plant in September, 1930, when he observed the complete process employed there in the manufacture of buttons, just as described by Jaeger. He saw buttons put into what he was told was a hypochlorite solution, a polishing bath, and he stated that anyone would recognize that the solution contained chlorine because its presence was so evident about the plant.
Ex. C.R.] EXCHEQUER COURT OF CANADA 197 Mr. Vawter, presently chief chemist of the American 1936 Plastics Corporation, between 1924 and 1931 was in the UNIVERSAL employ of the Karolith Corporation, manufacturers of FB Î j casein plastics, at Long Island City, N.Y. Karolith at first AND BU T TO NCO. made such articles as fountain pen stands, lamp shades, OF CANADA lamp stands, balls, etc., which were moulded and later cured LIMITED. and polished; later it cut button blanks from uncured CHRISTEN- casein rods. This witness stated that Karolith, in 1924, BEN. used alum for a very short period, to the extent of 2 per Maclean d, cent, in casein mixtures. Karolith had been using acetic acid but found it corroded their machines and so they experimented with alum but with the same result and the use of alum was abandoned; Karolith did not return to the use of acetic acid and apparently used casein and water only. In the latter part of 1927, one of the Karolith corporation heard, while in Europe, of the use there of Javelle water by casein plastic manufacturers, as a chemical polishing bath. Karolith then purchased some Javelle water from a local drug store but the results were not particularly impressive. In 1929 rumours persisted that Javelle water was being successfully used in Europe. Then Vawter experimented with sodium carbonate and ordinary chloride of lime and mixed them together with water, and after allowing the, mixture to settle, the clear solution was decanted. This solution, which Vawter stated was probably stronger and fresher than Javelle water, gave excellent results. This information was given to the sales department to be passed on to their customers, button manufacturers, Karolith itself not finishing buttons at that time. Vawter testified that his mixture of chloride of lime and sodium carbonate would be about the same as a mixture of chlorine gas and caustic soda except that caustic soda would be more convenient, and that it would be about the same as a mixture of chloride of lime, caustic soda and soda ash. Mr. Brother, a chemical engineer, testified on behalf of the defendant. About eight or nine years ago he was asso- ciated with Karolith and prior thereto, along with Vawter, with Art Horn Product Corporation. Karolith, in 1923, took over Art Horn and with the transfer came certain secret formulae which the latter obtained from some Ger- man casein expert. Brother stated that some of the secret
198 EXCHEQUER COURT OF CANADA [ 1936 1936 formulae directed the use of alum in the casein mixture and UNI SAL that alum was used for a time by Karolith, but was aban- BIITTGN FASTENING Boned 'because it seemed to produce no advanta g g e; he also AND stated that alum was not necessary for the finished rods B OF CANAD C D A and sheets made by Karolith, and which were used in mak-LIMITED• ing the articles mentioned in the evidence of Vawter. He c$as TEN- was of the opinion that the mere mixture of casein and water BEN' would not have sufficient body to hold up under a machine Maclean, J. that would cut and turn a button from an uncured rod in one operation. In cross-examination he stated that if one wished to render the casein and water mixture softer, in putting it through the extrusion machine, you would include some softening agent such as glycerine, turkey red oil, or something of that nature, and if you wished to make the rod harder you would include alum, or some form of formaldehyde, which would give it more body or substance than the ordinary plastic casein rod would have. Brother seemed to make this statement as if it were common knowledge and within his own experience, and not something learned from the patents in suit. This witness apparently thought that alum stiffened the mixture in some degree, but not in the same degree as formaldehyde. I shall now refer to the evidence of the defendant Christensen. In 1919 Christensen organized what was known as the Alladdinite Company to manufacture casein rods and sheets, starting first with sheets, then with rods, which when cured were sold to button manufacturers. The ingredients used in the casein mixture at this time were casein, water and some colouring. Christensen said it was the general practice in producing buttons from cured casein rods to first put the rods in an oil bath and soften them by heat, so as to avoid dulling the cutting tool; the blanks were then put into an automatic machine for facing, and another machine operation for backing, and that made a button; then there followed the drilling, polishing and dyeing operations. In the summer of 1929 Christensen learned that Clemens had developed a machine, the one referred to in the specification of patent no. 338,100, intended for the cutting of buttons from uncured rods. On seeing this machine and on being shown how it worked Christensen said he was led to believe that an uncured rod could be
Ex. C.R.] EXCHEQUER COURT OF CANADA 199 used on that machine and that finished buttons could be 1936 cut from the uncured rod. He gave Clemens several un-UN SAL cured rods to try out on this machine and it was found FABsrjila that while the button had a perfect face the back was AND smeared and so the button was unsatisfactory. Christen- o ~,;• sen then proceeded to make other rods using chemicals of LIMITED. different hardness in the mixture so that it would have the CHR STEN- proper firmness to withstand the operations of Clemens' eNE • machine and he states that he worked on that during the Maclean J. summer of 1929. These experiments ended with the use of alum in the casein mixture in the proportions men- tioned in the material patent; but 2 per cent Christensen found to be the most satisfactory. He then produced un- cured rods from this mixture, the first being made on December 12, 1929, and the next on January 9, 1930. In the result Christensen stated that he found that in one operation he could cut from the uncured rod a finished button with the Clemens machine, which, he claims, had never been done before. I am prepared to accept the date of December 12, 1929, as the time when Christensen made his first casein mixture containing alum. On discovery, he gave sometime in 1931 as the date, but I am satisfied he was confused about this and was unintentionally in error as to the proper date. He then commenced production in a small way and in about a year's time production was on a substantial scale. The button after being cut from the uncured rod was cured in a formaldehyde solution, then drilled, polished and dyed, as explained in the specification of the method patent. Just a word as to the chemical polishing liquid. Christensen claims to have discovered or invented, after about a month's experimental work, in August, 1931, his liquid polishing material which has already been described. Now Christensen claims that with his casein-alum water mixture, the cutting and turning of buttons from uncured rods by the Clemens machine, by using his chemical polishing agent, and generally by following the directions set forth in the specification of the method patent, much time was saved in curing, dyeing and polishing buttons, and consequently much time was saved in producing the finished button. And it is also claimed that this method effected .a reduction in waste material. All this it is claimed caused
200 EXCHEQUER .COURT OF CANADA [1936 1936 a reduction in the cost of production of buttons with an UNIVERSAL ensuing reduced price to the public and increased sales. BUTTON FABTENIN4 I do not think it is necessary to review the evidence of AND Christensen on these several points. BUTTON co. OF CANADA Corning to the question of the validity of patent LIMITED. no. 341,399. It is not necessary, I think, to discuss the CN- individual claims relied upon. It is plain that the inven- SEN. tion claimed in this patent rests on the inclusion of alum Maclean J. in the casein mixture, or, to use the words of the claims " a composition * * * comprising a mixture of water, alum and * * * casein "; the proportion of each ingredient is not of importance because that would be a matter to be adjusted according to requirements, or according to the character or behaviour of the casein and the alum. When Christensen became acquainted with the Clemens machine he was making rods from a mixture of casein and water. He stated that this machine could not satisfactorily work on such rods and his problem was to produce a casein composition from which uncured rods might be produced and which would stand the cutting and turning operations of the Clemens machine. To solve that problem he claims to have invented his casein-alum com- 1 position. He states in his specification: Also while I prefer to use alum in producing the mixture referred to, any one of a number of other materials including a weak solution of acetic acid, a weak solution of any of several acid salts such as aluminum ammonium sulphate, aluminum sodium sulphate, aluminum potassium sulphate and ammonium sulphate, and a weak solution of any of several alkalis such as sodium hydrate, potassium hydrate, sodium phosphate, sodium carbonate, potassium carbonate, sodium bicarbonate, potassium bicarbonate and sodium tetra-borate, may be employed to advantage instead of alum. Christensen was examined on discovery by Mr. Biggar and I wish to make a very brief reference to that examination, by quoting a few questions and answers, and they are as follows: 127. Q. So you had to get a different kind of rod? A. Exactly. 128, Q. And you knew, because you were familiar with the business, that you would get a different kind of rod by adding alum, or one of these other things that you suggest in your patent specification? A. I expected to. 129. Q. That was because of the character of the materials? A. Yes. 130. Q. And, therefore, you just took the obvious material, alum, and tried it? A. Yes, sir.
Ex. C.R.] EXCHEQUER COURT OF CANADA 201 131. Q. And that material gave you a rod which did stand up properly 1936 under the operation of Mr. Clemens' cutting machine? A. So much so that formerly we could only make buttons for UNI rvExOsANM B I TT twenty-two line—just what you have on your vest is twenty- FASTENING four line—now we can make them—the rods—two inches in AND diameter and cut them—a finished button out of a rod— BUTTON CO. which was quite absolutely impossible in the other way. of CANADA 132. Q. And you knew you could get that kind of result not only LIMITE . D. from alum but also by using these other materials that are CHRIST E N- set out in your specification? SEN. A. Yes. Maclean J. Question 130 may appear to have been put in a way calculated to trap the witness, but I do not think that this is so, particularly when one reads the next fifteen or twenty questions and answers concerning the alternatives of alum. It is not perfectly clear from the evidence, but I think Christensen is a trained chemist. He worked for twelve years in the Edison Laboratories in West Orange, New Jersey, on mechanical and chemical problems. When Christensen found that a casein-water uncured rod would not meet his problem he almost immediately turned to alum, and a dozen or more alternative substances, which he says could be used instead of alum. From the very first he expected to get from either of these substances the results later obtained. It is said that one of these materials might corrode the cutting tools of the machine, that one had a tendency to affect the colour if too great a quantity were used, that some were more expensive than alum, but any one of them would produce the effect Christensen desired, that is, they each would, if in the mixture, produce an un-cured rod sufficiently plastic, but firm enough, to stand the cutting and turning operations of Clemens' machine; that is the merit which Christensen claims for his alleged invention. The fact remains that alum and the alternative substances would make firmer the uncured rod if Christen-sen is accurate in his statement concerning them, in his specification and evidence. Jaeger's evidence was the most satisfactory evidence regarding the effect of alum in a casein mixture. He said that he found " alum to be of special help in obtaining the proper plastification of the material and to obtain even extrusion of the plastic rods out of the machine. We find the material firmer and easier to cut or turn afterwards." That would closely correspond to what Christensen expected from the use of alum in a casein mixture.
202 EXCHEQUER COURT OF CANADA [ 1936 1936 From the evidence it would seem to have been generally UNIVERSAL known by those interested in the manufacture of casein BUTTON FASTENING material for the manufacture of buttons, that alum was AND more or less used, or talked about, as a useful ingredient. BUTTON CO. OF CAAN ADA With so manyconcerns in the industryin the United LIMITED. Statess,, using or experimenting with alum, with German V. CHR sTEN- formulae in the hands of so many concerns directing the BEN' use of alum and available apparently to anybody at a Maclean J. price, I find it difficult to believe that Christensen should, not in some way have known or heard of the use of alum in a casein mixture, and if alum were useful its equivalents would be known, at least to chemists. Christensen immediately turned to alum and its alternatives or equivalents to solve his problem, and he then hoped to get the results later obtained and claimed as invention. Mr. Brother, a witness for the defendant, used alum in casein mixtures, when with the Art Horn Company, but this was abandoned because it seemed to perform no useful function. He also stated that if you wished to make a casein-water mixture harder " you would include alum or some good form of formaldehyde." I understand this to mean that years ago he understood the reaction of alum in a casein mixture. When Brother speaks of alum hardening the mixture I assume he only means that it is made " firmer," just as Jaeger spoke of it; if it were actually made hard it would not pass through the extrusion machine. Hardening, as understood in this art, is accomplished by a formaldehyde solution. When Brother and Vawter were together in the employ of Karolith, in 1924, they used alum to the extent of 2 per cent in their casein mixture. They had been using acetic acid in their casein mixture and it was found that this corroded the cutting machines so they resorted to the use of alum, but this did not avoid corrosion and apparently they abandoned the use of both alum and acetic acid. Brother stated that alum was not necessary for the sheets and rods made by Karolith and from which were made such articles as fountain pen stands, lamp shades, balls, etc., and that may be correct. This only shows that the use of alum was abandoned because the alum in the mixture was believed to corrode the cutting machine, and because, in the case of Karolith products, it was thought not to be necessary. I might here add that Brother suggested that the German formulae were useless
Ex. C.R.] EXCHEQUER COURT OF CANADA 203 and deceptive, because they would in some instances sug- 1936 gest the use of one ingredient which would be neutralized UNIVERs by the effect of another mentioned ingredient, for example, FBNÎNa he said that either turkey red oil, or glycerine, would AND neutralize the effect of alum in a mixture. I understood B of CANADA Vawter and Dunham to dispute this suggestion; at any LIMITED. rate the suggestion was not established to my satisfaction CnRsTEN-and the point is probably not of importance. Jaeger com-SEN. menced using alum in casein mixtures in the Morrell Maclean J. plant in May, 1929, and its use has been continued there since. Apparently no difficulty was encountered by Morrell through any corrosive qualities inherent in alum, and apparently that is the experience of Christensen. Then the American Plastics Corporation have used since 1925 the English Erinoid formula which required the use of one-half of one per cent of alum aluminum sulphate in a casein mixture, and that is the same as alum. Upon the evidence I must hold there is no invention in this patent of Christensen and, I think, it should be expunged. The composition claimed was known and used previously by others, and in my opinion what is described and claimed did not call for the exercise of the inventive faculty. Turning now to patent no. 388,100. Invention is claimed chiefly because of the casein composition, the liquid polishing material, and the cutting and turning of the finished button in one operation from an uncured rod by a machine such as Clemens, all of which are claimed to be new. In these three steps really rests the claim to invention. I think it will be sufficient to discuss this patent in a general way, and without reference to the individual claims relied upon. What I have said concerning the use of alum in a casein composition in the other patent is applicable here; that step in the method was not new and of itself contributes nothing to the subject-matter here. The same thing may be said of the polishing solution composed of chloride of lime with carbonate of soda, or bicarbonate of soda, or potassium carbonate. The same solution had been used by others prior to any date which Christensen could claim. It was used by Jaeger in Germany; Jaeger had the same solution, or its equivalent, made up at Muskegon, in June, 1929, and it has been continuously used since by Morrell;
204 EXCHEQUER COURT OF CANADA [1936 1936 Vawter discovered the same properties in Javelle water for UN SAL Karolith and this concern used the solution; Miners Labor- FASTENING atories and the Matheson Alkali Works sug g g g e sted the same o AND composition, or its equivalent, to Morrell, and all this was CANADA pr i or to any date which Christensen claims. Lim iTED. v , Some of the claims refer to the " cutting " of buttons CHRISTEN- from uncured rods, but Christensen admitted that the cut-sEN. ting of button blanks from uncured rods was known prior Maclean J. to his alleged invention; and further he makes no claim for the " turning " of buttons. Several of the claims state that the buttons are cut from uncured rods substantially in their final shape; and quantities of button blanks, after being drilled, were sold in this state long before Christensen. The words " substantially in their final shape " refer to button blanks cut from uncured rods. In the paragraph of the specification which refers to Clemens' machine we find the words: " blanks * * * which substantially conform in size and shape to the finished buttons by a turning machine * * * " This can only refer to button blanks. As to the turning machine to be employed the patentee merely expresses a preference for that of Clemens but that is the invention of Clemens, if invention there be. The method or methods claimed for dyeing buttons had long been practised in substance, whether or not alum was in the material, whether or not any chemical solution was used for the polishing of buttons, and whether the buttons were cut from a cured or uncured rod. I do not think that the method or methods described and claimed by Christensen contain subject-matter; I think that every step in what is described as a method, with the exception of the use of the Clemens machine, was substantially known and practised by others, prior to any date claimed by Christensen. If there is anything new in Christ-ensen's method it is in the Clemens machine which apparently cuts and turns the button in one operation whereas the usual practice, I think, was to employ one machine for cutting the button blank and another for turning the button. Making casein rods and sheets from a mixture of casein, water and alum, was practised prior to Christen-sen's claim to invention. Means were known for the cutting of button blanks from uncured rods, and also for turning them in a cured or uncured state. Curing buttons by
Ex. C.R.] EXCHEQUER COURT OF CANADA a formaldehyde solution was known; and the method for dyeing buttons, and polishing them mechanically or chemi- call Y w as known. There maybe Christensen's described method and what was previously practised, but the difference does not spell invention. If a process of manufacture is known the industrialist must be free to use his skill in the art in working it and modifying it. If a person could monopolize any variation of an exist-ing process, merely because it had not been done be- Maclean J. fore, industrial effort would be intolerably hampered since patents would exist and be supported for innumerable triv- ial details. It seems to me that the method described and claimed is a mere aggregation of known distinct and independent steps in the manufacture of buttons from casein. The making of casein material is the first step, the making of rods, the curing of rods or buttons by formaldehyde, the cutting of blanks from the cured or uncured rod by a cut- ting machine, the turning of buttons by another machine, the drilling, the polishing, and the dyeing, are other distinct steps in the manufacture of buttons from casein, but all were known. The Clemens machine performs an old func- tion, but perhaps in an improved way, because it both cuts and turns buttons directly from the rod in one operation; but that is the only function it performs, and so with formaldehyde, and with the polishing solution. That each step I have mentioned is distinct from the others is exempli- fied by the fact that some concerns make only casein, others casein rods or sheets, others button blanks, and others do the drilling, turning, polishing and dyeing; and it would not be difficult to imagine some doing only the dyeing. I think this is the correct way of looking at this patent and if one does it becomes apparent that it is a mere aggregation of methods, a series of distinct and different steps,—not a combination—in the manufacture of buttons, each of which is carried out independently of the others, and none of which were, in my opinion, invented by Christensen. If I ask myself what step from the casein material to the fin- ished button did Christensen invent, I can only answer none. If Christensen obtained any new results, or achieved any advantages over anything that had been previously known or practised, it seems to me it is not due to any- thing he discovered or invented: 205 1936 UNIVERSAL sligh g t variations between BII F T AB T T O EN N IN 6 AND TT DN . Co BOP CANADA LIM1TIu. CassxEN- sEN.
206 EXCHEQUER COURT OF CANADA [1936 1936 Mr. Clark very skilfully argued that sec. 61 (1) (a) should UNIVERSAL be applied, on the ground that the methods employed by BUTTON Morrell, and others, in making casein materials and polish- FASTENING AND ing solutions, were carried out secretly, and that such BUTTON AD ' methods had not been made available to the public. In LIMITED. view of the conclusion which I have reached, that is, that CsR sTEN- there is not subject-matter in either patent, the point taken SEN. is not applicable. Section 61 presupposes that there are Maclean J. two inventions and two inventors, each of whom claims priority, and that a patent has issued to one only. The plaintiff lays no claim to invention; it seeks to expunge two patents on the ground that they are and always were invalid and void, which is not the issue contemplated by sec. 61 of the Act. I do not think therefore that the provision of the Patent Act mentioned is applicable here and I need not discuss the question as to whether or not the methods practised by Morrell, or others, were carried out secretly, and whether such methods were made available to the public in the sense intended by sec. 61 (1) (a) of the Act. The plaintiff therefore succeeds and costs will follow the event. Judgment accordingly.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.