Petition for Writ of Certiorari with Appendix — Binks Mfg. Co. v. Ransburg Electro-Coating Corp.

Supreme Court brief1961

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JAMES R. BRIG NING Cler

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IN THE .

. Supreme Court of the United States

Ocrober Team, 1060. ; ’

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BINKS MANUFACTURING: COMPANY,

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I@NSBURG BE EOCTROCONPING CORPORATION,

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PETITION APPENDIX

in support of

PETITION FOR WRIT OF CERTIORARI. .

CHARLES IF, Menony,

Orro R. NWrause,

“4 eo Hin, SuermMan, Mernont, Gross

& SIMPSON,

538 West Jackson Boulevard,

Chicago 4, Illinois,

ra)

, .° °

W. DoxaLp McSweeney,

oe ee ¢ 0 DALLSTREAM, Scuirr, HARDIN,

Warrke & Dorscuen,

231 South La Salle Street,

. pty Chicago 4, [lingis,

Attorneys for Petitioner.

THe GUNTHORP. WARREN PRINTING LOMPANY, CHICAGO

a.)

87 :

Tt was pointed. out ‘that one of .the features of the sug-

gested neg claim ‘is the provision of feeding means which

distribute coating materjal to an extended atomizing zone

from which zone ‘it is atémized from a plurality of spaced

points with the points being so close together as to permit

the coating material to bridge the spaces therebetween.

Such, ‘of course, is not the system of Formhals as, regard.

less gf-the spacing of. his nozzles, the cOating material

ae within the nozzle could not bridge the

space tRerebetween.

It was suggested by the Examiner that the obviously

inherent bridging of the coating material at least in the

apparatus illustrated in Figures 5 and 6 be pointed out in

the specification and accordingly the specification has been

amended to do so.

The unallowed claims remaining in the application are

proposed to be cancelled with this amendment and it was

believed at the interview that an action of this nature hy

applicants would place the case in condition for allowance.

Therefore, withdrawal of the final rejection, entry of the

present amendment, and reconsideration and allowance

of the application as now presented are respectfully re-

quested.

Respectfully submitted,

SCHROEDER, -Horcren, Brany & Weoner,

Wituram J. Sreveman.

Chicago, Illinois, !

August 21, 1956. . , eat

TABLE OF CONTENTS.

Judgment and Decision of Court of Appeals.........

Applicable Statutes ............. hab whebas oye

Admissions and Answers to Interrogatories Bearing

on Anti-Trust 2.72.0... cee pee cece cece tence ee eens ee

Admissions and Answers to’ Interrogatories Bearing

ee NE IS Sa ica sd teat cna BG 6 ee tka 4s Siva.e 29

Plaintiff's Exhibit IIIT Judgment in 92 F. scan 947

case ks 0 CERNE EMR EE SPAM ERS Cee OAT Alen ene bw ol

Pertinent Porttons of File History (DX. 5A and 5B)

of Starkey Patent 2,685,53G. 0.0.0... cee eeteeee 73,

MONO: oo sacs Sn Pee rer 73

Page 10 of Applicant '’s Amendment filed June 28, 1945 738

Pages 14 and 29 of Applicant’s Board of Appeals Br icf

‘Filed January 5, 1951........... nr” APES Pee 74

anit OPS. .. osc cess SA erat a Retna 76

Affidavit of Gilbert Isgrigg filed March 20, 1953...... 76

PAGE

»)

Affidavit of Donald C. Howarth filed a 20. 1933...° 79

Page 15 of Applicant’s: —— of Appeals Brief Filed

May. 25, 1959....... Sse s, SYNE Neer yee cape sae

Page 5 of. last Board of Appeals Decision of December

18, 1953 resulting in allowance gf method claims in

ER Ce rr ree fee ry Pre on yr ere Pete eee

From Defendant’s Ex. 6—File History of Starkey and

Ransburg application Serial No. staph from Which

Starkey et al Apparatus Patent No. 25794,417 issued

rye vrai ae ne niN ose het oie aes

I ed oat cee hs ag aw inn eta tga oa

‘SO

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IN THE | |

Supreme Court of the United States

Octoser Term, 1960.

i sictcinnsscanic

BINKS MANUFACTURING COMPANY,

Petitioner,

vs.

. ; 4

RANSBURG ELECTRO-COATING CORPORATION,

’ > ‘Respondent.

PETITION APPENDIX

in support of

PETITION FOR WRIT OF CERTIORARI:

‘

ite

« | APPENDIX.

JOE aa! |

In tHE Unirep States Court or Apreat&

for the Seventh Circuit.

September Term, 1959-~Apwil Session, 1960.

No. 12737°

Binks Manvuracturninc Company, ) , Pz

Erc..,. Appeal from the

Plaintiff-Appellant,| ‘United States Dis-

slid trict Court for the

ai . Southern District.

Ransspura ELectro- Coatina Conge- of Indiana, Indian-

station, Etc apolis Division. ° )

Defendant-A ppelles. 7

July 27, 1960,

Before Se umacnnienna, Kroc and’ Caste, Circui?

Judges. .

(CASTLE, Circuit Judge. Binks Manufacturing Company,

plaintiff-appellant, prosecutes this appeal from a judg-

mfnt of the District Court holding claims 1 to 6, 8, 10.and

11,of Starkey and Ransburg method patent No. 2,685,536

and Claim.4 of Starkey and Ransburg divisional, appa-

ratus patent No. 2,794,417 valid and infringed by use of .

the eplaintiff’s electrostatic ‘spvaying emitter. The judg- ’

ment order enjoined plaintiff from further infringement,

granted damages, reasqnable attorneys’ fees and costs to

—e are printed herein: . ~ ; .

4 J °

defendant, and dismissed plaimtitf’s cross-counterclaim al-

leging anti-trust law violations by defendant. Ransburg_

*Klectro-Coatingg Corporation, defendant- — e, is -the

assignee-owner of both patents.

The ‘action originated in the District Court fs a com-:

plaint for declaratory judgment, which was dismissed, as

moot when the defendant patentee counterclaimed charg-

ing plaintiff, with infringejnent. Phaintiff’s answer raised

the issues of validity and infringement and its Cross

counterclaim charged anti-trust law violations, unfair eon-

petition and mixpse of pate mis® Substituted pleadings re’

tained the same issues. The cause was heard on the plead-

"ings, stipulations, admissions, | uuswers 16 interrogatories,

depositions, exhibits and the testimony of witnesses: for

the defendant.

The ‘parties will be referred to by their original desig-

nations as plaintiff and defgndant. Defendant is the pat-

entee asserting, infringement, Plaintiff ix defending against » °

_ that charge and affirmatively nassenting anti-trust law ¢io-

“lations, «cA

The patents in suit relate to a method and apparatus

for electrostaticatly coating: articles with liquid coating

material, ingluding paint. There are. several methods by

which many articles of manufacture may be painted, in-

cluding dipping, roller-coating, flow-coating and spray-

ing, Defendant* (an the predecessor partnership eom-

‘posed of its owners) has developed two methods of clectro-

statie coatimg. A compressed-air electrostatic system is re-

ferred to as the No. 1 Process, The patents in suit relate

to ‘arf'airless electrostatic system referred to as the No. 2

Process. During the year 1957 the total cost of all paint,

varnish and lacquer used industrially in the United States

. approximated 644 million dollars. Approximately one per

cent was applied by defendant’s No. 2 Process and 0.6%

by defendant’s. No. 1 Process.

In the No. 1 Process the paint is sprayed by. means of

compressed-air spray guns into an electrostatie-field which

is maintained between witesoor electrodes and the convey-

orized articles of manufacture so that, paint particles are

cleetrostatically charged and urged teward deposition upon

the articles by the effect of the field.

In the No. 2 Process, the airléss system to which the

patents involved relate, the eleetrostatice field is main-—

tained dircetly between an atomizing device and the ar-

ticles on the couveyor. The liquid coating or paint is fed

at a controlled rate to and distributed along the extended

edge of a stationary or a rotary atomizing head, The

streneth of the a Res field at the edge is such that

the field is capable of electrostatically, atomizing fine elee-

trieally charged particles fiom the liquid, The field dis-

v . . . , ®

perses these particles in the form of a spray and deposits

them upon the articles to be coated, Patent No. 2,685,536

is upag the method employed:in such airless electrostatic

coating or spray-painting and patent No. 2,794,417 is upon

the apparatus employed therein. The method and device

clectrostatically effect atomization, dispersion and deposi-

tion in combination and under control.

The No. 1 Process reduced coating material losses due

to over-spray but in many instances considcravle loss per-

sisted because the electrostatic field only partially coun-

teracted the tendency of the compresscd-air blast to carry

the coating material elsewhere than to the articles to be

coated or painted. The No. 2 Proeess eliminated the ne-

cessity of compressed-air spray guns to atomize the coat-

ing materials. In many applications it virtually climinated

over-spray, and thus p int loss or waste. It redueed labor

costs for clean-up operations and substantially reduced

the manufacturer’s investment in sprav booths, exhaust

systems and related equipment.

—,

Plaintiff's eross-counterclaim alleged violation of See-*

* tions 1 and 2 of the Sherman Act (15 U.S.C. A. § Land § 2),

and Seetion 3 of the Clayton Act (1a U.S. C. A. § 14).

Plaintiff's contention that the District Court erred in the

dismissal of its cross-countereclaim is predicated on charges

that the District Court erroneously found and. concluded

that the defendant had not misused the patents in suit by

reason of having combined licenses thereunder with leases

of equipment and by not identifying the partieular pat-

ents in the license agreements; that a cross-licensing

agreement between defendant and another manufacturer

was not for an unlawful purpose and its performance not

a misuse of patents, vor in violation of the anti-trust law

provisions, nor a damage to plaintiff; that a discontinued

license-back provision in defendant's carly license agree-

ments did not constitute anti-trust law violation; and that

patent procurement activities of ‘the defendant did not

violate the anti-trust law provisions,

On the record it had before it we cannet say there is

clearly error in the District Court’s finding and conelu-

sion that plaintiff's domination of the airless electrostatic

spri ving’ system market is solely by virtue of the mo-

nonely ereated by its patents and has not deen extended

or enlarged beyond its proper scope. The evidence sup-

ports a conclusion that plaintiff failed to establish that

defenlant has engaged in any activity beyégid.the ex “se

of rights incident to its patent monopoly.“ .

The record establishes that defendant docs not .sell

equipment outright nor has it licensed anyone to make

und sell electrostatic spray-coating systems, Although de-

fendant offers license agreements containing a lease of

- equipment the leasing arrangement is not imposed as a

condition of licensing aad licenses are available without

equipment being leased from the defendant. The combined

license-lease arrangement was therefore jot illegal nor a

‘ F

re SON

‘

misuse of patents under the Clayton Act. Cf. Linde Air

Products Co, v. Graver Tank & Mfg. Co.,7 Cir., 167 F. 2d

531, 539. Although: the record discloses that customers

preferred the license-lease arrangement it is not indicated

that such preference was due ‘to defendant's insistence.

Nor did the evidence concerning the difference in consid-

eration paid require a finding that it was a compelling

factor. That defendant furnished replacement parts with-

out additional charge where the licensee leased equipment

does not, on the facts here involved, evidence a @layton

Act or other anti-trust law violation. Cf. Stearns v. Tinker

dé Rasor, 9 Cir., 252 F. 2d 589, 604. The monopoly of de-

fendant’s patents was not extended by the agreement to

articles or supplies not covered by the patent.

~ The license agreement does not identify Specific patents

but grants a right to use an identified process for coating

particular items in accordance with a system identified by

au drawing. No licensee pays for or receives any license

under a patent uot applicable to the system, The licenses

are terminable by the customer on thirty days notice. It

does not appear that‘any attempt is made to extend a

patent monopoly beyond the life of the patent, nor is the

issuance of a license to use the svstem covered by the

patents in suit conditioned on the acceptance of licenses

under unwanted patents. No prohibited ‘‘package licens-

ing’’ is involved. Apex Electrical Mfg. Co. vy. Altorfer

Bros. Co., 7 Cit., 238 F. 2d 867, 871; Antoma'ic Radio

Mfg. Co. Inc, v. Hazeltine Research, Inc., 339 U. 8. 827.

Defendant's cross-licensing agreement with Behr-Man-

ning does not purport to embrace the patents in svit and

the eviden:e establishes no direct damage to plaintiff's

business or property as a result thereof. Relief under

plointiff’s cross-counterclaim cannot be predicated on the

cross-ligensing agreement. Blaski v. Inland Steel Com-

pany, 7\ Cir., 271 F. 2d 853, 854-5, It is unnecessarv that

we consider the specific findings made by the District Court

as to its validity or effects otherwise.

Between 1951, when defendant began to market its No.

2 Process on a commercial seale, and 1955 the license

agreement contained license-back provisions requiring that

future inventions by the licensee pertaining to method

and apparatus for electrostatic atomization of liquids or

to coating with the electrostatically atomized liquids be li-

censed to defendant royalty-free, on a nonexclusive basis,

with the right to sub-license. The license-back provisions

were climinated from defendant’s license forms in 1955.

Defendant obtained no licenses from any of its licensees

pursuant to the clause and the effect of the clause on the

incentive of licensees to make improvements is purely con-

jectural. A license-back clause is not illegal per se. T'rans-

parent-Wrap Machine Corp. v. Stokes & Smith Co., 329

U. S. 637. Unlike the situations condemned in United

States v. General Electric Co., 80 F. Supp. 989 and United

States v. General Electric Co., 82 F. Supp. 753 there is no

wide-spread network of such agreements between compet-

ing companies affecting an entire industry.

Plaintiff’s contention that the representations made by

defendant to the patent office in the procurement of the

patents in suit were false has been considered, in .connec-

tion with the arguments addressed to the question of com-

mercial success. It is apparent that the representations

did not evidence a purpose to ‘‘monopolize wrongfully the

entire field of electrostatic coating on false affidavits’’ in

violation of anti;trust law prohibitions as urged by plain-

tiff. /

Plaintiff asserts error based on the D_ trict Court’s

ruling excluding from evidence, on defendant’s objection,

a certified copy of a consent judgment ‘n an action brought

hy the United States against the Belir-Manning Corpora-

tion and certain other manufacturers charged with con-

spiring by means of patent agreements to monopolize

commerce in coated abrasives. This consent decree did not

find or adjudicate that the agreement between defendant

‘and Behr-Manning was a violation of anti-trust law or

otherwise unlawful, and neither that agreement nor the

defendant was involved in any way in that action. It was

an agreed judgment not in any way binding on defendant.

The defendant was neither a party nor a privy to the

action. There was no error in rejecting the proffered

decree,

6 e ® e *

The judgment of the District Court is affirmed in al]

respects except insofar as it allows attorneys’ fees to

defendant. It is reversed as to the allowance of attorneys’

fees.

§1.

§2.

§14.

'1(d) APPLICABLE STATUTES. Soa

United States Statutes Relied On in This Petition.

15 U.S. C. A.

Trusts, ete., in restraint of trade illegal; exception ‘of

resale price agreements; penalty

‘‘Every contract, combination in the form of trust or

otherwise, or conspiracy, in restraint of trade or com-

merce among the several States, or with foreign na-

tions, is declared to be illegal:’’

15 U. S. C. A.

Monopolizing trade a misdemeanor; penaliy

‘‘Every person who shall monopolize, or attempt to

monopolize, or combine or conspire with any other

person or persons, to monopolize any part of the trade

or commerce among the several States, or with foreign

nations, shall be deemed guilty of a misdemeanor, and,

on conviction thereof, shall be punished by fine not

exceeding fifty thousand dollars, or by imprisonment

not exceeding one year, or by both said punishments,

in the discretiou of the court. As amended July 7,

1955, ¢. 281, 69 Stat. 282.’

15 U. S.C. A.

Sale, etc., on agreement not to use goods of competi-

tor

“Tt shall be unlawful for any person engaged in com-

merce, in the course of such commerce, to lease or make

a sale or contract for sale of goods, wares, mer-

chandise, machinery, supplies, or other commodities,

whether patented or unpatented, for use, consumption,

or resale within the United States or any Territory -

thereof or the District of Co! umbia or any insular

possession or other place under the jurisdiction of the

United States, or fix a price charged therefor, or dis-

, ogy ;

count from, or rebate upon, such price, on the condi-

tion, agreement, or unde rstanding that the lessee or

purchaser thereof shall not use or deal in the goods,

wares, merchandise, machinery, supplies, or other com-

modities of a competitor or competitors of the lessor .

or seller, where the effect of such lease, ‘sale, or con-

tract for sale or such condition, agreement, or urder-% .

standing may be to substantially lessen. competition

or tend to create a monopoly in any line of commerce. |

‘ Oct. 15, 1914, c. 323, 8 3, 38 Stat. 731.”

§15.

* §26.

15U.8.6. A.

Suits by persons injured; ‘amount of recovery

‘¢Any-person who shall: be injured in. his business or

property. by reason of anything forbidden in-the anti-

trust laws may sue therefor in any district court of

the United States in the district in which the defend-

ant resides or is found or has an agent, without respect

to the amount in controversy, and shall recover three-

fold the damages by him sustained and the cost of

suit, including a reasonable attornty’s fee. Oct. 15,

1914, ¢. 323, § 4, 38 Stat. 731.”

15 U. 8. C. A.

Injunctive relief for private parties ; exception

‘‘Any person, firm, corporation, or association shall

be entitled to sue for and have injunctive relief, in

any court of the United States: having jurisdiction

over the parties, against threatened loss or damage

by a violation of the antitrust laws, including sections

_ 18, 14; 18, and 19 of this title, when and under the

‘same conditions and principles as injunctive relief

against threatened conduct that will cause loss or damp-

age isygranted by courts of equity, under the rules

cori proceedings, and upon the . .ecution

of pr bond against damages for an injunétion

improvidently granted and a showing that the danger

of irreparable loss or damage is immediate, a prelimi-

nary injunction may issue:’’ .

28 U.S.C. A.

§1254. Courts of appeals;. certiorari; appeal; certified

questions

‘*Cases ‘in the courts of appeals may be reviewed by

the Supreme Court by the following methods :

(1) By writ of cettiorari granted upon the peti-

tion of any party to any, civ il or criminal case, before

or after renditiorr of judgment or eae il

28,U. 8.0. A.

§1338: Patents, PON Ie trade- larks, and unfair com-

petition

‘‘(a) The district courts shall have original juris-

diction of any civil action arising under any Act of

Congress relating to patents, copyrights and trade-

marks. “Such” jurisdiction shall be exclusjve of the

courts of the states in patent and copyright cases.

{b) The district courts shall have original juris,

dictior of any civil action-asserting a claim of unfair

- competition when joined with a substantial and related

claim under the copyright, patent or trademark laws.

June 25, 1948, c. 646, 62 Stat. 931.’’

ADMISSIONS AND ANSWERS TO INTERROGATORIES

BEARING ON ANTI-TRUST.

(Int. Stands for Jnterroxatories and R. A.

_Stands for Request for Admissions. )

Int..85. What is the amount of royalties and fees re-

ceived year by year by the defendant to the present, date on

the licenses which it has granted if the electrostatic spray

coating field?

Int. 86. What is the amount of royalties and fees re-.

ceived year by year to the present date by: the Defendant

on its licenses for airless electrostatic spray coating?

85 and 86. Total fees received year by year by de-

fendant (and by defendant’s predecessor) for its com-

pressed air spray process (No. 1 Process) and for its

airless process: (No. 2 Process)’ since the commence-

ment of the marketing of its electrostatic.spray coating

processes in 1944 are approximately as follows:

——-—_______No, ] No. 2

Year Process Fees Process,Fees

1943 ao ae

1944 $ 47,000

\ 1945 165,000 . aa

1946 270,000 ,

1947 380,000

1948 555,000

1949 665,000 0

1950 810,000 ' $ 6, 000

1951 880, 000 210,000

1952 - 920,000 535,000

1953 . 890,000 700,000

1954 820,000 1,675,000

1955 830,000 1,485,000

1956 720,000 2,220,000

1957 630,000 2 640, 000

Int..12. (a) Does the defendant know of any other sup-

plier in the trade in the United States of America of air-_

less electrostatic spraying equipment.

12. (a) No, not as a unit.

Int. 16. (a) Does the defendant know of anyone else in

the United States of America that is manufacturing and

selling electrostatic spraying equipment for atomizing

liquid into discrete particles witheut the use of air.

16. (a) No.

R. A. 41. Does the defendant admit that prior to the

issuance of*its process patent No. 2,685,536, as far'as is

known to defendant, it was the sole manufacturer and supr

@icr in this country of airless electrostatic spraying

systems?

41. Yes.

R. A. 46. Does the defendant admit that it is presently

attempting to enjoin the manufacture and sale of all com-

petitive airless electrostatic spraying systems on the

market ‘known to defendart? a’

’

46. Yes. d

R. A. 17. That defendant has issued-in excess of three

hundred licenses in the field of airless electrostatic spray

coating, and in each instance, the license provided for

defendant leasing equipment under each such mona,

, 17. Admitted.

- KR. é 38. Does the defendant admit that (a) during the |

period of five (5) years preceding this suit it, in connec-

tion with its licensing program, charged initial fees of

$5,000.00 to $40,000.00 * * *

38. (a) Yes.

R. A. 71.° Does the defendant admit that in granting

its licenses in the airless electrostatic coating field

(a) it has not only granted licenses under its letters

__ patent in suit, but has also joined with such licenses leases

for equipment furnished bx the defendant and

(b) has at alftimes maintained title to all equipment. it

has furnished its licensees under its agreements with them

and ..

actually granted a license without the license being aé-

companied by a lease of equipment?

71.

(a) Yes,

(b) Yes.

(c), Yes.

R. A. 85. (a) That as far as defendant knows, as of on

or about July 15, 1953, there was no airless electrostatic

spray coating system.on the market outside of those being

marketed by Defendant, and

(b) the only source, as far as Defendant knew, for such

systems was the Defendant.

85. (a) Admitted.

(b) Admitted.

Int. 75. Does the défendant know of fny concern or

party other than Defendant which renders any servicing

for Defendant’ s- electrostatic spray coating equipment in

‘the hands of Defendant’s licensees?

5 75. No, other than the-licensees, . — ) |

ant. 3. (a) How many licenses have been granted by ,de- |

fendant on electrostatic spraying,”

._ (b) how many of those licenses are still in foree and

4 effect and

granted and the names of the licensees of all such licenses?

3. (a) 732, up to the date of the filing of the com?

plaint.

(b) 463, up to the date of the filing of the’ com- -

plaint.

» (c) Exhibit ‘‘B’’ attached lists the names and

locations of the licensees and the dates of all licenses

granted by defendant up to the date of the filing of

the complaint for electrostatic spray coating of articles.

In addition to the licenses identified in Exhibit ‘‘B’’,

defendant on commencement of business acquired from

its predecessors in business a number of licenses with

companies engaged in electzastatio spray coating of

argcles. ,

.°

ones

- Int. 169. With regard to defendant’s indication: or

notice begining around 1948 to its licensees that it was

coming on to the market with an airless electrostatic spray

coating system, — :

(a) approximately what percentage” of its licensees

thereafter leased the No. 2 system.

169. .

(a) Of the licenses granted subsequent to the year

1950, when Defendant first indicated to its No. 1 sys-

tem licensees that it was coming on the market with

a new system, approximately 66 percent were for the

No. 2 eystem. ;

R. A. 88. (a) Defendant = ones leased any of its

airless electrostatic spray coating equipment without at

the same time grating a license under its patents.

88. (a) Defendant»admits that it-has never leased

ar of its airless electrostatic spray coating’ equip-

ment-without at the same time granting, at least ‘by

implication, license under its patents to use the leased

equipment in accordante with the terms of the con-

tract with the customer; otherwise denied.

Int. 8. (a) How many different forms of licenses and

leases has the defendant used in its licensing and leasing

program, ‘

(b) what i is the date that each of the,same was adopted

and .

form . tease and license. a”

(a) (b) (c) Allbof defendant's agreement forms

fee to electrostatically spray-coating of articles

are attached as Exhibits D-1 through D-45, and such

exhibits are self-explanatory.

Int. 170: (a) Was substantially the same pattern of sell-

ing its licensees initiall¥ on the No. 2 airless system used

as was employed in selling its air type Nq 1 system, and

‘ 4

2 ev

(h) was the experic nee gained in leasing the No. 1 sys-

tem of assistance in getting custamers to lease the No. 2 :

system, and *

the No. 1, was there in any proportion of*such leases no

substantial interruption in the payment of fees to defend-

ant by its customers, and Se

(d) did some customgrs ‘egntemporaneously lease both

the No. 1 and No. 2 systems,

170. (a) Yes, in many.respects. ,

(b) Defendant’s experience in marketing its No. 1

system was of assistance in marketing its No. 2 sys-

tem. ,

(d) Yes; some customers have simultaneously been

licensees of the No. 1 and No. 2 systems, as shown in

» Hxhibit A to the answer to Plaintiff’s Interrogatory

No. 2 (b). :

R. A. 84. Beginning around March 21, 1949, and for

several years thereafter, defendant leased apg licensed its

No. 2 airless electrostatic coating system yifflout having

issued to it any letters patent affording the defendant ex-

clusive patent rights as to airless electrostatic spray coat-

ing, and

(b) defendant in its leasing and licensing of the No. 2

system during said several year period included in every

instance in its printed form of an agreement a provision

that the lessee was being licensed under letters patent or

patent applications of the defendant, * * *

84. (a) Admitted.

(b) Admitted.

8 o

R. A. 45. Does the defendant admit that in the case of

its priited licensing and leasing forms previously identi-

—SSS SoS

wee

at .

fod herein, such forms were printed by or for the defend-

ant

(a) and submitted generally to prospective licensees,

and

(b) not for or on behalf of any’ particular licensee?

«45. Yes.

-R. A. 44. Does the defendant admit that in its licensing

of airless electrostatic spraying systems, it in each instance

prepared the license and lease and submitted them to the

licensee ?

44. Yes.

R. A. 56. Does the defendant admit that in granting li-

censes, licensees have not only been given the benefit of

operating under the patents taken out by the defendant,

but also under other patent rights acquired from third

parties?

56. Yes, in such cases as such rights were ee |

cable.

R. A. 58. Does the defendant admit that in no instance

where it has acquired patent rights from other parties has

any of such parties gone into competition with the defend-

ant in the electrostatic liquid spraying field?

~ * 58. Yes.

R. A. 11. That defendant is presently charging with pat-

ent infringement each known supplier who has offered air-

less electrostatic spray coating systems fé> sale in the:

United States.

11. Other than the instant case, Defendant has

charged with patent. infringement .one supplier in the

United: States of airless electrostatic spray. coating

systems, and knows of no other such suppliers; other-

wise denied.

R. A. 57. Does the defendant admit that in its licensing

program on electrostatic spraying systems it has for the

most part used printed forms of licenses which do not

— we

% ™ 18

single out any particular patents by number, of those in

the portfolio of the defendant?

57. .Yes. ‘

Int. 40. (a) How many licenses were Pave a the

defendant prior to the issuance of the Starkey patent on

August.3, 1954 for airless electrostatic spray coating (with-

out the use of air)?

40. (a) 171. : .

Int. 81. (a) Has, the defendant issued ‘any licenses re-

lating io electrostatic spray coating in which the duration

of payments to be made by licensees Was confined expressly

by the terms of such license to the life of any patent or

patents under which such license was granted. ‘ "i

81. (gm) No.

Int. y. (a) Has the defendant ever submitted a license

under its Starkey patent alone without an accompanying

proposed agreement for the furnishing of equipment by

the defendant * * *.

52. (a)» Defendant has never submitted any license -

limited to its Starkey, et al.patent alone. ,

Int. 53. (a) Has the defendant ever offéred to license,

under the Starkey Patent No. 2,685,536, any manufacturer .

of spray coating equipment capable of practicing the

process of'the Starkey patent with the right fo. make and

sell electrostatic emitters.

53. (a) No. . a }

Int. 79. Did Defendant, in letters transmitting license

and lease agreements after May, 1953 include in such let- ©

ters a. statement reading substantially as follows: ‘‘We

understand that ‘you wish this type of agreement. rather

than one under ywhich we do not furnish these’ addtional

items’’?

79. Yes, but said letters sidan proposed con-_

tracts for execution rather than consunimated —

ments,

e é

on,

Int. 80. (a) Does*Defendant know of any prior writings

‘from recipients of the Yetters yeferred to in, the preceding

interrqgatory requesting Defendant to supply equipment

as part of the agreement referred to in the quoted state-

ment, * * ° ; .

80, (a) No, although there may be some such writ-

‘ings which might be found upon a search of the files.

Int. 10. What part of the defendant’s cost of each

piece of leased equipment is recovered by the defendant

at the time of its granting a lease and a license under its

patents?

‘10, Af of ‘it. ,

R. A. 97. (a). The figure of forty poieunt of the initial

leasing fee for a patent license without equipment set forth

in the third paragraph of defendant’s ‘‘ Pricing Guide for

No, 2 Process,’* dated July 15, 1953, was not dependent

upon or varied by the number of patents or patent appli-

* eations applicable to the equipment to be licensed. ‘

(a)’ Admitted.

Int. 182. (a) With regard to defendant’s ‘Pricing Guide

for No. 2 Spray Process’’ dated July 15," 1953 (Exhibit

JJJ-2), what basis was employed for arriving at figure of

forty percent of the initial fee as set forth in the third

paragraph thereof, and

(b) was the predetermined forty percent figure appli-

cable regardless of the numbef or character of the patents

involved.

182: (a) The initial fee of Exhibit JJa-2 for a non-

equipment license, had one been desired, was exppessed f

as 40 percent of the..initial fee for a license with

equipment, the difference between said initial fees rep- ,

resenting on the average, the cost of the equipment

forsished Rad: installation supervision, plus a reason-

able profit thereon. .

(b) . Yes, ‘because the initial fee is related to the

value to the licensee of the system in operation and

not to the number of patents valet

.. &

Int. 11. (a) Does the defendant, as a part of its patent

licensing and leasing program, render engineering and

technical services to its licensees ,

11. (a) Yes.

Int. 89. (a) Has Defendant or anyone else ever sold or » |

offered for sale any second-hand or used equipment of De-

fendant for airless electrostatic spray enating,

89. (a) No. °

R.A. 110. (b) Defendant licenses in blanket form all of

its ‘patents which it epnsiders _ 2 applicable in each

; instance, .

110. (b) * admitted to the extent that each of De-

fendant’s customers receives, in effect, a covenant that

it will not be sued for infringement of any of Defend-

ant’s present or future patent rights so long as the

customer does not operate beyond the scope of the use

specified in its written agreement with » Defendant;

otherwise denied. ; &

Int. 187. (a) Is it a fact that as a general rule in the

majority of instances, the customer in gener defendant’s

-equipment.is never ‘advised by defendant as to the patent

numbers of the patents being licensed in defendant’ 8 port-

folio ve patents and patent rights.

Without adopting Plaintiff’s-characterization

of Def endant’s marketing’ program, Defendant answers,

this Interrogatory, as, follows:

(a) Yes.

R. A. 51. \Does the defendant Admit that as far as it

knows there are no secondhand dealers in the United States

handling electrostatic airless spray coating systems?

51. Yes. a 4 "4

R. A. 52. Does the defendant admit that as far as it °

knows there is no, servicing organization in the United

States outside of itself for servicing its co-called No. 2 air-

less electrostatic coating spy stem

52. Yes,

R. A. 53. Does.the defendant admit that under its licens-

‘ing and leasing agreements with its existing licensees, it is

obligated to furnish replacement parts on equipment that

it furnishes such licensee?’

53. Yes, subject to conditions specified in the agree-

ment.

: R: A. 54., Does the defendant admit thatiin connection

with’ its licensing and leasing progfaty o} airless electro-

static spraying systems it usually, as apart of the fees re-

ceived by it, for the most part supplies the majority of re-

placement parts on the equipment furnished by the defend-

vant to its licensees?

54. Yes. eae aie:

: |

Int. 183, As to the agreement No. 5228 with Avco

Man -Corp., was form*No, 434 previously identi-

fied ant as D-29 allegedly adopted in April, 1952,

used in said agreement, and —

- (b) is said agreement, as modified in ‘defendant’s agnee-

ment letter of January 18, 1954, to Aveo, still in force and

effect, and

(ce) does said agreement as executed include the ‘future

inventions”’ Paragraph, 11 of said form, an .

(d) did such agreement as executed include the provi-

vion that ‘‘Ransburg shall liave the right to terminate this

agreement at any time after three years from the date of @

Ransburg’s ‘acceptance hereof upon six months’ written

notice to user’’?

6 183. (a) Yes.

(b) Yes. as

(d) Yes. : ,

R. A. 90. (a), That of the thirty-six patents listed in

Exhibit A embodied-in defendant’s agreement, of January.

18, 1954, comprising part of its airless electrostatic coating

agreement No. 5228 with Aveo Manufagturing Corp., only:

22 .

four, Rate Turner Patent No. 2,651,287 and Crouse Pat-

ent No. 2,568,611, Ransburg patenty’ Nos. 2,658,009 and

2,658,472, disclosed or claimed airless electrostatic spray-

ing of liquid, and

(b) none of those patents covered the No. 2 system leased

and licensed to Aveo Manufacturing Corp.

90, (a) Admitted:

(b) “Admitted.

Int. 193. By the expression, *‘the possible competition

by them”’ referred to in the letter of March 4, 1943, ‘‘Re:

Brush License” . ‘

(a) was referénce- made to possible competition by the

Brush Development Company, with whom Harper J. Rans-

burg Company had previously entered into a license agree-

ment dated September 19, 1942,

193. (a) Defendant has no more knowledge of the

‘significance of the quoted pene than appears f rom

the letter ——

Int. 196. (a) te the following statement quoted from a

letter dated May 6, 1941 to Western Electric Company from

the Ransburg Company’ s Counsel factually true:

‘‘While, at the present time, our client is experimenting ,

with spraying equipment primarily for their own products

arid in thejr own plant, it*is contemplated that if it develops

successfully and there is any demand, their interest would

'-» then extend to the sale or lease of such equipment to

others.’’ oars

196. (a) It is true, as far as‘it goes.

Int® 111. As far as the defendant knows, have the parties

to the cross license agreement dated September 26, 1944,

between Ransburg and Behr-Manning Corp. whereby the

electrostatic deposition field was divided into one of liquid

particle coating and another of solid particle coating

(a) lived up to the provisions of such agreement, and

(b) is such an agreement still of force and effect?

23 a

111. Without adopting’ plaintiff’s ch racterization

of said contract, defendant answers Interrogatory 111

as follows:

(a) Yes.

(b) Yes.

Int..160: (a) Did the defendant or its predecessor ever

receive in writing any notice of oe infringement from /

Behr-Manning.

160. {) No.

R. A. 102. (a) In the negotiations by the Defendant’s

predecessor with Behr-Manning Corporation leadiwg up | to

the agreement of September 26, 1944, the Ransburg Com-

pany, as of August 8, 1944, made the following representa-

*tion to Behr-Manning Corpogation: Patent No. 2,270,341

is the one to which we referred as possibly. interesting to

you in the abrasive or pileous fabric field, or at least one ©

in which you could contribute materially in the composi-

tion cork industry or the fireproof insulating shingle in-

dustry.”’

* . Qe ; ° ie 2

“ment, never did market or license or lease any é¢quipment

under its said patent 2,270,341 in the solid’ particle field,

102. (a) Admitted.

R. A. 103. ‘In the negotiation of stilts predecessor

company with Behr-Manning corporation leading up to the

consummation of the agreement dated September 26, 1944,

(a) The Ransburg Company. in a letter dated November

13, 1944, to Behr-Manning Corporation, indicated its

«greatest concern’”’ was as follows:

‘“‘Our greatest concern and that to which we have given

the most thought and consideration’ was the question py

just how to word our.futuré license agreements so that

there could be no question in the minds of our users: that

they were restricted from operating in your field, and still °

not create undue salés resistance for ourselves. It was

ee a

originally our thought that this would best be ‘accomplished

by adding to tir license agreements ‘*said right does not

include thg use of this process in the manufacture of abra-

sive articles or articles coated with partis ‘les of fibrous ma- —

tertal of every kind.’’ nag

7 ’ . * ‘ ° ; .

(a) Admitted.

Int. 83. (a) Has Defertdant, received any inquiries for

Kcenses in the fields of manufacturing abrasive articles,

flock coated articles, and/or articles coated with fiber-

_shaped particles, and if $0, °

(b) what disposition was made of stitch inquiries,

83. (a) No, but on occasion defendant has received

inquiries as to whether its processés and equipment

are suitable for one or more of these purposes.

(b). Defendant has replied” in substance that its

processes and equipment are primarily for electrostatic

painting, and has informed the inquirer that Behr-

Manning Company might be able to furnish the de-

sired: information.

- ' re 82, (a) Defendant received a letter dated Febru-

ary 10, 1955, from the Dewey and Almy Chemical Company

of Cambridge, Massachusetts, reading as er

‘*Ransburg Blectré- Coating Corporation

1204 Barth Avenue

Indianapolis, Indiana

Gentlemen:

We understand that you manufacture equipment for

charging drums electrostatically to be used with a floc

spraying process in coating materials. Could'you send us °

_your literature on the equipment and whatever else you,

may have on the floc spraying process. We have an appli-

_ cation which we are considering for use on this process

and are interested in what you may-have,

~ Very truly yours,

D. A. lea }

and : x ee r

(b) defendant replied to such letter in a letter dated

February 15, 1955, reading as follows:

“Dewey and Almy Chemical Company :

Div.of W. R. Grace & Co.

Cambridge 40, Musgachusetts

‘Gentlemen:

We have your letter of February 10 and wish to thank

you for your interest in electrostatie spraying. The appii-

cation of flock with electrostatic methods is somewhat out

of our field since we are primarily interested in the appli-

eation of liquid coating material such as paints, lacquers,

enamels, ete. The ficlel of flock coating electrostatically has

been quite fully and completely developed by the Behr-

Manning Corporation of Troy, New York. I would like to

. suggest that you contact them concerning your problems.

Mr, John Amstus ef that company W ould be pleased to dis-

cuss these matters with you.

#')

Very truly yours,

. , Emery P. Miller’’

82. (a) Admitted. ;

(b) Admitted. .

R. A. 101. (a) ‘In the negotiations for the license agrec-

ment dated October 7, 1948, between Research Corporation

of New ‘York, and the defendant, a revised draft of the

agreement was submitted to defendant? s counsel by Re-

search Corporatien in a letter dated August 23, 1948, and

wherein Paragraph 3(c) of the akreement setting forth the

license right given to defendant and the right to sublicense

was modified to include the following:

«“* * © nrovided nevertheless that such right shall be

limited to. apparatus employing one or more of the inven-

tions ‘of the Licensed Patents in the electrostatic deposi-

_tion of liquid materials and com specifically preclude any

“use in connection with flock-deposition, flock-coated mate-

"rial, or the: manufacture of abrasives and coated abra-

sives,’’ and

as)

(b) such agreement was executed with said guoted pro-.

vision, and

not violate the requirements of the aforesaid quoted pro-

visions. 3 )

101. (a) Admitted.

(b) ‘Admitted. ,

has not purported to license any other to engage, in_

flock-deposition, or the manufacture of any flock-coated

material, abrasives, or coated abrasives under the pat-

ents which were the subject of its contract with Re-

search Corporation; but Defendant otherwise denies

section (c) of Request No. 101, and, specifically denies

that its contract with Research Corporation expressed

any commitment limiting its activities.

‘Int. 82. (a) Has defendant issued any license in the

fields of manufacturing abrasive articles, ghey arti-

cles and/or articles coated with fibér-shaped particles,

82. (a) No.

-R. A. 94. (a) As far as known by the defendant, at least

Since the execution of its predecessor’s agreement dated

September 26, 1944 with Behr-Manning Corporation, it

has never experienced any competition by that company in

the field of electrostatic spray coating of liquid particles.

94. (a) Defendant admits that to the best of its

knowledge Beht,Manning Corporation has never at-

tempted to market any system involving electrostatic

coating with liquid particles; otherwise denied.

R. A. 105. During the course of its negotiations lead-

ing up to. the li¢éénse agreement dated September 26, 1944,

with Behr-Manning Corporation, defendant’s predecessor

company received in the usual course of business the fol-

lowing quoted letter dated November 24, 1944:

Mr. Harper J. Ransburg

“)

‘*November 24, 1944

Harper J. Ransburg

Company |

Indianapolis 7, Indiana. f :

Dear Mr. Ransburg: °

5 Enclosed you will find three copies of the electrocoating

agreement which have been signed by Behr-Manning in the

form in which the agreement was redrafted as outlined in

your letter of November 13. We think that the suggested

changes were in‘accord withfour verbal discussion and re-

flect a true meeting of minds.

‘It is my impression that the copy of the electrogoating *

agreement which you have executed with yoer existing li-

censees or had under negotiation with prospective licensees

at the time our agreement was being consummated, con-

‘tains an indication of the. purpose for which the licensed

Ransburg equipment is to be employed by the licensee.

“Tf this is the case and since no licenses have to your

knowledge been, granted in the flock or abrasive fields, we

do not foresee difficulty or conflict with any of your exist-

ing licensees and it should not be difficult for you to so limit

‘your future licensees as to prohibit the employment of the

patents under.which you have given us exclusive rights

for abrasives and flock coated articles, in these fields.

‘‘We are looking forward to a pleasant and mutually

profitable association in this new cross license agreement.

Your very sifcerely,

Behr-Manning Corporation

EK. C. Schacht <j

‘ VicePresident’’

105. Admitted.

R. A. 91. Defendant entered into licensing.and leasing

~ agreements as to its electrostatic airless or No. 2 system

with Enameled Steel and Sign Company of Chicago, IIli-

nois (No. 3448) as of March 21, 1949, and with Fastern

Venetian Blind Company of Baltimore, Maryland (No.

3530) as of June 14, 1949,

‘7 28

(a) in each of which agreements the licensee or user was

given a paterit license to use defendant's Process, with the

express provision ‘*but said right shall not include the use

of said Process in the manufacture’ of abrasive articles,

flock-coated articles or articles coated with fiber shaped

particles,’’ and

(b) that as far as is known to defendant, the equipment

furnished under the dforesaid two agreements was not

used ‘tin the manufactuye of abrasive articles, flock-coated

_ articles or articles coated with fiber shaped particles.’’ ,

(a) Admitted. fv

(b) Admitted.

R. A. 99. In the license agreement entered into by de-

fendant with Research Corporation of New York on Oeto-

ber 7, 1948, in which the defendant obtained a license to

manufacture, use and sell apparatus embodying the inven-

‘tions of patents Nos. 2,097,283 and 2,221,338 and to sub-

license others-to use the methods of said patents and to

use and sell, but not to manufacture the appatatus of said

‘ patents; it was specifically provided that the license granted

defendant ‘‘does not in@lude use of any such invention in

connection with flock deposition, flock-coated material or in

the manufacture of abrasives and coated abrasiv os.??

99. Admitted.

— a

te!

”

a 29

ADMISSIONS, AND ANSWERS TO INTERROGATORIES

BEARING ON PATENT PHASE. °

(Int. stands for Interrogatory and R, A.

for Requests for Admissions.)

Int. 117. (a) Was the defendant ever advised by Dr.

Emery P. Miller or anyone else that prior to October 1943,

it Was old in the scientific arts to use an eleetrostatiec field

for effecting atomization and spraying of tiquid particles

and if so

— (b) what was the name of such pérson,

(ec) the identity of stich pfior use, and

(d) the date when such. advice or knowledge was re-

ceived?

117. (a). @), (¢), ‘and

(d) Since coming into existence, defendant has

known that it was old, prior to October 1943, to use an

electrostatic field for effecting atomization and spray-

ing of liquids. Af least one of the officers of defend-

ant possessed such knowledge at the time of defend-

ant’s incorporation on January 1, 1948, ;

R. A. 60. For the purpose of this lawsuit, does the de-

fendant admit (as testified to by Dr. Emery P. Miller, R.

42 to 44)

(a) that airless electrostatic detearing. was used com-

mercially before the making of tl® alleged Starkey et al

invention of patent 2685,536 in suit and * * *

60.

(a) Yes.

R. A. 68. Does the defendant admit that

(a) its so-called No. 1 or air type electrostatic coating

system is prior art with reference to both of the patents

in snit and (b) * * °

68.

(a) Yes,

Int. 152; In conneetign with defendant's answer to Tn.

terrogatory 117, wherein it said ‘‘defendant has known that

it was old, prior to October 1943, to useam electrostatic

field for effecting atapization and spraying of liquids.’’,

(a) what is the name of the officer or officers who. had

such knowledge,

- (b) what is the identity of the source of party or persons

from’which such knowledge was derived, and

or reduced toewriting, and

_ (d) if so, what is the identity of each nae all alk papers

in writing bearing in any way on such knowledge ¢

: 152. | '

(a) . E, M. Ransburg 5

(b), (c) and (d) Such knowledge was acquired

from the United States Patent to Darrah, No. 1,95, 406,

cited by the Patent Office Examiner in the file wrapyter

of Starkey Patent No, 2,685,536 in‘suit.

_ R. A. 61. For the purpose of this law suit does the de-

“fendant adngt that

(a) airless electrostatic detearing was in public, or ~,

mercial use more than one year prior to the origin®l fill

date, September 29, 1944, of the Starkey et al letters pat-

ent in suit e » ;

(b) that acedrding to auch detearing excess liquid on the

previously coated given object was atomized, dispersed and

deposited in liquid form on another object such as a grid?

61.

(a) Ys.

(b) No, but incidental to the removal of excess

material from coated articles by electrostatic detear-

“ing, On occasion some atomization, dispersion, and

deposition of the materifil upon the apparatus and floor

occurred sporadically and momentarily. ,

—}

Int. 22. (a) What was the highest voltage the defend-

ant has ever used in conjunction with its air tupe of elge-

trostatic spraying equipment, ¥- :

‘ (b) when and , ¢ é

22, (a) Defendant's electrostatic coating processes

using ¢ompressed air spray guns have been operated

commercially at a voltage as high as approximately

90,000 volts. sf

(b) ” July, 1951 and subsequently.

(ec) Roberts Manufacturing Company, Cleburne,

Texas and subsequently at other places.

a » ,

‘R. A. 70. Does the defendant admit that as far ag its

No. 1 air type electrostatic sy is concerned, it has

always proved for the introduction df liqhid into the field

in such manner that none of the liquid entered in the corona

discharge of the high potential electrode?

70. No, ,

~ .

R. A. 66. Does the defendant admit for the phrpose of

this lawsuit (as testified to hy Dr. Emery P. Miller, R. 126)

that liquid that is atomized in ah clectrostatic field is of

necessity also dispersed? '

66. Yes. :

R. A. 64. Does the defendant admit as to both of its

two Starkey ect al pateyts in gnit, 2,685,536 and 2,794,417,

that the earliest act of conception that will rely uponsherein

is the paint brush activity commencing on or about October

8, 1943, and documented in a notebook as of Ogtober 21),

1948, with the following notation, ‘‘Al Starkey suggested

using the detearing action from the bottom of a brush as

the atomizing Agent to spray items passing under this ar-

rangement??? or

64. Yes.’ =

R. A. 62, For the purpose of this lawsuit and in connec-

tion with defendant's previous admission 14 as to its use of

a wet paint brash, does the defendant admit that when the

r __ peter y~

paint brush was disposed in an electrostatic fie€l, it emitted

liquid point which was: atomized, dispersed and deposited

on an arv.cle such as paper?

62. .No, However, defendant admits that when the

paint brush was effectively arranged as one terminus

of the electrostatic field and the article was effectively

arranged as the other terminus of the field, liquid paint

was atomized from the brysh and the atomized par-

ticles.were dispersed and*deposited on the article.

R. A. 65. Does.the defendant admit for the purpose of

this lawsuit (as testified to by Dr. Emery P. Miller, R. 154)

that

(a) in the use of its so-called air type No. 1 electrostatic

egating system, such systein had. been tried and-operated

with a ‘‘jet or liquid adiacent the high potential electrodes

_in the area of theqorona discharge’’ and

- (b) ‘fand with th® result that the material atomized off

the device’’? .

65. No, bitt Dr. Emery P. Miller observed that,

upon shutting off the operation of the air type No. 1

electrostatic coating system, when the flow of com-

_ pressed air from the air spray gun ceased before the

flow of paint ceased, a jet of liquid paint was momen-

tarily discharged adjacent the high potential clectrodes

in the aren of the corona discharge, with the result that

some atomization occurred,

R. A. 14. That an initial act of conception in eonnection

with the subject matter of the Starkey and Ransburg patent

in suit was the observation by Starkey of the behavior of

a wet paint brush in an electrostatic field.

14. Admitted.

R. A. 63. Does the defendant admit with regard to its

original paper exhibit (PX-B) used in connection with the

initial paint brush inception of the alleged Starkey ect al

invention, fhe paint that was applied to the paper was

electrostatically atomized, dispersed and deposited on the

paper?.

63. Yes,

_ ———- ——————— =o —————_

Int. 164.°° °°

"(d) is the Starkey et al ovorens patent No. 2,685,536 in

suit based upon the principle observed in the behavior of

a wet paint brush in an electrostatic field observed by

Starkey? :

(d) In part. re

Int. 1654 (a) Did the operation of ,the behavior of the

wet paint brush in an electrostatic field observed ‘by Star-

key, as referred to in Request for Admission No. 14, include ‘

the step of maintaining,. between the brush and the piece

of paper (Exhibit No. B) which was coated, an électro-

static field which electrostatically effected atomization, dis- «,

persion and deposition of paint? = | :

165. (a) The initial act of conception referred to

in Defendant's reply to Request for Admission No. 14

did not onvolve any paper, but did involve existence

between the brush and an ‘opposed surface of an elec-

trostatie field which electrostatically effected atomiza-

tion, dispersion and deposition of paint on such surface.

R. A. 72. Does the defendant admit that it was a party

plaintiff in a suit brought in the district court of the Dis-

trict of Columbia under 35 U. S. C. 145, formerly known

as Section 4915 of the Revised Statutes, to adjudge Emery

P. Miller as being entitled to receive a patent on an appli

cation, Serial Number 626,631, filed on November 5, 1945,

and which ease was decided ailversely to defendant on

March 2, 1956, in 129 F. Supp. 241, affirmed at 229 F. 0s 217

7. Yes.

R. A. 74. Does the defendant admit at the time of the

pendency of the Miller v. Weeks suit (129 F. Supp. 241)

that as to the three prior reference patents in suit referred

to in the eh ’s decision it had a license under the Winter-

mute patent 2,221,338 and owned the other two patents,

namely the Pugh patent'1,855,869 and the Ransburg patent

2,334,

74. No, but defendant admits that, at the time of

the pendency of the Miller v. Weeks suit (129 F. Supp.

241), of the three prior reference patents referred to in

3 0

the court’s decision, defendant had a license under the

Wintermute patent 2,221,338 and owned the Ransburg

'\- patent’2,334,648, the Pugh patent 1,855,869 rene pre-

viously expired. .

R. A. 73. Does the defendant admit that its licensing

program with respect to the use of an electrostatic field in

the disperséng and depositing of an oi) coating was urged

as part of its commercial success picture in the aforesaid

law suit, Miller v. Weeks, No. 1730-53, 129 F. Supp. 241?

73, No. Bht Defendant admits that it relied upon

its oil-coating licenses as evidence of commercial suc-

cess in such suit. >

R. A. 75. Does the defendant admit for the purpose of

this law suit that the electrostatic deposition process of

its patent 2,685,536 can be used for the atomization, dis-

persion and deposition of a lubricant” or oil coating on,an

article? ag

75. No, but defendant mre Mat the process of

its patent 2,685,536 can be used for ‘the atomization,

dispersion, and deposition of a lubricant or oil coating

pn. as an article.

° .

ee (a) The William A. Starkey et al applica:

tion Serial No. 556,390 referred to in the E. M. Ransburg *

patent No. 2,658,009, which was issued November 3, 1953

from an application filed May 13, 1948 and was entitled

‘*Electrostatic Coating Method: and Apparatus,’’ is the

same parent application from which both of the Starkey

efal patents Nos. 2,685,536 and $794,417 in suit, were based,

and

(b) the process of said: Ransburg Patent No. 2,658,009

is dominated by claims in suit of the Starkey process Patent

No. 2,685,536, aie

No. 2,658,009 is dominated by Claim 4 of the eee ap-

paratus Patent 2,794,417 in suit. |

79. (a) Admitted. —

(b) Defendant admits that certain aspects of the

9 * * ,

——eEeeeeeee

”

process of said Ransburg Patent No. 2,658,009 are re-

garded by Defendant as dominated by elaijns in suit of

the Starkey Process Patent No. 2,685,536; otherwise

denied. ne:

form of apparatus disclosed in said Ransburg Patent

No. 2,658,009 are regarded by Defendant as dominated

by Claim 4 of the Starkey-Apparatus Patent No. 2,794,-

417 in suit; otherwise denied.

R. A. 80. (a) The specific apparatus for electrostatic

coating shown in the drawings of the Ransburg Patent No.

2,658,009 making use of a secondary electrostatic field be-

“ tween the jet propelling nozzle and the article has never |

been commercialized by the defendant, .

(b) but the defendant has commercialized the ‘‘general

process’’ of the Ransbutg Patent 2,658,009 in its licensing

and leasing of its No. 2 airless electrostatic coating system.

80. (a) Defendant admits that it has never com-

mercialized any apparatus exactly corresponding to

any"specifically disclosed in the Ransburg Patent No.

2,658,009 ; otherwise denied.

(b) Defendant has commercialized the process of

Patent No, 2,658,009 to the extent that certain of its

customers use a secondary electrostatic field to shape

the spray; otherwise denied.

Int. 41. (a) When did the. defendant first publicly °

‘ demonstrate its eléctrostatic airless spray coating process,

_ (b) where and

_ (c) to whom, was-¢ame first demonstrated?

41. (a) July 26, 1951. \

(b) 1234 Barth Avenue, Indianapolis, Indiana

.» (c) Approximately 25 representatives of trade jour-

nals. Priof to the date in (a) abowe, private demon-

strations were given to selected individuals on various

occasions. , .

Int. 47. (a) In the light of depositions taken by de-

fendant herein, will the defendant contend tMt there was

any confidential or secret disclosure of the subject matter

of the application from which Starkey Patent 2,685, 536

issued to representatives of the Plaintiff prior. to the i issu-

ance of the Starkey patent and, if so, * * *

47. (a) No. r

R. A. 10. That Defendant notified Plaintiff that Plain- -

tiff should not sell its emitter or sprayer shown in Plain-

tiff’s Drawing SK-661 (ExhibitE) for electrostatic coating

to any party who was not a licensee of Defendant.

10. Admitted.

R. A. 8. Thatethe airless electrostatic coating system

_used by Plaintiff, the use of which is alleged to infringe the

patent in suit cqmprises at least these elements: (1) an

electrical power pack (2) a liquid emitter or sprayer of the °

type shown in Plaintiff’s drawing SK-661 (Exhibit E)

(3) a container for supplying coating liqyid to be applied

(4) electrical wiring connecting the emitter to the power

pack for energizing the emitter and (5) conduit for direct-

ing liquid, from the container to the emitter.

8. “Admitted.

R.A. 9. That the acts of Plaintiff alleged to infringe

are (1) the use of the emitter or sprayer shown in Plain-

tiff’s drawing SK-661 (Exhibit E) for airless electrostatic

coating in Plaintiff’s plant and * * *

9. (1) Admitted. = 6 |

R. A. 7. That electrical power packs, containers for

liquid or paint, electrical wiring, and conduits for convey-

ing liquid@re available on the open market.

7. Admitted, except that no electrical power packs

then available on the open market were deemed by

Defendant’s predecessor free from danger when used

. for electrostatic spray painting. ae

R. A. 37. Does the defendant admit that it has never

‘’ commercialized an electrostatic airless spraying apparatus

with an applicator or emitter using

(a) spaced needles,

eee

" 387

(b) spaced wires or

37. om,

R. ‘ 34. Does the Sidieiniaas admit that as far as its

charges of infringement, none of plaintiff's spraying de-

vices charged to be infringements employ any “paced.

mechanical elements in the tangible form of either needles

or points?

34. Yes.

R. A. 30. Does the defendant admit that it has never

commercialized by, sale or lease any electrostatic sprayer.

apparatus of the siructure shown in any one of the figures

of either its earlier process patent 2,685,536 or of its later

apparatus patent 2,794,417?

30. Yes.

Int. 93. As to its charge of infringement of its ap-

paratus patent 2,794,417 does defendant

(a) rely upon any structure used by plaintiff not already

embraced in the‘charge of infringement under defendant’s

method patent No. 2,685,536, and ah

(b) if the answer is in the affirmative, what is the addi-

tional structure which is relied upon by defendant?

93.

(a) No.

(b) No answer required.

R. A. 36. Does the defendant admit that in the case of

" each of the applicators or emitter heads illustrated in the

. drawings ef both ofits two patents in suit, there is provided

in every instance mechanical structure either in the form of.

edges of spaced openings, spaced needie points or spaced

strands of wire, for defining spaces through which droplets

of liquid material emerge from the head? .

36. No, however.defendant admits that in every in-

stance mechanical structure “is provided for defining

spaces. through which liquid material emerges.

, are

o .

ae db.

‘ | 338 é * °

BR. A. 2. "That Defendant has never licensed for coni-

mereial use any airless cleetrostatic spray coating system

empeging non-rotating applicator head: identical or ‘sub-

stantially identical.to the applicator heads shown in the

— of the Starkey and Ransburg Patent 2,685,536

in suit. ,

2. Admitted. a ae

R. A. 69. Does the defendant. admit -that ite airless

No. 2 electrostatic coating system has been used for spray-

ing liquid materials in which

(a) paint, * * *° ,

(f) alcohol containing coating materials, oar

(g) ‘water containing coating materials is included?

69. oO

(a) Yes. e

(f) Yes.

(g) Yes. e,

Int. 21. (a) What is the lowest voltage the defendant

“has ever used in conjunction with airless electrostatic

spraying equipment at which it obtained atomization of

the particular liquid being sprayed.

(b) When and . .

(c). where was such spraying conducted?

21. (a) Defendant has electrostatically atomized

conventional Jiquid coating materials commercially

at a voltage As low as approximately 20,000 volts.

(b) December, 1955 and subsequently.

subsequently at other places.

Int: 23. (a) Is it not avfact that the voltage at which

atomization occurs in the use of defendant’s aforesaid air-

less electrostatic spraying process depends upon the na-

ture of the liquid being sprayed and

'- (b) that generally the voltage required increases with

the viscosity of the liquid and

| x + Bo

at which atomization can occur in the use of said process

° in the spraying of | all different types of’ liquid handled

“thereby? .

23. (a) Electrostatic atomization of a given liquid |

‘ occurs over a wide range of voltages, all other con-

¢ dition being the same, The size of the particles so °

atomized depends to an extent on the nature of the

liquid, under conditians of constant voltage and with

ail other: factors constant. “e

-* (b) ‘The degree of atomization usually suffers ice. .

| the particles beco arger, as the viscosity of liquid

being electrostatically atomized increases, other factors

being maintained constant. However, it does not fol-

‘ .low that deterioration of atomization resulting from

imereases in viscosity can be overcome merely by in-

creasing the voltage applied. '

of this. interrogatory, electrostatic atomization of a -

* . given liquid occurs over a wide range of voltages, the

extreme limits of which defendant has not explored.

Int. 133. (a) Has the defendant conducted any experi-

mentation with regard to airless electrostatic coating to

‘determme how large or how low .the number’ of liquid

particles should be to effect a satisfactory coating and.

(b) if so, when were such tests made, ~_.

(d) with, what liquids and

(e¥what if any was the range of size of ns de-

* veloped by such tests?

(a) No.

(b), (c), (d) and (e) No answer required.

’ oe

Int. 135. Does the defendant in its No. 2 airless electro-

static ‘system. (which it relies upon for comercial success

as ‘to its Starkey et al patents in suit),

(a) create an .electrostatic charge differential between

‘the particles and the-article of a strength te move the

particles toward the article sufficiently rapidly to deposit

‘them thereon while still in a liquid state, and

(b) if the answer is in the affirmative, what is that

‘‘strength’’ in units of electrical measurement

is it, and’

(d) what is considered in units Of measurement to be.

satisfactory for a sufficiently rapid movement of the par-

ticles toward the article? ¢

(a) Yes.

. (b) That restlting from the maintenance of an

average potential gradient on the order of 8,000 volts

per inch between the atomizer and (he work.

sults from maintenance of an ave™ge potential

gradient of from about 5,000 volts to about 10,000 volts

per inch between the atomizer and the work.

(d). That resulting from the maintenance of an

average potential gradient onthe order of 8,000 valts

per inch between the atomizér:and the work.

Int. 24. (a) Will dstesdent's aforesaid ‘airless electro-_

static spraying process atomize all kinds of known liguid

and, if not,

(b) What are the limits of the range of liquids that

can be atomized by such spraying peocess?

24. (a) No. :

(b) . Defendant does not know the limits of the

range of liquids which can be atomized by said spray-

ing deta

Int. 25. (a) Dogs temperatire constitute a factor in

the spraying of liquid -by defendant’s af@Pesaid process -

of airless electrostatic spraying and, if so,

(b). To what extent and

range?

4 , sees i

le 25,. (a) Temperature of the liquid constitutes a

ae factor in the spraying of the liquid in defendant’s

ae. process of airless clectrostatiec spray coating.

| (b) “To the extent that it influences viscosity.

range, of temperatures involved. a

, ‘Int. 26. In the use of defendant’s aforesaid process of

airless electrostatic spraying, when is a liquid particle a

diserete particle. from the standpoint of the practice of

defendant’s process? ;

26. Ti the use of defendant's, provess of airless

electrostatic spray coating, the liquid particle formed

as a result of atomization are discrete particles since

they are*separate, individually \distinet, minute en-

tities.

% °

Int. 29. Can the aforementioned Starkey patented proc-

ess produce a eoating of paint on an object which is held

‘stationary with — to the atomizing head?

° ° ‘ oe

‘Int. 134. Does the defendant in its No, 2 airless elec-

trostatic system (Which it relies upon for commercial suc-

cess as to its Starkey et al patents in suit)

(a) employ .an electrostatic atomizing head from which

liquid particles are emitted in an electrostatie field of suffi-

cient strength to charge the particles for deposition on an

article, and

‘(b) if the answer is inthe affirmatiyv e, * what ‘‘*strength”’

in terms* of units of electrical measurement is considered

‘sufficient’? in such system, and’

. (a) Yes, in the sense that the atomizing head ,Sup-

ports the liquid from which the particles are atomized.

(b) An average potential gradiént on the order

of 8,000 volts’ per inch eee: the atomizer and the

work.

(ec! From about 5,000 volts to about 10,000 volts

per inch average potential gradient, ~

Int. 136. Does the defendant in its No, 2 airless elec-

trostatic system (which it relies upon for commercial suc-

cess as to ifs Starkey et al patents in suit),

(a) use an atomizing applicator head “to form liquid

into a body having a plurality of closely spaced aligned

exposed termini of relatively small area, and

. (b) if the answer is in the affirmative, how close in

terms of measurement do the termini have to be spaced

for satisfactory coating, and

the same, and :

(d) what is considered, in such system in terms of units

of measurement, to be a ‘‘relatively small area’’!

(a) Yes.

(b) In most cases, less than one-tenth inch apart.

(ec) An allowable range is from one- tenth to one-

hundredth of an inch.

(d) The area of a terminus having a diameter of

a few thousandths of an inch.

Int. 138. Does the defendant in its No. 2 airless elec-

trostatic system (which it relies upon for commercial suc-

cess to its Starkey et al patents in suit),

(a) provides for the moving of an article past and in

spaced relation to a zone of atomization, and |

(b) if the answer is in the a ative, at what rate in

terms of units of measurement mus the article be moved to

effect satisfactory coating, and

( c) what space must there be present between the article

being moved and the zone of atomization, and °

‘(d) if there is a range of dimensions as to either of the

foregoing (b) and (¢) what is that range? |

(a) No, but defendant’s custdmers do.

(b} Ata rate which will result in the desired coat-

ing and which depends on 1 the rate of coating material

atomization.

ee ere ree

atomizer and the work at the voltage maintained.

id) Since the ratesof article movement dofends

upon the rate of coating material atomization and since

the latter rate is controlled by theteustomer, Defendant

does, not know the extremes of article speed employ Fed

by its customers. Defendgnt knows of one speed as

low as about two and one-Half feet per minute and an-

-other of over 80 feet per minute. So far as Defendant

knows, the space maintained by it? customers between

atomizer and work varies between about five inches and

about 24 inches.» °

Int. 137. Does the defendant in its No. 2 airless electro-

static system (which it relies upon for commercial success

as to its Starkey et al. patents in suit),

(a) have means for feeding Jiquid in a-relatively narrow

‘stream to an applicator het) and means at the head for

spreading the stream to form it into a body of liquid coat-

ing material having an extent many times the maximum

cross-sectional dimension of the stream, andey,

(hb) if so, in terms of measurement, what does ‘‘many

¢imes’’ comprise, and

that range?

(a) Yes.

(b) About 25 or more. °

Int. 140%. Does the defendant in its No. 2 airless electro-

statie system (which it relies upon for commercial success

as to its Starkey et al. patents in suit),

(a) distribute disptrsed particles of liquid over an area

having each of its dimensions many times greater than the

minimum cross-sectional dimension of the stream at the

points or termini of atomization, and

(b) if the answer is in the affirmative, what is the minis

mum cross-sectional dimension of the stream, and

"44

. ¢¢) how many times Kreater than said minimum dimen-

siviz is the area over which it is distributed, and

(a) Yes.

(5) Csually about two to four thousandths of an

inch. “4

persed particles of liquid are distributed is usually sev-

eral hundret times the minimum cross-sectional dimen-

sion of the stream.

Int. 142. Does the defendant in ‘its No. 2 airless electro-.

static system (which it relies upon for commercial success

as to its Starkey et al. patents in suit),

(a) have a high enough voltage gradient to establish a

corona discharge w hen liquid is not being fed to the atom-

izing field, and

(b) when liquid is being fed to the field, does the atom-

izing of thé liquid occur generally in the area where the.

corona discharge would normally occur, and

sharp edge on an applicator head

(a) Yes.

(b) Yes,

Int. 144. In défendant’s No, 2 airless electrostatic sys-

tem (which it relies upon for commercial success as to its

Starkey et al. patents in suit),

(a) is there,in every instance completely quiescent air

between the points or termini of atomization and the

article being coated, and *

(b) if the answer is in the affirmative, i ‘is the air quiescent

throughout .the entire space peeing the ‘Atomigation

point and the article, and

the No, 2 system cause any turbulence whafsoever of air

between the head and the article?

T44. ¥

‘

(a) Yes, as ‘quiescent’? is defined in the file wrap-

per of Patent No. 2,685,536 in suit.

(b) Yes. $ *

mercial No, 2 sygtems creates some movement or flow

of air in the region between the head and the article;

but Defendant does not know,whether that flow is 4urh

ulent or whether it is smooth. )

Int. 145. Does the defendant in its No. 2 airless clectro-

stati? ssytem (which it relies upon’ for commercial success

as to its Starkey et al. patents in suit), %

(a) atomize and disperse particles toward a surface

to he coated spaced a subsfantial distance from the atomiz.-

ingy head, and

(hb) if so, what is considered to be a substantial distance

in terms of units of distance, and —

range? ~

145.

(a) Yes.

b) In systems currently in use, the minimum dis-

tance between the atomizing head and the surface to he

coated ig about five.inches, which distance is regarded

as substantial.

“(c) In systems currently in use, the distance ranges

from about five inches to about two feet.

Int. 146. Does the defendant in its No. 2 airless electro-

‘static system (which it relies upon for commercial success

as to its Starkey et al. patents in suit),

(a) employ a plurality of aligned mechanical closely

spaced points in an atomizing head for atomizing and dis-

persing liquid material, And

(b) if so, how close must the points be spaced in terms

of units or distance to be sufficiently closely spaced for

effecting coating of the articles?

146.

(a) No. |

(b) No answer required. m4 |

Int. 149. Does the defendant in its No. 2 airless electro-

static system (which it relies‘upon for commercial success

as to its Starkey et al. patents in suit),

(a) provide any separate mechanical means, such, as

tangible or physical points, for dividing the spray particles

into finely divided diserete spray pgrticles, and

(b) if not, is there any physical means in the atomizing

head itself to divide or preset-the spray particles into finely

divided diserete particles, and =~~-*_

140.00 7 tier

° (a) . No.

(b) No.

(ec) No answer required.

R. A. 25. Does the defendant admit that in connection

with its earlier application, Serial No. 556,390, from which

its process Patent No. 2,685,536 issued, no requirement for

division as between process and apparatus claims was ever

made by the Patent Office? =

25. Yes.

Int. 96. In any of the proceedings involving the earlier

application-Serial,No. 556,390, from which process patent

2,685,536 issued,

(a) did the Patent Office ever make a requirement for

division as between process an@¥Pparatus claims and

(b) if so, when?

96.

(a) No.

(b) No answer required.

47 ‘,

R.A. 26. Does the defendant admit that following

the decision of the Patent Office Board of Appeals’ dated

December 18, 1953, in connection with the earlier applica-

tion Serial Np. 556,390 from which process patent No. 2,685-

586 issued, it cancelled all of its apparatus claims from said

dpplic ‘ation on January 27, 1954, without the Patent Office

having made any requirement for division?

26. Yes.

R. A. Between January 27, 1954 and June 4, 1954

does the cis ndant admit that it did not have pending ™®

the Patent Office any claims on apparatus for airless elec-

trostatic sprayer apparatus based on the disclosures of

either of its process or apparatus patents Nos, 2,685,536

and 2,794,417 in suit?

28. Yes.

‘ ,

Int. 95. Did the defendant in connection with the prose-

“cution-ef its yleged earlier application Serial Na, 556,390,

from which its process patent No, 2,685,536 issued, (a) ever

file an appeal or a Bill of-Complaint to any of the courts

based on the Board of Appeal’s decision dated December

18, 1953, affirming the Examiner’s final rejection of ap-

paratus claims 63, 65, 87 and 95, and

(b) if so, what was the identity and date of such proceed-

ings, and

(d) when? ,

95. (a), (b), (ec), and (d). On February 15, 1954,

‘| defendant filed in the District Court for the District of

Columbia, a complaint in an action entitled ‘‘ William

A. Starkey, Edwin M. Ransburg, and Ransburg Elec-

tro-Coating Corp, vs. Sinclair Weeks, hands of

Commerce, and Robert C. Watson, Commissioner of

Patents’’, C. A. No. 625-54, seeking in effect reversal

of the decision of the Board of Appeals of December

18, 1953, affirming the final rejection of apparatus

claims 63, 65, 87 and 95 and certain methed claims in

said application Serial No. 556,390. On March 8, 1954,

following allowance by the Patent Office on February

_18, 1954, of said application as amended, such action.

was dismissed by stipulation. ‘

”

® : 4&

R. A. 29. Does the defendant admit that as between tn

uary 27, 1954, and June 4, 1954, it did not have pendi

the U nited States Patent Office any apparatus claims on an

electrostatic airless sprayer apparatus

(a) of a scope comparable to that of Claim 4 of its ap-

paratus patent 2,794,417 or,

(b) of a scope which it considered applicable to Plain-

tiff’s SK- 661 emitter apparatus?

29. : :

“(a) Yes. oe : - ;

: (b) No. ° o

Int. 97. Who in‘the defendant organization made or

approved of the decision to cancél @jl the apparatus claims

No. 40, 44, 63, 87, 94 aud 95 from the earlier appiication

Serial No. 556, 390, from which the process patent 2,685,536

issued?

97. KE. M. Ransburg, Vice President. *

Int. 127. (a) Did the defendant on or about March,

1954 enter into and file a stipulation of dismissal in Starkey

vs. Weeks, ©. A. 625-54 wherein it was. recited: ‘‘the Ex-

aminer having founé allowable the claims now presented in

- plaintiffs’ application here in‘suit, afd notice of Allowance

thereof having issued, it is hereby stipulated that the pres-

ent action be dismissed. oa 4

(b) was the application Serial No. 556,390 filed Sept. 29,

1944, from which the Starkey et al process patent No.

2,685,536 was later issued on Aug. 3, 1954, the application

that was in suit referred in the stipulation and

* (e) ‘at the time of the signing and filing of such stipula-

tion were an¥ of the apparatus claims 63, 65, 87 and 95 of

‘said application Serial No. 556,390 on which a patent was

prayed under section 4915 1 in said suit allowed i in such ap-

plication ?

“ (a) Yes.

fb) Yes. :

co) No. , . 2

St PAS

Int. 128. Is it not a fact that dt the time of the filing of

the stipulation of dismissal in ,the month of March, 1954

‘

(a) all of the apparatus claims including claims 40, 55,

63, 65, 87, 94 and 95 had: been cancelled by an amendment

dated Jan. 27, 1954, to application Serial No. 556,390 and

(p) np ‘application of defendant was then pending in the

Putent Office at the time of the dismissal embodying any

such apparatus claims? pas

128.

(a) At the time of ‘filing of said stipulation of dis-4

¢ missal in Mar, 1954, all of the apparatus claims, includ-

ing claims 40, 55, 63, 65, 87, 94 and 95, of said applica-

| tion Serial No. 556,390 had been cancelled by an amend-

) ¢

inent dated Jan. 27, 1954, expressly without prejudice

to applicant’s right to file a divisional or continuation

i ag directed to the apparatus features of their

5 invention. -

(b) Yes,

Int. 123. (4) Who in the defendant’s company or em-

. ploy, divulged around Jyly or August, 1956, to its counsel

, issued) the subject of plaintiff’s electrostatic sprayer ap-.

“ paratus which had been disclosed in plaintiff’ s letter of

July 5,956, to’ defendant referred to in the complaint

herein

(b) on what date,

(d) what was the identity of any letters or record made

bearing in any way on such disclosure? | -

123. Defendant received .no letter from plaintiff

dated July 5, 1956 disclosing the nature of plaintiff’s

sprayer, but did receive the letter dated July 25, 1956

referred to in the’ complaint herein, enclosing a draw-.

ing of the sprayer designated SK 661, and answers as

follows with respect to said letter and sprayer:

(a) ' Defendant does not know who communicated

to its counsel the subject matter of said satin

r t

(b) Shortly after the receipt of said letter, on or

about July 26, 1956.

(d)° Defendant knows of no letters or records eee

ing on said disclosure.

Int. 129. Is it not a fact that following the Court’s dis-

misgal of Starkey vs. Weeks, C. A. 265-54, brought under

ction 4915 R. S. for the grant of a patent, the defendant

requested on or about Feb. 15, 1954 the impounding ‘of the

records of such suit? &

129. Yes.

.Minrfesota Mining and Manufactur-

PLAINTIFF'S EXHIBIT IIIII. ;

Judgment in 92 F. Supp. 947 case.

In tue Unitrep States Distrricr Courr

For the District of Massachusetts. f

United States of America, ;

Plaintiff,

vs.

ing Company, Behr - Manning Sua Action

Corporation, The Carborundum No. 8119.

Compahy, Armour and Com-

pany, Durex Abrasives Corpora-

tion and The Durex Corporation,

/ : Defendants. 4

FINAL JUDGMENT AS TO — ONE.

The plaintiff, United States of América, having filed

its amended complaint herein on July 5, 1949; the defend-

ants having | appeared and filed their sinaieie answers

to Count One of the amended complaint denying any vio-

lation of law; Count Two of the amended complaint hav-

ing been tried and final judgment having been entered

- thereon on September 13, 1950; and the plaintiff and said

defendants, by their respective attorneys herein, having

severally consented to the entry of this Fmal Judgment.

as to Count One without trial or adjudication of any is-

sue of fact*or law herein, and without admission by any

party in respect of any such issue,

Now, Therefore, before any testimony or evidence has

been taken herein, and without trial or adjudication of any —

issue of fact or law herein, and upon consent as afore-

said of all of the parties hereto,

a : |

‘ 5

. »

52 on

It Is Hereby Ordered, Adjudged as Decreed, as oll

Count One of the amended coniplaint as follows: -

* This Court.has jurisdiction of the subject matter hereof ’

and of all parties hereto. Count One ‘of the amended

complaint states a cause of action against the defertd-

ants under Sections 1 and 2 of the Act of Congress of

July 2, 1890, entitled ‘‘An Act to Protect Trade and Com-

merce against Unlawful Restraints and Monopolies,”’ as

amended.

| II.

For purposes of this judgment,.

A. ‘*Minnesota’’ means the defendant Minnesota

Mining’ and Manufacturing Company, a corpora- |

tion organized and existing under the laws of the

State of Delaware;

B. ‘‘Behr-Manning’’ means the delendant Behr-Man-

ning Corporation, a corporation organized and

existing under the laws of the State ‘of. Massa-

chusetts ;

C. ‘‘Carborundum’’ means the defendant The Car-

borundum Company, a corporation organized and

existing under the laws of the State ‘of Dela:

ware;

D. ‘Armour’? means the defendant Armour and

Company, a corporation organized and existing

under the laws of the State of Illinois; * ,

E. . ‘‘Defendants’’ means Minnesota, Belir-Manning,

Carborundum and Armour;

F. ‘‘Coated Abrasive Products’? means any non-rigid

0 abrasive or polishing article which comprises a

flexible sheet 6r sheetlike backing to one or both

7 .

surfa&es of ‘which there is attached by an adhe-

sive a coating of one or more layers of abrasive or

polishing «grain, including rigid or non-rigid

abrading er polishing articles made’ therefrom ‘to

be used for abrading or polishing ptrposes;

“4G: ‘Defined Patents’? means United States letters

patent, patent applications and rights under let-

ters patent, as follows: a

(1) all letters patent, rights under letters patent,

and applications for letters patent, now owned

or controlled by any ‘of the defendants, ‘and

sult from said applications, "!

(2) all letters ,patent, “rights under bottons int

ent, and applications for letters patent, is-

‘sued to, acquired, or filed by, any of the de-

fendants during’ the five years following the

date of the entry of this judgment,: and all

letters’ patent which may issue on or ° result

from said applications, ae °°

(3) all divisions, continuances, reissues, or ex-

tensions of the. patents and applications de-

scribed above i in clauses (1) and (2),

relating’ to, Coated - Abrasive. Products and any. method,

material, equipment or process. involved in ‘the produc-

tion or manufacture of Coated Abrasive Products. )

III.

The provisions of this judgment applicable to any de- °

fendant shall apply to such defendant, its successors, .sub-

sidiaries, assigns, officers, directors, agents, employees

and all other persons acting or claiming: to act under,

through or for such defendant.

4 a ‘

‘ ’

all letters patent which may issue on or re-

‘

i»

IV.

Each of the patent license and cross license agreements

relating in whole or in part to Coated Abrasive Products

or. any method, material, equipment or process involved

in the production or.manufacture of Coated Abrasive Prod-

ucts, to which any of the defendants is presently a party

as: licensor, including, ‘but without limitation, the follow-

ing agreements, is hereby terminated and canceled in its

entirety; and each of the defendants is hereby enjoined

and restrained from the further performance or enforce-

‘ment of any of said agreements, or from entering into,

adopting, adhering to, or furthering any agreement, ar-

~ rangement, or course of conduct for the purpose or with

the effect of maintaining, reviving or reinstating any of

said agreements : 5 ,

A. the Patent License Agreements Relating to Wa-

terproof Sandpaper, dated as of June 1, 1949, ~

ga between Minnesota, as licensor, and Armonr, Behr-

Manning, and Carborundum, as licensees, respec-

tively ;

B. The Patent License Agreements relating to Elec-

trocoated Sandpaper between Behr-MA&nning, as

licensor, and

(1) Minnesota, as licensee, dated September 19.

1932,

(2) Armour, as licensee, dated October 13, 1932,

4 and ies

? (3) Carorundagepainse, dated .January 11,

each as amended by letter dated May 19, 1948;

C. the licenses granted by the Spraying Agreement

dated December 6, 1935 between Armour, Behr-

Manning, Carborundum and: Minnesota;

The licenses granted’ by the Mechanical Orienting

Agreement dated March 6, 1936 between Armour,

-Behr-Manning, Carborundum and Minnesota ;

the Cross License Agreements dated as of March

17, 1943, as modified, as of October 1, 1945, by and

between’ Minnesota.and Armour, Minnesota and |

“Behr-Manning and Minnesota .and Carborundum,

Armvur and Behr-Manning, Armour and Car-

borundum, and Behr-Manning and Carborundum,

_ respectively; = «, ie

. the license agreements entered into by the de-.

fendants pursuant fo said Cross License Agree-

ments, as follows:

(1) the Adbuibve. Treatment License Agreements

_ between Behr-Manning,. as licensor, and

(a) Armour and Minnesota, as licensees, re-

respectively; dated January 1, 1944,

(b) Carborundum, as licensee, dated May 1],

1945,.

- dated September 12, 1946;

(2) the license agreements -under United States

Letters Patent No. 2,358,724, dated as of Jan-

— uary 1, 1945, between Behr-Manning, as licen-

sor, and Armour, Carborundunggand Mifne-

sota, as licensees, respectively ;

(3) the license agreements under United States.

Letters Patent No. 2,286,208, between Car-

borundum, as licensor, and

‘ (a) Minnesota, as licensee, — August 1,

1949,

(4)

-(b) Armour, as licensee, dated February le

1950, and’: o *

- 1, 1949,

the license agreements under. United States

Letters Patent No. 2,430,099 between Carbo-

fundum, as licensor, and

(5)

(6)

(a) Minnesota, as licensee, dated November

‘ 1, 1948,

(b) Armour, as licensee, dated March 23,

1950, :

@ vember 1, 1948; and

(d) | Wid-West Abrasive Company, as licen-

see, dated March 24, 1950;

the license agreements under United States

Letters Patent No. 2,391,731 between Vfinne-

sota, as licensor, and

(a) Carborundum, as oe dated August

a 1946, and cd

(b) Behr-Manning, as in dated Sep-

tember 1, 1948, and ee

the license agreements under Unjted States

Letters Patent Nos. 2,184,896, 2,302,711 and

2,333,035, dated as of October 1, 1945, be-

tween Behr-Manning, as licensor, and Ar-

mour and Carborundum, as licensees, respec-

tively.

57 ms

V. e ’ “

Each defendant is hereby ordered and directed:

In so far as it now has or may acquire the power

or authority to do so, to issue to any applicant

(including any other defendant) making written

request therefor a non-exclusive*and unrestricted

license or sublicense to make, use and vend Ceated

Abrasive Products under Any, some or all of the..

Defined Patents, ‘including those presently owned

or controlled by defendants as listed im Schedule

‘A’? attached hereto, without any condition or

restri¢tion whatsoever, ekcept that:

(1) a reasonable and non-discriminatory royalty

may be charged and collected ;4

(2) reasonable ‘provision may be made for pe-

riodie inspection of the- books and records

of the licensee by an independent auditor :

who may report to the defendant licensor

only the amount of the royalty due and pay-

able and ho other information ;

(3) the license may be non-transferable ;

(4) reasonable provision may be made for can-

cellation of the license upon failure of the

licensee to pay the royalties or to permit

the inspection of its books and records as

, provided i in Paragraph A ‘of this Section V;

(5) the license must provide that the licensee may

cance! the license at any time by giving thirty

(30) days’ notice in writing to the licensof:

Within thirty (30) days after the.date of appli-

cation, issuance or acquisition of any of the De-#

fined deesae to advise this Court and the At-

dorney General, in writing, of the number and

date of such application, issuance - acquisition.

Upon any application for, a license in accordance

with the provisions of Paragraph A of this See-

tion V, the defendant to whom such application

is made shall advise the applicant of the royalty

it degms reasonable for the Defined Patent or

Patents to which the application pertains. If

%he defendant and the applicant are unable to

agree upon what constitutes a reasonable royalty,

the defendant may apply to this Court for a de-

termination of a reasonable royalty, giving notice |

thereof to the applicant and the Attorney Gen-

eral, and shall make such application forthwith

upon request of the applicant. In any such pro-

ceeding the burden of proof shall be upon the

defendant to whom application is made to es-

tablish, by a “fair preponderanee of evidence, |

a reasonable royalty, and the Attorney General

shall have the right to be heard thereon. Pending

the completion of any such court proceeding, the

applicant shall have the right to make, use and

vend undéY the Defined Patent or Patents to

which its application pertains, Without the pay-

ment of royalty or other compensation, but sub-

ject to the following provisions: Such defend-

ant may, with notice to the Attorney General,

apply to the Court to fix an interim royalty rate

pending final determination of what, constitutes

a reasonable royalty. If the Court fixes such

interim royalty rate, a license shall then issue

providing for the periodic payment of royalties

at such interim rate from the date of the mak-

‘ing of such application by the applicant; and

whether or not such interim rate is fixed, any

— a a

final order may provide for such readjustments

including retroactive or diminished royalties as

the Court may order after final determination

of a reasonable and yon-diseriminatory royalty.

Each license granted pursuant to this Section V

shall provide that the licensee may at any time,

without revoking or surrendering its license, dis-

pute the validity, scope or enforceability of any

of the patents under which the license is granted,

and this judgment shall not be construed as im-

porting any validity®or value to any of such

patents,

VI.

“Kach defendant is hereby enjoined and restrained from:

—

RB.

Making any disposition of any of the Defined

Patents which deprives it of the power or au-

thority to issue licenses or sublicenses required

hy Paragraph A of Section V unless it sells, trans-

fers or assigns such Defined Patents and requires,

as a condition of such sale, transfer or assign-

ment that the purchaser, transferee, or assignee

thereof shall observe the provisions of Seetion

V of this judgment with respect to the Defined

Patents so acquired and the purchaser, transferee

or assignee shall file with this Court, prior to the

consummation of said transaction, ‘an undertak-

to be bound by the provisions of Section V

x jdgment with respect to the Defined Pat-

ents 80 acquired.

Acquiring any license, sublicense, grant of im-

munity or similar right under any Defined Patent

to maké, use and vend Coated Abrasive Products,

unless such license, sublicense#grant of, immunity

or similar right is nog-exclusive and contains a

. provision that throughout its life the licensor

\ will make available an equivalent license, subli-

“<= ecense, grant of immunity or similar right to any

third person requesting the same, on teris and

conditions at least as favorable as those accorded

to said defendant.

VII.

Each defendant is hereby ordered -and directed, on writ-

ten request, to furnish to any licensee at the time of grant-

ing a license under Paragraph A of Section V. of , this

judgment, upon payment of a purely nominal charge

therefor, a written manual or manuals describing all the

methods, processes, materials and equipment then cur-

rently used by it in commercial production or manufac-

ture under the Defined Patents under which such appli-

cant is licensed. Any such manual or manuals so fur-

nished to a licensee shall be made available to all prior ~

licensees under the same Defined Patents, excepting the

other defendants herein. In,the event any such licensee

shall find the information set forth in any such manual

inadequate to enable successful utilization by that licensee

of any of the methods, processes, materials or equipment

described therein, and such licensee shall so inform in writ-

ing the defendant concerned, then such defendant is or-

dered and directed to furnish promptly, at the actual cost

thereof to the defendant, such additional written informa-

tion or fechnical assistance as shall be rdasonably neces-

sary to the successful utilization thereof. Any Such ad-

ditional written information shall be made available to all

other licensees under the same Defined Patents, excepting ©

the other defendants herein.

o RES

VIII.

Subject to the provisions of Section VII of this judg-

ment, each defendant is hereby enjoined and restrained

from furnishing to any other defendant technical informa- '

tion relating to the production or manufacture of Coated

Abrasive Products or methods, equipment, materials and

pgocesses to be used in the manufacture thereof, unless

it furnishes such technical information to. any other man-

ufacturer of Coated Abrasive Products upon reasonable,

and non- discriminatory terme and conditions. e

IX.

Each defendant is hereby enjoined and restrained from

entering into, adhering to, maintaining or furthering any

combination, conspiracy, contract, agreement, understand-

ing, plan or program, directly or indirectly, with any other

manufacturer of Coated Abrasive Products:

A. To fix, maintain, stabilize, determine or adhere to

prices, discounts, customer classifications ér other

terms or conditions for the sale of Coated Abra-

sive Products; o

B. To limit, restrict, prevent or restrain any manu-

facturer of Coated Abrasive Products from mak-

‘ing or selling any kinds, types, sizes, styles, or

grades of Coated Abrasive Products, or from man-

ufacturing or producing any Coated Abrasive

Products’ according to any ‘standards or specifi-

cations.

Xx. ,

Nothing euntained herein shall be deemed to adjudicate,

determine, or affect the.legality or illegality of any agree-

ment involving relationships solely between:

A. A defendant and its subsidiaries;

B. A defendant or its subsidiaries and its parent;

C. Subsidiaries of any defeniant and their subsidi-

arjes.

XI.

For the purpose of securing compliance with his judg-

ment and for no'other purpose, duly authorized representa-

tives of the Department of Justice shall, upon written re-

quest of the Attorney General, or an Assistant Attorney

General, and on reasonable notice to any defendant, made

_to its principal office, be permitted subject to any legally

recognized privilege, (1) access during the office hours of

said defendant to all books, ledgers, accounts, correspond-

ence, memoranda, and other records and ducuments in the

possession: or under the control of said defendant relat-

ing to any matters contained in this judgment, and (2)

subject to the reasonable convenience of said defendant

and without restraint or interference from it to interview

officers or employees of said defendant, who may have

counsel present, regarding arly such matters, and (3) upon

request the defendant shall submit such reports in writ-

ing to.the Department of Justice with respect to matters

contained in this judgment as may from time to time be

necessary to the, enforcement 6f this judgment... No in-

formation obtained by the means provided in this Section

XT shall be divulged by any representative of the De-

partment of Justice to any person other than a duly au-

‘thorized representative of such Department, except in the

_ -- oT

course of legal proceedings to which the United. States

is a party for the purpose of securing compliance with

.this judgment or as otherwise required by law.

ce ee XTi.

Jurisdiction is retained for the purpose of enabling any

of the parties to this judgment to apply to this Court at

any time for such further orders and directions as may be

necessary or appropriate for the construction or carry-

ing out of this judgment or for the modification or ter-

mination of any of the provisions thereof, and for the pur-

pose of the enforcement of compliance therewith and the

punishment of violations thereof.

Dated: Boston, Mass.

< November 6, 1950.

Myzanski,

United States District Judge.

. 64

Schedule ‘‘A’’. °

Defined Patents Owned or Controlled by the Defendants.

2,279,361

Patent No. Dated |

Armour and Company Paténts:

1,991,645 Feb. 19,1935

1,994,263 Mar. 12,1935 ,°

2,050,212 Aug. 4, 1936

+ 9,347,284 ‘Apr. 25, 1944

Béhr-Manning Corporation Patents;

1,987,467 Jan. 8, 1935

2,027,087- Jan. 7,1936

Reissue 20,660) Jan. 7, 1936

Original 2,027,307) - Sa

2,027,308 : Jan. 7, 1936

2,027,309 Jan. 7, 1936

* 2,082,182 - June 1, 1937

Reissue 21,852 -) July -12, 1938

Original 2,123,581) :

2.154.055 July 19, 1938

2,130,753 ‘Sept, 20, 1938

__—§2,136,150——— Noy. 8, 1938

2,173,129 Sept. 19, 1939

2,173,130 Sept. 19, 1939

2,173,798 » Sept. 19, 1939

2,175,073 Oct. 3,1939

2,184,896 Dec. *26, 1939

2,197,741 Apr. 16, 1940

2,198,766 _ Apr. 30, 1940

2,199,752 May 7, 1940

» 2,200,715 °°. ,° July 30,4940

, 2,209,716 July 30, 19

2.917,247 Oct. 8, 1940

‘ 2,217,525 Oct. 8, 1940

2,939,828 Apr. 29, 1941

2,245,301 June 10, 1941

Apr. 14, 1942

_lavepr/s

Woodward

‘Rizor

Colt

Crupi

Buckner

Schacht

Anderson 5

Courtney

Baker

Oglesby

Amstuz

‘Oglesby

Boucher ~

- Gallagher

Oglesby ,

Crupi |

Crupi

- (Walker

_ (Burns

'* "Oglesby

Oglesby

Schacht

Amstuz

Patent No.

. Dated

Inventor/s

2,287,837 » June 30, 1942

_ 2,288,624 July 7,1942 °

2,288,625 July 7,1942 .

"2,292,991 Aug. 11, 1942

2,294,064 Aug. 25, 1942-

2,302,711 July 24, 1942

“i

2,305,157 Dee. 15, 1942

2,307,232 Jan. 5, 1943

2,318,570 May 4,1943

2,318,571 May 4, 1943

2,322,156 June 15,1943

2,328,577 Sept: 7, 1943

2,333,034. Oct. 26, 1943

2,333,035 Oct. 26, 1943

2,339,208. Jan. 11, 1944

- 2,358,724 Sept. 19, 1944

2,370,636 , Mar. 6, 1945

2,375,813 May 16, 1945

2,375,814 May 15, 1945

2,316,342 May 22,1945

2,376,343 May 22, 1945

2,403,018 , daly 2, 1946

2,456,985 Dee. 21, 1948

2,463,241 Mar. 1, 1949

2,463,242 - Mar. 1, 1949

2,485,765 Oct. 25, 1949

Smyser

Holmsten

Crompton

Amstuz

4 Oglesby

(Strain

Ham

Oglesby

Carlfon

Carltom

Oglesby

Nglesby ,

(Oglesby

(Reilly

(Gilbert . «

Oglesby

fa der Py]

“Manchester

Carlton —

Oglesby

Carlton

Oglesby

Carlton

Oglesby

Behr-Manning Corporation Patent Applications :

733,614

761,750

Mar. 10, 1947

July 18, 1947

The Carborundum Company Patents:

1,941,962

1,944,898

1,988,065

Jan. 2, 1934

Jan. 30, 1934

Jan. 15, 1935

Waterfield

(Webber

(Timmer

Tone

McKee

Wooddell

Inventor/s

Patent No. Dated

ia anced atchahae shen re Meee eS nies anche deel

- 1,989,742 ~Feb. 5, 1935 Davis

1,994,283 "Mar, 12, 1935 Martin .

2,015,658 Yet. 1,°1935 Bezzenberger

~ 2,033,991 Mar. 17, 1936 (Melton

* 2,035,521

2,049,535

pad

2,050,992"

2,053,360:

2,053,361

2,059,583

2,071,549

Reissue 21,552

/ > Magy31, 1936

Aug.

4, 1936

Aug. 11, 1936

Original.2,078,831 ) °

2,082,916

2,097,806

2,108,645

2,111,006

2,111,272

2,115,904

2,124,666

2,128,905 °

° 28,906

2,428,907

2,128,966

2,129,661

2,129,954

Sept. 8, 1936.

Sept. 8» 1936

Nov. °3, 1936

Feb. 23, 1937

) Apr. 27, 1937

June °8, 1937

Nov. 2, 1937

Feb. 15, 1938

Mar. 15, 1938

May

July

Sept.*

Sept.

| Sept.

Sept.

3, 1938

26, 1938

6, 1938

13, 1938

- (Benner

(Benner

(Melton

(Kirchner

(Benner

(Kirchner

( Melton

Aust

(Benner

(Melton

(Benner

(Melton

(Jackson

(Kirchner

Mahlman

(Benner |

(Melton

Stratford

Weidrich

Bryant

Robie

Paulson

Bryant— ;

(Benner

(Melton

(Benner

(Melton

(Benner .

(Melton

* (Benner |

(Melton

Robie

Ball

(Martin

(Upper

(Aust

Patent No.

2,130,194

2 138,882

2,141,658

2,152,392

2,179,487

2,184,348

2,187,624

2,187,743

2,191,827

2,194,253 °

2,194,472

2,201,194

2,207,195

2,201,196

2,205,276

2,209,059

2,209,074

2,215,210

2,219,853

2;293,392

_ 2,224,009

2,225,877

2,225,937

Dated

“Sept. 13, 1938

Dee. 6, 1938

Dee. 27, 1938

Mar. 28, 1939

Nov. 14, 1939

Dee. 26, 1989

Jan. 16,1940

Jan. 23, 19.40

Feb. 27, 1940

Mar. 19, 1940

Mar. 26, 1940

May 21, 1940

June 18, 1940

July 23,1940

July 23, 1940

Sept. 17, 1940

Oct. 29, 1940

Dee. 3, 1940

Dee. 24, 1940

Dec. 24, 1940

inventor ‘s

Robie

‘(Melton

(Benner

(Kirehner

Tone |

(Benner

(Robie .

(Kirchner

¥ Melton

(Benner

(Melton

(Benner

(Kirehner

(Kirchner

(Wooddell

(Benner ~

(Melton

(Benner

(Melton

(Kirchner

Jackson

(Melton

(Benner

(Kirehner

(Melton

(Benner

(Kirchner

Williamson

Robie

Kirehner

Dahlstrom

Tone

Smith

Aust

(Melton

(Kirenner

Williamson

$ .

Patent No. —

2,227,200”

2,229,490

2,233,175

2,250,119

2,252,587

2,254,016

2,254,531

2,274,726

2,276,328

2,277,520

2,280,852

1j21286,208"

2,288,649

2,298,318

2,309,305

2,317,650

2,320,139

2,321,422

2,324,426

2,324,427

2,327,218

2,337,445

2,339,500

Dated

- Inventor/s

Dee. 31, 1940

Jan. 21, 1941

Feb. 25, 1941

July 22, 1941

Aug. 12, 1941

Aug. 26, 1941

Sept. 2, 1941

Sept. 9. 1941-

Mar. 3, 1942

Mar 17, 1942

Mar. 24, 1942

Apr. 28, 1942

June: 16, 1942

July 7, 1942

Oct. 13, 1942

Jan. 26, 1943

Apr. 27, 1943

' May 25, 1943

June 8, 1943

July 13, 1943

Aug. 17, 1943

Dec. 21, 1943

Jan. 18, 1944

ie. Robie

(Benner

(Melton

(Kirchner |

(Melton

(Benner

Williamson

(Tene

(Martin

¢Melton

(Benner

(Kirchner

‘(Melton

(Benner

(Melton

(Benner

(Kirchner ~

Melton

- (Melton .

(Benner

(Kirchner

(Martin

(Foss

Robie’

Kirchner

Robie

Stratford .

(Dahlstrom

_ (Horne

Stratford

Kirchner

Robie

Buell

Martin

ee Se

» Dated

Oct. 19, 1944

Patent No. Inventor/s

2,349,365 May 23, 1944 (Martin

(Anst

2,350,861 June 6, 1944 (Argy

ae : (Foss

2,351,716 * June 20, 1944 Smith

2,366,926 —~ Jan. 951945 Melton

2,378,025 °. June 12, 1945 (Melton

; (Thompson

2,402,183 Jie 18, 1946 (Rowe

= (Goepfert

2,440,506 Nov. 5, 1946_ (Kirchner

; (Bali 7

2,412,599 Dee. 17, 1946 Buell

2,430,099 - Nov. 4, 1947 Bradley

2,431,035 - Nov. 18, 1947 (Goepfert

; (Buell

2,431,258. Nov. 18, 1947 Kirchner

2,445,807 July 27, 1948 (Summers

\ (Corse

2,452,793 Nov. 2, 1948 Robie:

2,457,256 Dec. 28, 1948 (Melton

¢Benner

(Kirchner

2,468,056 ~ Apr. 26, 349 (Goepfert

: ; : (Robie

2,490,23t Dec. 6, 1949 ‘(Robie

(Ball

2,497,469 Feb. .4, 1950 Robie

~The Carborundum Company Patent Applications:

142,524 Feb. 4, 1950 (Foss

‘: 3 (Buell

186,052 Sept. 21, 1950 ° (Goepfert

(Canfield

345,596 July 15, 1940 (Tone

(Martin

469,232 Dec. 16,1942 ° ‘Robie

559,429 Robie

‘

. Patent No,

+610,4794

758,282

0 sy

¢ tp

Dated _» Inventor/s

eeiidg! 1945 (Melton

(Berner

: - (Kirchner

= 1, 1947 oe (Robie

(Mahiman »

MinneXota Mining and Manufacturing Company Patents:

2,018, 925

2,025,249

2,030,743

2,169,277

2,176,942 |

. 2,186,001

2,188,341

2,197,629

2,202:765

2,219,263

2,219,278

2,220,140

2,226,553

2,230,934"

9936, 597

2,248, 064

2,248,853

2,269,415

9,269,416

2,281,058

2,287,060

2,307,461

2,310,935

Sept. 10, 1935 ’ Okie

Dee. 24, 1935 Shuey

Feb. 1, 1936 _ Carlton o

Aug. 15, 1939 ‘ Okie

' Oct. 24, 1939 Redman

Jan. 9, 1940 Bartling

Jan. 30,1940 (Elbel .

(Seebach

Apr. 16,1940 Bartling

* May “28,1940 Guth

Oct. 22, 1940 :

Oct. 22, 1940 . Okie.

Nov. 5, 1940 . Bartling

Dee. P1941 Cross

Feb. 4, 1941 (Carlton -

(Oakes dng

Apr. 1, 1941 ° . Hatth .

July 8, 1941 (Carlton

; (Miller

July 8,-1941 (Carlton.

‘(Miftler -

‘Jan. 6, 1942 ¥ (Netherly

(Anderson

(Cross *‘

Jan. 6, 1942 (Netherly

’ (Anderson

; (Cross

May 5, 1942 ‘Cross

June 23, 1942 Oakes

' Jan. 5,,1943 Guth

-Feb. 16, 1943: ‘(Carlton

(Oakes

' Patent No. |

2,314,340

2,314,349

. 2,357,350

2,357,823

2,358,313

27371,605

s |

2386, 780

2391-731

2,405,191

2,414,474

Ler ae

Minnesota Mining and Manufacturing Company =,

Patent Applications:

433,028

514,982'

643,730

757,929

34,804

39,587

40,424

43,528

’ 9,847,662

2,357,335 -

” r

2,357,348

2,492,143

. 71

Dated

Mar, 23,1943

Mar. 23, 1943

“May 2, 1944

Sept. 5, 1944

Sept. 12, 1944

Sept. 19, 1944

Mar, 20, 1 945

Oct. 16,1945 °

Dee. 25, 1945

Aug. 6, 1946

- Jan, 21, 1947

Dec. 27, 1949

Mar. 2, 1942

Dee, .20, 1943

Jan. 26, 1946

June 28, 1947

June 23, 1948

July 19, 1948

July 23, 1948

Aug. 10, 1948

Inventor s

(Brown

(Clarke

* Guth

(Carlton

(Oakes

(Kugler

(Oakes

(Netherly

(Cross

~ (Anderson

Oakes

(Hatch

(Clarke

Brown

(Carlton ,

(Miller

Cross

(Miller

(Reidesel Pt,

Davis

March

(Gipple-

(Sindt

tal

Carlton

Nestor

(Frigstad

(Clarke

Nestor

(Cross

(Nétherly

(McNamara

(Kugler

(Frigstad

(Dahl

(Cross

(Netherly

Patent No, .: Dated Inventor/s

44,233 Aug. 13, 1948 Frigstad .

60,772 Nov. 18, 1948 | Lied] et al.

85,322 Apr. 4, 1949 Heasley

89,155 Apr. 22, 1949 Nestor

128,298 Nov. 19, 1949 (Alstad

(Frigstad

128,299 Nov. 19, 1949 (Reidesel

“ (Frigstad

131,072 Dec. 5, 1949 Reidesel

160,752 May 8, 1950 Kuzma et al.

169,756 June 22, 1950 (Cross

(Netherly

172,102 July 5, 1950 Kuzma et al. —

73 |

PERTINENT PORTIONS OF FILE HISTORY (DX. 5A AND

5B) OF STARKEY METHOD PATENT NO. 2,685,536.

Exhibit 5A.

Page 10 of Applicant’s Amendment Filed June 28, 1945.

It is submitted that the Darrah and Pugh patents can-

not be properly aggregated to build up a hypothetical

anticipation of claims 7, 8, 9, 31, and 32. The spray of

Darrah is discharged from the nozzle 4 through the open-

ing in an oppositely charged element 8. In Pugh, the spray

from gun 45 passes through an opening in a similarly

charged element 10. Obviously, the spray-surrounding

element cannot be chargec both oppositely to the spray,

as in Darrah, and similarly to the spray, as in Pugh. If

the hypothetical aggregation is to include both Darrah’s

electrode 8 and Pugh’s booth-wall 10, will the booth-wall be

_ at the same potertial as the electrode, will it be at the

same potential as the nozzle, or will its potential differ

from both? And what of the articles to be coated—will

their potential be that of the annular electrode, that of

the nozzle, or different from both? The answers to such

questions are not found in the references, and it is {Rre-

fore not apparent how the aggregation is to be effected.

In such circumstances, it is submitted that the rejection

on Pugh and Darrah is not well founded and that claims

7, 8, 9, 31, and 32 are allowable.

In connection with the rejection of claims on 1 Pugh and

Darrah, it is to be noted that applicants’ apparatus em-

ploys a single electrostatic field to perform two functions

—the production of atomization and the propulsion of th-

atomized particles to the article being coated. Appli-

- Cants are not claiming broadly any and all devices in which

liquid is electrostatically atomized and then electrostatically

propelled to and deposited upon an article to be coated.

Pages 14 and 29 of Applicant's Board of Appeals Brief

Filed January 5, 1951.

(a) increased from 80 or 100 to 200 the number of

panels coated per gallon of paint used;

(b) resulted in a coating ‘‘noticeably better than that

obtained’’ with air-atomized, electrostatically de-

posited paint; and

and without the necessity for an enclosing booth

or any exhaust system’’ such as was necessary

in the other process ‘‘to carry away the over-

spray.”’

Helmuth, Juvinall, and Simmons are, as shown by their

respective affidavits, well qualified .to determine and com-

pare the efficiencies of various painting methods. Their

' affidavits testify that procedures employing the apparatus

and method of this application are markedly more effi-

cient than prior spray-painting procedures. The affidavits

also establish that the high paint-utilization efficiencies at-

tainable with applicants’ method and apparatus permit the

elimination of paint spary booths and air-exhaust systems.

The Essential Novelty of the Invention.

The heart of applicants’ invention lies in the concept of

employing a single electrostatic field which acts as the sole

agent to atomize paint, dirperse the particles formed by

atomization, and deposit those particles on thé work. That

concept is unquestionably novel. We have here no mere

substitution of one old element or step for another, no mere

considerable distance in unvarying relationship, whereas

in Huebner the paper support 16 or 116 never moves with

the paper.

pee Wes

Claims 61, 65, 67, and 78 describe a construction in

which the lines of force of the field sweep the surface

of the article being coated, a requirement whose signifi-

cance is brought out above in connection with method

claim 76.

Patentability.

There can be no argument as to the novelty of the ap-

pealed claims. Their patentability, as the wording of the

rejection indicates, hinges upon whether their subject mat-

ter involves invention.

' The heart of applicants’ invention lies in the spray-

painting of articles of manufacture by the use of a single

electrostatic field which will both atomize a liquid coating

material, disperse the atomized particles, and then deposit

those particles on the surface which is to be coated. The

references of record can be searched in vain for any dis-

. closure or suggestion of such a coating process. The Ex-

aminer points out how prior-art structures might be modi-

fied to render them anticipatory; but in so doing fhe ‘Ex-

aminer is clearly exercising ex post facto wisdom. No

suggestion of the proposed changes can be found within _

the four corners of any reference, where it must be found ~

to negative patentability.

‘*Obviously,’? the Examiner states, ‘‘liquid coating ma-

terial could be supplied through the tube 32 in Meston’s

Fig. 5 and through the pipes 71 in Figs. 18 and 19.’ But,

bearing in mind that Meston was concerned entirely with

the deposit of

Exhibit 5B.

Affidavit of Gilbert Isgrigg filed March 20, 1953.

State or INDIANA,

Ss:

County oF BARTHOLOMEW.

Affidavit.

Gilbert Isgrigg, of Columbus, Indiana, being first duly

sworn, deposes and says as follows:

I am an engineer in the employ of Hamilton Manufac-

turing Corporation, of Columbus, Indiana, manufacturer

of the ‘‘Cosco”’ line of metal chairs, stools, step stools, and

utility tables.

The utility tables manufactured by my employer have

sheet-metal tops measuring either 16x 22 inches or 17 x 24

inches, and each table is provided beneath the top with one

2 or two shelves of corresponding size.

The tops and shelves of the tables mentioned are fin-

ished by painting them; and my duties for my employer

include the selection and supervision of the equipment and

methods used in painting the tops and shelves of utility

tables. ,

_/ For a period beginning in March, 1948, and continuing

4 through the present, the tops and shelves of Cosco utility.

tables were painted with the use’of electrostatic painting

equipment under license from Ransburg Electro-Coating

Corp. of Indianapolis, Indiana. Such equipment embodied

a conveyor for conveying the tops and shelves through a

coating zone between two fine-wire electrodes while spray

guns of conventional type employing compressed air for

paint itomization directed sprays of paint into the space

between each electrode and the articles moving past it.

~S 2

~~ ./

High voltage equipment supplied by said Ransburg Elec-

tro-Coating Corp. maintained an electrostatic field between

the electrodes and the work, and the paint sprays entered

such field at an acute angle to the path followed by the

articles. 3

On or about November, 1952, the aforesaid paintitte

equipment was replaced by new equipment ‘in which the

work is conveyed past and in spaced relation to a number

of atomizers maintained at an electrical potential of about

70,000 volts with respect to the work. Paint supplied at a

controlled rate to such atomizers is electrostatically atom-

ized therefrom in the form gf a spray and electrostatically

deposited on the work. No ¢ompressed air is used to atom-

ize the paint or to carry it to the work. The atomizers

are mounted in fixed position with respect to the path

followed by the table tops and shelves, and the operation

is substantially fully automatic. The«atomizing devices

and related equipment including the paint-supply means

and the souree of high voltage were supplied by said

Rausburg Electro-Coating Corp.

The new equipment has resulted in a substantial sav-

ing of paint, the extent of the paint-saving depending to

a degree on the color of the paint. The most commonly

used paint is red in color, and with that paint the num-

ber of tops and shelves covered per gallon of paint used

is, with the new equipment, more than twice what it was

with the electrostatic coating equipment previously used.

In addition to the paint saving represented by the in-

crease in the number of ‘tops and shelves coated per gal-

lon of paint used, the following differences exist between

painting as performed with the old e! -trostatie coating

equipment and painting as performed ith the electro-

static atomizing equipment presently ih use: ,

‘

SR.

The new process results in‘a substantially improved

distribution of paint, the distribution of paint ob-

tained .with the present equipment being substan-

tially uniform.

The present equipment is able to deposit japproxi-

‘mately twenty-five per cent more paint in a sin-

‘gle pass of, the articles through the coating zone,

the conveyor speed being the same in both in-

oh stances. ;

» The former electrostatic process ianioeeih two

touch-up men operating manually directed spray .

guns to apply paint to areas insufficiently coated

by the electrostatic coating equipment -previously -

in use. With the present equipment, no touch-up.

men are needed.

The former electrostatic method required a water-

washed spray booth and a relatively large-capacity

air moving apparatus for entrapping oversprayed

patnt-and ventilating the spray booth, whereas the

tilating system for removing solvent-vapor and

there is substantially no oversprayed paint to en-

trap. ; 3

With the former; electrostatic coating equipment,

an average of,about eighteen man-hours were de-

voted nightly, to the job of cleaning electr@les, the_

floor and walls of the booth, and the spray equip-

ment and to removal of over-spray sediment in the

water-wash tanks. With the, present equipment,

nightly cledn-up work has been reduced sixty -five

to eighty per cent. .

The present equipment, being dependent upon dlec-

- trie power alone, is less subject to interruption in

operation than was the prior equipment, which was

dependent upon electric power, compressed air, and

water: supply. '

79 5 E

g. The, old electrostatic coating equipment required

more frequent adjustment than does the present

equipment to maintain adequate coverage and qual-

ity of finish. . ,

: , GiuBert Tscrriac. —

Subscribed -and sworn to before me this 10th day of

March, 1953: |

; WALTER Mritrr,

(SEAL) . ' — Notars Public.

My commission expires May 25, 1954.

Affidavit of Donald 'C. Howarth filed ‘Mar. 20, 4953.

State of Indiana a 2

County of Marion ~

pata

Affidiivit. . hy

Donald C. Howarth, of Indianapolis, Indiana, being

first duly sworn, déposes and says as follows: » :

I am, and for,several years have been, employed by Rans-

burg Electro-Coating Corp. of Indianapolis, Indiana.

My employer owns patents-and patent applications re- ”

lating to methods and apparatus for electrostatic spray

“painting, licenses manufacturers to use such methods and

- apparatus, and provides many of its licensees with certain _

portions of the equipment employed in practicing the li-:

censed methods.

For the last several years, my duties for my employer

have involved supervision of the installation of | licensed

methods and apparatus and supervision of all billing to

licensees. ” ,

Electrostatic spray painting methods licensed by my

' employer have been of two general types. In one type.

SO “

‘hereinafter referred to as the No. 1 mé@thod, articles to he

painted are mov®d on a conveyor past a charged electrode,

or between two> spaced charged electrodes, ‘while paint

sprays formed by conventional spray vans ¢mploying com-

pressed air have been discharged into the electrostatic

field between the electrode or electrodes and the ‘articles,

such sprays being et a angle to the. direc-.

tion of article movement In the Mther process, hereinafter

referred to as the No. 2 process, articles to be coated are

conveyed past and in spaced relation to one or more atom-

izers normally maintained at an electrical potential of

about 70,000 -volts with respect to the work, while paint

supplied at a controlled rate to such atomizers is atomized

and electrostatically deposited on the work without em- -

pleyment of any compr essed air.

The aforesaid No. 1 method was: in use, and was the

subject of hundreds of licenses to manufacturers, for sev-

eal years prior to the introduction of the No. 2 method.

Although a few licénsegs to practice the No. 2 méthod’ had

heen granted prior to the third quarter of 1951, it was not

until that time that Ransburg-Electro-Coating Corp. pub- °

lished information as to that method or embarked on any in-

tensive effort to exploit it commercially. Up'tothe present

time, there are seventy-eight (78) manufacturers licensed

to employ one hundred one (101) No. 2 units, and additional

licenses to employ that method are being granted as rapidly

as the Ransburg organization can handle engineering and

supervision necessary to new installations.

Some of the companiés which now,employ the No. 2 pro-

cess under license from’my employer are: ; 2”

Aluminum Goods, Manufacturing: Company

Arvin Industries, Ine. °

K..I. DuPont de Nemours & Company

General Electric Company

Houdaille- aa Corporation

81 oe

Johns-Manville Corporation

Landers, Frary & Clark ’*.

Monroe Auto Equipment( ompany

Proctor Electrie C omparly :

Reo Motors, Ine. *

Reynolds Metals Company

Speed Queen Corporation

.... The Studebaker Corporation

~~ Taylor Wharton Iron & Steel C ompany

Thor Corporation —

_ Whirlpool Corporation °

Of.the seventy-eight (7%) companies licensed by my em-

ployer to use ‘the No. 2 process, a substantial portion of

thy are employing it to replace the No..1 process which

my employer had previously licensed tutn to use.

Licenses to ‘use the No. 2 process granted by my em-

j ro °

‘ployer require the payment of an initial fee, varying

from $5,000, to $40,000, depending upon the size and nature

of the installation and the amount of equipment they ask

my employer to supply, and Blso- require the paymentygf

subsequent monthly fees depénding in amount upon{the

quantity of paint, used. aie

As a result of my work, I believe I am familiar with all

types of spray coating processes generally used in Ameéri-

can industry. The aforesaid No. 2 process is the only

spray cpating process known to me which, in an industrial

spray painting operation, can use substantially all the

coating material sprayed.

Donato, C. Howarru.

Subscribed and sworn ‘to before me this 12th day of

March, 1953.

Iris M. McKenna, ;

. Notary Public.

‘ My Commission expires Oct. 6, 1954 |

‘Bl

Page 15 of Applicant's Board of Appeals Brief

Filed May 25, 1953.

wheels 979 of the paint was deposited on the articles.

Helmuth refers to the skilled labor and overspray-collect-

ing equipment necessary in painting refrigerator cabinets

by the conventional spray-gun technique.

Gilbert, Isgrigg has had experience in painting metal-

table tops ‘and shelves by applicants’ .method and by a

method employing electrostatic deposition of air-atomized

paint: His affidavit establishes that applicants’ method and

apparatus doubles pairtt-utilization efficiency, provides a

_ heavier and more uniform coating, removes the necessity

for ‘*touch-up’’ men, makes possible the elimination of

paint-recovery equipment, is subject to less frequent inter-

ruption of operation, reduces maintenance labor, and re-

quires less frequent adjustment. ,

The affidavit of Donald C. Howarth testifies to the wide

acceptance and commercial success of applicants’ invention

on industrial ‘production lines. At the date of the affidavit,

78 licensees including such companies as General Electric,

, Dupont, and Studebaker had paid substantial ‘initial sum

‘and were making continuing monthly payments for the

right to use 101 production units ambodying the invention.

The advantages and commercial success to which the

‘affidavits testify establish that applicants’ invention pos-

sesses real worth and constitute “compelling evidence that

what applicants have done would have been done much

earlier had it required only mechanical skill. 4

VI. Tue Prior Arr.

The principal reference relied upon by the Examiner

ix the Formhals patent No. 2,187,306, ‘which shows a pro-

cess of making a composite thread by collecting fine fibres

ona ; yt

Page 5 of Last Board of Appeals Decision of December 18, 1953

q° Resulting in Allowance of Method Claims in Suit. -

Appeal No, 372-08 '

The other'patents relied on by the Examiner, Althouse

and Gundelfinger, show that the use of belts for conveying

thread is well known in the art. These patents require no

detailed deseription.

The Examiner has taken claim 88 as‘illustrative of .the

method elaims under consideration. He contends that the

only distinguishing feature of this cl@im over Formhals

lies-in the statement that the liquid is dispersed and de-

posited while still in a liquid stateand he holds that ‘‘such

a statement adds nothinggpatentable’to the process of

Formhal&put merely states what are the results desired.”’

With reference to claims 72, 89, 91, 96, 97, and 99, the

Examiner points out that these claims omit the limitation

contained in.claim 88 to the effect that the particles ag de-

posited are liquid,

In controverting the rejection of the claims, the appel-

lants conte: that they were the first: ‘‘to spray paint

onte an article surfaces by electrostatically atomizing it

into diserete particles. electrostatically dispersing those

particles, and electrostatically depositing them while still

liquid,’’ @rereby eliminating the necessity for atomizing

air and attaining high paint-utilization effictencjes and

other advantages, testified tg in the affidavits filed in the

present case, .

We have examined these affidavits with care and we find

that they estabiish beyond question that the spray-painting

process,to which the claims are directed has ackieved

commercial success. ; «

The appellants further argue that:

‘at is improper to regard Formhals’ stream-shatter-

ing as ‘atomization’ or his loag fibres as ‘particles’;

but

oes

: Se

. r 3)

SY)

FROM DEFENDANT'S EXHIBIT 6—FILE HISTORY. OF

STARKEY AND RANSBURG APPLICATION SERIAL NO.

' 434,366 FROM WHICH STARKEY ET AL. APPARATUS .

PATENT NO. 2,794,417 ISSUED JUNE 4, 1957. —

- . ' oy ae s ’ Ses i

Amendment ( filed August 23; 1956 in which claim’ 4 in

suit was presented following which allowance was entered,

In tHe Unirep States, Parent OFFICE.

Tn reapplication of ) Apparatus for Electro-

William A. Starkey et al. [ “statically Coating Articles.

Serial No. 434,366 ie Go )

Filed June 4, 1954 | Division 25.

AMENDMENT. C”’.

Hon.aCommissioner of Patents,

Washington, D.C.

Sir:

Please enter the following amendment: .

In the specification :

Page 1, line 3, after “No? insert —2'685,536—;

same line, after ‘‘granted’’ insert —August 3, 1954—.

= _Page 6, line 16, after ‘*material,”’ add — As illustra-

. fed in the drawings, the needles are sufficiently close

C' together as to cause the coating material to bridge the

spaces therebetween.

In the claims: :

‘Cancel claims 1, 9, 12, 13,.15, 16, and 17 without preji

dice, ¢

Please insert the following new claim;

*(4.) & —+® Apparatus for electrostatically spray-

coating an article, comprising an atomizing head, means

for fooding liquidl coating material to said head, nieans

ineluding said feeding meus for distrikuting eonting

"Ch material to an extended atomizing: gone where it is

atomizedtrom a Plurality of spaced points, said points ,

being suMeiontly close fogether toypormit: the coating,

material to bridwe the spaces therebetween, a suppatt

for

supporting anaurtiole to be coated in spaced relation to

said atomizing zone, and means ineluding ao high

voTtage ‘

rouree for choating over the siirface of the article: on

avid support an electrostatic field eapablo of atomizing

the coating material into finely divided, eleetrioally

charged particles and clectrostaticnlfy, depositing par:

ticles \ .

atomived from said atomizing zone on the article while®

atill :

in lyquid state, said atomizing head and wupport hoing

80 ,

‘9

relatively disposed as to provide hetween the article

and

* the atomizing Zone’ t apacing great cnough to permit

aub-

stantial dispersioneof. the atomized particles by the

-electre-

atatié forees of the fleld.—:

a -_ —— A ———— ——— —————

REMARKS,

Applicants’-attorney desires to express, his appreciation

“for the courtesies extended to him at the recent interview

with the Examiner in charge of the application, |

At the interview, the final rejection of fhe claims on the

grounds stated in paper No, 9 were discussed at’ some

length and a new claim (here pubmitted as claim 18) was

also discussed,

I war’ pointed Out that one of the features of the sue:

vested new claim is the provision of feeding means whieh

distribute coating material to anyextended atondzing vone

from which gone it is atqnized from. a plurality of spaced

points with the points being so close together as to permit

the coating material to: bridge the spaces therebet®een,

Such, of course, is not the system of Formhals as, regard:

loss of ghe spacing of his norlos, the coafing material

heing contained within the nogzle could not bridge the

space therebetween, *

Tt was anegestod hy the Examiner that the obviously

inherent bridging of the coating material at, least ine the

apparatus ilustrated in Figures 5 and 6 be pointed out in

the specification and decordingly the specification has been

amended\o do so,

The, unalloywed qlaims remaining in the applieation are

uroposed to be cancelled with’ this amendment and it was

holioved at the interview that ai action of this nature, hy

applicants would place the ease in condition tor iste.

Therefore, withdrawal of the final réjection, entry of the

\ /present amendment, and reconsideration and allowance

of the application as now presented are respectfully re:

quested, +

e Respectfully submitted,

= ~ Scnrorper, Horanex, Brapy & Wranen,

8 | Winuiaw J, Srenuman,

Chieago, Tlinois,

August 21, 1956,

eo.

. In the

Anited States Court of Appeals

For the Seventh Circuit

Seprempen Term, 1959—Apnin Season, 1900

‘

on ns

No, 12787 ‘

Binks Manvraerenyna Company, | '

re A peal from the

Plaintif-Appelia, nited States Dis-

. . | v riet vt for the

dae é, Syputhern — District

RANSBURG Biectro-Coatina Corpo: ol TI jana, Indian

RATION, Mite, apolis Division,

Defendant-Appellee, 7

‘ July 27, 1960, na

ee Soe Kotte and Carin, Cirewt

Judges, :

Castie, Cirewit Judge, Binks Manufacturing Company,

plaintiffappellant, prosecutes this appeal trom a judg.

ment of the Distriet Court holding claims 1 to 6, 8, 10 and

11 of Starkey and Ransburg method patent No, 2,685,536

and Claim 4 of Starkey .and Raneburg divisional appa-

ratus patent No, 2,704,417 valid and. infringed by use of

tho plaintiff’s .electrostatic spraying emitter? Tho judg.

ment order enjoined plaintiff from, further infringement,

granted damages, scasonabla attorneys’ fees and. costs to

defendant, and dismissed plaintiff's cross-counterclaim al

leging ‘anti-trust law violations by defendant, Ransbueg

Kleetro-Coating ‘Corporation, defendant-appellee, is the

assignee-owner of both patents,

The action originated in the District Court as a com. '

plaint for declaratory judgment which was dismissed as

ie eo .. e

6 a

L737 4 2 roe -

‘ ° 8

moot when the defendant patentee counterclaimed, charg- °

the .issues of validity and infringement and its crugs-

counterclaim charged anti-trust law violations, unfair com-

petition and misuse of patents. Substituted’pleadings re-

tained the same issues. The cause was heard on fe plead-

ings, stipulations, admissions; answers’ to interrogatcries,

depositions, exhibits and the testimony of witnesses for

the defendant. . o .

- The parties will be referred to by their original desig-

nations as plaintiff and defendant. Defendant is the pat-

entee asserting infringement. Plaintiff is defending against

that charge and affirmatively asserting anti-trur: law vio-

lations. ; “>

The patents in suit relate to a method and apparatus.

for electrostatically coating articles with liquid coating

material, including paint. There are several methods by

which many articles of manufacture may be painted, in-

- eluding dipping, roller-coating, flow-coating and spray-

ing. Defendant (and the predecessor partnership com-

posed of its ownbrs). has déveloped two methods of electro-

static coating. A compressed-air electrostatic system is re-

ferred to as the No. 1 Process} The patents in suit relate

\o an airless electrostaiic system referred to as the No. 2

Process. During the year 1957 the total cost of all paint,

varnish and lacquer used industrially in the United States

approximated 644 million dollars. Approximately one per

cent was applied by defendant’s No. 2 Process and 0.6%

by defendant’s No. 1 Process. itex

In the No. 1 Process the paint is sprayed hy medns of

compressed-air spray guns into an electrostatic fieldwhich

is maintained between wires or electrodes and the convey-

orized articlessof manufacture so that- paint particles are

clectrostatically charged and urged toward deposition upon

the articles by the effect of the field. |

In the No. 2 Process, the airless system .to which the

patents involved relate, the electrostatic field is main-

tained directly between an atomizing device and the ar-

ticles ori the conveyor. The liquid coating or paint is fed

at a controlled rate te and distributed along the extended

ede of a stationary or a rotary atomizing head. The

strength of the electrostatic field at the edge is such that

sy /

“

. the field is : eieiilite of électrostatically atomizing fine elec-

trically vharged particles from the liquid. he field, dis-

perses these particles, in the form-of 4 spray and deposits

them’ upon the articles to be coated. Patent No. 2,685,036

is upon the method employed in sucli airless ol ctrostatic “y

coating or spray -painting and patent No. 2,794,417 is upon

the apparatus employed therein. The method and device

clectrostatically effect atomization, dispersion amd deposi-

tion in combination and under. control. » ‘

3 | 12737 >

The No. 1 Process reduced. coating material losses due

to over-spray but in many instances considerable loss per-

” sisted because the electrostatic field ,only partially -coun-

\\. teracted the tendency of the compressed-air blast to carry

the coating material elsewliere than to the articles to .be

coated or painted. The No: 2 Process eliminated the ne-

# scessity of compressed-air spray guns to atomizé, the coat-

+) ing materials. In many applications it virtually eliminated

ovér-spray, and thus paint loss or waste. It reduced labor

costs for clean-up operations and substantially reduced

-themanufacturer’s investment in spray booths, exhaust

systems and related equipment. :

The District Court made 94 detailed findings and nN

® conclusions of Jaw. The evidence incled. testimony of

defendant’s witnesses, incluéling expert testimony. Conse-

quently, insofar as the findings concern factual issues such

as the use made of prior-art, and the nature of the im-

provement made over prior art, Rule 52 (a) Federal Rules

of Civil ‘Progedure, 98 T).S.C.A. applies. The scope of our

review is thus limited to a determination of whether.

such findings are ‘‘cleayy erroneous”. Armour & Co. v.

Wilson & Co., Inc., 274 FP. 2nd 143, 156. If they find sup-

port in the evidence we are.bound thereby.

The errors relied upon by plaintiff arise out of, ie 4°

‘District Court’s findings and conclusions and its exclusian {*

of certain evidence offered by plaintiff.

Plaintiff contends the patents are invalid for lack of

invention over prior art; that the court’s finding of com-

mercial success was error because the Stationary clectro-

static atomizing: heads shown and described in the patent

‘were neyer commercialized; that the method claims in

suit fail to set forth a patentable invention; that Claim 4

of the apparatus patent is invalid as constituting double

12737 : 4.

patenting; that xppresentations of commercial success

made to the patent office were false and thé patents pro-

cured were fherefore a fraud on the public and unenforce-

able; and.that Claim 4’of the apparatus pAtent is invalid

heeause of ‘public use. .

Prior art r¢lied upon by plaintiff includes a deserip-

tion of a pfocedure referred to as ‘‘spinning sealing wax”

» in an 1$50 publication entitléd ‘Electrical Exppriments”

by ‘éne ‘Francis; an 1887 article by C: V. Boys desoribing

‘ an experiment characterized as ‘‘eleetrical spinning”; 1915

and 1917 articles by Professor John Zeleny concerning

the effect of electrical current on surface points of liquids

and the instability of electrified liquid surfaces; Litflefield

patents Nos, 1,360,654 and 1,854,475; Darrah patent No.

1,958,406; Gravley patent No. 2,359,476 and Heis patent

No. 1,475,995. ° ay” Beare! ee

The Francis and Boys articles disclose nothing more

than laboratory. experiments demonstrating that an™ elec-

trostatic field. could form threads or fibers from. molten

wax or other viscous material. Zeleny disclosed laboratory’

demonstrations of the fact that an electrostatic field is

capable of.exerting atomizing action’ from liquid syrfaces. |

These references disclose action due to electrostatic forces.

They neither disclose nor suggest the combination of steps

or elements which endows defendant’s method and appa-

ratus patents. with novelty and which adds to the source

of useful knowledgé. The Littlefield patents, at most, dis-

close electrostatic atomization, and like the Darrah refer-

enee which, in addition, shows projection of the atomized

liquid by electrostatic forge, they contain no suggestion

of a ‘spray-recewing object to attract the cavihale Nor

was defendant’s electrostatic de-tearing process described

in the eited Gravley patent suggestive of either a method

or-a-device to apply a coating. Gravley disclases the use

of electrostatic force to remove an exéess of coating. In

that process an article. coated, as by dipping, with an

exeess Of liquid coating material is partially drained and

then brought into association with an electrostatically

charged grid. The ‘‘tears” of excess liquid at the bottom

of the article are attracted to the grid‘ by clectrostatic ,

force and leave the -article. The Heis patent deals with

‘a method and apparatus wherein gaseous substances aree

passed through an electrostatic field to promote chemical

~ reaction. dt suggests nothing useful if the field of the

oe oes

~ <>

3 PIM

ee ee,

—

D# ; 12737

patent& 7 is Diaces That plaintiff's accused device

uses an atomizing head similar to the conductive disks

disclosed by Heis does not havé the effect, as plaintiff

seems to urge, of suggesting defendant’s’ novel adaptation

of electrostatic. atomization, dispersion and deposition to

the field of spray-coating or spray-painting. None, of the

.prior art teaches nor suggests the combined atomization,

dispersion and deposition of coating material through

utilization of electrostatic force. e

Defendant’s geste are combinations of old elements in

iu novel manner pro uagive of new and useful results. The

District Court was not in error in finding the defendant's

- method and apparatus patents impregnable as against the

cited references to prior art, nor in finding. they consti-

tuted a broad and basic invention. The evidence substan-

tially supports the District Court’s factual findings and it

applied the correct eriteria of -invention. Leeds d. Catlin

Company v. Victor Talking Machine Co., 213 U.S. 325, 332 ;

$55, cert. den, 340 U.S, 423; Great Atlantic d Pac ific Tea

Ca ve Supermarke’ Equipment Corp., 89° US. 147,°152.

‘

. The District Court’s finding of commercial success was

not “clearly erroneous”. It was well supported by the

evidence, Such a finding is not of- itself determinative ot

the issue of invention. It cannot lend validity to a patent

where invention is plainly lacking? Goldman vy 9 Bobins,

7 Cir., 245 F. 2d 840, 844; Great Atlantic & Pacific Tea Co.

v. Supermarket Equipment Corp., 340 U.S. 147, 153. But.

although not of itself decisive, commercial success is a

factor which shouid not be ignored. University of Illinois

Foundation yv.-Block Drug Co., 7 »Ciw., 241 I’. 2d 6, 11;

Technical Tape Carp. v. Minnesota Mining & Manufactur.

ing Co., 2 Cir., 247 a 2d 343, 348, cert.. den, 305 U.S. 952.

The specific atomizing heads shown in the specifications

of defendant’s method and apparatus patents utilize

spaced needles, spaced orifices, or spaced wire, wrappings.

The liquid emerging from the “on me of the head is thus

mechanically divided intd droplets from which the atomi-

zation. takes "place. ' The defendant’s commercial) atomiz.

ing device utilized a rotating bell or rotating disk through

which the liquid coating is fed’and at the edge of which

- atomizatian takes place at a, plurality of closely spaced

points. Howev er, neither the ‘claims of the method’ pateut

on ae

‘ Lewyt Corporation v. Health-Mor, Inc., 7 Cir., 181 I. 2d -

12737 6

nor ‘of the apparatus patent are limited to feeding the

liqnid through a plurality of orifices or points of separa-

tion obtained mechanically or structurally. And the claims

not the drawings define the invention. American Anode,

_ DS1, The variance in structure employed in the cémmercial

atomizing head is not indicative that the commercial suc-

eess enjoyed is not attributable to the method -and appa-

ratus patent. The revolving bell or rotating disk feeding

the paint to the atomizing zpne by centrif gal force is .

fully embraced within the general concepts Of the inven-

tion and constitutes A mere improvement in the mechanics

of presenting the liquid to the zone of atomization.

And what has been said in this connection on the sub-

ject of commercial .success also disposes of plaintiff's

contentions that beeause of ,the difference between the

atomization heads shown in the drawings and those uti- °

lized in defendant’s commercial system a fraud was prac-

ticed on the Patent Office in the representations made with

respect to commercial success and that the alleged fraud

is indicative of defendant’s purpose ‘‘to monopolize wrong-

fully the entire field of electrostatic coating on false afti-

davits.”

We: find no merit in plaintiff’s contention that the

method claims fail to satisfy the requirements of the,

patent statute (85 U.S.C.A. §112) because, they merely

cite a desired result.rather than the» means tor producing

the same, and because ‘of incompleteness due to failure to

specify voltiges, spacing, and liquids to which they are

applicable. The process claims define the specific steps

of. procedure and the specifications being addressed to

those skilled in the art (Jlighway Appliance Co. v. Amer-

icam Concrete Eapansion Joint Co., 7 Cir., 93 F. 2d 113)

need not recite details. The pertinent portion of -the

statute provides: :

‘“An element in a claim for a combination may be

expressed us a means or step for performing a speci-

fied function without the recital of structure, material,

or acts,in support thereof, and such claim shall be

construed to ,cover the corresponding structure, ma-

terial or acts described in the apoeaen and equiv-

alents thereof, i

ON TO enue

2th

;

7 * 42737

There is no requirement that quantitative values for

such factors as voltage, spacing and liquid characteri$tes,

be recited. The fact that experimentation or the exerérse

of judgment is igre to adapt a patented process to

- particular matoriaf or to obtain the particular results?

desired does not impair validity of the patent. Lever

Bros. Co. v. Procter & ‘Gamble Mfg. Co., 4 Cir., 1389 F. 2d

633, 638-639.

Nor does the fact that there are liquid coating materials

which cannot be used in an airless electrostatic spray-

coating system make defendant’s claims breader than its

invention. The invention is not overclaimed in being di- «

rected broadly to liquid coating materials. The liquids

aré tl materials upon which the process acts—not the

active agent. Plaintiff’s reliance on Graver Tank & Manu-

facturing Co., Ine. v. Linde Air Products Co., 336 U.S: 271

ix ill-placed. There the fluxes were claimed and inicluded

some inoperative t6, provide the desired feature. The

method patent here involved lo not purport to claim or

extend to the liquid coating materials upon which it op-

“ erates. : 9

Plointiff asserts that Claim 4 of the apparatus patent

sis i:valid as constituting double patenting. Its argument

is predicated upon the common disclosures of Claim 1 of

the »cthod patent and Claim 4 of the appdratus patent

with respect to a plurality of points ‘‘spaced to form a

substantially continuous extended atomizing zone” and

being ‘‘sufficiently. close together to permit the coating

material to bridge the spaces therebetween” and defend-

ant’s witness Miller’s testimony that ‘‘in order to form a

continuous atomizing zone bridging is necessary so that

you wi'l get continuous and uniform feeding to the various.

atomizing points or sites.” But it is entirely proper. t«:

cover the*same disclosure by two patents co-pending, one

for the method and the other for the apparatus. General

Tire & Rubber Co. v. Fisk Rubber Corp., 6 Cir., 104 F. 2d

740,,cert. den. 308 U.S. 581. Norsdo the patents in suit

involve double patenting of the subject matter of Rans-

burg patent No. 2,658,009. The latter covers a different

— the use of an additional electrode to “shape”

a spray, and in any event has a filing date laterdhan the

patents in suit.

“

iZiss 8

The amendment of Claim 4 in 1956, while the ipparatus

patent was pending, to ineude a reference to the ‘‘bridg-

ing” feature was not insertion of new matter in departure

from the original applicatiorfs in violation. of 85 U.S.C.A.

6132. The “bridging” @as inherent in what the original

applications disclosed. The Distvict Court’s findings as to

the bridging feature are supported by the record. There is

evidence that the atomizing head utilizing spaced needles

provided a series of gutters between adjacent needles fed

with liquid through openings present between the con-

tacting needles, the plate and the wall of the device; that

liquid or paint in the gutters would divide between the »

droplets formed at the tip of the needles and in so doing

form a continuous web or film bridging the space.

Muncie Gear Works, hit. v. Outboard Marine & Mia.

é'o., 815 U.S. 7o9, 768, cited by plaintiff, is not applicable.

In the instant case the original applicatien disclosed the

basis for the amended claim and there is no evidence of

public use more than one year before the invention was

lirst presented to the Patent Office.

Prior to the submission of the amendment to Claim 4 |

plaintiff had sent a drawing of its aceused device to the

defendant in connection with negotiations concerning 1i-

censing. The District Court’s finding that the afhendment

to Claim 4 was not the result of any disclosure of plain-

tiff’s device, but was an earlier and independent develop-

ment is supported by the evidence,

Plaintiff's aceused meted and apparatus employ a sta-

tionary electrostatic emitter, the atomizing head of which

has two coaxial concentric disks spaced\ about 0.007 inches

apart, having a knife-edge at cach periphery, presented

dgewise to the article. Liquid coating ‘material or paint

is supplied at a controlled rate newr the center of the

disks. It is formed into a film in the space between the

disks and flayys outward to the periphery. A spacer or

shim between the disks confines the liquid film to a por-

tion of the disk cireumfereyee. At the periphery of the

disk the field draws the edge of the film into a geries of

closely spaced cusps and atomizes finely-divided electric-

ally charged particles from the tips of the cusps. The

field disperses the atomized particles and deposits them

on the grounded article. No mechanical, means is pro-

»vided for spacing the cusps.

—_— — —-".

the same way, wre 5s. Ars

9 - 12737

While in all the specific embodiments of the method and

apparatus disclosed in the patents in suit the liquid

emerges from the interior of the atomizing head through

a plurality of orifices and is mechanically divided or

concentrated into droplets from which the atomization

takes place, the method claims are not limited to feeding

the liquid through a plurality of orifices or to its concen-

tration into droplets. Nor is Claim 4 of the apparatus

patent limited to an atomizer which has a plurality of

feed orifices or mechanical provisions for concentrating

the liquid into droplets. The District Court’s finding of

infringement is:supported by the testimony of defendant’s

expert witness concerning the features of the accused de-

vice as compared to the claims of the patents in suit.

Plaintifé bases its case for non-infringement on the ab-

sence from its emitter of any physical or mechanical

points. That argument fails because the claims in suit

are not limited to a system including physical or me-

chanical points. Plaintiff’s system employs the principle

of the patents in suit, appropriates the substance. of the

invention as defined in the glaintS, does the same work in

marhishes the same result. The

slight change in formh’does not avoid infringement. The

fact that there are structural @ifferences between plain-

tiff’s emitter and the%heads specifically. shown in the pat-

ents in suit is without significance in respect to infringe-

ment of the method patent. Infringement of a method

patent is not dependent on thé form of apparatus used.

Cochrane v. Deener, 94 &.S.»780, 787-788, It is not ma-

terial whether the means employed, the extended edge of

the atomizer head, has physical points or is an uninter-

rupted edge.

On the.patent branch of the case we conclude that the

District Court’s findings of fact are supported by the

record, including expert testimony, and are not clearly

erroneous. And, the District Court’s conclusions of law

with respect to validity and infringement are applica-

Plaintiff's cross-courtterclaim alleged violation of Sec.

tions 1 and 2 of the Sherman Act (15 U.S.C.A. $1 and §2),

and Section 3 of the Clayton Act (15 U.S.C.A, $14).

Plaintiff's contention that the District Court erre@d in the

dismissal of its cross-counterclaim is predicated on charges

12737 10

that the District “Court erroneously found and cqneluded

that the defendant had-not misused the patents in suit by

reason of having combined licenses thereunder with leases

of equipment and by not identifying the particular pat-

ents in the license agreements; that a cross-licensing

agreement between defendant and another manufacturer

was not for an unlawful yurpose and its performance not

a misuse of patents, nor in violation of the azti-trust law

provisions, nor a damage to plaintiff; that eediscontinued

license-back provision defendant’s early Hcense agree-

ments did not constitufe anti-trust law violation; and that

patent procurement activities of the defendant did not

violate the anti-trust law provisjons, -

On the record it had before it we cannot say there is

clearly error in the Distrigt Court’s finding «and conclu-

sion that plaintiff’s domination of the airless electrostatic

spraying ee market is solely by virtue of the mo-

nopoly created ‘by its patents and has not been extended

. or enlarged beyond its proper scope. The evidence sup-

ports a conclusion that plaintiff failed to establish that

defendant has engaged in any activity beyond the exercise

of rights inqjlent to its patent monopoly. .

The record establishes that defendant does not sel!

equipment outright nor has it licensed anyone to make

and sell*electrostatic spray-coating systems. Although de-

fendant offers license agreements containing a lease of *

equipment the leasing arrangement is not imposed as &

condition of licensing and licenses aré available without

equipment being leased from the defendant. The combined

license-lease arrangement was therefor not illegal nor a

Binisuse of — under the Clayton Act. Cf. Linde Air

. oN,

Products C Graver Tank d Mfg. Co., 7 Cir., 167 F. 2d

031, 539. Although the record discloses that customers

preferred the license-lease arrangement it is not ingicate!

that such preference was due to defendant’s insistence.

Nor did the evidence coucerning the difference in consid-

eration paid g@equire a finding that it was a compelling

factor. That d@fendant furnished replacement parts with-

out additional charge where the licensee leased equipment

does not, on the facts here involved, evidence a ce on

Act or other anti-trust law violation. Cf. Stearns v. Tinker

i. Rasor, 9 Cir., 292 F. 2d 589, 604. The monopoly of de-

fendant’s patents Was not extended by the agreement to

articles or supplies not covered by the patent.

;

)

—.*

££

ll ° ry i" 12737

The ‘license agreement does not Identify specific patents

but grants a right to use an identified process for coating ~

particular items in accordance with a system identified by

au drawing. No licensee pays for or receives any license

under a patent not applicable to the system, The livenses

are terminable by the customer on thirty days notice. It

does not appear that any attempt is made to extend a

patent monopoly beyond the life of the patent, nor is the

issuance of a license to uge the g etem covered by the

patents in suit conditioned on the acceptance of licenses

under unwanted patents. No prohibited 4‘packgge licens-

ing” is involved. Apex Electrical Mfg. Co. ¥. Altorfer

Bros. Co., 7 Cir, 238 F. 2d 867, 871; Automatic Radio

Mfg. Co. Inc. vy. Hazeltine Research, Inc., 339 U.S.g827. °

Defendant's cross-licensing agreement: with Behr-Man-

ning does not purport to embrace the patents in suit and

the evidence sstalliehes no direct damage to plaintiff's

business or property as a result thereof. Relief under

plaintiff's cross-counterclaim cannot be. predicated on the

~ cross-licensing agreement. Blaski v. Inland Steel Com-

pany, 7 Cir, 271 F. 2d $53, Bo4-5. It is unnecessary that

we ee specific findings. made by the District

Court as to its walidity or effects ‘o\herwise.

Between W054e when defendant began to market its No.

2 Process on a commercial seale, and 1955 the license

agreement contained license-back provisions requiring that

future inventions by the licensee’ pertaining to method

and apparatus for electrostatic atqmization of -liquids or

to coating with electrostatically atomized liquids’ be li-

censed to defendant royalty-free, on a nonexclusiveé,basis,

with the right to sub-license. ~The — provisions

were eliminated from defendant's license forms in 1955.

Defendant obtained no licenses from any ofits licensees

pursuant to the clause and the eff€et of the clause on the

incentive of licensees to make improvements is purely con-

jectural. A lieense-back, clause is not illegal per sa. Trans-

parent-Wrap Machine Corp. v. Stokes & Smith Co., 329

“US. 637. Unlike the Situatiofs condemned in United

States v. General Electric Co., 80 F. Supp. 989 and United

States v. General Electric Co., 82 F. Supp. 753 there is no

wide-spread network of such agreements between compet-

ing compamics affecting an entire industry.

127387 12

~’ Plaintiff's contention that the representations made by

defendant to the patent office in the procurement of the

patents in suit were false has been considered in connec. -

tion with*the arguments addressed to the question of com-

mercial success. It is apparent that ‘the representations

did not evidence a purpose to ‘‘monopolize-wrongfully the

entire field of electrostatic coating on false afflavits” in

——— of anti-trust law prohibitions as urged by plain-

tiff.

Plaintiff asserts error based on the District Court’s

ruling excluding from evidence, on defendant’s objection,

a certified copy of a consent judgment in an action brought

_ by the United States against the Behr-Manning Corpora-

tion and certain other

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