# Petition for Writ of Certiorari with Appendix — Binks Mfg. Co. v. Ransburg Electro-Coating Corp. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385001_0092%3A06 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Certiorari with Appendix - **Published:** January 1, 1961 - **Citation:** 366 U.S. 211 ## Text ° oe BOL UMice-Supreme Loun, U.>. OCT’ » $ 1950 4 easocemmencae | FILE COPY as | ELLE - , ‘pees — JAMES R. BRIG NING Cler =_ ee ¢ e . ‘ A . - BINKS MANUFACTURING: COMPANY, : I hy hidioner, 4 ars es. ; . ; : I@NSBURG BE EOCTROCONPING CORPORATION, Le sponded nt. ™ 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. 6 ho 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 83 ‘SO | tte : 7 > rs) Sea IN THE | | Supreme Court of the United States Octoser Term, 1960. e i sictcinnsscanic " BINKS MANUFACTURING COMPANY, Petitioner, vs. . ; 4 RANSBURG ELECTRO-COATING CORPORATION, ’ > ‘Respondent. PETITION APPENDIX in support of PETITION FOR WRIT OF CERTIORARI: 8 ‘ 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 © Only | portions pertinent to Anti-Trust questions rained in —e are printed herein: . ~ ; . 4 J ° * 4 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. , Ix 4 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 \ 7 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- ae o 8 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. 9 '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- PP 10 , 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.” é 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:’’ . Fo 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 e 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. 12 ~ _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. eR 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 .. (c) mno case prior to the filing of this suit has it ever . actually granted a license without the license being aé- companied by a lease of equipment? ° 14 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 (c) what are the dates of all Shilton that have been 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. , .° Q ones 15 - 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 . (c) vehat i is*the number or other identity given to each 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 i | 4) 16 (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 * (c) when customers leased the No. 9 sy@m in place of 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. , (c) Yes. 2 (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 - a 17 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 gv uN — 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, 19 ~ es 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 * .. & 4 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, 2! a ° a 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 e 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 (c) Yes. . "Pig ‘ (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. a> 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 (c) defendant, after the consummation of said agree- “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. (c) Admitted. @ 4 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 25 (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) L 26 (b) such agreement was executed with said guoted pro-. vision, and (c) defendant after the execution. of mill agreement did not violate the requirements of the aforesaid quoted pro- visions. 3 ) 101. (a) Admitted. (b) ‘Admitted. , (c) Defendant admits that it has not engaged, and 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 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 (c) the apparatus disclosed in said Ransburg Patent" 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 ” 35 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: (c) Defendant admits that certain features of one. 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. Ge 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 36 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 (c) mechanically spaced ioenies holes? 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. a 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. (c) 1234 Barth Avenue, Indianapolis, Indiana and 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 (c) what are the upper and lower limits’ of the voltage 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. ' (c) As indicated in the above answer to portion (a) 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, ~_. (c) by whom, ow (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 Ss 40 ‘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 (c) if there i is an allowable range of ‘‘strength’’, what 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. (c) An allowable range of strengtkis such as re- 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. Vv 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 (c) if a range of temperatures in inv alved, what is the range? 41 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. (c) Defendant has not explored ¢a§ limits of the 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? © 2 29. Yesat ’ ° ° ‘ 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’ (c) if thereisa rangeof ‘‘strength,’’ what is that range? . (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, ~ . 42 v 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 (c) if there is an allowable range of closeness, what is 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 43 t (c) Enough space to prevent sparking between thie 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 (c) if there is a range, for said “many times’’, what is that range? (a) Yes. (b) About 25 or more. ° (c) From about 25 to 300. © 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 (c) Each dimension of the area over which the dis- 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 (c) is that area generally at or in close proximity to a sharp edge on an applicator head (a) Yes. (b) Yes, (c) 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 (c) does the centrifugal action of the cibiiitetinas head in the No, 2 system cause any turbulence whafsoever of air between the head and the article? 4 T44. ¥ ‘ (a) Yes, as ‘quiescent’? is defined in the file wrap- per of Patent No. 2,685,536 in suit. (b) Yes. $ * (c) The rotation of the atomizing heads in come 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 — (c) if there is a range for such distance, what is that 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. dl 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? > 46 146. (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 =~~-*_ (c) if so, how is that done? paves 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. a 9 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 ‘, qd 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 (c) what disposition was made of same, 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, 4 Int. 123. (4) Who in the defendant’s company or em- . ploy, divulged around Jyly or August, 1956, to its counsel © | (prosecuting the application from which its patent 2,794,417 , 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, (c) who was present at the time of disclosure, and (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 4 xt 50 (b) Shortly after the receipt of said letter, on or about July 26, 1956. (c) Not now known. (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- 51 g 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: - a? * 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 . ~ 53 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» 54 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 ; a 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, of 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; o 55 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,. (c) Midwest Abrasive Company, as licensee, - 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) 56 -(b) Armour, as licensee, dated February le 1950, and’: o * (c) Behr-Manning, as licensee, dated August - 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, : (c) Behr-Manning, .as licensee, dated No- @ 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: A. 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- a C. 58 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 59 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: A. — 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 60 or similar right is nog-exclusive and contains a . provision that throughout its life the licensor \ will make available an equivalent license, subli- “ Patent No. 65 . 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 8 Smyser Holmsten Holmsten Crompton Amstuz 4 Oglesby (Strain Ham Oglesby Carlfon Carltom Oglesby Nglesby , (Oglesby (Reilly (Gilbert . « Oglesby fa der Py] “Manchester Carlton — Oglesby Oglesby Carlton Carlton Oglesby Oglesby Carlton Carlton Oglesby Behr-Manning Corporation Patent Applications : 733,614 761,750 Mar. 10, 1947 July 18, 1947 a - 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 66 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 Mar. 15, 1938 May July Sept.* Sept. Sept. | Sept. Sept. Sept. 3, 1938 26, 1938 6, 1938 6, 1938 6, 1938 6, 1938 13, 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 . y Qo 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 67 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 May 21, 1940 May 21, 1940 June 18, 1940 July 23,1940 July 23, 1940 Sept. 17, 1940 Oct. 29, 1940 Dee. 3, 1940 Dee. 3, 1940 Dee. 24, 1940 Dec. 24, 1940 inventor ‘s Robie 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 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 © 68 Dated td - 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 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 (Kirchner ‘(Melton (Benner (Melton (Benner (Kirchner ~ Melton - (Melton . (Benner (Kirchner (Martin (Foss Robie’ Kirchner Robie Stratford . (Dahlstrom _ (Horne Stratford Kirchner Robie Robie Robie Robie Buell Martin ee Se 69 » 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 ae eg . 71 Dated Mar, 23,1943 Mar. 23, 1943 “May 2, 1944 Sept. 5, 1944 Sept. 5, 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 72 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. 74 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 (c) could be performed ‘‘in the open factory building 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 75 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 a 76 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 PP 77 ~~ ./ 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: , XP * b. ‘ 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 present équipment requires only a low-capacity ven- © 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. ' a) 3 ° 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. wo ° 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 7 licensees. ” , Electrostatic spray painting methods licensed by my ' employer have been of two general types. In one type. , SO “ e ‘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 | ° SS % ‘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 83 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, . i) 84 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 oF oes : Se . r 3) SY) \ ° a 85 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; © em o~ ee-cems-ceces: ae meng ee a — _F : a ee ne *(4.) & —+® Apparatus for electrostatically spray- coating an article, comprising an atomizing head, means 86 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, * = > R7 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. 4 . 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, Ya 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- ° ing plaintiff with infringement. Plaintiff's answer raised © 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 / “ 5 . 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. 4 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. patentin [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385001_0092%3A06. Public record. Not legal advice.