Petition — Basic Inc. v. Eltra Corp.
Supreme Court brief1979
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\j eme Court, UL a
| FILED |
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} SEP 12 1979
4 F
In The L_Michar ROMAK, JR., CLERK
6 ee emend
Supreme Court of the United States
October Term, 1979
No. ...¢€9=414
BASIC INCORPORATED
Petitioner,
VS.
ELTRA CORPORATION
Respondent
PETITION FOR WRIT OF CERTIORARI
To the United States Court of Appeals
for the Sixth Circuit
Greorce B. Newitt
Allegretti, Newitt, Witcoff
& McAndrews
125 South Wacker Drive
Chicago, Illinois 60606
(312) 372-2160
ARMAND P. BoIssELLE
Maky, Renner, Otto
& Boisselle
601 Rockwell Avenue
Cleveland, Ohio 44114
(216) 621-1113
Attorneys for Petitioner
i
TABLE OF CONTENTS
Petition for Writ of Certiorari ..................................._.
Opinions Below |
IES Bsat sR
Questions Presented for Review
Constitutional Provisions and Statutes Involved ____.
Semen a se Cae CC tCti‘CC
Reasons for Granting the Writ
1. The Court Should Grant A Writ Of Certiorari
Because The Decision Of The Court Of Appeals
On The Quantum Of Evidence Required To
Overcome The Statutory Presumption Of Valid-
ity Of Patents Under 35 U.S.C. § 282 Is In
Conflict With Prior Decisions Of This Court
And The Courts of Appeals In The ee
NS SE
. The Court Should Grant A Writ Of Certiorari
Because The Court Of Appeals Erroneously
Rejected The Opinions And Conclusions Of
Those Skilled In The Refractories Art Regard-
ing The Unexpected And Improved Results
Obtained With Thermal Black, Made Its Own
Analysis Of The Technical Evidence And Sub-
stituted Its Own Conclusions For Those In
Evidence. This Specific Issue Has Not Been
eee cee cee
Conclusion _.....___. ge a ee
ss
Appendix
(A) Opinion of the United States Court of Appeals
for the Sixth Circuit _
B) Order of the United States Court of ical
for the Sixth Circuit . Ee
= Opinion of the District Court
D) Judgment gle And Order Of The
District Court _ ERS
(E.) United States Reissue Patent Re. 27,111 .
AUTHORITIES
Cases
Campbell v. a Automation Co., 513 F.2d 932
(6th Cir. 1975) .. Caiktin
Dann v. Johnston, 425 U.S, 219, 229 (1976)
Dickstein v. Seventy Corp., 522 F.2d 1294 (oth Cir.
1975) cert. denied 423 U.S. 1055 (1976) ..
Futorian Mfg. Corp. v. Dual ae & oe conn, 528
F.2d 941, 943 (1st Cir. 1976) .. : e
Gaddis v. ee Bs 506 F.2d 880, 885 (Sth C Cir.
i975) . cecaana sell cetecinds
Graham v. John Deere Co., 383 U.S. 1 1 1968) .
Haloro, Inc, v. Owens-Corning Fiber Glass com, 266
F.2d 918, 919 (D.C. Cir, 1959) 0... Eat a! SCR
Hayes Spray Gun Co. v. E. C. Brown Co., 291 F.2d 319,
322 (9th Cir, 1961) 02 .. EAS AERTS SE BS
Malsbary Mfg. Co. v. Ald, Inc., 447 F.2d 809, 811 (7th
OC eS
7
2, 10
iii
The Mercantile National Bank of Chicago et al v. Quest,
Inc., 431 F.2d 261, 264 (7th Cir. 1970)
Mumm v. Decker & Sons, 301 U.S. 168 (1937)
Radio Corporation of America v. Radio Engineering
Laboratories, Inc., 293 U.S. 1, 7 (1934)
Rains v. Niaqua, Inc., 406 F.2d 275 (2d Cir. 1969)
Reynolds Metals Co. v. Acorn ee ——
Inc., 548 F.2d 155 (6th Cir. 1977) .. ana
Rooted Hair, Inc. v. Ideal Toy sm 329 F.2d 761, 765
(2d Cir, 1964) . eYe
Sidewinder Marine, Inc. v. Starbuck Kustom Boats and
Prods. Inc., 597 F.2d 201, 205 (10th Cir, 1979)
Sperberg v. Goodyear Tire & Rubber Co., 519 F.2d 708
(6th Cir. 1975) cert. denied 423 U.S. 987 (1975)
Stamicarbon, N.V. v. Escambia Chemical Cor»., 430
F.2d 920, 924 (5th Cir. 1970) .
Tokyo Shibaura Electric Co. v. Zenith Radio ie] 548
rie Be
Universal, Inc. v. Kay Mfg. Corp., 301 F.2d 140, 148
CO I TI a aa sasdscehees Seances
Wisconsin Alumni Research Foundation v. George A.
Breon & Co., 85 F.2d 166, 167 (8th Cir. 1936)
United States Constitution
er nn
Statutes
35 U.S.C. $103 PA ae ee i eM ee
Si ae RE Oe a eae
Page
In The
Supreme Court of the United States
October Term, 1979
No.
BASIC INCORPORATED
Petitioner,
vs.
ELTRA CORPORATION
Respondent
PETITION FOR WRIT OF CERTIORARI
To the United States Court of Appeals
for the Sixth Circuit
Petitioner Basic Incorporated respectfully prays that
the Court issue its Writ of Certiorari to the United States
Court of Appeals for the Sixth Circuit to review the judg-
ment in Cause No. 77-3364 on the docket of that Court.
OPINIONS BELOW
The opinion of the Court of Appeals for the Sixth
Circuit is not reported at this time but is reproduced in
Appendix A.
The order of the United States Court of Appeals for
the Sixth Circuit issued in response to petitioner's Petition
for Rehearing also is not reported at this time but is
reproduced as Appendix B.
2
The memorandum opinion of the District Court is
reported at F.Supp. __, 193 U.S.P.Q. 426 and is re-
produced in Appendix C.
The judgment entry and order of the District Court is
not reported but is reproduced as Appendix D.
JURISDICTION
The judgment at the United States Court of Appeals
for the Sixth Circuit is dated and was entered on May 21,
1979. Rehearing was denied on June 18, 1979. The juris-
diction of this court to review the decision of the United
States Court of Appeals for the Sixth Circuit is invoked
under 28 U.S.C. § 1254(1).
QUESTIONS PRESENTED
Presented to this Court for review is the decision in
this case from the Sixth Circuit Court of Appeals which is
in conflict with previous decisions of this Court and pre-
vious decisions of a majority of the circuits on the same
issue.
(1) In a patent case, where an infringer assails the
validity of the patent as claiming obvious subject matter
under 35 U.S.C. § 103, what is the standard or quantum of
proof required to overturn the presumption of validity
afforded a patent by 35 U.S.C. § 282?
In accordance with this Court’s Rule 53, one other
question, particular to this case, is presented for review:
(2) Whether a court of appeals, in its efforts to fol-
low this Court’s mandate in Graham v. John Deere Co.,
383 U.S. 1 (1966) may substitute itself into the record as
the “one skilled in the art” and base its decision on its own
interpretation of technical evidence, contrary to the un-
contradicted interpretation and conclusion in evidence of
one skilled in the art. This question has not been decided
by this Court.
3
CONSTITUTIONAL PROVISIONS AND STATUTES
INVOLVED
The Constitutional provision with regard to patents is
set forth in Article I, Section 8:
The Congress shall have power . . . To promote the
rogress of science and useful arts by securing for
imited times to authors and inventors the exclusive
right to their respective writings and discoveries.
The United States patent statute is 35 U.S.C., and
Sections 103 and 282 thereof read as follows:
§ 103. Conditions for patentability; non-obvious sub-
ject matter.
A patent may not be obtained though the invention
is not identically disclosed or described as set forth
in Section 102 of this title, if the differences between
the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would
have been obvious at the time the invention was made
to a person having ordinary skill in the art to which
said subject matter pertains. Patentability shall not be
negatived by the manner in which the invention was
made. July 19, 1952, c. 950, § 1, 66 Stat. 798.
§ 282.
‘A patent shall be presumed valid. Each claim of a
patent (whether in independent, dependent, or multi-
ple dependent rags shall be presumed valid inde-
pendently of the validly of other claims; dependent
or multiple dependent claims shall be presumed valid
even though dependent upon an invalid claim. The
burden of establi
ishing invalidity of a patent or any
claim thereof shall rest on the party asserting it... .
July 19, 1952, c. 950 § 1, 66 Stat. 812, amended July
24, 1965, Pub.L. 89-83 § 10, 79 Stat. 261; Nov. 14,
1975, Pub.L. 94-131, § 10, 89 Stat. 692.
4
STATEMENT OF THE CASE
Petitioner is the owner of Reissue Patent Re. 27,111
(hereinafter the “Wilson patent”) for an improvement in
pitch-bonded refractory bricks commonly employed to
line steel-making furnaces. The improvement is the use
of thermal carbon black or certain mixtures of thermal
black and other carbon blacks in the bricks which results
in unique properties. The entire industry has adopted the
invention and, except for respondent, is licensed under the
Wilson patent.
Respondent instituted this declaratory judgment ac-
tion seeking a declaration of invalidity and non-infringe-
ment of the Wilson patent. Respondent contended that the
patent was invalid because it was obvious in view of the
prior art. Petitioner counterclaimed for patent infringe-
ment.
Following a three and one-half day trial, District
Judge Young held the patent valid and infringed, noting in
his Memorandum Opinion that “the evidence is voluminous
and conflicting in many details,” but the “parties have
examined and analyzed it in a great length in their printed
post trial briefs, which total one hundred fifty-three pages
in length.” Noting that it was not necessary in this opinion
to make another extended analysis of the evidence the
district court stated:
The basic rule is that a patent is presumed to be valid,
and those who attack its validity, in order to succeed,
must establish their case by clear and convincing
evidence....
The plaintiff fails to establish any one of these prop-
ositions (invalidity contentions) at all, much less by
clear convincing evidence.
The district court found that respondent had failed to
establish obviousness of the Wilson patent claims. Specifi-
5
cally, the district court stated with respect to validity of
the patent:
[Wilson’s] experimentation was discouraged by his
fellow employees as being futile and unlikely to lead
to any useful result... .
[Wilson] found that thermal blacks of certain physical
characteristics had marked effect in improving the
performance of pitch-bonded refractories . .. .
Wilson’s invention was something entirely new and
different from prior art... .
Both before and since the invention, numbers of ex-
perts, including x wma de have tried to get the
patent’s results by other means, with no success what-
soever....
[T]he bricks made by the use of Wilson’s invention
immediately established themselves as far superior to
anything also on the market.
On review, the court of appeals reversed the district
court and held the patent invalid. At least in part, the re-
versal stemmed from the court of appeals’ rejection of the
standard of proof applied by the trial court (Appendix A,
page 10):
[T]he party claiming obviousness need only do so by
a preponderance of the evidence. [citing Dickstein v.
Seventy Corp., 522 F.2d 1294 (6th Cir. 1975), cert.
denied 423 U.S. 1055 (1976) ]
Treating the issue of patent validity as a question of
law and reviewing the record de novo, the court of ap-
peals concluded that the Wilson invention was obvious. *
The crux of the appellate court’s holding was its statement
*The prior art relied upon by the appellate court is the same as
that relied upon by the examiner and the trial court. If the art
considered to be relevant by the appellate and trial courts had
been different from the art relied upon by the Patent Office
examiner, the presumption of validity would have been weakened.
6
that “the proof fell far short of establishing the existence
of” surprising and unexpected improvement in the strength
and density of refractory bricks over those using graphite
(Appendix A, page 14). In order to support this conclu-
sion, the court of appeals reviewed and interpreted certain
“technical evidence” and drew its own conclusions there-
from which were directly in conflict with the conclusions
of the experts (specifically, respondent’s expert Dr. Brezny)
expressed in documentary evidence (Appendix A, pages
18-20). The court of appeals failed to appreciate that small
differences in results, insignificant to a layman, repre-
sented a significant advance to one of ordinary skill in
the refractories art. As a result, the court of appeals made
its ultimate determination, not as one skilled in the art,
but as an unscientifically trained layman.
REASON FOR GRANTING THE WRIT
1. The Court Should Grant a Writ Of Certiorari Because
The Decision Of The Court of Appeals On The Quan-
tum Of Evidence Required To Overcome The Statu-
tory Presumption Of Validity Of Patents Under 35
U.S.C. § 282 Is In Conflict With Prior Decisions Of
This Court And The Courts Of Appeals In The Major-
ity Of The Circuits.
In 1934 this Court considered the quantum of evi-
dence required to overcome the statutory presumption of
validity afforded a United States patent under 35 U.S.C.
§ 282, and recognized that confusion existed in the various
circuits. In an effort to settle the issue, Mr. Justice Cardozo
wrote:
A patent regularly issued, . . . . is presumed to be valid
until the presumption has been overcome by convinc-
ing evidence of error .... The force of that presump-
tion has found varying expression in this and other
courts ...[A]n infringer who assails the validity of a
patent fair upon its face bears a heavy burden Jf
7
persuasion, and fails unless his evidence has more
than a dubious preponderance. Radio Corporation of
America v. Radio Engineering Laboratories, Inc., 293
U.S. 1, 7 (1934).
In Mumm v. Decker & Sons, 301 U.S. 168 (1937), Mr.
Justice Hughes reiterated:
Not only is the burden to make good this defense
(want of ey) upon the p setting it up, but
his burden is a heavy one,.... Id. at 171.
Following the statutory mandate of this Court’s de-
cisions, the courts of appeals of a majority of the circuits
have placed a heavy burden on the infringing party assert-
ing invalidity of a patent and have required the infringing
party to prove his case by clear and convincing evidence.
Rooted Hair, Inc. v. Ideal Toy Corp., 329 F.2d 761,
765 (2d Cir. 1964), (“Heavy burden of proof... . clear
and convincing evidence.”) But see Rains v. Niaqua, Inc.,
406 F.2d 275 (2d Cir. 1969); Tokyo Shibaura Electric
Co. v. Zenith Radio Corp., 548 F.2d 88, 93 (3d Cir.
1977), (“In this circuit invalidity must be demonstrated
by clear and convincing proof.” ); Gaddis v. Calgon Corp.,
506 F.2d 880, 885 (5th Cir. 1975), (“The presumption of
validity is a strong one and is not to be overthrown except
by clear and cogent evidence.”); Mercantile National
Bank of Chicago et al v. Quest, Inc., 431 F.2d 261, 264
(7th Cir. 1970), (“[T]he party alleging invalidity assumes
the burden of establishing invalidity by clear and convinc-
ing evidence.” ); Wisconsin Alumni Research Foundation
v. George A. Breon & Co., 85 F.2d 166, 167 (8th Cir.
1936), (“bears a heavy burden of persuasion, and fails
unless his evidence has more than a dubious preponder-
ance.” ); Hayes, Spray Gun Co. v. E. C. Brown Co., 291
F.2d 319, 322 (9th Cir. 1961), (“Such presumption [valid-
ity] can be overcome only by clear and convincing evi-
dence.”); Sidewinder Marine, Inc. v. Starbuck Kustom
Boats and Prods., Inc., 597 F.2d 201, 205 (10th Cir. 1979),
8
(“the burden . . . is heavy . . . must introduce ‘clear and
convincing evidence . . . and ‘every reasonable doubt
should be resolved against him’.”); Haloro, Inc. v. Owens-
Corning Fiber Glass Corp., 266 F.2d 918, 919 (D.C. Cir.
1959), (“[P]roof to sustain the burden is heavy. It must
be ‘by clear and convincing evidence’.”).
The First Circuit affirmed “a preponderance of the
credible evidence” in contrast to “the traditional teaching
that the statutory presumption of validity can in the nor-
mal case be overcome only by a stronger factual showing
than . . . a preponderance”, Futorian Mfg. Corp. v. Dual
Mfg. & Eng. Corp., 528 F.2d 941, 943 (Ist Cir. 1976). The
Fourth Circuit appears to be in accord with the First.
Universal, Inc. v. Kay Mfg. Corp., 301 F.2d 140, 148
(4th Cir. 1962).
The district court in the case at bar followed this
Court's instruction in RCA and Mumm, but the court of
appeals for the Sixth Circuit, in direct conflict with these
decisions, has adopted and continues to apply a lower
standard of proof which requires only that the party assert-
ing invalidity of a patent prove his case by a preponder-
ance of the evidence. See Reynolds Metals Co. v. Acorn
Building Components, Inc., 548 F.2d 155 (6th Cir. 1977 );
Dickstein v. Seventy Corp., 522 F.2d 1294 (6th Cir. 1975),
cert. denied 423 U.S. 1055 (1976); and Sperberg v. Good-
year Tire & Rubber Co., 519 F.2d 708 (6th Cir. 1975)
cert. denied 423 U.S. 987 (1975).
In Dickstein, as in this case, the Sixth Circuit reversed
a district court decision which required “clear and con-
vincing evidence” and concluded, contrary to other cir-
cuits, “this strict standard is necessary when unusual
factual circumstances . . . require it”, 522 F.2d at 1296,
In Campbell v. Spectrum Automation Co., 513 F.2d
932 (6th Cir. 1975), the court reviewed the cases and
recognized that the application of the “clear and convinc-
ing” standard varies among the circuits, quoting Judge
Clark who remarked that the authorities dealing with the
9
issue of the quantum of proof are “in a morass of conflict.”
Stamicarbon, N.V. v. Escambia Chemical Corp., 430 F.2d
920, 924 (5th Cir. 1970).
The quantum of proof on the issue of obviousness
required to overcome the statutory presumption of validity
afforded by 35 U.S.C. § 282 is fundamental in the patent
law. It is imperative that the standard be uniform through-
out the United States. The law of the Sixth Circuit enunci-
ated in the present case and in previous decisions is in
conflict with the decisions of this Court and the majority
of the circuit courts of appeals.
As American companies compete aggressively with
foreign companies for the consumer's dollar, patent rights
become increasingly important. It is time for this Court
to express itself and bring uniformity into the law on this
important issue.
2. The Court Should Grant A Writ Of Certiorari Because
The Court Of Appeals Erroneously Rejected The
Opinions And Conclusions Of Those Skilled In The
Refractories Art Regarding The Unexpected And Im-
proved Results Obtained With Thermal Black, Made
Its Own Analysis Of The Technical Evidence And
Substituted Its Own Conclusions For Those In Evidence.
This Specific Issue Has Not Been Decided By This
Court
After the trial, the district court concluded that the
process described in the Wilson patent was “something
entirely new and different from prior art” (Appendix C,
page 7).
The court of appeals, however, concluded that the
proofs did not establish the existence of such a difference
(Appendix A, page 12). To reach this conclusion, the
court of appeals had to dispose of technical reports by
respondent's own expert, Dr. Brezny, in which Dr. Brezny
reported the results of experiments he conducted to com-
pare the effect of thermal carbon black (Wilson’s inven-
10
tion) with other carbon additives previously disclosed.
Dr. Brezny’s unambiguous and uncontradicted conclusion
was:
All experiments to replace the presently used carbon
black (thermal carbon black) resulted in degradation
of quality.
Although Dy. Brezny’s conclusion that thermal carbon
black is superior to other carbon additives was accepted
by respondent, a corporation employing many people
skilled in this ari, the court of appeals held that Brezny’s
conclusions were not supported by the test results con-
tained in his reports (Appendix A, pages 18-20).
The court of appeals, by interjecting itself into the
record as one skilled in the art and by making its own
scientifically-uninformed evaluation of “technical evi-
dence” to arrive at a conclusion wholly adverse to the un-
contradicted conclusions of those skilled in the art, has
failed to make the factual inquiry required by this Court
in Graham v. John Deere Co., 383 U.S. 1 (1966).
In Graham, this Court called for “strict observance” of
the requirements of 35 U.S.C. §103 and established a
clear four step factual inquiry to be followed in determin-
ing obviousness:
While the ultimate question of patent validity is one
of law [citations omitted], the § 103 condition . . .
lends itself to several basic factual inquiries. Under
§ 103, the scope and content of the prior art are to
be determined; differences between the prior art
and the claims at issue are to be ascertained; and the
level of ordinary skill in the pertinent art resolved.
Against this background, the obviousness or non-
obviousness of the subject matter is determined. Id.
at page 17.
Mr. Justice Marshall, speaking for this Court in Dann v.
Johnston, 425 U.S. 219 (1976), wrote at page 229:
In making the determination of ‘obviousness’, it is
important to remember that the criterion is measured
11
not in terms of what would be obvious to a layman
but rather what would be obvious to one reasonably
skilled in [the applicable] art.
In patent cases involving complex technologies, such
as the case at bar, these basic factual inquiries often re-
quire analysis of technical evidence. Graham and Dann
dictate that the courts determine what such “technical evi-
dence” means to one of reasonable skill in the art, not what
such “technical evidence” means to a layman.
The courts generally have acknowledged the importance
of expert testimony in making the determinations concern-
ing obviousness. In Malsbary Mfg. Co. v. Ald, Inc., 447
F.2d 809, 811 (7th Cir. 1971), the court observed:
Since the ‘level of ordinary skill in a particular art
has not usually been defined in writing, the usual way
of determining such level is by referring to the sub-
jective reaction of a person thoroughly familiar with
the particular art oak if possible, one who practiced
the art at the crucial time in question.
In contrast, the court below, disregarding the man-
dates of this Court, has substituted itself for one skilled
in the art, displacing competent expert testimony, the
proper evidence for determining obviousness.
12
CONCLUSION
Petitioner recognizes that the crowded docket of this
Court does not permit review of every case where error has
been committed. However, where, as here, the case in-
volves conflicts between circuits, and conflicts involving
issues of federal law not previously decided by this Court,
the writ should be granted. This case presents substantial
questions of importance to this country’s patent system
that merit attention.
Respectfully Submitted
GeorceE B. Newitt
Allegretti, Newitt, Witcoff
& McAndrews
125 South Wacker Drive
Chicago, Illinois 60606
(312) 372-2160
ARMAND P, BolIssELLE
Maky, Renner, Otto
& Boisselle
601 Rockwell Avenue
Cleveland, Ohio 44114
(216) 621-1113
Attorneys for Petitioner
Sept. 10, 1979
A-1
Appendix A
No. 77-3364
UNITED STATES COURT OF APPEALS
FOR THE SIXTH CIRCUIT
ee ApPpEAL from United
aintiff-Appellant, States District Court
Vv. > for the Northern Dis-
Basic INCORPORATED, trict of Ohio, Western
Defendant-Appellee Division.
4
Decided and Filed May 21, 1979.
Before Weick, ENGEL and MEnaritt, Circuit Judges.
Weick, Circuit Judge. The suit in the District Court
was brought by Eltra Corporation (Eltra) against Basic
Incorporated (Basic) seeking a declaratory judgment that
Basic’s Reissue Patent No. Re. 27-111, entitled “Pitch-
Bonded Refractory Composition” was invalid and nonin-
fringed. Basic responded by counterclaiming against Eltra
for infringement of its patent by North American Refrac-
tories Company (Narco), a division of Eltra. The subject
matter of the patent in suit is a process for making pitch-
bonded refractory bricks used to line furnaces in which
steel is made by the basic oxygen process.
Following a bench trial the District Court held that
the patent in suit was valid and infringed. The Court fur-
ther held that Basic was entitled to treble damages under
35 U.S.C. § 284 because the infringement was “deliberate
and intentional.” The Court also held that Basic was en-
titled to attorney's fees under 35 U.S.C. § 285 because
Eltra’s claim of fraud on the patent office was a “smoke
A-2
screen.” A later hearing on the amount of damages and
fees to be awarded was to be held if the parties could not
agree on the amounts.
We disagree and reverse. In our opinion the patent in
suit is invalid for obviousness under 35 U.S.C. § 103. Ac-
cordingly, Basic is not entitled to either damages or attor-
ney’s fees, and it is not necessary for us to reach either the
cle‘m of fraud on the patent office or the issue of infringe-
ment. Additionally, even if the patent were valid, we can
perceive no basis in the record of this case for awarding
Basic either treble damages or attorney's fees.
I
The parties in this case are competitors in the manu-
facture and sale of pitch-bonded refractory bricks. These
bricks are used in the steel industry to line the inside of
basic oxygen furnaces. The basic oxygen process for steel-
making became generally used and accepted in this coun-
try during the 1950’s. While refractory materials had al-
ways been used in steelmaking, producers found in the
1950’s and 1960's that they needed an improved brick, one
which would last longer under the adverse conditions
present in the basic oxygen furnace.
The essential process for making pitch-bonded refrac-
tory bricks is well known. A refractory material such as
magnesia or dolomite is combined with a hydrocarbon
binder (pitch). The mixture is compressed, formed into a
brick, and baked. Basic’s claimed invention involves the
addition of small amounts of carbon of specified varieties
to the mixture’. According to the patent’s specifications,
bricks made by this process will exhibit improved qualities
as to oxidation, crushing strength and density.
1 The original patent included broad claims to the use of many
forms of carbon including carbon black and graphite. (See note 6,
infra, for an explanation of these terms.) The patent’s specifica-
tions, however, expressed a preference for carbon black.
A-3
The invention of this formula was allegedly made in
1960 by a then employee of Basic, Roger E. Wilson. U. S.
Letters Patent No. 3,236,664 were originally issued to him
on his application filed in 1962. Thereafter, officers at
Basic realized that the original patent might not be valid
in light of an earlier, similar Canadian patent No. 614,742
issued to one Lisle Hodnett.’? This patent had not been
before the patent examiner. An application for a reissue
patent® was filed in 1969. This application narrowed the
original claims, deleted some, and apparently attempted
to distinguish them from Hodnett, although the Hodnett
patent was again not cited to the patent office. In spite of
this omission, the examiner located the prior art patent on
2 The evidence showed that Basic had acquired a license under
the Hodnett patent in 1961 for the nominal price of $1 per year.
Basic’s officials did not rediscover the existence of the Hodnett
patent until sometime later, possibly as late as 1968.
8 Under 35 U.S.C. § 251 a patent may be reissued under the
following circumstances:
§ 251. Reissue of defective patents
Whenever any patent is, through error without any de-
ceptive intention, deemed wholly or partly inoperative or
invalid, by reason of a defective specification or drawing, or
by reason of the patentee claiming more or less than he had
a right to claim in the patent, the Commissioner shall, on the
surrender of such patent and the payment of the fee required
by law, reissue the patent for the invention disclosed in the
original patent, and in accordance with a new and amended
application, for the unexpired part of the term of the original
patent. No new matter shall be introduced into the applica-
tion for reissue.
In Bolkcom v. Carborundum Co., 523 F.2d 492 (6th Cir. 1975),
cert. denied, 425 U.S. 951 (1976), we emphasized that “this section
is intended only to permit the reissue of a patent for the same
invention as that disclosed in the original patent in order to correct
an inadvertant defect or omission.” Id. at 502 (emphasis in origi-
nal),
A-4
his own and cited it in rejecting the reissue application.
After amendment, the reissue patent was eventually
granted in 1970 with the specific claims stated in the
margin.*
The process described in the original and reissue
patents has enjoyed some commercial success. In 1968 the
Narco division of Eltra began producing bricks under a
licensing agreement with Basic. The largest company in
the business, Harbison Walker, also acquired a license to
use the process, as did a smaller firm. More recently, sev-
eral other refractory producers have followed suit.
* The claims in the reissue patent provide as follows (material
in roman was retained from the original patent; material in brackets
was omitted upon reissue; material in italics was added upon
reissue ) :
1. [omitted entirely]
2. In the method of forming a shaped, [green] grain re-
fractory article by admixing dead-burred basic refractory par-
ticles with sufficient pitch capable of pyrolytic decomposition
to bind said particles together and then shaping the admix-
tures by pressure; the improvement which consists of adding
approximately 0.5 to 10 percent by weight, based on the
weight of the total admixture, of finely divided carbon black
to the admixture prior to such shaping [.] to produce such a
shape of increased density and crushing strength, such carbon
black having an average particle size of about 20 to about
500 millimicrons and a surface area of from about 5 to about
375 square meters per gram, at least one third of the carbon
black being thermal black having an average particle diam-
eter of about 180-470 millimicrons and a surface area of about
6-13 square meters per gram.
3. [omitted entirely]
4. In the method of bonding dead-burned basic refrac-
tory particles one to another by admixing such particles with
about 4 percent to about 10 percent by weight of the admix-
ture coal tar pitch and then heating to coke the admixture
and form a bonded mass; the improvement which consists of
incorporating approximately 0.5 to 10 percent by weight,
based on the weight of the total admixture, of powdered
A-5
In 1973, Narco became aware that Harbison-Walker
had filed suit challenging the validity of the Wilson patent.
Narco then consulted outside counsel and obtained an
opinion that the Wilson patent was invalid. Narco there-
after ceased paying royalties to Basic, explaining that the
patent was viewed as invalid. Basic and Narco attempted
to renegotiate a mutually satisfactory licensing agreement.
But when no agreement could be reached, the present suit
was filed.
In the interim, Basic and Harbison-Walker settled
their lawsuit. Their agreement provided Harbison-Walker
with a royalty-free license under Basic’s Wilson patent.
In exchange for this Basic received a royalty-free license
under a Harbison-Walker patent that was later held
invalid in Dresser Indus., Inc. v. Eltra Corp., 432 F.Supp.
153 (N.D. Ohio 1977) (Dresser Indus. is the successor to
Harbison-Walker.
carbon black in the admixture prior to heating to improve the
useful life of the bonded mass at elevated temperatures[.],
such carbon blacks having an average particle size of about
20 to about 500 millimicrons and a surface area of from
about 5 to about 375 square meters per gram, at least one
third of the carbon black being thermal black having an
average particle diameter of about 180-470 millimicrons and
a surface of about 6-13 square meters per gram.
5. In the method of bonding refractory particles selected
from the group consisting of dead-burned dolomite, dead-
burned magnesia, and mixtures thereof by blending such par-
ticles with sufficient coal tar pitch to bind such particles
together, shaping such blend, and then heating the resulting
shape to a temperature sufficient to decompose pyrolytically
the pitch and form a carbon bond; the improvement which
consists of adding to the blend prior to the heating from
about 0.5 percent to about 10 percent by weight thereof finely
divided carbon black[.] to increase the density and crushing
strength of such shape, such carbon black having an average
particle size of from about 20 to about 500 millimicrons and
a surface area of about 5 to about 375 square meters per
gram, at least one third of the carbon black being thermal
eo
A-6
Il
Eltra’s principal contention is that the Wilson patent,
as reissued, is invalid for obviousness under U.S.C. § 103.
The section provides:
§ 103. Conditions for patentability; non-obvious
subject matter
A patent may not be obtained though the inven-
tion is not identically disclosed or described as set
black having an average particle diameter of about 180-470
millimicrons and a surface area of about 6-13 square meters
per gram.
6. The method of claim 5 wherein such carbon black is
selected from the group consisting of lamp blacks, channel
blacks, furnace combustion blacks, thermal blacks and acety-
lene blacks.
7. The method of claim 5 wherein such carbon black has
[properties within the following ranges:
Average particle diameter ..200 to 500 millimicrons.
Ge GR i iS ka cule ones 5 to 375 square meters per gram.
Volatile content ........... Less than 14% by weight.
yo eee 85 to 99.5% by weight. ]
a volatile content of less than 14 percent by weight and a
fixed carbon content of 88 to 99.5 percent by weight.
8. In the method of bonding refractory particles selected
from the group consisting of dead-burned dolomite, dead-
burned magnesia and mixtures thereof by blending such
particles with sufficient coal tar pitch to bind such particles
together, shaping such blend, and then heating the resulting
shape to a temperature sufficient to decompose pyrolytically
the pitch and form a carbon bond; the improvement which
consists of adding to the blend prior to the heating from
about 0.5 percent to about 10 percent by weight thereof finely
divided carbon black [The method of claim 5 wherein], such
carbon black [consists] consisting essentially of a blend of
high oil absorbing carbon black and a thermal carbon black.
9. In the method of bonding refractory particles selected
from the group consisting of dead-burned dolomite, dead-
burned magnesia and mixtures thereof by blending such
A-7
forth in section 102 of this title, if the differences
between the subject matter sought to be patented and
the prior art are such that the subject matter as a
whole would have been obvious at the time the in-
vention was made to a person having ordinary skill
in the art to which said subject matter pertains. Pat-
entability shall not be negatived by the manner in
which the invention was made.
particles with sufficient coal tar pitch to bind such particles
together, shaping such blend, and then heating the resulting
shape to a temperature sufficient to decompose pyrolytically
the pitch and form a carbon bond; the improvement which
consists of adding to the blend prior to the heating from
about 0.5 percent to about 10 percent by weight thereof
finely divided carbon black [the method of claim 5 wherein],
such carbon black [consists] consisting essentially of a blend
of a high oil absorbing carbon black having an oil absorption
of at least 85 pounds of oil per 100 pounds of black and a
thermal carbon black, said carbon black being present within
a weight ratio of 2:1 to 1:2, respectively.
10. In the method of bonding refractory particles selected
from the group consisting of dead-burned dolomite, dead-
burned magnesia and mixtures thereof by blending such par-
ticles with sufficient coal tar pitch to bind such particles
together, shaping such blend, and then heating the resulting
shape to a temperature sufficient to decompose pyrolytically
the pitch and form a carbon bond; the improvement which
consists of adding to the blend prior to the heating from about
0.5 percent to about 10 percent by weight thereof finely
divided carbon black [The method of claim 5 herein], such
carbon black [consists] consisting essentially of a blend of
substantially equal parts by weight of a high oil absorbing
carbon black selected from the group consisting of a conduc-
tive oil furnace carbon black and a long flow channel carbon
black having an oil absorption of at least 85 pounds of oil
per 100 pounds of black, and a fine thermal carbon black.
11. In the method of bonding refractory particles selected
from the group consisting of dead-burned dolomite, dead-
burned magnesia, and mixtures thereof by blending such
particles with sufficient coal tar pitch to bind said particles
together, shaping such blend under pressure, and then heat-
A-8
In analyzing the validity of any patent we must begin
with the statutory presumption of validity that accom-
panies its issuance, 35 U.S.C. § 282. American Seating Co.
v. National Seating Co., 586 F.2d 611, 615 (6th Cir.
1978). The presumption has no independent evidentiary
significance, however, as it merely serves to allocate to the
ing the resulting shape to a temperature sufficient to decom-
pose pyrolytically the pitch and form a carbon bond, the
improvement which consists of adding to the blend prior to
shaping approximately 0.5 to 10 percent by weight, based on
the weight of the total admixture, of powdered carbon black
containing particles having a diameter within the range of
from about 20 millimicrons to about 500 millimicrons[.] to
increase the density and crushing strength of such carbon
bonded shape, at least one third of such carbon black being
thermal carbon black having an average particle diameter
within the range of about 180 to about 470 millimicrons.
12. [omitted entirely]
13. [omitted entirely]
14, A refractory article of manufacture consisting essn-
tially of basic refractory particles, carbon black and a pyrovy-
tically decomposed carbonaceous material selected from the
group consisting of pitch, coal tar and bituminous asphalts,
approximately 0.5 to 10 percent by weight, based on the
weight of the total admixture, of said carbon black being
present prior to such pyrolytic decomposition[.], said refrac-
tory article having increased density and crushing strength
and said carbon black having an average particle size of
from about 20 to 500 millimicrons and a surface area of
about 375 square meters per gram, at least one third of such
carbon black being thermal black having an average particle
diameter of about 180-470 millimicrons and a surface area of
about 6-13 square meters per gram.
15. The method of claim 11 in which such powdered
carbon black consists essentially of a blend of a high oil
absorbing carbon black and a thermal carbon black, said
carbon black being present within the weight ratio of 2:1 to
1:2 respectively.
16. A pitch-bonded refractory having high strength and
increased density comprising
basic refractory particles,
A-9
party claiming invalidity the burden of proving it.
Reynolds Metals Co. v. Acorn Bldg. Components, Inc.,
548 F.2d 155, 160 (6th Cir. 1977); Dickstein v. Seventy
Corp., 522 F.2d 1294, 1296 (6th Cir. 1975), cert. denied,
423 U.S. 1055 (1976); Sperberg v. Goodyear Tire & Rub-
sufficient carbonaceous material selected from the group
consisting of pitch, coal tar and bituminous asphalts,
capable of pyrolytic decomposition, to bind said particles
together, and
approximately 0.5 to 10% by weight, based on the weight of
the total admixture, of finely divided carbon black of
noncrystalline structure, said carbon black having an
average particle size of from about 20 to 500 millimicrons
and a surface area from about 5 to about 375 square
meters per gram, at least on (sic one) third of the carbon
black being thermal carbon black having an average
particle diameter of from about 180 to about 470 millimi-
crons and a surface area of about 6-13 square meters per
gram.
17. The refractory of claim 16 in which said finely
divided carbon black consists essentially of a blend of a high
oil absorbing carbon black and said thermal carbon black.
18. The refractory of claim 17 wherein the ratio of high
oil absorbing carbon black to thermal carbon black is in the
range of about 2:1 to about 1:2 respectively.
19. The refractory of claim 17 wherein said oil absorbing
carbon black has an oil absorption of at least about 85 pounds
of oil per 100 pounds of carbon black.
20. The refractory of claim 19 including about 4 to
about 10% of carbonaceous material.
21. The refractory of claim 16 wherein the carbon black
addition is substantially all thermal black.
22. The method of claim 5 wherein such carbon black
comprises about 66 percent by weight to about 33 percent by
weight thermal black.
[Patent No. Re 27,111, Defendant's Ex. B.]
5In addition we believe that the presumption was seriously
weakened in this case because of Basic’s conduct before the patent
office, where one document was misrepresented and another was
withheld. See note 18, infra.
—— ee ea ee
A-10
ber Co., 519 F.2d 708, 713 (6th Cir.), cert. denied, 423
U.S. 987 (1975); Rains v. Niaqua, Inc., 406 F.2d 275, 278
(2d Cir.), cert. denied, 395 U.S. 909 (1969). In the typical
case such as this, where the bulk of the evidence of the
prior art is contained in documents, the party claiming
obviousness need only do so by a preponderance of the
evidence. Dickstein, supra, 522 F.2d at 1295-97; cf. Camp-
bell v. Spectrum Automation Co., 513 F.2d 932 (5th [Sic,
6th] Cir. 1975). The District Court was thus in error in
stating that:
The basic rule is that a patent is presumed to be
valid, and those who attack its validity, in order to
succeed, must establish their case by clear and con-
vincing evidence.
[App. 471.]
While this higher standard of proof may apply to the un-
usual case, such as where the evidence may be of an
inherently unreliable nature, see Dickstein, supra, 522
F.2d at 1296; Campbell, supra, or where fraud is alleged,
see Schnadig Corp. v. Gains Mfg. Co., Inc., 494 F.2d 383,
392 (6th Cir. 1974), it is simply not the “basic rule” to be
applied in cases involving alleged obviousness under 35
U.S.C. § 103.
In the seminal case of Graham v. John Deere Co.,
383 U.S. 1 (1966), the Supreme Court outlined the proper
inquiry under section 103 as follows:
[T]he scope and content of the prior art are to be de-
termined; differences between the prior art and the
claims at issue are to be ascertained; and the level of
ordinary skill in the pertinent art resolved. Against
this background, the obviousness or nonobviousness
of the subject matter is determined.
(Id. at 17.]
The Court continued:
Such secondary considerations as commercial success,
long felt but unsolved needs, failure of others, etc.,
might be utilized to give light to the circumstances
surrounding the origin of the subject matter sought
A-11
to be patented. As indicia of obviousness or non-
obviousness, these inquiries may have relevancy.
[Id. at 17-18. ]
Essentially, nonobviousness is the statutory equivalent of
the requirement of “invention,” derived from the Supreme
Court’s decision in Hotchkiss v. Greenwood, 52 U.S. (11
How.) 248 (1851). Sakraida v. Ag Pro, Inc., 425 U.S. 273,
279 (1976); Dann v. Johnston, 425 U.S. 219, 225-26
(1976); Reynolds Metals, supra, 548 F.2d at 159; Monroe
Auto Equip. Co. v. Heckethorn & Supply Co., 332 F.2d
406, 410 (6th Cir.), cert. denied, 379 U.S. 888 (1964).
This requirement explicates the constitutional mandate
that inventions must “promote the useful arts,” Art. I, § 8,
cl. 8. before a limited monopoly may be granted. Ander-
son's Black-Rock v. Pavement Co., 396 U.S. 57, 61 (1969);
see Graham, supra. Thus not every improvement in the
art is patentable. To be nonobvious, the advancement
must be the product of “inventive genius.” A. & P. Tea Co.
v. Supermarket Corp., 340 U.S. 147, 154 (1950) (Douglas,
J., concurring); Mantle Lamp Co. v. Aluminum Co., 301
U.S. 544, 546 (1937); Concrete Appliance v. Gomery, 269
U.S. 177, 185 (1925); Reckendorfer v. Faber, 92 U.S. 347,
354 (1875). The standard of invention is a “demanding”
one. Lear, Inc. v. Adkins, 395 U.S. 653, 676 (1969). As
stated in Dann, supra, the question is
whether the difference between the prior art and the
subject matter in question “is a difference sufficient to
render the claimed subject matter unobvious to one
skilled in the applicable art... .”
[425 U.S. at 228, quoting Application of Johnston, 502
F.2d 765, 772 (C.C.P.A. 1974) (Markey, C.J., dissent-
ing ).]
Although the subsidiary questions outlined in Graham,
supra, are essentially factual, the ultimate issue is one of
law. Sakraida, supra, 425 U.S. at 280; Graham, supra, 383
U.S. at 17; American Seating, supra, 586 F.2d at 619;
at 7a
I Ee > pe PL vere
A-12
Nickola v. Peterson, 580 F.2d 898, 910-12 (6th Cir. 1978),
cert. denied, 47 U.S.L.W. 3620 (1979); Reynolds Metals,
supra, 548 F.2d at 161; Kolene Corp. v. Motor City Metal
Treating, Inc., 440 F.2d 77, 81 (6th Cir.), cert. denied,
404 U.S. 886 (1971). In our opinion the advancement
disclosed in the Wilson reissue patent does not meet this
standard in view of the prior art.
A
As set out in footnote 4, supra, the claims of the Wilson
reissue patent relate to the process of adding small amounts
(from .5% to 10% by weight) of carbon black,® where at
least one third of the carbon black is a variety known as
thermal black,’ to the refractory mixture. The preferred
amount of carbon additive is 2% to 3% by weight. One
specific variety of the invention calls for the use of a
mixture of thermal black with any of several “high oil
absorbing blacks” (a subclass of carbon blacks). Another
calls for the use of all thermal black.
The District Court concluded that the process de-
scribed in the Wilson reissue patent was “something en-
tirely new and different from prior art.” App. 475. As a
conclusion that the process was nonobvious it is patently
incorrect. At least by 1944 it was known that the chemical
resistance of refractory materials to wear and corrosion
by slag during the steelmaking process could be improved
by increasing the carbon content of the refractory mixture.
® The term carbon black describes a family of so-called “free
carbons,” where carbon exists in its elemental form not combined
with any other chemical. Graphite is also a free carbon. The two
forms differ, however, because carbon blacks are noncrystalline
whereas graphite is a crystalline form of the element.
? Different varieties of carbon black are made by heat treating
various hydrocarbons (e.g., natural gas). Names are assigned (e.g.,
thermal black) according to the process which is used. They are
also divided according to their physical properties, particularly
particle diameter and surface area.
A-13
This was taught in Australian patent No. 118,590 where
it explained the utility of adding 242% by weight of free
carbon® in the form of flake graphite’ to the refractory
mixture.
The Hodnett Canadian patent, No. 614,742, which
was issued more than a year prior to Wilson’s original
application,” also taught the value of carbon generally in
making improved refractory materials. But the patent was
also rather specific in teaching a process for making a
better refractory brick for use in the steel industry. Hodnett
called for the addition of from 0% to 7% by weight of
“finely divided free carbon.” The patent specified both
graphite and carbon black, although it expressed a pref-
erence for graphite.’ Carbon black was said to be less
desirable because of its tendency to lower density.”
Basic places great emphasis on this last teaching be-
cause the core of its argument is that the carbon mixture
8 See note 6, supra.
® See id.
10 As explained in footnote 3 above, a reissue patent under 35
U.S.C. § 281 is fundamentally only a correction of the original
patent. Balkcom, supra, 523 F.2d at 501-02. Thus in our opinion
one must view the obviousness of the reissue claims to the same in-
vention as of the time of invention, namely, the time of the original
filing, cf. U.S. Expansion Bolt Co. v. Jordan Indus., Inc., 488 F.2d
566, 568 & n.3 (3d Cir. 1973) (one looks to the time of the appli-
cation in determining obviousness under 35 U.S.C. § 103).
11 This case is thus unlike United States v. Adams, 383 U.S. 39,
51-52 (1966), where the prior art specifically taught that the
invention sought to be patented was impractical and that the use
of certain chemicals specified in the patent would be detrimental
to the process.
12 The District Court interpreted the Hodnett patent as follows:
While certain broad language in both the Hodnett and
Wilson patents refer to a wide spectrum of forms of finely
divided carbon, what the Hodnett patent really covers is the
use of certain forms of graphite. [ App. 474.]
jae tae ee Tae!) eee, >) ef
eer eee ae
A-14
prescribed by Wilson gave rise to such a surprising and
unexpected improvement in the strength and density of
refractory bricks over those using graphite as to be patent-
able over the prior art, particularly Hodnett.'* We believe
that the proof fell far short of establishing the existence of
such a difference.
Much evidence was presented at trial concerning the
way in which carbon acts to affect the strength and density
of pitch-bonded refractory bricks. The refractory material
(here magnesia or dolomite ) exists in the form of particles
of irregular shapes and sizes. Even when combined with
a pitch binder, formed into a brick, and baked, pores re-
This finding is at least curious. As it relates to obviousness under
section 103, what is important is that Hodnett taught as a dis-
closure of the prior art, not what it may or may not have “covered.”
As just noted in the text, the Hodnett patent explained that both
carbon black and graphite were useful in practicing the invention.
That the patent expressed a preference for graphite does not
negative the fact that it also taught that carbon black was useful.
Indeed in 1968 Basic’s patent counsel advised that Hodnett dis-
closed the use of carbon black generally.
In addition, as the finding may relate to the scope of the
invention claimed by Hodnett, carbon black was plainly within the
“coverage of the patent because it was specified in the claims of
the patent. Under American patent law, the scope of any invention
is measured by its claims, Dickstein, supra, 522 F.2d at 1297, al-
though these must be read in light of the patent’s specifications.
United States v. Adams, supra, 383 U.S. at 49; Phillips Indus. Inc.
v. State Stove & Mfg. Co., 522 F.2d 1137, 1140 (6th Cir. 1975).
18Basic’s carbon expert testified to his “amazement and sur-
prise” when he first learned of the level of improvement that
could be derived from the addition of only 2%-3% carbon black.
Based on his own work in carbon bodies (not refractories), he
would have expected only a negligible improvement in strength
and density. We think that this testimony was of no particular
persuasive value since Hodnett had already disclosed the quantity
of free carbon necessary to effectuate a better brick. Wilson’s
patent only charged the material added, it did not alter the prior
teaching as to the quantity to be used.
-~
A-15
main between the particles. When those pores are filled
with smaller particles, here carbon, the resulting brick ex-
hibits improved crushing strength and density over bricks
made simply with refractory and pitch. Using filler par-
ticle that are too large, however, can result in a weaker
brick since refractory particles will be forced apart. Hence
it is better to err on the side of having filler particles
which are too small rather than too large. This much is
basic in the art. It was also taught in the Heuer patent,
U.S. No. 1,851,181 (1932). It should be noted that the
improved chemical resistance of the bricks is achieved by
the choice of carbon particles in order to increase the car-
bon content of the brick, as is explained above. Finally
there was also some evidence that free carbon has some
independent effect on the pitch binder which may cause
additional improvement in the strength of the bricks, but
not in their density.”*
In pressing its claim on reissue before the patent office,
and in an effort to distinguish Hodnett after it had been
14 The District Court made the rather cryptic finding:
There was evidence from which it can be concluded that
some chemical reactions took place between the thermal
black and the pitch which caused the latter to become very
much harder and stiffer than normal. [App. 472-73.]
To the extent that this is intended to relate to the independent
effect that the free carbon might have on the pitch binder, which
in turn may affect the strength of the refractory bricks, it has some
support in the record (particularly in the specifications of the
Wilson patent, column 2, lines 34-39, and in the testimony of
Stanislav Mrozoski, App. 265). To the extent that it attempts to
explain the overall process, however, it is clearly erroneous. It is
apparently based on the ambiguous comment of one witness who
admitted that he had no empirical support for it. App. 370. This
“theory” was directly rebutted by another expert witness and was
overwhelmed by the other evidence of the process of “particle
stuffing.” The evidence included documents provided by Basic
to their patent attorneys which explained the process in terms
of particle stuffing. Defendant’s Ex. FR at 2.
A-16
cited by the patent examiner, Basic made the following
representation:
[S]ubstantial evidence has been submitted, in the
Collin Hyde affidavit, as to the unexpected and sur-
prising results achieved by the present invention (the
affidavit compares the presently claimed species with
the preferred species of the Hodnett patent).
The statement contained in the parentheses was false. The
tests reported by Collin Hyde in his affidavit did not in-
volve “the preferred species” of Hodnett. Hyde compared
bricks made with a thermal black mixture to those made
with a coarse variety of graphite (Joseph Dixon flake
graphite 1101). Hodnett, however, had specified fine (or
finely divided) graphite. Hyde reported that the use of
coarse graphite actually decreased the density and com-
pressive strength of the bricks over those containing no
carbon additive at all. In contrast, Hyde found that the
use of thermal black produced an increase in the density
and strength of bricks over those containing no carbon
additive. By representing the coarse graphite as Hodnett’s
“preferred species” the Hyde affidavit appeared to show
two things: (1) it tended to disprove Hodnett by indi-
cating that his process resulted in an inferior brick; (2) it
tended to show that Wilson’s process was far superior to
Hodnett’s. In truth the experiments reported in the affi-
davit offered no such basis for comparison because they
did not replicate the Hodnett invention.”
It must be noted that Basic had in fact tested fine
graphite, Hodnett’s “preferred species,” prior to this time.
in 1960 Wilson reported tests in which he compared fine
graphite to Joseph Dixon flake graphite 1101, the coarse
graphite used in the Hyde experiments which were re-
ported to the patent examiner. The tests showed that the
fine graphite improved the density and compressive strength
of refractory bricks whereas the coarse variety resulted in
15 See note 18, infra.
A-17
a poorer quality brick, even poorer than one containing
no additive. Plaintiff's Ex. 42. This report was not given
to the -patent examiner, even though it predated Hyde’s
affidavit.
More significantly, very little evidence was presented
which directly compared fine graphite with carbon black
generally, or with thermal black in particular. The Hyde
affidavit purportedly did so and was presented both to the
patent examiner and to the District Court. But as noted
above, it did not offer a fair comparison of Wilson and
Hodnett. The Wilson patent, either originally or as re-
issued, also does not furnish any report of a comparison
test. The data provided only compares various carbon
blacks. The specifications instruct that “pulverant carbon
of on-cubic crystalline structure may also be used in prac-
ticing the invention. For example . . . graphite may be
used, but such carbons are not as efficacious as carbon
blacks.” The patent offers neither explanation or data to
support this claimed distinction."* Apparently, Basic’s only
reported direct comparison between fine graphite and
thermal black was contained in a report by Collin Hyde
which was dated four months earlier than the affidavit
submitted to the patent examiner. The report showed that
the addition of either thermal black or fine graphite in-
creased the density and compressive strength of pitch-
bonded refractory bricks. Neither additive was found to
16 The District Court made the following finding:
The Wilson patent excludes the particular variety of graphite
covered by the Hodnett patent, since Wilson’s experiments
demonstrated that the variety of graphite decreased the den-
sity of the pitch-bonded refractory bricks, an undesirable
characteristic. [App. 474-75.]
This finding is clearly erroneous in two respects. First the Wilson
patent no where “excludes the particular variety of graphite cov-
ered by the Hodnett patent,” because it no where discusses par-
ticular varieties of graphite. The most it does is express a prefer-
ence for carbon black over graphite generally. Second, Wilson’s
ae ee ee
ee a ee
A-18
be the clear superior of the other.’ Again this report was
not given to the patent examiner.”*
To show that thermal black is the clear surprising
superior of fine graphite, Basic relies on the reports of one
of Narco’s scientists. In 1973 he reported on experiments
which were conducted in an effort to get “outside” the
Wilson patent. He compared the pressed (or “green” )
experiments, which are described in the text above, clearly do not
show that Hodnett’s preferred variety of graphite decreases the
density of refractory bricks. To the contrary, the report plainly
shows that fine graphite, Hodnett’s preference, markedly increased
and improved the density and strength of the bricks over those
with no carbon additive.
17 The test results showed the following:
Addition Graphite Thermal Black
Amount 1% 2% 1% 2%
Amount of Liquid Pitch Added,
Ibs. 225 230 230 230
Batch Temperature, °F 255 250 240 240
Chart Density (avg 4), lb/ft® 187 186 186 186
Tempered Properties (avg 2)
Bulk Density, lb/ft
Whole Brick, w/m 18 184 184 183
Segment, w/m 183 181 180 180
Compressive Strength, psi 7340 7560 6580 6760
Coked Properties (avg 4)
Bulk Density, w/m, Ib/ft* 181 179 180 179
Compressive Strength, psi 8030 7190 6990 7600
Expansion, % 0.18 0.18 0.18 0.84
Weight Loss, % 25 25 25 25
Residual Carbon, % (avg 8) 438 5.12 434 4.87
[Plaintiff's Ex. 277.]
'S Although Basic entered this litigation with the benefit of the
statutory presumption of validity under 35 U.S.C. § 282 noted
above, it is axiomatic that its limited force can be weakened or
destroyed where it is shown that the most relevant prior art was
not disclosed to the patent examiner. American Seating, supra, 586
F.2d at 615; Reynolds Metals, supra, 548 F.2d at 160; Bolkcom,
A-19
densities’® of bricks made with thermal black with those
made with a thermal black-graphite mixture and with a
thermal black-furnace mixture. He did not evaluate the
coked density” of the bricks. Neither did the tests report
on compressive strength, either green or coked. The most
that this report shows is that the thermal-black-graphite
mixture produced a reduction in pressed density. Notably.
a mixture containing more graphite and less thermal black
achieved an even smaller reduction in pressed density
from bricks with pure thermal black.** Also, the report
accompanying the data indicated that the reductions in
supra, 523 F.2d at 498; Tee-Pak Inc. v. St. Regis Paper Co., 491
F.2d 1193, 1196 (6th Cir. 1974). Similarly in this case we believe
that the presumption was seriously weakened when Basic failed
to disclose to the patent examiner the results of tests which came
closest to comparing Hodnett and Wilson; and when Basic plainly
misrepresented the nature of the tests reported in the Hyde affida-
vit. Because the examiner did not have the best and most accurate
information before him we cannot entertain the usual presumption
of the correctness of his conclusion.
19 The terms “pressed density” and “green density” refer to the
density of a newly formed brick. Similarly, the pressed or green
compressive strength of a brick related to the physical properties
of a new brick. In contrast, the “coked” properties of a brick refer
to its characteristics after it has been exposed to the steelmaking
process. The expert testimony showed that coked properties are
more meaningful because they relate to the conditions that the
bricks actually experience in the basic oxygen furnace.
20 See note 19, supra.
21 The actual test results were as follows:
WT-8124 WT-8124 W'T-8124
Control A B
Gal. of pitch per 4,000 12.6 12.3 12.0
Ib. 90-95°C M.P. pitch 2.5% 1.25% 0.5%
Carbon Black — 1.25% 2.0%
Graphite (5 micron) 193.45 191.64 191.76
Density, pef [Defendant’s Ex. AO.]
a ee ee ee ee ae ee Cem Tey ae
A-20
density were at least in part due to a reduction in pitch
content.
In sum, the technical evidence disclosed the following
relative to the prior art and the alleged advancement made
by Wilson: As to the prior art, it was well known that the
chemical resistance of bricks to wear and corrosion could
be improved by increasing the carbon content of the re-
fractory mixture; it was also known that the strength and
density of refractory materials could be improved through
the addition of smaller particles into the mixture; Hodnett
specifically taught the use of carbon particles in pitch-
bonded refractory bricks; while graphite was preferred by
Hodnett, it was clear that both graphite and carbon black
were useful for his invention.”
2 One other piece of prior art deserves mention. The Swallen
patent, U.S. No. 2,527,595 (1950), disclosed a method for improv-
ing the strength of carbon electrodes used in electric furnaces.
These electrodes are produced by combining carbon flour with a
pitch binder and baking the mixture to form a carbon body. The
patent disclosed that the electrode could be made more resistant
to chemical attack, and also stronger, through the addition of
thermal black. Again this process involved essentially void-filling.
Thermal black was chosen because of its range of particle sizes.
The precise process for making the electrodes differs from that
used to make refractory bricks. The quantity of thermal black used
also differs (up to 40% by weight can be used in the Swallen
process ). Despite these differences, the purpose of the additive is
similar to that involved in the Wilson and Hodnett processes and
the method of manufacture is analogous. Therefore we think that
the Swallen patent, as prior art, would at least point one toward
the use of thermal black. In fact, in his deposition, Wilson stated
that he had read the Swallen patent and found it useful to his
work in 1961. Plaintiffs Ex. 422 at 78-79. While Swallen alone
would not render Wilson’s disclosures obvious, we believe that it
is plainly relevant as shedding light on the general state of the
art at the time of the Wilson application. See Graham, supra, 383
U.S. at 17; Fed. R. Evid. 401. Thus we believe that the District
Court erred in concluding as to the Swallen patent:
[T]his is totally irrelevant, if for no other reason than that
electrodes use little or no refractory material such as dead-
A-21
As to the alleged advancement made by Wilson, Basic
claims that a patentable improvement over the prior art
was achieved through the use of various mixtures of car-
bon blacks, particularly thermal black. The Wilson patent’s
specifications, however, also note that graphite may be
used to practice the invention. Wilson simply expresses a
preference for carbon black without documenting its
superiority.
Eltra came forward with evidence which tended to
show that the claimed “surprising and unexpected” im-
provements over Hodnett’s teachings were incorrect and
that fine graphite was indeed the equivalent of thermal
black. Basic responded with evidence in the form of in-
complete test results which tended to show that as to only
one property thermal black exhibited superiority over fine
graphite. Thus in our view the technical evidence showed
that Basic had developed a process which produced a
brick that in most respects was the equivalent of a brick
produced by the Hodnett process. All Basic had accom-
plished was the substitution of thermal black, together with
other carbon blacks, for graphite. It did not even change
the relative proportions.”
burned magnesia or dolomite, and are made by processes
almost entirely different from those used in making the re-
fractory bricks involved here. [App. 475.]
23 Although Basic does not discuss this point, we note that the
purpose stated in the specifications to the Hodnett patent refers
principally to the chemical improvement that can be obtained by
adding free carbon. The patent does not specifically refer at that
point to improved strength and density. Assuming, arguendo, that
Hodnett was ignoring these important physical properties, we do
not think that this is a basis on which to distinguish Wilson from
Hodnett. The fact remains that the evidence tended to establish
that the two processes achieve an essentially equivalent result and
that the use of either carbon black or graphite was taught in the
Hodnett patent.
A-22
In addition to technical evidence, the parties offered
evidence concerning certain “secondary considerations.”
Graham, supra, 383 U.S at 17. Basic pointed particularly
to the commercial success of the thermal black process,
noting that almost every producer of refractory bricks uses
thermal black under license from Basic. These competitors
were apparently unable to find a superior process. Of
course, commercial success and the satisfaction of long-felt
needs are alone not sufficient to establish that the product
is the result of invention. Sakraida, supra, 425 U.S. at
278-79; Anderson’s Black-Rock, supra, 396 U.S. at 61;
Phillips Indus. Inc. v. State Stove & Mfg. Co., 522 F.2d
1137, 1141-42 (6th Cir. 1975). Here, moreover, there was
evidence that the consideration received from Harbison-
Walker, the largest firm in the business, for its license
was of questionable value. There was also evidence that
thermal black is the cheapest of the free carbons. Indeed,
a 1968 letter to patent counsel] indicated that Basic wanted
a patent specifying thermal black because of its compara-
tively low cost. Defendant’s Ex. FR at 4. The same letter
also indicated that in 1965 when Basic reverted to using
thermal black from graphite it did so purely for economic
reasons. In our view these secondary facts can in no way
“tip the scales” in Basic’s favor. American Seating, supra,
586 F’. 2d at 622. They tend, instead, to tip the scales in
Eltra’s favor.
In view of the fact that the prior art had already
disclosed the usefulness of carbon generally, and carbon
blacks in particular, and since the Wilson patent changed
neither the quantities of carbon nor the basic process of
particle stuffing from the Hodnett patent, and also given
the fact that Wilson’s process was not shown to perform
demonstrably better than Hodnett’s, we believe that the
selection of thermal black as a preferred additive is not a
patentable difference. Cf. Lucerne Products, Inc. v. Cutler-
A-23
Hammer, Inc., 568 F.2d 784, 798 (6th Cir. 1977). We are
confirmed in this view by the other evidence which tended
to show that economics, not invention, may have been
the real source of this patent. But a cost savings is not a
patentable difference. It is not a substitute for invention.
Sakraida, supra, 425 U.S. at 282-83; Reynolds Metals,
supra, 548 F.2d at 162. In addition, there can be no
“exercise of the inventive faculty,” McClain vy. Ortmayer,
141 U.S. 419, 427 (1891), where one merely substitutes
one material for another. Graham, supra, 383 U.S. at 11;
Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1851).
In our opinion this case involves at most “improvement . . .
[which is] the work of the skillful mechanic not that of the
inventor.” Id. at 267. It was therefore obvious under 35
U.S.C. § 103.24
Ill
Although our holding that the patent is invalid neces-
sarily eliminates the District Court’s award of treble dam-
ages and attorney's fees, we believe those awards deserve
specific comment because of the serious error committed
below. In our opinion, even if the patent were valid there
is no basis in the record of this case for either award.
The statutory provision relating to damages is 35
U.S.C. § 284. It provides:
§ 284. Damages
Upon finding for the claimant the court shall
award the claimant damages adequate to compensate
for the infringement, but in no event less than a
reasonable royalty for the use made of the invention
by the infringer, together with interest and costs as
fixed by the court.
When the damages are not found by a jury, the
court shall assess them. In either event the court may
*4 This holding renders it unnecessary to discuss Eltra’s claim
that Basic committed fraud on the patent office. Therefore we ex-
press no opinion on its merits.
ee enn aa
A-24
increase the damages up to three times the amount
found or assessed.
The court may receive expert testimony as an aid
to the determination of damages or of what royalty
would be reasonable under the circumstances.
To support its extraordinary award the District Court
stated:
The ev-ence in this case leaves no doubt in the
Court's mind that the plaintiffs infringement in this
case was deliberate pet intentional. To condone such
misconduct would set an example that would seriously
weaken the patent system. The Court will, therefore,
when the amount of damages has been determined,
either by its assessment or upon stipulation of the
parties, increase it three times.
[App. 477.]
In order to suport such an increased, punitive award there
must be a finding that the infringement was wilful. H. K.
Porter Co., Inc. v. Goodyear Tire & Rubber Co., 536 F.2d
1115, 1124 (6th Cir. 1976). The existence of honest doubt
concerning the validity of a patent precludes a finding of
wifulness. Id.; General Electric Co. v. Sciaky Bros., Inc.,
415 F.2d 1068, 1073 (6th Cir. 1969). As this Court stated
in Enterprise Mfg. Co. v. Shakespeare Co., 141 F.2d 916,
921 (6th Cir. 1944):
If honestly mistaken as to a reasonably debatable
question of validity, an infringer should not be made
to smart in punitive damages. Compensatory dam-
ages constitute adequate remuneration for invasion of
a patentee’s property rights, unless the refusal of the
iniringer to bow to the presumptive validity of an
issued patent is consciously wrongful. A court of
equity, exercising patent jurisdiction, does not readily
infer wrong motivation upon the part of those resist-
ing the validity of patent claims. Patentees generally
entertain suspicion that those who challenge their
claims are deliberate malefactors. However bona fide,
such suspicions produce no legal effect, unless sus-
tained by evidence substantiating suspicion as truth.
—
nen emer
A-25
In this case Fltra’s Narco division stopped paying
royalties after it learned that Harbison-Walker, the domi-
nant firm in the business, had questioned the validity of
the patent. The opinion of outside counsel was also sought
and it was to the effect that the patent was invalid. In this
context Eltra’s Narco division ceased its royalty payments
and attempted to renegotiate the license. Only after these
negotiations broke down, and after it learned that Harbison-
Walker had obtained a royalty-free license did Eltra bring
suit. Its “infringement” was thus “intentional” in the sense
that it was not inadvertent. But a licensee is not required
to pay royalties when it successfully challenges a patent’s
validity. Lear, Inc. v. Adkins, 395 U.S. 653, 671-74 (1969).
These facts simply do not make out a wilful infringement
so that there was no basis whatever on which to award
damages in excess of those intended to compensate Basic
for its loss.
We can similarly find no plausible basis for the Dis-
trict Court's award of attorney’s fees. The pertinent statute
is 35 U.S.C. § 285. It provides simply:
§ 285. Attorney fees
The court in exceptional cases may award reason-
able attorney fees to the prevailing party.
The District Court found this case to be exceptional, stating:
The defendant also asks for an allowance of attor-
neys fees. 35 U.S.C. § 285 provides that in exceptional
cases the Court may award reasonable attorney fees.
This case is made exceptional by the insistence of the
plaintiff that the Wilson Patent and its re-issue were
obtained by fraud and deceit practiced by the de-
fendant upon the Patent Office. To make such a
charge not only impugns the party charged, but also
reflects on the Patent Office and its staff. It implies
either lack of competence or lack of effort, or both,
since it is ordinarily very difficult to practice fraud on
one who is reasonably skilled in his business and is
paying proper attention to it.
A-26
It is elementary in law that one who seeks to
establish fraud must do so by clear and convincing
evidence. A person should not make damaging accu-
sations without a very strong basis for believing them
true. To make such an accusation as a smoke screen
to divert attention from, or to attempt to confuse, the
basic issues of patent validity or infringement ought
not to be permitted.
[App. 477.]
In order to support an award of attorney’s fees in a patent
case we have previously held that there must be a showing
of conduct which is unfair, in bad faith, inequitable, or un-
conscionable. Deyerle v. Wright Mfg. Co., 496 F.2d 45,
54-55 (6th Cir. 1974); Uniflow Mfg. Co. v. King-Seeley
Thermos Co., 428 F.2d 335, 341 (6th Cir.), cert. denied,
400 U.S. 943 (1970); Hoge Warren Zimmermann Co. v.
Nourse ¢& Co., 293 F.2d 779, 784 (1961).
The District Court's award was based on the fact that,
in the Court’s view, Basic and the patent office had been
“impugned” by an unproved allegation of fraud on the
patent office. In our opinion only the most frivolous of alle-
gations should give rise to an award of attorney’s fees
under section 285. Normally awards under this provision
are based on the conduct of the parties, not on the quality
of their proof. E.g., Deyerle, supra.
In this case, while we offer no opinion as to the merits
of Eltra’s claim of fraud on the patent office, we cannot
view the allegation as frivolous. As explained above, Basic
misrepresented the thrust of the Hyde affidavit in its
prosecution of the reissue application. In addition, there
was some evidence that Basic “rigged” the Hyde results
by intentionally using coarse graphite in its comparative
tests, even though Basic’s officials were aware that fine
graphite would yield different results. In the face of these
facts the District Court erred in awarding attorney’s fees
to Basic.
The judgment of the District Court is reversed.
B-1
Appendix B
FILED
JUN 18 1979
JOHN P. HEHMAN, Clerk
No. 77-3364
UNITED STATES COURT OF APPEALS
FOR THE SIXTH CIRCUIT
ELTRA CORPORATION )
Plaintiff-Appellant
. t ORDER
BASIC INCORPORATED
Defendant-Appellee
The last paragraph of footnote 3 on page three of
our slip opinion is hereby corrected so as to read:
In Bolkcom v. Carborundum Co., 523 F. 2d 492 (6th
Cir. 1975), cert. denied, 425 U. S. 951 (1976), we stated
on page 502:
o
The Supreme Court has made it clear that this section
is intended only to permit the reissue of a new patent
for the same invention as that disclosed in the original
patent in order to permit the correction of an innocent
inadvertent defect or omission. It is not intended to
permit the patentee to broaden the claims of the
- original patent. (Emphasis in quotation).
It is further ordered that on page 10, line 8 of our
slip opinion the sentence reading: To be nonobvious, the
advancement must be the product of “inventive genius.”
be changed so as to read as follows: To be nonobvious,
some prior decisions held that the advancement must be
the product of “inventive genius.”
ENTERED BY ORDER OF THE COURT
Joun P. HEHMAN
Clerk
Appendix C
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF OHIO
WESTERN DIVISION
Civil No. C 73-483
ELTRA CORPORATION,
Plaintiff,
VS.
BASIC, INC.,
Defendant.
Civil No. C 74-26
BASIC, INC.,
Plaintiff,
VS.
ELTRA CORPORATION,
Defendant.
MEMORANDUM
(Filed March 17, 1977)
YOUNG, J:
Civil action C 73-483 was originally commenced by
the plaintiff Eltra Corporation (hereafter referred to as
plaintiff) seeking a declaratory judgment that a certain
patent and reissue patent (hereafter referred to as the
Wilson patent) owned by the defendant Basic, Incorpo-
rated (hereafter referred to as the defendant) was invalid
and was not being infringed by the plaintiff.
C-2
Shortly thereafter, the defendant filed an action, Civil
No. C 74-26, for infringement of the Wilson patent against
the plaintiff in the Eastern Division of this Court, De-
fendant’s case was ordered transferred to the Western
Division and consolidated with the present case, and the
matter thereafter proceeded as if the defendant’s case
were a cross-action in the plaintiff's case.
After the usual period of discovery and pre-trial con-
ferences, the matter finally was set for trial to the Court
on September 20, 1976, and was tried, commencing on
that day, and concluding on the morning of September 23.
The matter was argued by briefs, which ultimately were
filed, placing the matter in position to be decided.
Although the trial of patent cases is usually somewhat
complicated, this one has been made more than usually so
by the fact of the reissue of the patent, and the plaintiff's
tendency to substitute pejorative adjectives for facts in
the briefs.
The invention involved in the Wilson patent deals
with the making of pitch-bonded refractory bricks. These
bricks are used to line the furnaces in which steel is made
by the basic oxygen process. This method of steel-making
did not come into general use in this country until the
early nineteen-fifties, following the conclusion of World
War II. Before that time, steel was made either by the
basic open-hearth process or the acid Bessemer process.
While all steel-making requires the use of refractory ma-
terials for lining the furnaces, the old processes did not
require the type of refractory brick involved in this liti-
gation.
Pitch-bonded refractories have been in use for a
century or more for various purposes. Essentially they
consist of some sort of material resistant to high tempera-
tures which is ground up, mixed with some variety of
pitch, formed into shapes, stabilized either by compress-
ing, heating, or both. In the type involved here, the re-
So a ee al
C-8
fractory material usually consists of dead-burned magnesia
or dolomite, and the stabilization is by forming under pres-
sure and heating for a relative short time at quite high
temperatures.
The vessels used for making steel by the basic oxygen
process are very large. They consist of a steel outer shell
lined with refractory bricks to keep it from being dissolved
by the molten metal inside. Putting the refractory lining
into one of these vessels is a very costly and time-consum-
ing process. During the time required for re-lining, the
vessel is out of use, and cannot make either steel or money.
As a result of this, the various manufacturers of re-
fractories, including the defendant and the plaintiff's
NARCO division, were, at the time the Wilson patent
was issued and re-issued, engaged in much research aimed
at developing refractory bricks which would last longer
before having to be replaced in the vessels they lined.
With this background, the facts of the present case
can be examined. As usual, in patent cases, the evidence is
voluminous and conflicting in many details. The parties
have examined and analyzed it at great length in their
printed post trial briefs, which total one hundred fifty-
three pages in length.
It is not necessary in this opinion to make another
extended analysis of the evidence. This opinion, which
will serve as the Court’s findings of fact and conclusions
of law, will set forth the Court’s resolution of the ultimate
factual and legal issues.
The basic rule is that a patent is presumed to be
valid, and those who attack its validity, in order to suc-
ceed, must establish their case by clear and convincing
evidence.
The plaintiff argues: first, that the Wilson patent is
invalid because it was obvious in view of the prior art;
second, that the Wilson patent and more specifically its
re-issue, were accomplished by fraud and deceit practiced
C-4
upon the Patent Office and its Examiner, and third, the
plaintiff is not infringing the patent anyway.
The plaintiff fails to establish any one of these propo-
sitions at all, much less by clear and convincing evidence.
To understand this conclusion, it is necessary to consider
what it was that Wilson invented and patented.
As stated above, pitch-bonded refractories had been
in use for a long time. With the advent of the basic oxygen
process of steelmaking, their manufacture became a large
and highly competitive business. The parties, and other
manufacturers, put their research departments to work on
the problem. Basically, the research consisted of testing
the effect of adding various quantities of other materials
to the mixture of pitch and refractory, and testing the
effect on the resultant brick. The principal material tested
was some form of carbon. This Protean element has several
allotropic forms, and a large number of varieties of each
form, with widely varying characteristics.
When the inventor Wilson came to work for the de-
fendant, he started to experiment with various forms of
finely divided carbon as an additive to the pitch and re-
fractory. In doing so he went beyond the scope of the
materials available in the defendant’s laboratory. Although
his experimentation was discouraged by his fellow em-
ployees as being futile and unlikely to lead to any useful
result, he got some lamp-black, or “thermal” black, at the
local hardware store, and experimented with it. He found
that thermal blacks of certain physical characteristics had
marked effect in improving the performance of the pitch-
bonded refractories. There was evidence from which it
can be concluded that some chemical reactions took place
between the thermal black and the pitch which caused the
latter to become very much harder and stiffer than normal.
A pitent was sought upon Wilson’s discovery, and
after some difficulties, it was issued. The original Wilson
ne re ee
Sn Ee
a ne et
C-5
patent was broad in its claims, and several other forms of
carbon than thermal black were covered by it.
While Wilson was conducting his experiments, and
before, an inventor named Hodnett obtained a Canadian
patent which dealth with the same subject matter. At
the time that the Hodnett patent was issued, it was picked
up routinely by some of the defendant's employees, who
got a copy of it, and then sought a license under it. The
owner offered to license the defendant for a flat royalty
of one dollar per year. The defendant, acting administra-
tively, sent the owner a check for seventeen dollars, cover-
ing royalties for the life of the patent, and promptly forgot
about the matter.
Plaintiff argues vociferously that no one could pos-
sibly forget about so important a matter as a patent license,
even a seventeen dollar one, and that the defendant ac-
tually concealed the existence of the Hodnett Patent Of-
fice for the purpose and with the effect of deceiving and
defrauding the Patent Office into the issuing and reissuing
of the Wilson Patent. The essential elements of fraud
and deceit are: first, that a representation was made as a
statement of fact; second, that it was untrue and* known
to be untrue by the party making it, or carelessly made;
third, that it was made with intent to deceive and for
the purpose of inducing the other party to act on it; and
fourth, that the other party did rely and act upon it to his
damage. 37 Am.Jur. 2d 34, Fraud § 12. The plaintiff failed
to show any of these elements in fact. |
Moreover, fraud on the Patent Office involvés two
elements: first, an element of wilful, wrongful intent be-
fore the Patent Office; second, that the patent would not
have issued but for the wrongful conduct of the patent
applicant. In re Frost Litigation, 398 F. Supp. 1353 (D.
Del. 1975). The fraud must be established by clear, un-
equivocal and convincing evidence. Schnadig Corp. v.
Gaines Manufacturing Company, Inc., 494 F.2d 383 (6th
Ya
C-6
Cir. 1974); Dickstein v. Seventy Corp., 522 F.2d 1294
(6th Cir. 1975).
The most that can be said for the plaintiff's conten-
tions of fraud is that the defendant innocently overlooked
the Hodnett Patent during the prosecution of the applica-
tion for the Wilson Patent. The evidence admits of no
other conclusion, for obviously if the plaintiff had been
aware of the Hodnett Patent and disclosed it to begin
with, it would have avoided the trouble and expense of
seeking the re-issue patent. The plaintiff's claims in this
regard are a good example of the problem discussed dis-
approvingly by the Eighth Circuit Court of Appeals in
Pfizer v. International Rectifier Corp., 538 F.2d 180 (8th
Cir.), cert. denied, —U.S.——, 97 S.Ct. 738 (1976),
where it said:
A patentee’s oversights are easily magnified out of
proportion by one accused of infringement seeking to
escape the reach of the patent by hostily combing
the inventor's files in liberal pretrial proceedings.
The evidence does not support this position at all,
much less by the clear and convincing force necessary to
establish either fraud or the invalidity of a patent.
While certain broad language in both the Hodnett
and Wilson patents refers to a wide spectrum of forms of
finely divided carbon, what the Hodnett patent really
covers is the use of certain forms of graphite. The Wilson
patent excludes the particular variety of graphite covered
by the Hodnett patent, since Wilson’s experiments demon-
strated that the variety of graphite decreased the density
of the pitch-bonded refractory bricks, an undesirable char-
acteristic.
When the defendant finally became conscious of the
possibility of a conflict between the Wilson and Hodnett
patents, it sought and obtained the reissue in order to
clarify the fact that the inventions covered by the two pat-
nnn OI a i ai te ear nh Ml tit
re
Ace es a cate AD at dette. te,
mete
C-7
ents were different. The Patent Examiners could not have
been deceived in connection with the re-issue of the
Wilson patent, and obviously were not deceived.
The defendant [Sic, plaintiff] also attempted to con-
fuse matters by offering testimony concerning the making
of carbon electrodes, which also involve the use of pitch
and various forms of finely ground carbon, and the Swallen
patent which deals with these so-called “carbon bodies.”
This is totally irrelevant, if for no other reason than that
electrodes use little or no refractory material such as dead-
burned magnesia or dolomite, and are made by processes
almost entirely different from those used in making the
refractory bricks involved here.
Plaintiff's experts attempted to demonstrate by use of
spheroids of various sizes some of the physical characteris-
tics of making materials increasingly dense. While this
was interesting from a theoretical standpoint, the particles
of ground refractory used in the bricks involved here are
not spheroids of relatively uniform size, but completely
irregular both in size and shape. Consequently this testi-
mony was without probate force upon the issues involved
here.
The realities of the matter, as shown beyond any
doubt by the evidence, are that Wilson’s invention was
something entirely new and different from prior art. Not
even in hindsight can it be truly said that it was simply a
combination of old principles which any person skilled in
the art would naturally make. Both before and since the
invention, numbers of experts, including plaintiff's, have
tried to get the patent’s results by other means, with no
success whatsoever.
In a highly competitive field, the bricks made by the
use of Wilson’s invention immediately established them-
selves as far superior to anything also on the market. All
the other manufacturers of pitch-bonded refractories, in-
cluding the plaintiff, very promptly sought licenses, not
C-8
of the dollar-a-year variety, but ones which pay substantial
royalties, and except for the plaintiff, have continued to
pay the royalties. Nobody has yet come up witb anything
as good as Wilson’s invention. This is strong evidence
supporting the validity of the patent.
There still remains the issue of whether or not the
plaintiff is infringing the defendant's patent. This issue
depends upon one vary narrow matter, the particle size
of the thermal black employed by the plaintiff in its manu-
facture of refractory bricks.
Defendant's patent applies to the use of thermal blacks
having an average particle size from about 180 to about
470 millimicrons. Defendant claims that the average parti-
cle size of the thermal black it uses, called “Huber N-990”
is about 522 millimicrons. This claim is based on the un-
supported testimony of the witness Ulmer. The evidence
leaves no doubt whatever in the Court’s mind that the
average size of “Huber N-990” is from 300 to 320 milli-
microns, and thus clearly within coverage of the Wilson
patent. This is a clear infringement of the patent, and
requires the issuance of ai injunction restraining the de-
fendant from continuing to infringe, and an award of
damages for the past infringement.
Since the trial held was concerned only with the
various liability issues, the matter will have to be set for
hearing upon the issue of the amount of damages unless
the parties can stipulate to the amount thereof.
35 U.S.C. § 284 provides that the amount of damages
for infringement shall in no event be less than a reason-
able royalty for the use made of the invention by the in-
fringer, together with interest and costs fixed by the court.
This statute also provides that the court may increase up
to three times the amount found or assessed.
The evidence in this case leaves no doubt in the
Court's mind that the plaintiff's infringement in this case
was deliberate and intentional. To condone such miscon-
C-9
duct would set an example that would seriously weaken
the patent system. The Court will, therefore, when the
amount of damages has been determined, either by its
assessment or upon stipulation of the parties, increase it
three times.
The defendant also asks for an allowance of attorney's
fees. 35 US.C. § 285 provides that in exceptional cases the
Court may award reasonable attorney fees. This case is
made exceptional by the insistence of the plaintiff that
the Wilson Patent and its re-issue were obteined by fraud
and deceit practiced by the defendant upon the Patent
Office. To make such a charge not only impugns the
party charged, but also reflects on the Patent Office and
its staff. It implies either lack of competence or lack of
effort, or both, since it is ordinarily very difficult to practice
fraud on one who is reasonably skilled in his business and
is paying proper attention to it.
It is elementary in law that one who seeks to establish
fraud must do so by clear and convincing evidence. A
person should not make damaging accusations without a
very strong basis for believing them true. To make such
an accusation as a smoke screen to divert attention from,
or to attempt to confuse, the basic issues of patent validity
or infringement ought not to be permitted. The Court
will, therefore, make an award to the defendant of a
reasonable sum to cover its attorney's fees and expenses
in the defense of this action. Again there is no evidence
before the Court upon which to base an award of attorney’s
fees. If the amount cannot be stipulated, the Court will
hear evidence and determine the proper amount.
The defendant may draft an order expressive of the
Court's findings here, and submit the same pursuant to
L. Civ. R. 5(b).
/s/ DON J. YOUNG
United States District Judge
Toledo, Ohio March 16, 1977.
D-1
Appendix D
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF OHIO
WESTERN DIVISION
CIVIL NO. C 73-483
CIVIL NO. C 74-26
[CAPTION OMITTED]
JUDGMENT ENTRY and ORDER
(Filed April 8, 1977)
This action came for trial before the Court, Honorable
Don J. Young, United States District Judge, presiding, and
the issues having been fully tried and a decision having
been duly rendered,
It is Ordered and Adjudged that:
1. Judgment be entered for Defendant, Basic Incor-
porated, and against Plaintiff, Eltra Corporation;
2. All of the claims of reissue patent Re 27,111 are
valid and enforceable;
3. The Plaintiff, Eltra Corporation, has infringed
claims 2, 4-7, 11, 14, 16 and 21 of reissue patent Re 27,111
by its manufacture and sale of pitch-bonded refractory
bricks containing thermal black, including the thermal
blacks identified as Sterling MT and “Huber N-990”.
4. A writ of injunction issue out of and under the
seal of this Court directed to said Plaintiff, Eltra Corpora-
D-2
tion, and its successors, its officers, agents, attorneys, em-
ployees, associates and privies enjoining and restraining
them and each of them from directly or indirectly infring-
ing in any of the claims of reissue patent Re 27,111 during
its term, and from offering or advertising to do so and
from aiding or abetting or in any way contributing to the
infringement of any of the claims of said patent;
5. Defendant, Basic Incorporated, recover damages
including (a) an amount not less than a reasonable roy-
alty from the Plaintiff, Eltra Corporation, for infringement
of claims 2, 4-7, 11, 14, 16 and 21 of reissue patent Re
27,111 which has taken place since the termination of the
license agreement between the parties, and (b) an amount
for unpaid royalties which accrued under said license
prior to its termination, together with interest on said
amounts computed at the rate of 6 percent per annum
from dates to be fixed by court;
6. The amount of said damages to be paid by Plain-
tiff, Eltra Corporation, to Defendant, Basic Incorporated,
shall be trebled;
7. Defendant, Basic Incorporated, recover from
Plaintiff, Eltra Corporation, a reasonable sum to cover
its attorney's fees and expenses in the defense of this
action;
8. The Defendant, Basic Incorporated, recover from
the Plaintiff, Eltra Corporation, its costs and disburse-
ments in this action to be taxed by the Clerk;
9. An accounting be conducted, at a date to be or-
dered by the Court, for the purpose of fixing the amount
of the damages and attorney’s fees and expenses due here-
under; and
10. The injunction and accounting herein ordered
shall be and hereby are stayed pending the disposition of
D-3
appellate proceedings herein, conditioned upon (a) such
appellate proceedings being diligently prosecuted by the
Plaintiff, Eltra Corporation, and (b) the posting with the
Clerk of the Court within ten days hereof of a supersedeas
bond in the sum of $1,000.00.
Dated at Toledo, Ohio, this 6th day of April, 1977.
/s/ DON J. YOUNG
United States District Judge
Approved as to form:
/s/ FRANCIS X. GORMAN
Attorney for Defendant
/s/ JOHN C. PURDUE
Attorney for Plaintiff
E-1
>
atent mice
Appendix E
y’
2. acd dl
Reissued Mar. 30, i971
27,111
PTCH-LONDED REFRACTORY COMPOSITION
Roger E. Wilson, Silver Spring, Md., assignor to
Basic I , Cleveland, Obio
Original No, 3,236, date? Feb, 22, 1966, Ser. No. 5
187,188, Apr. 13, 1962. Application for reissue Mar.
19, 1969, Ser. No. 822,075
Int. Cl. CO4b 35/04, 35/52
U.S. Cl. 106—56 8 Claims
Matter enclosed in heavy brackets [ ] appears in the
original patent but forms no part of this reissue specifi-
cation; matter printed in italics indicates the additions
made by reissue.
ABSTRACT OF THE DISCLOSURE
A pitch-bonded refractory composition having high
strength and increased density comprising basic refractory
particles, about 4% to about 10% by weight based on the
weight of the total admixture of a carbonaceous material
to hind said particles together, and approximately 0.5 to
about 10% by weight based on the weight of the total ad-
mixture of a finely divided carbon black, at least a part of
said carbon black being thermal black.
20
25
The present invention relates to a bonded refractory
and, more particularly, to a carbon-bonded dead-burned
refractory having improved physical properties for use at
elevated temperatures.
The change within the steel producing industry from
the open-hearth process of making steel to the relatively
new basic oxygen steel-making processes bas made de-
mands upon the refractory industry for new and improved 35
furnace lining materials, Preformed brick or block re-
fractories and ramming mixes compounded from dead-
burned granular materials such as dead-burned dolomite,
dead-burned magnesia, or mixtures thereof, and bonded
with a carbonaceous binder obtained from coal-tar pitch
bave been used as the refractories for these new basic
oxygen converters and for other steel-making furnaces.
Ever increasing demands, however, by the steel producers
for increased furnace life of these pitch-bonded refractory
mate-zials have necessitated the continued improvement of
such refractories.
The use of coal-tar pitch as a carbonaceous binder
capable of undergoing a pyrolytic decomposiiion to form
a carbon bond for various high-temp e-resi
products has long been practiced in certain fields of
manufacture and is curreatly being used in the production
of specialized refractory materials. In accordance with
the present invention, substantial improvements in the
furnace service life of these pitch-bonded granular basic
refractories, such as dead-burned dolomite or dead-burned
magnesia, can be made by incorporating relatively small
amounts of carbon black into the granular refractory
formulation.
It is, therefore, a principal object of the present inven-
tion to provide an improved method of forming a bonded 60
refraciory and the refractory produced thereby.
Another object is to provids an improved method of
formirg a green, unfired pitch-bonded basic refractory,
which may be stored as such if desired, and Jater baked
pyrolytically to decompose the pitch and form a carbon-
bonded refractory.
A further object is to provide an improved coal tar
pitch-bonded basic refractory composed, for example, of
dead-burned dolomite, dead-burned magnesia, or mixtures
thereof which may be used us a ramming mix.
A still further object is to provide an improved ramming
mix as just described which can be molded or pressed into
45
50
2
various desired shapes for use as brick or block in a basic
oxygen converter or other steel producing furnaces
Other objects of the invention will become apparent as
the description proceeds.
To the accomplishment of the foregoing and related
ends, the invention consists of the features hercinafter
fully described and particularly pointed out in the claims,
the following disclosure describing in detail the invention,
such disclosure illustrating, however, but one or more of
the various ways in which the invention may be practiced.
In carrying out the present invention, refractory parti-
cles are admixed with a carbonaccous material, capable
of pyrolytically decomposing to form a carbon bond, and
also with a relatively small amount of carbon such as
carbon black, The admixture may be used in this form,
for example, as a ramming mix. Usually, however, the
admixture is shaped such es by pressure into a desired
form, for instance, a brick or block form. A “green”
ramming mix or shaped article may either be used immedi-
ately or stored and later employed for the repair or lining,
respectively, of a furnace wall or bottom. By subsequently
bringing the furnace to an operating temperature, the
carbonaceous material in the mix or brick is pyrolytically
decomposed or “coked” and forms a carbon bond within
the mix or brick as installed in the furnace. If desired,
especially in the case of the brick, the coking can be per-
formed separately prior to installation in a furnace.
In both the green and coked or baked states, the pres-
ence of the carbon black has been found to improve the
physical properties of the mix or blend particularly as to
oxidation, crushing strength (bond strength), and density.
The exact function of the added powdered carbon material
in improving the bonded refractory is not clearly known.
The introduction of carbon into the granular refractory
formulation apparently increases the binding properties of
the pitch bond and as a result reinforces the structure of
the carbon bond formed by the pyrolytic cracking of the
pitch.
Refractory particles employed in accordance with the
present invention are desirably dead-burned refractories,
that is, those that have been calcined to a dense sintered
state. Preferably basic refractories are employed such as
dead-burned dolomite, dead-burned magnesia, and mix-
tures thereof.
As indicated, the carbonaceous material employed is
one which leaves a carbon residue when subjected to
pyrolytic decomposition or cracking. This may be at
temperatures ranging from about 700° F. to about 1850°
F. Within this temperature range, a carbon film is formed
around and between the granular refractory particles by
the cracking of the carbonaceous material to bond the
particles one to another, The carbon film formation
typically takes place inwardly from an exposed surface
of the refractory, for example, by the heat of a steel-
making reaction within a basic Oxygen converter or
furnace, the inward extent depending on conditions of
exposure. Evaluation of any pitch-borded refractory is,
therefore, performed on specimens which have been
heated to undergo pyrolytic decomposition or “co\ing” of
the pitch binder, using the compressive crushing strength
of the resulting refractories as a criterion of comparison.
Preferably, the carbonaceous materials employed are
pitches and especially those derived from coal tar, For
example. such coal tar pitches have softening points of
about 40° C. to about 100° C. as measured by the
A.S.1.M. Method of Test D-36-26. In some instances
coal tar itself is used for bonding such refractories, al-
though usually coal tar pitch is preferred as it is essen-
tially free of the lower boiling constituents ordinarily
found in coal tar. Some of the bituraimous asphalts may
be used provided they have the property of decomposing
E-2
27,111
3
pyrolytically to form a substaatial carbon residue. Many
esphalts do not have this property but rather distill in
their entirety upon heating and therefore are not usable.
Consequently, the coal tar pitches are more generally used
biacks, and the like. Some of these blacks are also known
as impingement blacks. Further, such
L)
in U.S. Patent No. 2,527,595 to Swallen et al. Both the 30
text end patent citations are hereby incorporated by
reference
Carbon blacks comprise a group of extremely
divided types of non-crystalline carbon composed
ticle sizes at sud-grinding levels. These blacks
i
:
&
;
:
k
g
g
i
inl
i
B
t
ri
‘
However, there are some carbon blacks also
i
3
3
i
3
i
7
gee
a
a non-oxidizing thermal
?
i
F
i
3
E
&
i
Fs
into porous masses. 50
The carbon blacks which have been found to be most
useful in practicing the invention have properties within
the following ranges:
Average particle diameter... 20 w 500 millimicrons. 55
Surface area.........---. 5 to 375 square meters per
gram.
Volatile content.......... Less than 14% by weight.
Fixed carbon............ 85 to 99.5% by weight.
The following Table A lists specific kinds of carbon 60
blacks which have been used:
graphs of the blacks. Tue oil absorptions were measured
by the “Cabot Coherent Ball Method” using linseed oil.
This value is a relative measure of the structure of the
black and oil needed for its saturation, The volatile con-
tent of a black is related to the amount of chemisorbed
oxygen which is present on the carbon surface. The pH
value of carbon black is determined with 2 glass electrode
in a carbon black-water sludge, A.S.T.M. designation:
D-1512. Under these condtions the pH is relaied to
the amount of carbon oxygen complexes on the surface
of the carbon black. A relatively high amount of these
complexes results in a low pH. The apparent density
indicates the amount of storage or shipping space a given
black will occupy.
Carbon blacks of the type shown in Table A are manu-
factured by the Cabot Corporation of Boston, Massachu-
setts, and sold under the following trade names: Elf,
Mogul, Vulcan, and Sterling. Various grade designations
may accompany such trade names.
The amount of carbonaceous material such as coal tar
pitch used to bond refractory particles is important in
that higher contents of pitch and the like provide better
coked strength and better of the refractory
in a furnace. However, the increased amounts of pitch
likewise increase the difficulty of manufacture and storage
of the bonded refractory.
For example, if too much pitch is used, the mixed par-
ticles and pitch are difficult to handle because the mixture
becomes so sticky. Further, such a mixture does not
retain a pressed shape. Since the coal tar pitch is molten
at this stage, the particles-pitch mixture is too fluid to han-
dle if excess pitch is present. The mixture behaves as
a plastic deformable glob which does not hold its shape.
Also when released from a mold, the pressure decrease
tends to result in cracks. On the other hand, if the mold
parts or other apparatus used to impart the shape is main-
tained in a closed position until the pitch cools and sets,
not only does sticking of the refractory to the mold parts
result, but the overall process becomes much too slow for
commercial application. Accordingly, for a given refrac-
tory there is a maximum pitch tolerance or capacity which
balances the extremes of sufficient pitch to provide a de-
sired bond and a mixture which retains a shape imparted
by pressing.
As one modification of the present invention, it has been
found that a blend of two particular carbon blacks, em-
ployed as an additive as herein disclosed, increases the
pitch tolerance or allowable maximum capacity, other
factors being the same. Such a blend inciudes a high oil
absorbing carbon black and a thermal carbon black,
especially a fine thermal black. This blend provides the
greatest increase in green and coked strength of a refrac-
tory over any other carbon black used separately.
The high oil aborbing black may be either a long flow
channel carbon black or a conductive oil furnace carbon
black. In either case, an absorptivity of at least 85 pounds
of oi] per 100 pounds of black is preferred. Normally
the thermal carbon blacks, which are of relatively coarser
particle size, are desirable from the standpoint of impart-
ing strength. However, thermal blacks are the poorest
from the viewpoint of pitch tolerance and may even
TABLE A
O00 Volatile Fixed |
area, Diameter sbsorption, content, nsity,
Carbon type Mig. [minim 100 Pix. percent percent pu (Fue
Regular ehonnel............ 105-140 m2 125-130 ao 6.0 +s woe
Diedium flow channel. ...... 70 3 105-130 7-7.6 nso 40 i
law flow chrannel........... MS WO us Lael 13-13 87-8 36 n
Consurctive ot! furnace. 125-210 2-7 130-250 Ls20 3.5 eas 6
Olt fnpmare. . 2... enc we cn see 15 ma wis Ls asm a9
Cas Narnate..... .......00-- 00s aw» 60-0 70-80 10 20060510 ”
TRacacace secanvccoesce 13 180-470 DB-» as 7s so 31-33
The surface areas listed were determined by the niiro-
gen adsorption using the method of Brunaver-Emmett-
Telier, krown in the art. The particle diameters are
arithmetic mean diameters measured from electron micro-
decrease pitch tolerance. Consequently, the stated blend
is not only efficacious in providing a desirable strength
but also in raising the pitch tolerance of the refractory.
The defined blend of carbon blacks may comprise from
E-3
27,111
5
about 1:2 to 2:1 parts by weight of the high oil absorbing
black to the thermal black, respectively, or about 66% to
about 33% by weight thermal black, Preferably equal
parts by weight of cach are used, It is thought that the
high oil absorping black contributes the enhanced pitch
tolerance, while the thermal black contributes the requisite
strength, such that there is a true synergistic cooperation
between the two. Increases in permissive pitch content
of one percent to 1.5 percent by weight have been possible
with the use of the defined blend without being con-
fronted with any of the problems usually attendant such
increased use of pitch.
In general, dead-burned basic refractory particles of
the type indicated are first blended with a carbon black.
Any amount of a carbon black provides some ad-
vantage, but usually an amount ranging from about 0.5
percent to about ten percent is used, based on the weight
of the total admixture to be ultimately prepared and pref-
erably about one percent to about three percent. The
blend or mixture is then heated from about 225° F. to
about 325° F., as an example, and then admixed with
the carbonaceous material such as coal far pitch in an
amount from about four percent to about 10 percent by
weight, also based on the weight of the total admixture.
The pitch is preferably preheated to a temperature which
renders it only sufficiently fluid to mix readily with the
refractory particles.
If the final admixture is not to be used as a ramming
mix, it is molded into a desired shape, such as a brick
shape, by pressing at high pressure, for example, 10,000
p.s.i., and/or by intensive tamping or vibration. After
pressing, the shaped refractory is cooled on suitable flat
supports to such a temperature that the pitch stiffens and
the refractory is not subject to deformation upon han-
diing. Upon being placed in the furnace or other place
of use, the coal tar pitch is converted to a tough and
strong carbon bond by rapidly heating the refractory to
temperatures of the order of 2000° F. or even to work-
ing temperature of the order of 3000° F. As the tempera-
ture of the brick mass passes through the zone of 500°
F. to 1800° F. the coal tar pitches are cracked or “coked™
by pyrolytic reactions such as take place in the cracking
towers for petroleum or as occurs in the manufacture
of carbon electrodes which also have an initial binder of
coal tar pitch. The pyrolytic reactions cause the tar to de- 4
compose into a light volatile fraction which distills off
leaving a residual carbon material which provides the
bond.
If desired, the brick may be “coked” prior to use, by
being baked in any suitable furnace provided with a
non-oxidizing atmosphere. By heating, for instance, to
700° F. to 1800° F. over a period of 12 to 72 hours,
depending upon the size of the shape, a partial or com-
plete pyrolytic decomposition of the pitch is obtained
leaving a residual tough and strong carbon bond through-
out the brick.
In order to demonstrate the invention, the foll 8
examples are set forth for the purpose of illustration only.
Any specific enumeration or detail mentioned should not
be interpreted as a limitation of the invention unless speci-
fied as such in one or more of the appended claims and
then only in such claim or claims.
In these examples, the bond reinforcement obtained
in accordance with the present invention is indicated by
comparing the increase in the mechanical coked crush-
ing strength of specimens containing added carbon against
specimens containing no carbon additive. The data given
in Tables B to E clearly indicate that the added carbon
not only increases the coked crushing strength and coked
density of the refractory specimens, but also enhances
the same properties in specimens which have not been
coked and do not as yet have any carbon bond developed
by pyrolytic decomposition. All screen sizings given are
U.S. Standard; and the indicated percentages are by
weight.
25
oc
50
zu
5
75
Example 1
A mixture of dead-burned dolomite comprising 20
parts by weight of a coarse fraction of which essentially
95 percent passed through a % inch sieve and all of
which was retained on a 12 mesh screen, and 40 parts by
weight of an intermediate sizing of which essentially 95
percent passed through a 6 mesh sieve and essentially all
was retained on a 50 mesh sieve, was heated to approxi-
mately 300° F. and thoroughly mixed. Forty parts by
weight of finely ground dead-burned magnesia, of which
essentially 65 percent passed through a 200 mesh sieve,
was then heated to approximately 300° F. and added
to the mix. This granular refractory aggregate was tem-
pered with a 5 percent addition of a molten pitch binder
having a softening temperature within the range of 80°
C. to 85° C. and thoroughly blended. Test specimens
measuring 3.5 inches in diameter and about 2 inches in
thickness were pressed from the hot (260° F.-280° F.)
batch at 10,000 p.s.i. After cooling to room temperature,
three of the six specimens pressed from each batch were
evaluated in this form, that is, in the “green” state. The
remaining three specimens were heated in the absence of
oxygen and coked completely throughout the body of the
specimens before being measured and compressively
crushed,
A substitution of 2 percent of very finely powdered
carbons of different types was made for the dead-burned
magnesia fines in the above described formulation. The
addition of carbon to the admixture was accompanied
by a commensurate reduction in the amount of magnesia
fines in order to maintain a uniform granulometric dis-
tribution among the comparative samples. The carbon
was first added to the magnesia fines, milled for 0.5 hour
in a pebble mill, the thoroughly blended mix heated to
approximately 300° F., and then added to the heated
granular dolomite fraction for blending and tempering
according to the above described technique. The test
results of the carbon types thus evaluated are given in
Table B.
Example 2
A mixture of dead-burned dolomite comprising 5
parts by weight of coarse granules passing a % inch
sieve but retained on a 0.1875 inch sieve; 22 pasts bv
weight of intermediate sized granules passing 0.18% S inco
sieve but retained on a 6 mesh sieve; and 23 parts by
weight of finely sized granules essentially passing . :?
mesh sieve was heated to approximately 300° F. and
thoroughly blended. Forty parts by weight of heated
dead-burned magnesia fines were added to the mixture
which was next tempered with 4.5 percent of added
molten coal tar pitch binder, having a softening tempera-
ture in the range of 80° C. to 85° C., and thoroughly
blended. Test cylindrical specimens were pressed and
evaluated as described in Example 1.
Substitutions from 1 to 3 percent of a fine thermal
carbon black were made for a like amount in the dead-
burned magnesia fines. The carbon addition was, as
described in Example 1, first made to the magnesia fines,
milled, hented, then blended as described. The test re-
sults for these substitutions are given in Table C.
Example 3
Using the same granular refractory composition and
procedure of Example 2, including the 2 percent carbon
substitutions for magnesia fines, the percentages of coal
tar pitch were increased. Three different carbon blacks
were used in substitution for the magnesia fines. The
compurison of test results for the resulting test specimens
showing the improved properties of the added carbon
containing specimens over those containing no added
carbon for various percentages of pitch are given in
Table D.
E-4
27,111
Example 4
It was indicated in Example 3 and in Table D that
an increase in the pitch content increases the strength
of the :efractory, but not as markedly as the substtu-
tion of 2 percent fine thermal black for the fine fraction of §
a granular refractory mixture. The attempts made to in-
crease the pitch conteni of such mixes produced unwork-
able, excessively plastic, masses. It was found, however,
that small additions of regular channel black carbon to
granular refractory mixtures containing fine thermal car- 10
bon blacks enable the addition of up to 6 percent pitch,
thereby giving the refractory the benefits of an increased
pitch content.
Two parts by weight of a carbon bluck were added to
the mognesia fines, milled for Ys hour, heated, blended
with the dead-burned dolomite granules, tempered with
pitch, and pressed into cylindrical test specimens as de-
scribed in Examples | through 3. The carbon black of
the present example consisted of fine thermal carbon
black, regular channel carbon black, or mixtures thercof.
A conductive oil furnace black could have been used in
place of the regular channel black. The percentage of
pitch added was varied from 4.5 to 6 percent.
Table E gives the test results of multiple carbon type
additions for a granular refractory mixture tempered
with varying amounts of coal tar pitch.
TABLE B.—CRUSHING STRENOTH AND DENSITY MEASUREMENTS
[Green and coked speetmens 3)4” dia. 1 2” thick pressed at 5 tous per square inch}
Formulation
Dead-burned dolomite, coarse...
Dead burned dolomite, Spterenetiate.
eee a ae) | a
Green Coked = Green Coked
Long Flow Channel Black...
$0 i773 163 7,100 3, 900
2 4&0 176 17010, 700 ¥, oO
2 60 176 169 9, 0 6, 00
2 40 7s 169 8, 000 6,400
2 So im 167 6, 700 5,00
*“Encye’
of Chemical Technology,” Kirk sod Othmer, The Interscience Encycio-
pedis, Inc., New York, 1049, volume 3, pages
In this example, a mixture of dead-burned dolomite
consisting of 15 parts by weight of coarse granules sieved
to pass a ¥ inch screen but retained on a 0.1875 inch
screen; 22 parts of intermediate sized grains sieved to 35
pass a 0.1875 inch screen but retained on a 6 mesh
screen; and 23 parts of the batch composed of sized
granules essentially passing a 6 mesh sieve was heated
to approximately 300° F. and thoroughly blended.
Fineiy divided dead-burned magnesia comprising 38 parts 40
of the batch, essentially 65 percent of which passed a
200 mesh sieve, was heated to about 300° F. and added
to the dolomite fraction.
The adhesive properties of the coal-tar pitch binder
for the refractory granules also seem to be increased
by the addition of the powdered carbon. Refractory
specimens which have not been coked generally show
a marked improvement in the green compressive crush-
ing strength over similar specimens to which no cart >a
additions have been made. As shown in Table C, car-
bon additions from 1 to 3 percent substantially increase
the desirable properties of the pitch-bonded refractory.
But up to 10 percent carbon may be added without dele-
terious results to the refractory.
TABLE C.—CRUSHING STRENGTH AND DENSITY MEASUREMENTS
[Green and coked specimens 3}4" dia. x 2” thick pressed at 5 tons per square inch)
Formulation: b ries = t
Se OUI CIN 8. wana tpiunecssdasoustabeceginbicues si, iS
Pead-burned dolomite, intermediate... oo... ccc cc ccnenecneeneesncece u
Dead ned dok pecoweccccccncccccncccescecccoescesoccoecsesesess 23
rm EDs cenceveeeee °
Carbon addition............0........... ht Oe aE oan 40
Density, Ibs /eu. Crushing strength,
ft. 103.34. in.
Percent Percent oe
Carbon type carbon pitch Green Coked Green Coked
None—control a0 45 179 7 7, 700 ?
Fine thermal........ 1.0 a6 183 174-10, 800 io
las edhsoe 1.5 4.5 1” 7 12, 600 7,400
| eae 20 45 186 178 12, 80 10,173
in upaeiubeteséduhaebesee as as ss 177 14, 400 8,490
Do. 30 45 186 178 11, @O0 9,70
TABLE D.—CRUSHING STRENOTH AND DENSITY MEASUREMENTS
[Green and coked specimens 3)4” dia. x 2” thick pressed at 5 tons per square inch)
Formulation:
tead-Lurned dolomite, coarse.
dead-Lurned dolem!t ;
ti
Carbon type
None—control. ...
Fine thermal....
None-cuutrot.
Reg. channel blac
None—control. ...
flow channel...
E-5
27,111
9
10
TADLE FE. —CRUSHING STRENGTH AND DENSITY MFASUREMENTS
Green and coked specimens 3)4" dia. x 2 thick pressed at 10,000 Ibs. per square inch)
Forr
Percent
weight
Density, !us/eu. Crushing strength,
Ki. Tbs./sq. in
Percent Percent
Carbon type carbon pitch Green Coked = Green Coked
Fine thermal 28 45 185 177 14,000 9, 800
De... se cnas Le } 45 185 17611, 700 9, 80
Fine t kel as 185 177° 13,000 11, 000
20 £0 1st 17% 10,700 7, 200
Fine thermal 3 40 186 178 14,4008, 800
Fine thermal. . Ht 4 50 1M 17713, 700 9, BO
th mye 0s
Fine Saty + Hn 50 13 1751, 800 f 700
= Le} 8S = 8d ATS 12,700 40, 300
ine +? } au 183 17% = 13,700 9, 700
The binder of carbonaceous material is not per se con-
sidered novel in this improved pitch-bonded refractory
composition, but as its concentration does influence the
carbon bond formation, a percentage by weight of 4 per-
cent to about 10 percent is preferably used. Increasing
the binder pitch content improves certain properties of
the refractory, but powdered carbon additions to these
formulations increase the desired properties above those
of similar pitch content. Table D'compares various pitch
concentrations with and without carbon additions.
The nature of the carbon bond is also influenced by the
parent carbonaceous material selected for the refractory
binder. The pitch binder may be selected on the basis of
its softening points, such as
41-44° C.
80-85" C.
90-95° C.
100-105* C.
based on the desired end result, but a pitch having a soft-
ening point between 80-85° C. is preferably used.
Other forms embodying the f of the in
may be employed, change being made as regards the
features herein disclosed, provided those stafed by any
of the following claims or the equivalent of such features
be employed. a ;
I, therefore, particularly point out and distinctly claim
my invention:
Ll. In the method of admixing basic refractory par-
ticles with sufficient carbonaceous material capable of
pyrolytic decomposition selected from the group consist-
ing of pitch, coal tar and bituminous asphalt to bind said
particles together; the improvement which consists of add-
ing to the admixture approximately 0.5 to 10 percent by
weight, based on the weight of the total admixture, of
powdered carbon black of non-crystalline structure.J
2. In the method of forming a shaped, [green] grain
refractory article by admixing dead-burned basic refrac-
tory particles with sufficient pitch capable of pyrolytic de-
composition to bind said particles together and then shap-
ing the admixture by pressure; the improvement which
consists of adding approximately 0.5 to 10 percent by
weight, based on the weight of the total admixture, of fine-
ly divided carbon black to the admixture prior to such
shaping £.] to produce such a shape of increased density
and crushing strength, such carbon black having an aver-
age particle size of about 20 to about 500 millimicrons and
a surface area of from about 5 to about 375 square meters
per gram, at least one third of the carbon black being
thermal black having an average particle diameter o
about 180-470 millimicrons and a surface area of “he
py Square meters per gram,
(3. In the method of admixing dead-burned basic re-
fractory particles with sufficient coal tar pitch to bind
said particles together and then heating the admixture
pyrolytically to decompose the pitch and form a carbon
bond for the particles; the improvement which consists of
35 adding to the admixture prior to the heating approximately
0.5 to 10 percent by weight, based on the weight of the
total admixture, of powdered carbon black to improve the
properties of the resulting bonded refractory.]
4. In the method of bonding dead-burned basic refrac-
40 tory particles one to another by admixing such particles
with about 4 percent to about 10 percent by weight of the
admixture coal tar pitch and then heating to coke the ad-
mixture and form a bonded mass; the improvement which
consists of incorporating approximately 0.5 to 10 percent
46 by weight, based on the weight of the total admixture, of
powdered carbon black in the admixture prior to heating to
improve the useful life of the bonded mass at elevated
temperatures[.J, swch carbon black having an average
particle size of about 20 to about 500 millimicrons and a
60 surface area of from about 5 to about 375 square meters
per gram, at least one third of the carbon black being
thermal black having an age particle diameter of about
180-470 millimicrons and a surface area of about 6-]3
square meters per gram.
65 & In the method of bonding refractory particles se-
lected from the group consisting of dead-burned dolomite,
dead-burned mugnesia, and mixtures thereof by blending
such particles with sufficient coal tar pitch to bind such
particles together, shaping such blend, and then heating
60 the resulting shape to a temperature sufficient to decom-
pose pyrolytically the pitch and form a carbon bond; the
improvement which consists of adding to the blend prior
to the heating from about 0.5 percent to about 10 percent
by weight thereof finely divided carbon black[.} to in-
65 crease the density and crushing strength of such shape,
such carbon black having an average particle size of from
about 20 to about 500 millimicrons and a surface area of
about 5 to about 375 square meters per gram, at least one
third of the carbon black being thermal black having an
70 average particle diameter of about 180-470 millimicrons
and a surface area of about 6-13 square meters per gram.
6. The method of claim 5 wherein such carbon black is
selected from the group consisting of lamp blacks, chan-
nel blacks, furnace combustion blacks, thermal blacks
75 and acetylene blacks.
E-6 E-7
27,111 27,111
.l 12 13 14
7. The method of claim $ wherein such carbon black selected from the group consisting of dead-birned dolo- 22. The method of claim $ wherein such carbon black 3,070,449 12/1962 Davies etal. _......... 106—58
has [properties within the following ranges: _ ee age and mixtures thereof by comprises chout 66 percent by weight to about 33 percent 3,210,205 10/196S Shurtz ............-. 106—58
. a nding such particles wiih sufficient coal tar pitch tu by weight thermal black. ZC; : “re
Petraes — Gametr =a yyy enlineniovene. bind said particles together, shaping such blend and then “ FeEanot REPERENCES
piven titadhianlenaiel square meters per A ; > 118,590 6/1944 Australia _....... ... 106—56
gram. 5 heating the resulting shape to @ temperature sy cat to References Cited 6 614.742 2/1961 Canada 10636
Volatile content ......... Less than 14% by weight, i cae a ee Of edding a sew The following references, cited by the Examiner, are of eA ro rem.
MG GRUER aosncenccanas \ i - in the patented file of this patent or the inal ‘SF i ;
Fixed carbon 85 to 99.5% by weight} prior to heating from about 1 percent to about 3 percent rooney n pa of this patent or origina JAMES F. POER, Primary Examiner
a volatile content of less than 14 percent by weight and a by weight thereof of finely divided carbon black having UNITED STATES PATENTS U.S. Cl. X.R.
fixed carbon content of 85 to 99.5 percent by weight. 10 Properties within the following ranges: 2.330.418 9/1943 Gitzen 106—-56 10 106—58, 63
8. In the method of bonding refractory particles averace particle diameter ... 120 to $00 millimicrons. 2.563,285 8/1951 Shea et al. .......... 106—56
selected from the group consisting of dead-burned dolo- Surface area 6 to 13 square meters per ey cl ee Le, eee re Se
mite, dead-burned magnesia and mixtures thereof by blend» =~ Onn gram
ing such particles with sufficient coal tar pitch to bind : .
such particles together, shaping such blend, and then heat- 1% } eae ag webnsompnae yy tee i
ing the resulting shape to a temperature sufficient to de-
compose pyrolytically the pitch and form a carbon bond;
the improvement which consists of adding to the blend
prior to the heating from about 0.5 percent to about 10
percent by weight thereof finely divided carbon black
CThe method of claim $ wherein], such carbon black
Coonsists] consisting essentially of a blend of high oil
absorbing carbon black and a thermal carbon black.
9. In the method of bonding refractory particles
selected from the group consisting of dead-burned dolo-
mite, dead-burned magnesia and mixtures thereof by
blending such particles with sufficient coal tar pitch to
bind such particles together, shaping such blend, and then
heating the resulting shape to a temperature sufficient to
decompose pyrolytically the pitch and form a carbon bond;
the improvement which consists of adding to the blend
prior to the heating from about 0.5 percent to about
10 percent by weight thereof finely divided carbon black
(The method of claim $ wherein}, such carbon black
Consists} consisting essentially of a blend of a high oil
absorbing carbon black baving an oil absorption of at
least 85 pounds of oil per 100 pounds of black and a
thermal carbon black, said carbon black being present
within a weight ratio of 2:1 to 1:2, respectively.
10. In the method of bonding refractory particles
selected from the group consisting of dead-burned dolo-
mite, dead-burned magnesia and mixtures thereof by
blending such particles with sufficient coal tar pitch to
bind such particles together, shaping such blend, and then
heating the resulting shape to @ temperature sufficient to
decompose pyrolytically the pitch and form a carbon bond;
the improvement which consists of adding to the blend
prior to the heating from about 0.5 percent to about 10
percent by weight thereof finely divided carbon black
(The method of claim 5 wherein], such carbon black
Cconsists} consisting esseatially of a blend of substantially
equal parts by weight of a high oil absorbing carbon
biack selected from the group consisting of a conductive
oil furnace carbon black and a long flow channel carbon
black having an oil absorption of at least 85 pounds of
oil per 100 pounds of black, and a fine thermal carbon
black.
11. In the method of bonding refractory particles
selected from the group consisting of dead-burned dolo-
mite, dead-burned magnesia, and mixtures thereof by
blending such particles with sufficient coal tar pitch to
bind said particles together, shaping such blend under
pressure, and then beating the resulting shape to a tem-
pernture sufficient to decompose pyrolytically the pitch
and form a carbon bond, the improvement which consists
of adding to the blend prior to shaping approximately 0.5
to 10 percent by weight, based on the weight of the total
admixture, of powdered carbon black containing particles
having a diameter within the range of from about 20
millimicrons to about $00 millimicrons{.J fo increase the
density and crushing strength of such carbon bonded
shape, at least one third of such carbon black being
thermal carbon black having an average particle diameter
within the range of about 180 to ahout 470 millimicrons,
J (12. In the method of bonding refractory particles
a)
o
C13. A refractory article of manufacture consisting es-
sentially of basic refractory particles, sufficient carbon-
aceous material capable of pyrolytic decomposition se-
lected from the group consisting of pitch, coal tar and
bituminous asphalts to bind said particles together and
approximately 0.5 to 10 percent by weight, based on the
weight of the total admixture, of finely divided carbon
black of non-crystalline structure.J
14. A refractory article of manufacture consisting es-
sentially of basic refractory particles, carbon black and a
pyrolytically decomposed carbonaceous material selected
from the group consisting of pitch, coal tar and bituminous
asphalts, approximately 0.5 to 10 percent by weight, based
on the weight of the total admixture, of said carbon black
being present prior to such pyrolytic decomposition[£.},
said refractory article having increased density ard crush.
ing strength and said carbon black having an average
particle size of from about 20 to $00 millimicrons and a
surface area of about $ to about 375 square meters per
gram, at least one third of such carbon black being thermal
black having an average particle diameter of about 180-
470 millimicrons and a surface area of about 6-13 square
meters per gram.
15. The method of claim 11 in which such powdered
carbon black consists essentially of a blend of a high oil
absorbing carbon black and a thermal carbon black, said
carbon black being present within the weight ratio of 2:1
to 1:2 respectively.
16. A pitch-bonded refractory having high strength and
increased density comprising
basic refractory particles,
sufficient carbonaceous material selected from the group
consisting of pitch, coal tar and bituminous asphalis,
capable of pyrolytic decomposition, to bind said par-
ticles together, and
approximately 0.5 to 10% by weight, based on the
weight of the total admixture, of finely divided carbon
black of noncrystalline structure, said carhon black
having an average particle size of from about 20 to
500 millimicrons and a surface area from about $ to
about 373 square meters per gram, at least on third
of the carbon black being thermal carbon black hav-
ing an average particle diameter of from about 180
to about 470 miilimicrons and a surface area of about
6-13 square meters per gram.
17. The refractory of claim 16 in which said finely
divided carbon black consists essentially of a blend of a
high oil absorbing carbon black and said thermal carbon
black.
18. The refractory of claim 17 whercin the ratio of
high oil absorbing carbon black to thermal carbon black
is in the range of about 2:1 to about 1:2 respectively.
19. The refractory of claim 17 wherein said oil ab-
sorbing carbon black has an oil absorption of at least
about 85 pounds of oil per 100 pounds of carbon black,
20. The refractory of claim 19 including about 4 to
about 10% of carboraceous material.
21. The refractory of claim 16 wherein the carbon
black addition is substantially all thermal black.
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