# Petition — Reynolds Metals Co. v. Aluminum Co. of America > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385006_1990%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition - **Published:** January 1, 1980 - **Citation:** 446 U.S. 989 ## Text eee... Supreme Court, Us a7 FILED APR 25 1980 IN THE Supreme Court of the Anited States OCTOBER TERM, 1979 no. _€9-162] REYNOLDS METALS COMPANY, Petitioner, Vv. ALUMINUM COMPANY OF AMERICA, AND NATIONAL CAN CORPORATION, Respondents. PETITION FOR A WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE SEVENTH CIRCUIT REYNOLDS METALS COMPANY Petitioner JOHN W. MALLEY WILLIAM T. BULLINGER SHERMAN O. PARRETT CUSHMAN, Darsy & CUSHMAN 1801 K Street, N.W. Washington, D.C. 20006 Phone: (202) 861-3000 Of Counsel JOHN F. C. GLENN REYNOLDS METALS COMPANY 6601 West Broad Street Richmond, Virgina 2326? Attorneys for Reynolds Metals Company PRESS OF BYRON S. ADAMS PRINTING, INC., WASHINGTON, D.C. TABLE OF CONTENTS PAGE OPINIONS AND PETITIONER’S APPENDIX BELOW ...... | oe eg, EE EES RC 2 eee eee 2 CONSTITUTIONAL, STATUTORY, AND REGULATORY Nd celts vec cces 3 CONCISE STATEMENT OF THE CASE................ 5 ee 8 There Has Been An Alarming Decline Of In- ) novation And Industrial Productivity In The I oi Se ee ee ol. 9 : The Power And Responsibility To Promote In- j novation Resides Lastly With This Court...... 9 i The Bylund Patents Embody Substantial In- ‘ novation Which Was Copied By Respondents { And Adopted By The Whole Industry ........ 10 4 The Court Of Appeals Failed To Follow Its Appellate Review Function.................. 1] Ce oc apesenc 13 There Is An Alarming Decline Of Innovation OES or ee 13 The Innovation And The Advance In The Art Made By The Bylund Inventions Was Over- ee Re i a ie ks 17 Alcoa Copied The Bylund Inventions As Soon As It Heard Of Them And Publicly Claimed BO NIE SE ana as ey 19 There Is Public Perception Of A Trend Of Ex- cessive Hostility To Patents In The Circuit Courts Of Appeal Which Will Be Intensified By The Present Decision ii Table of Contents Continued PAGE The Failure Of The Court Of Appeals To Even Mention The Massingill-Grigorenko Patent, 3,509,754 Suggests Some Serious Misunderstan- ding Of The Real Issues Of This Case ........ 22 The Beverage Can Program Of Metal Flo Was Experimental And Was Abandoned As A EMSS ola ce Sie NSS COTES Sub tho 26 The Decision Of The Court Of Appeals Is Anomalous In Stating That Metal Flo Was An Anticipation When The Trial Court, The Pa- tent Office, And Those In The Industry MPMI G NS 5s tke o 0 CARL ee ks 29 The Court Of Appeals Improperly Engaged In A De Novo Redetermination Of Facts ........ 30 Rule 52(a) Of The Federal Rules Of Civil Pro- cedure Recognizes An Important Distinction Between Trial And Appellate Courts Which The Seventh Circuit Has Ignored............. 31 Disregard By Appellate Courts Of Rule 52(a) Encourages Litigation And Expensive Appeals. 33 The Seventh Circuit’s Application Of 35 U.S.C. 102 Is In Conflict With The Intent Of The Statute And In Conflict With The Other CR SCA Lid pedeouas Seas oies s Oereie bee 34 Anomalous Patent Validity Decisions, With Their Divorcement From Reality, Destroy The Faith Of Innovators, Potential Innovators And ESO RW cpt atk tay oR ray Mn Le aa 37 tS” SRY aos Res BS ARR Toe Ret ale Ae MPT RR Tee 38 ili TABLE OF AUTHORITIES CASES PAGE Canron, Inc. v. Plasser American Corp., ____ F.2d —___., 203 U.S.P.Q. 641 (4th Cir. 1979) ....... 36 Coffin v. Ogden, 85 U.S. 120 (1874) ............. 28 Graham v. John Deere, Co., 383 U.S. 1, 6 (1966).. 10 35, 38, 39 In Re Hughes, 345 F.2d 184 (C.C.P.A. 1965)...... 35 Jones v. Vefo, Inc. ___ F.2d ___, 204 U.S.P.Q. ee CY EPPO coos eas Stee ka tee Cabewls 36 Ling-Temco-Vought, Inc. v. Kollsman Instrument Corp., 372 F.2d 263 (2nd Cir. 1967).......... 36 Lyon v. Bausch & Lomb Optical Co., 224 F.2d 530, FE: SANs SORES SON 55 5 ca EE Aik tbee sos 28 Paeco, Inc. v. Applied Moldings, Inc., 562 F.2d ED Gas MEME o ore Sais b doce ce eneies 36 Pendergrass v. New York Life Ins. Co., 181 F.2d Soe Cte a BO acs Ska eae oh cee hs 33 Reynolds v. Whitin Mach. Works, 167 F.2d 78, 83 Se Sy SO ie ha as HES CKR HORE ew 27 Schroeder v. Owens-Corning Fiberglass Corp., 514 F.2d 901, 904 (Sth Cir. 1978) oe eee 36 Shanklin Corp. v. Springfield Photo Mount Co.,521 F.2d 609, 619 (Ist Cir. 1975)......... 36 Tights, Inc. v. Acme-McCrary Corp., 541 F.2d 1047, 1055-1056 (4th Cir. 1976) .............. 36 Trio Process Corp. v. L. Goldstein’s Sons, Inc., F.2d , 204 U.S.P.Q. 881, 888, ne Cane ae COs se Avis boas bach ee. 33 United States v. Adams, 383 U.S. 39 (1966)..... 10, 28 United States v. Yellow Cab Co., 338 U.S. 338 _ERRENSEREEIN Gch a npiry tiara na ag repo us Or 32 Zenith Radio Corp. v. Hazeltine Research, Inc., Soo st. BOO, 229 CSG ao ieee Sooo ees 31 iv Table of Authcrities Continued STATUTES: PAGE Constitution, Art. I, Section 8 ...... a. 32:9%41. 87. BB Bo We PE hss cokes eels 3, 4, 6, 11, 28, 34, 35, 36 BP Mees UE cavers avubbrolstretebie te 4, 6, 35 Rule 52(a), Federal Rules of Civil Procedure ...... = 4, 11, 31, 32, 38 IN THE Supreme Court of the Gnited States OCTOBER TERM, 1979 i ne Fa REYNOLDS METALS COMPANY, Petitioner, Vv. ALUMINUM COMPANY OF AMERICA, AND NATIONAL CAN CORPORATION, Respondents. PETITION FOR A WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE SEVENTH CIRCUIT Petitioner Reynolds Metals Company (hereinafter “‘Reynolds’’) prays that a writ of certiorari issue to review the judgment and opinion rendered on November 13, 1979, rehearing denied January 17, 1980, by the United States Court of Appeals for the Seventh Circuit! in consolidated cases numbers, 78-1909 and 78-1910, reversing the judgment of the United States District Court for the Northern District of Indiana? finding peti- : tioner’s two patents valid. OPINIONS AND PETITIONER’S APPENDIX BELOW The opinion of the Court of Appeals is reported at 609 F.2d 1218 and is reproduced in the Appendix to this petition, pages la-Sa. The Findings of Fact, Conclusions ' Swygert and Bauer, Circuit Judges, and Grady, District Judge, opinion by Judge Bauer. * Allen Sharp, District Judge. 2 of Law, Opinion and Judgment of the District Court is reported at 457 F. Supp. 482, and is reproduced in the Appendix to this petition, pages 6a-62a. References to petitioner’s Appendix below are designated ‘‘RMA’’, a copy of which has been certified to this Court. Em- phasis throughout is by petitioner unless stated other- wise. JURISDICTION A timely filed petition for rehearing and suggestion that rehearing be in banc was denied by the Court of Appeals on January 17, 1980. This petition for a writ of certiorari was filed within ninety days of that date. The jurisdiction of this Court is invoked under 28 U.S.C. Section 1254(1). QUESTIONS PRESENTED There being an urgent need in the public inverest to halt the decline of innovation and indus’: al productivity in the United States and to restore the incentive for in- novation provided in Art. I, Sec. 8, Clause 8 of the Constitution and the patent statutes, the questions presented are: 1. Is there a trend of undue judicial hostility to patents on the part of the Circuit Courts of Appeal when they consider the effect of prior art on patent validity, especially as evidenced by the recent trend of overruling favorable patent validity decisions of trial courts on the basis of de novo independent redetermina- tion of facts by the Courts of Appeal in violation of Rule 52(a), F.R.C.P.? 2. Is the faith of existing and prospective innovators and investors in the patent rewards for innovation 3 granted under our Constitution decreased by such de novo reviews and is copying of inventions and an excess of expensive patent litigation and appeals thereby en- couraged? 3. Did the Seventh Circuit Court of Appeals, in ig- noring facts as found by the trial judge in this case and substituting its own independent fact finding without discussion of the trial judge’s decision or the evidence and in total disregard for Rule 52(a), F.R.C.P., so far depart from its assigned judicial role as to call for an exercise of this Court’s power of supervision? 4. Did the Seventh Circuit Court of Appeals, in holding petitioner’s two patents invalid as anticipated under 35 U.S.C. 102 on the basis of prior work which had been found by the trial court to be significantly dif- ferent from the patent claims, improperly apply 35 U.S.C. 102 in contravention of its own terms, contrary to the actual evidence about that prior work from those working in the industry, and in contravention of the in- tent, purpose and standard of Article I, Section 8 of the Constitution, which the patent laws are intended to im- plement? CONSTITUTIONAL, STATUTORY, AND REGULATORY PROVISIONS INVOLVED Article I, Section 8 of the Constitution, in here per- tinent part provides: “The Congress shall have Power*** * * * To promote the progress of science and useful arts, by securing for limited times to authors and inven- tors the exclusive right to their respective writings and discoveries;—’’ “ Title 35, United States Code, Section 102, in here pertinent part provides: ‘A person shall be entitled to a patent unless— (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for pa- tent in the United States... * * * (g) before the applicant’s invention thereof the in- vention was made in this country by another who had not abandoned, suppressed or concealed it. Title 35, United States Code, Section 103, provides: ‘“‘A patent may not be obtained though the inven- tion 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 in- vention 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.”’ Rule 52(a) of the Federal Rule of Civil Procedure, in here pertinent part provides: ‘‘Findings of fact shall not be set aside unless clear- ly erroneous, and due regard shall be given to the opportunity of the trial court to judge of the credibility of the witnesses.”’ 5 CONCISE STATEMENT OF THE CASE Petitioner Reynolds is the owner of two patents relating to aluminum cans and processes for making cans from certain aluminum alloy sheet invented by Lin- ton D. Bylund, a metallurgist working for Reynolds. The conception and development of these inventions is detailed in the trial court’s opinion at pages 9a-17a. The patent applications, their prosecution, and the patent claims are detailed in the trial court’s Opinion at pages 17a-22a. For several years prior to filing his applications, Bylund had worked on developing an aluminum can that would be competitive in the industry with steel cans. He found that when certain aluminum alloy sheet was made into aluminum cans without the traditional costly intermediate thermal treatments or anneals, great amounts of material and energy were saved. The Bylund inventions were the first practical extra high strength light weight aluminum cans which were made without any thermal treatments, from the cold rolling operations through the high speed can making operations. The time necessary to make aluminum sheet for cans was reduced by over 40 hours. Costly in- termediate anneals were eliminated. The weight of the can was sharply reduced. An entire industry grew using the Bylund inventions in making billions of these cans per year where none were made before. Respondents Alcoa and National abandoned their own efforts to make a competitive new aluminum can and copied the Bylund inventions. Alcoa’s sales of aluminum alloy sheet for drawing and ironing into cans using the Bylund inventions then went from zero prior to 1967 to 235,000,000 pounds in 1974. Alcoa saved ap- 6 proximately one cent for every pound of aluminum pro- cessed by using the Bylund inventions. Alcoa heralded the use of the new high strength aluminum sheet as a major achievement, something that standard textbooks said could not be done. Alcoa filed and received its own patent which emphasized that the use of high strength aluminum sheet without any intermediate heat treatments was a new and unobvious invention, but Alcoa did not contend that it had made this invention before Bylund. No one at trial testified that the Bylund invention was obvious. In fact, the technical manager for all of Alcoa’s aluminum mills candidly testified at trial that the Bylund invention was something that peo- ple skilled in the art thought could not be done. See the trial court’s findings at 27a to 29a. Discovery in this case exceeded three years. Hun- dreds of thousands of documents were examined and the testimony of 51 witnesses was taken. Over 2,500 exhibits were marked by the’ parties. The trial extended from April 3 to April 20, 1978. On April 25, 1978, the trial court held one full day of oral argument by all parties. By invitation of the trial court, the parties submitted over 400 pages of briefs and over 1,000 proposed fin- dings of fact and conclusions of law. After careful consideration of all of the above, Judge Sharp rendered a decision on June 6, 1978, con- sisting of 50 pages containing 37 pages of findings of fact and 63 conclusions of law (pages 6a to 62a). Judge Sharp found, as facts, that Linton Bylund of Reynolds had made outstanding and patentable inventions and that Alcoa (with National) had willfully appropriated these inventions and had infringed the Bylund patents. He found that these inventions were not anticipated under 35 U.S.C. 102 nor obvious under 35 U.S.C. 103 and that the patents were enforceable (pages 47a to 53a). Tet pe eae, ee Eat eae 7 Alcoa and National cited five instances of alleged prior knowledge by others and two publications as rendering the patents in suit invalid. Included therein was the work of Metal Flo and its patent covering same to Massingill and Grigorenko. The trial court found as a fact that insofar as this work related to beverage cans it was incomplete, experimental, and abandoned, (pages 30a, 32a) and that all of this work, whether beverage canS or the large containers called sonobuoys, was the Same as the Massingill patent which was an unconven- tional process involving heat and vibrations and had been rejected as not being anticipatory by the Patent Of- fice, (page 33a). The trial court concluded that the Massingill patent does in fact involve annealing, (page 4la). The trial court specifically found that this Metal Flo process was significantly different from the patents in suit (page 58a). On appeal, the Seventh Circuit Court of Appeals rendered a very short opinion, (pages la to Sa), stating that, from its own review of the evidence, it was per- suaded that the Bylund patents were the same as the work of Metal Flo (page < .). The Court of Appeals held that Metal Flo had drawn and ironed certain aluminum containers without thermal treatment (page 4a). These statements by the Court of Appeals are contrary to the unnaminous views about Metal Flo of those actually working in the industry, and directly opposite to the holdings of the Patent Office and the trial court concer- ning Metal Flo. The trial court found it to be a fact that the Metal Flo process did involve heat and annealing in drawing and ironing, and that the Bylund patent claims exclude any such thermal treatments. On petition for rehearing and rehearing in banc, the decision was adhered to. This timely filed petition followed. 8 SUMMARY OF PETITION This petition pleads the cause of innovation and the urgent need for support from this Court to promote the progress of the useful arts as set down in the Constitu- tion. This petition is concerned with the real need to en- courage innovative contributions and to recognize them when they occur, as in this case. It is essential to such encouragement and recognition that due regard be given to the expertise of the Patent Office and of trial courts when patents are allowed and sustained on the facts as developed in a trial. Courts of Appeal simply must be confined to their judicial role of appellate review of the decision below, not a de novo treatment of the case, if innovation is to survive and flourish. American industry, if it is to be encouraged to in- novate, has to have a patent system where innovative advances are judged impartially and fairly, by defined procedures, so that there is faith in the courts’ abilities to properly decide such cases. Unnecessary and costly time consuming litigation now threatens our system of patent incentives because of the failure of Courts of Ap- peal to limit their judicial role to the well defined ap- pellate review for clear error in the trial courts’ findings. Courts of Appeal are simply announcing their own fin- dings of fact, arrived at without the safeguards against error that an in depth trial of the facts provides. In order for invention incentives to be effective, in- dustry has to have the assurance and expectation that patents will not be struck down on the very art con- sidered and rejected as not being anticipatory by the Pa- tent Office and the trial court, as well as by the industry as a whole, and particularly prior art rejected by those very persons actually working in the art at the time the inventions were made. In the present case, the Court of 9 Appeals made de novo findings directly contrary to all of the testimony of those working in the industry. There has been an Alarming Decline of Innovation and Industrial Productivity in the United States There has been an alarming decline in innovation and advances in the useful arts in the United States dur- | ing at least the past decade. This decline has adversely affected the productivity of United States industry, which damages our economy and, as a further result, will weaken us militarily. This has been noted as ex- tremely serious by industrial leaders, government agen- cies and the President. Recommendations for remedial action have been forthcoming from all these sources. A central theme to all the recommendations is that innova- tion and industrial productivity of United States in- dustry will flourish only if there is an incentive provided that justifies the risks and investments involved. The long standing incentive for innovation and in- vestment in innovation in this country is our patent system. The original Constitution itself, with the ap- proval of such farsighted men as Madison and Jeffer- son, provided for this incentive by the granting of patents to promote the progress of the useful arts, Arti- cle I, Section 8, clause 8. : - The Power and Responsibility to Promote Innovation Resides Lastly with this Court The guardian of the Constitutional incentive for in- novation as it is implemented by the Statutes is the Supreme Court of the United States. This Court has held that there is a standard of patentability expressed in id the Constitution, as explained by this Court in Graham v. John Deere Co., 383 U.S. 1, 6 (1966) as follows: ‘*. . .Innovation, advancement, and things which add to the sum of useful! knowledge are inherent re- quisites in a patent system which by constitutional command musi ‘promote the Progress of . . .useful Arts.’ This is the standard expressed in the Con- stitution and it may not be ignored.’’ While the Constitutional standard has most often been mentioned in recent years when our Courts of Ap- peals have struck down patents, that Constitutional standard should apply with equal force to uphold the validity of worthwhile patents on advances which have significantly improved industrial machines and pro- cesses, see United States v. Adams, 383 U.S. 39 (1966). The Bylund Patents Embody Substantial Innovation which was Copied by Respondents and Adopted by the Whole Industry The truly impressive advances which the inventions of the present patents in suit brought to the industry ap- pear in detail in the trial court’s opinion in seventeen numbered paragraphs as well as in more general terms, (see pages 27a to 29a). These advances are of the kind saving energy and materials, which are of critical impor- tance to our country today. Specifically, the inventions eliminate the need for great quantities of heat energy previously used, save substantial time in carrying out the process, and reduce the amount of aluminum necessary to make a satisfac- tory can. Furthermore, these aluminum cans are now being recycled. Conservation of all of these things is vital to this nation, now threatened with materia! and energy shortages. 11 This case involves an innovation which has not only been successful and of wide commercial significance, but one which has supplanted all other competing processes in the manufacture of aluminum beverage cans. Com- petition has been enhanced by making aluminum cans cost competitive with steel cans, and by offering non- exclusive licenses at a low royalty rate to the entire in- dustry. The decision of the trial court painstakingly analyzes the evidence and shows that all of the statutory requirements for patentability—utility, novelty and unobviousness have been met. Further, the trial court’s decision and the evidence on which it is based show that the Constitutional ‘‘standard’’ of invention has been met, in that the progress of the useful arts of making beverage cans has been materially advanced. The Court of Appeals Failed to Follow Its Appellate Review Function We submit that this case was incorrectly decided by the Court of Appeals through its disregard of Rule 52(a), Federal Rules of Civil Procedure, and through its misapplication of Section 102 of the patent statutes. More importantly, we earnestly believe that the decision of the Court of Appeals is a disavowal and contradic- tion of Article I, Section 8, Clause 8 of the Constitu- tion, and of the patent statutes implementing that Con- stitutional provision, in that it discourages the progress of the useful arts. The framers of the Constitution thought it impor- tant to include a provision for patents in the Constitu- tion. Their reasoning appears in the Constitutional pro- vision itself—they intended patents to be an incentive * Alcan Aluminum Corporation sought, after the trial court’s decision, and was granted a license by Reynolds. 12 “to promote the progress of .. .useful arts.’’ The wisdom of that provision has served our country well over much of its history but the Constitutional purpose has become endangered in recent years. The Courts of Appeal have become increasingly un- willing to recognize patents as valid, to an alarming degree. This predisposition to hold patents invalid has even caused the Courts of Appeal to disregard our judicial system’s distinction between trial and appellate courts, and to engage in de novo redetermination of the facts themselves, in order to find patents invalid. We submit that this trend on the part of the Courts of Appeal has weakened the faith of innovators, poten- tial innovators and investors in the patent rewards for innovation, and that it has already caused an alarming decline in innovation in this country in recent years. Moreover, we submit that this trend encourages those who wish to manufacture something, to copy rather than to try to innovate. There is no risk of failure involved in simply copying the proven advances made by others and no investment of time and research is necessary. If called to account for the copying, expen- sive patent litigation has been an all too easy way out. Especially in view of the trend in the Courts of Appeal to retry patent cases by redetermining the facts, appeals by infringers are encouraged regardless of their merit. This adds to the burden of cases that must be dealt with by the courts. Only the intervention of this Court and the applica- tion of its powers of supervision can insure that the Courts of Appeal do apply the proper standards, and that patents are restored to their Constitutional role of promoting progress in science and the useful arts. 13 ARGUMENT There is an Alarming Decline of Innovation in the United States Today, it is well known and a subject ‘of much comment and great concern that innovation in the United States is on the decline and has been, during at least the last decade. This decline has adversely affected U.S. industry and productivity, and has been noted as extremely serious by industrial leaders, governmental agencies, the Congress, and by the President. For example, a recent newspaper editorial under the heading ‘‘Invention in America’’ noted: *‘Although America’s technological leadership has diminished in the past decade, the effect of the slippage has been subtle—a competitive advantage to a Japanese industry here, a German firm there. U.S. primacy has continued, yet the share of U.S. patents granted to foreign residents more than doubled in a recent 15-year period. And the U.S. patent balance declined almost 47 percent between 1966 and 1975, while Japanese patenting, since 1970, increased more thc « 100 percent in every ma- jor industrial category. The situation seems to be worsening. * * * American innovation will flourish in a climate where daring is rewarded, where competition is in- tense, where risk does not discourage investment in the future—.’’ (Washington Star, Wednesday November 7, 1979). As another example, a recent article entitled *‘The Breakdown of U.S. Innovation’’ noted: me dy Innovation creates jobs, boosts productivity, and contributes to export and a strong, healthy 14 balance of trade. Above all, innovation generates economic momentum and helps guarantee American preeminence in a world where powe: and progress are often measured in terms of technological achievement. + * * Yet from boardroom to research lab, there is a growing sense that something has happened to American innovation. Some say it is in rapid decline. * * * Morse‘ goes on to warn that new high technology growth companies are no longer being formed ‘in sufficient numbers to provide the jobs and technical products for export which will be needed in the decades ahead.’ That would mean less economic growth, fewer jobs, a loss of foreign markets, greater import competition in domestic markets, and finally, of course, a potentially devastating rise in trade deficits.’’ (Business Week, February 16, 1976 at page 56). Senator Lloyd M. Bentsen, Chairman of the Joint Economic Committee, recently stated on the subject of the decline of productivity in the United States: ‘*You see, what’s happening here in this country is that we’re no longer competitive with the Japanese and the Germans on many of our products. Let me give you an example. Of the 22 major modern blast furnaces in the world, 14 of them are in Japan. None is in the United States. We just have to put more modern tools in the hands of our working people, or we can’t compete.’’ (NBC’s Meet the Press, March 2, 1980). ‘Richard S. Morse, Senior Lecturer at the Massachusetts In- stitute of Technology. 15 J. Peter Grace, Chairman of W.R. Grace & Com- pany, a $5 billion a year conglomerate which was found- ed by his grandfather states: “I’m not optimistic about the U.S. however, until we solve our problems. The whole damn American steel business is non- competitive with many foreign producers. So are some other industries. They don’t have the incentive to modernize. * * * Great countries are built by people who take chances and have the incentive to invest in something unusual.’’ (Time Magazine, February 4, 1980 at page 72). The Chairman of E.I. duPont Nemours and Com- pany recently stated: **. ..To put it simply, the economic health of an industrialized nation such as ours is bound to the innovation process. * * * . .In the U.S., more than in the Nations with which we compete technologically, judicial attitudes and legal procedures cast a cloud over patents. Peo- ple know that litigation is an all-too-easy way out, if only they are willing to endure the costs. * * * . .. The point I want to make is that the judicial system reflects an overall climate within our society that is in many ways hostile to innovation and technical creativity.’’ (Patent and Trademark In- stitute of Canada, Vol 5, August 1979). Culminating a study of several years by the various departments of the government, the President reported 16 on October 31, 1979 on the subject of ‘‘Industrial In- novation Initiatives’’‘ ‘‘Other industrial countries, recognizing the im- portance of innovation, are extending their com- petitive advantage through industrial policies, pro- grams. To respond to this challenge to our economy and the competitive position of U.S. industry, the review developed policy options intended to foster the Nation’s entrepreneurial spirit for the decades ahead.’’ 452 P.T.C.J. at F-1 (1979). As recently stated by Karyl Luck, Dean of The Graduate School, Patent Resources _ Institute, Washington, D.C.: ‘* | .the patent system was essential for the long historical and almost exponential growth in inven- tion and innovation, in the United States. Presidents Washington, Adams and Jefferson, who were instrumental in the founding of the U.S. pa- tent system and its practical implementation from the outset, were not dedicated to the progress of science and the useful arts as an _ abstract, philosophical end in itself. Rather, the ultimate result they sought was the increased productivity and mercantile development that society derives as a consequence of invention and innovation. The pa- tent system, constitutional in foundation and statutorily enacted in 1790, has provided a major incentive for individual inventors and large and small corporation alike, as well as their investors, to commit the time, money insights and energy needed to create new means for improving man’s material condition.’’ Graduate School Bulletin (1980). It is reasonable to fear that a hurried and unstudied decision destroying the patent reward for this inventor Bylund and his company Reynolds, after the patents had been upheld by the trial judge, following many days of trial, will tend in the years ahead to discourage rather 17 than promote progress of the useful arts as intended by Article I, Section 8, Clause 8 of our Constitution. United States industry needs very badly to have the kind of support for inventions which improves produc- tion machinery. Such support was provided by the careful analysis of the facts and the opinion of the trial judge in the instant case. The Innovation and the Advance in the Art Made by the Bylund Inventions Was Overwhelming In the last decade, when the decline in innovation and productivity in the United States commenced to become apparent, production in accordance with inven- tions of the patents in suit was a notable step in the more traditional American direction. No one has denied that these inventions were of great importance to the can making industry. In addition to changing the conventional method of aluminum beverage can making by the elimination of all heat of annealing and stress relieving while rolling the sheet, and drawing and ironing the can (page 26a), the inventions resulted in the following events and industrial advances over the prior art, as specifically found by the trial court (pages 28a-29a): 1. aluminum D&I [draw and iron] cans were made competitive with TFS [tin free steel] in the industry; 2. ‘The draw and iron method swept the industry free of all other methods; a H19 temper D&I [draw and iron] sheet swept the industry free of all other tempers; 4. The draw and iron aluminum can rose from nothing in the industry to capture over 50 per- cent of the market by 1976; 18 Alcoa sales of H19 [extra hard temper] D&l [draw and iron] stock rose from the 10,000 pounds ordered by Reynolds, which was the whole of Alcoa’s 1967 sales, to 8 million pounds in 1970, to 235 million pounds in 1974; Alcoa’s sales of ‘‘O’’ [soft] temper D&I [draw and iron] stock fell from 21 million pounds to less than a million pounds over the period of 1970 to 1974; National’s business in aluminum cans went from zero in 1967 to being the leading manufacturer by 1974; costly intermediate anneals were eliminated; only Bylund solved the problem of the struggle with TFS [tin free steel] in the industry; only Bylund was able to satisfy the need in the industry for an aluminum can to compete with TFS [tin free steel]; all of the industry failed to beat TFS [tin free steel] with the impact method or with high strength alloys in ‘‘O’’ [soft] temper; the weight of the aluminum can was drastical- ly reduced; costly intermediate handling of coils and storage was eliminated; unexpectedly, tool life was found to be better with H19 [extra hard] temper than with ‘‘O”’ [soft] temper sheet; Alcoa heralded use of H19 [extra hard] D&I [draw and iron] stock as a major achievement; Alcoa filed and received a patent which em- phasized that the use of H19 [extra hard] temper in drawing and ironing without any an- nner nk patina sane art hema tlnd enone Snr St tN tea tes = ON 19 neals or heat treatments was an unobvious in- vention;* 17. National [defendant, National Can Co.] laud- ed its can in its advertising as the ‘‘dynamic new can’’. The Bylund inventions were truly a substantial and in- novative contribution to the useful arts. Alcoa Copied the Bylund Inventions As Soon As It Heard of Them And Publicly Claimed Credit For Them Before the Bylund inventions of the patents in suit, the entire industry used aluminum sheet in heat softened tempers in making the drawn and ironed cans (23a). This sheet had received the customary heat treatments to soften it. The Alcoa specifications for sheet to be used for drawn and ironed cans called for the ‘‘O’’ or heat softened temper (24a), which Alcoa regularly manufac- tured (33a). As to the Metal Flo process, Alcoa had known about it for years (33a). Alcoa had concluded that the heat in the Metal Flo process was one of its significant features (RMA 555). But immediately after Reynolds placed an order with Alcoa in July of 1967 for 10,000 Ibs. of H19 (extra hard) sheet, revealing that it was for use in drawing and ironing cans, Alcoa at once decided to discontinue use of the ‘‘O”’ (heat softened) sheet in making its cans, and to copy Reynolds in the use of the H19 (extra hard) temper metal in drawing and ironing the cans. Mr. Close, the Chairman of Alcoa, Scomplimented the * The trial court noted in its opinion (31a) that counsel for Alcoa disavowed any claim whatsoever at trial that someone at Alcoa in- vented the claimed subject matter prior to Bylund. 20 Alcoa technician who performed the copy work with the words ‘‘Congratulations, I didn’t think you could get there with the Drawn Iron process’’ (25a). Mr. Close immediately shut down Alcoa’s operations using the im- pact method of making aluminum cans, on which it had spent millions of dollars, and urged its customers to change to the extra hard sheet and the draw and iron method without heat. Alcoa regarded the Bylund inven- tions as a ‘“‘major move’’ in the market, one which would enable aluminum cans to ‘‘leap-frog’’ into a preferred position (25a). All of the above was found as fact by the trial court (25a), and it is not challenged. This is understandable, for Alcoa’s own full page adver- tisement in Package Engineering for October, 1968 heralded the Bylund inventions, but while claiming credit to Alcoa, in the following language (RMA 1): “In new developmental and experimental work, Alcoa research and development groups are perfor- ming operations with H19 temper rigid container sheet that standard metalworking text and hana- books say cannot be done. H19 rigid container sheet is blanked and drawn without intermediate anneals to form seamless can bodies.”’’ This paragraph, authored by Alcoa, which knew the prior art, including the Metal Flo process, is but one of the Alcoa admissions that Bylund made great inventions that experts said could not be done, and that Alcoa adopted and was claiming as its own development. This accomplishment of the inventions was also ad- mitted by Alcoa’s own expert Nielsen at the trial. As to his testimony the trial court found (29a): “‘Mr. Nielsen candidly admitted at trial that the Bylund invention was something that people skilled in the art thought could not be done and that such people would have been impressed.” a ala stl, Vie en vide 21 There Is Public Perception of A Trend of Excessive Hostility to Patents In The Circuit Courts of Appeal Which Will Be Intensified By The Pre- sent Decision Clearly, patents mean nothing by way of an incen- tive to innovation, unless they are enforceable in the courts. However, there is a perception by the public that there is a growing trend of hostility to patents in the Courts of Appeal. Consider, for example, that for the five years 1925-1929, of all the patents ruled on by the Courts of Appeal that only 33.4% were held invalid.* In contrast, the Patent Office reports that for the five years 1968-1972, 69% of the utility patents ruled on by the Courts of Appeal were held to be invalid.’ And the situation is not improving. For the five years 1973-1977, the invalidity holdings increased to 72%. During the 1968-1972 period the trial courts only held 35% of the utility patents they ruled on invalid. For the five years 1973-1977, the figure for the trial courts was 48% invalid. Some commentators have sug- gested that on a statistical basis, it would be expected that 50% of litigated patents would be held valid and 50% invalid since such figures would generally accord with disputable matters of all kinds brought to court.’ The figures do at least tend to show that the trial courts are more in accord with even handed treatment of pa- tent validity than the Courts of Appeal. There is, in any event, a public perception of hostility on the part of the * Federico, ‘‘Adjudicated Patents 1948-1954’, 38 JPOS 233 (April 1956), which also reported on adjudication from 1925-1954. ” BNA Patent, Trademark & Copyright Journal, No. 455, Nov. 22, 1979, page D-1. * Honorable Howard T. Markey, ‘‘The Status of the U.S. Patent—System Sans Myth, San Fiction,’? 59 JPOS 164 (March, 1977). 22 Courts of Appeal, witness the comments by DuPont’s chairman, supra at page 15. We submit that decisions like that in the present case are responsible for this perception of hostility. In the instant case the Court of Appeals simply substituted its erroneous views of the facts, unaided by the testimony before the trial judge, and unaided by the ex- pertise of the Patent Office or the expertise acquired by the trial judge during a long trial. The statements by the Court of Appeals about Metal Flo are contrary to the views of the very people working in this art, who had known of Metal Flo, and are contrary to the views of the Patent Office about the nature of the Metal Flo pro- cess. We submit that this kind of treatment tends to discourage innovation and goes contra to the purpose of Art. I, Sec. 8, clause 8 of our Constitution. The Failure of the Court of Appeals to Even Men- tion the Massingill-Grigorenko Patent 3,509,754 Suggests Some Serious Misunderstan- ding of The Real Issues of This case Out of the many defenses presented by respondents, the Court of Appeals picked out just one, the ‘“‘work of the Metal Flo Corporation’’ and declared petitioners’ Bylund patents to be ‘‘anticipated’’ by this work, i.e., the same as the Bylund inventions. However, the Court of Appeals decision does not even consider the many and detailed findings of the trial court, including those very findings which dealt with the best evidence of the Metal Flo work, the Massingill-Grigorenko Patent 3,509,754 of May 5, 1970 (RMA 484-506). First, the patentee Grigorenko testified that the Oe eS eee per ee : 23 Metal Flo process and that of the Massingill-Grigorenko patent were one and the same (RMA 1153-1154): ““Q. Okay. The Metal Flo process is disclosed in your United States patent. Is that correct? As you know it? A. That is correct.’’ Second, the trial court found that the Massingill patent discloses even more than the Metal Flo work and that it was not an anticipation or the same as Bylund’s invention (50a). Among the further findings of the trial court which dealt with the Metal Flo work, as described in great detail in its Massingill-Grigorenko patent was the following (32a): “This work was also incomplete, experimental and abandoned. [Gardner Dep. Tr. 123-124]. The cans were not successful and were never filled and tested. Mr. Gardner testified that the Metal Flo process for beer cans was ‘not mechanically or technically sound, that approach, and the thing just kind of died a writhing, agonizing death’ [Gardner Dep. Tr. 125]. Further, the Metal Flo process is in the Massingill patent and was considered and re-. jected by the Patent Office [Grigorenko Dep. Tr. 78, 85]. The Massingill-Grigorenko patent which is assigned on its face to Metal Flo Corp. is not even referred to in the Court of Appeals’ decision, even though it was part of the trial court’s consideration and was deemed to be the best description of the Metal Flo work by the testimony of those familiar with the subject. The trial court did consider and make further findings including 24 consideration of the Massingill-Grigorenko patent as follows (33a): _ “‘Massingill is an unconventional drawing opera- tion involving telescopic punches, heat, vibrations, uninterrupted continuous movement of metal, and was rejected by the Patent Office. Everyone re- Jected it for cans. Alcoa had a copy of the applica- tion in 1964. It certainly did not teach Alcoa to stop annealing the coils’ it was supplying to Coors in 1966 and 1967.”’ The Court of Appeals overlooked the careful con- sideration and findings of the trial court and the impor- tant explanation in the Massingill-Grigorenko patent. Respondents did not present any witness at the trial to testify about the Metal Flo work. Additionally, Mr. Bylund, who the trial court found highly credible, testified that his inventions were significantly different than Metal Flo (RMA 834-846). The Massingill-Grigorenko patent was of interest to all concerned in its relation to the Metal Flo process. Alcoa was also interested in the patent and the Metal Flo work at an early date and rejected it for cans. The trial court noted that it involved heat-annealing in its finding (41a): ‘“‘A marked up copy of the Massingill patent was found in Mr. McBride’s files of Alcoa (2392). On this document (page 2) there appears the notation ‘‘O” temper tensile and yield Strength greater than H19 value’ [McBride Dep. Tr. 687], contrasting Ex- ample 4 involving ‘O’ temper and Example 6 in- volving ‘H19’ temper of Massingill. Thus, it is quite reasonable to conclude that Massingill does in fact involve some annealing when the ‘O’ temper pro- perties exceed those of ‘H19’,’ ”’ ” Meaning the coils of cold rolled formed. ed sheet from which the cans were Ln NE i hit So ton nk 48 (as 25 The trial court further noted that the Patent Office had considered the Massingill-Grigorenko patent with relation to the Metal Flo process, as follows (42a): *‘_-The Patent Office did consider the Massingill patent which is the Metal Flo process. Under such circumstances, the presumption of validity over Massingill and the Metal Flo process is enhanc- ed,—’’. The Court of Appeals failed to recognize this presump- tion of validity over the Metal Flo process and the Massingill-Grigorenko patent. The trial court found that the Metal Flo process had never been fully understood and was incomplete and abandoned to the extent it related to beverage cans (48a): “‘The Metal Flo process and cans made thereby are not an anticipation of the Bylund patents here in suit because that process has never been fully understood, was only an incomplete experiment that was later abandoned to the extent that it related to beverage can manufacture.”’ The trial court also mentioned that the Massingill- Grigorenko patent had been considered by the Patent Office when it was determined that the petitioner’s Bylund patents were not anticipated, finding that (50a): **The Massingill patent discloses even more than the Metal Flo experimental beverage can program, which was abandoned, and the latter program would have had no impact whatsoever on the is- suance of the Bylund patents, since the Massingill patent was considered by the Patent Office which determined the Bylund patents were neither an- ticipated nor rendered obvious thereby.’’ 26 annealing in their drawing and ironing and that the claims here at issue in the Bylund patents exclude the in- tervention of such thermal treatments. Thus, the state- ment by the Court of Appeals that Metal Flo sold sonobuoys which it had made by drawing and ironing “‘without annealing or thermal treatment?’ is totally con- trary to the fact, contrary to what was found by the trial court, contrary to what was found by the Patent Office and contrary to what was published and what was believed by the industry. The Beverage Can Program of Metal Flo Was Ex- perimental and Was Abandoned as a Disaster The Massingill-Grigorenko patent on the Metal Flo process itself speaks to the possibility of using the Metal Flo process to make beverage cans, and, in time, Metal Flo did do some experimental work as to making beverage cans by the Metal Flo process. As to the trial court characterizing Metal Flo’s work concerning beverage cans as ‘incomplete, ex- perimental and abandoned’’, no characterization was ever more accurate. The experimental beverage can pro- gram of Metal Flo was a joint venture with and funded by Jones & Laughlin Steel (J&L). Mr. Gardner of J&L testified that Metal Flo’s activities as to beer cans were an ‘‘abandoned experiment’? (RMA 1115-1118). As for the experimental beer can R&D program with J&L, both Grigorenko of Metal Flo and Gardner agreed that all reports were marked ‘‘Confidential’’ and that they were “not something for the public’’ (RMA 1155, RMA 1106-1107). Some of the cans were filled with water by J&L, but Metal Flo did not fill and test any cans (RMA 1156-57). 27 The last program on experimental cans that Metal Flo did with J&L was called a failure, ‘‘the whole can collapsed like an accordion’? (RMA 1158). No one ever became interested in using the Metal Flo process to make commercial aluminum can bodies (RMA 1124). Mr. Gardner testified that the Metal Flo method of making multiple beverage cans, which is disclosed in the Massingill and Grigorenko patent, was ‘‘not mechanical- ly or technically sound, that approach, and the thing just kind of died a writhing, agonizing death’? (RMA 1120). Mr. Gardner further testified it wasn’t just that it couldn’t compete, ‘‘No, it was a prototype machine which was wrong from the start’? (RMA 1120). Mr. Gardner further testified that Metal Flo had tried to in- terest Continental Can and National Can in a can machine (RMA 1102) to no avail. He specifically testified that J&L ‘‘abandoned”’ the project in order not to commit ‘‘commercial suicide’? (RMA 1118-1119). Metal Flo tried to interest various other companies in using its process for making beverage cans, but they, like J&L, rejected it. Alcoa concluded that the Metal Flo process for beverage cans ‘‘doesn’t have a chance’’ (RMA 560). Reynolds had a ‘‘complete lack of interest in Metal Flo’? (RMA 1362-1363), after the Metal Flo visit to Reynolds referred to in the Court of Appeals opinion (4a). The Metal Flo process for beverage cans was ex- perimental, never successful and long dead and aban- doned until it was resurrected by respondents for pur- poses of this lawsuit. As stated in Reynolds v. Whitin Mach. Works, 167 F.2d 78, 84 (4th Cir. 1948): ‘*, . .Patents for useful inventions ought not be in- validated and held for naught because of such ex- cursions into the boneyard of failures and abandon- ed experiments.’’ 28 Here, the trial court found specifically that the Metal Flo process was not an anticipation or the same as Bylund’s inventions because it was only ‘‘an in- complete experiment that was later abandoned to the ex- tent that it related to beverage can manufacture’ (42a, 48a), citing inter alia Coffin v. Ogden, 85 U.S. 120 (1874); United States v. Adams, 383 U.S. 39 (1966); and Lyon v. Bausch & Lomb Optical Co., 224 F.2d at 534) (ed Cir. 1955). Metal Flo does Clearly fall into the same category of prior abandoned efforts that was involved in Lyon v. Bausch & Lomb, supra. As Judge Learned Hand observed in that case (224 F.2d at 534): “‘He did indeed test it out to his Satisfaction; and when he had done so, he concluded it would not do what he was after. It did not produce a more ‘rugged’ film and he gave it up. It was in effect an abandonment; it did more than fail to advance the art; it put the process among those efforts that are proved useless. All the reasons that have made the courts refuse to treat experimental users as anticipa- tions, apply even more convincingly; it is not alone that such activities are not evidence of anticipation, they are evidence against.’’ Not only does the case law preclude holding aban- doned experiments to be anticipations, the statute itself excludes such abandoned activities from consideration. Section 102(g) of 35 U.S.C. expressly provides: ‘‘A person shall be entitled to a patent unless... * * * (g). . .before the applicant’s invention thereof the invention was made in this country by another who had not abandoned, suppressed or concealed it.’’ Abandoned, unsuccessful experiments add nothing to the fund of human knowledge and advance the useful Pe he ee ae ee ite 208 NS 29 arts not one whit. By statute and case law they cannot, and by common sense they should not, be held up as anticipations of complete, successful and enduring ad- vances in the useful arts. The Decision of the Court of Appeals is Anomalous in Stating that Metal Flo was an Anticipation when the Trial Court, the Patent Office, and Those in the Industry Disagreed In stating, as it did, that Metal Flo did not involve heat or annealing during drawing and ironing, the Court of Appeals found a fact not only contrary to what the trial court found, but also contrary to what the Patent Office found and contrary to what was testified to at trial. Moreover, the Court of Appeals’ statement is con- trary to what is shown in documents and depositions of the technical personnel of the parties here and others in- vestigating Metal Flo, contrary to what the Metal Flo Massingill-Grigorenko patent itself says, and contrary to what one of the inventors of the Metal Flo process testified. : Published trade literature disclosed that the Metal Flo process involved heat on the order of 500°F and was actually a warm drawing operation (RMA 481-482). The Massingill-Grigorenko patent itself disclosed the genera- tion and retention of heat (RMA 492-493). The patent expressly provided that heat was necessary to the perfor- mance of the Metal Flo machinery (RMA 496), and Mr. Grigorenko, one of the inventors of the Metal Flo pro- cess, so testified (RMA 1143). Alcoa’s Chief Engineer, Mr. Rieke, studied the Metal Flo process and the Metal Flo patent in 1964 and concluded (RMA 555): ‘The heat generated as the material is formed un- doubtedly has a definite bearing on the ability of 30 this method to proceed through the series of reduc- tion.”’ Mr. Gardner, of Jones and Laughlin Steel, testified about the heat in the Metal Flo process and that there was a “‘vast difference’? between it and conventional drawing (RMA 1104). Mr. Held of Jones and Laughlin Steel wrote (RMA 1109): **, . .the cans are drawn warm rather than cold, as in conventional drawing. The exact temperature dif- ference is unknown, although it certainly exists.’’ Dr. Brick, a scientist at Continental Can, also wrote that the Metal Flo process involved heat (RMA 1127). Mr. Bylund, whom the trial court found to be “‘highly credible’’, testified at trial that it appeared to him from the disclosures of the Massingill-Grigorenko Metal Flo patent that heat was Causing a stress relieving effect in the metal of Example 6 (sonobuoy from 3003 H19) at the high cold work level, so that there was no work hardening taking place (RMA 835). The Court Of Appeals Improperly Engaged In A De Novo Redetermination Of Facts That the Court of Appeals did engage in a de novo redetermination of facts in this case is clear from their decision itself. The decision States at the outset that, “From our review of the evidence, we are persuaded that everything by the Bylund patents were fully disclos- ed in the prior art, particularly the work of the Metal Flo Corporation’’ (3a). The Court of Appeals’ decision totally ignored the trial court’s findings and did so without referring to them at all. In its treatment of the sole defense it dealt with, the Court of Appeals simply stated that a com- Nei eS Sith naa Nia, SAR eis eR a crt a htt dial et “the tame 31 pany called Metal Flo had sold containers which it had made ‘‘without annealing or thermal treatment’’, at a time earlier than petitioner’s invention (page 4a), and Suggested that the trial court had ‘‘disregarded the evidence of Metal Flo’s work,’’ (4a). Simply reading the trail court’s opinion shows that there was not any ‘‘disregard’’ of Metal Flo’s work. To the contrary, the decision is replete with consideration of and findings regarding Metal Flo’s work, the nature of the Metal Flo process, and the teachings of the Massingill-Grigorenko patent which covered the Metal Flo process. The Court of Appeals simply ““disregarded”’ those findings and substituted its own er- roneous independently derived views, which views are directly contrary to the whole industry. Rule 52(a) Of The Federal Rules Of Civil Procedure Recognizes An Important Distinction Between Trial And Appellate Courts Which The Seventh Circuit Has Ignored The distinction between trial and appellate courts in our judicial system is basic. Courts of Appeal simply do not have the time or the opportunities to evaluate evidence and develop an expertise in the same manner as trial courts who hear the testimony in a trial of several weeks. That distinction is recognized and implemented in Rule 52 of the Federal Rules of Civil Procedure as to the respect to be accorded findings made by the trier of fact. The distinctions have also been clearly enunciated by this Court, see Zenith Radio Corp. v. Hazeltine Research, Inc., 395 U.S. 100, 123 (1969), wherein this Court stated: ‘‘In applying the clearly erroneous standards to the findings of the district court sitting without a jury, 32 appellate courts must constantly have in mind that their function is not to decide factual issues de novo. The authority of an appellate court, when reviewing the findings of a judge as well as those of a jury, is circumscribed by the deference it must give to decisions of the trier of the fact, who is usually in a superior position to appraise and weigh the evidence.”’ See also United States v. Yellow Cab Co., 338 U.S. 338 (1949). In the present case, trial of this action before Judge Sharp took 15 full trial days. During trial, the live testimony of ten witnesses was taken. Not only was the inventor Bylund deposed by respondents for over thirty days prior to trial, he was cross-examined for almost three full days at trial. Over 1800 exhibits were received into evidence. After the trial ended, Judge Sharp held one full day of oral argument by all parties. By invita- tion of the court, the parties submitted more than 400 pages of briefs and more than 1000 proposed findings of fact. Judge Sharp’s decision, we submit, painstakingly analyzes the evidence and shows the reason for his fii;- dings and conclusions. The Court of Appeals did not review the lower court decision, but has rather proceeded de novo on its own as if there had not been a trial or Patent Office proceedings, both of which considered and rejected Metal Flo. And the Court of Appeals de novo ap- proach, conducted without benefit of the insight and knowledge provided by a trial, has resulted in a decision filled with factual inaccuracies which arrives at a conclu- sion that can only be described as divorced from reality. We submit that the purpose of Rule 52(a) is precisely to prevent such a de novo, inadequate ‘‘new trial’’ as to the facts. 33 Disregard By Appellate Courts of Rule 52(a) En- courages Litigation And Expensive Appeals Professor Charles Alan Wright'® discussed the ef- fect of the erosion of Rule 52(a) by appellate courts quoting with approval the statement in Pendergrass v. New York Life Ins. Co., 181 F.2d 138 (8th Cir. 1950): “‘The entire responsibility for deciding doubtful fact questions in a nonjury case should be, and we think it is, that of the district court. The existence of any doubt as to whether the trial court or this Court is the ultimate trier of fact issues in nonjury cases is, we think, detrimental to the orderly administration of justice, impairs the confidence of litigants and the public in the decisions of the district courts, and multiplies the number of appeals in such cases.’’ At least some appellate judges today also view with alarm the increasing tendency of appellate courts to find the facts for themselves. Judge Aldisert, in Trio Process Corp. v. L. Goldstein’s Sons, Inc., ____ F.2d ; 204 U.S.P.Q. 881, 888, 889 (3rd Cir. 1980), in a dissen- ting opinion, stated: “*, . .instead of sniping at the facts by contriving ar- tificial legal precepts, we have invaded the district courtroom and set ourselves up as a rump fact-find- ing authority. Because there is neither reason nor empowerment for this action, I dissent. My colleagues in the majority, I regret to say, have now tossed the Anglo-American tradition of ap- pellate review to the. four winds. They claim a new prerogative as an appellate court that goes beyond even Professor Wright’s concerns in 1957; they have simply found the facts that are to their liking. * * * '° The Doubtful Omniscience of Appellate Courts, 41 Minnesota Law Review 751 (1957). 34 To the extent an appellate court strays from its traditional role of reviewing the choice, interpreta- tion, and application of legal precepts, and un- necessarily intrudes upon the rights and privileges of the trial courts, there is a corresponding impair- ment in the confidence of litigants and the public in the decisions of the trial courts, and a broadcast of an unwarranted belief that appellate courts are bet- ter qualified than trial judges to decide what justice requires. I believe the court’s decision today does precisely that.”’ We also view with alarm the tendency of appellate courts to find facts for themselves. We sugest it fre- quently leads to incorrect, anomalous results, as here, and is responsible for the public perception of hostility to patents by the Courts of Appeal. Moreover, it en- courages appeals by a losing party seeking to gain in the Court of Appeals a de novo redetermination of the facts. The Seventh Circuit’s Application Of 35 U.S.C. 102 Is In Conflict With The Intent Of The Statute ‘And In Conflict With The Other Circuits The sole stated ground for the Court of Appeals’ reversal of Judge Sharp’s decision was the statement by the Court that Metal Flo was an ‘“‘anticipation’’ of or the same as the Bylund patent claims under 35 U.S.C. 102. In so doing, the Court of Appeals improperly ap- plied Section 102. The Court of Appeals clearly ~ overlooked the trial court’s finding that Metal Flo in- volved heat and annealing during drawing and ironing and that the Bylund patent claims are substantially dif- ferent in that there are no such thermal treatments. Such differences go to the very substance of the inventions of the patent claims and, in a proper decision, would im- mediately preclude application of Section 102 of the Pa- tent Statutes. atk rset ate Se 35 Section 102 deals with situations where there are no differences between the prior art and the patent claims, where there is identity. Section 103 deals by its own terms with the situation where there are differences. Thus the introductory portion of Section 103 provides ‘‘A patent may not be obtained though the invention is not identically disclosed or described as set forth in Sec- tion 102 of this title. . .”’ The language used by the Court of Appeals about differences'' that would sug- gest themselves to one of ordinary skill in the art, states criteria appropriate to evaluations of nonobviousness of Section 103, not anticipation under 102. There is a material difference between 35 U.S.C. 102 and 103 as to the issues arising under the two sections and the relevant evidence appropriate to the two sections. Jn re Hughes, 345 F.2d 184 (C.C.P.A. 1965). The tests and inquiries to be made under Section 103 have been set out in detail, Graham v. John Deere Co., 383 U.S. 1 (1966), with the thought that (383 U.S. at 18): ‘‘We believe that strict observance of the re- quirements laid down here will result in that unifor- mity and definiteness which Congress called for in the 1952 Act.”’ Here, the Seventh Circuit did not observe the re- quirements laid down in Graham. Despite the trial court’s painstaking and detailed adherence to the Graham guidance and criteria, the Court of Appeals does not even mention Section 103 or the Graham case. Indeed, the Seventh Circuit totally ignores all the evidence presented below and trial court’s findings thereon relative to nonobviousness under Section 103. '' Concentration by the Court of Appeals on dimensional dif- ferences between the patent claims and Metal Flo illustrate the Court’s de novo approach. Those dimensional differences are not relied on or even mentioned in the trial court’s opinion. 36 This decision of the Seventh Circuit, applying as it does Section 102 despite differences between the prior art and the patent claims, is in conflict with the rule in and decisions of the other circuits. In the Ninth Circuit, for example, anticipation under Section 102 is correctly recognized as a technical defense that is not satisfied unless al! of the same elements are found in a single prior art reference in exacty the same situation and united in the same way to perform an identical function. Jones v. Vefo, Inc., F.2d , 204 U.S.P.Q. 535 (9th Cir. 1979). This rule is consistently applied in the Ninth Circuit, see Schroeder v. Owens-Corning Fiberglas Corp., 514 F.2d 901, 904 (9th Cir. 1975), wherein the court stated: ‘*‘We cannot harmonize the court’s finding, that the relevant prior art references were not identical to the composite of the ’459 patent, with its conclu- sion of law rendering the latter invalid as an- ticipated. Anticipation is a technical defense which must meet strict standards.”’ Other circuits (save the Seventh) also apply the same rule. The rule in the Fourth Circuit, see Canron, Inc. v. Plasser American Corp., F.2d 203 U.S.P.Q. 641 (4th Cir. 1979) is as follows: ‘*‘We recognize that there is no anticipation unless all of the same elements are found in the same situation and united in the same way to perform an identical function.”’ See also, Tights, Inc. vy. Acme-McCrary Corp., 541 F.2d 1047, 1055-1056 (4th Cir. 1976); Ling-Temco- Vought, Inc. v. Kollsman Instrument Corp., 372 F.2d 263, (2d Cir. 1967); Shanklin Corp. v. Springfield Photo Mount Co., 521 F.2d 609, 619 (ist Cir. 1975) Paeco, Inc. v. Applied Moldings, Inc. 562 F.2d 870 (3rd Cir. 1977). i 37 Anomalous Patent Validity Decisions, With Their Divorcement from Reality, Destroy The Faith Of Innovators, Potential Innovators And In- vestors If patents are not enforceable in the courts, they are worthless as any kind of incentive to innovation. If Courts of Appeal do not or will not properly decide pa- tent cases under the Constitution, the patent statutes and judicial precedent, on the facts as developed in a trial, then no patent, regardless of the merit of the in- vention, has value. Dr. Chester Carlson, inventor of xerography, spoke to the incentive that patents provide when he was awarded the ‘‘Inventor of the Year’’ award in 1964. He stated: ‘“‘The time scale of invention is a long one. Results do not come quickly. Inventive developments have to be measured in decades rather than years. It takes patience to stay with an idea through such a long period. In my case I am sure I would not have done so if it were not for the hope for eventual regard through the incentives offered by the Patent System’’. 47 J.P.O.S. 288 (1965) In the present case, there is a good bit of irony which reflects, we suggest, the departure from the Con- stitutional intent that our patent system is experiencing. Here, the Bylund inventions succeeded in the Patent Of- fice and in industry. They swept the industry free of all other approaches to aluminum beverage can manufac- ture, saving enormous quantities of energy and materials. The magnitude of the Bylund advance in the art will be understood upon consideration that, as of 1976, the industry production of aluminum drawn and ironed 38 cans using the invention of petitioner’s patents in suit was 20,900,000,000 cans or more than 50,000,000 (fifty million) cans per day (RMA 268-269). By this time we estimate that close to 100 billion more have been pro- duced. The Court of Appeals struck the patents down without even a passing consideration of the trial court’s findings or the evidence on which they were based. The Court of Appeals simply found the facts that were to their liking, and we believe a manifest injustice resulted. We believe such injustices will spread if the Courts of Appeal do not adhere to the admonitions of the Supreme Court in respect to Federal Rule 52(a), or follow the instructions laid down by this Court for pa- tent cases in the Graham case, 383 U.S. 1, 12-19. CONCLUSION The Bylund inventions have succeeded in the Patent Office and in industry. The Bylund inventions swept the industry free of all other metal tempers and methods and were copied by defendants. In spite of their availability under license, for a very nominal royalty, they were copied and appropriated by a company (Alcoa) that had, itself, secured its initial success as the Pittsburgh Reduction Co. by reason of its own patent on the early Hall invention on the reduction of aluminum. Charles C. Carr who was Director of Public Relations of Alcoa some years ago wrote in his book ALCOA--An American Enterprise, at page 60 (1952): ‘*Hall is likewise indebted to the American patent system for protecting his right to his invention. Under the patent law, the Pittsburgh Reduction Company, the owner of the patent was given for a term of seventeen years, the ‘exclusive right to 39 make, use and vend the invention’. These were im- portant rights, vital to the young business. The pioneers would never have ventured their $20,000 of capital for a pilot plant without the virtual certainty that the Hall patent, already applied for, would be issued in due course. The patent was granted, and the period until it expired gave the Pittsburgh Reduction Company a good opportunity to develop the process commercially and become established in the manufacture of aluminum.’’ Thus, from the Hall invention and the patent which protected it, came the largest aluminum company in the whole world—yet now a willful infringer of Bylund’s patents—who, with National, ‘‘have chosen to follow the path found by Reynolds rather than another path or one they themselves forged by their own efforts.’’ (60a). In this old Alcoa case the hope of protection by the Hall patent caused the investment of twenty thousand dollars, and from this came the building of the largest aluminum company in the world. In the Graham case (383 U.S. 1) the Supreme Court instructed the federal courts how to deal with patent cases. If the sensible, thoughtful procedure there set forth is not complied with, and if the Court of Appeals just runs over the patent lightly and gets a subjective im- pression upon which to base an opinion, then we hardly need to have a district court, for what it has said after days of trial, as in this case, seems to have meant nothing, although the Supreme Court in its instructions of the Graham case meant that it should mean a whole lot. If invalidity is the popular answer to most all patent appeals, the Court of Appeals merely has to get on the bandwagon and join the parade. But that does not face the danger that the United States finds itself in today. We need innovation. We need new production, we need iii 40 new tools, we need to save energy and time in order to catch up with our competitors in the world. After careful study of this case, we, as counsel, respectfully suggest that the Court here should consider what harm is being done to the public and to the nation, by this kind of treatment from the Court of Appeals, to an invention of immense importance which has revolu- tionized the production of aluminum cans, saved energy, saved aluminum and saved time. We have laws which were intended to stimulate invention and innovation. These are the Constitution, the patent laws and a large body of judicial precedent which, while requiring inven- tions to meet high standards, did operate to protect im- portant inventions. Things went well under these laws for many years, as patents were fairly upheld and the United States became the leader in the industrial world. Then we slow- ed down and it has become easier for competitors to just copy what the innovator had done and bear the ex- penses of the lawsuit. As Senator Bentsen pointed out, we are behind and that we have got to tool up our in- dustry to even compete. Decisions such as the Court of Appeals here, encourage copying and imitation of in- novation, see Levitt, Innovative Imitation, Harv. Bus. Rev. Sept.-Oct. (1966). The Bylund inventions taught the industry to do it better, cheaper, faster, with no heat, less energy, and less metal. The Bylund inventions succeeded, patents were granted and they were upheld after an extensive trial and long consideration by the trial court. Not only the petitioner, but the public and the United States in these critical days will be dealt another 10W in its efforts to overcome the decline of production and innovation in our country, if petitioner’s earned Constitutional reward is arbitrarily taken from it. Of Counsel JOHN F. C. GLENN REYNOLDS METALS COM- PANY 6601 West Broad Street Richmond, Virginia 23262 Attorneys for Reynolds Metals Company Respectfully submitted, REYNOLDS METALS COm- PANY Petitioner JOHN W. MALLEY WILLIAM T. BULLINGER SHERMAN QO. PARRETT CUSHMAN, DARBY & CUSHMAN 1801 K Street, N.W. Washington, D.C. 20006 Phone: (202) 861-3000 APPENDIX la IN THE UNITED STATES COURT OF APPEALS | FOR THE SEVENTH CIRCUIT | Nos. 78-1909 and 78-1910 REYNOLDS METALS ComPANY, Plaintiff-Appellee, v. ALUMINUM COMPANY OF AMERICA, a corporation, and NATIONAL CAN CORPORATION, a corporation, Defendants-Appellants. Appeals from the United States District Court for the Northern District of Indiana, South Bend Division. No. S-CV-74-172—Allen Sharp, Judge. OPINION ARGUED JANUARY 16, 1979—DEcIDED NOVEMBER 13, 1979 Before SwyGErT and Bauer, Circuit Judges, and GrRapy, District Judge.' Metals Company charged Alcoa and National Can with infr- ingement of U.S. Patents 3,691,972 and 3,814,590. These patents—known as the ‘‘Bylund’’ patents—deal with the manufacture of twelve ounce aluminum cans for beer and soft drinks. The lower court awarded judgment to Reynolds, and Alcoa and National Can now appeal. BAuER, Circuit Judge. In this civil action, the Reynolds To understand fully the issues presented in this appeal, we must first define some key concepts in the manufacturing of aluminum cans. The process of fabricating aluminum sheet involves the casting of molten aluminum into an ingot, which is then squeezed between rollers to reduce the thickness of the metal. This rolling process is repeated as often as is necessary , ‘The Honorable John F. Grady of the United States District Court for the Northern District of Illinois is sitting by designation. _ 3 2a to achieve the desired thickness, and is commonly referred to as ‘“‘working’’ the metal. If the rolling of the aluminum is done at a high temperature, it is known as ‘“‘hot working,”’ and if it is done at room temperature, it is known as ‘‘cold working.’’ When the gauge of the aluminum is reduced by ‘‘cold working,’’ the strength of the metal increases, and it is said to be ‘‘work-hardened.’’ The strength of work-hardened aluminum can be reduced, however, by ‘‘annealing’’—that is, by heating it to a temperature at or above the recrystallization temperature. Alloys of aluminum are generally designated by four digit numbers which identify the principal alloying elements and permissible percentage ranges in the alloy. Two common alloys which were well-known (and commercially available) for years prior to the patent at issue are ‘‘3003’’ and ‘‘3004.”’ The principal alloying elements in these two types are manganese (from 1.0 and 1.5%) and iron (up to 0.7%). 3004 also includes magnesium from 0.8 to 1.3%. The temper of aluminum sheet is conventionally designated by letters and numbers which follow the alloy designation. Work-hardened aluminum is identified by the letter ‘‘H.’’ The first digit following the letter indicates whether or not the metal has received any heat treatment: ‘*1’? indicates that the metal has been work-hardened only; ‘**2”” indicates that the metal has been work-hardened and partially annealed; and ‘‘3’’ indicates that the metal has been work hardened and. fully annealed. The second digit designates the amount of work-hardening, with ‘‘8’’ represen- ting ‘‘full hard,’’ ‘‘4’’ representing ‘‘half hard,’’ and so on. Accordingly, ‘*3004-H18’’ is 3004 alloy which has been cold worked to full hard condition. It should also be noted that H-18 temper is defined only by a minimum specified strength—there is no maximum and thus no range. If the minimum strength is raised slightly, the temper is known as H-19, but it is necessary to roll metal through H-18 temper to reach H-19 temper. 3a Finally, the actual manufacture of containers from aluminum sheet involves two processes. The first—so-called ‘‘drawing’’—transforms a. flat sheet of aluminum into a three-dimensional shape without appreciable change in the thickness of the aluminum. The _ second—so-called ‘tironing’’—forces the cup through a die in order to form a deeper container with a thinner sidewall. The crucial issue in this appeal is whether the Bylund patents are invalid for lack of novelty under 35 U.S.C. §102.’ In essence, the patents are asserted to cover the manufacture of beverage cans by drawing and ironing ‘‘highly cold work- ed’’ aluminum alloys, e.g. 3004-H19. The lower court iden- tified two significant differences between the patents and the prior art: (1) _ the elimination of annealing or stress relieving in making D&I aluminum cans; and (2) selecting alloying elements of sufficient ductility and strength to cold roll and draw iron the aluminum sheet into a can body without thermal treatments. Reynolds Metals Co. v. Aluminum Co. of America, 457 F.Supp. 482, 495 (N.D. Ind. 1978). From our review of the evidence, however, we are per- suaded that everything claimed by the Bylund patents were ? 35 U.S.C. §102 provides in pertinent part: A person shall be entitled to a patent unless— (a) the invention was known or used by others in this coun- try, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States... .’’ EE A RR 4a fully disclosed in the prior art, particularly the work of the Metal Flo Corporation. The evidence shows that prior to the Bylund patent, Metal Flo had drawn and ironed aluminum cans without annealing from highly cold worked material, having selected alloying elements with sufficient ductility and strength to be cold rolled drawn and ironed into a can body without thermal treatment. In particular, Metal Flo sold several thousand containers (sonobuoy housings) which it had manufactured by drawing and ironing 3003-H19 aluminum alloy without annealing or thermal treatment. In addition, Metal Flo manufactured and delivered to Reynolds drawn and iron twelve ounce beer cans made from various Reynolds- supplied alloys, including 3004 in tempers up to H-18. The district court disregarded the evidence of Metal Flo’s work, apparently on the grounds that Metal Flo had never developed a commercial success in beer cans. The court thus characterized Metal Flo’s work as ‘‘incomplete, experimental and abandoned.’’ 457 F.Supp. at 482. The unrebutted evidence shows, however, that Metal Flo did indeed operate commercially as to products such as the sonobuoy housings. And while it is true, as Reynolds argues, that this commercial use of the process involved products other than beer cans, the process is nevertheless anticipatory, for the differences are in dimension only. As this court stated in Popeil Bros., Inc. v. Shick Electric, Inc., 494 F.2d 162, 165 (7th Cir. 1975): The issue of anticipation by prior art is not determined by insubstantial distinctions between a purported inven- tion and prior art. A purported invention is anticipated by prior art ‘if the general aspects are the same and the difference in minor matters is only such as would suggest itself to one of ordinary skill in the art.’ In our view, the dimensional differences between Metal Flo’s work and the Bylund patents would indeed suggest themselves to one of the ordinary skill in the art. Finally, we note that we find no significance in Metal Flo’s subsequent financial difficulties, its unconventional or Sa antiquated equipment, and its inability to achieve a high rate of production. All of these matters, it seems to us, are im- material to the patent claims at issue in this case. We must therefore conclude that the district court rever- sibly erred in failing to invalidate the Bylund patents for lack of novelty under 35 U.S.C. §102. The judgment of the district court is REVERSED. A true Copy: Teste: Clerk of the United States Court of Appeals for the Seventh Circuit 6a United States District Court Northern District of Indiana South Bend Division No. S 74-172 REYNOLDS METALS COMPANY, a Corporation, Plaintiff v. ALUMINUM COMPANY OF AMERICA a Corporation, Defendant and NATIONAL CAN CORPORATION, a Corporation, Defendant FINDINGS OF FACT CONCLUSIONS OF LAW OPINION JUDGMENT I. This Court has determined to include all of the above items in this one document in the interest of clearly stating in one place the factual conclusions and the legal reasons therefor in this protracted and hotly contested case. This case was tried to the Court without a jury during fifteen trial days by most able and experienced counsel. The Court heard extended oral argument for one full day and has entertained and carefully considered briefs and proposed fin- dings and conclusions. This shall constitute the findings of fact and conclusions of law as required by Rule 52 of the Federal Rules of Civil Procedure. Plaintiff Reynolds Metals Company (hereinafter ‘*Reynolds’’) is a Corporation of the State of Delaware and is a resident of and has its principal place of business in Henrico County, Virginia, Henrico County, Richmond, Virginia, and is the owner and assignee of the United States Letters Patent No. 3,691,972 entitled ‘‘Aluminous Metal Ar- ticles and Method’’ which issued on September 19, 1972 in 7a the name of Linton D. Bylund (hereinafter the ‘972 Bylund patent) and United States Letters Patent No. 3,814,590 entitl- ed ‘‘Aluminous Metals Articles and Aluminum Base Alloys’’ which issued on June 4, 1974 in the name of Linton D. Bylund (hereinafter the ‘590 Bylund patent). Defendant, Aluminum Company of America (hereinafter ‘*Alcoa’’), is a corporation of the State of Pennsylvania and has a regular and established place of business at South Bend, Indiana, within this district. Defendant, National Can Corporation (hereinafter ‘*National’’), is a corporation of the State of Delaware, and has a regular and established place of business at LaPorte, In- diana, also within this district. This action arises under the patent laws of United States Title 35, United States Code, and including Sections 271 and 281 et seq. Jurisdiction is conferred on this Court by Title 28 of United States Code, Section 1338 and is conceded by counsel for the parties.' The acts complained of have been committed, inter alia, in the Northern District of Indiana and venue is proper under Title 28, United States Code, Section 1400(b). The ‘972 Bylund patent relates to aluminum foil and other articles including drawn and ironed can bodies produc- ed from aluminum base alloys containing up to 2.5% iron and which have a low work hardening rate above 75% reduc- tion and/or which exhibit sufficient ductility at cold work levels to permit cold working to the extent of at least 90% without the necessity of annealing or stress relieving [PRM 2066].? The Bylund patent was based on an application Serial No. 889,790, filed in the United States Patent Office on July ' See Section A. of the Pretrial Order filed on March 29, 1978. ? The designation ‘‘PRM’’ refers to Plaintiff’s Trial Exhibit numbers. 8a 9, 1970, which application was a division of application Serial No. 712,314, filed on January 16, 1968, now United States Patent No. 3,571,910, which application was a division of Serial No. 660,132 which was a continuation-in-part of a now abandoned application Serial No. 573,776, filed in the United States Patent Office on August 8, 1966 and which was in turn a continuation-in-part of a now abandoned application Serial No. 379,782, filed in the Patent Office on July 2, 1964. The ‘590 Bylund patent was based on a United States pa- tent application, Serial No. 234,780, filed in the United States Patent Office on March 15, 1972, which is a division of ap- plication, Serial No. 889,790, filed in the Patent Office on July 9, 1970, now United States Patent No. 3,691,972, which was a division of application Serial No. 712,314, filed in the United States Patent Office on January 16, 1968, now United States Patent No. 3,571,910, which was a division of United States patent application Serial No. 660,132, filed in the United States Patent Office on August 11, 1967, now Patent No. 3,397,044, which was a continuation-in-part of a now abandoned United States patent application Serial No. 379,782, filed in the United States Patent Office on July 2, 1964. Defendants have answered the second amended com- plaint and have denied all allegations concerning the infringe- ment of the patents in suit and have also denied the validity of and enforceability of the patents in suit. Defendant Alcoa has counterclaimed under the patent laws for declaratory judgment of non-infringement, invalidity and non-enforceability, as to each of the patents in suit and has further alleged that Reynolds’ assertion and utilization of the patents in suit are violations of the laws of the United . States and are contrary to the public policy of the United States. Reynolds has denied these allegations. Defendant National has counterclaimed under the patent laws that the patents in suit are invalid, not infringed, and have been misused and are unenforceable. Defendant Na- —— 9a tional has also counterclaimed under the antitrust laws alleg- ing that Reynolds has sought to monopolize trade and com- merce on drawn and ironed cans and unpatented aluminum sheet, a stable article of commerce. Reynolds has denied these allegations. The chronology of Bylund Inventions and patent applica- tions filed in the United States Patent Office has been provid- ed to the court in graphic form. The Court now adopts the same and incorporates same here as evidenced by the attached appendix A. The inventor of the patents in suit, Linton D. Bylund, is a metallurgist who has been working for Reynolds Metals since 1946. He testified and was cross-examined for three or more days at the trial. To the extent that it matters this Court finds Mr. Bylund to be highly credible. During long and vigorous cross-examination by most adroit counsel Mr. Bylund’s credibility remained intact. Between 1946 and 1951, Bylund worked as a metallurgist for various Reynolds plants;- and in 1951 was transferred to the Metallurgical Engineering Division in Richmond, Virginia [Tr. 468-470] This Division is a small department, never numbering more than five or six metallurgists, and serves in a corporate staff function. In 1962, Mr. Bylund was spending the majority of his time working on metallurgical aspects of light gauge aluminum foil. The sales people at Reynolds had asked the Metallurgical Engineering Division to see what could be done by way of making a stronger ‘‘Reynolds Wrap’’, the household aluminum foil being made and sold by Reynolds. Bylund got the idea that an aluminum-iron type alloy might provide just such a stronger foil, and proceeded to have one made to try out the idea. [Tr. 475] The particular alloy he proposed was one called MD79. In experiments with this MD79 it was found that it did not result in any significant in- crease in the strength of the foil. However, Bylund noted 10a something very unusual and very interesting about this MD79 alloy. As it was rolled down to very light foil gauges, it was found that the MD79 did not work harden normally, and in- deed had a zero work hardening rate at high cold work levels around 90% reduction. [Tr. 486] By April of 1964 Mr. Bylund had discovered that this unusual behavior of the work hardening characteristics of MD79 could be exploited so as to result in more economical foil production. Specifically, he discovered that the MD79 could be rolled down to very thin foil gauge; without resor- ting to the conventional annealing heat treatments that had been used previously to periodically soften aluminum as it was being rolled. A patent application directed to the use of the MD79 for foil was filed in July, 1964 [PRM 2056]. This patent application contained drawings illustrating the unusual zero work hardening rate of the MD79 alloy. As Mr. Bylund testified, and as is apparent from his subsequent actions, his work in the foil area instilled in him a keen interest in the behavior of aluminum alloys at high cold work levels. [Tr. 509-513] During 1964-1965, Bylund’s department at Reynolds had also begun to get somewhat involved in the metallurgical pro- blems that the Reynolds Can Division was having in manufac- turing drawn and ironed cans. The Can Division was ex- periencing low efficiencies in that some of the aluminum alloy sheet received from the Reynolds’ rolling mills ran very well in the draw and iron presses and some did not. Work was go- ing forward to isolate and correct the variables in the aluminum sheet that led to the variable performance. Mr. Bylund, along with other members of the Metallurgical Engineering Division, was involved in this work to the extent of serving as liaison between the Reynolds Can Division and the rolling mills that were fabricating the aluminum sheet, and trying to bring in ideas that might help the situation. [Tr. 496-498] The aluminum alloy sheet being used by Reynolds for draw and iron cans.at that time was 3004 in a temper known as H320. This temper designation means that the lla aluminum sheet was subjected to two furnace heat treat- ments, an annealing furnace treatment during cold rolling and a stress relieving furnace treatment after cold rolling, in order to soften it, i.e., remove the work hardening that occurred during cold rolling. The material was thus of a low cold work level as used for drawing and ironing. In talking to the people in the Can Division in early 1965, Bylund was continually urging that they investigate work hardening rates at high cold work levels in the draw and iron process. [Tr. 507-513; PRM 1086] Bylund was thus pro- posing this in writing to Ed Maeder of Reynolds’ Can Divi- sion in March of 1965 as a way of helping produce drawn and ironed cans with lower cost practices if they could get rid of the heat treatments. Mr. Bylund testified that at that point in time Mr. Maeder and others in the Reynolds Can Division just did not seem interested in his concept. [Tr. 507-513] In September of 1965, Reynolds appointed a new Direc- tor of Metallurgical Engineering, this being a Mr. John Lar- son. Mr. Larson came from a production background; in fact, he came from being plant manager of one of Reynolds’ rolling mills. One of the primary assignments given Mr. Lar- son by Reynolds’ top management was to do something about the problems the Can Division was having, so as to im- prove the general economic outlook of that division. As regards Reynolds’ can program, Mr. Larson had two concerns. One was improving the fabricating practices used to make the sheet from which the cans were drawn and ironed. so as to have more consistent and better qualities for the severe draw and iron operation. Secondly, Mr. Larson being a production man, and having a production man’s concern with making a product and selling it at a profit, he was con- cerned about the basic economics of the can Reynolds was making and selling. Reynolds did have on-going programs at that time aimed at a lighter weight can using very highly alloyed aluminum sheet. Such sheet gets its strength through alloying. It still was 12a the practice to give such sheet the heat treatment prior to the draw and iron operation. These high strength alloys were primarily programs of the Reynolds Research Division, known as MRD, which stands for Metallurgical Research Division. While the entire Metallurgical Engineering Division under Mr. Larson’s guidance was looking at and trying to help solve some of the problems of variability in the sheet material thai was being used by Reynolds for drawing and ironing, Mr. Larson specifically assigned one of his own men, Mr. Bylund, to spend the major portion of his time looking into the whole draw and iron process and seeing what could be done about the economics. Mr. Larson secured the Can Division’s ap- proval for Mr. Bylund to have access to the draw and iron press at the Can Development Center (CDC). Mr. Bylund’s keen interest in .he concept of using highly cold worked materials, which stemmed from his work in con- nection with rolling foil, prompted him to take some sheets of the MD79 foil alloy that he had evolved, and which had been fabricated without any of the conventionally mandated special furnace heat treatments to soften it, and to try draw- ing and ironing a can out of this highly cold worked material. [Tr. 517] To his surprise, this aluminum alloy sheet that had not received any of the special softening heat treatments formed into a very good looking can on a conventional draw and iron press of the type that Reynolds was using in its can plants. [Tr. 519-520]. This was highly significant—and Bylund knew it. He knew that this foil alloy did not have enough alloying elements in it, such as manganese, magnesium, etc., to make a draw and iron can of suitable commercial strength, even in its highly cold worked condition. He was astute enough, however, to realize that something surprising and very signifi- cant had occurred. He realized that ‘‘the door was open’’ to the possibility of using a_higher—alloyedaluminum sheet without giving the aluminum sheet the traditionally required 13a heating or softening treatments in the furnace prior to making a drawn and ironed can therefrom. [Tr. 520]. His concept was that aluminum alloy sheet which had a low work harden- ing rate could be rolled without any of the traditional in- tervening heat treatments during or following cold rolling to soften it and would still withstand the severe drawing and ironing in a conventional draw and iron press without any thermal treatments. The potential savings were truly enor- mous. The first thing Mr. Bylund had to do was find out which types of aluminum alloys in a highly cold worked temper would act this way. Therefore, with Mr. Larson’s blessing, he embarked on a program to develop this concept to a full commercial reality. Bylund’s initial approach in this develop- ment work was to use aluminum alloys in highly cold worked condition for drawing and ironing into cans, with the aluminum alloys being selected on the basis of their known ability to be rolled down in cold rolling mills to over 90% cold worked condition for drawing and ironing into cans, with the aluminum alloys being selected on the basis of their known ability to be rolled down in cold rolling mills to over 90% cold working reduction without splitting or tearing apart. [PRM 2090; Tr. 521-523]. Thus in addition to the specially evolved foil alloy (known as MD79) from which the first drawn and ironed cans were made from highly cold worked material, Mr. Bylund’s initial work, as shown in his report dated February 1, 1966, comprehended making cans from an alloy registered with the Aluminum Association under the number 1235, as well as a series of stronger registered alloys, such as 3003, 3005, and 3004. [PRM 2090]. In August of 1966, a second patent application was filed in Mr. Bylund’s name, which was a continuation-in-part of the earlier 1964 application on MD79 foil. [PRM 2057]. It repeated the earlier disclosure and drawings of MD79 foil, and added new disclosure on a wider range of iron content for MD79 and that highly cold worked MD79 that had not received any of the conventional thermal softening treatments 14a could be drawn and ironed into cans, also without any in- tervening thermal treatments. Meanwhile, Mr. Bylund’s further work on his concept of using highly cold worked aluminum alloy sheet for drawing and ironing without any thermal treatments was going for- ward toward a commercial reality. During 1966 and 1967 this work entailed not only working with the iron-containing com- mon aluminum alloys such as 3003, 3005 and 3004 that are registered with the Aluminum Association, but also creating and modifyirg alloys, all in an effort to find the best com- mercial form for utilization of the concept. One of the areas that Bylund was pursuing as far as creating new alloys was adding manganese and magnesium to an MD79 type alloy to strengthen it. Various versions of such an alloy, which was called MD112, were experimented with throughout 1966 and 1967 in addition to the common, registered alloys. In May of 1966 and again in December of 1966, Mr. Bylund issued additional progress statements on his investiga- tions of drawing and ironing cans from a variety of alloys in the highly cold worked H19 temper, some being high in iron, i.e, MD112, and others being registered alloys having somewhat lower iron limits, i.e., 3003, 3005, 1100. [PRM 2108, 2132]. At this time Mr. Bylund was still primarily interested in using a high iron content alloy in an H19 temper for draw and iron can stock. One reason for his preferring iron is that it is intrinsically a cheaper alloying element than is manganese or magnesium. Additionally, a high-iron content alloy would be beneficial from the standpoint of recycling aluminum. [Tr. 1346-1348]. In recycling aluminum, the recycled aluminum in- evitably ends up containing a higher percentage of iron than it did before it was recycled. This is due to the unavoidable inclusion of some iron impurities in aluminum products gathered for recycling. If the aluminum was used for i.e. can stock in a high iron content alioy it will be more tolerant of the use of this recycled aluminum. 15a In keeping with the preference for a high-iron alloy, it was decided to try a production evaluation of the MD112 high iron alloy for drawing and ironing can bodies. Bylund prevailed upon the Can Division of Reynolds to allow a commercial production evaluation run of drawn and ironed cans at Reynolds’ White Bear Lake plant made from sheet in accordance with Bylund’s work. The sheet had not received any anneals, stress reliefs or any other softening heat treatments. This commercial production evaluation run was carried out in February of 1967 and in excess of 130,000 can bodies were drawn and ironed from this material on commer- cial equipment, operating at commercial speeds. [PRM 2145]. These over 130,000 can bodies were later filled with Hamm’s beer and performed satisfactorily. [PRM 2146]. At this point in time it was clear that Mr. Bylund’s concept of utilizing aluminum alloy sheet that had not received any of the soften- ing heat treatments during or after cold rolling was not only technically feasible from the standpoint of being able to do it in a laboratory but was also commercially feasible from the standpoint of running smoothly on conventional existing equipment at commercial speeds and efficiencies. Mr. Bylund’s experiments with drawing and ironing a variety of alloys in H19 temper were meanwhile continuing. It should be recalled that Bylund’s February 1, 1966 report had suggested that future work include an evaluation of drawing and ironing can bodies from 3004-H19. On April 13, 1967, Mr. Bylund did successfully draw and iron cans from 3004-H19. Mr. Bylund had enough 3004-H19 to make 24 cans and cups, and some of the drawn and ironed can bodies were subjected to buckling tests. [PRM 2160]. The test results were very encouraging because they showed that the can bodies made from 2004-H19 were able to stand an internal pressure on the order of 130psi, as opposed to around 90psi for MD112-H19 or 3004-H320. This implies the possibility of be- ing able to form drawn and ironed cans from 3004-H19 in a thinner gauge than had been previously utilized, which portended great economic savings in the form of being able to make a lighter draw and iron can. l6a In April of 1967, Mr. Bylund again discussed the pro- _gram of alloy investigation for potential D and I base stocks with Mr. Larson of Reynolds Metals’ Metallurgical Engineer- ing Department and with Mr. Gidley, the Can Division metallurgist. They jointly agreed on the direction the program should take, as reflected in a report prepared by Mr. Gidley on April 19, 1967. [PRM 2160]. That report recommended that Reynolds Metals: ‘‘1) Continue the MD-112 evaluations as originally planned, but accept this alloy as the lower limit. 2) Initiate a program to further evaluate 3004 in the H-19 temper. Determine whether or not this alloy represents the upper limit. 3) Select an intermediate alloy and evaluate its capabilities.”’ During the week of August 3-11, 1967, Reynolds Metals evaluated at its Equipment Center the various alloys under consideration for D and I stock, which included MD112-H19 and 3004-H19. The results of this evaluation are contained in a report written by Mr. Gidley on September 7, 1967 [PRM 2179]. Over 100,000 3004-H19 cans were made during this period and were later filled and seamed by bottlers. By the end August, 1967, Mr. Bylund’s MD112 type alloy and the 3004 type alloy were the only two alloy systems that were under active consideration by Reynolds’ Can Divi- sion for commercial application of Mr. Bylund’s concept. When aluminum sheet made in accordance with these alloy systems is drawn and iron into can bodies with the aluminum sheet not having received any anneals or thermal treatments so that it remains in a highly cold worked condition, drawn and ironed cans made from each of these alloy types perform satisfactorily. Both alloys contain enough alloying elements to provide adequate strength and both have enough iron to pro- vide a die polishing effect on the draw and iron tooling. Cans made from the MD112 type alloy systems are a lit- tle bit cheaper in that the basic alloy itself is a little bit 17a cheaper than 3004. On the other hand, cans made from the 3004 type alloy system provide a little more strength in the finished can than those made from MDi12. [PRM 2197]. The Can Division of Reynolds opted in 1968 to produce cans commercially from a 3004 type alloy system in highly cold worked condition and to discontinue considering MD112 for commercial draw and iron considerations. A 3004 type H19 alloy is still used today by Reynolds. In the midst of the first large scale production evalua- tions of 3004-H19 (and the third for the MD112-H19) that were taking place during early August, 1967, the third Bylund patent application was filed. This was application Serial No. 660,132 filed on August 11, 1967, which was filed as a continuation-in-part of the earlier second application which had been filed in August of 1966. This third application repeated the drawings and disclosure of the earlier applica- tions relating to the unusual work hardening rate of the MD79 Aluminum-Iron alloy in foil applications, and also to the use of the MD79 alloy in highly cold worked conditions, for forming drawn and ironed can bodies without any anneals or thermal treatments. In addition, this third patent applica- tion contained a broad, additional disclosure and claims relating to the basic concept of Bylund of cold rolling any of a variety of aluminum alloys into sheet and then drawing and ironing the sheet into a can body with the cold rolling and drawing and ironing operations being performed without the © intervention of a thermal treatment. Thus, the application provided [PRM 2058, page 15] that: ‘In accordance with the invention, and in keeping with the foregoing considerations, it has been found that aluminous metal of various types may be subjected to a fabricating operation which involves the steps of: (a) hot rolling the metal to a hot line gage suitable for single or multi-stand cold rolling, such as between about 0.100’’ and about 0.250’’; (b) rolling the metal from hot line gage in one or more cold rolling passes into coilable sheet stock of a thickness on the order of 10-20% of the hot line gage; 18a (c) forming the cold rolled sheet into a finished article, such as by drawing and ironing to effect a further reduc- tion of about 65% (the total cold working reduction from hot line gage being in excess of 90%); (d) performing the cold rolling and forming operations without the use of a thermal treatment at any thickness of the metal below about 0.100’’, the metal being work- hardened in the course of such operations and still re- taining sufficient ductility for finishing steps such as necking or flanging of can bodies.’’ Claims were also presented in this application to a method in- volving the above steps without any alloy limitations other than that they have a low work hardening rate in the region above 75% reduction and sufficient ductility at high cold work levels to permit cold working to the extent of at least 90% without the necessity of annealing or stress relieving the metal. These were presented as original Claims 30-39 [PRM 2058, pp. 28-31]. These claims are the ones that ultimately issued as Claims 1-10 of the ‘972 patent in suit with some minor amendments by way of thickness limitations and speci- fying forming a hollow article. The 660,132 application also contained additional specific disclosure of and claims to the new MD112 type of alloy, containing not only iron but manganese and magnesium as well. Thus the specification provided [PRM 2058, p. 16]: ‘It has also been discovered that the beneficial effects of relatively high iron content in the essentially binary aluminum—iron alloys previously mentioned, particularly in reducing the work hardening rate, are applicable with respect to alloys containing additional alloying elements such as magnesium, manganese, or both. * * * In accordance with this alloy aspect of the present inven- tion, typical alloy systems are... ”’ In addition, specific examples 11-17 were contained in the third patent application, these being examples of different MD112 type alloys of varying percentages of iron, magnesium 19a and manganese. These MD112 type alloys were specifically claimed in original claims 22-28, with the limits of their alloy- ing constituents being there delineated. The 660,132 application as filed contained claims directed to: (1) Aluminum foil made from the various high iron content alloys [Claims 1-4] (2) A wrought aluminum article made from the various high iron content alloys [Claims 5-12]; (3) A method of making wrought aluminous metal ar- ticles from the highly cold worked high iron con- tent alloys without any annealing or thermal treatments [Claims 13-21; Claim 20 specifically relates to drawing and ironing can bodies] (4) The novel high iron content alloys themselves {Claims 22-28] (5) A drawn and ironed can body made from a highly cold worked aluminum alloy including iron [without specifying a percentage] as an alloying element [Claim 29] (6) The method of making articles from any aluminum alloy including cold rolling the aluminum to a greater then 75% reduction and then conducting a forming operation including im- parting additional cold working to the extent of at least 90%, all without any thermal treatments. [Claims 30-39; Claims 34-39 related specifically to drawing and ironing can bodies from highly cold worked aluminum sheet.] When ite Patent Officer Examiner considered the ap- plication Serial No. 660,132, he determined that there was more than one separate and distinct invention being claimed, and accordingly, as provided by Patent Office practice, he issued a requirement for restriction between Group I claims pertaining to wrought articles and alloys [Claims 1-12 and 22-29] and Group II claims pertaining to a method of making wrought articles [Claims 13-21 and 30-39]. 20a As a result of the restriction requirement Claims 13-21 and 30-39 [the method claims] were cancelled from this ap- plication and were refiled in the dividional application Serial No. 712,314 on January 16, 1968 [PRM 2059]. The remaining claims in application Serial No. 660,132 were meanwhile allowed and issued in Patent No. 3,397,044 on August 13, 1968. The divisional application Serial No. 712,314 thus con- tained all method claims, with the claims falling roughly into two groups. One group of claims (13-21) are directed to alloy- ing aluminum including adding iron within a specified percen- tage rcnge and cold rolling, with some of this group of claims specifying drawing and ironing. The other major group of claims (30-39) were not restricted to any particular kinds of alloys but rather related broadly to a method involving cold rolling aluminum sheet to specified reductions [with no an- nealing] and drawing and ironing can bodies therefrom. This application also was made subject to a requirement for restriction by the Patent Office. The broad method claims not restricted to any particular alloy were cancelled from this ap- plication and refiled in a further divisional application Serial No. 889,790 on July 9, 1970. The remaining claims in Serial No. 712,314, which pertained to specific high iron alloys, were allowed and issued as Patent No. 3,571,910 on March 23, 1971. The divisional application Serial No. 889,790 [PRM 2060] was filed on July 9, 1970 with the non-elected method claims of the earlier application [along with five other new method claims' directed to the same invention]. A _pre- examination amendment filed May 10, 1971 [PRM 2060, page 34] added seven article claims directed to a drawn and ironed can body made from an aluminum alloy containing 0.75-2.5% iron. Again, there was a further requirement bet- ween the broad method claims, unrestricted to any particular > These claims issued as Claims 11-15 of the ’972 patent and do not contain any alloy limitations. 2la alloy, and the article claims directed to drawn and ironed can bodies made from the particular novel alloys containing .75-2.5% iron. The Examiner full well appreciated that the broad method claims were not restricted to any of the par- ticular novel high iron containing alloys which had been disclosed and claimed. In his requirement for restriction [PRM 2060, page 44] the Examiner noted that: ‘‘The method of fabricating recited in the Claims 1-15 could be used in making can bodies having a different composition than that claimed in Group Ii. For example the metal might contain 4% iron.”’ Thus, the Examiner was fully aware that the broad method claims were not restricted to using any of the specifically disclosed novel high iron content alloys. In response to the requirement for restriction in applica- tion Serial No. 889,790 [PRM 2060], the article claims directed to a drawn and ironed can body made from an aluminum alloy were cancelled from this application and refil- ed in a further divisional application Serial No. 234,780 on March 15, 1972 [PRM 2061]. The broad method claims in Serial No. 889,790 were allowed and issued in Patent 3,691,972 on September 19, 1972. This is one of the patents in suit in this litigation. The claims in the further divisional application Serial No. 234,780 to a drawn and ironed can body made from an aluminum alloy having particular alloying elements and being cold worked to specified degrees, were amended on August 22, 1973. Whereas the previous claims had specified the aluminum alloys of the drawn and ironed can body as having 0.75-2.5% iron and had characterized the alloy as exhibiting sufficient ductility to permit cold working to the extent of at least 90% without the necessity of annealing or stress reliev- ing, the amended claims positively recited the wall of the drawn and ironed can body as being cold worked to the ex- tent of at least 90% and characterized the aluminous alloy as containing ‘‘up to 2.5% iron in an amount sufficient to pre- 22a vent die pick-up from interfering with the drawing and iron- ing operations.’’ The language ‘‘up to 2.5% iron’’ was not any new matter. That language appears in the Abstract of the Disclosure of the Application Serial No. 660,132 [PRM 2058, p.1], which was filed on August 11, 1967. These amended claims were presented as claims of the type that issued as Claim 26 of Patent No. 3,397,044 [PRM 2058], issued August 13, 1968. That Claim 26 simply specifies the presence of iron as an alloying element, without specify- ing any particular percentages. Thus, Claim 26 in the 1968 ‘044 is broader than the claims presented in the August 22, 1973 amendment and which issued as Claims 1-6 of the ‘590 patent. This was pointed out to the Patent Office [PRM 2061, p. 30]. Method claims were also presented claiming the method of making the articles. With respect to the method claims (which issue as Claims 7-13 of ‘590 patent) Bylund’s attorney explained as follows: [PRM 2061, p. 40-41}: ‘‘Thus, for example, the claims of 3,691,972 have no alloy limitations; and the claims of 3,571,910 are directed to methods involving essentially binary Al-Fe alloys (see claims 8 and 9 of that patent as to can making aspects). With respect to alloy aspects of the present invention, claims [1-13] are intended to be broad enough to cover making drawn and ironed can bodies from work harden- ed sheet of various standard aluminum base alloys in- cluding 3004, an alloy which has been widely used for cans, but previously either not for drawing and ironing, i.e. only for making seamed containers, or for drawing and ironing either in 0-temper or intermediate tempers of the type normally obtained by stress relieving the cold rolled sheet’’. Because of the similarity, and to obviate a rejection on the basis of double patenting, a terminal disclaimer was entered in this application, disclaiming that portion of the term of the patent to issue which would have extended beyond the expira- tion date of Patent No. 3,397,044. This patent is also one of the patents in suit in this litigation. 23a In this trial evidence of ex parte tests which were made during its course was offered and admitted. Notwithstanding their receipt into evidence this Court takes a very dim view of same and does not here deem them as helpful or relevant. This view is apparently shared by others. See Illinois Tool Works, Inc. v. Foster Grant Co., 547 F.2d 1300 (7th Cir. 1976), and Popeil Brothers v. Schick Electric, Inc., 356 F. Supp. 240 (N.D. Ill. 1972). Under Graham v. John Deere Co., 383 U.S. 1,17,15 L.Ed. 2d 545, 556 (1966), the following basic factual inquiries are to be resolved: 1. Scope and Content of Prior Art The articles, patents and trade literature published at the time the inventions here were made all suggested going soft in conventional drawing and ironing. Additionally the activities of those in the trade all supported going to soft tempers. Alcoa activity published its claim to being the first to draw and iron H19 temper sheet without an intermediate anneal prior to this lawsuit. 2. Level of Ordinary Skill Since the ‘‘level of ordinary skill’’ in a particular art has not usually been defined in writing, the usual way of deter- mining such level is by referring to the subjective reaction of a person thoroughly familiar with the particular art and, if possible, one who practiced the art at the crucial time in question, Malsbary Mfg. Co. v. Ald. Inc., 447 F.2d 809, 17! U.S.P.Q. 7 (7th Cir. 1971). The persons of ordinary skill in drawing and ironing aluminum alloy sheet for beer and beverage cans at the time the Bylund inventions were made included persons from Reynolds, Alcoa and National, as well as from Kaiser, CCC, American Can Co., and Coors. Their background included 24a people actually making D&I aluminum cans; those in packag- ing development; and those in related managerial roles. There were also several people who possessed more than ordinary skill in the art as they held patents relating to the field. These would include Mr. Maeder and Mr. Sandor for Reynolds; and Mr. Close, Mr. O’Brien, Mr. Lake, Mr. Dunn, Dr. Anderson, and Mr. McBride for Alcoa. Mr. Larson testified that the Reynolds’ Can Division wanted softer alloys. Mr. Larson thought that flange anneal- ing would allow high strength alloys in soft tempers to be us- ed. He realized after learning of the Bylund inventions that the way to go was to use all of the strength from cold roll- ing—which was free—and then add just enough alloying elements for strength, without adding too much so that a can could not be formed. Mr. Maeder believed that H32 was the highest temper that the D&I process could tolerate. He was a patentee and a person of more than ordinary skill in the art. So was Mr. Sandor, who suggested using certain high strength alloys and stress relieving them. Mr. Gidley, Mr. Householder, Mr. Shockley, and Mr. Burleson all went along with H32 temper. All testified to the effect that they were surprised when they learned from Bylund that H19 tempers could be used. At Alcoa, the plan was to use high strength alloys (PRM 2527) in ‘‘O”? tempers (PRM 2533). When this decision was made Dr. Anderson, Mr. Blake, Mr. Schaffer and Mr. Wolff, among others, participated in, and Mr. O’Brien and Mr. Lake were informed of, the alloy selections. None of these persons suggested using H19 tempers. Mr. Lake, also a patentee, on May 12, 1967, had in fact informed CCC that the present specification for D&I cans was 3004-0 and that higher strength magnesium alloys were expected to be more attractive (PRM 2674), which would be 5056 and 5082 in ‘‘0”’ temper (PRM 2533). Dr. Anderson, Mr. O’Brien, and Mr. Lake all hold United States patents and are persons of more than ordinary skill in the art. The program went forward with the high strength ‘‘0’’ temper alloys (PRM 2533). Mr. Wolff, = Si a te & 25a was by June 27, 1967, to do the first phase of the project and make cups from the ‘‘0’’ temper alloys selected (PRM 2547). His work order is dated July 7, 1967 (PRM 2630). Actually, Alcoa was heavily into impacting as the best way to go (PRM 3187). It was after Reynolds’ order from Alcoa of 10,000 pounds of 3004-H19 for D and I in July of 1967, that Mr. O’Brien had the first sample prototype cans made at Alcoa from 3004-H19 (albeit with the aid of a torch). The record shows what the reaction was of the people of ordinary (and extraordinary) skills in the art of Alcoa. Mr. Close, an inventor himself of aluminum can (PRM 2624), reported to Mr. O’Brien ‘‘Congratulations, I didn’t think you could get there with the Drawn Iron process’’ (O’Brien Dep. Tr. 162). Mr. Close immediately shut down Alcoa’s impact operations (PRM 2555) upon which Alcoa had spent millions of dollars (O’Brien Dep. Tr. 144). Mr. Dunn of Alcoa later claimed as an integral and important part of an invention of his in a patent application first filed in September of 1969 the use of H19 temper without heat treatments during drawing and ironing, and received patents (see PRM 2063 and 2064). Indeed, in prosecuting these Dunn patents the Patent Office was told that the prior art taught away from using H19 without heat treatments for drawing and ironing (PRM 2063 amendment of February 2, 1973). Mr. Sands, who confirmed the Reynolds Order for 3004-H19 D&I can stock (PRM 2831), regarded the use of H19 temper for D&I as a ‘‘major move’’ (PRM 2559 & 2560), one which enabled aluminum cans to leap-frog into a preferred position (Sands Dep. Tr. 85). Mr. O’Brien hailed it as the ‘‘first ‘ma- jor step’’’, and recommended that Alcoa ‘‘immediately ac- celerate’’ the Alcoa development program (PRM 2550). It is interesting to note that by August 10, 1967, even before Alcoa had made any of its prototype 3004-H19 cans, that Alcoa was pushing Coors to try H19 (PRM 2180). By August 25, 1967, Mr. Sands advised Mr. O’Brien in connec- 26a tion with O’Brien’s August 17, 1967 letter reporting that pro- totype 3004-H19 cans had been made to “‘strike while the iron is hot’? and produce 20,000 cans (PRM 2554), and by September 13, 1967, Mr. Sands needed two Alcoa cans filled with beer to ‘‘tip’? CCC and American Can Co. (PRM 2555). As seen from the above, those persons having a level of ordinary or above ordinary skill all had knowledge of aluminum drawn and ironed cans and included metallurgists (e.g., Gidley, Larson, Sandor, Householder, McBride & Peak), tooling and machinery persons (e.g., Maeder, Gidley, Dunn and unnamed persons at Coors and Kaiser), scientists (e.g., Dr. Anderson, Dr. Dedrick), aluminum sheet mill peo- ple (e.g., Larson, Nielsen) and aluminum packaging people (e.g., Sands, O’Brien, Lake, Gidley, Maeder). But only Mr. Bylund discovered that a D&I can could be made without in- termediate anneals. 3. Differences Between The Prior Art and The Claims in Issue There exists two principal and substantial differences bet- ween Mr. Bylund’s inventions and the prior art: (1) The elimination of annealing or stress relieving in the process of making drawn and_ ironed aluminum cans from the beginning of cold rolling through the ironing operation; and; (2) The making of aluminum alloy sheet by selecting the amount of alloy elements to a [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385006_1990%3A1. Public record. Not legal advice.