Record and brief — Devex Corp. v. General Motors Corp.

Supreme Court brief1982

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MAR 17 1982

No.

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IN THE

Supreme Court of the United States

OCTOBER TERM, 1981

DEVEX CORPORATION, TECHNOGRAPH, INC., WILLIAM

C. MeCOY, Jr., individually and as Executor of the Estate of

WILLIAM C. MeCOY, deceased, THEODORE A. TE

GROTENHUIS, FREDERICK B. ZIESENHEIM, MARJORIE

TE GROTENHUIS, and KATHARINE M. BASSETT,

Petitioners,

GENERAL MOTORS CORPORATION,

Respondent.

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE THIRD CIRCUIT

Davip F. ANDERSON Sipney BenvDer

350 Delaware Trust Building Aaron LEWITTES

Wiimington, Delaware 19899 585 Stewart Avenue

(302) 658-6771 Garden City, New York 11530

(516) 222-0147

Wuuiam ©. McCoy, Jr.

1200 Leader Building Freverick B, ZipseNuem

Cleveland, Ohio 44114 301 Fifth Avenue

(216) 579-1700 Pittsburgh, Pennsylvania 15222

(412) 471.1590

LYNN ALSTADT Attorneys for Petitioners

301 Fifth Avenue

Pittsburgh, Pennsylvania 15222

(412) 471-1590

Of Counsel

Question Presented

Where the Courts below have found continuous infringe-

ment of plaintiffs’ patent by defendant, affecting over 1.3

biliion non-bumper parts and resulting in savings to the

defendant of over $60 million, is it not error to award

plaintiffs no compensation whatsoever for such infringe-

ment in light of the statutory mandate of 35 U.S.C. § 284?

Parties Below

The plaintiffs in this case are:

Devex Corporation, an Ohio Corporation; Technograph,

Inc., a North Carolina Corporation; William C. MeCoy,

Jr., individually and as Executor of the Estate of William

C. McCoy, an Ohio resident; Theodore A. Te Grotenhuis,

an Ohio resident; Frederick B. Ziesenheim, a Pennsylvania

resident; Marjorie Te Grotenhuis, an Ohio resident, and

Katharine M. Bassett, a Connecticut resident.

The defendant is General Motors Corporation, a Dela-

ware Corporation.

ii TABLE OF CONTENTS

SEE ge rues tecosansesneseoeentods

STATUTE INVOLVED .........cccccccccccccccccscccces

STATEMENT OF THE CASE .........ccccccccccccccces

1. Plaintiffs’ Standard Of Comparison For

Ee MND onc ce ccccccsccccccvesecsees

2. The Henricks Process Was Superior, Indeed

Even Dominant, For Cold Extrusion ........

3. GM Saved More Than 60.8 Million Dollars ..

4. The Parties Agree That A Reasonable

Royalty Here Is A Fair Share of GM’s

DE Scccbcnensesedescedveeseseudeweess

Reasons ror GRANTING THE Writ

The Failure by the Courts Below to Award Any

Royalty on 1.3 Billion Infringing Non-Bumper

Parts, Notwithstanding GM’s Savings of over $60

Million from Such Infringement, Ignores the Express

Mandate of 35 U.S.C. § 284 As Interpreted By This

Court and Other Federal Courts ..................

i Bl a a

TaBLe oF Crrations ili

PAGE

Cases:

Cambria Iron Co. v. Carnegie Steel Co., 224 F. 947

Se Ss SED 0066 5b0006d co esecicersivcsoesens 9,10

Devex Corp. v. General Motors Corp., 321 F.2d 234

(7th Cir. 1962), cert. denied, 375 U.S. 971 (1964) 2,3

Devex Corp. v. General Motors Corp., 467 F.2d 257

(3d Cir. 1972), cert. denied, 411 U.S. 973 (1973) 2,3

Devex Corp. v. General Motors Corp., —— F.2d ——

Se SA ED cdc dadencdccadenwe eccenscesawe 1

Devex Corp. v. General Motors Corp., 494 F. Supp.

ED Cb.b6dussedednsscescscessses 4

Georgia Pacific Corp. v. U.S. Plywood-Champion

Papers, 318 F. Supp. 1116, 1123, aff'd 446 F. 2d

295 (2d Cir. 1971), cert. denied, 404 U.S. 870... = 12

Gordon Form Lathe Co. v. Ford Motor, 133 F.2d 487

SE CE EEE nde bb enue aiuhudescceonsseces 9, 10, 11

Panduit Corp. v. Stahlin Bros. Fibre Works, 575 F.

ee ee I ED ho cad cccncccsscceseus 12

Phil. W. W’ks Co. v. U.S. Rubber Reclaim. W’ks, 227

Pe ee SED Sdocebedsescseceenaessees 11

Tights Inc. v. Kayser Roth Corp., 442 F. Supp. 159

ES MED $4060 064060006 céosnntnscoeees 12

Tilgkman v. Proctor, 125 U.S. 136 (1888) ........ 9, 10, 11

United States Frumentum Co. v. Lauhoff, 216 F. 610

Se Ws MED - Seacodeasenséersicendcncascdes 9

STATUTES:

i i es cccedisceeenshbeodvecoeesndeedes 2,9, 12

In THE

Supreme Court of the United States

OCTOBER TERM, 198!

Devex Corporation, et al.,

Petitioners,

GeneraL Motors Corporation,

Respondent.

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE THIRD CIRCUIT

Petitioners, Devex Corporation, et al., respectfully pray

that a Writ of Certiorari issue to review the Judgment

entered on December 15, 1981 by the United States Court

of Appeals for the Third Circuit.

Opinions of the Courts Below

The Opinion of the Court of Appeals on the accounting

is reported at F.2d (A304a).* Its orders

denying plaintiffs’ petition for rehearing and denying Gen-

eral Motors’ petition for rehearing en bane appear at

A343a-A344a. The Opinion of the District Court is re-

* Citations are to the Joint Appendix separately bound, herein

designated by “A” and page number.

ported at 494 F. Supp. 1369 (A280a). The Special

Master’s recommendation, unreported, is set forth at

Al153a.

The Opinion of the Court of Appeals for the Seventh

Circuit on the issue of validity is reported at 321 F.2d

234 (1963), cert. denied, 375 U.S. 971 (1964) (A6la). The

opinion of the Court of Appeals for the Third Cireuit on

the issue of infringement is reported at 467 F.2d 257

(1972), cert. denied, 411 U.S. 973 (1973) (A138a).

Jurisdiction

The Judgment of the Court of Appeals was dated and

entered on December 15, 1981. The respective Petitions

for Rehearing of the plaintiffs and defendant were denied

by the Court of Appeals on January 13, 1982. This peti-

tion for certiorari was filed within 90 days of that date.

The jurisdiction of this Court is invoked under 28 U.S.C.

§ 1254(1).

Statute Involved

This case involves § 284 of the Patent Statute, 35 U.S.C.:

Upon finding for the claimant the court shall award

the claimant damages adequate to compensate for the

infringement, but in no event less than a reasonable

royalty for the use made of the invention by the in-

fringer, together with interest and costs as fixed by

the court.

When the damages are not found by a jury, the

court shall assess them. In either event the court may

increase the damages up to three times the amount

found or assessed.

The court may receive expert testimony as an aid

to the determination of damages or of what royalty

would be reasonable urder the circumstances.

Statement of the Case

This is an action for patent infringement by the patent

owners and exclusive licensee, plaintiffs, against General

Motors, defendant. The patent is Reissue Patent No.

24,017, sometimes called the Henricks or Devex patent.

The patent issued March 4, 1952 and expired March 4, 1969.

Claim 4, the only claim of the patent involved, has been

held valid, 321 F.2d 234 (7th Cir., 1963) cert. denied 375

U.S. 971 (1964). It is also settled that claim 4 was

infringed by this defendant in the production of bumpers

and cold extruded, non-bumper parts, 467 F.2d 257 (3d

Cir., 1972), cert. denied, 411 U.S. 973 (1973). The present

petition arises out of the accounting that followed the

validity and infringement rulings. Upon the accounting

before a Special Master (Bruce M. Stargatt, Esquire),

additional bumper and non-bumper practices were found

to infringe, but plaintiffs were awarded a reasonable

royalty rate of 4% of 1% on bumper infringement only.

The District Court modified this, first by finding, contrary

to the Master, that certain accused rinse practices in-

fringed, and, second, by increasing the rate on the infring-

ing sales value of bumpers to 34 of 1%, for an award to

plaintiffs in the amount of $8,813,945.50. Further, the Dis.

trict Court accepted the Master’s recommendation that

interest be paid from dates of infringement at prevailing

corporate bond rates. Interest in the amount of

$11,022,854.97 brought the total amount of the judgment to

$19,836,800.47.

The District Court, however, also accepted the Master’s

conclusion that no royalty should be awarded on extensive

findings of cold extruded, non-bumper infringement.

Both sides appealed to the United States Court of

Appeals for the Third Circuit, which unanimously affirmed

the judgment of the District Court (1981) (A304a).

Claim 4 of the patent provides as follows:

The process of working ferrous metal which comprises

forming on the surface of the metal a phosphate coat-

ing and superimposing thereon a fixed film of a com-

position comprising a solid meltable organie binding

material containing distributed therethrough a solid

inorganic compound meltable at a temperature below

the melting point of the ferrous metal phosphate of

said coating and having a hardness not exceeding 5 on

the Mohs’ hardness scale, and thereafter deforming

the metal.

This lubricating process is used in cold forming metal car

parts by pressure.

The happy result of [the Devex] process is that

phosphate, soap and borax work to lubricate the pres-

sure-forming operation, preventing harmful contact

between the metal products and the machinery with

which they are formed. . . . [The Devex process] is

especially beneficial because it may be easily cleaned

from the meta! product following its formation.

Devex Corp. v. General Motors Corp., 494 F. Supp. 1369,

1372 (D. Del. 1980) ( A282a).

This petition for a writ of certiorari involves only one

of the many issues litigated below.

The Court of Appeals affirmed the District Court’s find-

ing that GM engaged in massive infringement of the patent

in the manufacture of non-bumper parts. Notwithstanding

this finding of infringement, the Courts below declined to

award plaintiffs any compensation whatever. This star-

tling result was defended on the grounds that Devex’s prof-

fered standard of comparison to assess damages was un-

acceptable and, even if Devex’s standard were acceptable,

GM’s various divisions ‘‘easily substituted non-infringing

processes.’’ The lower Courts thus concluded that the

Henricks process was of ‘‘relatively slight importance’’ to

GM, and no award of damages was necessary. The record

simply does not support these conclusions. On the con-

trary, the stipulated and undisputed facts developed below

establish both the importance of the process to GM and the

reasonableness of plaintiffs’ standard of comparison which

was nothing other than GM’s actual manufacturing method

of machining and hot forging that was in use throughout

the entire patent period.

1. Plaintiffs’ Standard of Comparison for

Cold Extrusion.

Plaintiffs chose as the standard of comparison GM’s ac-

tual non-infringing manufacturing method in making non-

bumper parts, namely, machining or hot forging. The

uncontroverted evidence is that GM used this very com-

parison in the regular course of business to compute its

savings at the time it converted to the use of the Henricks

process. Thus, GM, in the regular course of business,

prepared Appropriation Requests for approval by top

management, which contained an analysis of savings to be

realized*® in a conversion from the prior manufacturing

method. These “Appropriation Requests”—-which were all

included in the record below—demonstrate that GM itself

compared the advantages of the cold extrusion process

using the Henricks system with GM’s prior, actual manu-

facturing method—machining or hot forging—in order

to calculate GM’s savings. Furthermore, GM’s conduct in

this regard was consistent with the industry-wide practice

of calculating savings by comparing cold extrusion to tradi-

tional machining methods.**

* Where available, actual savings realized were used.

** Indeed, this was the standard method of comparison as late

as 1969. E.g. Impact Mechining (Verson Allsteel Press Co. 1969).

Several similar articles and pamphlets were also put into evidence

below.

Moreover, the machining and hot forging methods used

by GM in its regular, commercia! production, were hardly

“uneconomical,” as the lower courts suggested. Indeed,

GM itself made no such contention. The view of the courts

below that such practices were ‘‘too old and inefficient”’

to constitute a standard of comparison is contrary to the

stipulated and uncontested facts; it was the efficiencies of

the Henricks proces for large-scale cold extrusion produc-

tion on certain parts in the millions that caused GM to

replace its hot forging and machining operations with the

Henricks process. Because the Henricks process was the

replacement for hot forging and machining, these practices

constitute the best standard of comparison for estimating

cost savings from GM’s adoption of the Henricks process.

2. The Henricks Process Was Superior, Indeed

Dominant, for Cold Extrusion.

GM’s lubrication manuals, the documentary evidence and

testimony, and its actual practice, all show without con-

tradiction in the record that the Henricks lubricating sys-

tem for cold extrusion was superior and indeed at times,

even dominant and preemptive, making the difference

between success and failure.

The experience at the Saginaw plant where GM made

steering gears is instructive. The amount of savings for

Saginaw’s infringement amounted to $29,012,550 or 47.7%

of the total savings. Saginaw manufactured steering gears

for GM, a critical part, for which high quality was vital.

That need was one of the reasons for the use of the

Henricks lubricating system at Saginew. That division

produced over 300 million parts that were found by the

District Court to be infringing.

The District Court’s finding of infringement at Saginaw

covers 90.3% of Saginaw’s total parts produced by cold

extrusion for the period 1957 through the expiration of

the patent, March 1969.

Based on the Master’s finding of infringement at

Saginaw, there were savings of $5 million on 64 million

parts. And, because the District Court held rinsing with

borax (or equivalent) to be an infringement, there were

additional savings of $24 million on 248 million infringing

parts. Thus, the entire scope of infringing use at Saginaw

was dramatically altered by the District Court’s decision.

The record shows that Saginaw infringement commenced

in 1956, the year this lawsuit commenced. Between 1956

and 1963, infringement expanded by volume and in number

of parts made with borax. After the patent was held

valid in July of 1963, Saginaw continued to increase the

volume on the parts that were then infringing and con-

tinued to expand the number of parts upon which it utilized

borax. Borax was so essential at Saginaw that once the

process was started for extruding particular parts, the

division never deviated from that precess throughout the

life of the patent except as to one part out of twenty.

The testimony of Robert Hargesheimer, GM’s most

prominent expert on cold extrusion, demonstrates the im-

portance of borax in the cold extrusion process at Saginaw.

On cross-examination, he testified that he knew about the

alternative lubricants, but Saginaw was quite satisfied with

the results of the borax rinse. Indeed, Mr. Hargesheimer

agreed with plaintiffs’ contentions regarding the extent of

infringement at Saginaw:

**Q. So that it is fair to say, isn’t it, that as depicted

on PX-A-146-B-1, the extent of use by Saginaw of the

accused practices expanded dramatically, even after

the patent was held valid, isn’t that correct?

A. Yes.”

The importance of the Henricks process to Saginaw can-

not be ignored. As Mr. Hargesheimer himself stated:

‘‘The lubricant is very important. You can’t flow

metal without having a very good iubricant, especially

an extrusion.’’

He also agreed that the lubricant makes the difference be-

tween success and failure:

‘*if the lubricant fails, your part will fail . . .’

There were other divisions, too, where cold extrusion

infringement took place: Chevrolet Cleveland Parma,

Deleo-Remy, Diesel Equipment, Deleo Products, Delco

Electronics, Chevrolet-Buffalo, Chevrolet Bay City, Olds-

mobile and Pontiac.

3. GM Saved More Than 60.8 Million Dollars.

The District Court, rejecting the Master’s contrary find-

ing, found that rinse processes involving the use of borax

or equivalent infringed. The Court of Appeals affirmed.

That finding increased the number of infringing non-

bumper parts from 680 million to 1.37 billion. The result-

ing savings to GM from the use of the Henricks process

in cold extrusion over machining or hot forging is $60.8

million.* This amount of savings is undisputed based on

the standard of comparison of GM’s machining or hot

forging.

4. The Parties Agree That A Reasonable Royalty

Here Is A Fair Share Of GM’s Savings.

Mr. Haight, defendant’s expert, testified that a per-

centage of savings due to the change to an infringing

practice is a fair method of fixing a reasonable royalty.

He stated that the range is ‘‘up to 50 percent’’ and that

25% to 3314% may be ‘‘a little niggardly’’. Plaintiffs’

experts thought 55% of savings was a reasonable royalty

rate. Plaintiffs have asked for a reasonable royalty of

$34,760,245, an average of 214¢ per non-bumper part. The

detailed breakdown by each division is in the record below.

* Plaintiffs’ expert prepared detailed analyses of the General

Motors appropriation requests and made adjustments where neces-

sary to include all items of cost: material, labor and burden. His

method is undisputed.

REASONS FOR GRANTING THE WRIT

The Failure by the Courts Below to Award Any

Royalty on 1.3 Billion Infringing Non-Bumper Parts,

Notwithstanding GM’s Savings of over $60 Million

from Such Infringement, Ignores the Express Man-

date of 35 U.S.C. § 284 As Interpreted By This Court,

and Other Federal Courts.

The holding of the Court below violates the requirement

of a reasonable royalty under 35 U.S.C. § 284 after a

finding of infringement. Review by the Supreme Court of

that holding is important to assure proper administration

of the patent law in accordance with the intent of Con-

gress, It is also necessary to vindicate the prior holdings

of this Court and other Federal appeals courts.

The Court of Appeals for the Third Circuit has vitiated

the holding of one of the leading cases in the patent

field, United States Frumentum Co. v. Lauhoff, 216 F.

610, G1f (6th Cir. 1914), that:

“Tt is a travesty to allow [patent] property =

to be seized and infringed without remedy .

The Third Cireuit rejected the standard of comparison

actually in use by GM during the patent period. The

caleualtion of savings by comparing costs between the

infringing process and an appropriate standard of com-

parison (the reasonable royalty being a fraction of the

savings) evolved as a method of determining damages

on a process patent in Tilghman v. Proctor, 125 U.S. 136,

146 (1888), followed in a long line of cases. E.g., Gordon

Form Lathe Co. v. Ford Motor Co., 133 F.2d 487 (6th

Cir. 1943); Cambria Iron Co. v. Carnegie Steel Co., 224

F. 947, 948 (3d Cir. 1915). As this Court stated in

Tilghman: an infringer’s savings are the difference be-

tween ‘‘the fruits of the advantage which he derived from

the use of th(e) invention, over what he would have had

in using other means then open to the public and ade-

quate to enable him to obtain an equally beneiicial result.”

125 U.S. at 146.

In the leading case of Gordon Form Lathe Co. v. Ford

Motor Co., 133 F.2d 487, 494-95 (6th Cir. 1943), the

Court of Appeals held that plaintiff had to pick only

one appropriate standard of comparison, leaving to the

defendant, who did not accept it, the burden of proving

there was a better standard. The Gordon Form Lathe

Court held further that a ron-infringing practice in actual

use by the infringer at the beginning of the infringement

period is an “appropriate standard of comparison”. /d.

498. Thus, where the plaintiffs’ chosen standard is de-

fendant’s actual use, plaintiffs satisfy their “initiative”

burden in showing defendant’s cost affected by adoption

of the infringing process. That is precisely what plain-

tiffs did in the present case. Defendant had used machin-

ing and hot forging in manufacturing non-bumper parts

at the time it switched to the patented process. Plaintiffs’

choice of machining and forging as their standard of

comparison thus comes squarely within Gordon Form

Lathe and the other authorities approving reliance on

actual practice by the infringer as an appropriate standard

of comparison.

The Court of Appeals affirmed the District Court’s re-

jection of plaintiffs’ standard of comparison on the ground

that machining and hot forging were ‘‘uneconomical’’ or

‘*inefficient’’ (A2%4a; A334a). If the standard of com-

parison was ‘‘uneconomical’’ or ‘‘inefficient’’ at the time

of GM’s conversion to the Henricks patent during the

1950s or 1960s, it was only made such by GM’s use of the

patent. The courts below thus overlooked the rule stated

in Tilghman v. Proctor, 125 U.S. 136, 151 (1888) :

‘**But as to the comparative expense of the old pro-

cess, the cost at which they used that process, if they

did once use it, [is] strong evidence against them, be-

cause they may be presumed to have used it as

economically as they could . . .”’

Here, GM is presumed to have used machining or hot

forging ‘‘as economically as [it] could,’ and the cost

thereof is ‘‘strong evidence’’ against GM.

Based on GM’s actual methods of manufacturing non-

bumper parts by machining or hot forging, the uncontested

savings to GM by switching to the Henricks patented pro-

cess were $60.8 million. Plaintiffs having satisfied their

‘*initiative’’ burden, GM then had the burden, if it wanted

to contest that proof, to prove a better standard from its

point of view with demonstration of smaller savings from

the infringing use. Tilghman v. Proctor, 125 U.S. 136

(1888); Gordon Form Lathe Co. v. Ford Motor Co., 133

F.2d 487, 498 (6th Cir. 1943); Phil. W. W’ks Co. v. U.S.

Rubber Reclaim. W’ks 227 F. 171, 177 (2d Cir. 1921);

Cambria Iron Co. v. Carnegie Steel Co., 224 F. 947 (3d Cir.

1915). But GM never even attempted to show that its

savings on the infringing parts were less than $60.8 million,

based either on plaintiffs’ standard of comparison or any

alternative standard.

Plainly, as the cause of saving GM over $60 million in

infringing non-bumper manufactures, the Henricks patent

was not of “relatively slight importance’’ (A295a). Even

a small saving on each infringing part becomes important

for an aggregate of 680 million, the stipulated number of

non-bumper parts the Master found to have been made by

the infringing processes; and, a fortiori, for the stipulated

1.37 billion non-bumper parts the District Court found to

be infringing, after including GM’s rinse practices. At

defendant’s Saginaw plant, alone, infringing practices ac-

counted for $29 million in savings, almost half the total. In

the period 1957-1969, 90% of Saginaw’s stipulated non-

bumper production infringed. This is “important” by any

reasonable criterion im determining a reasonable royalty

for patent infringement.

Indeed, it is hard to understand how the Courts below

accepted the argument that the Devex patent ‘‘was rela-

tively unimportant in non-buinper making” (A334a) in the

face of the well-settled rule that massive infringement of

this type ‘‘is an admission by conduct’’ that the patented

process occupied “a uniquely favorable position in the

market place’’, Panduit Corp. v. Stahlin Bros. Fibre

Works, 575 F.2d 1152, 1160 (6th Cir. 1978) quoting from

Georgia Pacific Corp. v. U.S. Plywood-Champion Papers,

318 F. Supp. 1116, 1123, aff’d 446 F.2d 295 (2d Cir. 1971),

cert. denied, 404 U.S. 870.*

Defendant agreed that percentage of savings was the

only reasonable basis for determining royalty on infring-

ing manufactures of parts other than bumpers; and its own

expert opined that 25% to 3314% was a ‘‘niggardly’’ per-

eentage. The courts have generally allowed not less than

25%. E.g. Tights Inc. v. Kayser Roth Corp., 442 F. Supp.

159 (M.D.N.C. 1977).

The courts below found infringement on over 1.3 billion

cold extruded parts but refused to award any royalty what-

soever thereon. This, plaintiffs submit, shocks the con-

science of the Court. This failure to grant any royalty on

non-bumper infringement is contrary to the mandate of

35 U.S.C. § 284, requiring the court to ‘‘award the claimant

damages adequate to compensate for the infringement, but

in no event less than a reasonable royalty for the use made

of the invention by the infringer . . .’’, and should be re-

viewed by this Court.

* Emphasis added by Chief Judge Markey of the Court of

er and Patent Appeals, sitting by designation in the Sixth

ireuit.

CONCLUSION

For the foregoing reasons, the Petition for Writ of

Certiorari should be granted.

Respectfully submitted,

Davin F. AnpDERSON Sipney Benper

350 Delaware Trust Aaron Lewirtes

Building 585 Stewart Avenue

Wilmington, Delaware 19899 Garden City, New York

(302) 658-6771 11530

(516) 222-0147

WuutumM C. McCoy, Jr.

1200 Leader Building Freperick B, Zies—ENHEIM

Cleveland, Ohio 44114 301 Fifth Avenue

(216) 579-1700 — Pennsylvania

Lynn ALSTADT (412) 471-1590

301 Fifth Avenue

Pittsburgh, Pennsylvania

15222

(412) 471-1590

Of Counsel

Dated: March 16, 1982

Attorneys for Petitioners

~ yIpueddy

Office - Supreme Cour J

ILED

MAR 15 1992

In the Supreme Court of the Gnit

OCTOBER TERM, 1981

Devex CorPORATION, ET AL.,

Petitioners,

Vv.

GeNneRAL Motors CorPoraTION,

Respondent.

AND

GENERAL Motors CorPoRATION,

Petitioner,

Vv.

Devex CorPoRATION, ET AL.,

Respondents.

JOINT APPENDIX TO PETITIONS

FOR WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE THIRD CIRCUIT

Artuur G. CONNOLLY Georce E. Frost

Farmers Bank Building 3044 W. Grand Boulevard

P.O. Box 2207 Detroit, Michigan 48202

Wilmington, Delaware 19899 313-556-3586

302-658-9141

Counsel for General Motors Corporation

SIDNEY BENDER Frepericx B. ZiesENHEIM

Aaron LewitTEs 301 5th Avenue

585 Steward Avenue Pittsburgh, Pennsylvania 15222

Suite L-16 412-471-1590

Garden City, New York 11530

516-222-0147

Counsel for Devex Corporation, et al.

(Continued on inside front cover)

—_—_-

RENAISSANCE PRINTING COMPANY, 76 W. ADAMS

CTH FLOOR, DETROIT, MICHIGAN 48226 — (313) 964-3185

Davin F. ANDERSON Wutuaom C. McCoy, Jr.

350 Delaware Trust Building 1200 Leader Building

P.O. Box 951 Cleveland, Ohio 44114

Wilmington, Delaware 19899 216-579-1700

302-658-6771

Lynn ALSTADT

301 Sth Avenue

Pittsburgh, Pennsylvania 15222

412-471-1590

Of Counsel for Devex Corporation, et al.

TABLE OF CONTENTS

DE es CD BEES cc ccc ccc ccccdenss

Title 35, U.S. Code, Section 284 .................

Section 4888, R.S. (Repealed and Codified by Act of

July 19, 1968, 66 Sent. 792) .......... 22 ceene,

Section 4921, R.S. (Repealed and Codified by Act of

July 19, 1952, 66 Seat. 792) ...............0...

Consolidated Cases (Devex Corp. v. Houdaille In-

dustries, No. 57 C 892, and Devex Corp. v.

General Motors Corp., No. 56 C 1912, Northern

District of Illinois)

Decision on Invalidity by the District Court

CY CME beckoned cccccececeseee

Findings of Fact and Conclusions of Law by the

District Court on Invalidity dated June 29,

DMG UNEEh SC AECSE Eee vesccedoccoces

Final Judgment by District Court on Invalidity

UE Siac caccccccccccscee’

Opinion on Validity, United States Court of Ap-

peals for the Seventh Circuit dated July 12,

1963 (321 F (2d) 234, cert. den. 375 U.S. 971)

Mandate of U.S. Court of Appeals for the

Seventh Circuit dated January 17, 1964 .....

Denial of Petition for Writ of Certiorari by the

United States Supreme Court dated Jan. 6,

RS A ee ee

26a

59a

6la

74a

Devex v. Houdaille Industries

Decision of District Court granting plaintiffs’ mo-

tion for summary judgment on infringement

against Houdaille Industries, Inc. dated

PE EG SUP csc cccccocevccvosveiene

Opinion of Seventh Circuit Court of Appeals

dated July 12, 1967 in Devex Corp. et al v.

Houdaille Industries, Inc. reversing the judg-

ment of the District Court.................

Devex et al. v. General Motors

Opinion of the District Court of Delaware grant-

ing leave to amend the complaint to assert doc-

trine of equivalents dated May 23, 1968... ...

Opinion, findings of fact and conclusions of law

of the District Court of Delaware on non-

infringement dated September 8, 1970 ......

Memorandum Opinion of Judge Wright dated

EE BE MPU ha ecctcccvcccvacsecens

Final Judgment of the Delaware District Court

finding non-infringement by defendant

General Motors Corp. and dismissing the

amended complaint with prejudice dated

REY Uy DOPE ev cc cccctcdepicssgeunees

The Opinion of the Court of Appeals for the

Third Circuit reversing the District Court's

Judgment of non-infringement dated Septem-

Kk Perey rrr er orrr ers eee.

Judgment of the Third Circuit Court of Appeals

dated September 26, 1972 ................

Denial of GM's Petition for Rehearing dated

PR, WOON ac'c ccc ncuvcsvessossess

76a

85a

10la

105a

133a

136a

Denia! of GM’s Petition for Writ of Certiorari by

United States Supreme Court (1973) ........

Special Master’s report dated February 7, 1980

recommending that judgment be entered

against Gencral Motors in the amount of

$5,731,455.80, plus interest of $6,496,482.66,

or a total of $12,227,938.46 ...............

Opinion of the Delaware District Court (Wright,

S.J.) dated on August 22, 1980 modifying the

recommendation of the Special Master and,

inter alia, awarding a reasonable royalty on

bumpers in the amount of $8,815,945.50, plus

prejudgment interest in the amount of

$11,022,854.97, totaling $19,836,800.47 ....

Final Judgment of the District Court of Delaware

Gated October 6, 1960 ...............20..

Opinion of the Third Circuit Court of Appeals

dated December 15, 1981 affirming the judg-

ment of the District Court.................

Judgment of the Third Circuit Court of Appeals

dated December 15, 1981 .................

Denial of GM’s Petition for Rehearing En Banc

dated January 15, 1962 ...................

Denial of plaintiffs’ Petition for Rehearing to the

Panel dated January 13, 1982..............

15la

153a

280a

300a

303a

34la

343a

UNITED STATES CODE

TITLE 35 — PATENTS

§ 112. Specification

The specification shall contain a written description of

the invention, and of the manner and process of making and

using it, in such full, clear, concise, and exact terms as to

enable any person skilled in the art to which it pertains, or

with which it is most nearly connected, to make and use the

same, and shall set forth the best mode contemplated by the

inventor of carrying out his invention.

The specification shall conclude with one or more claims

particularly pointing out and distinctly claiming the subject

matter which the applicant regards as his invention. A claim

may be written in independent or dependent form, and if in

dependent form, it shall be construed to include all the limi-

tations of the claim incorporated by reference into the depen-

dent claim.

An element in a claim for a combination may be expressed

as a means or step for performing a specified function without

the recital of structure, material, or acts in support thereof,

and such claim shall be construed to cover the corresponding

structure, material, or acts described in the specification and

equivalents thereof. (Amended July 24, 1965, Public Law

89-83, sec. 9, 79 Stat. 261.)

§ 284. Damages

Upon finding for the claimant the court shall award the

claimant damages adequate to compensate for the infringe-

ment but in no event less than a reasonable royalty for the

use made of the invention by the infringer, together with

interest and costs as fixed by the court.

When the damages are not found by a jury, the court shall

assess them. In either event the court may increase the dam-

ages up to three times the amount found or assessed.

The court may receive expert testimony as an aid to the de-

termination of damages or of what royalty would be reason-

able under the circumstances.

Patent Statutes as Repealed and Codified by Act of July 19,

1952 (66 Stat. 792)

Before any inventor or discoverer shall receive a patent for

his invention or discovery, he shall make application

therefor, in writing to the Commissioner of Patents, and

shall file in the Patent-Office a written description of the

same, and of the manner and process of making, con-

structing, compounding, and using it, in such full, clear,

concise, and exact terms as to enable any person skilled in

the art or science to which it appertains, or with which it is

most nearly connected, to make, vonstruct, compound and

use the same; and in case of a machine, he shall explain the

principle thereof, and the best mode in which he has

contemplated applying that principle, so as to distinguish it

from other inventions; and he shall particularly point out

and distinctly claim, the part, improvement, or combina-

tion which he claims as his invention or discovery. (Section

4888, R.S.)

The several courts vested with jurisdiction of cases arising

under the patent laws shall have power to grant injunctions

according to the course and principles of courts of equity, to

prevent the violation of any right secured by patent, on such

terms as the court may deem reasonable; and upon a judg-

ment being rendered in any case for an infringement the

complainant shall be entitled to recover general da:aages

which shall be due compensation for making, using, or selling

the invention, not less than a reasonable royalty therefor,

together with such costs, and interest, as may be fixed by the

court. The court may in its discretion award reasonable attor-

ney’s fees to the prevailing party upon the entry of judgment

on any patent case. (Section 4921, R.S., as amended by Act of

Aug. 1, 1946, 60 Stat. 778.)

CONSOLIDATED CASES

Devex Corp. v. Houdaille Industries, No. 57 C 892

Devex Corp. v. General Motors Corp., No. 56 C 1912

(Judge Edwin A. Robeon, N.D. Illinois, February 1, 1962)

DECISION ON MERITS ON VALIDITY OF CLAIM 4

OF REISSUE NO. 24,017.

An order of November 19, 1949, in these two causes, con-

solidated for trial, the common issue of validity' of Claim 4 of

Reissue Patent No. 24,017 to John A. Henricks, reissued June

7, 1955, on original Patent No. 2,588,234, dated March 4,

1952, on application filed October 31, 1950.*

Suit No. 56 C 1912 was filed November 13, 1956, and [369]

No. 57 C 892 on May 17, 1957. The patent concerns a

“Method of Coating and Drawing Metal and Composition

Therefor.” Claim 4 thereof is as follows:

* But not otherwise.

* On April 29, 1946, Henricks had filed patent application No. 665,905,

which was abandoned.

“The process of working ferrous metal which

comprises forming on the surface of the metal a

phosphate coating and superimposing thereon a

fixed film of a composition comprising a solid

meltable organic binding material containing

distributed therethrough a solid inorganic com-

pound meltable at a temperature below the melting

point of the ferrous metal phosphate of said coating

and having a hardness not exceeding 5 on the Mohs’

hardness scale, and thereafter deforming the

metal.”

The patent was assigned to plaintiffs in 1955.

It is the Court's conclusion that Claim 4 of the reissue pa-

tent is invalid as anticipated by prior patents, prior use, and

prior publications. The United States patents to Singer, Oroz-

co and Whitbeck, the British patents, the 1945 runs at Briggs

Manufacturing Company, and the German publications con-

sidered together reveal the phosphate coatings on metals to be

drawn, in conjunction with lubricants, some co-acting with

the phosphate coating. While it is arguable that the precise

combination and co-action indicated by the patent are not

found verbatim in the prior art, one armed with the

knowledge of a worker skilled in that field could, the Court

believes, have achieved the result covered by Claim 4 of the

reissue patent. Furthermore, “he breadth and indefiniteness

of proportions of the elements of that claim’ preclude a

holding of its validity in view of the knowledgeable prior art,*

in [370] view of the disclosures of the specifications, and un-

* The specifications state that borax is to be used in the portions of two

to five time the amount of soap.

* There is no specification, disclosure or limitation in Claim 4 of the

amount or proportions of solid inorganic compound (borax) or solid

meltable organic binding material (soap).

warranted monopolizing of the field of use of borax and

soap.*

Plaintiffs state the invention is concerned with the lubrica-

tion of metal surfaces under the extreme conditions en-

countered in the drawing and deforming of metals which are

difficult to work, such as steel. They rely, as is to be expected,

upon the statutory presumption of validity (35 U. S. C. §282),

especially as buttressed by the issuance of the patent over

similarly cited prior art* and because the facts supportive of

validity are gleaned from defendants’ witnesses.’ Defendants,

however, assert this presumption is of no avail because “the

true state of the prior art was not considered by the Patent Of-

fice.”"* It is explained that in the drawing of metal to

transform a flat blank into another desired shape, there is

necessarily some relative movement between the surface of the

workpiece and the surface of the die, and a generation of high

pressures and temperatures. Unless suitable provision for

lubricating the surfaces is made, tearing of the metal oi gall-

ing of the dies results, and the problem, plaintiffs state, is

most acute where difficult draws of ferrous meta! are in-

* O'Reilly, et al. v. Morse, et al., 56 U.S. 65 (1858); Holland Furniture

Company v. Perkins Glue Company, 277 U.S. 245 (1928); The Incandes-

cent Lamp Patent, 159 U.S. 465 (1895); General Electric Co. v. Wabash

Appliance Corp., et al., 304 U.S. 364 (1938); United Carbon v. Binney @

Smith Co., $17 U.S. 228 (1942).

* Anderson Company v. Sears Roebuck and Co., et al., 265 F. 2d 755

(7th Cir., 1957); The University of Illinots Foundation v. Block Drug

Co., et al., 241 F. 2d 6 (7th Cir. 1957).

’ Eibel Process Company v. Minnesota & Ontario Paper Company, 261

U.S. 45, 53 (1923).

* Moran, et al., v. Protective Equipment, Inc., et al. 84 F. 2d 927 (7th

Cir. 1936); Hobbs v. Wisconsin Power @ Light Co., et al., 250 F. 2d 100

(7th Cir. 1957).

volved. The prior art revealed the use of various lubricating

schemes including ordinary lubricating oils [$71] or

lubricants containing infusible pigments, such as clay, lime,

mica or graphite — “wet film” lubricants, not fixed on the

surface of the workpiece during the drawing operation. The

function of the infusible pigments was to separate the die and

the workpiece at the points of extreme deformation to prevent

the squeezing-out of the lubricants, and simultaneously to act

as a sponge for the lubricants. Although the functioning of

the pigmented compositions was better than the others, the

result was not too desirable in that minute particles of the

pigments became embedded in the work drawn leaving it with

a dull finish. Patentee, plaintiffs claim, requires a fixed soap-

and-borax film, not just any ordinary wet film or grease lubri-

cant.

It is defendants” contention that Claim 4 is invalid because

(1) of lack of patentable invention in view of the prior art

known and practiced on April 29, 1946, the date of the aban-

doned application; (2) the process was known and used by

others before the «ate of invention; (3) the patentee did not

invent the process but simply adopted a process which was ob-

vious to persons skilled in the art; (4) it is an aggregation of old

steps which when com- [$72] bined produces no new result;'®

(5) it is beyond the disclosure of the specifications; (6) it fails

* Defendant Houdaille adopted defendant General Motors Corpora-

tion's reply brief and filed no “separate brief.”

ing and deforming operations and would increase life of drawing tools

and reduce number of drawing operations (British patents Nos. 494, 830

(1938), 496, 866 (1938), 1941 publication Korrosion and Metallwirt-

schaft, 1938 U.S. Singer patent No. 2,105,015), and that they would

provide a barrier to prevent scoring of metal being drawn or galling of

dies. Defendants cite Great Atlantic & Pacific Tea Co. v. Supermarket

continued on next page

to specify amounts and proportions of ingredients;'' (7) it

covers prior art materials of soap and borax not disclosed in

the specifications, which materials are used contrary to the

purposes patentee contemplated.

[373] Defendants contend that a patentee may not compel

independent experimentation by others to ascertain the

bounds of the claims'* and a patentee may not be claiming a

method broadly in terms of a result or function, foreclose all

means and ways of practically obtaining such result or objec-

tive.'? Substitution of one material for another of the same

class in an old combination does not constitute invention.'*

continued from previous page

Equipment Corp., 340 U.S. 147 (1950); Hollister, Collector v. Benedict

@ Burnham Manufacturing Company, 113 U.S. 59 (1885); Atlantic

Works v. Brady, 107 U.S. 192 (1882); Smith v. Nichols, 88 U.S. 112

(1874), Hotchhill, et al. v. Greenwood, et al., 11 Howard 248; Armour @&

Co. v. Wilson & Co., Inc., 274 F. 2d 143 (7th Cir. 1960); Armour

Research Foundation, etc. et al. v. C.K. Williams & Co., Inc., 280 F. 2d

499 (7th Cir. 1960); Dow Chemical Co. v. Halliburton Oil Well Cemen-

ting Co., 324 U.S. $20 (1945); Jungersen v. Ostby & Barton Co., et al,

$35 U.S. 560 (1949); Emery Industries, Inc. v. Schumann, et al., 111 F.

2d 209 (7th Cir. 1940); Himmel Bros. Co. v. Serrick Corporation, 122 F.

2d 740 (7th Cir. 1941).

$5 U.S.C. § 112; Johns-Manville Corporation v. Johnson @ Co. v.

Hillman’s, 135 F. 2d 955 (7th Cir. 1943); Frust Treating Corporation, et

al. v. Food Machinery Corporation, 112 F. 2d 119 (5th Cir. 1940); The

Incandescent Lamp Patent, 159 U.S. 465 (1895); General Electric Co. v.

Wabash Appliance Corp., et al., 304 U.S. 364 (1938); United Carbon

Co., et al. v. Binney & Smith Co., 317 U.S. 228 (1942); Graver Tank &

Mfg. Co. Inc., et al. v. Linde Air Products Co., 336 U.S. 271 (1949).

'® Standard Oil Company of California v. Tide Water Associated Oil

Co., 154 F. 2d 579 (3rd Cir. 1946).

'* National Carbon Co., Inc. v. Western Shade Cloth Co., 93 F. 2d 94

(7th Cir. 1987).

* Johnson Laboratories, Inc. v. Meissner, 98 F. 2d 937 (7th Cir. 1938).

That broadness of a claim such as Claim 4, defendants assert,

has long been condemned."*

On the other hand, patentable invention is claimed by

plaintiffs in that it is asserted that Henricks’ patented process,

although using old elements, achieves new and surprising

results, or, stated differently, the whole exceeds the sum of the

parts. 16

[374] They frankly concede that all the elements of the

Henricks’ invention were old, but urge they were put together

in a new way, resulting in new and unpredictable results and

reactions. They emphasize that Claim 4 uses a phosphate

coating (the abrasive coating of the Singer process), seemingly

a retrogression in the art; a fixed overlying film of which the

solid meltable inorganic consistent is soap and a meltable in-

organic compound (Borax) distributed therethrough,

meltable at a temperature below the melting point of the

abrasive phosphate coating and having a hardness not more

than 5 on the Mohs’ scale.

The “amazingly efficient” and “remarkable” results

claimed by plaintiffs from the Henricks’ patented process is

that “the surface of the product is improved, product dimen-

'* O'Reilly, et al. v. Morse, et al., 56 U.S. 61 (1853); Holland Furniture

Company v. Perkins Glue Company, 277 U.S. 245 (1928); The Incandes-

cent Lamp Patent, 159 U.S. 465 (1895); General Electric Co. v. Wabash

Appliance Corp., et al., 304 U.S. 364 (1938); United Carbon Co. v. Bin-

ney & Smith Co., 317 U.S. 228 (1924).

'* Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp.,

340 U.S. 147 (1950); Lewyt Corporation v. Health-Mor, Inc., et al., 181

F. 2d 855 (7th Cir. 1950); Blaw-Knox Company v. I. D. Lain Company,

Inc., 230 F. 24 $73 (7th Cir. 1956); The Mojonnier Dawson Company v.

U.S. Dairies Sales Corporation, 251 F. 2d $45 (7th Cir. 1958); Armour @

Co. v. Wilson & Co., Inc., 274 2d 143 (7th Cir. 1960); Donner v. Sheer

Pharmacal Corporation, 64 F. 2d 217 (8th Cir. 1933).

sions are maintained with consistency, tool life is lengthened,

and the practical limits of the shaping operation are extend-

ed.” Further, the “formation of insoluble or difficultly-soluble

deposits on the drawn metal is inhibited, such as zinc stearate.

Instead of the phosphate coating reacting with the soap to

form insoluble abrasive compounds, the phosphate reacts

with the borax to form amorphous, glassy materials which

contribute significantly to the lubricating value of the coating

and assist in the drawing operation and yet, amazingly do not

present any problem of cleaning.” The process results in ar-

ticles of “superior quality at lower cost.” Defendants, on the

other hand, deny any unexpected or surprising co-action or

results by the use of soap-borax lubricants over phosphate.

They note that there is no substantial difference in the rods in-

troduced in evidence, drawn only with phosphate coating and

with soap, and with soap and borax.

[375] Plaintiffs adduced expert testimony of X-ray diffrac-

tion analyses asserted to prove the glassiness of the worked sur-

face. Defendants belittle the X-ray diffraction tests, as not

identifying with any certainty the quantitative values or

amounts of the compounds alleged to have been formed by

the chemical reaction of the borax, or that they were present

in any substantial quantity or had any controlling or signifi-

cant effect in the drawing operations to which the sample rods

were subjected.

Plaintiffs contend that the prior art other than that cited

before the Patent Office is without weight as not disclosing

anything not covered by the prior art that was before the Pat-

ent Office, and therefore is not significant as not disclosing

anything substantial not considered by the Patent Office.'’

They readily acknowledge prior art use of soap and borax dry

’ Otto v. Koppers Company, Inc., 246 F. 2d 789, 801 (4th Cir. 1957).

10a

film lubrication over bare metal, patentee having so stated in

the specifications of the patent in suit. They confidently point

to the fact that defendants relied on thirty-one references at

the trial, which plaintiffs deign a per se indication that there

is no single anticipating reference, and the fact that so many

references were cited means that none of them anticipates."*

Plaintiffs further maintain that defendants have the burden

of proving invalidity on the ground of prior public use, which

must be established beyond a reasonable doubt,'* and oral

[376] testimony unsupported by contemporaneous documen-

tary or physical evidence is not enough.*® They dispatch with

alacrity the alleged prior public uses as having been very brief

episodes during World War II, and none of the presently ac-

cused processes stems from those uses, and “Whatever was

done in those plants was history — long since dead and buried

and resurrected only for the defense of this case.”

Defendants point out that the Patent Office did not have

before it at the time of the issuance of the Henricks’ patent, the

Singer patent, the Orozco patent No. 1,982,065, or the British

patent No. 494,830, or several material publications.*! The

Patent Office was not advised that lubricated phosphate

" Ric-Wil Co. v. E.B. Kaiser Co., 179 F. 2d 401, 404 (7th Cir. 1950),

cert. den. $29 U.S. 958.

'% Coffin v. Ogden, 85 U.S. 120 (1874); Eibel Process Company v. Min-

nesota @ Ontario Paper Company, 261 U.S. 45 (1923); Smith v. Hall,

$01 U.S. 216 (1937).

2© Miner v. T.H. Symington Company, 250 U.S. 383 (1919); Smith v.

Hall, 301 U.S. 216 (1937); Cline Electric Mfg. Co. v. Kohler, 27 F. 2d

638; Cold Metal Products Company v. E.W. Bliss Company, 285 F. 2d

244 (1960).

*! Transactions of American Society for Steel Treating, 1933; Wire &

Wire Products, October, 1931; Korrosion & Metallschutz, 1941;

Metallwirtschaft, 1942; Stahl and Eisen, 1942.

lla

coatings were in common public use in 1943 in drawing metal;

or that Gilron Products Company's Drawcote soap-borax

lubricants disclosed in the Orozco No. 2,469,473 and Henricks

No. 2,530,837 patents, and Whitbeck patent No. 2,470,062

were in common public use in 1943. The Orozco patent at-

tributes the lengthening of die life** to the use of soap-borax

lubricants which were in public use in 1943.

The Singer patent No. 2,105,015,** issued January 11,

1938, on application of May 14, 1936, pertained to

“Mechanically Working Metal Article,” having for its [377]

object the reduction or elimination of difficulties theretofore

encountered through contact of the metal article and the

working tool, particularly in the field of ferrous metals,

specifically, steel, where drawing dies were found to tend to

bite into or seize the metal, thereby interfering with the prop-

er drawing or reducing operation. It is noted by plaintiffs that

theretofore lubricants, principally oil, had been utilized, but

were found insufficient at high speed or high deformation

rates. They further cite the advantages and disadvantages of

the art of liming or soft metal coatings which had been used.

The patent disclosed that the difficulties could be materially

reduced or overcome by providing the surface, of the article

worked on, with a “thin crystalline coherent coating of a

metallic oxide or salt, with crystals of which are in

heterogeneous crystalline joint with the metal base and are

tightly grown together with the latter. ***” It disclosed that

while the coating could be considered a lubricant, it was not a

lubricant in the ordinary sense for the reason that the present

methods of lubrication “may also be used in conjunction with

*8 Stated in the patent to be thirty per cent.

** Not before the Patent Office as prior art, but defendants state that

British Patent No. 496,866 was cited and it discloses a process similar to

the Singer process.

12a

the practice of the present process, and in many instances will

be an essential factor in obtaining proper results.” (Emphasis

ours).

This Singer patent recommends the use for treating

“coatings of iron or complex iron phosphates or oxalates.”

“There is formed on the article a dense thin crystalline

coherent and tightly adherent coating of salts of phosphoric

or oxalic acid which combines both chemically and physically

with the metal of the base.” Singer further states that “such a

coating adapts the article admirable to [378] :nechanically

working and reduces or eliminates the troubles arising from

the contact of the article with the working element.” He also

specifies that “In many instances no further removal of the

coating is necessary after working, either because it has been

substantially removed during the working operation or that

portion which remains does not interfere with the use to which

the article is subsequently applied.”

Defendants point out that the 1938 Singer patent is

specifically directed to the process of drawing steel, to the use

of phosphate coatings, to prevent metal-to-‘ool contact in the

drawing process, and recommends that the phosphate

coatings be lubricated with known methods of lubrication,

which process permits severe reduction rates. They further

maintain all patentee did was follow Singer’s teachings exact-

ly, using well-known prior art methods of lubrication, Gilron

soap-borax, to Singer's phosphate coating.

Plaintiffs differentiate Singer's contribution as forming a

sponge-like coating on the surface of the workpiece, the

coating being adherent to it and not displaceable and

necessarily moving with the surface of the workpiece into the

high pressure zone, and being sponge-like would carry lubri-

cant with it. The sponge of Singer was a metallic phosphate of

zinc or iron. Plaintiffs state the phosphate coatings were old

and had no lubricating value per se, but on the contrary were

13a

abrasive. The limitations of the Singer process were that it left

an oily film upon the surface of the workpiece which film was

difficult and expensive to remove, especially where elec-

troplating was contemplated, which required a clean surface.

Plaintiffs [379] contend that Singer nowhere teaches or sug-

gests the use over phosphate of a fixed film comprising an

organic binding material with meltable inorganic compounds

distributed through it, such as soap and borax, and so clearly

does not anticipate Claim 4.

It is defendants’ contention that patentee knew in 1943**

that Gilron Drawcote soap-borax lubricants could be used

over phosphate coatings in accordance with Singer's teachings

but it was to Whitbeck’s interest to promote the sale of

Drawcote at the better price he could obtain if used without

the phosphate coating. If any superiority arises in the use of

the Gilron Products it is due to the patented features of the

Orozco patents 2,469,473 and 2,530,837, and Whitbeck pat-

ent 2,470,062, and the instant patent is but an effort to re-

patent the Singer process and the patented Gilron soap-borax

lubricants.

Another of the cited prior art is U.S. Patent No. 2,469,473

to Orozco and Henricks, dated May 10, 1949,*° on a “Method

of Lubricating Metal Surfaces During Cold Working.” The

patented invention utilizes a planned succession of endother-

mic reactions initiated by the frictional heat that not only

cools the frictional surfaces by absorbing heat but which pro-

duces nascent fluid lubricants at points of extreme heat and

pressure. “The preferred procedure uses both fusible organic

and fusible inorganic mate- [380] rials to produce such suc-

cession of reactions.” This patent further stated that it

** Henricks assisted Whitbeck, his employer, at the Briggs Company.

** Applicd for in 1943.

l4a

“utilized inorganic compounds to achieve the essen-

tial cooling and lubrication of the ‘sliding’ surfaces

at the elevated temperatures existing when com-

bustible organic lubricants are ordinarily no longer

capable of functioning; but, in addition, we utilize

properties of the inorganic materials to increase the

thermal stability of the preferred organic lubricants

used.”

Defendants cite this patent as disclosing increased die life

from the use of prior art Gilron Products’ soap-borax

lubricants. They cite Orozco Patent No. 1,982,065 of

November 27, 1934, as showing that it was known that soap

and borax were a good lubricant for use in deforming steel by

cold rolling to prevent sticking of the work and prevent scarf-

ing of the work.

The 1938 British Patent No. 494,830 was not considered by

the Patent Office. Defendants claim that this patent discloses

in all essential respects the process broadly claimed by Claim 4

of the patent in suit. This British patent taught the treating of

iron pipes, prior to drawing, with fats or oils, or to precipitate

deposits thereon in order to soften the surface and to reduce

the wear on the drawing tools. It stated that it also has been

“the practice to mix the oil or fat with pulverulent substances,

such as talc or litharge, for the purpose of increasing its effi-

ciency.” Defendants point out that fats are known to include

tallows which are solid at room temperature; that tallows are

one of the oldest and most extensively used ingredients in

drawing compounds, and it was known to mix drawing com-

pounds with fillers including borax. They also state that

borax, aluminum stearate and litharge are within the

classification of the “solid inorganic com- [381] pound” in

Claim 4, that each has a melting point below that of ferrous

phosphate; and each has a hardness not exceeding 5 on the

Mohs’ hardness scale. All are recommended in the patent in

15a

suit as solid inorganic compounds to be included in the “solid

meltable organic binding materials,” which is claimed and

alleged in the patent in suit to include sodium stearate or

sodium tallow soap.

The British patent further states that

“in place of using lubricants, to provide the surface

of the iron, *** by means of a phosphate treatment,

with a crystalline skin of oxides or salts, the crystals

of which coalesced firmly with the foundations,

such crystals being intended to lessen the wear on

the drawing dies.”

It further states:

“[T]he layers applied by specific surface-treatment

processes exhibit a porous, absorbent structure, and

that the combination of such a surface treatment

with a lubricating oil or fat, furnishes favorable

results. *** [S]uch chemical processes as are

capable of depositing a crystalline layer possessing

active capillary properties on the surface of the

workpiece and coalescing firmly with the founda-

tion, said crystalline layer being also adapted, by

reason of its absorbent capacity, to retain oils and

fats. The phosphatising processes, and also the

known treatment with oxalates and tannates, are

specifically suitable for iron and steel.”

The three prior public uses relied upon are (1) at the Briggs

Body Company plant at Detroit; (2) the Buick Motor Com-

pany plant at Flint, and (3) the Northern Engraving Com-

pany plant at LaCrosse. Plaintiffs claim that the processes

used were phosphate coating applied to shell casing blanks on

which were applied wet film lubricants, in accordance with

the Singer process. The wet film lubricant was abandoned,

plaintiffs state, and the dry film soap and borax system

l6a

substituted for it to eliminate the phosphate. The phosphate

coating compounds were sup- [382] plied by Parker Rust

Proof Company. Plaintiffs cite the fact that no field reports

were produced for two of the three purported public uses

which they interpret as indicative that if produced they would

have refuted and not aided the defense.** These uses, if exis-

tent at all, plaintiffs claim, were so fleeting as to be of no legal

significance, “accidental results, not intended and not ap-

preciated” and not constituting anticipation.’

Defendants, however, refute the weight to be accorded to

the lack of field reports on the ground Parker Rust Proof

Company in 1943 was not concerned with particular lubri-

cants used over phosphates, and was not so interested until

1949 when it entered upon the development of Bonderlube

235.

Plaintiffs’ version of the Briggs Body Company's prior use is

that it was done at the beginning of experimental testing in

changing over from the Singer process to Gilron, and

amounted to less than two hundred blanks which had a soap

and borax coating over the phosphate, the blanks having

been subjected to six consecutive forming operations. These

blanks were lost track of in the big flow of material. The inci-

dent is said to have no technical or commercial significance,

and is not an invalidating prior use.** Plaintiffs further point

out that at the Briggs {383] plant the phosphate tank was

** H. Mueller Mfg. Go. v. Glauber, 184 Fed. 609 (7th Cir. 1910); Mam-

moth Oil Co. v. United States, 275 U.S. 13 (1927).

*” Eibel Process Company v. Minnesota & Ontario Paper Company, 261

U.S. 45, 66 (1923).

** Miner v. T.H. Symington Company, 250 U.S. 383 (1919); Ebel Pro-

cess Company v. Minnesota & Ontario Paper Company, 261 U.S. 45, 53

(1923).

17a

emptied and refilled with Gilron material so that the tank was

no longer available for phosphating, and there never could

have been a simultaneous use of Gilron over phosphate.

Defendants, on the contrary, claim that these operations at

Briggs were not limited to a few baskets of shells but that there

continued to be drawn through the summer, shells with

phosphate coatings applied, and with the Gilron Drawcote.

They stressed the fact that full knowledge of successful runs at

the Briggs plant was had by patentee, Whitbeck (superior of

patentee at Briggs Company), Tousley, and Gilron Company,

and that proof of the knowledge was sufficient under the law**®

and the use was neither embryonic nor incomplete. Defen-

dants also maintain the proof of prior use may be by parol

testimony.*°

In scotching as anticipatory the purported prior use at the

Buick plant, plaintiffs point out that a wet film lubricant with

scratchy, infusible pigments was employed as opposed to the

fixed film with meltable inorganic compounds of Claim 4.

There was said to be no fixed film organic binder and no solid

inorganic compound meltable at a temperature below the

melting point of the ferrous metal phosphate, or that the

drawing compound used at Buick formed a fixed film over

the phosphate or was anything other than a conventional! wet

film lubricant. There is no certainty of proof that sulphur was

used, but even if it were used it is an element and not an in-

organic compound within Claim 4.

” Coffin v. Ogden, 85 U.S. 120 (1873).

* Coffin v. Ogden, supra; Becker v. Electric Service Supplies Co., 98 F .

2d 366 (7th Cir. 1938); Hobbs Patent Co. v. Atlas Specialty Mfg. Co.,

244 Fed. 176 (7th Cir. 1917); Kaser Process Pie Co., et al. v. Pie Bakeries

of America, Inc., 50 F. 2d 414 (D.C. Ill. 1931).

18a

[384] Defendants claim, however, the Buick plant was in

large production of steel shell cases using lubricated

phosphate coatings.

Plaintiffs also eschew the activities at Northern Engraving

as a prior use on the basis that there was no fixed film used

there and no meltable inorganic compounds in it. The Fer-

rolube used was not dry but plastic; in the drawing operation

it was wiped off. Further, plaintiffs claim that inasmuch as

the cost of the constituents of Ferrolube — stearic acid,

sodium stearate, and sulphur — substantially exceed the

price of Ferrolube, the story concerning Ferrolube is wholly

incredible.

Defendants contend, on the other hand, this Company was

in large producticn of lubricated phosphate castings, and

that while Ferrolube*' was not a fixed film and had no

meltable inorganic compound in it, it did provide a film

which stayed fixed with the phosphate coating through the

drawing operation where both were substantially removed; it

was a successful drawing lubricant and operation. Defendants

nm te Claim 4 only requires that the film remain fixed with the

phosphate coating in the drawing operation.

Defendants cite the publication, Wire & Wire Products, of

October, 1931, as showing that tallow soap combined with

aluminum stearate was a good drawing lubricant. They cite

the June, 1941, publication of Korrosion & Mettalschutz as

disclosing the use of zinc phosphate coatings in cold forming,

lubricated with boring oil emulsion, as lengthening the life of

drawing tools, reducing friction in the [385] forming process,

increasing the reduction and drawing speeds, and reducing

*! There was a dispute raised by plaintiffs over the contents of Ferrolube

asserting that according to the cost of the constituents it was being sold

for less than cost price but defendants point out that much of the con-

tents was water, thus reducing the product cost per pound.

19a

the number of drawing operations; the 1942 publications of

Mettalwirtschaft and Stahl und Eisen as also teaching zinc

phosphate coatings, lubricated with soap thereby providing

water insoluble soap films on the coatings. Defendants point

out that nothing was said in the patent in suit about increas-

ing the die life or the life of the drawing tools with the soap-

borax lubricants applied over phosphate coatings.

The plantiffs state of the prior art development of the

“Gilron” dry run film lubricant (called Drawcote) that it was a

reversion to the early idea of using a finely divided solid

material as a lubricant which was applied wet and permitted

to dry out to a dry fixed film. One of the formulas consisted of

soap and borax. The dry soap film formed on the workpiece

served as a carrier for the borax somewhat analogous to the

phosphate coating in the Singer process, except that the soap

film had inherent lubricating value, and did away with the

abrasive phosphate coating of the Singer process. When a

. soap film was used instead of the lubricating oil contemplated

by Singer, the problem of residual deposit on the surface of

the workpiece remained. The soap film when first applied was

water soluble but after drawing was insoluble, because the

soap was one made of animal fat, which chemically is sodium

stearate, and when placed over a zinc phosphate coating and

the work drawn, a chemical reaction results in the formation

of zinc stearate, which is also a soap but a water-insoluble one,

difficult to remove even with alkaline cleansing agents.

[386] Defendants cite as well known in 1943, more than two

years prior to April 29, 1946, the date of the original applica-

tion, the processes of drawing lubricants including tallow and

tallow soaps with fillers or pigments including borax,

aluminum stearate and litharge, compounds meltable below

the melting print of ferrous phosphate and having a hardness

not exceeding 5 on the Mohs’ hardness scale; iron, zinc and

manganese phosphate coatings lubricated with known

lubricants, or with soap, providing water insoluble soap films;

Gilron Drawcote soap-borax fixed film drawing lubricants

were known and in wide public use, and it was known it could

be used successfully on zinc phosphate coated steel.

Plaintiffs, however, understandably argue that the fact

that defendants follow the teachings of the patent in suit

rather than the prior art is indicative of the presence of inven-

tion.*

It is plaintiffs’ position that Henricks’ invention was not ob-

vious, as is manifested by the number of citations of an-

ticipating patents and uses;** the unobviousness of Henricks’

invention is shown by the history of Parker Rust Proof Com-

pany, a leader in the field. In 1949, it had decided to

manifacture lubricating compounds for use over phosphate.

It made a search of the literature which should have furnished

them knowledge of the wet film lubricants for use with the

Singer process and the dry film soap and borax lubricants, ex-

emplified by Whitbeck [387] U.S. Patent No. 2,470,062.

Plaintiffs point out that “Parker Rust Proof had spent

thousands of dollars and years of effort to arrive at the results

which Henricks had intuitively reached years beforehand.

The personnel at Parker Rust Proof had far more than or-

dinary skill in the art and yet the invention of the Henricks’

patent was not obvious.” Plaintiffs also note that Parker Rust

Proof is holding General Motors Corporation harmless as to

all phosphate coating materials and lubricating compositions

purchased from it.

** Goodyear Tire & Rubber Co., Inc., el al. v. Ray-O-Vac Company,

$21 U.S. 275 (1944), affg. 136 F.2d 159 (7th Cir. 1943); similarly

William A. Murray Spring Co. v. Fort Pitt Bedding Co., 23 F.2d 559

(3rd Cir. 1928); Kurtz, et. al. v. Beel liat Lining Co., Inc., 280 Fed. 277

(2nd Cir. 1922).

* Ric-Wil Co. v. E.B. Kaiser Co., 179 F.2d 401 (7th Cir. 1950); Hoeltke

v. C. M. Kemp Mfg. Co., 80 F.2d 912 (4th Cir. 1935).

2la

Defendants on the other hand, say patentee adopted an ob-

vious, analogous and previously known use for soap borax™*

and that Parker Rust Proof Company must have had

knowledge of the soap borax dry film system. After much ex-

perimentation, they had the idea of using a soap and borax

dry film lubricant over phosphate, the “Bonderlube series.”

Defendants point out that the patent says nothing about in-

creasing the die life with soap-borax lubricants applied over

phosphate coatings. Furthermore, inventors are conclusively

presumed to know the prior art,*® and that it took no inven-

tion to achieve the patented process but only ordinary skill,

with all the prior art and knowledge before him, to apply the

Gilron soap-borax lubricants to phosphate coated steel.

Defendants further maintain the presumption of validity of

an issued patent falls where the true state of the prior art was

not [388] considered by the Patent Office.**

Defendants dispute the history of “Bonderlube” as being

evidence of the unobviousness of the alleged patented inven-

tion, and on the contrary assert it demonstrates the invalidity

of Claim 4. They cite the pamphlets “Bonderite as an Aid in

Cold Forming” and “Bonderite and Bonderlube as Aids in

Cold Forming,” of Parker Rust Proof Company, stating the

Bonderite coating (a phosphate coating) integral with the

* Similarly to the patentee's position in Armour @ Co. v. Wilson Co.,

Inc., 274 F. 2d 143 (7th Cir. 1960).

* Zephyr American Corporation v. Bates Mfg. Co., et al., 128 F. 2d 380

(3rd Cir. 1942); Adams, et al. v. Galion Iron Works & Mfg. Co., 42 F. 2d

395 (6th Cir. 1930); Allied Wheel Products, Inc. v. Rude, 206 F. 2d 752

(6th Cir. 1953); Application of Thayer, 143 F. 2d 996 (C.C.P.A. 1944);

Applications of Adams and Free, 284 F. 2d 525 (C.C.P.A. 1960);

General Time Corp. v. Hansen Mfg. Co., 199 F. 2d 259 (7th Cir. 1952).

** Moran, et al. v. Protective Equipment, Inc., et al., 84 F. 2d 927 (7th

Cir. 1936); Hobbs v. Wisconsin Power & Light Company, 250 F. 2d 100

(7th Cir. 1957).

22a

metal surface reacts with the lubricating solution (Bonder-

lube) to form a water-insoluble soap which in itself becomes

an integral part of the Bonderite coating. The 1942 publica-

tion, Metallwirtschaft, stated similarly. Their expert, Dr.

Gibson, stated Bonderlube 235 was derived from the German

practice, described in the 1942 publication, Mettallwirt-

schaft, of providing a water insoluble soap film on the

phosphate coating to serve as the lubricant, by long soaking.

Parker Rust Proof Company developed a similar coating

more speedily by including a small amount of borax, approx-

imately three percent of the soap, to control the pH (the acidi-

ty or alkalinity), thereby obtaining the formation of the water

insoluble soap (zinc stearate) as an integral part of the

phosphate coating, in a few minutes. Defendants contend the

small amount of borax provides its long-known buffering

function, which controls and maintains the aqueous soap

solution within the narrow range of alkalinity that enables the

water insoluble soap (zinc stearate) to form quickly on and

with the zinc of the phos- [389] phate coating. They maintain

that this is a use for borax which is neither suggested nor con-

templated by the patent in suit, which rather contemplates

the use of a large amount of borax to act as a meltable pig-

ment to provide a glass-like lubricant.

Defendants state that Henricks, in his testimony, resorted

to guessing and speculation respecting the arnount of borax

required for the Claim 4 process when soap borax lubricants

are used over phosphate coatings, requiring an amount of

borax sufficient to prevent formation of water insoluble soap;

he was quoting the general cosmetic formulary of 1-5%,

which amount is sufficient to prevent the insoluble soap, such

as zinc stearate, from forming, but if it does form, the borax

emulsifies it, cleansing it. His claimed invention was to pre-

vent the formation of the water insoluble soap film, not for

the contrary purpose of providing the insoluble soap film in-

23a

tegral with the phosphate coating as the principal and chief

lubricating agent. In Bonderlube 235, the small amount of

borax, approximately three percent, the defendants cite as

providing a buffer in the aqueous soap solution for the pur-

pose of controlling the alkalinity of that solution within the

range that promotes the forming of the water insoluble soap,

zinc stearate, as an integral part of the phosphate coating,

which is not disclosed by the patent, and contrary to Henricks’

testimony. Bonderlube 235, developed prior to 1951, was

prior to the issuance of either the original patent in 1952, or

the reissue in 1955, making it further clear that the history of

Bonderlube 235 does not afford proof that the patent achiev-

ed the unobvious.

The Court has no doubt whatsoever that Henricks’ test-

imony respecting the amount of borax required in the [390]

patented process was pure speculation and guesswork, finding

no accurate foundation in the specifications or disclosures of

the claim of the patent, but made with the desperate hope of

saving an extremely broad claim.

The Court concludes that Claim 4 of the Reissue Patent

No. 24,017 is invalid for several reasons. The all-encompas-

sing breadth of the claim with a lack of specificity of propor-

tions, coupled with the informative state of the prior art, both

patented and published, as well as the prior public uses of

which patentee was cognizant, impel a holding that patentee’s

stride forward in the art was not sufficient to merit a patent

monopoly. Were it only for the breadth of the claim's scope,

the Court might be hesitant, in view of Binks Mfg. Co. v.

Ransburg Electro-Coating Corp., 281 F. 2d 252 (1960) (Cer.

Gr. ? 4 U.S. 926, Dismissed per curiam, 366 U.S. 211), to

hold Claim 4 invalid. This Circuit's Court of Appeals (Judge

Castle writing the opinion) there said at p. 257:

“There is no requirement that quantitative values

for such factors as voltage, spacing and liquid

24a

characteristics be recited. The fact that experimen-

tation or the exercise of judgment is necessary to

adapt a patented process to particular material or

to obtain the particular results desired does not im-

pair validity of the patent. Lever Bros. Co. v. Proc-

ter @ Gamble Mfg. Co., 4 Cir., 139 F. 2d 633-639.”

But when that broad scope of the patent claim is con-

sidered in conjunction with the prior use at Briggs Body Com-

pany’s plant, which prior use was participated in by patentee

and so part of his awareness; and in conjunction with the

disclosures of the Singer and Orozco patents (with the latter of

whom Henricks was in one patent a co-patentee), the British

patents, and the German publications, it appears to the Court

that patentee is seeking unjustifiably to grasp for his own

patented monopoly [391] that which was apparent or know-

ledgeable under the existing state of the art. The claim does

not specify the kind of phosphate coating, the kind of

meltabie organic binding, and the kind of solid inorganic

compound to be utilized, as well as not specifying the amounts

and relative proportions of any such items. As defendants’

proof showed, some processes could be conceived of ingre-

dients of those classes which would not be workable. Several

prior patents, some very old, and some cited publications,

disclose borax as a lubricant. The fillers, such as borax, were

said to be unctuous in their nature or slippery to touch. The

prior patents also teach that phosphate coatings on metal are

an aid in drawing, and, additionally, teach the lubrication of

the coatings. Prior patents teach the use of soap for drawing

metals. British and United States’ patents teach the use of a

dry film, the former with an organic binder with inorganic

pigment. A prior publication taught that the addition of a

filler such as borax could add to the film strength of a drawing

lubricant, including soap. A British patent discloses that wear

on tools is reduced by adding a pulverulent substance such as

talc or litharge to the fat or oil lubricant. Talc is a pigment

25a

which is the softest material on Mohs’ scale, having a rating of

one. Litharge is mentioned in the patent in suit as one of the

meltable or fusible pigments. Borax was known prior to the

time of the patent, as a buffer, and its specific pH values are

indicated in chemical reference and handbooks. A British

patent disclosed that it had been customary to use oils or fats

and to mix them with certain substances such as talc or

litharge for the purpose of increasing their efficiency; tallow is

in the classification of such fats and [$92] it is one of the oldest

so known, and it was noted it solidifies at room temperature.

There can be no question that there can be patentable in-

vention in the combination of known elements which effect an

unexpected and useful result. Thus it was recently said in

Minneapolis-Honeywell Regulator Company v. Midwestern

Instruments, Inc., decided November 29, 1961, by the

Seventh Circuit Court of Appeals (Judge Duffy):

“This Court has often applied the well-

established rule of law that a novel combination of

elements, whether all new, or all old, or partly new

and partly old, which so cooperate as to produce a

new and useful result or a substantial increase in ef-

ficiency, is patentable.”

The result of the aggregation in the instant cause, however,

does not to this Court give rise to the degree of novelty or un-

foreseeable result that was to be fceand in that case, although

the feature of utility might possible be present. Both

phosphate coating and the use of borax or its equivalent, and

the use of soap were individually known in the drawing of

metals. Their combined use is indicated to give even greater

efficiency and ease in performing the same drawing opera-

tions they were theretofore used separately to perform (and in

the prior public uses, used conjointly to perform).

26a

The Court therefore holds Claim 4 of the Reissue Patent

No. 24,017 invalid.

/s/ Edwin A. Robson,

Judge.

February 1, 1962.

[396] IN THE DISTRICT COURT

©F THE UNITED STATES.

* * (Captions — 56-C-1912 — 57-C-892) * *

FINDINGS OF FACT AND CONCLUSIONS OF LAW

[397] 1. (a) The above entitled suits were brought by

plaintiffs for alleged infringement of United States patent Re.

24,017, dated June 7, 1955, for Method of Coating and Draw-

ing Metal and Composition Therefor.

(b) By order of the Court dated November 19, 1959, the

above entitled suits have been consolidated for trial upon the

issue of the validity of claim 4 of the patent in suit, which is the

only claim of the patent alleged in either suit to be infringed.

ventor, John A. Henricks, on an application filed and pro-

secuted by William Freeman, a patent attorney of Akron,

Ohio. The patent was later assigned to the present plaintiff,

Devex Corporation, of which the inventor Henricks is presi-

dent, and then assigned by Devex Corporation to the plain-

tiffs, McCoy and TeGrotenhuis, the patent attorneys for

Henricks and Devex Corporation, by conditional assignment

subject to certain reversionary rights in Devex Corporation,

for the purpose of enforcing the patent. This assignment was

made after Henricks had tried personally to license the patent

in the industry to no avail (R. 514).

27a

[398] 2. (a) The patent in suit Re. 24,017 including claim

4 in issue is the outcome of an application, Serial 665,905,

filed April 29, 1946, by the applicant and patentee, Henricks,

for Metal Treatment and Composition for Same, which was

abandoned in favor of a continuation-in-part application

filed October 31, 1950, upon which later issued United States

patent 2,588,234 dated March 4, 1952, and for which appli-

cation for reissue was filed March 1, 1954, resulting in patent

Re. 24,017 dated June 7, 1955, now in suit.

(b) The patent in suit is directed to lubrication of metal

surfaces in cold drawing and deforming metal such as steel to

desired form and shape by means of dies, representing the

size, form and shape to be produced in the metal being

worked. The use of lubricant between the contacting surfaces

of the die and the metal being worked is necessary to reduce

friction and prevent intimate contact between the die and the

surface of the metal being worked to avoid scoring and tear-

ing of the metal or galling of the dies, and prevent develop-

ment by friction of sufficient heat at the place of contact or

engagement to cause welding and seizure to occur between

the die and the work.

materials for lubricating the dies and the work have long been

known and used.

[399] 3. The particular alleged improvement in issue in

these cases which the patent defines in claim 4 in issue, is as

follows:

“The process of working ferrous metal which com-

prises forming on the surface of the metal a

phosphate coating and superimposing thereon a

fixed film of a composition comprising a solid melt-

able organic binding material containing distrib-

uted therethrough a solid inorganic compound melt-

28a

able at a temperature below the melting point of the

ferrous metal phosphate of said coating and having

a hardness not exceeding 5 on the Mohs’ hardness

scale, and thereafter deforming the metal.”

[400] 4. The particular practice at issue in this suit which

claim 4 is contended to represent and cover is the practice of

providing a zinc phosphate coating on the surface of the steel

to be deformed; applying to that phosphate coating an

aqueous solution or emulsion of sodium tallow soap and

borax; drying or allowing to dry on the phosphate coating the

sodiuin tallow soap containing borax until it forms a fixed

film, and thereafter drawing or deforming the steel.

It is alleged with respect to this practice that the sodium

tallow soap provides the solid meltable organic material of the

claim for binding in place the borax, which is alleged to be

the solid inorganic compound of the claim meltable at a

temperature below the melting point of the ferrous metal

phosphate of the phosphate coating and having a hardness

not exceeding 5 on Mohs’ hardness scale.

Mohs’ hardness scale is a known standard for indicating the

relative hardness of materials. It is used in the claim as a

specification that the “solid inorganic compound” of the

claim shall not be hard enough to scratch the steel being

drawn.

[401] 5. Processes and methods of drawing and deforming

metal and lubricating compounds for use therein, shown by

the prior art in evidence to have been known prior to the pat-

ent in suit, are as follows:

(a) Salts such as sodium borate or sodium meta phosphate

applied to the drawing dies where the wire to be drawn enters

the die so that during the drawing operation on the wire

heated to fairly high temperature, the sodium borate or

sodium meta phosphate melts to a viscous state and lubricates

29a

the die aperture and the wire, or by leading the tungsten wire

to be drawn through a bath of said substances, or by dusting

the wire with said substances in the form of a powder so that in

the subsequent heating of the wire the adhering substances

are softened and are conducted together wich the wire toward

the die (Defendant's Exhibit 35, British Patent 11,439 of 1912

for Process of Hot Drawing Tungsten Wire).

The sodium borate and sodium meta phosphate are in-

organic compounds meltable at a temperature below the

melting point of ferrous metal phosphate and having a hard-

ness not exceeding 5 on Mohs’ hardness scale, as specified in

claim 4 of the patent in suit.

(b) Water soluble soap compounds made by saponifying

vegetable oils such as coconut oil, olive oil and palm oil, ap-

plied to the surface of the steel (sheet metal) at a temperature

of 150° F. and allowed to dry out to form [402] a coating

which will adhere to the metal during shaping or forming.

The same or similar compound is used to lubricate the dies

when the metal is being pressed to the desired shape (Defen-

dant’s Exhibit 36, Hopkins United States patent 1,769,577 of

July 1, 1930). This soap is within the category of solid

meltable organic material described in claim 4.

ture of wires and tubing, a lubricant coating for the metal

consisting of aluminum powder and nitro-cellulose suspended

in a volatile liquid such as amyl acetate is applied to the sur-

face of the metal to be drawn and dried thereon by evapo-

rating the volatile solvent amyl acetate so that a fixed film or

coating of nitro-cellulose containing the aluminum powder

distributed therethrough is provided on the metal to serve as a

lubricant during the drawing operation (Defendant's Exhibit

37, British Patent 367,198 of 1932).

In this coating the nitro-cellulose constitutes the solid

meltable organic binding material containing distributed

30a

therethrough the aluminum powder which is an element and

provides an inorganic pigment meltable at a temperature

below the melting point of ferrous metal and having a hard-

ness not exceeding 5 on Mohs’ hardness scale, within the

specifications for melting temperature and hardness required

by the patent in suit (Gibson R. 595-599).

(d) Tallow in its raw state, or combined in the form of soap

with certain metals, such as calcium, sodium, potassium,

lead, aluminum and zinc, with mineral oil and containing

filler materials or pigments like chalk, soap- [403] stone,

mica, rosin, graphite, fireclay, potters clay, borax, etc., were

published as known drawing compounds (Defendant's Ex-

hibit $8, Transactions of American Society for Steel Treating,

Volume XXI, January 1933 — December 1933, p. 187, para-

graph 1 — Tallow; p. 188, paragraph 4 — Fillers).

Tallow or tallow soap with the filler material borax is

within the definition of claim 4 specifying a solid meltable or-

ganic binding material containing distributed therethrough a

solid inorganic compound meltable at a temperature below

the melting point of ferrous metal and having a hardness not

exceeding 5 on Mohs’ hardness scale.

(e) Tallow or palm oil soap alone or combined with

aluminum stearate were published as known drawing com-

pounds for drawing wire, are meltable at a temperature

below the melting point of ferrous metal and have a hardness

not exceeding 5 on Mohs’ hardness scale, within the definition

of the corresponding language employed in claim 4 of the pat-

ent in suit (Gibson R. 665-669) (Defendant's Exhibit 54,

publication Wire & Wire Products, issue of October 1931,

pp. 393 and 394).

‘. he tallow and palm oil soaps disclosed are within the

definition of solid organic binding material in claim 4 of the

patent in suit, and the aluminum stearate when combined

$la

therewith would constitute a fusible pigment (patent in suit,

column 9, Table 1 — Fusible Pigments) distributed there-

through.

[404] (f) In deforming steel by cold rolling, it was known to

provide a lubricant between the rolling die and the steel being

rolled and deformed to the desired shape, to prevent over-

heating of the dies, sticking of the metal and the dies, and

scarfing or roughening of the surfaces of the metal. The

material was made by preparing a dry mixture comprising

90% borax, 5% tri-sodium phosphate and 5% tallow soap

dissolved in water in the proportion of 8 ounces of the dry

mixture to each gallon of the solution, and applied either on

the rolls or the metal stock or both, before or during the form-

ing operation, so that during the forming operation the sur-

faces are sufficiently coated. This material was used in place

of oils and greases and aqueous emulsions of oils and greases

which are expensive and difficult to remove from the work

after forming (Defendant's Exhibit 32, Orozco United States

patent 1,982,065 dated November 27, 1934).

This material comprising borax and soap is substantially

identical with the soap and borax materials disclosed in the

patent in suit for use as a fixed film lubricant over phosphate

coatings.

(g) Drawing lubricants made up to fat, such as tallow or

palm oil, 75-85% saponified to provide soap, combined in the

proportion of 20-35 parts by weight with mineral oil 30-50

parts by weight, and water 10-40 parts by weight, mixed to

make up a paste having a consistency ranging from mayon-

naise to heavy greases with which filler materials may be

mixed to prevent metal-to-metal contact under [405] high

pressures encountered in forging, stamping, drawing and the

like, are disclosed in Defendant's Exhibit 45, Zimmer United

States patent 2,258,309 dated October 7, 1941, column 1,

lines 44-55, column 2, lines 1-17.

$2a

It is recommended (column 1, lines 8-44) that in place of

filler materials of the type of talc, chalk, calcium carbonate

and the like, filler materials such as salts of the phosphates,

sulfides and borates of calcium, zinc, lead or tin be used to en-

dow the lubricating compound with the ability to withstand

higher pressures without metal failure, seizure or scoring and

to reduce friction, facilitate the flow of metal into the die re-

cesses and reduce the power requirements for the fabricating

operations; and also to give the work an attractive burnished

appearance which is not obtained by the well-known inert

fillers, and reduce the frequency of splits, cracks or other

blemishes in the drawings, forgings or stampings.

The saponified tallow disclosed in this patent is an organic

binding material (namely, soap) corresponding to the organic

binding material referred to in claim 4 of the patent in suit,

and the fillers disclosed to be mixed in and used with it (name-

ly, the zinc phosphate and the borates of calcium, zinc and

lead) are solid inorganic compounds meltable at a tempera-

ture below the melting point of ferrous metal and having a

hardness not exceeding 5 on Mohs’ hardness scale, referred to

in claim 4 of the patent in suit, and listed as such in the patent

in suit in Table I — Fusible Pigments, column 9.

[406] 6. (a) It was well known in the art prior to the patent

in suit on April 29, 1946, that it was a definite improvement

and aid in cold drawing and deforming steel to provide the

surface of the steel with integral phosphate coatings and apply

lubricants over such coatings.

(b) The use of zinc phosphate coatings to which oil is ap-

plied as a lubricant in drawing and deforming steel tubes is

disclosed in Defendant's Exhibit 42, British patent 496,866 of

1938.

manganese phosphate coatings impregnated with oil or fat or

33a

a mixture of oil and fat as a lubricant is disclosed in Defen-

dant’s Exhibit 41, British patent 494,830 of 1938.

With respect to lubricants that had been known for use in

drawing operations, this patent also discloses (column 1, lines

14-22):

“It is known to treat iron pipes, in particular, prior

to a drawing process, with fats or oils, or to precipi-

tate deposits thereon, in order to soften the surface

and to reduce the wear on the drawing tools. It has

also been the practice to mix the oil or fat with pul-

verulent substances, such as talc or litharge, for the

purpose of increasing its efficiency.”

The fats disclosed in this patent include fats such as tallows,

of which many are known to be solid at room temperature,

and the litharge (lead oxide), which the patent states it had

been the practice to mix with the oil or fat for the purpose of

increasing its efficiency. There is thus disclosed a composition

providing a solid meltable organic binding material (namely,

fats known to be solid at [407] room temperature) containing

distributed therethrough a solid inorganic compound (name-

ly, the litharge) meltable at a temperature below the melting

point of ferrous metal and having a hardness not exceeding 5

on Mohs’ hardness scale, all within the definition of the cor-

responding language employed in claim 4 of the patent in

suit. Lead oxide (litharge) is specifically listed in the patent in

suit, column 9, Table I, under fusible pigments suitable for

use as a solid inorganic compound meltable at a temperature

below the melting point of ferrous metal phosphate and hav-

ing a hardness not exceeding 5 on Mohs’ hardness scale, called

for by the corresponding )anguage in claim 4 of the patent in

suit (Gibson R. 617-623).

The British patent 494,830 therefore contains disclosure of

a lubricating composition for drawing and deforming ferrous

34a

metal within the broad terminology employed in claim 4 of

the patent in suit.

(d) Defendant's Exhibit 39, United States patent 2,105,015

to Singer, dated January 11, 1938, particularly discloses and

recommends the use of phosphate coatings on the steel to be

drawn lubricated with known methods of lubrication as a

definite improvement and aid in drawing and deforming fer-

rous metal such as steel. It states, column 2, lines 53-55; page

2, column 1, lines 1-14:

“Satisfactory processes for applying such coatings

are well known in the art, such for example as the

so- (page 2, column 1, lines 1-14) called Parkerizing

process. They comprise treatment of the article with

a heated dilute aqueous solution of phosphoric or

oxalic acid which may or may not contain phos-

phates [408] or oxalates of iron, manganese, zinc or

other metals in solution. Thereby there is formed on

the article a dense thin crystalline coherent and

tightly adherent coating of salts of phosphoric or

oxalic acid which combines both chemically and

physically with the metal of the base. Such a coating

adapts the article admirably to mechanically work-

ing and reduces or eliminates the troubles arising

from the contact of the article with the working

element.”

It also states, page 1, column 2, lines 22-33:

“Although the coating thus formed may properly be

considered a lubricant, as contrasted with a coating

applied for some other purpose, as for example, in-

creasing the rust or corrosion resisting properties of

the metal, it should be fully understood that it is not

a lubricant in the customary or ordinary sense, for

the reason that the well known, present day

35a

methods of lubrication may also be used in conjunc-

tion with the practice of the present process, and in

many instances will be an essential factor in obtain-

ing proper results.”

The patent also states, page 2, column 1, line 51, and column

2, lines 1 et seq.:

“The use of coatings of the kind herein described

(column 2, lines 1 et seq.) permits what might be

termed deep, severe or even almost excessive reduc-

tion rates, as well as a series of normal reductions

without the customary intermediate annealing

operations.

“In the practice of the invention at least those sur-

faces of the article which are to be in contact with

the working element are provided with a coating of

the type described, and the article is then worked in

the customary manner, no change in procedure or

tools being necessary. Such coatings are considera-

bly cheaper than the coatings of soft metals

heretofore applied, and if not already removed dur-

ing the working operation they can be removed

completely much more readily than the metallic

coatings, as for [409] example, by simple pickling

operations. In many instances no further removal of

the coating is necessary after working, either

because it has been substantially removed during

the working operation or that portion which re-

mains does not interfere with the use to which the

article is subsequently applied.”

(e) The efficacy of lubricated phosphate coatings as a

definite improvement and aid in drawing and deforming steel

is further evidenced and made known in the prior art.

36a

Defendant's Exhibit 51, the publication Korrosion Und

Metallschutz of June 1941, and translation, discloses the use

of zinc phosphate coatings (pp. 3-4) lubricated with boring oil

emulsions (p. 4) as lengthening the life of the drawing tools,

reducing friction in the forming process, increasing the

reduction and drawing speeds, and reducing the number of

drawing operations (p. 7).

Defendant's Exhibit 52, the publication Metallwirtschaft of

1942, and translation, discloses (p. 11) improvements in

drawing and deforming operations on iron and steel coated

with zinc phosphate coatings which are lubricated by having

formed thereon water insoluble soap films.

This is also disclosed in Defendant's Exhibit 53, the

publication Stahl Und Eisen of 1942, and translation (p. 7).

[410] 7. Lubricated zinc phosphate coatings on steel were

known and used as a successful aid in drawing and deforming

steel cartridge cases in this country in 1942 and 1943. An

operation of this kind was carried on by the Buick Motor Divi-

sion of General Motors Corporation in 1942 and 1943 and was

described and published in Defendant's Exhibit 48, American

Machinist issue of May 13, 1943 (Shultz R. 644-650).

A similar operation was carried on in drawing and deform-

ing steel to make steel cartridge cases by Briggs Manufactur-

ing Company at Detroit, Michigan, in 1943, where zinc

phosphate coating was applied to the steel to be drawn and a

grease was applied as a lubricant over the zinc phosphate

coating (Tousley Deposition, pp. 31-32; Henricks Deposition,

pp. 22-23).

Northern Engraving & Manufacturing Company of La

Crosse, Wisconsin, in 1943 manufactured ?0-mm. steel car-

tridge cases or shells by drawing and deforming zinc

phosphate coated steel over which was applied a lubricant

made up of sodium stearate, stearic acid and water with

37a

sulfur distributed therethrough (Depositions of Wayne G.

Dickinson and Lew F. Scott). As received, the lubricant

material was semiliquid, not liquid enough to pour. It was ap-

plied hot. It did not become a hard solid after drying, but

formed a waxy type of film on the phosphate coating which

was plastic and easily movable with the finger (Depositions of

Wayne G. Dickinson and Lew f. Scott, pp. 19-20, 24-25, 27,

37, 54, 59-60).

[411]8. In 1942 and 1943 the Gilron Products Company of

Cleveland, Ohio, with whom the patentee of the patent in

suit, Henricks, was associated, first as consultant in 1942 and

then as an employee from 1943 to 1945, manufactured and

marketed lubricant compositions under the trade name

Drawcote, for use in drawing and deforming steel, and which

were extensively sold and used in 1942 and 1943 and subse-

quently, in drawing and deforming steel.

These lubricant compositions consisted principally of

sodium soaps formed from tallow and palm oil, and of borax.

The soap comprised from 10-33% by weight and the borax

comprised from 67-90% by weight, of the compositions.

This material was produced in the form of a dry powder

based upon and derived from the knowledge and previous ex-

perience of Gilbert H. Orozco, who with one Roland

Whitbeck comprised the partnership under the name of

Gilron Products Company, which was later incorporated

under the same name as an Ohio corporation.

Gilbert H. Orozco is the patentee of United States patent

1,982,065 dated November 27, 1934, Defendant's Exhibit 32,

which discloses the use of a dry mixture comprising borax

90%, trisodium phosphate 5% and tallow soap 5%, applied

in aqueous solution in the operation of deforming steel by

cold rolling to provide a lubricant coating between the rolling

die and the surface of the metal being rolled and deformed to

38a

prevent overheating of the dies and consequent sticking of the

material being rolled and the [412] dies, and to prevent scarf-

ing or roughening of the surface of the metal being worked

upon.

The compositions that were manufactured and sold by

Gilron Products Company in 1942 and 1943 and subsequently

under the trade name Drawcote were in the form of dry

powder composed principally of sodium soap and borax in

the proportions by weight of 10-33% soap to 67-90% borax.

This dry powder was applied by the user in drawing metal

by making a heated emulsion or solution of the soap-borax

powder in water, applying it hot to the surface of the metal to

be drawn, and either drying or allowing it to dry as a fixed

film on the surface of the metal by evaporation of the water

therefrom.

Drawcote was extensively sold and successfully used in 1942

and 1943 in the cold drawing and deforming of steel, and

especially in the cold drawing and deforming of steel in the

manufacture of steel cartridge cases (Henricks R. 338-363).

[413] 9. Prior to filing the first application for the patent in

suit on April 29, 1946, and while still employed by Gilron Pro-

ducts Company, the patentee of the patent here in suit,

Henricks, jointly with Gilbert H. Orozco of Gilron Products

Company, filed application for United States patent on

August 2, 1943, Serial 497,117, which resulted in the grant of

United States patent 2,469,473 on May 10, 1949 (Defendant's

Exhibit 1) and in the grant upon a division of the same ap-

plication of United States patent 2,530,837 dated November

21, 1950 (Defendant's Exhibit 2). These applications and

patents were assigned to Gilron Products Company.

These applications and the patents disclose and claim as in-

vention both the use of soap-borax lubricants in drawing

steel, and soap-borax lubricant as a composition, which were

39a

being sold by Gilron Products Company in 1943 under the

trade name Drawcote and used extensively by the public in

the year 1943 and subsequently in drawing and deforming

ferrous metal. As the subject matter of invention it was

claimed in these patents that the soap-borax lubricants pro-

vide what is termed stepwise lubrication in the process of

drawing and deforming ferrous metal. That is to say, the

soap-borax composition applied as a dry film to the surface of

the ferrous metal to be drawn and deformed provided lubri-

cating materials having different melting points so that in the

process of drawing, the soap of the composition, having the

lower melting point, would, by melting first under the

pressure and heat generated in the drawing operation, pro-

vide initial lubrication between the metal being drawn and

the drawing die, and when [414] temperatures were reached

in the drawing operation at which soap would cease to provide

lubrication, the borax, having the higher melting point,

would remain as a barrier preventing contact between the die

and the metal being worked and would eventually melt and

provide a fluid or plastic glasslike film of borax to continue to

provide a barrier between the die and the metal being worked

and a lubricant during the higher and ultimate temperatures

reached in the drawing operation.

The purpose, object and operation are identically de-

scribed in both patents, in patent 2,469,473 in column 3, lines

59-74, and in patent 2,530,837 in column 3, lines 40-55, as

follows:

“A specific object of the invention is to provide an

improved method of treating metals preparatory to

the cold drawing or forming thereof in order toin- .

sure both stepwise cooling and stepwise lubrication

of the metal. That object is accomplished, for ex-

ample, by coating the surface of the metal to be

worked with a composition, the ingredients of

40a

which will act progressively and successively both as

coolants and as lubricants when the coating is sub-

jected to the extreme pressures incident to drawing

or forming operations and temperatures approach-

ing the melting point of the worked metal or, in the

case of a non-metallic tool or die, the point at which

such working element might be damaged by work-

ing that particular metal.”

It is further stated in these patents, in patent 2,469,473 in col-

umn 9, lines 12-32, and in patent 2,530,837 in column 8, lines

71-75, and column 9, lines 1-16:

“Further to explain the operation of the process it

will be seen that by the incorporation of sodium

tetraborate (borax) with high titre soap we have a

naturally [415] slippery composition, the borax of

which melts at 75° C., gives up its water of

crystallization at 200° C. and intumesces at that

temperature to form an impalpable powder. The

powder so formed after intumescence could be con-

sidered analogous to a solid filler in known types of

lubricant; but said powder has, in addition, an im-

portant physical property. At 741° C. the intu-

mesced borax becomes fluid and thereby serves to

lubricate, the metal being worked. Similarly the

higher secondary melting point glass forming

substances, following dehydration and intume-

scence, become fluid lubricants at respective in-

creased temperatures and those added ingredients

and the proportions thereof are selected so as to fill

in any gaps that may occu: . that is to bridge over

from one temperature range to another.”

These patents also state, in patent 2,469,473, column 6,

lines 72-75, and column 7, lines 1-3, and in patent 2,530,837,

in colunn 6, lines 54-60, as follows:

4la

“We have noted particularly that when boric acid

or borax are used in the composition the hydrated

colloids remain on the worked metal as an amber

colored soluble substance which remains slippery to

the touch and has no appearance of having been

carbonized or polymerized and is readily removed

in H,O.”

These patents also attribute greatly increased die life to the

soap-borax lubricants where they state, in patent 2,469,473,

column 8, lines 71-75, column 9, lines 1-6, and in patent

2,530,837, in column 8, lines 55-65:

“As an instance of the efficiency of the present pro-

cess, finishing dies for drawing stainless steel wire

containing chromium, nickel and titanium and

formerly producing a maximum of twenty-five

pounds of wire, by the use of the present composi-

tion, were able to [416] produce from 180 to 250

pounds. We might mention that we produced with

the present process a 30% increase in die life in the

drawing of steel shell casings where a copper

coating had previously been used in order to protect

the dies.”

[417] 10. Henricks, the patentee of the patent in suit Re.

24,017, in 1945 left the employ of the Gilron Products Com-

pany where he had participated in and was familiar (1) with

the sale of the soap-borax lubricants described in the patents

2,469,473 and 2,530,837 and (2) with the public use of those

lubricants in drawing and deforming steel in the year 1943

and subsequently, and (3) knew also in 1943 that lubricated

phosphate coatings were in public use in drawing and defor-

ming steel. On April 29, 1946, Henricks as sole inventor filed

the first of his applications which resulted in the patent in suit

Re. 24,017. This was two years and eight months after August

2, 1943, when he had joined as co-inventor with Gilbert Oroz-

42a

co in filing the application which resulted in patent 2,469,473

and 2,530,837, which were assigned to Gilron Products Com-

pany.

The patent in suit proposes the use of the self-same stepwise

lubrication (in column 8, lines 45-75, and column 9, lines

1-18) with the identical soap and borax lubricants which are

disclosed in the prior patents 2,469,473 and 2,530,837. The

patent in suit in column 15, lines 51-52, recommends the type

of lubricant disclosed in patent 2,469,473, and at line 66

recommends the type of lubrication disclosed in the Whitbeck

patent 2,470,062, both of which are admitted to have been

widely sold and in public use in 1943 (Henricks R. 357-358,

362-363, 376-377, 381-382).

The alleged improvement of the patents in suit is to apply

these Drawcote lubricants upon steel provided with known

iron or zinc phosphate coatings (patent in suit, column 8,

lines 55-75, column 9, lines 1-15, column 7, lines 40-45 and

55-75).

[418] 11. In answer to defendant's interrogatories 17-21

prior to trial respecting what plaintiffs’ contention would be

at the trial concerning chemical reaction or reactions (a) be-

tween the phosphate coating and the soap; (b) between the

phosphate coating and the borax; (c) between the phosphate

coating, the soap and the borax; (d) other than the reactions

identified in answer to (a), (b) and (c), plaintiffs stated in

their answer to interrogatory 21:

“The X-Ray diffraction tests indicate that certain

known compounds are formed. They also indicate

by peaks that certain other unknown or uniden-

tified compounds are jormed. Plaintiffs will,

therefore, contend that chemical reactions do occur

but are unable to specifically describe them and will

not contend, at the trial of this cause, that any

43a

[419] 12. Plaintiffs alleged at trial that compounds other

than zinc phosphate and the borax are formed by chemical

reaction of borax with soap and the zinc phosphate of the

phosphate coating, and are essential to the successful opera-

tion of the process described in claim 4 of the patent in suit.

The patent in suit does not describe any chemical reactions

in the drawing operations with soap-borax applied over

phosphate coatings which produce or require the production

of any other compounds to be essential to successful drawing

operations; claim 4 of the patent in suit contains no reference

to or requirement of the presence of such other compounds in

the operation of the process defined by the claim.

The other compounds alleged to be produced by a

chemical reaction of the borax in the coating and the

phosphate of the coating were not identified with certainty by

or in the X-ray diffraction patterns produced. Plaintiffs’ Ex-

hibits 22, 23, 24 and 25 (R. 191-210, 543-558).

It was admitted that no quantitative values or amounts of

the compounds alleged to have been formed by chemical

reaction of the borax and alleged to be present could be deter-

mined from the X-ray diffraction patterns (R. 243-245).

There is no evidence that the compounds alleged to have been

formed by chemical reaction of the borax and to have been

present in the samples tested were present in any significant

quantity or had any controlling or significant effect in the

drawing operations.

[420] 18. Henricks in his testimony at the trial (R. 416-421)

attempts to predicate the invention of the patent in suit upon

the borax in the soap-borax lubricant as mineralizing the

phosphate of the coating, likening it to mineralization and

metamorphosis in mineralogy by which coarse stone like

limestone under the heat and pressure becomes marble or a

carbonaceous deposit becomes graphite or a pyroxene rock

dda

becomes mica; that the conception of the patent was to make

this metamorphosis get rid of the highly abrasive phosphate;

that the metamorphosis and the mineralizing approach is

what he centered upon, to put in the lubricant film a flux

agent, so that it is no longer a hard, abrasive, sandpaper bed,

but one that will melt and flow into a glass, that that is inven-

tion he swore the oath to.

He admits that nothing of this alleged theory and teaching

is contained in the patent in suit Re. 24,017 (R. 447,

503-504).

It appears that there was no subject matter relating to al-

leged metamorphism, fluxing and mineralizing in Henrick’s

original application Serial 665,905, filed April 29, 1946

(Plaintiffs’ Exhibit 2); that such subject matter first appeared

in Henrick’s second application Serial 193,290, filed October

31, 1950 (Plaintiffs’ Exhibit 3), at pages 27-31 of that applica-

tion; and that all of this subject matter and the claims relating

thereto was cancelled out of the application by supplemental

amendment made October 25, 1951 (Plaintiffs’ Exhibit 3,

page 100) where page 27 of the application from line 10

through and including [421] line 23 of page 31 of the applica-

tion was cancelled.

At page 104 the claims of the application relating to the

alleged metamorphism, fluxing and mineralizing were

cancelled, and at pages 104-105 of Plaintiffs’ Exhibit 3, appli-

cant’s attorney stated (page 104):

“At the interview of September 17, applicant's at-

torney understood that the Examiner's position was

as follows: * * *”

and at page 105:

“5. Claims 13-20 relating to applicant's mineralizer

flux concept for lower melting eutectic mixtures was

a separate invention and should be divided out of

this application.”

45a

and at page 108:

“Applicant has also cancelled without prejudice

subject to a continuation-in-part application refer-

ences in the specification to his metamorphism and

mineralizer invention.”

Nothing appears in the application for the reissue patent in

suit Re. 24,017 (Defendant's Exhibit 65) relating to or con-

cerning this alleged metamorphism, fluxing and minerali-

zing, and nothing appears in the patent in suit Re. 24,017

regarding it.

It thus appears that if the applicant Henricks made any in-

vention predicated or based upon alleged metamorphism,

fluxing and mineralizing, it has been removed and forms no

part of the alleged invention disclosed in the patent in suit or

claimed in claim 4 in issue here.

[422] 14. In the early part of 1943 the Briggs Manufactur-

ing Company in Detroit, Michigan, was manufacturing

75-mm. steel shell cases by drawing and deforming operations

using zinc phosphate coated steel with grease applied as a

lubricant over the zinc phosphate coatings.

About June 1943, Whitbeck of Gilron Products Company

sold the Gilron Products soap-borax Drawcote lubricant to

the Briggs Manufacturing Company for use in drawing and

deforming the steel shell cases.

Briggs Manufacturing Company used the soap-borax

Drawcote lubricants during the summer and fall of 1943 in

the production of steel shell cases.

In the shell case drawing operations at Briggs Manufactur-

ing Company there were six drawing and deforming opera-

tions performed on each shell case to produce the final form.

Prior to each of four of these drawing operations a zinc

phosphate coating was applied to the shell case, and the shell

46a

cases were then lubricated at the drawing press by applying

grease to the phosphate coatings.

In using the Gilron Products soap-borax Drawcote

lubricants the Briggs Manufacturing Company began by ap-

plying the Drawcote lubricant upon the phosphate coatings,

in place of the grease previously used, prior to each of the four

drawing operations and found it to operate successfully.

During the course of the summer of 1943 the four opera-

tions of phosphate coating the steel shell cases before [423] ap-

plying the Drawcote lubricant were eliminated by gradually

reducing the number of phosphate coating operations

employed, until finally all four phosphate coating operations

on the steel shell cases had been eliminated and the Drawcote

lubricant was thereafter applied to the bare steel shell cases.

During this interval of gradually elim ‘nating the phosphate

coatings and while the Drawcote lubricant was being used

over phosphate coatings, shell cases were being produced at

the rate of 5 or 6 thousand cases per day.

The phosphate coating operations were eliminated for the

purpose of speeding up the production of the shell cases and

reducing cost of the drawing operations, and not because the

steel shell cases were not being successfully drawn with the

phosphate coatings and with the soap-borax Drawcote

lubricants applied to the phosphate coatings (Francis M.

Tousley deposition; Harold F. Brown deposition).

[424] 15. Claim 4 of the patent in suit describes and claims

no more than was known and successfully demonstrated and

used by the Briggs Manufacturing Company in 1948 in using

the Drawcote soap and borax lubricants, namely, the process

of working ferrous metal (the steel being made into shell cases

by drawing and deforming at Briggs Manufacturing Com-

pany in 1943) which comprises forming on the surface of the

metal a phosphate coating (the zinc phosphate coating ap-

47a

plied on the surface of the steel being made into shell cases by

Briggs Manufacturing Company in 1943) and superimposing

thereon a solid meltable organic binding material (the Gilron

Products Drawcote lubricant which contained sodium tallow

soap) containing distributed therethrough a solid inorganic

compound (the borax contained in the Drawcote lubricant

applied to the zinc phosphate coated steel shell cases at Briggs

Manufacturing Company in 1943) meltable at a temperature

below the melting point of the ferrous metal phosphate (and

also below the melting point of the zinc phosphate, which is

below the melting point of ferrous phosphate, patent in suit,

column 9, Table I) of said coating and having a hardness not

exceeding 5 on Mohs’ hardness scale, and thereafter deform-

ing the metal.

[425] 16. The date of invention relied upon by Henricks

and plaintiffs for claim 4 of the patent in suit in issue is April

29, 1946, the date of the filing of the first application Serial

665,905 by the applicant and patentee Henricks, plaintiffs’

answer to defendant General Motors’ interrogatory 13, as

follows:

(Defendant's Interrogatory 13):

“State the date upon which plaintiffs will rely at

the trial of this cause for the making of the alleged

invention described in claim 4 of the United States

Letters Patent Reissue No. 24,017, dated June 7,

1955, by the applicant for said patent, John A.

Henricks.”

(Plaintiffs’ Answer to Interrogatory 13):

“Assuming that no additional prior art or prior

uses will be cited against Reissue Patent 24,017,

plaintiffs will rely upon April 29, 1946 as the date

upon which the invention of Patent 24,017 was

made.”

48a

[426] 17. The plaintiffs and Henricks admit that at Briggs

Manufacturing Company in Detroit, Michigan, in 1943, in

the manufacture of 75-mm. steel cartridge cases by drawing

and deforming steel, the Gilron Products soap and borax

lubricant Drawcote was used uver phosphate coated steel, and

do not deny that such use occurred before the invention of

claim 4 of the patent in suit Reissue 24,017 by the applicant

Henricks (Defendant's Interrogatory 8; Plaintiffs’ Answer to

Interrogatory 8; Defendant's Interrogatory 11; Plaintiffs’

Answer to Interrogatory 11):

(Defendant's Interrogatory 8):

“Do plaintiffs deny that in the year 1943 Briggs

Manufacturing Company at Detroit, Michigan,

manufactured steel cartridge cases for the United

States Government by drawing and deforming the

steel material into the form of 75-mm. cartridge

cases; that in the said manufacturing operations the

surface of the steel material, prior to being drawn

and deformed, was provided with a phosphate

coating, and that there was superimposed on said

phosphate coating a lubricant composition com-

prising by weight: soap 15%, borax 40%, boric acid

20%, potassium carbonate 25%, which formed a

fixed film on said phosphate coating comprising a

solid meltable organic binding material (namely,

soap) containing distributed therethrough a solid

inorganic compound (namely, borax) meltable at a

temperature below the melting point of the ferrous

metal phosphate of said coating and having a hard-

ness not exceeding 5 on Mohs’ hardness scale, and

that the said coated steel material was drawn and

deformed to produce 75-mm shell cases?”

49a

(Plaintiffs’ Answer to Interrogatory 8):

“Plaintiffs admit that, at Briggs Manufacturing

Company at Detroit, Michigan, in 1943 in the

manu- [427] facture of 75 mm. cartridge cases,

there was a casual fortuitous use of a soap and borax

lubricant over a phosphate coating in connection

with the manufacture of a small number of car-

tridge cases. No one at Briggs Manufacturing Com-

pany or anywhere else learned anything from this

activity. Plaintiffs deny anything beyond this point

and specifically deny that this activity constituted a

prior public use within the meaning of 35 U.S.C.

102 (b).”

(Defendant's Interrogatory 11):

“Do plaintiffs deny that the operations at Briggs

Manufacturing Company in the year 1943, stated in

interrogatory 8 above, occurred before the alleged

invention described in claim 4 of the United States

Letters Patent Reissue No. 24,017, dated June 7,

1955, by the applicant for said patent, John A.

Henricks?”

(Plaintiffs’ Answer to Interrogatory 11):

“No.”

[428] 18. The evidence shows that Whitbeck of Gilron

Products Company and the applicant for the patent in suit in

demonstrating the utility of the Gilron Products soap-borax

Drawcote lubricants and in promoting use over bare steel

without undercoatings, followed a procedure of first

demonstrating that such lubricants would operate successful-

ly when applied to the undercoatings, such as copper under-

coatings and phosphate undercoatings (Henricks deposition

prior to trial, pp. 18, 19, 21, 22, 23; testimony at trial, R.

387-390).

50a

[429] 19. The evidence further shows that in 1943 and dur-

ing the time of the employment there of Henricks, the appli-

cant for the patent in suit, Gilron Products Company regarded

it to be to its financial interest and benefit in promoting the

sale and use of the soap-borax Drawcote lubricants to also

promote and advocate the elimination of the use therewith of

phosphate undercoatings, which were then known to be in use

with other lubricants applied thereto in drawing and deform-

ing steel (Henricks deposition prior to trial, pp. 45 and 48).

[430] 20. The evidence of record establishes that the

Drawcote soap-borax lubricants were used successfully in

drawing the zinc phosphate coated steel shell cases at Briggs

Manufacturing Company in 1943. That the use was known to

the Briggs Manufacturing Company personnel and was

public and was known to and participated in by Whitbeck of

Gilron Products Company and by Henricks, the patentee of

the patent in suit, who was then in the employ of Gilron Prod-

ucts Company. That the use was in and during the normal

course of production of the steel shell cases and continued for

a substantial period. That the Briggs Manufacturing Com-

pany established successful use of the Drawcote soap-borax

lubricants when applied over the phosphate coatings in the

: ormal course of production of steel shell cases before it

established that the Drawcote soap-borax lubricants could be

used in production successfully without the phosphate

coatings.

[431] 21. The Northern Engraving & Manufacturing

Compa. of La Crosse, Wisconsin, from about the end of

1942 until past the middle of 1943, manufactured 20-mm.

steel cartridge cases or shells by drawing and deforming zinc

phosphate coated steel over which was applied a wa» like

lubricant made up of sodium stearate and stearic acid with

sulfur distributed therethrough, as described in Finding 7.

This production obtained a magnitude of approximately

5la

50,000 cartridge cases per day (Depositions of Wzyne G.

Dickinson and Lew F. Scott).

Sulfur is one of the fusible pigments listed in the patent 1

suit Re. 24,017, column 9, Table I — Fusible Pigments. The

patentee, Henricks, considers sulfur to be an inorganic pig-

ment within the terminology of claim 4 of the patent in suit

(Henricks, R. 513-514).

[432] 22. Of the prior art patents and publications

referred to heretofore in Findings 5 and 6, the Patent Office

had called to its attention and considered during the course of

the prosecution in the Patent Office of the various applica-

tions which resulted in the patent in suit and in the allowance

of claim 4 thereof in issue, the following:

The prior British patent 367,198 of 1932, Defendant's Ex-

hibit 37, which discloses the use in drawing and deforming

steel of a fixed lubricant film of nitro-cellulose with powdered

aluminum distributed therethrough;

The United States patent to Zimmer 2,258,309 of Octo-

ber 7, 1941, the Defendant’s Exhibit 45, which discloses

lubricants for drawing and deforming steel composed of a

paste comprising soap, mine: al oil and water, and that fillers,

such as zinc and calcium phosphate and the borates of

calcium, zinc and lead, may be used therein;

The British patent 496,866 of 1938, Defendant's Exhibit

42, which discloses the use in drawing and deforming steel of a

zinc phosphate coating applied to the surface of the steel and_

lubricated with oil;

The Orozco and Henricks United States patent 2,469,473,

application filed August 2, 1943, patent granted May 10,

1949, Defendant's Exhibit 1, which discloses the use of soap-

borax lubricants referred to and recommended for use by the

patent in suit Re. 24,017, applied as fixed film on the surface

of steel, in drawing and deforming steel.

52a

[433] The Patent Office is not shown to have had called to

its attention or to have considered:

The Transactions of the American Society of Steel

Treating, Volume XXI, January 1933-December 1933,

Defendant's Exhibit 38, disclosing that lubricants composed

of tallow soap having mixed therewith filler materials, among

which borax is named, were known as lubricants for use in

drawing and deforming steel;

The publication Wire & Wire Products issue of October

1931, Defendant's Exhibit 54, disclosing that it was known to

use tallow or palm oil soap combined with aluminum stearate

as a drz-ving compound in drawing wire;

The British patent 494,830 of 1938, Defendant's Exhibit

41, disclosing that it was known in drawing and deforming

steel to coat the steel with manganese phosphate coatings and

to lubricate the phosphate coating with oil or fat, and disclos-

ing that it was also known to mix the oil or fat with litharge (a

lead oxide listed in the patent in suit Re. 24,017, column 9,

Table I, as a fusible pigment suitable for use in the lubricant

materials of the patent in suit) for the purpose of increasing

its efficiency;

The United States patent 2,105,015 to Singer, Defendant's

Exhibit 39, disclosing and recommending the use in drawing

and deforming steel of phosphate coatings, including zinc

phosphate, and recommending that the known methods of

lubrication be used therewith;

[434] The publication Korrosion und Metallschutz of June

1941, Defendant's Exhibit 51, disclosing that it was known

that the use of lubricated zinc phosphate coatings was a

definite aid and improvement in drawing and deforming steel

as lengthening the life of the drawing tools, reducing friction

in the forming process, increasing the reduction and drawing

speeds, and reducing the number of drawing operations;

53a

The publication Metaliwirtschaft of 1942, Defendant's Ex-

hivit 52, disclosing improvements in drawing and deforming

on iron and steel coated with zinc phosphate coatings

lubricated by having water insoluble soap films formed

thereon.

It is not shown to have been known to the Patent Office that

the process of drawing and deforming steel coated with a zinc

phosphate coating with the soap and borax Drawcote

lubricants applied thereto was known and used successfully in

1943 by the Briggs Manufacturing Company.

It is not shown to have been known to the Patent Office that

the process of drawing and deforming steel provided with a

zinc phosphate coating and having applied thereto a waxlike

film of sodium stearate and stearic acid with sulfur

distributed therethrough was known and used successfully in

1942-43 by the Northern Engraving & Manufacturing Com-

pany of La Crosse, Wisconsin.

[435] 28. The function of a phosphate coating in drawing

operations is to form on the metal surface a dense, thin,

crystalline, coherent and tightly adhering coating of salts of

phosphoric acid which will provide barrier material to

separate the drawing die from the metal being worked and

prevent scoring and galling engagement between the die and

the metal being worked, and will provide a surface for retain-

ing in place the lubricant applied to it (United States patent to

Singer 2,105,015, Defendant’s Exhibit 39; British patent

494,830, Defendant's Exhibit 41; British patent 496,866,

Defendant's Exhibit 42).

[436] 24. The function of a dry film lubricant in drawing

operations is the same whether the dry film lubricant is ap-

plied directly to the surface of the ferrous metal or is applied

over a phosphate coating on the ferrous metal (Houdaille Re-

quest for Admission 10, filed November 7, 1960, which stands

54a

unanswered and therefore is admitted by plaintiffs; and

Henricks deposition, p. 50).

[437] 25. The use of lubricated phosphate coatings in

drawing and deforming metal was clearly taught and dis-

closed in the British patent 496,866 of 1938, Defendant's Ex-

hibit 42, and in the British patent 494,830 of 1938, Defen-

dant’s Exhibit 41.

The combination of a phosphate undercoating with the

then “present day methods of lubrication” was taught and

described by the Singer United States patent 2,105,015 of

January 11, 1938 (Defendant's Exhibit 39).

The soap-borax Drawcote dry film type of lubricant was

one of the methods of lubrication well known and in public

use in 1943, more than two years prior to April 29, 1946, the

date of filing of the application for the patent in suit

(Henricks R. 338-363). Its combination with a phosphate

undercoating for providing lubrication and further protec-

tion to the surfaces of the work and the dies was therefore ob-

vious to a person having ordinary skill in the metal drawing

art in view of the teachings and disclosures of the above prior

art in 1943, more than two years prior to the time, April 29,

1946, that the plaintiffs rely upon for the making of the al-

leged invention of claim 4 of the patent in suit.

[438] 26. The patent in suit, in so far as the alleged uses of

the soap-borax lubricants by defendants in the cases at bar

are concerned, contains no disclosure or teaching other than

(column 15, lines 50-52, lines 67-68, and column 9, lines 1-15)

to apply to phosphate coatings the soap-borax lubricants

disclosed in the Orozco and Henricks patent 2,469,473

(Defendant's Exhibit 1) and the soap-borax lubricants dis-

closed in the Whitbeck patent 2,470,062 (Defendant's Exhibit

3), admittedly in prior public use in 1943, more than two

years prior to the filing of the first application for the patent

55a

in suit. This use was admittedly demonstrated and successful-

ly made at and by the Briggs Manufacturing Company in

1943. This use of the soap-borax iubricants was successful,

and while now alleged by plaintiffs to have been experimen-

tal, there is no evidence that any further experiment was

necessary or required to successfully perform and utilize the

process defined in claim 4 in issue, which in so far as the pro-

cess alleged to be employed by defendants in these cases is

concerned, is simply to provide a phosphate coating on steel

and to apply to it the soap-borax lubricants on sale and in

public use in 1943 and known and available and demon-

strated as effective drawing lubricants in 1943 both when ap-

plied to phosphate coated steel and to steel without the

phosphate undercoating.

[439] 27. The evidence establishes that in 1943 and for

more than two years prior to the time, April 29, 1946, the

date relied upon by plaintiffs in this case for the making of the

invention of claim 4 of the patent in suit, the differences be-

tween the subject matter sought to be patented in claim 4 and

the prior art were such that the subject matter as a whole

would have been and was obvious to persons having ordinary

skill in the art of drawing and deforming steel.

[440] 28. Claim 4 of the patent in suit is indefinite and fails

to particularly point out and distinctly claim, as required by

the Patent Act, 35 U.S.C. Section 112, the subject matter

which applicant regards as his invention.

With respect to the use of borax as the solid inorganic com-

pound of the claim, in answer to defendant's interrogatory

16:

“State the minimum and the maximum propor-

tions of borax and soap that plaintiffs will contend

56a

at the trial of this cause to be within the scope, of the

said claim 4 of said reissue patent.”

plaintiffs answered as follows:

* * *

“Plaintiffs will make no contentions and cannot

speculate as to the minimum and maximum pro-

portions of borax and soap which might be within

the scope of claim 4 of Reissue Patent No. 24,017

because all circumstances must be evaluated and

considered.”

At the trial the patentee Henricks speculates (R. 468-504)

with vague references to unidentified literature regarding

mineralogy and cosmetics, without being able to define any

minimum or maximum amount of borax required, and his

final summation of the matter leaves the question wholly in-

determinate and indefinite (R. 501, 503, 504).

Claim 4 says nothing whatever about the amounts or pro-

portions of “solid meltable organic binding material,” or the

amounts or proportions of “solid inorganic compound.”

As written, the claim includes as “solid meltable organic

binding material” all of the multitude of compounds men-

tioned in the patent and others that could be selected [441]

from the tables and literature which could be regarded as

organic — capable of becoming solid — and meltable. It is

alleged in this case to include also sodium stearate soap,

which is listed in the standard chemical handbooks as an in-

organic material (Dr. Gibson, R. 794-796, 803-808, 810-812).

As written, the claim includes as “solid inorganic com-

pound” all compounds listed in column 9, Table I — Fusible

Pigments, in the patent in suit, which could be selected from

the tables and literature and which would melt below the

melting point of ferrous phosphate and have a hardness less

than 5 on the Mohs’ hardness scale.

57a

The claim contains no limits or instructions as to the pro-

portions of such compounds that would be operable to carry

out the alleged process invention stated by the claim. -

The claim does not specify or call for the alleged mineraliz-

ing, metamorphizing or fluxing of the phosphate of the

coating to form glass, or for the alleged emulsifying of the

residual coating or film left after drawing.

There is no evidence that all of the materials includable

within the terminology of the claim would perform the al-

leged functions.

No one could determine otherwise than by extensive ex-

periments whether all or how many of the compound in-

cludable within the terminology employed could be used, or

in what mixtures or proportions they could be used, nor

whether they would accomplish the alleged mineralizing,

metamorphizing or fluxing.

[442] The claim does not particularly point out and dis-

tinctly claim the alleged invention, i.e., emulsifying or

, Metamorphizing and fluxing, that Henricks,

(R. 421) states he swore the oath to. All such matter was

cancelled from the application for the patent (Finding 13).

Henricks considers sulfur to be an inorganic pigment

within the terminology of claim 4, and admits that it performs

none of the alleged glass forming mineralizing functions of

borax, and is of no help in cleaning effect (R. 513-514).

[443] 29. Henricks, the patentee of the patent in suit,

testified that his invention in the use of borax as the solid in-

organic compound specified in claim 4 is to prevent the for-

mation of a water insoluble soap film on the phosphate

coating. The evidence of record stands uncontroverted that in

the lubricant Bonderlube 235 the inclusion in the sodium

soap of a small amount of borax, approximately 3% of the

soap, results in controlling the pH, i.e., the acidity and

58a

alkalinity, of the aqueous soap solution with which the zinc

phosphate coated article is treated and in forming water in-

soluble soap (zinc stearate) as an integral part of the phos-

phate coating (R. 705-711, 731, 739-741, 790-794, 800-802).

This is a result and effect of the use of borax as the solid in-

organic compound in the process broadly described in claim 4

of the patent in suit which is directly contrary to the patentee

Henricks’ own statement of his alleged invention. It is neither

disclosed nor suggested in the patent in suit (R. 469, 483-491);

Henricks Deposition, p. 49). This demonstrates the in-

definiteness of claim 4, in which the amounts and proportions

of the compounds (solid meltable organic binding material

containing distributed therethrough a solid inorganic com-

pound) are left wholly indefinite and indeterminable, and

further demonstrates that the claim is broader than the inven-

tion the patentee made or conceived.

[444] Conclusions of Law.

1. Claim 4 of the patent in suit Re. 24,017 is invalid:

(a) On the ground of lack of lawfully patentable invention

in view of the prior art known and practiced at and before the

time the alleged invention of claim 4 was made;

(b) On the ground that the process of claim 4 was known to

and used by others before the applicant for the pateat in suit

claims to have made the discovery or invention thereof;

ject matter purported to be described in claim 4 but merely

adopted a process which, in view of the prior art and practice

known in 1943, was obvious and known to persons familiar

with and skilled in the art of drawing metal;

(d) On the ground that claim 4 defines merely an aggrega-

tion of process steps that were separately old and well known

and that when combined produce no new, unexpected or

unobvious result.

59a

(e) On the ground that claim 4 fails to meet the re-

quirements of the Patent Act, 35 U.S.C. Section 112, in fail-

ing to particularly point out and distinctly claim subject mat-

ter which the patentee regards as his invention, or subject

matter for which the patentee is lawfully entitled to Letters

Patent.

2. That the complaints filed herein be dismissed for want

of cause for action.

/s/ Edwin A. Robson,

United States District Judge.

Date June 29, 1962.

[448] IN THE UNITED STATES DISTRICT COURT.

(Captions — 56-C-1912 — 57-C-892)

LiNAL JUDGMENT

The above-entitled actions having been consolidated for

trial by order of this Court entered November 19, 1959 upon

the common issue of the validity of Claim 4 of United States

Letters Patent Reissue No. 24,017, dated June 7, 1955, and

having come on for trial upon the merits of said common

issue, and this Court having duly considered the evidence

presented at the trial and the briefs filed by the parties by

their respective attorneys and having rendered and filed its

Decision On Merits On Validity Of Claim 4 of Reissue No.

24,017 on February 1, 1962, and this Court having considered

the Findings of Fact 1 to 29 and [449] Conclusions of Law 1

and 2 inclusive, and Revised Findings of Fact $ and 7 submit-

ted by defendant, General Motors Corporation, and adopted

by defendants, Metal Lubricants Co. and Houdaille In-

dustries, Inc., and the defendant, Metal Lubricants Co., hav-

ing submitted three additional Findings of Fact and an addi-

60a

tional Conclusion of Law, and plaintiffs having submitted

their objections to Findings of Fact 5d, 6c, 11, 14, 16, 18, 20,

21, 22, 24, 26, 28 and 29 submitted by defendants and to the

additional Findings of Fact and Conclusion of Law submitted

by Metai Lubricants Co.,

It Is Hereby Ordered, Adjudged and Decreed:

1. That plaintiffs’ objections to Findings of Fact 5d, 6c, 11,

14, 16, 18, 20, 21, 22, 24, 26, 28 and 29 last submitted by

defendant, General Motors Corporation, are disallowed and

said Findings of Fact and Conclusions of Law, including re-

vised Findings of Fact 3 and 7, last submitted by defendant,

General Motors Corporation, and adopted by defendants

Metal Lubricants Co., and Houdaille Industries, Inc., are

adopted and entered herein as those of this Coust.

2. That the objections of plaintiffs to the additional Find-

ing of Fact $1 and Conclusion of Law 3 tendered by defen-

dant, Metal Lubricants Co., are sustained, and said Finding

of Fact $1 and Conclusion of Law 3 are disallowed, and said

additional Findings of Fact 29 and 30 submitted by defen-

dant, Metal Lubricants Co., are hereby adopted and entered

as those of this Court.

[450] 3. That Claim 4 of said United States Letters Patent

Reissue No. 24,017, dated June 7, 1955, is invalid and void.

4. That the complaint herein in Civil Action No. 56 C

1912 and the complaint herein in Civil Action No. 57 C 892

each be and the same hereby is dismissed upon the merits and

with prejudice to the plaintiffs in each of said actions.

5. That each of the defendants in each of said actions

recover its costs to be taxed and that execution be had

therefor.

/s/ Edwin A. Robson,

United States District Judge.

June 29, 1962.

6la

ly toe Unrrep States Court or Appeals

For the Seventh Circuit.

No. 13979 September Term 1962—April Session 1963

Devex Corporation et al. >4Appeal from the

Plaintiffs-Appellanis,| United States Dis-

v. trict Court for the

General Motors Corporation f Northern District

et al., of Illinois, Eastern

Defendants-Appellees.) Division.

July 12, 1963

Before Dufty and Swygert, Circuit Judges, and Major,

Senior Circuit Judge.

Duffy, Circuit Judge. These are two civil suits for in-

fringement of Henricks’ Reissue Patent No. 24,017 which

were consolidated for trial on the common issue of validity.

Claim 4 is the only claim at issue.’ The District Court held

Claim 4 of the patent in suit to be invalid in view of the

indefiniteness of the claim, the prior art and prior public

use.

1. Claim 4 reads:

‘*4. The process of working ferrous metal which com-

prises forming on the surface of the metal a phosphate

coating and superimposing thereon a ixed film of a com-

position comprising a solid meltable organic binding ma-

terial containing distributed therethrough a solid ino ic

compound meltable at a temperature below the melting

— of the ferrous metal phosphate of said coating and

ving a hardness not exceeding 5 on the Mohs’ hardness

scale, and thereafter deforming the metal.’’

62a

The patent in suit relates to lubrication of metal sur-

faces in cold drawing and deforming operations in shaping

steel to desired forms by dies, to reduce friction between

the steel workpiece being drawn or shaped and the die, to

avoid scoring and tearing of the metal being drawn and to

avoid injury to the surface of the dies.

la The patent in suit is the outcome of an application,

Serial No. 665,905, filed April 29, 1946 by the patentee

Henricks, which was abandoned in favor of a continuation-

in-part application filed October 31, 1950, upon which was

issued United States Patent No. 2,588,234, dated March 4,

1952, for which application for reissue was filed March 1,

1954, upon which Re. Patent No. 24,017 now in suit issued

on June 7, 1955. .

Claim 4, the only claim in issue, is identical to Claim 45

as allowed by the Patent Office in the 1946 application.

April 29, 1946, the date when the 1946 application was filed,

is therefore the record date of invention to which the pat-

entee is entitled.

The patent in suit relates particularly to the lubrication

of metal for drawing and forming operations. It concerns

cold forming operations as opposed to hot forming opera-

tions. When metal is drawn or deformed, to transform

a blank or workpiece into another desired shape, there is

necessarily some movement between the surface of the

blank and the surface of the die, and an accompanying

generation of high pressures and temperatures. Adequate

lubrication is essential. Un'ess suitable provision for lubri-

cating the surfaces is made, tearing of the metal or gallin

of the dies results. Tho pecklom is mest conte where Gat.

cult draws of ferrous metals are involved. - Drawing opera-

tions require costly tools and dies. It follows that wear

and abrasion are very important considerations in tool and

die work.

Among the suggestions. contained in the patent in suit

63a

is that of providing upon the surface of the work to be

drawn, an integral phosphate coating and applying thereto

a film of sodium tallow soap having borax distributed

therein. It is contended that a solid meltable organic bind-

ing material mentioned in Claim 4 includes sodium tallow

soap and that a solid inorganic compound mentioned in the

claim includes borax.

Mohs’ hardness scale is a known standard for indicating

the relative hardness of materials. It is used in Claim 4

as a specification that the ‘‘solid inorganic compound”’ of

the claim should not be hard enough to scratch the steel

being drawn.

The prior art disclosed a number of lubricating schemes.

These included the use of ordinary lubricating oils or lubri-

cants containing finely divided infusible pigments such

2 as clay, lime, mica or graphite. Most of such schemes

were classified as ‘‘wet-film’’ lubricants which were

wet and oily to the touch.

Later followed what is known as Singer’s process,

evolved in Germany and described in Singer United States

Patent No. 2,105,015. Singer’s scheme was to form a

sponge-like coating, such as a phosphate, on the surface of

the workpiece. The coating was not wet or flowable but

was integral with the workpiece and could not be squeezed

out in the drawing operation.

Phosphate coatings had been in use as early as 1914.

These coatings had no lubricating value per se. They were,

in fact, abrasive and caused tool and die wear even through

superposed lubricants. The reasor they were used in lubri-

cating schemes was due to their ability to absorb and carry

lubricant into a high pressure zone.

The next step forward in the art after the Singer process,

was the development of the Gilron ‘“‘Dry-Film’’ soap and

borax lubricant. In this process, soap and borax were

mixed with water and applied as an aqueous solution to

64a

the surface of the workpiece. The soap and borax coating.

was then dried by heat lamps or the like onto the surface

of the workpiece. As drawn, it was a hard fixed film and

stayed with the workpiece in the high pressure zones. No

other lubricant was used.

The Gilron soap-borax coating on bare metal being trans-

parent, permitted inspection of the workpiece and elimi-

nated the abrasive phosphate. The Gilron process sup-

planted the Singer process in the shell case program of

the United States Government during World War Tl. ~~

In 1942 and thereafter until 1945, Henricks, the patentee

of the patent in suit, was employed by Gilron Products

Company and was familiar with the uses of soap-borax

lubricants described in patents No. 2,469,473 and 2,530,837.

The Gilron lubricating product for use in drawing steel

was sold under the tradename ‘‘Drawcote’’ and was com-

posed principally of sodium soap formed from tallow and

palm oil, and of borax in proportion by weight of 10-33%

soap to 67-90% borax.

Drawcote was sold in the form of a dry powder. Gilron

Products Company obtained patents on Drawcote and its

use. United States Patents No. 2,469,473 dated May 10,

1948, and No. 2,530,837 dated November 29, 1950, were

2 obtained upon the joint application of Gilbert H.

Orozco, a partner of Gilron Products Company and his

employee Henricks, the patentee of the patent in suit.

Drawcote was extensively sold and used in 1942 and 1943

in cold drawing of steel cartridge cases. In those years

during World War II, there was a shortage of copper for

making brass shell cases for the ammunition used in mili-

tary and small arms weapons. The Government required

manufacturers of shell cases to make them from steel by

cold drawing and deforming. This manufacture of steel

shell cases occurred largely during the period 1942-1944,

after which copper again became available.

65a

In the manufacture of shell cases, Gilron’s Drawcote was

able to replace the use of other lubricants such as lubri-

cated copper coatings for steel and lubricated phosphate

coating for steel.

In 1943, among those using a lubricated phosphate coat-

ing on steel in the operation of cold drawing steel 75 mm.

shell cases, was Briggs Manufacturing Company, Detroit.

That Company was then providing zinc phosphate coatings

on steel blanks and applying thereover a sulphurized grease

as a lubricant. About June 1943, Whitbeck of Gilron

Products Company sold Drawcote to Briggs. By experi-

mentation, Briggs found it could successfully carry out its

cold drawing operation with the Drawcote soap-borar

lubricant applied directly to the surface of the steel with-

out the phosphate coating.

Plaintiffs admit the Gilron borax coating solved many

drawing problems existing at that time and that even today,

it is satisfactory for many draws. However, plaintiffs

claim the process has its limitations and cannot do what’ the

Henricks process does.

The Patent Office was fully advised of the nature and

advantages of the Gilron process. Patent No. 2,469,473 was

a file wrapper reference.

Several references are made in the briefs to the ‘‘German

Process.’” This was developed prior to 1942. In this

process, a phosphated workpiece is soaked as long as fifteen

hours in an aqueovs soap solution to form thereon by

chemical interaction between the phosphate and soap, a

water-insoluble soap film. A serious defect in this scheme

was that the residual deposit was not water soluble and

presented a difficult cleaning problem especially if the work-

piece was to be electroplated.

4 Plaintiffs concede all of the elements which Henricks

employed in Claim 4 in the patent in suit were old

per se or in other combinations and have been available in

66a

the art for some years. However, plaintiffs contend that

the elements which Henricks selected were put together in

a new way and achieved a new and unexpected result.

Plaintiffs claim that in the specific embodiment of Claim

4, the ‘phosphate coating’’ is the abrasive coating of the

Singer process—a seeming retrogression in the art. The

overlying film is a fixed one and the ‘‘solid meltable or-

ganic’’ constituent thereof is soap, the use of which had

previously been found undesirable because of the cleaning

problem. The ‘‘solid meltable inorganic compound’’ dis-

tributed therethrough, meltable at a temperature below the

melting point of the abrasive phosphate coating and hav-

ing a hardness not more than 5 on the Mohs’ scale, is borax.

Plaintiffs argue that new and unexpected results flow

from the conjunction of elements defined in the drawing

process of the Henricks’ patent; that tool and die life

is greatly increased and severe drawing operations can

now be performed which were previously impossible. Plain-

tiffs say there is a coaction during the high temperatures

and pressures whereby the abrasive phosphate coating re-

acts with the borax to form amorphous glassy materials

which contribute significantly to the lubricating value of

the coating; that the formation of insoluble organic ma-

terials is inhibited and there is no cleaning problem.

There is substantial evidence in the record to prove that

a new coaction between the soap, borax and phosphate

occurred during the drawing process. Friedberg’s tests

showed that in the Henricks’ process, new compounds are

formed; the formation of inscluble organic compounds is

inhibited, and the abrasive phosphate is transformed into

a glassy amorphous compound having highly effective

lubricating properties.

There was also proof based upon commercial use and

experience. Metal Forming & Coining Corporation tried

a number of the prior art schemes including oils, waxes

67a

and drawing compounds, but the testimony showed that

the only process that enabled this Company to cold form or

coin small parts commercially is the combination in the

Henricks’ patent in suit. Testimony showed tool and die

life was increased one thousand fold so that for given

5 tools, three or four hundred thousand pieces were run

where previously only three or four hundred pieces

could be run. The Henricks’ process made it possible to

manufacture articles of superior quality at a much lower

cost, the advantage being so marked in some cases as to

spell the difference between success and failure on heavy

reductions and difficult extrusions.

Defendants have engendered a great interest in an en-

deavor to have the Henricks’ patent in suit declared in-

valid. The defense of this action has been conducted pri-

marily by the attorneys for the Parker Rust Proof Company

of Detroit. Parker supplies phosphate and lubricating

materials to defendant General Motors, and is holding Gen-

eral Motors harmless. Parker solicited financial and legal

help in this lawsuit from a number of its own competitors,

and at least three of these competitors in manufacturing

and selling phosphate and lubricating material, have given

assistance in this case. Of course, these competitors had

the right to give such assistance. However, such interest

does indicate that the process covered in Claim 4 of the

patent in suit is something of special value and merit and

of great importance to those working in the field of cold

drawing and deforming operations.

The trial court held Claim 4 too broad and lacking in

specificity. The court stated the claim did not specify the

kind of phosphate coating, the kind of organic binding,

the kind of solid inorganic compound, as well as not specify-

ing the amounts and relative proportions of any such items.

Pertinent on this point is a recent case before this Court,

Binks Manufacturing Company v. Ransburg Electro-Coat-

68a

ing Corporation, 281 F. 2d 252. In that case, the claim ~

was made that the method claims of the patent there in

suit did not satisfy the requirements of the patent statute

(35 U. S. C. §112) due to failure to specify voltage, spac-

ing and liquids to which they are applicable. In over-

ruling this argument we said at page 256: ‘‘The process

claims define the specific steps of procedure and the speci-

fications being addressed to those skilled in the art...

need not recite details.’” We further stated at page 257:

‘‘There is no requirement that quantitative values for such

factors as voltage, spacing and liquid characteristics be

recited. The fact that experimentation or the exercise of

judgment is necessary to adapt a patented process to

6 particular material or to obtain the particular results

desired does not impair validity of the patent.’’

The fact that Claim 4 distinguishes from thirty-one refer-

ences in a mature art, none of which anticipate, quite clearly

establishes that the claim is not too broad and indefinite. |

Patent claims should be generic in character and do not

necessarily have to be specific. It is entirely proper to

refer in Claim 4 to ‘‘a phosphate coating’’ without speci-

fying which ‘‘phosphate coating.’’

The examples stated in the patent in suit and the speci-

fication teach the use of soap and borax over phosphate.

They give formulas for the soap and borax and they identify

the phosphate coating baths so that one skilled in the art

could make them. The trial court was in error in holding

that Claim 4 in the patent in suit was too broad and lacking

in specificity.

It is fundamental that a patent is presumed to be valid

and the burien of establishing invalidity rests on the party

asserting it (35 U.S.C. §282). It is well established the

presumption of validity is not overcome except by clear

and cogent evidence. Radio Corporation of America v.

Radio Engineering Laboratories, Inc., 293 U. 8.1, 7; Haeel-

69a

tine Research, Inc. v. Dage Electric Company, Inc., 7 Cir.,

271 F. 2d 218, 224.

Defendants claim the Patent Office did not consider Singer

Patent No. 2,105,015 nor British Patent No. 494,830 of

1938, and also several publications. However, the Singer

process is described in British Patent No. 496,866 which

was relied upon by the Patent Office during prosecution of

the patent. Soap and borax dry-film lubricants are de-

scribed in Patents No. 2,469,473 and 2,470,062. The former

was relied upon as a reference in the Patent Office and the

latter is referred to in the body of the specification of the

Henricks’ patent in suit.

The Patent Examiner had before him as prior art, all

of the elements of Henricks’ combination and found pat-

entable invention in the combining of these elements. In

fact, the Patent Office twice found invention over the prior

art, first, when the original patent was granted, and second,

when the reissue patent was granted. There is no showing

in this case that the most pertinent prior art was not

7 considered by the Patent Office. On the contrary, we

think the most pertinent art was cited and was found

insufficient to negative patentability.

We cannot sustain the conclusion of law of the trial court

that Henricks merely adopted the process which, in view

of the prior art, was obvious to persons skilled in the art.

The history of Parker Rust Proof Company demonstrates

the process was not obvious. Parker Rust Proof has been

a self-proclaimed leader in this field since 1914, but Parker

remained uncertain as to how the problem should be solved

until some considerable time after the Henricks’ invention

date.

Dr. Gibson was Technical Director for Parker in 1949

when they decided to develop a lubrication system. Dr.

Gibson is now a professor of chemistry and qualified as

one “skilled in the art.’” Parker, in 1949, was operating in

70a

the light of the prior art. Dr. Gibson was in charge of

this development. They started in ‘‘basically with a litera-

ture search.’’ They then worked with wet-film lubricants

because, as Dr. Gibson testified, ‘‘We hadn’t realized the

true value of drying that particular film.’’ Parker experi-

mented with the formation of an organic film with phos-

phate as mentioned in the German references. Finally,

Parker came to the Henricks’ combination which it extolled

in its literature as a new development of Parker.

The literature references which Parker now points to

as teaching the invention, taught Parker nothing. Neither

did the practices at Briggs Manufacturing Company. The

substitution of soap and borax dry-film for the wet lubri-

cant in the Singer process was, in fact, not obvious to

Parker.

The Henricks’ process was not, in fact, obvious to the

defendants and the others now associated with them in the

defense of this suit. None of them made the substitution

of elements in the Singer process which, by hindsight, now

appears to them to have been ‘‘obvions.’’

Although the learned trial judge found Claim 4 of the

patent in suit to be invalid on all suggested grounds, we

are of the view that the closest question in the case is the

finding and conclusion of the trial court as to public use.

This, in turn, refers to use at Briggs Manufacturing Com-

pany in 1943. All of the evidence on this point, except

patentee’s own evidence, is contained in depositions. It

8 is apparent from Finding 14 that the Court relied upon

the testimony of Tousley and Brown which appeared in

depositions.

As the evidence relied on appears in depositions, we

are in as good a position as the trial court to examine it

and determine for ourselves whether the use at Briggs

Manufacturing Company was a public use. Kiwi Coders

Corporation v. Acro Tool & Die Works, 7 Cir., 250 F. 2d

7la

562, 568; Lewyt Corporation v. Health-Mor, Inc., 7 Cir.,

181 F. 2

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