# Record and brief — Devex Corp. v. General Motors Corp. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385008_1429%3A0 ## Record - **Collection:** Supreme Court brief - **Document type:** Record and brief - **Published:** January 1, 1982 - **Citation:** 456 U.S. 990 ## Text vod al ha bees tl MAR 17 1982 No. a a 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, v. 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! A a Devex Corporation, et al., Petitioners, v. GeneraL Motors Corporation, Respondent. A. 7 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. 2 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. 3 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). 4 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 5 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. 7 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.’’ 8 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. 9 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 10 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- ll 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. 12 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. 13 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 2a 2a 3a 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 la 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. 2a 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, 3a 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. 4a “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). 5a 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). 6a 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.” © Phosphate coatings were known to be improvement and aid in draw- 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 7a 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). 8a 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). 9a 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. (c) The reissue patent in suit was issued to the alleged in- 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. (c) This is an old and well-known art, and methods and 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. (c) In the process of cold drawing metal as in the manufac- 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. (c) The drawing and deforming of steel provided with 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 [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385008_1429%3A0. Public record. Not legal advice.