Petition for Writ of Certiorari — Ti-Coating, Inc. v. Schwarzkopf Development Corp.

Supreme Court brief1987

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Text

f. _ Suprema Soert US,

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87 -] 94 | JUL 30 3987

an Spo serH ¢ SPANIOL, JR.

MBO §

3n The

Supreme Court of the Gnited States

October Term, 1987

ee OO eee

TI-COATING, INCORPORATED,

Petitioner,

Vv.

SCHWARZKOPF DEVELOPMENT CORPORATION,

Respondent.

PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE SECOND CIRCUIT

—

- AND APPENDICES -

HARNESS, DICKEY & PIERCE

By: CHARLES H. BLAIR

Counsel of Record

1500 North Woodward Avenue

Birmingham, Michigan 48011

(313) 642-7000

Counsel for Petitioner

Interstate Brief & Record Co., Suite 731, David Whitney Building, Detroit, MI 48226

(313) 962-8745

QUESTION PRESENTED

WHETHER SUMMARY JUDGMENT AS TO THE MEANING

OF A PATENT IN A CONTRACT IS PROPER WHEN THE

LANGUAGE IS SUSCEPTIBLE OF TWO REASONABLE INTER-

PRETATIONS, AND WHEN DOING SO IMPLICITLY CREATES

A CONFLICT WITH DECISIONS OF THE COURT OF APPEALS

FOR THE FEDERAL CIRCUIT WHICH HAS EXCLUSIVE JURIS-

DICTION OVER PATENT INFRINGEMENT SUITS.

RULE 21.1(a) STATEMENT

All parties to the proceeding are contained in the cap-

tion of the case in this Court.

RULE 28.1 STATEMENT

Ti-Coating has no parent company, subsidiaries which

are not wholly owned, or affiliates.

ill

TABLE OF CONTENTS

Page

es ess a i

AJL AAR) OEAEEE EE ww ee eee ii

oe ey) rr ii

TABLE OF AUTHORITIBS ................. v

eo ee re 1

CE a ree 2

STATEMENT OF THE CASE:

ere 46 6, 9's Goh 4.6 0-a oo 8 + 2

eee eee eee 3

3. Evidence Presented By Ti-Coating To Support

Its ‘Narrow Interpretation’ Of The Patents In

ee ee ee 5

4. Evidence Presented By Schwarzkopf To Support

Its ‘Broad Interpretation’ Of The Patents In The

I at hb y'4 yw'n 5 84 8 a8 8 12

5. Decision Of The District Court And The Court

Of Appeals For The Second Circuit ...... 13

REASONS FOR GRANTING THE WRIT ....... 17

a a 21

APPENDICES:

Appendix A — ORDER of the Court of Appeals for

the Second Circuit denying Petition

for Rehearing En Banc, Schwarzkopf

Development Corporation v. Ti-Coating,

No. 86-7778, Slip. Op. (2nd Cir,

a A-1

Appendix B -

Appendix C -

Appendix D -

Appendix E —

Appendix F —

Appendix G -

Appendix H —

ORDER of the Court of Appeals for

the Second Circuit, Schwarzkopf De-

velopment Corporation v. Ti-Coating,

No. 86-7778, Slip. Op. (2nd Cir.,

Pee ere

ORDER of the Court of Appeals for

the Federal Circuit transferring case

to Court of Appeals for the Second

Circuit, Schwarzkopf Development Cor-

poration v. Ti-Coating, 800 F.2d 240

(Fed. Cir., August 20, 1986).....

ORDER of the District Court for the

Southern District of New York deny-

ing Motion for Reconsideration,

Schwarzkopf Development Corporation

v. Ti-Coating, No. 83 Civ. 9042 (LBS)

Slip Op. (S.D.N.Y., September 16,

ee ee er re rr ee

OPINION of the District Court for

the Southern District of New York,

Schwarzkopf Development Corporation

v. Ti-Coating, No. 83 Civ. 9042 (LBS)

Slip Op. (S.D.N.Y., July 9, 1985)

LICENSE AGREEMENT between

Schwarzkopf Development Corpor-

ation and Ti-Coating .........

UNITED STATES PATENT

iG IS 6) 5.4 eo 4 oko os

UNITED STATES PATENT

8 ee ee eee

Page

B-1

C-1

D-1

E-1

Page

Appendix I — DECISION from the Patent and Trade-

mark Office Terminating the Re-

examination of United States Patent

No. 4,101,703 (February 27,1985) .. I-l

Appendix ] - AFFIDAVIT of Andrew E. Pierce

(February 21, 1905) 6.622424. J-1

Appendix K — LETTER from Dr. John M. Blocher

(November 13, 1984) ......... K-1

Appendix L — SCHINTLMEISTER’S REPLY In Sup-

port Of Its Motion To Dismiss

Ohlsson’s Rule 231(a)(1) Motion,

Robert C. Post, et al, v. Fall J]. O. W.

Ohlsson, et al, v. Wilfried Schintl-

meister, Patent and Trademark Office

Interference No. 99,391 (February 4,

SOFT A edd ee ee L-1

Appendix M — AMENDMENT to United States Serial

No. 329,128 (August 20, 1974) .. M-1

TABLE OF AUTHORITIES

Cases:

Anderson v. Liberty Lobby, Inc., 477 U.S. —_, 91

Le. 2G Bee CSOD sce ko ee os 12, 14, 19

Bear Brand Hosiery Co. v. Tights, Inc., 605 F.2d 723

ee | re een meg ero ky ye 20

Beighler v. Kleppe, 633 F.2d 531 (9th Cir. 1980) .. 14

Davis v. Chevy Chase Financial Services, 667 F.2d

SPE. GO. SOE ba eee te eee ean 20

Hettig & Co. v. Union Mutual Life Insurance Co.,

761 F.2d 1141 (Sth Cir. 19966) . 0. ee 20

Page

Heyman v. Commerce & Industry Insurance Co., 524

Pian S307 CONG Gy SOF 66.5.5 0 5S 80 vs 17

Kangaroos U.S.A., Inc. v. Caldor, Inc., 778 F.2d

aye Gree, Ge: Pees ee een ene ee 12

Locite Corp. v. Ultraseal, 781 F.2d 861 (Fed. Cir.

Pes rere Pe re 17, 20

McGill, Inc. v. John Zinc Co., 736 F.2d 666 (Fed.

Ch SI fa es ke ce oo eee ee 18

P.M. Palumbo v. Don-Joy Co., 762 F.2d 969 (Fed.

Ct. GUN ass 0a besa hk cee 0 eee 17, 20

Rothenberg v. Lincoln Farm Camp, Inc., 755 F.2d

Wear Ge GH, Tees 6s 8 6 ea ae ees 17

Standard Oil Co. v. American Cyanamid Co., 774

roms SOS Ged: Gt, Tee 6 es Scene cher 9, 18

In re Yamamoto, 740 F.2d 1569 (Fed. Cir. 1984) .. 7

Statutes:

USA. ST 646460554 E59 ee eee

USA. OTs 3 Fe eS ees 21

POU. SR I 660s 604404 5

aD Us BO 06 & 6 ews S08 be Chee eee 6

Other:

H.R. No. 97-312, 97th Cong., Ist Sess. 20-23

(UGE) oe ccs sienna 2, 21

H.R. Rep. No. 1307, pt. I, 96th Cong., 2nd Sess.

3, reprinted in 1980 U.S. Code Cong. & Ad.

Pome, Hil eee 5.6 5 os eee eee eee 6

Federal Court Improvements Act of 1982,

P.L. 97-164, 96 Stat. 25 (April 2, 1982) ...... 21

—————

In The

Supreme Court of the Anited States

——

October Term, 1987

TI-COATING, INCORPORATED,

Petitioner,

Vv.

SCHWARZKOPF DEVELOPMENT CORPORATION,

Respondent.

PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE SECOND CIRCUIT

Petitioner Ti-Coating, Inc. respectfully prays that a

writ of certiorari issue to review the judgment and

Opinion of the United States Court of Appeals for the

Second Circuit entered in this proceeding on March 2,

1987.

OPINIONS BELOW

The Opinion of the Court of Appeals for the Second

Circuit is unreported and is reprinted in Appendix B.

The Order of the Court of Appeals for the Second Cir-

cuit denying rehearing en banc is reprinted in Appendix A.

The Opinion of the District Court for the Southern

District of New York is unreported and is reprinted in

Appendix E. The District Court denied a motion for re-

consideration, the decision of which is reprinted in

Appendix D.

JURISDICTION

The original judgment of the Court of Appeals for the

Second Circuit was entered on March 2, 1987. The subse-

quent Order of the Court of Appeals for the Second Cir-

cuit denying rehearing en banc was entered on April 29,

1987. The jurisdiction of this Court is invoked under 28

U.S.C. § 1254(1).

STATEMENT OF THE CASE

1. Introduction

The controversy which surrounds this Petition con-

cerns the construction of a contract which granted

limited rights to two patents. The Court of Appeals for

the Second Circuit affirmed a decision on summary

judgment, which was granted without an evidentiary

heaxing and despite substantial evidence presented in

opposition, and which construed the patents in such a

manner as to impose liability on the Petitioner. While

the cast involves the construction of patents, the appeal

was heard by the Second Circuit since the suit was

based cn a contract.

Since 1982, the Court of Appeals for the Federal Cir-

cuit has had exclusive jurisdiction over appeals in patent

infringement cases. The purpose of this grant of exclu-

sive jurisdiction to the Federal Circuit was to provide

uniformity in the application of the laws regarding

patents. H.R. No. 97-312, 97th Cong., 1st Sess. 20-23

(1981). As will be described below, the decision on sum-

mary judgment as affirmed by the Second Circuit is im-

plicitly in conflict with the decisions of the Federal Cir-

cuit regarding the rules used for construing patents. For

this reason, and because of the basic errors in the

appealed decision, it is submitted that this Petition

should be granted and that the decision of the Second

Circuit in this case be reversed and this case remanded

for determination consistent with the guidelines enun-

ciated by the Federal Circuit regarding the construction

of patents.

2. Uncontested Facts

The specific subject matter of the controversy relates

to coatings applied to a wear surface (or substrate) of a

tool to improve the wear characteristics. In December

1983, Ti-Coating, Inc. (“Ti-Coating”) and Schwarzkopf

Development Corporation (“Schwarzkopf”) entered into

a contract (or License Agreement) which is reprinted in

Appendix F. The contract conveyed limited rights from

Schwarzkopf to Ti-Coating to make, use and sell tools

with multilayer wear coatings having miniscule layers of

titanium carbide, titanium nitride and titanium carbo-

nitride in certain specific combinations.' The coatings

which are covered by this contract are specified by the

claims of U.S. Patent Nos. 4,101,703 (“’703 patent”) and

4,162,338 (“’338 patent”) which are incorporated in the

contract. The ‘703 patent is reprinted in Appendix G and

the ‘338 patent is reprinted in Appendix H.

The controversy which gave rise to this Petition con-

cerns whether a “particular coating” applied by Ti-

Coating is covered by the terms of the contract. Unlike

the coatings taught in the patents of the contract, “par-

ticular coating” applied by Ti-Coating included a protec-

tive, intervening barrier between the substrate (or work

surface) of the tool and the wear coating. The “particular

coating” had the following composition:

1. an intervening, protective barrier layer of titanium

nitride applied directly to the substrate;

' The thicknesses of these miniscule layers ranges from .2-30

microns. A micron is about .00004 of an inch.

2. a multilayer wear coating applied to the varrier

layer as follows:

i. a titanium carbide layer directly on the inter-

vening layer of titanium nitride;

ii. a titanium carbonitride layer directly on the

titanium carbide layer; and

ili. a titanium nitride layer directly on the titan-

ium cart onitride layer.

It is undisputed that the contract does not explicitly recite

a coating having an intervening, barrier layer of titanium

nitride between the substrate and the multilayer wear

coating.” The controversy here is whether the patent

and hence the contract is nevertheless broad enough to

cover such a coating. For purposes of simplicity, the

interpretation of the contract asserted by Schwarzkopf

(i.e., that the patents cover a coating with an intervening

layer between the substrate and the multilayer wear

coating) shall be referred to as the ‘broad interpretation’,

while the interpretation of the contract asserted by Ti-

Coating (i.e., that the patents do not cover a coating

with an intervening layer between the substrate and the

multilayer wear coating) will be referred to as the

‘narrow interpretation’.

? For purposes of this Petition, the contract explicitly recites a

multilayer coating as wel! as a method for applying the multilayer

coating. This multilayer wear coating is embodied in Claim 15 of the

‘703 patent which does not explicitly recite the inclusion of an inter-

vening layer between the substrate and the wear coating. Appendix G

at G-20.

The method for applying the multilayer wear coating is embodied

in Claim 21 of the ‘338 patent which also does not explicitly recite the

formation of an intervening layer between the substrate and the

multilayer wear coating. Appendix ri at H-21.

3. Evidence Presented By Ti-Coating To Support

Its ‘Narrow Interpretation’ Of The Patents In The

Contract

After filing suit against Ti-Coating in the United States

District Court for the Southern District of New York,*

Schwarzkopf brought the dispute over the interpretation

of the patents in the contract to the District Court on a

motion for summary judgment. Ti-Coating firmly believed

that the contract did not cover a coating having an inter-

vening layer between the substrate and the multilayer

wear coating. This was substantiated by the examples of

the coatings taught in both the ’703 and ’338 patents.*

The evidence which Ti-Coating presented to the District

Court in opposition to summary judgment included the

following:

i. a decision from the Patent and Trademark Office

regarding a reexamination proceeding involving

> Federal jurisdiction of the District Court was based on diversity

between the parties under 28 U.S.C. § 1332(a).

* The ’703 and the ’338 patents clearly disclose that the titanium

carbide layer of the multilayer wear coating is to be in “direct con-

tact” with the substrate. In this regard, Example IV of both patents

States:

Metallographic examination of the coating showed that

depending on the chosen conditions, the coating comprises

a 0.5 to 3 microns thick titanium carbide initial layer in direct

contact with the cemented carbide element. . .

Appendix G at G-17; Appendix H at 17.

A review of the other examples leads to the same conclusion. In

Example I, the coatings “comprise a 0.5 to 3 microns thick initial

layer of titanium carbonitride of high carbon content ... in contact

with the carburized cemented carbide substrate”. Appendix G at

G-13-G-14; Appendix H at H-13-H-14. In Example II, the “gas mix-

ture reacts at the surface of the cemented carbide parts resulting in the

deposition of a titanium carbonitride of high carbon content”.

Appendix G at G-14; Appendix H at H-14. In Example III, the

patents state that “[t]he gas mixture reacts at the surface of the

cemented carbide parts and titanium carbide is deposited”. Appendix

G at G-15; Appendix H at H-15.

the scope of certain claims of the ‘703 patent which

the District Court later found “almost identical” ° to

one of the claims in issue (Appendix I);

ili. admissions made in the prosecution history by

Schwarzkopf to the Patent and Trademark Office

regarding the scope of the invention embodied in

the ‘703 and ’338 patents;

iii. the affidavit of Mr. Andrew E. Pierce, an expert

in patent law with a background in chemistry

(Appendix J); and

iv. a letter from Dr. John M. Blocher, Jr., former

senior research scientist at Battelle Memorial Insti-

tute and an expert in the application of coatings

by chemical vapor deposition in the manner des-

cribed in the ‘703 and ‘338 patents (Appendix K).

In the reexamination proceeding,® a third party

argued before the Patent and Trademark Office that cer-

tain claims of the ‘703 patent were unpatentable. The

basis for this argument was that the claims were broad

enough to cover a coating having an intervening layer

between the substrate and the multilayer wear coating

and that since this coating was previously known, i.e.,

in the prior art, the claims were not patentable. Impor-

tantly, the coating upon which the third party based its

argument is almost identical to the coating which is

applied by Ti-Coating — both having an intervening

Appendix E at E-7. ©

Under 35 U.S.C. § 302, any person at any time may file a

request for reexamination in the Patent and Trademark Office with

respect to any claim of a United States patent. The purpose of the re-

examination proceeding is to permit the Patent and Trademark Office

to “review the efficacy of a patent, subsequent to issuance, on the

basis of new information about pre-existing technology which may

have escaped review at the time of the initial examination of the

patent application”. H.R. Rep. No. 1307, pt. I, 96th Cong., 2d Sess.

3, reprinted in 1980 U.S. Code Cong. & Ad. News. 6460, 6462.

layer between the substrate and the multilayer wear

coating.

The Patent and Trademark Office rejected the asser-

tion that these claims were broad enough to cover

coatings such as the one applied by Ti-Coating. In deter-

mining that Claims 3-6 of the ‘703 patent were not broad

enough to cover a coating with an intervening layer, the

Patent and Trademark Office specifically found that the

first layer of the wear coating, the miniscule layer of

titanium carbide, had to be applied directly to the sub-

strate or wear surface of the tool. In this regard, the

Patent and Trademark Office held:

[The requestor] [a]lleges that using the rationale

set forth in the decision of In re Yamamoto, 740

F.2d 1569 (Fed. Cir. 1984), claims 3-6 can be inter-

preted to include an intervening layer between

the cemented carbide substrate and the titanium

carbide layer. Claim 3 calls for an article com-

prising said substrate and a composite coating on

at least one surface of said substrate. If in fact

there is an intervening layer the titanium carbide

would not be on the substrate but on the intervening

layer. Claim 6 calls for a wear surface comprised of

a hard metal or sintered carbide, a coating of titan-

ium carbide covering said wear surface and a coat-

ing of titanium article covering said coating of

titanium carbide. This claim calls for the titanium to

cover the wear surface — not any other surface or layer.

+ + +

The prior art was considered in the context of the

claims [of the ‘703 patent] requiring the titanium

carbide layer to be in contact with the wear sur-

face and said claims have been found patentable

over the prior art of record.

Appendix I at I-1-I-2 (emphasis added).

Accordingly, the interpretation of Claims 3-6 of the ‘703

patent by the Patent and Trademark Office was identical

to the ‘narrow interpretation’ of the patents asserted by

Ti-Coating: that the wear coating had to be directly on

the substrate. While the reexamination proceeding con-

cerned Claims 3-6 of the ‘703 patent, the District Court

held that Claim 3 was “almost identicai” to Claim 15

which Schwarzkopf asserted made Ti-Coating liable

under the contract, 1.e., both require “a composite

coating on at least one surface of said substrate”.

Appendix E at E-7.

The District Court also had documents from the prose-

cution history of the patents which had been submitted

by Schwarzkopf to the Patent and Trademark Office in

which Schwarzkopf admitted that the invention em-

bodied in the ’703 and ’338 patents did not cover a coat-

ing with an intervening layer. For example, Schwarzkopf

argued during a priority contest in the Patent and Trade-

mark Office that its invention was an improvement over

the existing coatings which included an intervening layer

between the substrate and the wear coating. In this re-

gard, Schwarzkopf stated:

None of the references describe a substrate

coated with titanium carbide with an overlayer

thereon of titanium nitride. To the extent that

these references disclose use of more than one

coating layer, they teach the necessity of having the

nitride in contact with the base metal. See, for

example, British Patent No. 735,297; British Pat-

ent No. 762,931; German Patent No. 1,954,366

and U.S. Patent No. 3,656,995. Indeed, the latter

patent explains the art felt need for initially form-

ing a protective [titanium] nitride barrier layer on the

substrate before any further activity.

Appendix L at L-4 (emphasis added).

The prosecution history further shows that Schwarzkopf

repeated these admissions to the Patent and Trademark

Office on various other occasions. Appendix M at M-6,

M-8.

Thus the prosecution history shows that Schwarzkopf

repeatedly distinguished the application which matured

into the ‘703 and ‘338 patents from that which was al-

ready known on the basis that the coating claimed in the

application did not have an intervening layer. It is well

established that such admissions are binding in subse-

quent proceedings. Standard Oil Co. v. American Cya-

namid Co., 774 F.2d 448 (Fed. Cir. 1985) (“[T]he prosecu-

tion history (or file wrapper) limits the interpretation of

claims so as to exclude any interpretation that may have

been disclaimed or disavowed during prosecution in

order to obtain claim allowance”, Id. at 452). Clearly

even this limited portion of the prosecution history sup-

ports the finding by the Patent and Trademark Office in

the reexamination proceeding that the patents do not

cover a coating with an intervening layer. But this find

ing was rejected without reference to its correctness and

without consideration of the prosecution history upon

which this finding was based.

Ti-Coating also presented to the District Court the

Affidavit of Andrew E. Pierce — an expert in patent law

with a background in chemistry. The Affidavit of Mr.

Pierce is reprinted in Appendix J. To permit Mr. Pierce

to ascertain the scope of the ‘703 and the ‘338 patents

and therefore the liability of Ti-Coating under the con-

tract, Mr. Pierce reviewed the following documents in-

cluded within the prosecution history of the patents:

i. The ‘703 patent and the documents relating to its

issuance;

ii. the patent applications relating to the ’703 patent,

and the documents filed in the Patent and Trade-

mark Office relating thereto including the cited

references;

iii. the ‘338 patent and documents relating to its

issue;

iv. the patent applications which were related to the

‘338 patent patent, the documents filed in the

Patent and Trademark Office relating thereto in-

cluding the cited references;

v. documents relating to patent interference

No. 99,391 which involved the patent application

which ultimately led to the ‘703 and ‘338 patents.

After considering these documents, Mr. Pierce con-

cluded that the claims in both the ’338 and ‘703 patents

required that the wear coating be directly on the surface of

the substrate rather than on an intervening layer.

Appendix J at J-6-J-8. Accordingly, the Affidavit of Mr.

Pierce also supports the ‘narrow interpretation’ of the

patents found by the Patent and Trademark Office, i.e.,

that the patents do not cover a coating having an inter-

vening layer between the substrate and the multilayer

wear coating.

Also submitted to the District Court was a letter by

Dr. John Blocher, Jr. which is reprinted in Appendix K.

Dr. Blocher, a former senior research scientist at Battelle

Memorial Institute, is an expert on the formation of coat-

ings by chemical vapor deposition such as those covered

by the ‘338 and the ’703 patents. Dr. Blocher also con-

cluded that proper interpretation of the patents requires

that the first layer of the wear coating, the miniscule

layer of titanium carbide, be directly on the substrate. As

Dr. Blocher stated:

It will be noted that most of the claims clearly

specify that the [titanium] carbide coating be

applied directly to the metal carbide substrate,

this to be overcoated with the nitride, with or

without an intermediate carbonitride. | am con-

vinced that Schintlmeister either did not antici-

pate the advantage of using a preliminary nitride

coating, or that he avoided its mention for some

unexplained reason. Otherwise, he would have

included a claim that spelled it out.

+ + *

It is to be noted that all of the examples have a

carbide coating adjacent the substrate, and that at

no place in the text is the possibility of an inter-

vening coating suggested or allowed.

Appendix K at K-5.

The statements of Dr. Blocher therefore also support the

‘narrow interpretation’ of the patents found by the

Patent and Trademark Office and as asserted by Ti-

Coating.

In summary, the decision of the Patent and Trade-

mark Office in the reexamination proceeding supported

the ‘narrow interpretation’ of the contract patents

asserted by Ti-Coating — that the contract does not

cover a coating with an intervening layer between the

substrate and the wear coating. The decision of the

Patent and Trademark Office was supported by the

prosecution history and was independently corroborated

by the Affidavit of Mr. Pierce and the letter of Dr.

Blocher, which were presented to the District Court

before the decision from the Patent and Trademark Office

was issued.’ Since this appeal is from the grant of sum-

mary judgment against Ti-Coating, this evidence must

The Affidavit of Mr. Pierce and the letter of Dr. Blocher were

filed with the District Court on February 25, 1985, while the decision

from the Patent and Trademark Office issued on February 27, 1985.

be considered true. Anderson v. Liberty Lobby, Inc., 477

U.S. _., 91 L.Ed. 2d 202 (1986) (“[t]he evidence of the

nonmovant is to be believed, and all justitiable inter-

ences are to be drawn in his favor”, Id. at 216); Kangaroos

U.S.A., Inc. v. Caldor, Inc., 778 F.2d 1571 (Fed. Cir.

1985) (“the district court must view the evidence in the

light most favorable to the party against whom the sum-

mary judgment is directed and reasonable inferences of

fact must be drawn in vavor of the non-movant”, Id. at

1573).

4. Evidence Presented By Schwarzkopf To Support

Its ‘Broad Interpretation’ Of The Patents In The

Contract

No affidavits or any other form of evidence was sub-

mitted by Schwarzkopf to support its ‘broad interpreta-

tion’ of the patents. Rather, Schwarzkopf relied en-

tirely on its own self-serving statements. Impor-

tantly, Schwarzkopf presented no evidence which

showed that the decision of the Patent and Trademark

Office was flawed, it presented no evidence rebutting

the statements it made to the Patent and Trademark

Office advocating a ‘narrow construction’ to obtain the

patents, nor did it present evidence to rebut the findings

set forth in the Affidavit of Mr. Pierce or in the letter of

Dr. Blocher. Schwarzkopf only challenged the ‘narrow

interpretation’ of the patents asserted by Ti-Coating by

attacking the credibility of the Affidavit of Mr. Pierce

and the letter of Dr. Blocher. However, a challenge to

the credibility of evidence submitted by the nonmovant

is irrelevant when an issue is being resolved on sum-

mary judgment. Anderson v. Liberty Lobby, Inc., 477 U.S.

—, 91 L.Ed. 2d 202 (1986) (“ [credibility determinations,

weighing of the evidence, and the drawing of legitimate

inferences from the facts are jury functions, not those of

a judge”, Id. at 216).

5. Decision Of The District Court And The Court Of

Appeals For The Second Circuit

Rather than recognizing that a triable issue of fact

existed as two reasonable interpretations of the patents

in the contract were possible, the District Court adopted

the ‘broad interpretation’ of the patents asserted by

Schwarzkopf. This despite the fact that no evidence was

presented by Schwarzkopf to rebut the interpretation

adopted by the Patent and Trademark Office and in-

dependently supported by the prosecution history of the

patents, the Affidavit of Mr. Pierce and the letter of Dr.

Blocher.

The District Court without reference to the prosecu-

tion history dismissed the decision of the Patent and

Trademark Office simply noting that the District Court

was not bound by the rulings from the Patent and

Trademark Office. In this regard, the decision of the Dis-

trict Court, as adopted by the Second Circuit, stated.

The PT.O. decision of February 27, 1985, denying

a third party’s petition for reexamination of the

plaintiff's patent, interpreted claims 3-6 of patent

'703. The language of these claims is very similar

to the language of claims 15-17 of ‘703, the claims

at issue here. The PTO. interpreted the language

of patent claims 3-6 as not contemplating the

addition of an intermediate layer between the

substrate of the tool and the plaintiff's patented

three-layer coating. While we acknowledge that

the language of claims 3-6 is almost identical to

the language of claims 15-17, this Court will not

follow the PT.O.’s interpretation for the following

reasons.

As an initial matter, we note that the PT.O. does

not have an estoppel or other legally binding

effect on this Court especially where, as here, the

statements of the PT.O. are made in a determina-

tion upholding a decision declining to reexamine

an already issued patent, in a proceeding in

which the patentee was not a party and, under

PTO. rules, could not participate. A court, in

evaluating the validity of a patent, must give

“due respect” to °T.O. decisions but is not bound

thereby.

Appendix E at E-7-E-8 (emphasis added).

The District Court therefore dismissed the findings of

the Patent and Trademark Office even though, on sum-

mary judgment, these findings are to be believed and all

justifiable inferences therefrom are to be drawn in favor

of Ti-Coating. Anderson v. Liberty Lobby, Inc., 477 U.S.

—., 91 L.Ed. 2d 202 (1986) (“[t]he evidence of the non-

movant is to be believed, and all justifiable inferences

are to be drawn in his favor”, Id. at 216).

The District Court, again without reference to the

prosecution history, dismissed the Affidavit of Mr.

Pierce for two reasons. First, the District Court stated

that the Affidavit of Mr. Pierce was faulty as it relied on

the unsworn statements concerning the composition of

the coating applied by Ti-Coating. Appendix E at E-5.

Besides the fact that the composition of the coating

applied by Ti-Coating was never disputed by the parties,

Fed. R. Evid. 703 explicitly permits an expert to rely on

unsworn statements when used in forming the expert's

opinion. See also Beighler v. Kleppe, 633 F.2d 531 (9th Cir.

1980) (Court held admissible under Fed. R. Evid. 703

an affidavit of an expert made in opposition to summary

judgment under Fed. R. Civ. P. 56(e) which was based

in part on hearsay statements of the party opposing the

motion).

Second, the District Court stated that the statements

made in the Affidavit of Mr. Pierce went to “functional

equivalence, which is irrelevant to determining literal in-

fringement”. Appendix E at E-5. Yet nowhere in the

Affidavit of Mr. Pierce did the affiant limit the scope of

his findings to functional equivalence. °

With respect to the letter of Dr. Blocher, the District

Court considered only a statement made by Dr. Blocher

when he speculated that Claim 15 of the ‘703 patent

could be read to include an intervening layer. In this re-

gard, the District Court stated:

indeed, the defendant’s own expert, Dr. John

Blocher, Jr. in a letter to Ti-Coating President

Zichichi, acknowledged that the word “include”

as it appears in ‘703 claim 15 might result in lit-

eral infringement even where there is an inter-

mediate coating between the substrate and the

other layers.

Appendix E at E-4.

Indeed, Mr. Pierce explicitly concluded that the broadest claims

of either the ‘703 patent or the “338 patent were not sufficiently broad

to cover the coating applied by Ti-Coating

(b)

(d)

Appendix | at J-7

The broadest claims of the ‘703 patent patent, namely

claims 1, 3, 6, 8, 15, 16, 17, and 19 are not of sufficient

scope to encompass the coated metal carbide substrate

articles produced by the process of Ti-Coating, Inc

The broadest claims of the ‘338 patent, namely, claims

1, 2, 3, 20, and 16, are not of sufficient scope to en

compass the process of producing sintered carbide

substrates coated with the wear-resistant layers of Ti-

Coating, Inc

]-8

Neither of these conclusions were qualified by any requirement of

functional equivalence

However, the District Court ignored the statements

made by Dr. Blocher in which he concluded that if

Claim 15 were so interpreted, Schwarzkopf would have

“lucked out” as the patentee obviously intended not to

claim a coating with an intervening layer. In this regard,

Dr. Blocher stated:

If that is ruled to be the valid interpretation, |

would conclude that Schintelmeister [sic] “lucked

out” on that one, because his intent is obviously

not to clearly claim such an intermediate coating.

It is to be noted that all of the examples have a

carbide coating adjacent the substrate, and that at

no place in the text is the possibility of an inter-

vening coating suggested or allowed.

Appendix K at K-5.

Finally, the District Court made no finding rebutting

the admissions by Schwarzkopf to the Patent and Trade-

mark Office in which Schwarzkopf represented that the

application which matured into the ‘703 and ‘338 patents

did not cover a coating with an intervening layer. These

admissions were presumably ignored.

The decision of the District Court was affirmed on

appeal by the Court of Appeals for the Second Circuit.

In addressing the merits of the case, the Second Circuit

merely stated: “[flor substantially the reasons set forth

in Judge Sand’s opinion, the judgment of the District

Court is affirmed”. Appendix B at B-2.

REASONS FOR GRANTING THE WRIT

When the meaning of a claim in a patent is in dispute

and extrinsic evidence is necessary to explain the lan-

guage of the claim, summary judgment is improper. In

this regard, the Court of Appeals for the Federal Circuit

has held:

But when the meaning of a term in the claim is

disputed and extrinsic evidence is necessary to

explain that term, an underlying factual question

arises, and construction of the claim should

be left to the trier or jury under appropriate

instructions.

P.M. Palumbo v. Don-Joy Co., 762 F.2d 969, 974

(Fed. Cir. 1985).

Prior to its decision in this case, this was essentially the

same rule that was applied by the Court of Appeals for

the Second Circuit with respect to contracts. Heyman v.

Commerce & Industry Insurance Co., 524 F.2d 1317 (2nd

Cir. 1975) (“[w]here contractual language is susceptible

of at least two fairly reasonable interpretations, this pre-

sents a triable issue of fact and summary judgment

would be improper,” Id. at 1320). See also Rothenberg v.

Lincoln Farm Camp, Inc., 755 F.2d 1017 (2nd Cir. 1985).

Since the Court of Appeals for the Federal Circuit has

exclusive jurisdiction over patent infringement suits, the

rules of the Federal Circuit should be used to construe

patents. Under the rules of the Federal Circuit, patents

must be viewed in light of the prosecution history as a

preliminary step to a proper interpretation. Loctite Corp. v.

Ultraseal, 781 F.2d 861 (Fed. Cir. 1985) (“[i]nterpreting

claims in view of the prosecution history applies as a

preliminary step in determining literal infringement”, /d.

at 870). In this regard:

The prosecution history (or file wrapper) limits

the interpretation of claims so as to exclude any

interpretation that may have been disclaimed or

disavowed during prosecution in order to obtain

claim allowance.

Standard Oil Co. v. American Cyanamid Co., 774

F.2d 448, 452 (Fed. Cir. 1985).

The prosecution history should be used not only as a

claim construction tool during an infringement determi-

nation but also in an estoppel context. McGill, Inc. v.

John Zinc Co., 736 F.2d 666 (Fed. Cir. 1984) (“ [p]rosecu-

tion history may be used not only in the estoppel con-

text but also as a claim construction tool”, Id. at 673).

The prosecution history must therefore be assessed in

properly interpreting claim language.

Though required to do so under the law developed by

the Federal Circuit, the Second Circuit completely ig-

nored the prosecution history of the patents. As dis-

cussed above, the prosecution history of the patents

shows that Schwarzkopf consistently advocated a nar-

row construction to obtain the patents. The only deci-

sion regarding the scope of the patents in which the

prosecution history was considered, therefore, was that

rendered by the Patent and Trademark Office during the

reexamination proceeding. This decision specifically

found that the claims do not cover a coating with an in-

tervening layer:

The prior art was considered in the context of the

claims requiring the titanium carbide layer [the

first layer of the muitilayer wear coating] to be in

contact with the wear surface and said claims

have been found patentable over the prior art.

Appendix I at I-2.

Yet this finding by the Patent and Trademark Office,

an agency which is charged with the responsibility of

examining and determining the patentability of inven-

tions, was rejected by the District Court and the Court

of Appeals in affirmance without a single reference to

the prosecution history to show the error of that finding!

In addition, the decision of the Patent and Trademark

Office was independently corroborated by the Affidavit

of Mr. Pierce in which Mr. Pierce, after examining the

prosecution history, concluded that the ‘703 and ‘338

patents required the wear coating layer to be directly on

the substrate and not on an intervening layer. Appendix J

at J-6-J-8. The decision of the Patent and Trademark

Office was further independently corroborated by the

letter of Dr. Blocher, in which Dr. Blocher conciuded

that the patentee either did not anticipate the advantage

of using an initial intervening layer or avoided its men-

tion because the patentee’s intent was obviously not to

claim such an intermediate coating. Appendix K at K-5.

Since the appeal is from the grant of summary judgment

against Ti-Coating, the evidence presented by Ti-Coating

must be considered true. Anderson v. Liberty Lobby, Inc.,

477 U.S. _, 91 L.Ed. 2d 202 (1986) (“[t]he evidence of

the nonmovant is to be believed, and all justifiable infer-

ences are to be drawn in his favor”, Id. at 216).

Accordingly, there can be no doubt that the ‘narrow

interpretation’ of the claims asserted by Ti-Coating is

reasonable. Rather than deny summary judgment, the

District Court and the Second Circuit in affirmance

granted summary judgment despite the fact that two

reasonable interpretations of the claims existed. The pre-

cedent thus created by the Second Circuit would permit

summary judgment in a lawsuit involving a contract

incorporating a patent without the necessary reference

to the prosecution history of the patent. This conflicts

with the law of the Federal Circuit in which the prosecu-

tion history of the patents must always be considered

when determining literal intringement. Loctite Corp v.

Ultraseal, 781 F.2d 861 (Fed. Cir. 1985) (“[i]nterpreting

claims in view of the prosecution history applies as a

preliminary step in determining literal infringement”, Id.

at 870).

In addition, the precedent created by the Second Cir-

cuit in this case would also permit summary judgment

in a lawsuit involving a contract incorporating a patent

notwithstanding the fact that two reasonable but sig-

nificantly different interpretations of the claims may be

possible. This conflicts with the law of the Federal Cir-

cuit which holds that summary judgment is improper

when the meaning of a claim is disputed and extrinsic

evidence is necessary to explain the claims. P.M.

Palumbo v. Don-Joy Co., 762 F.2d 969 (Fed. Cir. 1985)

(“[b]ut when the meaning of a term in a claim is dis-

puted and extrinsic evidence 1s necessary to explain that

term, then factual question arises and construction of the

claim should be left to the trier or jury under appro-

priate instruction”, Id. at 974). See also Bear Brand

Hosiery Co. v. Tights, Inc., 605 F.2d 723 (4th Cir. 1979)

(“[o]nly an unambiguous writing justified summary

judgment, and no writing is unambiguous if ‘susceptible

of two reasonable interpretations’” Id. at 726); Hettig &

Co. v. Union Mutual Life Insurance Co., 781 F.2d 1141 (5th

Cir. 1986) (“[b]ecause the provisions are susceptible of

either of two opposing interpretations, we find them

ambiguous, and reverse and remand”, Id. at 1142); Davis

v. Chevy Chase Financial Services, 667 F.2d 160 (D.C. Cir.

1981) (“[w]here contractual language is susceptible of at

least two fairly reasonable interpretations, this presents

a triable issue of fact, and summary judgment would be

improper”, Id. at 169).

The need for resolution of this conflict cannot be

understated. Since the passage of the Federal Court Im-

provements Act of 1982, P.L. 97-164, 96 Stat. 25 (April 2,

1982), lawsuits involving infringement of patents are

appealed to the Court of Appeals for the Federal Circuit,

while lawsuits involving contracts incorporating patents

are appealed to the courts of appeals for the regional cir-

cuits. 28 U.S.C. § 1295(a)(1). The legislative intent

behind the Federal Court Improvements Act was to pro-

vide uniformity in the decisions in the laws relating to

patents. H.R. No. 97-312, 97th Cong., Ist Sess. 20-23

(1981). The dichotomy created by the Court of Appeals

for the Second Circuit in this case frustrates the intent

behind the Federal Court Improvements Act. The

Second Circuit now permits summary judgment without

reference to the prosecution history which would show

that two reasonable interpretations of a particular patent

incorporated within a contract exist. In contrast, the Fed-

eral Circuit would prohibit summary judgment when the

same patent was involved in an infringement suit.

CONCLUSION

When the prosecution history and the other evidence

discussed above is viewed in a light most favorable to

Ti-Coating, the contract is reasonably susceptible of a

narrow construction in which the patents do not cover

the coating applied by Ti-Coating. While Schwarzkopf

relies on a broader construction of the patents, this con-

struction is in conflict with the myriad of facts submitted

by Ti-Coating. Summary judgment is therefore improper

under the guidelines set forth by the Court of Appeals

for the Federal Circuit in patent infringement cases. It is

respectfully urged that the Supreme Court direct the

regional circuits to follow the decisions of the Court of

Appeals for the Federal Circuit in construing patents in

contract and other cases. Accordingly, the grant of this

Petition for Writ of Certiorari is most respectfully

requested.

Respectfully submitted,

HARNESS, DICKEY & PIERCE

By: CHARLES H. BLAIR

Counsel of Record

1500 North Woodward Avenue

Rirmingham, Michigan 48011

(313) 642-7000

Counsel for Petitioner

Dated: July 24, 1987

A-1

APPENDICES TO PETITION FOR CERTIORARI

APPENDIX A

ORDER DENYING REHEARING EN BANC

(United States Court of Appeals for the Second Circuit)

(Filed April 29, 1987)

(SCHWARZKOPF DEVELOPMENT CORPORATION, Plaintiff-

Appellee, v. TI-COATING, INC., Defendant-Appellant -

No. 86-7778)

At a stated Term of the United States Court of Appeals,

in and for the Second Circuit, held at the United States

Courthouse in the City of New York, on the twenty-

ninth day of April, one thousand nine hundred and

eighty-seven.

A petition for rehearing containing a suggestion that

the action be reheard in banc having been filed herein

by counsel for the defendant-appellant Ti-Coating, Inc.,

Upon consideration by the panel that heard the

appeal, it is ORDERED that said petition for rehearing is

DENIED.

It is further noted that the suggestion for rehearing in

banc has been transmitted to the judges of the court in

regular active service and to any other judge that heard

the appeal and that no such judge has requested that a

vote be taken thereon.

/s/ Elaine B. Goldsmith,

Clerk

B-i

APPENDIX B

ORDER

(United States Court of Appeals for the Second Circuit)

(Filed March 2, 1987)

(SCHWARZKOPF DEVELOPMENT CORPORATION, Plaintiff-

Appellee, v. TI-COATING, INC., Defendant-Appellant -

86-7778)

At a stated Term of the United States Court of Appeals

for the Second Circuit, held at the United States Court-

house in the City of New York, on the second day of

March, one thousand nine hundred and eighty-seven.

Present: HONORABLE JON O. NEWMAN, HONORABLE

RICHARD J. CARDAMONE, HONORABLE RALPH

K. WINTER, Circuit Judges.

Ti-Coating, Inc. appeals from a judgment of the Dis-

trict Court for the Southern District of New York

(Leonard B. Sand, Judge) granting summary judgment

in favor of plaintiff-appellee Schwarzkopf Development

Corporation in a suit seeking royalties under a patent

license. Ti-Coating had defended the claim on the

ground that its product does not infringe the licensed

patent. The patent concerns a multi-layered wear coating

for application on a substrate. Ti-Coating contends that

it does not infringe the patent because it applies an initial

layer of titanium nitride on the substrate before applica-

tion of the multi-layered composition described in plain-

tiff’s patent. This contention was carefully analyzed by

Judge Sand and rejected on the basis of undisputed facts

and applicable law.

B-2

For substantially the reasons set forth in Judge Sand’s

opinion, the judgment of the District Court is affirmed.

/s/ Jon O. Newman

/s/ Richard J. Cardamone

/s/ Ralph K. Winter

Circuit Judges.

N.B. Since this statement does

not constitute a formal

opinion of this court and

is not uniformly avail-

able to all parties, it

shall not be reported,

cited or otherwise used

in unrelated cases before

this or any other court.

C-1

APPENDIX C

ORDER

(United States Court of Appeals for the Federal Circuit)

(Dated August 20, 1986)

(SCHWARZKOPF DEVELOPMENT CORPORATION, Plaintiff-

Appellee, v. TI-COATING, INC., Defendant-Appellant -

Appeal No. 86-788; ON MOTION TO DISMISS OR TRANSFER)

Joseph R. Papp, Harness, Dickey and Pierce,

of Birmingham, Michigan, represented the appellant.

David H. Pfeffer, Morgan, Finnegan, Pine, Foley and Lee,

of New York, New York, represented the appellee.

Appealed from: United States District Court

for the Southern District of New York; Judge Sand.

Before NEWMAN, BISSELL, and ARCHER, Circuit Judges.

NEWMAN, Circuit Judge.

Appellee Schwarzkopf Development Corporation (SDC)

moves to dismiss or transfer this appeal under 28 U.S.C.

§ 1631 for lack of appellate jurisdiction in the Federal

Circuit.

The complaint raised claims in contract and (as

amended) contracted-related tort. The action was initi-

ated by SDC in state court and, before Ti-Coating’s

answer was filed, was transferred to federal court on

diversity grounds. The answer filed in federal court con-

tained patent-related defenses and a counterclaim that

included patent counts. The counterclaim was dismissed

in its entirety, without objection by the counterclaimant,

before the filing of an answer thereto. On this pro-

cedural history, the motion to transfer is granted.

C-2

BACKGROUND

Portions of the factual and procedural background of

this litigation are pertinent to our decision on jurisdic-

tion. SDC is the owner of U.S. Patent No. 4,101,703

(“the ‘703 patent”) and U.S. Patent No. 4,162,338 (“the

‘338 patent’), both directed to “Coated Cemented Car-

bide Elements”. In November or December 1982 SDC

and Ti-Coating entered into a written agreement, effec-

tive as of June 1, 1982, wherein SDC granted Ti-Coating

a nonexclusive license to practice the inventions claimed

in the SDC patents. The agreement released Ti-Coating

from liability for past infringement and provided for the

payment of royalties for operations after June 1, 1982.

The patented inventions relate to a multi-layered

titanium-containing coating applied to cutting tools to

increase their durability. Before November 1982 Ti-

Coating had applied the patented coating directly to the

surface of its tools. In November 1982 Ti-Coating assert-

edly changed its product by interposing an additional

layer, ‘2 to 1 micron in thickness, of titanium nitride

between the multi-layered coating and the tool surface.

Ti-Coating paid no royalties for the periods before and

after this change.

On November 14, 1983 SDC filed suit in New York

state court for royalties due under the license agree-

ment. Ti-Coating, a Michigan corporation, moved on

December 13, 1983 to remove the suit pursuant to 28

U.S.C. § 1441 to the U.S. District Court for the Southern

District of New York, alleging diversity jurisdiction

under 28 U.S.C. § 1332. That motion was granted.

The action in the Southern District of New York was

stayed, pending resolution of an earlier-filed action by

Ti-Coating in Michigan arising out of the same trans-

action. The action had been filed in Michigan state court

C-3

for reformation of the license agreement, and had been

removed, because of diversity, to federal court in

Michigan on SDC’s motion. Although Ti-Coating’s Mich-

igan complaint was subsequently amended in the federal

court to include counts for declaratory judgment that the

‘703 and ‘338 patents were invalid, unenforceable, and

not infringed, these and all other aspects of the Mich-

igan action were dismissed. Ti-Coating’s appeal to the

Sixth Circuit was dismissed for lack of prosecution.

On June 12, 1984, after the dismissal of Ti-Coating’s

Michigan action, the Southern District of New York re-

activated this action. On July 23, 1984 Ti-Coating filed an

answer and counterclaim. Ti-Coating admitted that it

had at one time practiced the patented inventions but

denied doing so after November 1, 1982. Ti-Coating’s

answer raised nine defenses, including the defenses of

patent invalidity, unenforceability, misuse, and non-

infringement. Ti-Coating’s counterclaim contained five

counts: Count I, for which jurisdiction was based on 28

U.S.C. §§ 1338, 2201, and 2202, sought a declaratory

judgment that the licensed patents were invalid, un-

enforceable, and not infringed; Count II alleged Sherman

and Clayton Act violations; Count III, based on 28

U.S.C. §§ 1338 and 2202, sought a declaratory judgment

that SDC had misused the licensed patents which were

therefore unenforceable; Count IV asked for rescission

of the license agreement; and Count V asked for its

reformation.

All five counts of the counterclaim were dismissed on

SDC’s motion, without opposition by Ti-Coating. On

_ August 31, 1984, SDC had moved under Fed. R. Civ. P.

12(b)(1) to dismiss Counts I and III for lack of justiciable

controversy under the Declaratory Judgment Act, and as

res judicata because the same counts had been dismissed

in the Michigan action on the same grounds. SDC moved

C-4

under Fed. R. Civ. P. 12(b)(6) to dismiss Counts II and V

for failure to state a claim for which relief could be

granted, and as res judicata. Ti-Coating filed no opposi-

tion, and on October 4, 1984 the district court dismissed

Counts I, II, Ill, and V of the counterclaim.

SDC filed a separate motion to dismiss Count IV and

for partial summary judgment as to Ti-Coating’s liability

for royalties accrued between June 1, 1982 and Novem-

ber 1, 1982. Ti-Coating did not oppose, and this motion

was granted on October 9, 1984.

SDC’s motion to dismiss counterclaim Counts I, II, IL

and V included a request for costs and attorney fees in-

cident to the motion, on the ground that “there was no

reasonable basis for the belief that these counts could

properly be interposed in this action”. Ti-Coating opposed

this request, and on December 3, 1984 the district court

denied attorney fees, stating that SDC had not clearly

demonstrated that Ti-Coating’s counterclaim was “en-

tirely without color and . . . asserted wantonly, for pur-

poses of harassment or delay, or for other improper

reasons”.

On December 10, 1984 SDC moved for a second par-

tial summary judgment of royalty liability, based on Ti-

Coating’s products sold between November 1, 1982 and

September 30, 1983. On January 29, 1985 the court con-

ditionally granted this motion, observing that Ti-Coating

had offered no evidentiary support for its defense that it

did not infringe SDC’s patents. The court also granted

SDC leave to file an amended complaint introducing a

count for fraudulent inducement to enter into the license

agreement.

On May 30, 1985 SDC moved for partial summary

judgment for damages based on the conditional holding

of January 29, 1985. SDC countered Ti-Coating’s defense

C-5

of patent invalidity on the basis that Ti-Coating “had

failed to give prior notice of invalidity to Plaintiff and

hence the defense of invalidity could not be raised for

royalties due prior to the time of notice”, which was

October 30, 1983.

On July 9, 1985 the district court filed a written opinion

on the merits. The court analyzed and interpreted the

patent claims in view of the asserted changes to the Ti-

Coating product. The court discussed the evidence pre-

sented on the defense of noninfringement, and applied

the process claims and the product claims to the accused

processes and structures. The court also reviewed a

Patent and Trademark Office decision of February 27,

1985 denying reexamination, observing that “Claims 3

through 6 of patent ‘703 were interpreted by the PTO

and the petition was denied”, and discussed why “this

Court will not follow the PT.O.’s interpretation” of the

claims. The district court found that Ti-Coating literally

infringed claim 15 of the ’703 patent and claim 21 of the

‘338 patent. Ti-Coating was held liable under the con-

tract. (Neither party had cancelled the contract).

The district court referred the matter to a magistrate

for an accounting. The magistrate recommended that SDC

be awarded damages of $64,781.13 for the period between

June 1, 1982 to November 1, 1982, and $140,700.80 for the

period between November 1, 1982 to September 30, 1983.

Those amounts would have been payable as royalties

under the contract.

On September 26, 1985 the court entered final judg-

ment on the award of $64,781.13. That judgment has

been satisfied, and Ti-Coating’s liability for that period is

not further contested.

On December 5, 1985 the court entered final judgment

awarding SDC $140,700.80, pursuant to Fed. R. Civ. P.

C-6

54(b). On the same day the court granted, on consent,

SDC’s earlier motion for leave to file a supplemental

complaint seeking damages based on |i-Coating’s failure

to pay royalties for its operations between October 1,

1983 and September 30, 1985, and allowed Ti-Coating to

tile an answer.

On December 19, 1985 Ti-Coating filed a notice of

appeal to this court from the judgment awarding

$140,700.80. A “protective” appeal to the Second Circuit

was also filed, and we have been advised that it has

been stayed by the Second Circuit pending our determi-

nation of appellate jurisdiction.

On January 21, 1986, after this appeal was filed, Ti-

Coating filed its answer in the district court to SDC’s

supplemental complaint. That answer includes counter-

claim counts for declaratory judgment of patent invalidity,

unenforceability, and noninfringement.

SDC asserts that because the case does not arise under

the patent law, the jurisdiction of the district court was

not based on 28 U.S.C. § 1338, and therefore that the

Federal Circuit does not have jurisdiction under 28

U.S.C. § 1295(a)(1). Ti-Coating, opposing SDC’s motion

to dismiss or transfer, asserts that § 1338 jurisdiction is

based on the patent counts of its counterclaim, and thus

that the appeal of all aspects of the case lies with the

Federal Circuit.

ANALYSIS

28 U.S.C. § 1295(a)(1) assigns to the Federal Circuit ex-

clusive jurisdiction

of an appeal from a final decision of a district

court of the United States ... if the jurisdiction

C-7

of that court was based, in whole or in part, on

section 1338 of this title... .

Section 1338 of Title 28 states in relevant part:

(a) The district courts shall have original jurisdic-

tion of any civil action arising under any Act

of Congress relating to patents, plant variety

protection, copyright and trade-marks. Such

jurisdiction shall be exclusive of the courts of

the states in patent, plant variety protection

and copyright cases.

The issue is whether the case on appeal “arose” in the

district court, in whole or in part, under an “Act of Con-

gress relating to patents”. The seemingly simple phrase

“arising under” has engendered interpretation for at

least a century.’ Congress anticipated that it might also

be necessary to interpret.this court’s jurisdictional man-

date, as circumstances arose. The House Report on the

Federal Courts Improvement Act of 1982 states:

Should questions legitimately arise respecting . . .

the direction of appeals in particular cases, the

Committee expects the courts to establish, as

they have in similar situations, jurisdictional

guidelines respecting such cases.

H.R. Rep. No. 12, 97th Cong., Ist Sess. 41 (1981)

(“House Report”). We and other courts have done so, as

required. Compare Air Products and Chemicals, Inc. v. Reich-

hold Chemicals, Inc., 755 F.2d 1559, 225 USPQ 121 (Fed.

Cir. 1985) (jurisdiction in Federal Circuit); Atari, Inc. v.

' “Arising under” jurisdiction first appeared in the Act of March

3, 1875, 18 Stat. 470, the act that established a scope of federal ques-

tion jurisdiction similar to that which exists today. As discussed in

H. Shulman & E. Jaegerman, Some Jurisdictional Limitations on Federal

Procedure, 45 Yale L.J. 393, 393 (1936), the distribution of judicial

powers between federal and state courts was historically “politically

. explosive”.

C-8

]S & A Group, Inc., 747 F.2d 1422, 223 USPQ 1074 (Fed.

Cir. 1984) (jurisdiction in Federal Circuit); Chemical

Engineering Corp. v. Marlo, Inc., 754 F.2d 331, 222 USPQ

738 (Fed. Cir. 1984) (jurisdiction in Federa! Circuit) with

Beghin-Say International Inc. v. Ole-Bendt Rasmussen, 733

F.2d 1568, 221 USPQ 1121 (Fed. Cir. 1984) (jurisdiction

denied); Gilson v. Republic of Ireland, 787 F.2d 655, 229

USPQ 460 (D.C. Cir. 1986) (jurisdiction in D.C. Circuit);

Handgards, Inc. v. Ethicon, Inc., 743 F.2d 1282, 223 USPQ

214 (9th Cir. 1984) (jurisdiction in Ninth Circuit), cert.

denied, 105 S. Ct. 963 (1985). The variety of procedural

and substantive situations that occasioned those deci-

sions required analysis not only of the words of the stat-

ute, but also of the intention of our congressional

creators. This body of jurisprudence is now sufficiently

evolved that we need not repeat its genesis; a few high-

lights will explain its application to this case.

In Atari, 747 F.2d at 1436, 223 USPQ at 1084, this court

implemented Congress’ concern that appellate jurisdic-

tion be determined “at the complaint stage of the district

court proceeding”. This principle is of classical solidity

with respect to determinations of original jurisdiction.

For example, in The Fair v. Kohler Die and Specialty Co.,

228 U.S. 22, 25 (1913), the Supreme Court stated:

[T]he party who brings a suit is master to decide

what law he will rely upon and therefore does

determine whether he will bring a ‘suit arising

under’ the patent or other law of the United

States by his declaration or bill. That question

cannot depend upon the answer, and accordingly

jurisdiction cannot be conferred by the defence

even when anticipated and replied to in the bill.

See also Healy v. Sea Gull Specialty Co., 237 U.S. 479, 480

(1915) (“Jurisdiction generally depends upon the case

made and relief demanded by the plaintiff, and as it

C-9

cannot be helped, so it cannot be defeated by the repli-

cation to an actual or anticipated defence contained in

what used to be the charging part of the bill.”).

The complaint in the case at bar is for failure to pay

royalties due under an existing patent license agree-

ment. Such a suit has consistently been viewed as one

arising out of state contract law, not “arising under” the

patent law. As observed by the Supreme Court in Luckett

v. Delpark, Inc., 270 U.S. 496, 502 (1926):

It is a general rule that a suit by a patentee for

royalties under a license or assignment granted

by him, or for any remedy in respect of a con-

tract permitting use of the patent is not a suit

under the patent laws of the United States, and

can not be maintained in a federal court as such.

See also Pratt v. Paris Gas Light & Coke Co., 168 U.S. 255

(1897); Wilson v. Sandford, 51 U.S. (10 How.) 99 (1850);

Beghin-Say International, 733 F.2d at 1570-71, 221 USPQ at

1123.

Equally long-standing authority has held that raising

patent-related defenses in the answer to a complaint

does not create the “arising under” jurisdiction provided

the district courts in § 1338, although these defenses

may require application of the federal patent law. See,

e.g., American Well Works Co. v. Layne and Bowler Co., 241

U.S. 257, 260 (1916) (“A suit arises under the law that

creates the cause of action.”); The Fair, supra. In C.R.

Bard, Inc. v. Schwartz, 716 F.2d 874, 879, 219 USPQ 197,

201 (Fed. Cir. 1983), this court stated “ [i]t is well-settled

that a case cannot ‘arise under’ federal law where the

[patent] claim is merely a defense to a state court

action.” The fundamental nature of the action is not

changed when it enters the federal system on the sole

basis of diversity.

C-10

Having reached the federal system based on diversity,

the case before us then became subject to patent counts

of a counterclaim, that could not have been filed in the

state court. A counterclaim, with its own jurisdictional

predicate, normally generates its own responsive plead-

ings, and may remain in the suit even if the complaint is

dismissed. Fed. R. Civ. P. 41(a)(2).

Adjudication of a patent counterclaim is the exclusive

province of the federal courts. The patent counts of Ti-

Coating’s counterclaim, for declaratory judgment of

patent invalidity, noninfringement, and unenforceability,

are within the jurisdiction of the district court under

§ 1338. Under 28 U.S.C. § 1295(a)(1), when the district

court’s jurisdiction is based in part on § 1338, the appeal

of the entire case, not solely the patent claims, lies in

this court. Thus appellate jurisdiction over suits in-

volving a § 1338 counterclaim is assigned to the Federal

Circuit. However, this jurisdictional consequence re-

quires something more than the mere filing, followed by

the unopposed dismissal, of a counterclaim.

When a § 1338 counterclaim is relied upon to establish

appellate jurisdiction, it is subject to the same scrutiny

as any other jurisdiction-controlling factor. The House

and Senate Reports make clear that

immaterial, inferential, and frivolous allegations

of patent questions will not create jurisdiction in

the lower court, and therefore will not create

jurisdiction in the appellate court.

House Report at 41. See also S. Rep. No. 275, 97th

Cong., Ist Sess. 19 (1981), reprinted in 1982 U.S. Code

Cong. & Ad. News 11, 29 (“Senate Report”). The Senate

expressed the concern that our jurisdiction not be mani-

pulated “to create forum shopping opportunities between

C-11

the Federal Circuit and the regional courts of appeals on

other claims”, the Senate focusing on anti-trust issues as

an example:

Thus, for example, mere joinder of a patent

claim in a case whose gravamen is antitrust

should not be permitted to avail a plaintiff of the

jurisdiction of the Federal Circuit... . Federal

District judges are encouraged to use their author-

ity under the Federal Rules of Civil Procedure

. to ensure the integrity of the jurisdiction of

the federal court of appeals by separating final

decisions on claims involving substantial antitrust

issues from trivial patent ... counterclaims .. .

raised to manipulate appellate jurisdiction.

Senate Report at 19-20, 1982 U.S. Code Cong. & Ad.

News at 29-30. The Senate Report continued:

The Committee intends for the jurisdictional

language to be construed in accordance with the

objectives of the Act and these concerns. If, for

example, a patent claim is manipulatively joined

to an antitrust action but severed and dismissed

before final decision of the antitrust claim, juris-

diction over the appeal of the antitrust claim

should not be changed by this Act but should

rest with the regional court of appeals.

Id. at 20, 1982 U.S. Code Cong. & Ad. News at 30.

Ti-Coating asserts that its dismissed counterclaim was

bona fide for purposes of determining our appellate juris-

diction, observing that the trial court refused to impose

sanctions under Fed. R. Civ. P. 11 based on the absence

of “clear evidence” that the counterclaim was made in

bad faith. In this case, however, we need not decide

whether the pleading of the patent counts of the counter-

claim was bona fide, or whether the counts themselves

C-12

were trivial or substantial.* Ti-Coating’s entire counter-

claim was dismissed during the pleading stage. Since no

objection was interposed by Ti-Coating, that dismissal

was final and not appealable. Whatever the merits of its

dismissal, the transient appearance of the counterclaim

did not give it irrevocable control of the jurisdictional

basis of the case. When the counterclaim including the

§ 1338 counts was dismissed on the pleadings, without

opposition by the counter-claimant, it left no legacy on

which to base appellate jurisdiction in this court.* Accord

Handgards, 743 F.2d at 1285-88, 223 USPQ at 215-17

(where patent declaratory judgment claim was dismissed

and not appealed in an earlier appeal, the Ninth Circuit

retained jurisdiction over a subsequent antitrust appeal);

cf. USM Corp. v. SPS Technologies, Inc., 770 F.2d 1035,

1037, 226 USPQ 1038, 1039-40 (Fed. Cir. 1985) (where the

patent issues were decided and thus disposed of by the

Seventh Circuit prior to the creation of this court, we

declined jurisdiction over a subsequent appeal of the re-

maining antitrust issue). Thus, the contract case on

appeal, that reached federal district court solely on the

basis of diversity, has not acquired a basis for jurisdic-

tion arising in whole or in part under an Act of Con-

gress relating to patents.

Accordingly, SDC’s motion to transfer the appeal is

granted. 28 U.S.C. § 1631.

IT IS SO ORDERED.

FOR THE COURT

/s/ Pauline Newman, Circuit Judge

Date: August 20, 1986

Nor need we here consider such issues as compulsory versus per-

missive counterclaims, their relation to the defenses, or other questions

raised by scholars as possibly atfecting appellate jurisdiction.

* This result is unaffected by the further counterclaim pleaded in

response to a further amended complaint; those subsequent proce-

dures, after this appeal was filed, can not impart retroactive sub-

stance to the prior judgment here on appeal.

D-1

APPENDIX D

NOTICE OF MOTION UNDER F.R.CIV.P. 54(b) FOR RE-

CONSIDERATION OF DECISION OF JULY 9, 1985 GRANT-

ING PLAINTIFF’S MOTION FOR PARTIAL SUMMARY

JUDGMENT ON ISSUE OF ROYALTY LIABILITY FOR

NEW PRODUCT AND ANNEXED AFFIDAVIT

(United States District Court —

Southern District of New York)

(Filed September 16, 1985)

(Received and Entered September 24, 1985)

(SCHWARZKOPF DEVELOPMENT CORPORATION, Plaintiff,

v. TI-COATING, INC., Defendant — 83 Civ. 9042 (LBS))

TOWNLEY & UPDIKE

Chrysler Building, 405 Lexington Avenue

New York, N.Y. 10174, Attorneys for Defendant

[HANDWRITTEN NOTATION]:

912/85 After consideration and oral argument, motton ts

denied.

So ordered.

/s/ Leonard B. Sand

U.S.D.J.

Copies Mailed to Counsel of Record AK

— MEMO ENDORSED -

E-1

APPENDIX E

OPINION

(United States District Court —

Southern District of New York)

(Dated July 9, 1985)

(SCHWARZKOPF DEVELOPMENT CORPORATION, Plaintiff,

- against - TI-COATING, INC., Defendant — 83 CIV 9042 (LBS);

HONORABLE LEONARD B. SAND, U.S.D.J.)

APPEARANCES: MORGAN, FINNEGAN, PINE, FOLEY

& LEE, Attorneys for Plaintiff, 345 Park Avenue,

New York, New York 10154, DAVID H. PFEFFER, ESQ.,

Of Counsel; TOWNLEY & UPDIKE, Attorneys for

Defendant, 405 Lexington Avenue, New York, New

York 10174, VINCENT BRICCETTI, ESQ., Of Counsel;

FISHER, CRAMPTON, GROH & MCGUIRE, Attorneys for

Defendant, 877 S. Adams, Birmingham, MI 48011, Of

Counsel.

SAND, J.

Plaintiff brings this action seeking to collect royalties

under a licensing agreement on the products manufac-

tured and sold by defendant which are alleged to have

violated plaintiff's U.S. Patents Nos. 4,162,338 (’338) and

4,101,703 (’703). Partial summary judgment has already

been granted establishing defendant's liability for royal-

ties accruing prior to November 1982. Plaintiff has since

moved for partial summary judgment of liability for

royalties due under the same agreement for the period

of November 1, 1982 to September 30, 1983. Defendant,

however, contends that the coating used for the tools

during the period was outside the scope of plaintiff's

E-2

patents, thus making plaintiff's claim for rovalties

invalid.

In an order dated January 28, 1985, this Court granted

plaintiff's motion unless defendant subsequently sub-

mitted an offer of proof accompanied by affidavits sup-

porting its contention that plaintiff's patents were not

infringed. In response, defendant has submitted a por-

tion of a deposition transcript of Charles Zichichi, presi-

dent and principal stockholder of Ti-Coating, Inc., an

affidavit by Andrew Pierce, an attorney, and a letter

from John Blocher, Jr. to Zichichi, analyzing the relation-

ship between Ti-Coating’s production and the patents in

question. On February 27, 1985, the U.S. Patent and

Trademark Office (“PT.O.”) handed down a decision

relating to a petition for reexamination of the plaintiff's

patents brought by a third party. Claims 3 through 6 of

patent ‘703 were interpreted by the PT.O. and the peti-

tion was denied. We now reconsider plaintitt’s motion

for summary judgment in light of these submissions.

The patented invention which is the subject of this

action is a three-layer coating for cutting tocls and

related industrial equipment to achieve increased dura-

bility. Prior to November 1982, defendant applied the

patented three-layer coating directly to the wear surface

of the tool. In November, however, defendant began to

interpose a separate ‘2 to 1 micron thick layer of titanium

nitride between the patented three lavers and the sub-

strate of the tool. Plaintiff claims that this additional

layer is insignificant and that on the undisputed facts of

the record, there is literal infringement of ‘703 patent,

claims 15, 16 and 17, and of ‘338 patent, claim 21, as a

matter of law. Detendant, however, fails to respond to

this literal infringement claim and addresses its defense

to the doctrine of equivalents. It contends that the new

process does not intringe the plaintiff's patents which

E-3

specifically require the coating to be adjacent to the sur-

face and that this presents a question of fact; therefore,

summary judgment is inappropriate. Defendant cites the

PT.O. decision which, in its interpretation of ‘703 claims

3 through 6, required the three-layer coating to be adja-

cent to the substrate of the tool in order to violate the

plaintiff's patent. For the following reasons, we conclude

that literal infringement of ‘703 patent, claim 15, and lit-

eral infringement of ‘338 patent, claim 21, exists as a

matter of law. Infringement of any one of these claims

establishes liability for royalties under the licensing

agreement.

DISCUSSION

Literal infringement of a patent requires that the

infringer’s device embody every element of the claim,

Builders Concrete, Inc. v. Bremerton Concrete Products Co.,

Appeal No. 84-1292, slip op. at 4 (Fed.Cir. Mar. 4, 1984),

and summary judgment of this question is appropriate

when no genuine issue as to any material fact exists

which is necessary for resolution of the issue. Chore-time

Equipment v. Cumberland, Inc., 713 F.2d 774, 778-79

(Fed.Cir. 1983); Molinaro v. Fannon/Courier Corp., 745

F.2d 651, 654 (Fed.Cir. 1984) (patent claim interpretation

is an issue of law which does not preclude summary

judgment). Plaintiff in this action asserts that Ti-

Coating’s operations fall squarely within the language of

patent ‘703, claims 15, 16 and 17 and that literal infringe-

ment thus exists as a matter of law.

Patent ‘703, claim 15 describes “an article of manufac-

turing comprising:” (a) a hard metal substrate; and (b) a

composite coating “including” the three patented layers.

It is uncontested that Ti-Coating’s product contains the

three layers described in claim 15 in the proper order.

E-4

We therefore hold that literal infringement of the ‘703

patent, claim 15 exists as a matter of law.

Defendant Ti-Coating cites the testimony of its presi-

dent, Mr. Zichichi, in an attempt to show that the

patented three-layer tools and the infringing four-layer

tools are not functional equivalents. Mr. Zichichi stated

in his deposition that the additional layer decreased the

brittleness of the tool and was therefore an improvement

upon plaintiff's patented product.

Functional equivalence, however, does not bear on

whether or not there is literal infringement. In Graver

Manufacturing Co. v. Linde Co., 339 U.S. 605 (1950), the

Court held that literal infringement of a patent is deter-

mined by comparing the words of the patent claim with

the accused device; if the device is within the claim,

there is no infringement. 339 U.S. at 607. Patent claim 15

provides that infringement will occur when an item “in-

cludes” the three-layer coating. “[I]ncludes” is a broad

word whose presence in the claim at issue herein results

in literal infringement of the claim even where there is

an intervening layer between the surface of the tool and

the three-layer coating described in the claim. The ac-

cused device is one covered by the language of the

patent and therefore infringement exists. Indeed, the

defendant’s own expert, Dr. John Blocher, Jr. in a letter

to Ti-Coating President Zichichi, acknowledged that the

word “include” as it appears in ‘703 claim 15 might

result in literal infringement even where there is an

intermediate coating between the substrate and the

other layers. The defendant thus recognizes that the lan-

guage in claim 15 is at the least problematic and at the

most, as we hold, determinative.

It is clearly established in the law of patents that one

cannot avoid infringement simply by adding an element

to an already patented device. Amstar Corp. v. Envirotech

E-5

Corp., 730 F.2d 1476, 1483 (Fed.Cir. 1984); A.B. Dick Co.

v. Burroughs Corp., 713 F.2d 700, 703 (Fed.Cir. 1983). In

this action, the only difference between defendant's

coating and the patented coating is an extra layer placed

adjacent to the wear surface of the tool. Once again, the

case for literal infringement stands.

Our conclusion is also supported by an examination of

the language used elsewhere in patent ‘703. Such an

- examination reveals that plaintiff was able to express the

concept of layering coatings on top of each other and

directly touching the substrate of the tool, by using

phrases such as “continguous [sic] with,” “adjacent,”

“adjoining” and “in direct contact with.” A broader con-

cept clearly attaches to the use of the word “including”

in claim 15. The language in claim 15 allows for the

intervening layer of titanium nitride inserted by the

defendant and defendant has therefore infringed plain-

tiffs patent ‘703, claim 15 as a matter of law.

Finally, the defendant offers the affidavit of attorney

Andrew Pierce which states that the four-layer coating

currently being utilized by Ti-Coating is an improvement

over the patented three-layer coating. There are two

problems with this submission. First, Pierce lacks per-

sonal knowledge of Ti-Coatings products and production

techniques and merely reiterates in his affidavit the

unsworn testimony of defendant’s employee. An attor-

ney’s interpretation of subjective information is not per-

suasive authority. Second, Pierce’s attempt to establish

the additional layer as an improvement goes to func-

tional equivalence, which is irrelevant to determining lit-

eral infringement. Graver Manufacturing Co. v. Linde Co.,

supra. The Pierce affidavit therefore does not alter the

conclusion of this Court with respect to defendant's lit-

eral infringement of claim 15.

E-6

We recognize that Patent *703, claims 16 and 17

contain language that is somewhat narrower than claim

15. Claim 16 provides tor various layers “covering”

one another and for these layers to be “covering” the

wear surface of the tool. Claim 17 provides that

the various layers be “overlying” one another and that

such lavers be “overlying” the surface of the tool.

Each patent claim, however, defines a separate in-

vention Jones v. Hardy, 727 F.2d 1524, 1528 (Fed.

Cir. 1984), and must be separately considered, W. L.

Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540,

1559 (Fed.Cir. 1983). In light of our conclusion that

patent claim 15 allows for the intervening layer in-

serted by the defendant and has thus been literally

infringed, it is not necessary for this Court to determine

whether claims 16 and 17 have been literally infringed

as well.

While patent ‘703 protects the product of the three-

layer coating, patent '338 protects the process by

which the coating is produced. Plaintiff alleges that

claim 21 of this patent has also been literally in-

fringed as a matter of law; we agree. Ti-Coating’s pro-

cess includes every step of the patented process

but employs an additional step to produce the fourth

layer. As in the case of product claims, however,

“the mere addition of a step to a process that other-

wise infringed a patent does not negate infringement.”

Bandag, Inc. v. Lewis General Tire Co., 207 U.S.P.Q. 745,

756 (W.D.N.Y. 1980). We therefore conclude that patent

‘338 claim 21 has been infringed by defendant as a matter

of law.

The practice of a single valid patent claim is sufficient

to establish Ti-Coating’s royalty liability. (Licensing

Agreement 4(d)). Ti-Coating has infringed at least two

iii tess 3 ki

E-7

of the patentee’s claims; it is therefore liable to plaintiff

for royalties. !

The PT.O. decision of February 27, 1985, denying a

third party’s petition for reexamination of the plaintiff's

patent, interpreted claims 3-6 of patent ‘703. The lan-

guage of these claims is very similar to the language of

claims 15-17 of ’703, the claims at issue here. The PT.O.

interpreted the language of patent claims 3-6 as not con-

templating the addition of an intermediate layer between

the substrate of the tool and the plaintiff's patented

three-layer coating. While we acknowledge that the lan-

guage of claims 3-6 is almost identical to the language of

claims 15-17, this Court will not follow the P-T.O.’s inter-

pretation for the following reasons.

As an initial matter, we note that the PT.O. does not

have an estoppel or other legally binding effect on this

Court especially where, as here, the statements of ‘he

' Since summary judgment can be granted because of Ti-Coating’s

literal infringement of patents ‘703 and ‘338, this Court need not

decide whether a suit can be maintained under the doctrine of equiv-

alents. Graver Manufacturing Co. v. Linde Co., 339 U.S. 605, 608-9

(1950) sets forth a tripartite test under which a patentee can maintain

infringement under the doctrine of equivalents. The device must

“perfurm substantially the same function in substantially the same

way and accomplish substantially the same result... .”

The defendant argued that the additional layer decreases the brittle-

ness of the tool, an unfortunate side effect of the layered coatings.

Plaintiff countered with arguments that the additional layer serves no

significant purpose. To support this contention, plaintiff cites the fact

that Ti-Coating neither advertised the change in formula nor notified

97% of its customers of the change. Next, plaintiff argued that even

if the additional layer does increase the durability of a tool, that it,

plaintiff, holds the patent for tools with increased durability. The

accused tools would therefore be a “colorable variation” of the

patented tools.

The doctrine of equivalents requires resolution of factual issues

which are not appropriately decided on summary judgment. Because

literal infringement has been demonstrated in this case as a matter of

law, however, this Court need not decide the equivalence issue and

plaintiff is entitled to summary judgment in its suit for royalties.

E-8

PT.O. are made in a determination upholding a decision

declining to reexamine an already issued patent, in a

proceeding in which the patentee was not a party and,

under PT.O. rules, could not participate. A court, in

evaluating the validity of a patent, must give “due

respect” to PT.O. decisions but is not bound thereby.

Lindemann Maschinenfabrik v. American Hoist and Derrick

Co., 730 F.2d 1452 (Fed.Cir. 1984). Furthermore, the case

law suggests that courts should defer to the Patent

Office in areas of that office’s expertise. Carter-Wallace,

Inc. v. Riverton Laboratories, Inc., 304 F.Supp. 357, 372

(S.D.N.Y. 1969); see also Brenner v. Manson, 383 U.S. 519,

531-32 (1950) (Court deferred to PT.O. determination on

patent utility stating that it would not overturn PT.O.’s

finding in a “technical area”); Goodyear Tire and Rubber

Co. v. Ladd, 349 F.2d 710, 711 (D.C.D.C. 1965) (PT.O.’s

expertise in technical areas such as “obviousness” re-

quire affirmance of its judgments). This presumption of

the validity of PT.O. determinations, however, is not

absolute. In cases where the evidence before the Court

is insufficient to support the PT.O. decision, the court

must rule in accordance with the evidence. Wagner v.

Reynolds, 241 F.Supp. 910 (D.D.C. 1965). In addition, the

deference to be accorded to a PT.O. determination applies

mainly to issues of fact. Sampson v. Ampex Corporation,

333 F.Supp. 59 (S.D.N.Y. 1971); claim interpretation is an

issue of law. Molinaro v. Fannon/Courier Corp., 745 F.2d

651, 654 (Fed.Cir. 1984). Given the fact that the word

“including,” both on its face and when compared with

other language utilized in the patent, would permit in-

sertion of additional layers between the tool surface and

the three-layer coating, this Court will adhere to its pre-

vious determination that defendant’s use of additional

layers does not avoid its literal infringement of plaintiff's

patent claims.

E-9

: For the above reasons, this Court finds literal infringe-

“ment of patent ‘703 claim 15 and of patent ‘338 claim 21

_and therefore grants plaintiff summary judgment on the

_ issue of royalty liability.

The matter is referred to Magistrate Leonard Bernikow,

_or such Magistrate as he shall designate, to report and

recommend as to damages for the period November 1,

1982 to September 30, 1983 as well as the period June 1

_ to November 1, 1982. Plaintiff's motion for summary

_ judgment as to the earlier period is similarly referred to

such Magistrate.

SO ORDERED.

/s/ LEONARD B. SAND

U.S.D.J.

Dated: New York, N-Y.

July 9, 1985

F-1

APPENDIX F

LICENSE AGREEMENT BETWEEN

SCHWARZKOPF DEVELOPMENT CORPORATION

AND TI-COATING, INC.

This License Agreement, effective as of June 1, 1982, is

made by and between Schwarzkopf Development Corpor-

ation (“SDC), a Maryland corporation having its principal

place of business in New York, New York, and

Ti-Coating, Inc. and Ti-Coating of Texas, Inc., respec-

tively, a Michigan corporation having its principal place of

business at 42123 Irwin, Mt. Clemens, Michigan 48045

and a Texas [Michigan*] corporation having a principal

place of business at 8641 Wayfare, Houston, Texas 77075

(collectively referred to as “LICENSEE” ).

1. LICENSED PATENTS. Rights under United States

Patent No. 4,101,703, issued July 18, 1978, entitled

“Coated Cemented Carbide Elements”, and United

States Patent No. 4,162,338, issued July 24, 1979, entitled

“Coated Cemented Carbide Elements and Their Manu-

facture”, are licensed by SDC to LICENSEE by this

agreement.

2. WARRANTY. SDC warrants that it is the owner of

the entire right, title and interest in the United States

Patent Nos. 4,101,703 and 4,162,338 and that it has the

right to grant this license.

3. LICENSE.

(a) SDC hereby grants to LICENSEE, and its wholly

owned subsidiaries, upon the terms and condi-

tions set forth in this agreement, a non-exclusive

license to practice, by making, having made

Printer’s note: Bracketed insertions indicate initialled, handwritten

changes on original copy.

(c)

F-2

using and selling, the inventions claimed in

United States Patent Nos. 4,101,703 and 4,163,338.

This agreement does not grant to LICENSEE any

express or implied rights or any immunity from

suit in any foreign country in which SDC, or any

company affiliated with SDC, also possesses

patent rights.

This agreement does not grant to LICENSEE the

right to grant sub-licenses.

4. ROYALTIES.

(a)

In consideration for the rights granted by SDC to

LICENSEE under this agreement, LICENSEE agrees

to pay to SDC, in the manner provided in this

paragraph 4, a royalty computed as follows:

(i) On articles manufactured under the license

which are comprised of tools and parts sup-

plied by others, for which LICENSEE charges a

fee for coating with either titanium nitride

overlying titanium carbide, or titanium nitride

overlying titanium carbonitride overlying ti-

tanium carbide, except for cutting inserts for

tools, ten percent (10%) of the price charged

by LICENSEE for services performed on such

tools and parts by or on behalf of LICENSEE.

(ii) On articles manufactured under the license

which are cutting inserts for tools, whether

manufactured in their entirety by LICENSEE

or provided by others for coating by LICEN-

SEE, a royalty of:

(A) five percent (5%) of the annual net sales

value of cutting tool inserts manufac-

tured under the license, up to the first

$ 100,000.00 in annual net sales value;

(B) three percent (3%) of the annual net

sales value of cutting tool inserts man-

ufactured under the license in excess of

(c)

(d)

(e)

F-3

$100,000.00 up to $300,000.00 in annual

net sales value; and

annual net sales value of cutting tool in-

serts manufactured under the license in

excess of $300,000.00 in net annual sales

value.

“Net sales value” for any coated cutting tool insert

shall mean the price at which LICENSEE’s customer

lists that coated insert for sale to the trade in its

then current price list. If no such price list exists,

then the sales price listed for the most similar cut-

ting insert in terms of size, quality and coating,

that appears in the then current price list of one or

more of Kennmetal, Inc., Carmet Company or the

V.R. Wesson Division of Fansteel, Inc., F.O.B. a

factory or sales office in the United States located

east of the Mississippi River.

“Annual net sales value” shall be the aggregate in

any calendar year of the “net sales value” of coated

cutting tool inserts computed in accordance with

paragraph (b) hereof. The period from September

[June] 1, 1982 through December 31, 1982 shall be

considered a calendar year for purposes of this

paragraph (c).

“Article manufactured under the license” shall

mean an article which embodies an invention

claimed in United States Patent No. 4,101,703 or

which is made by or with the use of any method

embodying an invention claimed in United States

Patent No. 4,162,338.

Within thirty days after each three month period,

commencing with the period beginning September

[January] 1, 1982 [1983], LICENSEE shall transmit to

SDC a report stating the quantities of articles

coated or otherwise manufactured, used and sold

F-4

under this agreement, and a computation of the

royalties due under this agreement. Royalties due

for the period from December [June] 1, 1982

through December 31, 1982 shall be reported with

the royalties due for the period from January 1,

1983 through March 31, 1983. Simultaneously with

the transmittal of each report, LICENSEE shall pay

to SDC the royalty due for the period covered by

the report. If no royalties are due, LICENSEE shall

so report.

(f) In the event that the aggregate royalties paid by

LICENSEE to SDC in any calendar year after 1982

are less than the minimum amount of $5,000.00,

and LICENSEE does not pay to SDC an amount

equal to the deficiency within 30 days after the end

of such calendar year, SDC may at its election, ter-

minate this agreement upon 30 days’ notice.

(g) It is understood that the royalty rates computed

pursuant to Section 4 hereof have been aggregated

for the convenience of LICENSEE. Upon expiration

of U.S. Patent No. 4,101,703, the said royalty rates

shall decrease by fifty percent (50%).

5. RECORDS. LICENSEE agrees to maintain complete

and accurate books and records containing all information

necessary for the purposes of calculating and verifying the

royalties due to SDC under this agreement. These books

and records shall be available for inspection, during regu-

lar business hours and upon reasonable notice, by an in-

dependent certified public accountant retained by SDC for

the purpose of verifying LICENSEE’s royalty reports. Such

inspection shall not be conducted more than once a year,

nor after six months from the date of termination of this

License Agreement. Information concerning such royalty

payments shall be maintained in confidence by SDC, ex-

cept insofar as is necessary to enforce SDC’s rights under

this License Agreement.

[Re os babi

St aN

CUMLNALBT Ale Oe Beet ee BO lhe * ~~

Ds ey

F-5

6. PAST INFRINGEMENT. Upon execution of this agree-

ment, SDC hereby releases LICENSEE from all past claims

for infringement of United States Patent Nos. 4,101,703

and 4,162,338 arising out of products manufactured, used

or sold by LICENSEE. The release granted herein also

applies to customers of LICENSEE but only with respect to

products coated by LICENSEE.

7. ASSIGNMENT. This agreement may not be assigned

by LICENSEE without the prior written consent of SDC ex-

cept that this agreement may be assigned, without the

consent of SDC, to the successor to that part of the LICEN-

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8. TERMINATION.

(a) If LICENSEE becomes bankrupt or insolvent, or if

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or involuntarily, this agreement shall immediately

terminate.

(b) Except as specified in paragraph 4(f) hereof, upon

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agreement, SDC may terminate this agreement by

notifying LICENSEE by registered mail and specify-

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minate 30 days after receipt of such notice by

LICENSEE, unless LICENSEE in the interim shall

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(d) This agreement shall remain in force until the ex-

piration date of U.S. Patent No. 4,162,338 unless

sooner terminated under the provisions hereof.

F-6

(e) LICENSEE may terminate this agreement at any

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Attention: Ronald Altman, Chairman

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Attention: Charles Zicchichi [sic], President

11. MOST FAVORED LICENSEE. In the event that SDC

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SCHWARZKOPF

ATTEST: DEVELOPMENT CORPORATION

/s/ [Illegible] By: /s/ Ronald Altman, Its Chairman

TI-COATING, INC.

By: /s/ Charles Zichichi, Its President

ATTEST: TI-COATING OF TEXAS, INC.

/s/ Rose Marie By: /s/ Charles Zichichi, Its President

Zichichi, V. Pres.

ATTEST:

PEO PE Pate ne oes ee ook

BY ee ree See ae, ae See

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G-1

APPENDIX G

UNITED STATES PATENT 4,101,703

United States Patent [19] [11] 4,101,703

Schintlmeister [45] Jul. 18, 1978

[54] COATED CEMENTED CARBIDE ELEMENTS

[75] Inventor: Wilfried Schintlmeister, Reutte, Austria

[73] Assignee: Schwarzkopf Development Corporation,

New York, N_Y.

(21] Appl. No.: 571,695 [22] Filed: Apr. 25, 1975

Related U.S. Application Data

[63] Continuation of Ser. No. 329,128, Feb. 2, 1973,

abandoned.

[30] Foreign Application Priority Data

ee BO renee 896/72

i a ae Re ererene 6317/72

2. _ ere B32B 15/04; B32B 9/04

ME) RC eich deisel etn akeadauudadecan 428/216; 148/31.5;

428/420; 428/457; 428/539

[58] Field of Search ................. 428/420, 457, 539, 216;

148/31, 5

[56] References Cited

U..S. PATENT DOCUMENTS

DAE ER FE CAE, oncccccenctvccssss 117/106C

Se SR PD etnissincenecnensesescvenecess 117/69

3,684,585 8/1972 Stroup et al. ..................... 148/6

DAT ATO EMTSTS FOUN ccnevvcerccssscncescees 29/194

Primary Examiner — James R. Hoffman

Attorney, Agent, or Firm — Morgan, Finnegan, Pine,

Foley & Lee

G-2

[57] ABSTRACT

Cemented carbide elements with working faces bearing a

thin multilayer or stratified coating of nonuniform com-

position of wear-resistant materials exhibit superior wear-

resistance for improved performance and service life

under severe service conditions as in the case of inserts for

cutting tools and wire drawing dies. In one embodiment,

an initial carbon-rich layer of titanium carbide or carbonit-

ride coating material in direct contact with a cemented car-

bide part or insert underlies a middle or intermediate

stratified transition zone-made up of a series of parallel

layers or strata of coating material wherein the content of

carbon and nitrogen is not constant but varies with the

stratum or location by depth in that zone with the material

gradually changing to titanium compounds that are pro-

gressively lower in combined carbon content and richer in

nitrogen than in the initial layer until the composition of

the outermost stratum of the transition zone approximates

that of the overlying surface layer of high nitrogen content

(e.g., titanium nitride). The coating is formed by a gas

deposition method wherein changes in the concentration

of gaseous carbon and nitrogen compounds are used to

control the formation of the various layers of different

composition in the layered coating.

19 Claims, No Drawings

COATED CEMENTED CARBIDE ELEMENTS

This is a continuation of application Ser. No. 329,128

filed Feb. 2, 1973 now abandoned.

BACKGROUND OF THE INVENTION

1. Field of the Invention

This invention is concerned with protective coatings for

wear-resistant elements intended for severe operating

G-3

conditions and with methods of depositing such coatings

on the wear-resistant substrates or inserts.

2. Prior Art

Cemented carbides, also known as sintered carbides,

are solid and coherent masses made by pressing and sin-

tering a mixture of powders of one or more metallic car-

bides and a much smaller amount of an iron group metal,

such as cobalt, to serve as a binder metal. These carbides

may be used as tools or inserts for machining, milling,

blanking, and drawing operations; also as shaping dies,

spinning dies, and for many other applications. Such tools

are capable of performance beyond the limits of high

speed steels and in many cases are suitable for use on very

hard abrasive materials and on tough alloys. Cemented

carbides are widely used for structural parts and tools sub-

ject to intense wear or other service loads that require high

compressive strength. Suitable carbides for such purposes

include the carbides of tungsten, titanium, tantalum,

columbium, molybdenum, vanadium, chromium, zircon-

ium, and hafnium.

: Cemented carbides because of their unique strength

and hardness are frequently subjected to conditions of in-

tense wear. The manner and rate of wear depends very

largely on the use and service conditions of the cemented

carbide part. Wear is frequently caused by mechanical

abrasion which can be greatly intensified by diffusion pro-

cesses when operating at elevated temperatures. Corro-

sion is also a cause in the wear of such parts, for example,

when cemented carbide is used in corrosive media or

when oxidation in the air takes place at elevated tempera-

tures. When cemented carbides are used for shaping of

other parts, either by machining and nonchipping shap-

ing operations or by other processes, the cemented car-

bide parts are not only subjected to heavy mechanical

ee ee

G-4

stresses but there is frequently also intense heating which

greatly accelerates the wear.

In the machining of long-chipping and short-chipping

materials, as for example, steel or cast iron, respectively,

wear on the cutting edge can our [sic] as a result of crater-

ing of the rake face and abrasion of the clearance face. Fur-

thermore, the chips can adhere or weld onto the cutting

edge of the part and cause chipping or splintering of the

edge. In interrupted cuts, crack formation may be caused

by rapid temperature changes and splintering can occur

from heavy impacts.

It has now been discovered that wear-resistant stratified

coatings composed of a number of layers of certain differ-

ent compositions provide a number of significantly im-

proved results of an unpredictable nature as described

hereinafter, particularly when these coatings are em-

ployed as protective wear-resistant coatings on cemented

carbide substrates and other hard material bases. The

coated articles have many uses for metai working and

other purposes that involve exposure to mechanical wear

and abrasion.

SUMMARY OF THE INVENTION

The present invention relates to a hard-wear resistant

multilayer coating of nonuniform composition in adjoin-

ing layers and wherein said coating contains at least two

different wear-resistant materials and includes at least two

elements of the group consisting of carbon, nitrogen,

boron and silicon in chemical combinations with titanium.

It also encompasses articles with such coatings on hard

material bases or substrates of the type described herein-

after, and especially cemented carbides substrates having

an adherent coating that contains at least two different

wear-resistant materials and includes carbon and nitrogen

in chemical combination with titanium.

G-5

This invention also encompasses a method of making

the aforesaid articles by decomposition onto substrates

from reactive gaseous mixtures under controlled reaction

conditions, including the composition of the gaseous

mixtures.

Other aspects of the invention involve one or more of

such features as the structure of the multilayer (i.e., more

than one layer) article and the thickness and disposition or

location of its layers, especially carbon-rich layers com-

posed of material of a substantial or high carbon content

and a lower nitrogen content, as well as nitrogen-rich

layers of material containing less carbon than nitrogen.

DESCRIPTION OF EMBODIMENTS

OF THE INVENTION

The coated articles of the invention may employ as a

base or substrate any hard solid material to which the

coatings will adhere. These hard materials are generally

hard metals or alloys thereof, including metal-like alloys,

compositions or materials. Thus, the substrates may be

cermets and like products of powder metallurgy, as well

as hard metal carbides and/or nitrides, etc. and alloys,

such as cobalt-chromium-tungsten, superalloys and other

alloys employed in high speed cutting tools. In general,

sintered materials are preferred as substrates, especially

the wear-resistant cemented carbides. Among the many

suitable base or substrate materials, cemented tungsten

carbide compositions containing about 5-30% of a binder

metal of the iron group (cobalt, iron, and/or nickel) have

been used with excellent results, and up to a total of 40%

of the tungsten carbide content may be replaced by one or

more other carbides, including ihose of titanium, tan-

talum, niobium, vanadium or chromium. Cemented car-

bides containing from 60-90% titanium carbide with the

balance being nickel or a nickel-molybdenum alloy binder

G-6

are also used and up to half of this titanium carbide may

be replaced by titanium nitride.

A coating of the present invention is characterized by a

multilayer structure, often so thin that the total thickness

of the coating is less than 10 or 20 microns, as well as the

fact that its chemical composition is not uniform or homo-

geneous although its physical appearance is typically

homogeneous with no strata visible even under a micro-

scope. These coatings are made up of two or more layers,

and at least two of the layers are of different composition

in respect to having either different chemical components

or different proportions of the same components or ele-

ments. The principal constituents of the coatings are metal

compounds of at least two nonmetals of the group consist-

ing of carbon, nitrogen, boron and silicon, of which car-

bon and nitrogen are generally preferred. But also com-

pounds of nonmetals, such as boron carbide, boron

nitride and silicon carbide, can be used. Titanium may be

utilized as the sole metallic component of such com-

pounds; also it is contemplated that it may be associa*ed

with considerable amounts of compounds of one or more

other metals in Groups III, IV, V and VI of the Periodic

Table of Elements that have atomic numbers in the range

of 21 to 74. Thus, one may also employ compounds of one

or more of such metals as chromium, molybdenum, tung-

sten, scandium, yttrium, lanthanum, zirconium, hafnium,

vanadium, niobium and tantalum, usually in lesser total

amount so that the titanium constitutes a major portion or

more that {sic, than] 50% of the total weight of the chemi-

cally combined metals in the coatings. In some cases it

may be also useful to substitute more than 50% of the

titanium. If coatings have particularly great ductility are

required, then additions of iron, cobalt, or nickel, or

molybdenum, or mixtures thereof up to about 20% of the

total coating weight are advantageous. While the specific

description hereinafter is directed entirely at coatings

;

“ >

‘*

: ¥

G-7

composed of titanium compounds and their decomposi-

tion for the purposes of a full and detailed disclosure of

materials that have provided greatly improved results,

such description is generally applicable to coatings which

also contain the compounds of the aforementioned other

metals and nonmetals.

In respect to the contents of nonmetals in the titanium

compounds in the coatings of this invention, a nitrogen or

carbon content of more than 14% by weight is regarded as

a high nitrogen or high carbon content. Amounts of these

elements below 6% are considered low contents, and the

intermediate range of 6-14% may be called an average or

medium content of carbon or nitrogen. On the other

hand, the expressions “carbon-rich” and “nitrogen-rich”

herein are intended to denote coating deposits wherein

carbon or nitrogen, respectively, constitutes a major pro-

portion of the total weight of the combined nonmetals in

the particular deposits and also to denote gaseous mix-

tures containing enough carbon-containing or nitrogen-

containing gas material to produce such solid deposits. In

general, this means that a solid deposit has a carbon or

nitrogen concentration, respectively, that is either a high

content or in the upper half of the intermediate content

range, say above 10%.

In general, the chemical comipositions of each of the

various layers or strata are substantially uniform in their

planar dimensions, that is across the entire width and

length of their areas, by reason of the manner of their

deposition from the vapor state onto solid bases or sub-

strates as described hereinafter; instead of the desired and

significant differences in composition occur through the

depth or thickness of the coating, and the composition of

one principal layer is different from the adjoining over-

lying or underlying layer; and this difference in composi-

tion may be slight and progressive in gradations through a

G-8

transition zone having many ultra-thin strata in some in-

stances or a more pronounced change in other cases.

The arrangement, thickness and composition of the in-

dividual layers will depend upon the surface conditions of

the wear part. For instance, these may consist of several

different layers, namely pure titanium carbide, titanium

carbonitrides of medium to high carbon content, pure ti-

tanium nitride or titanium carbonitrides with a high nitro-

gen content. In some cases, it may be advantageous to

have five or more layers while in other cases, two princi-

pal layers may be sufficient, for example, a carbon-rich

layer and a nitrogen-rich layer of titanium compounds.

The individual layers can be either contiguous or there

may be an intermediate stratified transition zone wherein

the intermediate layers or strata have variable carbon and

nitrogen contents; that is, the combined carbon content is

decreasing and the combined nitrogen content increasing

in one direction through the thickness of that zone (e.g.,

away from the substrate and toward the exterior surface of

the composite coating), and the carbon is increasing and

nitrogen decreasing in the other direction (e.g., toward

the substrate). Such changes in composition may be es-

sentially continuous or very gradual in such a transition

zone wherein the composition is changed from a compos-

ition similar to that of a principal layer on one side of the

zone to a composition similar to that of a different princi-

pal layer on the other side of the zone. On the other hand,

the change in composition may be very marked as at the

single interface of two contiguous carbon-rich and

nitrogen-rich coating layers.

The thickness of a transitional carbonitride layer or zone

may be about 0.1 to 10 microns. The individual or princi-

pal layers of titanium nitride and titanium carbonitride

having medium to high nitrogen content, are usually pre-

sent in thickness of about 0.3 to 30 microns. The indi-

’

Eo CO Pet fae

G-9

vidual or principal layers of titanium carbide and titanium

carbonitride having a low nitrogen content are usually

present in thicknesses of 0.2 to 20 microns.

In many cases, it has been found advantageous to have

a layer structure in which the layer or stratum with the

maximum carbon content is located close to the base or

substrate surface and remote from the external surface of

the coating, whereas the layer or stratum of maximum nit-

rogen content is located close to the surface of the coating,

and remote from the substrate. For example, the layer

near the base may consist of titanium carbide or a titanium

carbonitride and the layer near the surface of the coating

of titanium nitride. The coating can be formed in such a

manner that a pure titanium carbide layer is joined to a

pure titanium nitride layer by means of a series of car-

bonitride layers in a transition zone that provides a

gradual and continuous change in composition from car-

bide to nitride.

The formation of the coating layers in accordance with

the present invention can be most simply carried out by

use of a gas phase deposition. However, other well

known methods such as plasma spraying, sputtering, or

pack cementation have also been found usefui.

Gas phase deposition has the particular advantage that

the layer composition can be readily controlled by regula-

tion of ae composition, the pressure and temperature of

the gas phase. The composition of the gas phase can easily

be adjusted by addition of suitable gaseous compounds.

Furthermore, the mixing ratio of the gas phase may also

be varied during the deposition process in a simple man-

ner which causes a corresponding change in the deposited

coating composition. The cemented carbide parts may be

cleaned by conventional techniques prior to applying the

coating material. Surface carburization of the cemented

carbide substrates may also be carried out where the car-

G-10

bon content of the cemented carbide is too low for effec-

tive coating with the hard materials of this invention.

Atmospheric pressure may be employed for the gas

deposition of all the coating materials as in the examples

that follow, but it is also contemplated that it may be de-

sirable to employ higher or lower pressures in some in-

stances. For example, it may be advantageous to employ

subatmospheric pressures for depositing coatings of

titanium carbide, and it is also contemplated that titanium

nitride deposits may be formed with a gaseous mixture at

superatmospheric pressures. Suitable operating tempera-

tures for the preferred titanium compounds of carbon and

nitrogen are in the 700° to 1200° C. range.

The gas mixture is varied depending upon the compos-

ition of the layer desired to be deposited. Generally, in

order to form a pure titanium nitride layer, the gas mix-

ture comprises a titanium halide, for example, titanium

tetrachloride; nitrogen or gaseous nitrogen compounds

such as ammonia, and similar nitrogen compounds. The

gas mixture may also contain inert gases, or hydrogen, or

a mixture thereof.

In order to form titanium carbonitride layers, a gas mix-

ture preferably comprises a titanium halide, a hydro-

carbon gas, and nitrogen or a gaseous nitrogen com-

pound, such as, aniline, pyridine, aliphatic and aromatic

amines and similar organic nitrogen compounds. The gas

mixture may also contain inert gases, or hydrogen, or a

mixture thereof.

In order to form a pure titanium carbide layer, the gas

mixture may comprise a titanium halide, and hydrocarbon

gas. The gas mixture may also contain inert gases, or

hydrogen, or a mixture thereof. Other sources of carbon

for the processes are the vapors of organic halides of

either the aliphatic or aromatic type.

FAR GO CAS ta PE

G-11

According to the present invention, there is provided a

new coating for cemented carbide parts which reduces ab-

rasion and cratering of the surfaces of the cemented car-

bide tool inserts to a surprising and outstanding degree.

This is in marked contrast with results that have been ob-

tained with tool inserts bearing a coating of uniform com-

position. For instance, special cutting disposable inserts

and tips made of cemented carbides for machining parts

have recently been developed, and these have a wear-

resistant surface coating of titanium carbide. Such dispos-

able cutting inserts, e.g., coated with titanium carbide,

generally have had two to three times the service life of

similar uncoated disposable tips when used under com-

parable machining conditions. However, their service life

is limited by the cratering type of wear although the clear-

ance face wear is relatively slight.

It has been proposed in the U.S. Pat. No. 3,717,496 to

coat cemented carbide inserts with titanium nitride or

titanium carbonitrides in order to reduce wear. In practice

it was found that titanium carbide produces better protec-

tion for the clearance face, whereas titanium nitride pro-

vides higher resistance to cratering, but the clearance face

wear is 2 or 3 times greater than with a comparable insert

coated with titanium carbide. Accordingly, in the case of

titanium nitride coatings, the great clearance tace wear

frequently causes failure of the inserts before marked cra-

tering has occurred; hence, the improved cratering resis-

tance could not even be utilized.

It has now been discovered that the coatings of the pre-

sent invention which may consist of different or alter-

nating layers rich in titanium combined with nitrogen and

carbon, respectively, impart a much greater wear-

resistance in cutting tools than a uniform coating compos-

ition of either alone. While the cause for this is not com-

pletely understood, this phenomenon is probably due to

G-12

the fact that each of the layers react differently to the dif-

ferent types of wear. As previously mentioned, the clear-

ance face wear in cutting tools is predominantly due to

abrasion, while the cratering wear is primarily due to dif-

fusion. If part of a tool coated according to this invention

is subjected to one of such types of wear, it is thought that

if the uppermost layer contains a composition with little

resistance to this type of wear, it will be rapidly abraded

and thus expose the next layer having a different compos-

ition which is more likely to be highly resistant to this type

of wear. Moreover, the combination of the different layers

provides surprising and improved results as mentioned

hereinafter.

An important advantage of the combination of layers of

the new coatings is that they have a less pronounced epi-

taxial structure and a finer grain structure, and this re-

duces possibility of cracking and chipping of the layers.

Additional advantages are found when the new coated

tool elements are subjected to interrupted cuts, particu-

larly in milling, for they display greater resistance to cycli-

cal temperature changes and to impact effects.

The structure of the coating layers of the present inven-

tion is not only of significance for cutting tools, but is

equally advantageous for tools used for non-chipping,

shaping operations, e.g., for drawing, swaging, or

forging.

When drawing thick steel wire using drawing dies

coated with titanium carbide alone it has been found that

the titanium carbide is highly resistant to the large tensile

forces exerted on the surface of the drawing die bore;

however, galling of the wire was observed relatively early.

The formation of undesirable grooves in the wire was

found to be due to peeling of the titanium carbide coating.

icine aaa

G-13

When drawing dies were equipped with the combined

titanium carbide-titanium nitride coating of this inven-

tion, there appeared to be a substantial reduction in the

coefficient of friction, for the drawing force was reduced;

consequently the service life was increased compared with

the comparable drawing dies having only a pure titanium

carbide coating. This reduction of the drawing force also

makes it possible to effect larger reductions in a single

pass.

The following examples illustrate the practice of the

invention.

EXAMPLE I

Cemented carbide plates (84% tungsten carbide, 10%

titanium and tantalum carbides with 6% cobalt as a binder

_ metal) or drawing dies (tungsten carbide containing 6%

i cobalt as a binder metal) which are to be coated are first

_ cleaned and then carburized in order to enrich the surface

with carbon. The cemented carbide parts are then an-

nealed at 850° to 1200° C. in a gas mixture consisting of

92.3 volume % of hydrogen, 0.4% titanium tetrachloride,

% methane and 0.3% nitrogen. The gas mixture reacts at

the surface of the cemented carbide part and forms an in-

itial titanium carbonitride deposit with a high carbon con-

tent. After 5 to 20 minutes, the flow of methane is slowly

reduced and that of the nitrogen increased over a period

of 10 to 40 minutes. After this operation, the parts are

coated for 20 to 60 minutes in a gas mixture consisting of

0.5% titanium tetrachloride, 69.5% hydrogen and 30%

nitrogen, which yields a final layer of pure titanium

nitride.

7 .

Pe ee SE Ree EE

2 ADEA RSF Pela Ae adil &

Metaliographic examination of the coatings showed

that, depending upon the process parameters (tempera-

ture, time and gas composition), the coatings comprise a

0.5 to 3 microns thick initial layer of titanium carbonitride

G-14

of high carbon content (80% titanium 18% carbon and 2%

nitrogen) in contact with the carburized cemented carbide

substrate, and the composition of the deposited material

changes gradually to provide a 3 to 20 microns thick sur-

face layer of titanium nitride. Since titanium carbide and

titanium nitride are miscible in any proportions, sharp

boundaries between the individual layers in the coating

cannot be observed.

EXAMPLE II

Cemented carbide tips (71% tungsten carbide, 20%

titanium and tantalum carbides with 9% cobalt) or draw-

ing dies (tungsten carbide containing 9% cobalt binder) to

be coated are first cleaned and may be subsequently car-

burized in order to enrich the surface with carbon. The

parts are then annealed at 850° to 1200° C. in a gas mixture

consisting of 0.4 volume % of titanium tetrachloride, 10%

methane, 0.2% nitrogen and the remainder of hydrogen.

The gas mixture reacts at the surface of the cemented car-

bide parts resulting in the deposition of a titanium car-

bonitride of high carbon content. After 5 to 20 minutes,

the proportion of methane is slowly reduced, while that of

nitrogen is increased during a transition deposition period

of 30 to 60 minutes. The parts are further coated in a gas

mixture consisting of 0.4% by volume of titanium tetra-

chloride, 1.2% methane, 74% hydrogen and 25% nitro-

gen, with the nitrogen content now higher than the

methane content, for another 20 to 60 minutes, with the

result, that a titanium carbonitride layer of high nitrogen

content is now deposited. Atmospheric pressure is em-

ployed in all of the foregoing treatments and in all other

detailed examples herein.

Metallographic examination of the coatings showed

that, depending on the process conditions, each includes

a 0.5 to 3 microns thick, high carbon titanium carbonitride

G-15

initial layer (80% Ti, 19% C and 1% N), and the compo-

sition changes continuously with the content of combined

carbon decreasing and nitrogen increasing until a 3 to 20

microns thick final or surface layer of titanium carbo-

nitride with a high nitrogen content (77.5% Ti, 21.5% N

and 1% C) is reached.

The disposable inserts coated in accordance with

Examples I and II were subjected to machining tests under

different cutting conditions and showed an increase in

service life of approximately 10-30% compared with in-

serts coated with pure titanium nitride only. Because of

the approximately 25 to 50% reduction in clearance face

wear compared with the titanium nitride coated inserts,

superior surface quality was displayed by the workpieces

produced by the inserts of the present invention.

In thick wire drawing with steel wire (e.g., C60) at high

drawing speeds, it was found that the drawing dies

equipped with the combined coating of titanium carbide-

titanium nitride has approximately 2.5 to 3 times longer

service lives than uncoated dies whereas the drawing dies

coated with titanium carbide only had approximately

twice the service life of the uncoated dies.

EXAMPLE Ill

Clean cemented tungsten carbide cutting inserts or

drawing dies with a 6% content of cobalt are heated in an

oven at approximately 850° to 1200° C. in a gas mixture

consisting of 0.6 volume % of titanium tetrachloride, 0.6%

benzene, 60% argon and 39% hydrogen. The gas mixture

reacts at the surface of the cemented carbide parts and

titanium carbide is deposited. After 5 to 20 minutes, the

supply of benzene and argon is discontinued, the charg-

ing of nitrogen is started and the proportions of hydrogen

is increased. All of these adjustments are effected quickly

so that no significant transition period occurs. The coating

G-16

is continued with the gas mixture, which now consists of

0.5% titanium tetrachloride, 69.5% hydrogen and 30%

nitrogen, for another 20 to 60 minutes, with pure titanium

nitride being deposited as the surface layer.

Metallographic study of the coating revealed that de-

pending on the operating parameters, it is made up of a

0.5 to 2 microns thick initial titanium carbide layer con-

tiguous with a 3 to 20 microns thick final layer of titanium

nitride.

When subjected to machining tests and depending on

the cutting conditions, disposable inserts equipped with

this coating display an increase in service life of approxi-

mately 10-20% compared with disposable inserts coated

with pure titanium nitride only.

EXAMPLE IV

Clean cemented carbide inserts (77% tungsten carbide,

10% titanium and tantalum carbides, with 13% cobalt) or

tungsten carbide drawing dies of 12% cobalt content are

heated in a furnace at approximately 850° to 1200° C. ina

gas mixture consisting of titanium tetrachloride, benzene,

argon and some hydrogen. The gas mixture reacts at the

surface of the cemented carbide parts and titanium car-

bide is deposited. After approximately 5 to 15 minutes,

the supply of benzene and argon is slowly diminished,

nitrogen is introduced and the proportions of hydrogen

and nitrogen are slowly increased during an interval of 10

to 30 minutes until benzene is no longer present. After 20

to 60 minutes, the proportion of nitrogen is slowly re-

duced and the charging of benzene and argon resumed in

10 to 30 minutes; finally coating is continued for another 1

to 10 minutes in a mixture now containing only titanium

tetrachloride, hydrogen, argon and benzene. The steady

gas mixtures are the same as in Example 3.

G-17

Metallographic examination of the coating showed that

depending on the chosen conditions, the coat'ag com-

prises a 0.5 to 3 microns thick titanium carbide initial layer

in direct contact with the cemented carbide element, then

the composition changes gradually and continuously with

combined carbon decreasing and nitrogen increasing until

a 3 to 20 microns thick layer of titanium nitride is reached;

and overlying this are further layers of gradually decreas-

ing combined nitrogen and increasing carbon content, and

finally an approximate 0.1 to 0.5 micron thick layer of

titanium carbide at the external surface.

Disposable inserts equipped with these coatings gave

an important service life in milling applications of approxi-

mately 10-30% compared with inserts coated with pure

titanium nitride or pure titanium carbide. Furthermore,

the surface quality of the milled parts was superior to that

of inserts coated with titanium nitride or carbide, because

the inserts with the combined coating has less tendency to

splintering of the cutting edges.

This invention is not restricted to the above-described

embodiments which are intended for purposes of illustra-

tion. It may be used to advantage not only in all types of

tools for machining and for drawing dies but also for other

tools used in chipless forming. In principle, it is possible

by means of the invention to increase the wear resistance

of all parts which are subject to mechanical wear. Accord-

ingly, the present invention should not be construed as

limited in any particulars except as may be stated in the

appended claims or required by the prior art.

I claim:

1. An article of manufacture comprising a hard metal

or sintered carbide substrate and an adherent wear-

resistant multilayer coating, the composition of said coat-

ing varying through its depth or thickness, wherein

G-18

the substrate has carbon disposed in a region adjacent

the surface thereof, said region being formed by

carburizing said substrate to increase its carbon

content,

the coating layer adjacent the carburized surface com-

prises titanium carbide formed by reacting the car-

burized surface with a gaseous mixture comprising

titanium halide, a hydrocarbon gas and hydrogen,

and

the coating layer overlying the titanium carbide layer

comprises titanium nitride formed by reacting the

surface of the titanium carbide layer with a gase-

ous mixture comprising a nitrogen compound,

titanium halide and hydrogen.

2. An article of manufacture as in claim 1 wherein the

substrate is comprised of a cemented carbide.

3. An article of manufacture comprising:

(a) a hard metal or sintered carbide substrate; and

(b) a composite coating on at least one surface of said

substrate, said composite coating including a layer

of titanium carbide and a laver of titanium nitride

overlying and adjacent said layer of titanium

carbide.

4. The article of manufacture defined in claim 3

wherein said layer of titanium carbide is about 0.2 to 20

microns thick and said layer of titanium nitride is about

0.3 to 30 microns thick.

5. An article of manufacture as in claim 3 wherein the

substrate is a cemented carbide.

6. Ina tool having a wear surface comprised of a hard

metal or a sintered carbide, a coating of titanium carbide

covering said wear surface and a coating of titanium nit-

ride covering said coating of titanium carbide.

G-19

7. A tool as in claim 6 wherein the wear surface is

comprised of a cemented carbide.

8. A wear part of a tool having a portion which in use

is exposed to wear through contact with an extraneous

force, said wear part comprising:

(a) acemented carbide substrate;

(b) a layer of a metal carbide overlying the cemented

carbide; and

the metal of the metal carbide being selected from among

chromium, molybdenum, tungsten, titanium, zirconium,

hafnium, vanadium, niobium, and tantalum, and the

metal of the metal nitride being selected from among

chromium, titanium, zirconium, hafnium, vanadium, nio-

dium [sic] and tantalum.

9. A wear part of a tool as in claim 8 wherein the

cemented carbide is selected from the group consisting of

(i) cemented tungsten carbide compositions containing

about 5 to 30% of a binder metal of the iron group, or

(ii) cemented carbides containing from about 60 to 90% of

titanium carbide, with the balance comprising nickel or a

nickel-molybdenum alloy binder.

10. A wear part of a tool as in claim 9 wherein the metal

in the metal nitride and the metal in the metal carbide are

each titanium.

11. A wear part of a tool as in claim 10 wherein the

thicknesses of the individual titanium carbide and titan-

ium nitride layers are from 0.2 to 20 microns and 0.3 to 30

microns respectively.

12. A wear part as in claim 11 in the form of an insert

for a cutting tool.

13. A wear part as in claim 11 in the form of an insert

for a die.

G-20

14. A wear part of'a tool as in claim 9 wherein the metal

in the metal nitride and the metal in the metal carbide are

each at least 50% by weight titanium.

15. An article of manufacture comprising:

(a) A hard metal or sintered carbide substrate; and

(b) a composite coating on at least one surface of said

substrate, said composite coating including a layer

of titanium carbide, a transition layer containing

titanium carbonitrides overlying said layer of titan-

ium carbide and a layer of titanium nitride overly-

ing said transition layer.

16. In a tool having a wear surface comprised of a hard

metal or a sintered carbide, a coating of titanium carbide

covering said wear surface, a transition layer containing

titanium carbonitrides covering said coating of titanium

carbide, and a coating of titanium nitride covering said

transition layer.

17. A wear part of a tool having a portion which in use

is exposed to wear through contact with an extraneous

force, said wear part comprising:

(a) a cemented carbide substrate;

(b) a layer of a metal carbide overlying the cemented

carbide;

carbide; and

(d) a layer of a metal nitride overlying the metal

carbonitride,

the metal of the metal carbide being selected from among

chromium, molybdenum, tungsten, titanium, zirconium,

hafnium, vanadium, niobium and tantalum, the metal of

the metal carbonitride being selected from among chrom-

ium, molybdenum, tungsten, titanium, zirconium, haf-

nium, vanadium, niobium and tantalum, and the metal of

the metal nitride being selected from among chromium,

G-21

titanium, zirconium, hafnium, vanadium, niobium and

tantalum.

18. A wear part of a tool as in claim 17 wherein the

cemented carbide is selected from the group consisting of

(i) cemented tungsten carbide compositions containing

about 5 to 30% of a binder metal of the iron group, or

(ii) cemented carbides containing from about 60 to 90% of

titanium carbide, with the balance comprising nickel or a

nickel-molybdenum alloy binder, and the metal in the

metal carbide, the metal in the metal carbonitride, and the

metal in the metal nitride are each titanium.

19. A wear part of a tool having a portion which in use

is exposed to wear through contact with an extraneous

force, said wear part comprising:

(a) a cemented carbide substrate wherein the

cemented carbide is selected from the group con-

sisting of (i) cemented tungsten carbide composi-

tions containing about 5 to 30% of a binder metal

of the iron group, or (ii) cemented carbides con-

taining from about 60 to 90% of titanium carbide,

with the balance comprising nickel or a_nickel-

molybdenum alloy binder;

(b) a layer of titanium carbide having a thickness of

from 0.2 to 20 microns overlaying the cemented

carbide;

and nitrogen overlaying the titanium carbide; and

(d) a layer of titanium nitride having a thickness of

from 0.3 to 30 microns overlaying the intermediate

layer,

the intermediate layer being carbon-rich, nitrogen-poor

immediately adjacent the titanium carbide layer, and

carbon-poor, nitrogen-rich immediately adjacent the titan-

ium nitride layer.

H-1

APPENDIX H

UNITED STATES PATENT 4,162,338

United States Patent [19] [11] 4,162,338

Schintlmeister [45] Jul. 24, 1979

[54] COATED CEMENTED CARBIDE ELEMENTS

AND THEIR MANUFACTURE

[75] Inventor: Wilfried Schintlmeister, Reutte, Austria

[73] Assignee: Schwarzkopf Development Corporation,

New York, N.Y.

[21] Appl. No.: 875,071 [22] Filed: Feb. 3, 1978

Related U.S. Application Data

[60] Division of Ser. No. 571,695, Apr. 25, 1975, Pat.

No. 4,101,703, which is a continuation of Ser.

No. 329,128, Feb. 2, 1973, abandoned.

[30] Foreign Application Priority Data

Pe. By Pr TRE “PRM 6 onc dvc sn nccrcsencccascas 896/72

OU, ay SOT SIE CR vise ncessadeegietscctesee 6317/72

Lie a & Sere ... BO5D 1/36; BOSD 3/10; BOSD 7/14

EEE ( Ay WMI 2040 denen cunkhucaveae’sennanucs 427/249; 148/6.3;

427/248 A; 427/248 B; 427/248 C; 427/248 E; 427/248 J

[58] Field of Search ............... 427/248 A, 248B, 248C,

427/248], 249, 248 E; 148/63

[56] References Cited

U..S. PATENT DOCUMENTS

Ce Rs iw jy i a 7 errr 427/249

3,656,995 4/1972 Reedy ..... peteakec watoee cul 427/249 X

3,684,585 &/1972 Stroup et al. ........0cs.cces 427/249 X

3,771,976 11/1973 Wakefield ................... 427/249 X

Primary Examiner — James R. Hoffman

Attorney, Agent, or Firm — Morgan, Finnegan, Pine,

Foley & Lee

H-2

(57] ABSTRACT

Cemented carbide elements with working faces bearing a

thin multilayer or stratified coating of nonuniform com-

position of wear-resistant materials exhibit superior wear-

resistance for improved performance and service life

under severe service conditions as in the case of inserts for

cutting tools and wire drawing dies. In one embodiment,

an initial carbon-rich layer of titanium carbide or carbonit-

ride coating material in direct contact with a cemented car-

bide part or insert underlies a middle or intermediate

stratified transition zone made up of a series of parallel

layers or strata of coating material wherein the content of

carbon and nitrogen is not constant but varies with the

stratum or location by depth in that zone with the material

gradually changing to titanium compounds that are pro-

gressively lower in combined carbon content and richer in

nitrogen than in the initial layer until the composition of

the outermost stratum of the transition zone approximates

that of the overlying surface layer of high nitrogen content

(e.g., titanium nitride). The coating is formed by a gas

deposition method wherein changes in the concentration

of gaseous carbon and nitrogen compounds are used to

control the formation of the various layers of different

composition in the layered coating.

24 Claims, No Drawings

COATED CEMENTED CARBIDE ELEMENTS

AND THEIR MANUFACTURE

This is a divisional of application Ser. No. 571,695 filed

Apr. 25, 1975 (now U.S. Pat. No. 4,101,703), which is a

continuation of application Ser. No. 329,128 filed Feb. 2,

1973 now abandoned.

BACKGROUND OF THE INVENTION

1. Field of the Invention

This invention is concerned with protective coatings for

wear-resistant elements intended for severe operating

H-3

conditions and with methods of depositing such coatings

on the wear-resistant substrates or inserts.

2. Prior Art

Cemented carbides, also known as sintered carbides,

are solid and coherent masses made by pressing and sin-

tering a mixture of powders of one or more metallic car-

bides and a much smaller amount of an iron group metal,

such as cobalt, to serve as a binder metal. These carbides

may be used as tools or inserts for machining, milling,

blanking, and drawings operations; also as shaping dies,

spinning dies, and for many other applications. Such tools

are capable of performance beyond the limits of high

speed steels and in many cases are suitable for use on very

hard abrasive materials and on tough alloys. Cemented

carbides are widely used for structural parts and tools sub-

ject to intense wear or other service loads that require high

compressive strength. Suitable carbides for such purposes

include the carbides of tungsten, titanium, tantalum,

columbium, molybdenum, vanadium, chromium, zircon-

ium, and hafnium.

Cemented carbides because of their unique strength

and hardness are frequently subjected to conditions of in-

tense wear. The manner and rate of wear depends very

largely on the use and service conditions of the cemented

carbide part. Wear is frequently caused by mechanical

abrasion which can be greatly intensified by diffusion pro-

cesses when operating at elevated temperatures. Corro-

sion is also a cause in the wear of such parts, for example,

when cemented carbide is used in corrosive media or

when oxidation in the air takes place at elevated tempera-

tures. When cemented carbides are used for shaping of

other parts, either by machining and nonchipping shap-

ing operations or by other processes, the cemented car-

bide parts are not only subjected to heavy mechanical

H-4

stresses but there is frequently also intense heating which

greatly accelerates the wear.

In the machining of long-chipping and short-chipping

materials, as for example, steel or cast iron, respectively,

wear on the cutting edge can occur as a result of cratering

of the rake face and abrasion of the clearance face. Fur-

thermore, the chips can adhere or weld onto the cutting

edge of the part and cause chipping or splintering of the

edge. In interrupted cuts, crack formation may be caused

by rapid temperature changes and splintering can occur

from heavy impacts.

It has now been discovered that wear-resistant stratified

coatings composed of a number of layers of certain differ-

ent compositions provide a number of significantly im-

proved results of an unpredictable nature as described

hereinafter, particularly when these coatings are em-

ployed as protective wear-resistant coatings on cemented

carbide substrates and other hard material bases. The

coated articles have many uses for metal working and

other purposes that involve exposure to mechanical wear

and abrasion.

SUMMARY OF THE INVENTION

The present invention relates to a hard water [sic]-resis-

tant multilayer coating of nonuniform composition in ad-

joining layers and wherein said coating contains at least

two different wear-resistant materials and includes at least

two elements of the group consisting of carbon, nitrogen,

boron and silicon in chemical combinations with titanium.

It also encompasses articles with such coatings on hard

material bases or substrates of the type described herein-

after, and especially cemented carbides substrates having

an adherent coating that contains at least two different

wear-resistant materials and includes carbon and nitrogen

in chemical combination with titanium.

H-5

This invention also encompasses a method of making

the aforesaid articles by deposition onto substrates

from reactive gaseous mixtures under controlled reaction

conditions, including the composition of the gaseous

mixtures.

Other aspects of the invention involve one or more of

such features as the structure of the multilayer (i.e., more

than one layer) article and the thickness and disposition or

location of its layers, especially carbon-rich layers com-

: posed of material of a substantial or high carbon content

3 and a lower nitrogen content, as well as nitrogen-rich

layers of material containing less carbon than nitrogen.

| DESCRIPTION OF EMBODIMENTS

: OF THE INVENTION

The coated articles of the invention may employ as a

base or substrate any hard solid material to which the

coatings will adhere. These hard materials are generally

hard metals or alloys thereof, including metal-like alloys,

compositions or materials. Thus, the substrates may be

cermets and like products of powder metallurgy, as well

as hard metal carbides and/or nitrides, etc. and alloys,

such as cobalt-chromium-tungsten, superalloys and other

alloys employed in high speed cutting tools. In general,

sintered materials are preferred as substrates, especially

the wear-resistant cemented carbides. Among the many

suitable base or substrate materials, cemented tungsten

carbide compositions containing about 5-30% of a binder

metal of the iron group (cobalt, iron, and/or nickel) have

been used with excellent results, and up to a total of 40%

of the tungsten carbide content may be replaced by one or

more other carbides, including those of titanium, tan-

talum, niobium, vanadium or chromium. Cemented car-

bides containing from 60-90% titanium carbide with the

balance being nickel or a nickel-molybdenum alloy binder

H-6

are also used and up to half of this titanium carbide may

be replaced by titanium nitride.

A coating of the present invention is characterized by a

multilayer structure, often so thin that the total thickness

of the coating is less than 10 or 20 microns, as well as the

fact that its chemical composition is not uniform or homo-

geneous although its physical appearance is typically

homogeneous with no strata visible even under a micro-

scope. These coatings are made up of two or more layers,

and at least two of the layers are of different composition

in respect to having either different chemical components

or different proportions of the same components or ele-

ments. The principal constituents of the coatings are metal

compounds of at least two nonmetals of the group consist-

ing of carbon, nitrogen, boron and silicon, of which car-

bon and nitrogen are generally preferred. But also com-

pounds of nonmetals, such as boron carbide, boron

nitride and silicon carbide, can be used. Titanium may be

utilized as the sole metallic component of such com-

pounds; also it is contemplated that it may be associated

with considerable amounts of compounds of one or more

other metals in Groups Ill, IV, V and VI of the Periodic

Table of Elernents that have atomic numbers in the range

of 21 to 74. Thus, one may also employ compounds of one

or more of such metals as chromium, molybdenum, tung-

sten, scandium, yttrium, lanthanum, zirconium, hafnium,

vanadium, niobium and tantalum, usually in lesser total

amount so that the titanium constitutes a major portion or

more that [sic, than] 50% of the total weight of the chemi-

cally combined metals in the coatings. In some cases it

may be also useful to substitute more than 50% of the

titanium. If coatings having particularly great ductility are

required, then additions of iron, cobalt, or nickel, or

molybdenum, or mixtures thereof up to about 20% of the

total coating weight are advantageous. While the specific

description hereinafter is directed entirely at coatings

H-7

composed of titanium compounds and their deposition

for the purposes of a full and detailed disclosure of mate-

rials that have provided greatly improved results, such

description is generally applicable to coatings which also

contain the compounds of the aforementioned other

metals and nonmetals.

In respect to the contents of nonmetals in the titanium

compounds in the coatings of this invention, a nitrogen or

carbon content of more than 14% by weight is regarded as

a high nitrogen or high carbon content. Amounts of these

elements below 6% are considered low contents, and the

intermediate range of 6-14% may be called an average or

medium content of carbon or nitrogen. On the other

hand, the expressions “carbon-rich” and “nitrogen-rich”

herein are intended to denote coating deposits wherein

carbon or nitrogen, respectively, constitutes a major pro-

portion of the total weight of the combined nonmetals in

the particular deposits and also to denote gaseous mix-

tures containing enough carbon-containing or nitrogen-

containing gas material to produce such solid deposits. In

general, this means that a solid deposit has a carbon or

nitrogen concentration, respectively, that is either a high

content or in the upper half of the intermediate content

range, say above 10%.

In general, the chemical compositions of each of the

various layers or strata are substantially uniform in their

planar dimensions, that is across the entire width and

length of their areas, by reason of the manner of their

deposition from the vapor state onto solid bases or sub-

strates as described hereinafter; instead, the desired and

significant differences in composition occur through the

depth or thickness of the coating, and the composition of

one principal layer is different from the adjoining over-

lying or underlying layer; and this difference in composi-

tion may be slight and progressive in gradations through a

H-8

transition zone having many ultra-thin strata in some in-

stances or a more pronounced change in other cases.

The arrangement, thickness and composition of the in-

dividual layers will depend upon the surface conditions of

the wear part. For instance, these may consist of several

different layers, namely pure titanium carbide, titanium

carbonitrides of medium to high carbon content, pure ti-

tanium nitride or titanium carbonitrides with a high nitro-

gen content. In some cases, it may be advantageous to

have five or more layers while in other cases, two princi-

pal layers may be sufficient, for example, a carbon-rich

layer and a nitrogen-rich layer of titanium compounds.

The individual layers can be either contiguous or there

may be an intermediate stratified transition zone wherein

the imtermediate layers or strata have variable carbon and

nitrogen contents; that is, the combined carbon content is

decreasing and the combined nitrogen content increasing

in one direction through the thickness of that zone (e.g.,

away from the substrate and toward the exterior surface of

the composite coating), and the carbon is increasing and

nitrogen decreasing in the other direction (e.g., toward

the substrate). Such changes in composition may be es-

sentially continuous or very gradual in such a transition

zone wherein the composition is changed from a compos-

ition similar to that of a principal layer on one side of the

zone to a composition similar to that of a different princi-

pal layer on the other side of the zone. On the other hand,

the change in composition may be very marked as at the

single interface of two contiguous carbon-rich and

nitrogen-rich coating layers.

The thickness of a transitional carbonitride layer or zone

may be about 0.1 to 10 microns. The individual or princi-

pal layers of titanium nitride and titanium carbonitride

having medium to high nitrogen content, are usually pre-

sent in thickness of about 0.3 to 30 microns. The indi-

H-9

vidual or principal layers of titanium carbide and titanium

carbonitride having a low nitrogen content are usually

present in thicknesses of 0.2 to 20 microns.

In many cases, it has been found advantageous to have

a layer structure in which the layer or stratum with the

maximum carbon content is located close to the base or

substrate surface and remote from the external surface of

the coating, whereas the layer or stratum of maximum nit-

rogen content is located close to the surface of the coating,

and remote from the substrate. For example, the layer

near the base may consist of titanium carbide or a titanium

carbonitride and the layer near the surface of the coating

of titanium nitride. The coating can be formed in such a

manner that a pure titanium carbide layer is joined to a

pure titanium nitride layer by means of a series of car-

bonitride layers in a transition zone that provides a

gradual and continuous change in composition from car-

bide to nitride.

The formation of the coating layers in accordance with

the present invention can be most simply carried out by

use of a gas phase deposition. However, other well

known methods such as plasma spraying, sputtering, or

pack cementation have also been found useful.

Gas phase deposition has the particular advantage that

the layer composition can be readily controlled by regula-

tion of the composition, the pressure and temperature of

the gas phase. The composition of the gas phase can easity

be adjusted by addition of suitable gaseous compounds.

Furthermore, the mixing ratio of the gas may also

be varied during the deposition process in a simple man-

ner which causes a corresponding change in the deposited

coating composition. The cemented carbide parts may be

cleaned by conventional techniques prior to applying the

coating material. Surface carburization of the cemented

carbide substrates may also be carried out where the car-

H-10

bon content of the cemented carbide is too low for effec-

tive coating with the hard materials of this invention.

Atmospheric pressure may be employed for the gas

deposition of all the coating materials as in the examples

that follow, but it is also contemplated that it may be de-

sirable to employ higher or lower pressures in some in-

stances. For example, it may be advantageous to employ

subatmospheric pressures for depositing coatings of

titanium carbide, and it is also contemplated that titanium

nitride deposits may be formed with a gaseous mixture at

superatmospheric pressures. Suitable operating tempera-

tures for the preferred titanium compounds of carbon and

nitrogen are in the 700° to 1200° C. range.

The gas mixture is varied depending upon the compos-

ition of the layer desired to be deposited. Generally, in

order to form a pure titanium nitride layer, the gas mix-

ture comprises a titanium halide, for example, titanium

tetrachloride; nitrogen or gaseous nitrogen compounds

such as ammonia, and similar nitrogen compounds. The

gas mixture may also contain inert gases, or hydrogen, or

a mixture thereof.

In order to form titanium carbonitride layers, a gas mix-

ture preferably comprises a titanium halide, a hydro-

carbon gas, and nitrogen or a gaseous nitrogen com-

pound, such as, aniline, pyridine, aliphatic and aromatic

amines and similar organic nitrogen compounds. The gas

mixture may also contain inert gases, or hydrogen, or a

mixture thereof.

In order to form a pure titanium carbide layer, the gas

mixture may comprise a titanium halide, and hydrocarbon

gas. The gas mixture may also contain inert gases, or

hydrogen, or a mixture thereof. Other sources of carbon

for the process are the vapors of organic halides of either

the aliphatic or aromatic type.

H-11

According to the present invention, there is provided a

new coating for cemented carbide parts which reduces ab-

rasion and cratering of the surfaces of the cemented car-

bide tool inserts to a surprising and outstanding degree.

This is in marked contrast with results that have been ob-

tained with tool inserts bearing a coating of uniform com-

position. For instance, special cutting disposable inserts

and tips made of cemented carbides for machining parts

have recently been developed, and these have a wear-

resistant surface coating of titanium carbide. Such dispos-

able cutting inserts, e.g., coated with titanium carbide,

generally have had two to three times the service life of

similar uncoated disposable tips when used under com-

parable machining conditions. However, their service life

is limited by the cratering type of wear although the clear-

ance face wear is relatively slight.

It has been proposed in the U.S. Pat. No. 3,717,496 to

coat cemented carbide inserts with titanium nitride or

titanium carbonitrides in order to reduce wear. In practice

it was found that titanium carbide produces better protec-

tion for the clearance face, whereas titanium nitride pro-

vides higher resistance to cratering, but the clearance face

wear is 2 or 3 times greater than with a comparable insert

coated with titanium carbide. Accordingly, in the case of

titanium nitride coatings, the great clearance face wear

frequently causes failure of the inserts before marked cra-

tering has occurred; hence, the improved cratering resis-

tance could not even be utilized.

It has now been discovered that the coatings of the pre-

sent invention which may consist of different or alter-

nating layers rich in titanium combined with nitrogen and

carbon, respectively, impart a much greater wear-

resistance in cutting tools than a uniform coating compos-

ition of either alone. While the cause for this is not com-

pletely understood, this phenomenon is probably due to

H-12

the fact that each of the layers react differently to the dif-

ferent types of wear. As previously mentioned, the clear-

ance face wear in cutting tools is predominantly due to

abrasion, while the cratering wear is primarily due to dif-

fusion. If part of a tool coated according to this invention

is subjected to one of such types of wear, it is thought that

if the uppermost layer contains a composition with little

resistance to this type of wear, it will be rapidly abraded

and thus expose the next layer having a different compos-

ition which is more likely to be highly resistant to this type

of wear. Moreover, the combination of the different layers

provides surprising and improved results as mentioned

hereinafter.

An important advantage of the combination of layers of

the new coatings is that they have a less pronounced epi-

taxial structure and a finer grain structure, and this re-

duces possibility of cracking and chipping of the layers.

Additional advantages are found when the new coated

tool elements are subjected to interrupted cuts, particu-

larly in milling, for they display greater resistance to cycli-

cal temperature changes and to impact effects.

The structure of the coating layers of the present inven-

tion is not only of significance for cutting tools, but is

equally advantageous for tools used for non-chipping,

shaping operations, e.g., for drawing, swaging, or

forging.

When drawing thick steel wire using drawing dies

coated with titanium carbide alone it has been found that

the titanium carbide is highly resistant to the large tensile

forces exerted on the surface of the drawing die bore;

however, galling of the wire was observed relatively early.

The formation of undesirable grooves in the wire was

found to be due to peeling of the titanium carbide coating.

H-13

When drawing dies were equipped with the combined

titanium carbide-titanium [sic, titanium nitride] coating of

this invention, there appeared to be a substantial reduc-

tion in the coefficient of friction, for the drawing force was

rendered [sic]; consequently the service life was increased

compared with the comparable drawing dies having only

a pure titanium carbide coating. This reduction of the

drawing force also makes it possible to effect larger reduc-

tions in a single pass.

The following examples illustrate the practice of the

invention.

EXAMPLE |

Cemented carbide plates (84% tungsten carbide, 10%

titanium and tantalum carbides with 6% cobalt as a binder

metal) or drawing dies (tungsten carbide containing 6%

cobalt as a binder metal) which are to be coated are first

cleaned and then carburized in order to enrich the surface

with carbon. The cemented carbide parts are then an-

nealed at 850° to 1200° C. in a gas mixture consisting of

92.3 volume % of hydrogen, 0.4% titanium tetrachloride,

7% methane and 0.3% nitrogen. The gas mixture reacts at

the surface of the cemented carbide part and forms an in-

itial titanium carbonitride deposit with a high carbon con-

tent. After 5 to 20 minutes, the flow of methane is slowly

reduced and that of the nitrogen increased over a period

of 10 to 40 minutes. After this operation, the parts are

coated for 20 to 60 minutes in a gas mixture consisting of

0.5% titanium tetrachloride, 69.5% hydrogen and 30%

nitrogen, which yields a final layer of pure titanium

nitride.

Metallographic examination of the coatings showed

that, depending upon the process parameters (tempera-

ture, time and gas composition), the coatings comprise a

0.5 to 3 microns thick initial layer of titanium carbonitride

H-14

of high carbon content (80% titanium, 18% carbon and

2% nitrogen) in contact with the carburized cemented car-

bide substrate, and the composition of the deposited

material changes gradually to provide a 3 to 20 microns

thick surface layer of titanium nitride. Since titanium car-

bide and titanium nitride are miscible in any proportions,

sharp boundaries between the individual layers in the

coating cannot be observed.

EXAMPLE II

Cemented carbide tips (71% tungsten carbide, 20%

titanium and tantalum carbides with 9% cobalt) or draw-

ing dies (tungsten carbide containing 9% cobalt binder) to

be coated are first cleaned and may be subsequently car-

burized in order to enrich the surface with carbon. The

parts are then annealed at 850° to 1200° C. in a gas mixture

consisting of 0.4 volume % of titanium tetrachloride, 10%

methane, 0.2% nitrogen and the remainder of hydrogen.

The gas mixture reacts at the surface of the cemented car-

bide parts resulting in the deposition of a titanium car-

bonitride of high carbon content. After 5 to 20 minutes,

the proportion of methane is slowly reduced, while that of

nitrogen is increased during a transition deposition period

of 30 to 60 minutes. The parts are further coated in a gas

mixture consisting of 0.4% by volume of titanium tetra-

chloride, 1.2% methane, 74% hydrogen and 25% nitro-

gen, with the nitrogen content now higher than the

methane content, for another 20 to 60 minutes, with the

result, that a titanium carbonitride layer of high nitrogen

content is now deposited. Atmospheric pressure is em-

ployed in all of the foregoing treatments and in all other

detailed examples herein.

Metallographic examination of the coatings showed

that, depending on the process conditions, each includes

a 0.5 to 3 microns thick, high carbon titanium carbonitride

H-15

initial layer (80% Ti, 19% C and 1% N), and the compo-

sition changes continuously with the content of combined

carbon decreasing and nitrogen increasing until a 3 to 20

microns thick final or surface layer of titanium carbo-

nitride with a high nitrogen content (77.5% Ti, 21.5% N

and 1% C) is reached.

The disposable inserts coated in accordance with

Examples I and II were subjected to machining tests under

different cutting conditions and showed an increase in

service life of approximately 10-30% compared with in-

serts coated with pure titanium nitride only. Because of

the approximately 25 to 50% reduction in clearance face

wear compared with the titanium nitride coated inserts,

superior surface quality was displayed by the workpiece

produced by the inserts of the present invention.

In thick wire drawing with steel wire (e.g., C60) at high

drawing speeds, it was found that the drawing dies equip-

ped with the combined coating of titanium carbide-

titanium nitride has approximately 2.5 to 3 times longer

service lives than uncoated dies whereas the drawing dies

coated with titanium carbide only had approximately

twice the service life of the uncoated dies.

EXAMPLE III

Clean cemented tungsten carbide cutting inserts or

drawing dies with a 6% content of cobalt are heated in an

oven at approximately 850° to 1200° C. in a gas mixture

consisting of 0.6 volume % of titanium tetrachloride, 0.6%

benzene, 60% argon and 39% hydrogen. The gas mixture

reacts at the surface of the cemented carbide parts and

titanium carbide is deposited. After 5 to 20 minutes, the

supply of benzene and argon is discontinued, the charg-

ing of nitrogen is started and the proportions of hydrogen

is increased. All of these adjustments are effected quickly

so that no significant transition period occurs. The coating

H-16

is continued with the gas mixture, which now consists of

0.5% titanium tetrachloride, 69.5% hydrogen and 30%

nitrogen, for another 20 to 60 minutes, with pure titanium

nitride being deposited as the surface layer.

Metallographic study of the coating revealed that de-

pending on the operating parameters, it is made up of.a

0.5 to 2 microns thick initial titanium carbide layer con-

tiguous with a 3 to 20 microns thick final layer of titanium

nitride.

When subjected to machining tests and depending on

the cutting conditions, disposable inserts equipped with

this coating display an increase in service life of approxi-

mately 10-20% compared with disposable inserts coated

with pure titanium nitride only.

EXAMPLE IV

Clean cemented carbide inserts (77% tungsten carbide,

10% titanium and tantalum carbides, with 13% cobalt) or

tungsten carbide drawing dies of 12% cobalt content are

heated in a furnace at approximately 850° to 1200° C. ina

gas mixture consisting of titanium tetrachloride, benzene,

argon and some hydrogen. The gas mixture reacts at the

surface of the cemented carbide parts and titanium car-

bide is deposited. After approximately 5 to 15 minutes,

the supply of benzene and argon is slowly diminished,

nitrogen is introduced and the proportions of hydrogen

and nitrogen are slowly increased during an interval of 10

to 30 minutes until benzene is no longer present. After 20

to 60 minutes, the proportion of nitrogen is slowly re-

duced and the charging of benzene and argon resumed in

10 to 30 minutes; finaliy coating is continued for another 1

to 10 minutes in a mixture now containing only titanium

tetrachloride, hydrogen, argon and benzene. The steady

gas mixtures are the

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