Appendix — Chicago Metallic Manufacturing Co. v. Ekco Products Co.

slp i aan

. r : : ; , ‘ _

ras APPENDIX A

In the

Un irep States Court or APPEALS .

‘ For the Seventh Cireuit

No. 13770 — Seprempen Term, 1962 Apri Session, 1963

Tur, Exco Provvcrs Company, ) ,

- Inc., Appeal from the:

Plalntify Appe lant, - United States Dis

\ trict Court for t

: ns Pb Northern District

: Culc AGO Me TALLIC MANUFACTURING of Hlinois, Eastern.

C sb Divi isiONn.

fe ndant-A ppellee. J

—

August 16, 1963.

Be fore Derry, Ksocu, and Kitey, Circuit Judges.

Kwoc il, Circuit Judac. Plaintitf, The Ekeo Products

Company, Inc.y (hereinafter ciilled “Ekco”) brought this

action to recover damages and injunctive relief for alleged -

infringement by defendant, Chicago Metallic Manufactui- .

ing Company | (hereinafter, called “Chicago Metallic”), of

four United States patents owned by piaintiff. " These

' patents are: :

4a) No. 2,687,994, dated August 31, 1954,° entitled |

“Method of Forming an Oxide Coating on Tin.”

- (b) Noe. 2,724,526, dated November 22, 1955, entitled

“Tin Plate Baking Pan.” a

(c) No. 2,773,817, dated December 11, 1956, entitled

“Composite Metal and Articles Thereof.” 7° 7 >

‘(d) No. 2,801,604, dated — 6, 1957, entitled

. “Processed Drawn Implement.” * -

They will be referred to hereinafter respectively as the

994, ae 817 and 604 patents. +

se

— 2a

~ Defendant denied infringement of the first three patents

and pleaded invalidity of all four. After trial by the Dis-

trict Court without a jury, judgment was rendered for de-

fendant, jrolding ali the patents invatid and the first three

not infringed.- This appeal followed.

The history of commercial bread baking discloses an

accepted practice of many years known as “burning in”

or “burning out” whereby the highly reflective tin-plated

steel-of the pan is darkened so that it will absorb sufficient

heat for proper baking. -"Phis practice Was not uniformly

successful and entitled loss of time and labor, tying up

equipment in non- productive work,

During the 1940's plaintiff continued its search for a

solution. Dr. John J. Russell, one of the patentees in each

of the patents in suit, was plaintiff’s chief chemist during

the period from 1945 to 1947, when he became plaintiff’s

Director of Research, His notes on the events leading fo

the subject matter of the basie ‘patent.in suit. 994, are

part of the record before us. Plaintiff had tried various

methods and had achieved some sucesss, but only by the

expensive method of hand rubbing the tin-plate te roughen

its surface prior to _passing the pans through the ovens.

Chicago Metallic contends that it did solve the problem

An. 1947 “with its “No-Burn” past which it asserts it sold -

~ to the fullest extent of its production eapacity until the

introduction of glazing about the’end of 1949.

q . . *. FA < . ° Fa s

Chicago Metallie’s process consisted, of .painting the

outer surfaces of the pan and then heating it for one to

two hours. While this counting did not permanently darken _

the pan, Chicago Metallic asserts it permitted immediate

use of the pan while gradual “burein” conditioning oe-

eurred as the painted coating slowly wore off. Chicago

_Metallie argues that plaintiff's own “Redi-Bake” pan“in--

fringed Chicago Metallic’s patented “No-Burn” pans.

Late in the 1940’s the use of a release enating or “glaz-

ing” replaced the traditional! grensé means of insuring that

the baked loaf would readily separate from the pan. The

plastic “glaze” must be replaced from time to time. . The

chemical used to strip awgy old glaze also stripped away

the “No-Burn”. coating.

§in February 7, 1950, John Crombie, a representative of

Tnited States Steel. visited both Ekeo and ~* Chieugo

Metallic to show their personnel a sample of. :anodically

. *

: —da—

oxidized tin-piate, and certain literature (of British publi-

ecation)® of the International Tin Research Council. Mr.

Crombie did not testify at the trial, but we have his

deposition’ which is a part of the evidence adduced at the

“trial by Chicago Metallic. Mr. Crombie did not himself

make, direct, or witness the making of the sample. . He.

had referred the United States Steel Research Laboratory

to the publications. Mr. Crombie described the sample as.

“not exactly black, it was kind of dark grav and it was

very close to the appearance of a bread pan when it was

burned out im the old fashioned way of doing it.”

_ Mr. Crombie made no suggestions for -further ‘heating.

He stated that British patents were pending. He took

- both the sample and the literature-away with him. -

The scientific world had known about anodic oxidation

of tin and other metals, but nobody evidently had used

the process to pre-darken baking pans.

4

.

Aecording to Dr: Russell's contemporancous* notes ‘the

literature exhibited by Mr. Crombie wasrthe work ‘called

in this litigation “the Kerr-Macnaughtan paper.” - The

British Vatent No. 486,752 carries Serial No. 3756 of 1936,

the same serial number referred to in the Kerr-Macnaugh-

tan paper which dis¢losed the procedure mentioned by Mr.

Crombic. All this material was before the’ Patent Office

When the patents in suit were issued. This fact ‘Supports

the presumption ‘of validity normally arising from grant of

a patent by the Patent Office.- Title 35, U.S.C. ¢ 282+

Hazeltine Research.v. Dage Electric Co.; Inc., 7 Cir. 1959.

271 F. 2d 218, 224; Amp, Inc. v. Vaco Products Co., 7 Cir..

1960, 280 F. 2d 518, 521, cert. den. 364 U.S. 921.

The sample which Mr. Crombie exhibited is described

in Dr. Russell’s notes as black. In the course of subse-

quent, experiments, Dr. Russell observed that heating a

Sheet of tin-plate darkened by the anoilic procest of Kerr-

Maenaughton at a temperature close to the melting: point

of tin changed the black film thereby acquired (which. the

British Potent No. 486.752 stated “eannot) be dyed or

-Otherwise changed in color’) into’ an olive- green, The

Kerr-MacNaughtan paper entitled “The Production of.

Black Anodic Coatings on Tin and Tin Alloys” discusses

an intense blue-black film on tin. articles adaptable for

decorative purposes. The disclosure made by Mr. Crombie

is the disclosure of this Kerr-Maenaughtan paper. British

Patent 486,752. also discloses a process for obtaining a

a

. es

black or ‘blue-black film which, as previously indicated,

“cannot be dved or otherwise changed in color.” Nobody,

suggests that the blue-black film of Ker r-Maciiaughtan is”

a satisfactory coating for baking pans. In contrast to the

view film which can be seratched and which wears off

in service, the converted olive green surface obtained by

ikeo’s heating step is permanent, adherent, uniform, highly

abrasion resistaut, and possesses the desired heat-absorb-

ing characteristics of a bresid baking pan which needs no

“burning. in.” Ekco’ thus developed its sa process

deséribed by Ekco as:

The basie pt ittent in suit covers a simple two-step

process. The first step is the forming of a bl«ckish

anodic oxide coating on a-tin article, and was ad-

tmittedly old. This blackish coating proved to be

highly unstablo and was never used commercially gn

baked pans. e.

The second step of Ekeo's process is the converting.

of this unstable blackish coating by heating under. pre-

. scribed. conditions to a desirably stable, tenacious,

highly-resistant coating. The remarkable improve:

ment im the characteristics of the coating was ac-

companied by a change in the color from blackish to

olive-green.

Ekeo began comme re ‘ial’ use of its new process wader the

trade name “Bake-Prep” early in 1950 (about March)

with prompt and widespread acceptance and commercial

suecess, which must be attributed to the process itself .

as. there is no eyidence that any unusual advertising or

other means was used>———~

Chicago Metallic argues (and the District Court agreed)

that the long-felt want fot pans ‘which could be used

without preliminary “burning-i in” allegedly satisfied by

Ekeo’s product. was in fact already satisfied by Chicago

Metallic’s “No-Burn” pans; that 4 short-durationswant

for pre-darkened pans which could successfully ‘with-

stand stripping of glaze arose in 1949 and was shortly

satisfied by John Crombie’s concept which he passed on to

the entire haking- pan industry. .

We are not requifed to accept the tubing of the Dis-

trict Court if. they. are unsupported by the evidence or *

clearly erroneous. Federal Rules of Civil - Procedure,

_ Rule 92(a). Copease Mfg. Co. v. American Photocopy

‘

T° « . oy

Equipment Co., 7 Cir., 1961, Trehrg den. 1962, 298 F. 2d

772, 781.

Experienced, expept baker witnesses, for both parties,

agreed that Ekco’s “Bake-Prep” (or the accused device

of Chicago Metalliv) provided the solution to a long felt

“ want in.commercial baking. Richard J. Livingstone, Chi-

cago Metallie’s expert baker witness, deséribed cleaning -

pans during the pre-glaze days when grease had to be

used. He testified that bakers were looking for a deter-

ent which would take the grease off without taking fhe

Metal and the “burned-in” film off as well. In 1960, af ter

this suit had been filed, Chicago Metallic experimented

with another painted coating which proved a failure and

— .

was Withdrawn from the market.

The presumption of validity arising from grant of the

patent. is strengthened by a shdéwing that the invention

filled a long felt want. O’Brien v. O'Brien. 7 Cir., 1953,

202 F. 2d 254, 256. -

In September, 1950, Chicago ‘Metallic announced jts

accused device “Sure Bake” pans, which are made by

a two-st¢p process charged to infringe Ekeo's patents ju

suit. “Chicago Metallie’s ‘position is that Dr. Russell's

research, * - - - .

° * * on which the patents in suit ate based, consisted

entirely of (a) procedures taught to Russell by John

Crombie, plus th) a heating step, undertaken for con.

ventional reasons, that produced jhe conventional re-

sult taught by prior literature. a

Chicago Metallic Pavstes Ekeo’s edrlier thanufacture of

the new pans to two factors: (1) Ekeoehiad entered the

(2) Kkeo was undér notice from Chicago Metallic that its

“Redi-Bake” pans infringed Chicago Metailie’s “No

surn” patent. ° ae ¥

Chicago Metallic did not begin glazing its pans until Tate

in May, 1950; hence Chicago Metallic asserts it kad no

‘need to-make its own adaptation of the procedures sug-

gested by Mr. Crombie until if, in its turn, ‘encountercd ;

-glazmg problems.

Chicago Metallic contends, and ‘the District Judge so

‘found, that the claims of ihe basic patent 994 were ant -.

; - — 6a —

cipated by the Crombie-Kerr-M henanghtan prior art, and

_ that the heating step lacked invention. It is ‘asserted that !

Ekeo’s second step wae a mere conventional step, an

inevitable corollary of Mr. Crombie’s basic concept, and

‘that it was a matter of mere common sense to heat a bak-

ing pan, particularly in the light of prior knowledge ,

respecting heating oxide-coatings to stabilize them.

The ‘second step does now seem simple, natural and ob:

vious, but its apparent simplicity should not’ blind us to

its me rits. Shumaker:v. Gem Mfq. Co., 7 Cir. 1962, 311

F. 2d 272, 275-6. In June, 1950,-it was evidently not ob-

wious. When. Mr. Crombie called on Ekeo he was aceom-

panied by Mr. J. M. Wood, also of United States Steel,

who was present and saw the exhibit of the biack sample |

shown to Ekeo. Yet even after Ekeo’s pan hiad been in-:

troduced Commercially, a me morandum drawn by Mr. Wood

_ on June 6, 1950, reads:

We have subsequently learned that Ekeo has de-

veloped a rapid oxidizing technique -which they are

currently using on bread pans prior to glazing. Since —

_Ekeo is attempting to patent their process, -they acve

secretive concerning the. details; however, we have

seen the finished pans whieh carry a very uniform tan

appearance. Dr. Russell has. promised to aeqnaint

us with all details regarding this treatine nt when

conditions are suitable.

Tho same day. in another memorandum, Mr. Wood sas

of Chicago Metallic, whieh also knew of the Crombie-Kerr-

Macnaughtan disclosures, that: t

* * * this customer had expressed no interest in the’

Kerr-Macnaughton treatment until just recently. They

*exhibited a pan treated with Ekco’s new process but.

were not aware of the details as to how the color

was obtained.

Evidently, Chicago Metallic was interested in the process

but was. unable to deduce it’ solely with the aid of ‘the-)

prior art and the generally known scientific principles to -

which it now invites our attention. The presumption of

validity ofa patent is strengthened by the unsuccessful ,

effirts of others laboring i in the same field. Charles Peckat —

Mfg. Co. ¥. Jacobs, 7 Cir., 1949, 178 F. 2d 794, 801, and

cases therein cited.

— 7a—

It is also significant that in advertising in Bakers Week-

ly, published as late,as May 29, 1950, Chicago Metallie

werned against use of chemically treated pans, stating that

chemical treatment. resulted in-a_ finish which was not

as wear resistant as the true oxide gradually produced

by oven heat. Chicago Metallic’s skepticism supports

Ekeo's contention that its process was not obvious. Mek’er

v. Graton & Knight Co., 4 Cir. 1937, 87 B. 24 262, 264.

The wide-spread suceess of the new process is not

questioned. After adopting it. Chieago Metallie diseon

tinued « (her methods of pretreating bright tin-plate bak-

ing pans.

Our attention is invited to the Kerr paper “ Anodie Films .

on Tin in Sodium [Hydroxide Solutions (1938)" which was

not before the Patent fies when the patents in snit were

issued. We have: studied this doenment. which disensses

electroplating or Teetroadeposition of tin, and which re-

ports on vorious tests made. It deals principally with

yellow and brown films formed durin electroplating. |

We cannot agree that it ix closer tothe hasie 994 patent

than the file wrapper references ee were before the

Patent Office, There is no suggestidef even that it is

desirable to form a heat-absocbing tin oxide coating on

tin articles, The Kerr artiele talks of removing the vellow

. or brown film from the tin by cathodie treatment.

* There was a long felt need. Others int the field had

sought to fill it. The- first =} p—anodic oxidation to, form

a black filin-was known. ‘Ptese yas no prior ert sug.

gestion of the second step—hyating the tin coated with

anodic film to convert the anodig¢ oxide film to green oxide

of tin with all it< superier features of stability, tenacity -

and high resistance, Ekco'’s invention met prompt recog.

nition and adoption as a solution. The patent is not vague

and indefinite, as charged by Chicago Metallic. The. heat-

ing step is defined in’ =pecific degrees, The length of time

is defined by. the color charge. Anyone skilled in the art

may follow the process with suecessful results. Binks Mfq.

Co. v. Ranshurg EloctroCoating Corp, T Cir. 1960, 281

FP. 2d 252. 256-7, cert. dismissed 366 U.S. 211. We must

conclude thaf the Distriet Court's findings of invalidity of

the basiv patent 994 were clearly erroneous,

With respect to infringement of the basie patent 994,

Chicago Metallic argues that its teaching is limited to

anodic oxidation of tin articles in acid electrolytic baths

~eate that normal burn-in procedures increase th

ox ne :

or in mildly alkaline electrolytic baths with pH not ex-

‘ereding a value in the neighborhood of &.. The District

Court found that Chicago Metallie’s anodic oxidation was

conducted in a highly alkaline bath of pH 10, 100. times

as alkaline asthe most alkaline bath sai in the basic

994 patent; that major ingredients of Chicago Metallie’s .

alkaline bath were sodium, hydroxide and sodium dichrom-

ate, neither. of which was mentioned in the patents in suit.

The District Court therefore concluded that Chicago

Metalije had not infringed the basie’ patent 994.

However, Ekeo never contended that formation of a

black’ anodie coating was a novel featuré; nor is this a

case of file wrapper estoppel. Nevertheless, the basir

patent 994 does state that successful results have been

obtained tinder alkaline conditions. We may not dispose

of the question of infringement merely by comparing the

commercial processes of the respective parties, particularly

with respect to the first step. Chicago Metallic eannot avoid

infringement by varving the details of the. apparatus

+ by which it. makes use of the disclosure in the patent.

Smith v. Snow (1985), 294 U.S. 1,.20., We anust consider

the dise ‘losure of. the patent -in suit. The: reeord does

clearly indieate that Chicago Mefallie follows Ekco’s

nevel second step, heating the black anodie oxide to con--

vert it.to green oxide of tine ~

The District Court -heid: the 526 patent invalid on find-

ings of fact that (1) the elaims “read” on a well burned

_in baking pan of the prior art in the same manner and

sense as on a baking pan oxidized by the anodie process;

(2) that the numerical limitations in the claims relative to

laver thickness do not correspond to any distinctive result

* function—all that is required being a layer of free tin.

“thie k enough to provide effective resistance to corrosion ;

nd (3) the patent was granted only after the Patent

(fice examiners had been assured, possibly in good faith,

but in error, that. oxide film on burned-in pans of the prior

art was not olive green in color’and of “very poor ad.

herence.”

tur search of the record does not reveal suppor

these findings. On the contrary fhe testimony di

thick-

ness of the. outer layer of darkened tin oxiae and the

‘inner layer of iron-tin alloy. at the expense of the inter-

». iate layer of free metallic tin which is necessary to

-

-

—%9— #

resist corrosion, and: that Ekeo’s basic two-step process"

.

provides a relatively thick outer layer while restricting

the growth of fhe inner layer. This structural combina-

tion (claim 2 of the 526 patent) is not revealed, in the prior

art.

~

The original thickness of the iron-tin alloy fayver in

Chicago Metallic’s accused pans is greater than that de- ,

seribed in the 526 patent, but that ‘thickness is controlled

by the steel mill from: which Chicago Metallie purchases

its tin-plate. Chicago Metallie’s pans otherwise respond

identigally to the combination of clairn 2 of the 526. patent-,

and embody the ‘substance of the invention. The Claim |

must be construed to cover the actual invention and may

not be limited by extraneous rémarks in argument un-

accompanied by actual amendment of the claim. Bassick.

Co. v. Favliless Caster Corp., 7 Cir., 1939, 105 F.2d 228,

231. With further respect to the issue of infringement,

the District’ Court arog on the description in the S24

claims of an “opaque” &ide coating and the fitcet that the

coating on .Chtvago Metallie’s pans was allegedly trans-

‘parent. The testiriony on this point, however, indicates

that the film was found. to be transparent ‘after it Was

stripped off the pan. We are satisfied from our reading of

the claints that the use of the word “opaque,” there

refers to the cater oxide layer on the pan.

The S17 patent discloses. application of a ulaze release

film to the anodic coating prior to the secand heatine

‘step, so that the second heating conversion step simultane

“ously enres the glaze and converts the anodie oxide to

green oxide of tin, thus effecting both economy and effi

geney. ‘The parties stipulated that during production

Chicago Metallie dees deposit glaze on an oxide layer

on some-of its pans and during later heating @ures the

glaze and converts the anodie das -r, Imperfect practice

of the patented process does not avoid infringement. —

Colqat: fe aA, Co. v. Lever Bros. Co., 7 Cr.

137, WF. 2d 178, 194, cert. den. 302 UL S.. 729. The

specific language of the patent itself contradicts -the find.

ings as to the teaching of patent $17.

The 604 patent defines a sequenes: of steps whereby

scratches, or draw marks, obtained after anodic oxidation

and during a metal deformitig operation, unexpectedly

disappear during the last step of subjecting the drawn

implement to the elevated temperature for converting: the

—

anodic oxide of tin. Chicago Metallic does not cee ‘that

it practices the steps of the ‘claimed process.

Again, we are unable to discern in the record before

us any support for the finding that the steps récited in’

the claims in suit of patents Sif and os are old, yielding.

no new result.

‘The findings concerning the three derivative patents,

526, 817 and 604, which are only briefly mentioned by the

District Court (apparently because of the decision con-

cerning the basic 994 patent) are extremely limited. The

judgment of the District Court respecting these turee

derivative patents is reversed, and that portion of this

‘ase is remanded for further consideration in. the light

_ of our comments above.

The judgment respecting invalidity and ‘non- Jjatringe-

ment of the basic 994 patent is reversed.

The cause is remanded for further proceedings con-.

sistent with this opinion. —

Other arguments advanced by the parties not specific

ally mentioned in this opinion have been considered. with.

care, They do not alter the conclusions herein expressed.

Reversep and Restanvep

Witn [xstructioss.

APPENDIX B -

UNITED STATES COURT OF APPEALS

For Tue Stventu Circurr .

Chicago 10, Illinois

Friday, Augdst 16, 1963

i Before eS

Hon. F. Ryan Duffy, Cireuit Judge

. Hon. Win G. Knoeh, Circuit Judge

~ Hon. Roger J. Kiley, Circuit Judge

Tie Exoo Propucrs Company, Inc., ) Appeal ‘from. the

Plaintiff- Appellant, United States Dis-

No. 13770 vs. trict Court for the -

Cuicaco MetTaLuic ManuractUurinc , Northern District

Compaxy, of Illinois, Eestern

Defewdint Appéllee. ) Division.

This cause came on to be heard on the transcript of the

reeord from the United States District Court for the

Northern District of Ulinois, Eastern Division, and was

‘argued by counsel.

On consideration, whereof, it is ordéred and adjudged

by this court that the judgment of the said District Court

‘in this cause appealed {rom be, and the same is hereby,

Reversep, with costs, an¥ that this cause be, and itis here-

by Remanvep to the said District Court-for further con-

sideration and further proceedings in ace ordanc ‘e with the

opinion of this Court.filed this day.,

APPENDIX C

S86 - In tHe U NITED States. District Court.

*

re (Caption—58-C-849) ai Bw

a INDINGS OF FACT. AND CONCLUSIONS OF LAW.

I. Findings of Fact.

A. The Action, The Parties, And The Issues.

1. Plaintiff and defendant are both Illinois corporations,

~ having ‘their principal places of busine ‘ss in Chicago, IIli-

nois, in this District and Division, Both parties are en-

‘gaged in the business of manufacturing baking panssand

selling them to commercial bakers. This action arises

under the patent laws of the United States.” Tlie Court

has jurisdiction of the parties-and the subject matter of

the action; thé venue is properly laid in this District.

87 2. The-complaint charges defendant with infringe-

~ ment of United States Letters Patent Nos. 2,687,994,

2,724,526, 2773817, and 2,801,604 All these patents are

plaintiff's property; they will sometimes be referred to

hereinafter as the “994, °526, 81%, and "bO4 patents, respec-.

tively. a

3. Plaintiff's charge of-infringement relates to defen-

dant’s manufacture and gale of commercial baking pans

which Jiave been pre-darkened by an anodic: oxidation

process known as *Sure-Bake.”

4. Defendant is charged with infringing claims 1 and 5

: the "994 patent, claims 1 and 2 of the 526 patent, claims

"1.5 and 8-9 of the“817. patent, and claims 1-4 ‘of the '604

: rit nt. Deferdant has pleaded that all these claims are

invalid ;* ur ‘addition, it demes infringement of the °994,

526, and °Si7 patents. :

. <i —

B. The Historical Backeronnd of. ‘Se Controversy. r e

5. Baking pans are normally manufactured from ti

plated steel, known in zhe trade. as “tin-plute,”. which has

‘. good rust resistance and éxcelle ut mechaniaal strength.

New tin- plate, however, is a shiny, highly: reffeetive

88 metal, and consequently a new pan inade of tin. Plate

is not a satisfactory baking implement. Boeanse’ the

metal reflects heat so well, the inside of such a pan does

not rise to proper haking temperature, and bread baked

in it remairs practically: white instead of developing a

firm, brown crust. Tf the outer surface of a tin. plate pan

is darkened and thus made. less reflective, however, the

pan will absorb nough heat and-bake well, (R. 5- 6, 47-49.)

6. For many years—until 1947 in fact—this. darkening

of tin- plate heking pans was carried oyt by the bakers

themselves, the traditional means Of doing it being a proc.

ess interchangeably known as “burn-in” or “burn-out.”

_ This process consisted in placing new baking pans, empty,

into an oven and heating them for several hours at Q tents

perature slightly below’ the melting point .of tin—-pref-

erably about 425° F.° This would form on the surface.’

of the tin-plate 2 layer of tin oxid@ having an olive-green

hue. Frequently, in the days before 1947, bakers would

prepare new pans for “burning in” by rubbing them with

a burlap cloth or other mild abrasive to remove the shine

from the -tin- plate surface; this wéuld supstanti: Ny Speed

up the- oxidizing process and preduce an oxide film of

-upiform color and texture, after about four hours’ heating.

(PX 4, pp. 45-46; DX J-1; Re 49-50, 407-408, 1018-1019,

1114-1116.) | | ss Seth

89° 7. On being well burned in in the manner just’

| described, a tin-plate ‘baking. pan: would sometimes

produce perfect bread at once, Often, however, the pan

would bake in sub-par fashion for perhaps the first ten

—a— \

‘to twenty bakes, representing two to five days of normal

bakery use. In this interval, the oxide film would grow:

thicker as the result of exposure to oven heat, and after

twenty bakes or so the burned-in pan would produce good

bread. (R. 408-409, 938-939.) . j

&. ie first tin-plate baking pans that required no

“burn-in” ‘were developed ‘by defendant in 1947. These

pans were coated on their outer surfaces with a dark paint,

‘applied anid then cured on the pan by heating in an oven

for one to two. hours. Pans thus treated had a stable,

-heat-absorbing coating, for which defendant's s trade name

was “No-Burn”; and. would bake good bread the very.

start. These “No-Burn” bake pans enjoyed great popu-

larity and-were sold, to the’ full extent of. defendant's

production eapacity, from 1947 util some time ‘in 1950 or

1951. (DN M; R. 450, 482-483, 546, 502-5! 4.) ,

9. The theory underlying defendant's No-Burn coating

was that the paint would provide an effective heat-absorb

_ + ing surface whieh, while not. pe rmanent, would insure

90 good baking properties during the first part of a bak-

* ing pan's service-life.- As the pan was used, it would

gradually “burn in” hy the natural action of the oven

heat. Consequently, when the paint coating ultimately

burned or gore off in use, the tin surface thns exposed

would be well boraregont and effectively heat-absorbent.

(DX A, Tab 7, col, 2, lines 38-47.) ae

ee During the period in which defendant's No-Burn

pans were being produced and soid, plaintiff brought out

a similsr type of pan, which it sold under the trade name

..“Redi-Bake.” Plaintiff promoted these pans enthusiasti-

cally, with the ger “Eliminates Burning-Out Expense.”

“(DX N;-R. 333, 970-971.) —

11. In the late 1940's, the Dow Corning Corporation.

developed a new type of | “release coating” for baking

_ pans, to replace the grease which until then had heen the

—15a— :

A: traditional means of lenalan that a baked loaf would

separate readily from we This new release coating ~_

was a hard silicone plasti¢, initially; applied to the baking

pans in the form of a thin liquid film, but then cured by

several hours of heating. into a hard, glassy surface, The

use of this plactic release coating, known as “glaze,”

rapidly became almost universal. Plaintiff began glaz-

, 91° ing its pans in 1949; defendant first acquired a glazing

plant about the end of May, 1950. (DX Ay Tabs 9 and

10; R. 9, 173, 547.) _ Sem

12. A glaze coating is not permanent; the hard plastic

surface ultimately loses its. ability to release the loaves.

When this: oce urs—ahont every 200 or 250 bakes—the old

glaze must be siripped off the par and anew coat applied.

In the summer of 1950, just after defendant hegan glazing

— pans for its enstomors, it ¢ame to realize that the No-Burn

coating was incompatible with glaze, for the reason that

the chemical bath used for stripping the old glaze coating

frem a bake pan also stripped away the No-Burn. coating.

Since glaze was clearly destined to win out over grease

as the standard bake-pan release coating, defendant under-,

took to develop a pre-darkening method that would he -

- compatible with glaze. The result was defendant’ s “Sure-

Bake” process, charged with infringement in this action,

in which bread pans are ‘darkened by anodic oxidation.

(R. 227, 547-549, 554.)

13. Anodie oxidation.is a process which takes place in

an ele *trolytic bath—i.e., 1.°a water solution containing

dissolved chemical salts that render it electrically conduct-

ing. When two pieces of metal (called “electrodes”)

‘92 are submerged. in such a bath and a battery or other

source of electric power is connected to them, the cur-

rent flowing through the bath gradually transfers metal .

from the positively charged electrode (called the “anode”)

to the negatively charged electrode (called the “cathode”).

aa

In the course of this operation, a layer of metal oxide

forms on the anode. The color, hardness, and other_physi-

cal properties of. oxide coatings produced in this manner

depend greatly on the conditions of treatment-—that ig. On

such factors az the amount of current used, the temper-’

ature of the bath, and the length of time the treatment is

continued. In the particular case ef tin, appropriate

adjustment of these factors pe rmits the productiog, at will

of a soft yellow gxide layer, a hard greenish-brown oxide

layer, or 4 relativel” hard black oxidé ayer. (DX A, Tabs

1 and 2; R. 859; Eneyvelopedia Britannica, articles entitled

“ap hetroplating” and ‘Eleetrolysis.”)

14. The facts just set forth concerning anodic oxida-

ticn of tin and other metals have been well known to the

scientific-world for maty years. Until 1950, however, no

one thought of using.anodie oxidation to pre-darken baking

pars, That ide. first occurred to one John N. Crombie,

“now retired; in 1950, he was an assistant metallurgical engi-

neer for United States Steél Corporation, a sapplier of

tin-plate to all the baking-pan manufacturers. includ-

93 ing both plaintiff and defendant. Crombie-was familiar.

with the technical literatare on anodic oxidation of tin,

and it oceurred to lim, some tine before February 7, 1950,

that baking pans could probably be artificially darkened

in that way. (Crosubie Dep.. pp. 5-7.)

5. As a first step in reducing this idea to practices,

‘Crombie had U.S. Steel's laboratory anodiéally oxidize

some sample pieces of tin-plate in accordance witly the

procedure deseribed in prior litera ature. This produced,

on the sample s, a dark coating that, to Crombie'’s eye,

. “approximated the appearance of a normally burned out

bread pan.” With these samples in hand, Crombie, on

February 7, 1950. visited both plaintiff ard defendant at

their resziective Chicago plants. He showed to the repre-

_ sentatives of each company his samples of anodically oxi-

— lla —-

dized ‘tin-plate and told them how the samples had been

prepared. Within a few days thereafter, Mr. Crombie also

ealled on Lockwood Manufacturing Company of Cincinnati,

the third company in the commercial baking-pan business,

‘and gave to it the same information he had-given plaintiff

and defendant. (Crombie Dep., pp. 6-9, 17-19, 37-38, 50;

R. 945, 953-962.) .

16. In February of 1950, when jie b seid called »

94 on it, plaintiff had already been wrestling for several

months with the problems brought on ly the advent

of glaze; at that time. also, plaintiff was under notice from

defendant that its paint-coated’ Redi-Bake pans were an

infringentent of defendant's patent on “No-Burn.” Thus

plaintiff at that time was under pressure,‘on two counts,

to find a suitable substitute for Bedi-Bake. After Crom

bie’s visit, plaintiff promptly set ap an experimental elve-

trolytic bath, made ap some anodicatly darkened baking

pans, and found they would produce beautitul- loaves of

bread. The i#rst time these sample pans were heated, 1

dry them off, the oxide coating underwent a color change

from gray- black to greenish-brown and beeame consider

ably harder and more’ stable. In consequence, a heating

step was added to the oxidizing procedure whieh Crombie

had taught to plaintiff. Manufacturing facilities wer:

‘promptly set up. and plaintiff began. marketing anodically

oxidized baking pans ander the trade name “Bake-Prep.”

‘They were well received by plaintiff's cus stoners, (PX 4,

pp. 98 559; R. 970-97 1.)

pans. plaintiff followed the identie wl procedure taught in

the prior literature and disclosed to plaintiff by John

Crombie; this involved the use of anacid electrolytic hath

containing phosphoric acitl and di--odium hydrogen phos.

Iv. In its first commercial production of Bake-Prep _.

— 18a —

phate. (DX C, p. 68; R. 158, 862-863, S69-£70.)

9 ~ 18. As already noted, defendant did not begin glaz-

ing its bread pans: until the latter part of May, 1950;

until then its customers were weil satisfied with the “No-

Burn” pans. Shortly after glazing was started, however,

defendant realized that the -No-Burn coating, until then

highly successful, would have to yield in favor of some

coating that would not strip off in the chemical baths used

for stripping glaze. This led to development, by defend-

ant, of. the “Sure-Bake”- process—a method of anodic

oxidation derived from, but better than, ‘the procedure b

originally suggested by John Crombie. The, major re-

spect in which the Sure-Bake process differed from that

‘disclosed by Crombie was in its use of an alkaline elee-

trolytic bath containing sodium hydroxide’and sodium di-

chromate, ingredients not suggested by Crombie or initially

used by plaintiff. This alkaline -bath de veloped by peed

ant had a pH in the neighborhood of 10. (PX 2 7, 41;

"'R. 433, 548.)° : 3

19. In defendant’s Sure-Bake pyocess, the, sheets of

tin-plate were first anodically oxidized in the alkaline

96 electrolytic bath, were fhen formed into baking pans,

and finally were heated at abont 425° F. for one

and one-half hours, to stabilize the oxide ‘coating. (R.

98, 530-531.) .

20. Defendant's Sure-Bake process went into commer-

cial use about the beginning of 1951, at which time pain-

*The chemical unit ealled “pH” ineasures the acidity

or alkalinity of an aqueouyr solution.” A nevfral solution

has a pH of 7; and pH Jess than 7 indicatvs that the solu-

tion is acid, while pH values exéeeding 7 indicate alkalin-

ity. The pH unit is logarithmic, so that a change of one

digit in the pH value represents @ tenfold change in the

alkalinity or acidity of the solution. Thus a solution of

pH 10 is 100 times as alkaline as a pH & solution. (R.

387-388. ) ec:

—— ;

tiff was sd rkening its bake pans by the original, Bake-P Prep

process in whith an acid electrolytic bath, was uséd, in

accordance with John Crombie’s disclosure to. pl: ntiff, In

the fall of 1953, plaintiff abandoned the agid bath. and~

shifted to an alkaline bath containing sodium hydroxide.

Still later, plaintiff added sodium dichromate as an ingre-

dient. Neither of these ingredients was mentioned. in any

of the patents in suit, although both had been used in de-

fendant’s Sure-Bake formula’ from its inception. Plain-

tiff’s alkaline’ bath adopted i in’ 1953, like that already in

use by defendant, had dat pil in the neighborhood of 10.

(Crombie Dep., Pp, 68; PX 4, pp. 56-57; DX O; R. 389-

390, 862-863, 870-871, 873.)

_ 21. In December of 1995 plaintiff tried to syitch back

. to an acid Bake-Prep solution, but this was given up as

a faiiure after two days. The résults obtained werd so

poor in quality as to be unacceptable by contrast with

the superior products obtained. with the alkaline bath.

(DX P; RB. 398-400, 879-882.)

The Patents in Suit— Their Genes and Asserted

22. On February: 7, 1990, when John Crombie visited

plaintiff and disclosed to it the idea of predarkening bread

pans by anodic oxidation, plaintiff was much concerned

about the “burn-in” problem but had made no real progress

s in solving it. Plaintiff's teclinical people could success-

fully “burn-in” individual] pans, as the bakers had done

- for many years, but they had no mass-production technique

for pre-darkening bread pans exeept the Redi-Bake coat-

ing, molded after deicendant’s No-Burn coating. (PX 4,

pp. 40-01, 55-55.)

23. On February 7, 1950, the same ‘tin that John Crom-

bie visited’ plaintiff and taught~it how-to darken tin-plate

by anodic /¢xidaticn, plaintiff resolved to seek | “patent

wf.

a a — 20a.-—

protection” on Crombie’s suggestion. This decision was ¢,

made nearly a week before plaimtiff “discovered” the

feature which it now asserts to be its major “inventive”

contribution—ie., the step of heating the oxidized tin-

plate to stabilize the oxide «cating there on. This latter

step was first * ‘discovered™ by plaintiff's research direc-

tor on February 13, 1950. «PX 4 pp. 56-57.)

98 24. Pigintiff’s reseaifeh director, both in his con-

temporary notes and in his testimony, disclaimed re-

sponsibility for plaintiff's decision to seek patents on the

‘process which is the subject of tue “094 patent. On both

occasions, he attributed that decision to plaintiff's mau-

agement. (PN 4, p. 57; Re 318-319.) i

25. Promptly after. plaintiff Had decided to seek “pat-

re ent prote: tion” on anodi¢ oxidation of tin-plate, an aggres-

sive program Whe launehed to that end; ultimately, after

miumerous Patent Office rejections and examiner inter-

yiews, plaintiff secured the four. pate nts here’ in suit as

well as two others oriinally named in the complaimt but

dropped out before can (PX 1; DX D, E, F, and G; R..

SIR-31H)

26 The “WO4 patent in suit. which plaintiff considers

‘afs hasie patent ea lurports to monopolize the anodic.

osidgtion af any sert of tin article by the me ‘thod plain-

“Uff lAarmed* from John Crombie, supplemented by a heat-

_ 7) ingastep to stabulize the anodically produced oxide coating.

| The patent's disclosure of this heating step is vague and

indefinity: ther, is no teaching in the patent's ‘to how

long thy product must be heated te convert the oxide to

the stable forme nor does thr patent disclose how—e., in

what mianner—tne heating step should be carried. out.

(RL S20, SOSH)

49 77. The “944 pagent, voene though it is with respect

to the heat -toj. is quite explicit as to the composition

of the electrolytic bath im which the anodic oxidation is

/

/ ’

—ta-

to fe performed. On this, thé w nt expresses ad distinct’

preference for acid solution, pH values between 2.5° and

5 being designated as best. The patent states that it is

possible to anodicaliy oxidize tin in an alkaline both, but ;

the upper limit on the pH of such a bath is stated to be

“about 8." (‘994 patent, col. 4, lines 37-43, col. 7, lines

4-10; R. 856.)

28. The “26 patent. purports to cover tin-plate baking

pans waving an outer layer’of greenish- Ne tin oxide

(referred to in the patent as “olive-green”). © The claims

of °526 are not restricted to baxing pans a have been

anodically oxidized: they define the product of the patent

solely in tefms of physical structure—i.e., the physical

characteristics of the oxide coating and the thickness of

the various layers of metal that are characteristic of tin-

plate. (°526 patent, col. 10, lines 12-34; R. 214. 807 $12.)

25. Plaintiff’. ‘S17 patent is dirécted to the feature of

combining, in a single hyating operation, the stabilization.

of the oxide eoating on an anodically oxidized baking pan”

with the euring of a glaze lnwer deposited over such

100 oxide coating. The ‘S17 specification gtates explicitly

that thix combined conversion end glaze curing can be

accomplished by heating the completed baking pan. at

425° F. for one hour. There ts no suggéstion in the patent

that ai.v farther best ng, beyond this one-hour interval, is

required for the practice of tlie invention. (S17 patent,

col. & lines 60-65: R. 825.)

36. Plai intiff’« ‘O04 patent is difected. to a ab Ss for

making “drawn” pans-—i.e. pans formed: by forcible

stretching of the metal, as opposed to the aeBs nroce-

dure more eounmonly used. The OF specification deséribes

the anoedié oxidation of tin-vlate sheets and teaches that

‘sheets trus oxidized may then be coated with a drawing

lubricant, placed between a pair of forming dies, and drawn

into the desired shape by application of pressure to the

“*

: o> 99g an

dies, after which the pan edges @re trimmed _and folded

over in the conventional manner. The specification states

that the eémpleted pan. may be given a heat treatment to

egnvert the anodically formed black oxide to thé more

stabie olive-green form. It adds, however, that this heat-

ing step may, if desired, take place before tle drawing

101 operation is performed. The patent does not designate -

any specifie*drawing lubricante suitable for practice -

of the invention and mentions that many types of lubri-

cants are not usable. Plaintiff does not use the procedure

of the’ “604 patent i: its own commercial operations; in-

stead, plaintiff draws and-forms its pans out of bright

tin-plate, and anodizes them to form & dark oxide coating

afterward, The end product. thus obtained is not’ substan-

tially different from that- oo by the process of the

604 patent. (‘604 patent, col. 2, lines 40-46 and 67-71,

- - @@|. 3, lines 36-37, col. 5, lines 1. os R. 186-187, 230, 822-

. B24.) . a? <2 -

D. What the Prior Art Teaches Concerning the Subject

Matter of Plaintiff's Patents.

31. The two principal prior-art references on the anodic

oxidation of tin are a pair of British publications referred

to in tue record as the Kerr-Macnaughtan -paper (DX

A, Tab 1) and the Kerr paper. (DX, A, Tab 2.) The

Kerr-Maenaughtan paper teaches-the process that- John

Crombie diselosed to both plaintiff and defe dant as a

sugtested means of darkening bake pans by anodic oxida-—

_tivn, as opposed to the old “burning-in” technique. The

teachings of Kerr and Macnaughtan with respect to bath

composition, bath temper@ture, and quantity of electric ~

current are admittedlygthe source of the corresponding

102 disclosures in plaintiff's 994, 526, .nd 7827 patents.

Plaintiff eoncedes that Kerr and Maecnaughtan tanght

everything in plaintiff's busic process except the step of

.

— 23a — .

heating the date film to stabilize ‘it. (Crembie si asd pp.

6- 7; R. 158, 1530. )

32. The Kerr paper was written by cne of the co- authors

of the Kerr- Macnaugiitan paper; it dealt with three

,different types of oxide films which ean be anodically formed

on tin. Kerr mentioned, dnd described the conditions for

producing, a yellow film, a. brown filin, and also the same

black film dealt with in the Kerr-Mac ‘waughtan paper.

This Kerr paper, like the Ki rr: Macnaughtan paper, taught

~ the steps, recited in the el:imes of -the ‘94 patent, of making

-a tin article the node in an electri ivte solution, passe c

eurrent through the solution to form a film” oxide coating

on the article, and removing the tin article from the solu-

tion. The Kerr paper went bev ond. the Kerr-Maenanghten

paper, however, by‘also teaching, with respect to. the

brown. oxide film. that it miny be stabilized by loating in

an oil bath at a. temperature of 200° C. (R. 1049-1053,

” 3324-1395, 1380-1331.) :

108 33. For many-verrs it has heen common knowledge

that nytal oxide coatings wi!l often-change ‘to more

stable forms when heated and, when doing so, may change -

. color. Plaintiff's research director, in February of 1950,

was already aware of these facts from his general knowl-

"edge and was alee-aequainted with the chemical literature.

which taucht that black stannous (tin) exide would stabi-

lize and change to, an olive-creen color when heated at

200° C.; he made reference to that phenomenon in his_

contemporary notes. (DX A, Tahs 4 and 0; PX 4, p. 50;

_R. 623-624.)

34. Fhe prior art most erie to the 526 patent, as

_ plaintiff acknowledged’ fo the Potent Offiee, is the conven-

tional tin-plate baking pan. properly “burned in” by the

traditienal proeedure ‘preseribed by plaintiff and other

baking-pan thanufactnrers’ for) many vears before i550.

Such pans, when properly burned in, had on their outer:

.

. — 24a —

surfaces a tin-oxide layer that was hard, adherent, and

olive-green in color. The thickness of that film was at

least 7 micro-inches and its color was uniform. (DX E,

p. 87; DX J-1; R- 49-50, 206, 213, 407-408, 1018-1019, 1114-

1116.) | .

104-30. The manufacture of drawn pans, in the intl:

‘ sense,-was well known in the prior art. Drawing pans

from sheet metal with the assistance of a drawing Inbri-

' eant was admittedly old and ‘convéntional, as was the step

‘of finishing the pan by trimming and folding the edges.

The use of oxide coating as an aid to drawing sheet metal.

_is also old art; it was known years before 1950 that such

a coating Tre ‘duced the te dency of the metal to foul the

forming dies, (DX ‘A, Tabs 3 and 12+ R. 652-653, 825.)

E. Facts Bearing On The Invalidity Of The °994 Patent.

36. The two claims in ‘suit of the 7994 patent, Nos. 1

and 5, gre essentially alike in scope except that claim 95

recites, in greater detail than claim 1, the electrochemical

action by which an oxide coating is anodically formed on

a tin article. Specifically, claim 5 recites that the electro-

lyte shall contain “an aqueous soluble salt complexing re-

agent'to form an anionic stanno-complex.” ‘This condition

was met by fhe electrolytic baths disclosed in both the-

Kerr-Macnaughtan paper and the paper by Kerr alone.

_Heneé, as respects the validity issue, these claims may be

considered together. (R. §89-892, 1330.) 4

105 37. The prior-art paper by Kerr (DX ‘A, gab 2) -

discloses all the steps recited in claims 1 and 5 of

994, including the stabilization of the oxide coating on a

tin art: a hy heating. at a temperature between 190° C.

and 230° (, Claims 1- and -5 of 994 are anticipated by

that saarir (R, 1949-1054, 1325, 1530-1331.)

38. Ti» prior-art publication by Kerr and Maenaughtan

‘disclosed everything recited in ‘the ’994.claimg 1 and 5

save the step of heating the oxide-coated article ta stabi-

lize its oxide film and cliange its color. Even if the ‘dis-

closure in the Kerr paper of such a he ating step be dis-

regarded, the ‘904 claims 1 and 5 nevertheless fail to define

any patentable invention, for it was well known, at the

time plaintiff's alleged inve ntion was made, that heating

metal oxide coatings would fre ‘quently stabilize them and

change théir color. Plaintiff's research director knew this

as a matter of general knowledge; that is one of the rea-

“sons he. heated the oxide-coated pans in the first place.

There is no patentable significance ins the fact that a

black oxide film, on being heated, turns olive-green in

color; this was readily predictable from chemical litéra-

ture known to-plaintiff’s research director before the °994

“application was filed. The color change per se is of

' 106 no: importance ‘anyway; it is the hardness and sta-

bility of the converted oxide film tht matters.’ The

alleged “invention” of ‘Y94"s claims 1 and 5 would have

been’ obvions in 1950 to any person of ordinary skill in

the art, given the start that John Crombie gave plaintiff

and knowing 4he t teac things of the other prior art of record:

| (R. 623-624; DXA, Tabs 4, 5, 9, and 10; DX’ E, pp. 79,

88.) ar

39. The disclosure and claims of the ‘994 patent are

vague and indefinite at the precise point of alleged novelty

—to-wit, thé heating step.. With re<peet to that ste p. Which

is the only thing for which novelty is even asserted, the’

patent does not dis lose ta) low to perform the hedting

step, or (b) how long to continue. it. (R. $10, $20, S30.

840.)

40. Thea appearance on She market of plaintiffs “Bake-

Prep” baking pans did not satisfy any long-felt want in

the industry for pans that could be used without pretimi-

nary “burning in.” This want had been sati-fied,-years

before, by the appearance on the ‘market .of defendant's

,

Scadiille ‘withainel the stripping of glaze. This need’

} came into being abeut 1949 and was satisfie? within a few

2

‘months by John Crombie’s concept of darkenigg pans by

anodic oxidation, an idea he passed $p°to the whole baking-

+ pan industry. ° (R. 430, 482-483, 552-554; DX M, N; Crom-

_ bie Dep., pp. 59.) a ,

#, ig Bearing On The Invalidity Of The "526 Patent. .

41.» The two claims of the 526 patent are thé s same, for

all practical. purposes. Nothing in: uose claims distin+

guishes their subject matter from a conventional ‘bright-

tin bread. pan save for the ‘final phrase of each- claim;

calling for an outer surface “co tisisting of a uniform con-

tinzous. heat absorbing tenaciously adherent opaque olive-

green oxide of tin * * * having a thickness of about 7

”

micro-inches to 30 micro-inches.” This quoted recitation

as aptly deseribes the oxide layer on a well burned-in pan

of the prior art as it dees an oxide layer formed by. °

anodic oxidation. The claims’ of 526. “read” on a well

burned-in baking pan of the prior art in the same. manner

arid sense as thay’ ‘read” on a baking paw oxidized. by the

_ ‘anodie. proce 3 Moreover, the numerical’ limitations

108 in the ’526 claims relative to layer thickness do not

e orfespond to any distinctive result or function. The

thickness of the ‘v ‘arious layers is not critical, so long as

-. the. Jayer of free tin is. thick enough to provide effective

‘ resistance to-corrosion. (R. 213- 214, — 941; PX 4,.

. pp. 51; 57.)

42. The Patent Offiee granted the °526 bin only sen

plaintift’s representatives, in repeated interviews and writ-

ten amendments, had assured the Patent Office examiners

shat the oxide film on burned: in pans of the’prior art was

aa ial wre | .

. &

|

oe

a , oe 2.

oe not olive- -green* in color and had “very poor adhesence”.

‘These representations may have’ been made in good faith

x by ‘plaintiff's patent solicitors, but’ this record establishes .

that they were nottrue. A baking pan properly burned in,

in accordance with prior-art procedures did have an oxide

_ coating that was both olive-green and tenaciously adherent.

(DXJE, pp: 77, 79, 86, 87; DX J-1;. PX 4, pp. 49-46, 51;

R. nel 213-214, 807 810, 791, ‘941, 1019-1020, 1114-1118.)

109: G. Facts Bearing On The Invalidity Of The boss And

P) . + °604 Patents.

43. , All of the individual steps recited in the claims in

suit of the 817 arid °604 patents are old, end performing

’ the steps recited in those claims yields no new result be-

yond the sum of the respectiv e functions of the, individual

old steps. (R. 462- 403, 822-824.) _

H. Facts Bearing On Non- Infritigetnent ‘By Defendant

Of The Patents In Suit é* ~

44. A fair reading of the“ 994 patent shows that its

teaching is limited to anodic oxidation of tin articles in

aad électrolytic baths. or.in mildly alkaline electrolytic’

baths, with pl not exceeding a value in the neighborhood —

of 8. That. this is the iueaning inte ‘nded_ by plaintiff ts.

confirmed by its own experience prior to the filing of, the

994 application; at that time; plaintiff experimented with

a variety of alkaline solutions and, because gf their. fail-

ure, plaintiff abandoned them. Defendant's ‘anodic oxida-

_tion has been conducted in a highly alkaljne bath of pH 10

—a bath 100 times as alkaline as the most alkaline bath

taught in the ‘994 patent. Major ingredients of de fend:

* 110 ant’s alkaline bath are sédium hydroxide and sodium

dichromate, neither of which is even mentioned in

plaintiffs patents in suit. (PX 27; R. 387-388, 856- via

' PX 4, p. 57; 994 patent, ‘col. 4, line _ sg |

O°

— 8a — on 2)

45. The ¢laims of plaintiff's 526 patent aré ‘restricted

to baking pans in which the “iron-tin alloy” has a thick-

allowance, all claims without such a limitation having

been voluntarily cancelled. Defendant's. baking pans ac-

cds of infringing’ "526 do not have a layer of ‘iron-tin

allby™\of thickness Within the range specified in the -’526

claims; in deTendant’s pans,| the thickness ‘of the iron-tin |

attoy laver ranges. nig 9 le to. 20 micro-inches. (R. 760- .

761, DX. E, pp. 22-29, 62, 76- 77, oe

46. The ‘26 claims require that the oxide coating on

ie baking pans ehall be “opaque”. This condition is- not, .°

met by defe ndant’s baking pans accused of infringement.

The oxide coating on defendant's baking pans is:so trans-

parent that ordinary print-can easily be read through it.

j (RR. 1252 2-1 256, 1333-1334, 1836; PX 59.)

1M) 47. The “Su6-clainms. are by their language specifi-

"ness of “ap proximately 10 to kD micro-inciies”. This hmi- . °

_tation wa-written into the ‘026 claims while the patent

° i ; . > a ! : ’ }

“was beforesthe Patent Office, for-the purpose of securing

cally limited to baking pans in which oxide layer is

surface’ of the liking pan, inside’ and out, That this was

, the meaping intended for.these claims by plaintiff is és-

tablished by plaintiffs representations to the: Patent. Office

during the prosteution - of the ‘526 patent. Defendant's

regular-preoi luction bread pans do not respond t6 this re-

ire ment of the ‘526 claims; they are anodically oxidized

“only on.their outer ‘surfaces, and their inner surfaces,

which receive the. bread, loaves, are bright tin. _ (DX E,

I os: HW. 98" 34.)

Plaintiff's “17 patent is admittedly limited to the

-snanufacture of pains in which a layer of glaze is deposited

over -a laver of anedieully eformed oxide. Defendant's

. coextensive with the free tin laver—i.e., covers the entire =

recular-production pans are not made in this nfanner;

they are oxide-coated only: on the outside surfaces and

he

|

eae 3 oon

-glaze-coated only on the inside surfaces. “R 9395, 737-738.)

_ 49... The clear teaching of the ‘SIZ patent is: that-an

- anodically formed oxide coating may be cgnverted to the

stable olive-green form by one hour's heating wt 425°.

The patent's gaims ‘are -restricted. to” proc asses “in’

-112 which this conversion of the oxide coating takes place

simultaneously: with the curing ¢f glaze. Defe ndant’ s

manufacturing process does not conform to this -reqnire-

ment. Defendant always heats its pans at $25° F. for one

and one-half hours before glaze is applied, after which the

pans aré heated again to cure the glaze. (‘S17 patent, col.

8, lines 60-65; R. 99.)

ii ; ‘Il. Conclusions ‘of Law.

ae. The Court has jurisdiction of the action and the

- parties, and tlie venue is properlyslaid in this District.

_ 2. Claims 1 and 5: of gone ol United Stnutes Létters

Patent No. 2.687.994 are invalid and void: becaust. they

read on and are anticipated a the disclosures. of the Kerr

priorart publication. (25 U.S. Code, 4 102: Graver. —

d Mfg. Co. v. Linde Air Piiuces Co. (1949), 336 US,

277, Mead. Johnson & Co. y. Hillman’s, Inc. (7 Cir. 1943 ),

135 F. 2d 955, 958.) -, ‘ :

113° 3. Claims 1 and 5 of plaintiff's United States

Letters Patent No. 2.687.994 are invalid and void for

* failure to define any patentable invention over the prior

art. The subject matter of both these claims, save only for

the heating step therein Tecited, was admittedly dérived

-by -plaintiff.frem John Crombie, who in ‘turn derived it

from the Kerr-Macnaughtan prior-art publication: Hence

the only aspect of the claimed subject matter that.is even

asserted to be original with plaintiff is the heating step,

and it was not a contribution on which patentability could

be ‘predicated... Heating a metal-oxide coating to stabilize

‘it and change its color was already an old, well-known

r ; ’

4

+ identifiable invefition or discovery

Ba ee

procedure in 195%, well, within the skill of the art; and the

result achieved.by the heating step was only the expected

- one readily predictable from prior-art knowledge. (35 U.S.

Code, § 103; Mandel —— v. W allace (1948), 335 U. S.

. 291, 296.)

4. Claims 1 and 5 of plaintiff s United States Letters

Patent No. 2,687,994 are invalid and void for the further

reason that such claims, and the disclosure on which they

are based, are vague and indefinite at the precise point of.

allege d novelty; in that they fail to define either the

114 manner or the res of the heating step. (General -

Electric Co. vy. Wabash Appliance Corp. (1938), 304° -

U.S, 364, 368-369 ; 0 niversal Oil Products.Co. v. Globe Oil:

é Refining Co. (1944), 322 U.S. 471, 484-485; Halliburton

Oil-Well Cementing Co. y. Walker (1946), 329 U.S. 1, 8-9.)

5. Claims 1 and 2 of plaintiff’s United States Letters

Patent No. 2,724,526 are invalid as failing: to define any *

‘over conventional prior-

art baking pans “burned-in” in accordance witli-the stand-

- ard provedures. which plaintiff and other manufacturers

prescribed for years before the ’526 “invention” was made.

(Graver Tank & Mfq. Co. v. Linde Air Products Co. (1949),

336 U.S. 271, 277.) The numerical limitations in these

claims with respect to layer thickness do not distinguish

the subject matter of these claims from such prior-art

burned-in baking pans; moreover such numerical thickness

limitations are admittedly without any critical significance

as t#-function or result and hence provide no basis for.

distinguishing the subject’ matter of the claims from the

‘prior art. (Dow Chemical Co. v. Halliburton Gil. Well

Cementing Co. (1945), 324 U.S. 320, 329: Helene. Curtis.

Industries y. Sales Affiliates, Inc. (2 nici 1956), 233 F. 2d.

148, 154.) 2

115 6. Claims 1-5 and S-9 of plaintif?’ United States

~ Letters Patent’ No. 2,773,817 and claims 1-4 of plain-

AY

-—3la—

tiff’s: United States Letters Patent No. 2,801,604 are in- :

valid and void as defining, mere aggregations of method

_ steps, all.of which are individually old and which in con-

gregation achieve no new result over and beyond the sum

of the known functions of the old: steps. “Two and two —

have been added together, and still they make only four.”

(Great A. d P. Tea Co. v. Supermarket’ Equipment Corp.

(1950), 340 U.S. 147, 152-153.) Claims.1-4 of plaintiff's

_ United States Letters Patent No. 2,801,604 are invalid

and void for the further reason that they embrace within

their scope species of the “invention”’ which are admit-

tedly inoperative. (Graver Tank & Mfg.-Co. v. Linde Air - |

| Products Co. .(1949), 336 U.S. 271, 276- 2772)

. 7. Even if deemed valid, claims 1 and:5 of plaintiff's

United States Letters Patent No. 2,687,994 have not been:

infringed by defendant; de fendant has not practiced any»

process within the scope of said claims 1 and 5 when they

are construed, as they must be, in the light of. the patent's

specification—{Seherbatskoy - v.: United States Steel.

116 Corp. (7 Cir., 1961), 287 F. 2d 552, 558; Texas Co. v.

Globe Oi & Refining Co. (7 Cir., 1955), 225 F. 2d 725, .

737; Independent ‘Pneumatic Tool Co. v. Chicago Pneu-

matic Tool Co. (7 Cir, 1952), 194 F. 2d 945, 947. )

& Even if valid, claims 1 dand..2 of plaintiff's United

States Letters, Ratent No. 2,724,526 have not been in- °

fringed by defendant.c (Schriber-Schroth Co. v. Cleveland

Trust Co.. (1940), 311 U.S. 211, 221; Union Carbide

Carbon Corp. v. Graver Tank & Mfg. Co. (7 Cir., 1952 52),

196 F. 2d 103; 107-108.) .

* 9. Even if valid, claims 1-4 of plaintiff's United States

Letters Patent No: 2,073,817 have not been infringed by

’ defendant.

10. Plaintiff has failed to establish any cause of action

against defendant.

-

; Bla a

11. Defendant is entitled to entry of a final judgment >

herem: *° ix ;

(a) adjudging’ invalid and void claims 1 and 5 of

: nited States Letters Patent No. 2,687, 994, claims

‘l.and 2 of United States | Letters Patent Nov

V7 - 2754) 926, claims 1-5 and 8.9 of United “States

Letters ‘Patent No. 2,773,817, and claims 1-4 of ©

limited States Letters Patent No. 2,801,604;

(b) ad judging not infringed, even if valid, claims 1

and 5 of United States Letters Patent No. 2,687,-

. 994, claims land 2 of ‘United States Letters

Patent No. 2,724,526, and claims 1-5 and” 8-9" of

United States Letters, Patent No. 2,773, 817; :

(¢) dismissing the. Lettie for ‘want of équity ; and

(da) awarding to. defendant its legal costs as ssasksiogeia

by law.

ous ame amn eam en eee nee ME Se D aoe

Q ns United States District Judge. :

March 28, 1962. ’

~~ 398 —

> |. APRENDIX D.

118. Ix THe Unrren Srates Disrricr Court |

ft ee .* © (Caption—58-C- gif) °°

FINAL JEUDGMEN _

This cause having come: on to be heard by the Court

without a‘ jury, and the Court having. considered all the

evidence: submitted by both parties and being fully ad-

’ vised in the premises, and the Court having entered herein

this day its findings of fact and’ conclusions of law,

It Is Hereby Ordefed, Adjudged, and Deecreed That: .

(a)’ Claims'1 and 5 of United States Letters Patent

‘ - No. 2,687,994, claims | and 2 of United States Letters

' Patent No. 2,724,526, claims 1-5 and 8-9 inclusive of |

United States ‘Letters Patént No.2,773,817 and claims ©

HE ineliisive of United States Letters Patént -No. —

2,801,604 are invalid and void... ;

(b) Even if valid, ciaims’! and 5 5 of United States -

Letters Patent No. 2,687,994, claims. 1 and 2 of. United’ -

States Letters Patent No. 2,724, 026, and claims 1-5

and’ 8-9 inchusive of United States - Letters Patent .

No. 2,773,817 have not been infringed by defendant.

(c): Plaintiff having’ failed to establish-any-cause

_. _. _— of -aetion-against defendant, this action is dismissed

' for want of ‘equity.

(d) “Judgment ‘is aiiartaid in deferdant’s favor

against plaintiff for defendant’s costs as provided by -

law, such costs to be taxed by the Clerk’in due course.

Enter: rte y™

a J. S. Perry, ane)

an * United States District Judge.

March 28, 1962.

’