# Appendix — Chicago Metallic Manufacturing Co. v. Ekco Products Co. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385601_1365%3A3 ## Record - **Collection:** Supreme Court brief - **Document type:** Appendix - **Published:** January 1, 1964 - **Citation:** 375 U.S. 970 ## Text 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 ———~ 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 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? 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. ’ --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385601_1365%3A3. Public record. Not legal advice.