Petition for Writ of Certiorari — Clark v. United States

Bei APTN MI I i 5c st itek ys ah § ty O02 eRe TN

OCT 17 1968

JOHN F. DAVIS, CLERK &

IN THE

oe Court of the Gnited States

Ooroser Tz, 1968.

No. 564

RANSBURG ELECTRO-COATING CORP.,

Petitioner,

v8.

IONIC ELECTROSTATIC CORPORATION,

Respondent.

APPENDIX TO

PETITION FOR WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS

FOR THE FOURTH CIRCUIT

James P. Hume

Cryps F. Wrmu1aNn

Of Counsel:

Home, CLemMent, Humes & Lee

38 So. Dearborn St.

Chicago, Mlinois 60603

Verne A. Trask

1100 Hume Mansur Bldg.

Indianapolis, Indiana 46204

INDEX TO APPENDIX

PAGE

Opinion of Court of Appeals for the Fourth Circuit,

BEE Big RE oe 5866s 5 5h ecb eeeeeecesceeeveres 1

Celine GE BOGE Th, FOGG cc cv cccvesescvsescescececes 10

Order Denying Petition for Rehearing .............. 11

Order Denying Motion for Leave to Move for

PE BOE Abs breaks eheecednnkachonswessesseesees 12

Opinion of District Court, May 19, 1965 ............ 13

Contempt Decree of District Court ................. 41

Opinion of District Court, March 15, 1962 ........... 45

Interlocutory Judgment of District Court, May 7, 1962 101

Opinion of Court of Appeals for the Fourth Circuit,

FPPC ET Peer Tee eee 109

Order of Court of Appeals, May 14, 1963 ........... 112

United States Patent 2,685,536........... cece eeeee 114

United States Patent 2,794,417. ........ cece eee ees 120

United States Patent 2,893,893. ......... 00... e eee 125

United States Patent 2,893,894............... eee eee 137

Excerpt from May 4, 1962 Proceedings Framing

Injunction Entered May 7, 1962 .................. 143

Excerpt from Respondent’s (Ionic) Brief on Appeal

in Contempt Proceeding (Pages 18-19) ........... 143

IN THE

Gnited States Court of Appeals

For tHe Fourts Circuit

RANSBURG ELECTRO-COATING CORP.,

Appellee,

vs.

IONIC ELECTROSTATIC CORPORATION,

Appellant. 5

> No. 10,347

APPEAL FROM THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MARYLAND, AT BALTIMORE.

R. DORSEY WATKINS, DISTRICT JUDGE.

(Argued May 5, 1966. Decided April 11, 1968.)

Before HaynswortH, Chief Judge, and Boreman and J.

Spencer Bexi,* Circuit Judges.

Haynswortu, Chief Judge:

The defendant has appealed from an order holding it in

contempt of an injunctive order entered in a patent case.

The contempt finding is premised upon a finding that cer-

tain devices for use in electrostatic spray painting systems

are the equivalent of certain other devices previoysly found

to infringe the plaintiff’s patents and that the sale and use

of the new devices were proscribed by the terms of the

injunction. In light of the prior art, which the patentee

has no right to appropriate, we think the finding erroneous.

* Judge J. Spencer Bell participated in the hearing of this case

and expressed general approval of the resuli, but died before the

opinion was prepared.

OO nt ati inn BX, salt ani RMN See tient AD tis ahr Gate ade Sal litte at

2

Plaintiff’s patents cover paint feeding mechanisms in

which paint is delivered to atomizing heads connected with

one terminal of a high voltage source on the order of

90,000 volts, creating an electrostatic field between the

head and the greunded objects to be painted. The electro-

static forces atomize the paint into small droplets, each

highly charged with negative ions, and the electrostatic

field deposits them on the work. The defendant’s devices

with which we are now concerned have insulated or non-

conductive heads unconnected to any power source. Rotated

at speeds up to 21,000 r.p.m., atomization of the paint is

essentially centrifagal, but the head itself is within an elec-

trostatic field created by a discharging electrode electrically

connected to a high voltage source from which the un-

charged head acquires a static charge equal to that of any

other object within the electrostatic field along the same

line of force. Whether the plaintiff’s patent and the injunc-

tion against its infringement can reach the defendant’s

devices in which the atomizing head is not the discharging

electrode is the essential question.

Some reference to the prior art is essential to an under-

standing of the problem.

Spray painting has long been known. Compressed air has

long been used for breaking paiat into fine droplets, known

in the trade as “atomizing,” on ihe same principle as em-

ployed in ladies’ perfume bottles, insecticide spray cars and

a multitude of household and industrial devices. Air spray

guns are still used for a multitude of purposes, including

very fine finishing, though airless guns have been developed

with nozzles which achieve atomization of paint delivered

under pressure for use in such finishing.’

Outside of the fine furniture field, however, the use of

1See Gray Co. v. Spee-Flo Mfg. Corp., 5 Cir., 361 F.2d 489.

3

air spray guns for most industrial painting was wasteful of

material, particularly when the objects to be painted were a

succession of objects moving along a productioa line. There

were other obvious disadvantages, for there was not only

a waste of paint, but a collection of unwanted paint on

other objects within the range of the sprayer.

This led to the introduction of electrostatic fields by

connecting a discharging electrode to one side of a high volt-

age source and connecting the other side to the work to be

painted or to the ground, in which event the work to be

painted was grounded. Paint atomized in an air spray or

centrifugal.y when introduced into such an electrostatic

field picked up static charges from the field, which tended

to make particles repel each other while each was being

attracted to the work. This system was referred to for con-

venience as “Ransburg No. 1,” for the plaintiff has long

been prominent in this area and holds a number of expired

patents upon variants of the general prior art system.

For the uses for which we are now concerned, the Rans-

burg No. 1 system was a substantial improvement over the

use of spray guns without the assistance of the electrostatic

field. It greatly reduced the waste of paint and its deposition

upon unwanted material, but it did not entirely eliminate

it. Some particles of paint acquired such great velocities

that the forces in the electrostatic field were of insufficient

strength to control their movement.

Ransburg then developed its No. 2 system represented by

the patents in suit.2 Under this system paint is fed at a

controlled rate to a stationary head or one revolving at a

relatively low speed for the sole purpose of delivering the

2 There are separate patents representing different forms of dis-

charging heads, but for our present purposes they all incorporate

and exemplify the same principle.

paint in a film to the edge of the rotating head. The head

itself is directly connected te the negative terminal of

high voltage source, however, which makes the head the

discharging electrode. There is thus created an electrostatic

field between the head, as the discharging electrode, and

the work which, with 90,000 volts, is itself effective to

break up the paint into fine particles and move the parti-

cles through the electrostatic field and deposit therm on the

work. The field is quite comparable to an electromagnetic

field, which we have all observed with the use of iron filings,

and is quite effective to deposit paint on all sides of such

objects as broom handles.

The Ransburg No. 2 system is quite effective in over-

coming the disadvantages of the No. 1 system. Waste is

completely eliminated, or almost completely so, and the

particles of the paint are finer and much more uniform

than in the previous system as practiced before Ransburg

No. 2 was developed. This was because no other forces

than the electrostatic field were acting upon the particles

to give them velocity and because the initial negative

charge of each particle was substantially the same. as that

delivered directly to the discharging head by the power

source. Inventiveness was said to lie essentially in use of

the head as the discharging electrode and ir the concept of

achieving atomization by electrostatic forces rather than by

the mechanical forces theretofore employed.

With general success, Ransburg asserted its patents on

the No. 2 system against copyists defending on the ground

of patent invalidity because of obviousness and non-in-

fringement because in the aceused devices atomization of

the paint was achieved by a combination of mechanical and

electrostatic forces.* These were the original questions in

3 Ransburg Electro-Coating Corp. v. Proctor Electric Co., 4 Cir.,

317 F.2d 302; Binks Mfg. Co. v. Ransburg Electro-Coating Corp.,

ee ee

5

this action, for the defendant had marketed spray guns with

a spray head connected directly to a high voltage source, but

rotating at speeds in the order of 900 r.p.m. so that atom-

ization of the paint was the product of mechanical, as well

as electrostatic forces. The District Court fouid the patents

valid, and applied to them the “broad,” not the “narrow”

construction to find infringement as iong as the electrostatic

forces played a substantial, though not an exclusive, part in

the atomization of the paint.5 We affirmed on the opinion

of the District Court,® and that seems to be the consensus,’

for Ransburg’s patents are entitled to a sufficiently broad

constructiou that they may not be practiced by the intro-

duction of contributory forces which do not remove depend-

ence upon the electrostatic forces for the atomization of

the paint. It was found to have been quite enough if atom-

ization of the paint had been accomplished through the

teachings of the patent, though other available means to

that end were also employed.

Appropriately, an injunction was issued against further

infringement by Ioric. Meanwhile, however, Ionic had

brought out three new models in which there is no direct

connection between the atomizing head and the power

source and in which, it is contended, electrostatic forces

play no part in the atomizatiou of the paint.

Because of these new models, of which Ransburg had

general information, the defendant, Ionic, insisted that the

injunctive decree be phrased in terms of the court’s exposi-

7 Cir.; 281 F.2d 252; Ransburg Electro-Coating Corp. v. Williams,

W. D. Ark., 246 F. Supp. 626; Ransburg Electro-Coating Corp. v.

Ford Motor Co., S. D. Ind., 245 F. Supp. 308.

4 See Ransburg v. Aerostyle Ltd., 1968) A.C.

5 Ransburg Electro-Coating Corp. v. Proctor Electric Co.,

Md., 203 F. Supp. 235.

6 Ransburg Electro-Coating Corp. v. Proctor Electric Co., 4 Cir.,

317 F.2d 302.

7 See cases cited in notes 3 and 4.

6

tion cf the essence of the invention, rather than by general

reference to the patent. Consequently, the debate in the

District Court on the contempt proceeding and here has

been framed principally in terms of the injunctive order,

without regard to the availability of the prior art to any

practitioner. .

The District Court found, within the terms of the injunc-

tive order, that the presently accused devices achieve atom-

ization of the paint, at least in part, electrostatically,

that there is an electrostatic field between the atomizing

head and the work sufficient to disperse and deposit the

paint and that atomization is achieved at the point of high-

est concentration of forces in the electrostatic field.®

While we need not examine these findings seriatim,

some comments are not inappropriate.

From high speed photographs, there was uncontroverted

evidence that there was no discernible difference in the

atomization of the paint with the field on and off. It was all

mechanical. The plaintiff contended, however, that a test

showed that if Ionic’s heads were slowed from their extra-

ordinarily high rotational speeds to zero and the feeding of

the paint was stopped, there was evidence of the force of

the electrostatic field. Of course, there was. This was a

natural phenomenon, long observed, and employed in this

industry to remove excess paint. Known as “detearing,”’ it

had been long employed to draw cff excessive paint from

objects to be coated. This application of the detearing prin-

ciple when the accused device was stationary and with no

paint feeding to it, proves little.

The plaintiff aisc offered evidence through strip tests

that, while the particles into which the pa*nt was atomized

by Ionic’s centrifugal guns were more than acceptably

8 Ransburg Electro-Coating Corp. v. Proctor Electric Co., D.

Md., 242 F. Supp. 28.

7

small and uniform with the electrostatic field off, they were

still smaller with the electrostatic field on. It was contended

that these strip tests showed that electrostatic forces played

some part in the atomization of the paint and that it was

not achieved exclusively by the centrifugal forces. The

contention gives no weight to the fact that the uncharged

atomized particles would tend to conglomerate, while in

the presence of an electrostatic field each would tend to

repel each other particle.

In the accused devices there is no doubt that the atomiz-

ing head is not the discharging electrode. The electrode is

a separate grid or ring from which the atomizing head is

insulated, and the head, usually, is of non-conductive mate-

rial. Nevertheless, because the insulated or non-conductive

head is within the electrostatic field created by the separate

electrode, the head itself acquires a static charge equal to

that of every other object within the electrostatic field along

the same gradient. The static charge on the head is sub-

stantially less than the active charge on the electrode, but

there is still a substantially high voltage varying between

approximately 14,500 volts on the Model 10 to 32,000 volts

on the Model 25.

The presence of this floating, static charge on the head

is the basis for contentions by the plaintiff that there is an

appreciable, separate electrostatic field between the head

and the work and that atomization of the paint occurs at

the point of greatest concentration of the electrostatic

forces in that field. The plaintiff undertook to support the

contention on the basis of an experiment conducted while

the head was grounded. It is said that the grounding of the

head eliminated the electrostatic field between the head

and the work, leaving unaffected the electrostatic field be-

tween the electrode and the work. The contention, however,

is entirely spurious. The head was neutral when insulated

or non-conductive and uncharged. Grounding it made it a

positive electrode of the same polarity as the work and with

B drltii. UN eee e eae

8

the same vositive attraction for the particles of paint as the

work. The inability of the system to deliver paint effectively

with the head thus grounded and made a positive electrode

is not surprising, but it lends no support whatever to the

plaintiff’s contention.

Tt is clear that the only active discharging electrode is the

separate electrode connected to one side of the power source.

It is the sole source of the negative ions effectively charging

the particles cf paint and moving them toward the work.

While the head is the recipient of such ions by bombard-

ment from the electrode just as the particles of paint are,

it supplies none of itself.

If then the field be viewed as the one field existing

between the two active electrodes, there is no separate

field between the head and the work, and atomization of the

paint does not occur at the point of greatest concentration

of the electrostatic forces, which is at the discharging elec-

trode.

Regardless of the answers to all of these questions aris-

ing out of an interpretation of the language of the injunc-

tion, consideration must be given to the prior art for it was

never intended, of course, that the injunction should

prohibit its practice.

In one of the plaintiff’s expired, prior art patents in the

No. 1 process,’ it is recited that sometimes the spray gun

itself is charged and made the active electrode. Even if the

spray gun was uncharged, that and other Ransburg pat-

ents’° show that the ungrounded head was sometimes in the

electrostatic field, and when it was there it received a float-

ing static charge precisely as do the heads of Ionic’s

devices. The system of this prior art was thought not to

invalidate Ransburg’s patents on the No. 2 system for, even

® Pugh Patent No. 1,855,869 (1928).

«° Ransburg Patent No. 2,334,648 (1939); Helmuth Patent No.

2,421,787 (1945); Ransburg Patent No. 2,509,277 (1945).

9

though the spray gun was directly connected to the power

source or received a static, floating charge from the active

electrode, atomization of the paint was essentially mechani-

cal and not electrostatic. Nevertheless, it seems perfectly

plain that electrostatic forces were present and operating

to at least an equal extent and to an equal degree as they

are present and operating in Ionic’s devices. Ionic is

entitled to practice that prior art system, and if the electro-

static forces play any part in its atomization of the paint,

it differs neither in kind nor in degree from the part played

by those same forces in the prior art systems.

We then come to the conclusion that infringement of

Ransburg’s patents on the No. 2 system is not avoided by

partial dependence upon some other means to achieve

atomization of the paint as long as there is substantial

dependence upon electrostatic forces within the teaching of

the patents, as the District Court initially held and we

approved. There is no infringement, however, when depend-

ence upon the electrostatic forces to atomize the paint is so

insubstantial and minimal that it does not exceed the em-

ployment of those same forces in the prior art systems.

It follows that Ransburg did not sustain the heavy burden

placed upon it’! of showing that Ionic was in contempt of

the court and in violation of its decree by producing and

marketing the presently accused devices.

Subsequent to the hearing of this appeal, a motion was

made before a panel consisting of Judge Sobeloff, Judge

Bryan and the writer that the case be remanded in general

to the District Court for reopening and consideration of a

Russian patent and articles which were said to have come

to light only recently and which Ionic contends completely

anticipate and invalidate the Ransburg patents on its No.

2 system. In light of our disposition of the appeal, this

11 General Electric Co. v. Wabash Appliance Corp., E. D. N. Y.,

29 F. Supp. 1003.

DS AA ENE AS LSM NEO iN: an Slice hat Yh Se

10

motion may ke academic, but the remand will be with leave

to the District Court to consider any such application

that may be made to it and to reopen its prior judgment,

notwithstanding our previous affirmance of it, and to enter

any modifying or substitute order which may seem appro-

priate.

I am authorized by Judges Sobeloff and Bryan to express

their approval of this disposition of the motion.

Reversed and remanded.

UNITED STATES COURT OF APPEALS

For tHE Fourts Circuit

Ne. 10,347

RANSBURG ELECTRO-COATING CORP.,

Appellee,

vs.

IONIC ELECTROSTATIC CORPORATION,

Appellant.

Appeal from the United States District Court for the

District of Maryland.

This cause came on to be heard on the record from the

United States District Court for the District of Maryland,

and was argued by counsel.

On consideration whereof, It is now here ordered,

adjudged and decreed by this Court that the decree of the

said District Court appealed from, in this case, be, and the

same is hereby, reversed with costs; and that this cause be,

and the same is hereby, remanded to the United States

District Court for the District of Maryland, at Baltimore,

for further proceedings not inconsistent with the opinion of

the Court filed herein.

CiemMent J.. Haynsworta, JR.

Chief Judge, Fourth Circuit.

SIS tte Ts Lt Cos 1.

SA in CREE ade

St be 2 Ale Dh hee eatin Siew LR ah eS Ss tale

peste aiprbio nna te

11

UNITED STATES COURT OF APPEALS

For tHe Fourry Circuit

RANSBURG ELECTRO-COATING CORP.,

Appellee,

~ | No. 10,347

IONIC ELECTROSTATIC CORPORATION,

Appellant. |

APPEAL FROM THE UNITED STATES DISTRICT

COURT FOR THE DISTRICT OF MARYLAND,

AT BALTIMORE.

The Court having heretofore on April 11, 1968 entered

its judgment and filed an opinion in the above entitled case

and a petition for rehearing having been filed on May 9,

1968,

Now, therefore, upon consideration of the petition for

rehearing,

It is ordered that the petition for rehearing be, and the

same is hereby, denied.

CLEMENT F’. Haynswortn, Jr.

Chief Judge, Fourth Circuit

Hersert S. Boreman

United States Circuit Judge

Pseseaiiecen i. a

Aa Ss NE TO aN a TERM sae Aa Non bitlcandistct cee

12

UNITED STATES COURT OF APPEALS

For tHe Fourtn Circuit

RANSBURG ELECTRO-COATING CORP., )

Appellee,

- . No. 10,347

IONIC ELECTROSTATIC CORPORATION,

Appellant. |

APPEAL FROM THE UNITED STATES DISTRICT

COURT FOR THE DISTRICT OF MARYLAND,

AT BALTIMORE.

Upon consideration of the motion for leave to move the

District Court for an order granting a new trial and of the

memoranda in support and opposition,

It is ordered that the motion for leave to move the Dis-

trict Court for a new trial be, and is hereby denied.

CLEMENT F’. HaynswortH, JR.

Chief Judge, Fourth Circuit

s/ Hersert 8. Boreman

United States Circuit Judge

A True Copy, Teste:

SamvueE. W. Pures, Clerk

By Marcaret P. Atkins

Deputy Clerk

Ns ee Ro CB atin ias Urine

13

RANSBURG ELECTRO-COATING

CORPORATION

Vv.

PROCTOR ELECTRIC COMPANY, INC.

and

IONIC ELECTROSTATIC CORPORATION.

Civ. A. No. 10181.

United States District Court

D. Maryland.

May 19, 1965.

R. DORSEY WATKINS, District Judge.

Plaintiff has filed a petition to have defendant Ionic

Electrostatic Corporation (hereinafter “defendant”; Proc-

tor is not herein involved) adjudicated to be in contempt

of an order passed by this court on May 7, 1962, and for

an awarding of damages, including actual damages,: ex-

penses and attorney’s fees, for such alleged contempt. Sub-

sequently the petition was amended to request trebling of

actual damages for alleged willful and wanton violation of

the injunction. Defendant has responded, denying any

violation of the injunction and claiming that all its conduct

was in good faith, and at least part thereof taken upon

advice of counsel.

Six days were spent in the hearing of testimony, and

numerous exhibits were filed. Thereafter time was allowed

for the filing of briefs, followed by a full day of oral argu-

ment.

Background.

On March 15, 1962 this court rendered its opinion in

Ransburg Electro-Coating Corporation v. Proctor Electric

Company, Inc. and Ionic Electrostatic Corporation, D.Md.

1962, 203 F.Supp. 235, affirmed 4 Cir. 1963, 317 F.2d 302,

ESA DOE, ta Cd She

14

upholding the validity of the five patents of plaintiff m

suit, and finding infringement by defendants of certain

designated claims thereof. While a full understanding of

the issues presently involved would certainly, if not requir-

ing, be aided by, a reading and study of that opinion, it

may suffice to say that the patents in question related to

electrostatic spray-coating systems.‘ Harly in the opinion

the court referred to plaintiff’s contentions, which it upheld,

that the patents in suit disclosed methods and apparatus

in which “the paint is mede the electrode and electrostati-

cally atomized, or that at least thc paint is charged and

atomized at the point of highest field intensity, is at the

moment of atomization given a ‘built-in’ charge, and that

the electrostatic field thereupon disperses the particles, and

deposits them upon the work.” With respect to the scope

of the patents, and infringement, defendants contended,

but the sourt found to the contrary, that “ihe patents, if

valid, are limited to those applications in which electro-

static forces are the sole source of atomization, dispersion

and deposition. Otherwise stated, defendants vlaim that

no infringement occurs if, specificaily, centrifugal force

olays axy part, ne matter hew small, in either and/or atom-

ization, dispersion or deposition.’

In conrection with defendants’ con:ention of file wrapper

estoppel the court said :*

“The coart is of the opinion that the minimum clearly

allowable to plaintiffs as the result of the Patent Office

prosecution is that plaintiff's patents cover any case

in which the paint, as presented to the field (by gravity,

1 Not limited te or even requiring, an electrostatic atomization

of paint, as defendant herein arges; although suck electrostatic

atomization was in fact found to be present in the actual processes

practiced by plaintiff, and in the accused devices.

* 208 F.Supp. at page 238.

3203 F. Supp. at page 239. Italics in the original text.

4203 F.Supp. at page 251; see also page 25%, last ful! paragraph.

ee Bes

batty sees So Banta Bllon

15

or centrifugal force) is then atomized: under circum-

stances in which electrostatic forces either predominate,

or form a significant factor.”

[1] In its opinion, the court requested counsel to submit

an appropriate decree. Drafts were presented by both sides.

In addition to the normal differences in language of two

persons expressing the same general idea, there was a

muterial difference in the substantive approach to the draft-

ing of the injunctive provisions. Plaintiff in effect sought

to embody by reference the patenis in suit, and the court’s

opinion with respect thereto. Defendants insisted that

under F’.R.Civ.P. 65(d), the injunctive portion of the de-

cree must “describe in reasonable detail, and not by refer-

ence to the complaint or other document, the act or acts

sought to be restrained * * *”. With this the court ulti-

mately agreed.

Further difficuity wes experienced in framing the lan-

guage of the injunctive paragraph, in that all the devices

currently used by piaintiff’s licensees under the patents,

and all the accused devices, used metal atomizing “heads”

which were directly charged. Defendants sought to have

the “process” portions of the injunction limited (among

other things) to any process in which an electrical potential

is created at the edge of the atomizing head by applying

voltage “directly” to said atomizing head. The court re-

fused to embody this limitation.'

5 Hearing of May 4, 1962, page 12. While reference to the head

being “charged” might be subject to improvement, neither side

had difficulty in understanding that in eliminating the word

” from the reference to the electrical potential created at

the edge of the atomizing head, the court was including any method

by which this could be effected—directly to metallic head through

a condu shaft; by roller contact to an insulated head; by in-

duction, or by prayer [ante-dating the School Prayer cases, but

not in conflict therewith, since no governmental agency, Federal,

state or inunicipal, is directly or indirectly involved].

The resultant paragraph 19 of the decree reads as fol-

lows:

“19. Defendant, Ionic, including its officers, agents,

servants, employees and attorneys, and those persons

in active concert or participation with them, and each

of them, is enjoined from:

“(a) Making, using or selling the apparatus de-

scribed, respectively, in this cause as ‘Model 12,’ ‘Model

50’ and ‘Model M-50,’ or equivalents thereof, during

the life of any of United States Letters Patent No.

2,685,536, No. 2,794,417, No. 2,893,893 and No. 2,893,894,

and making, using or selling the apparatus described,

respectively, in this cause as ‘Model 50’ and ‘Model

M-50,’ or equivalents thereof, during the life of United

States Letters Patent No. Re. 24,602.

“(b) Practicing the electrostatic spray coating proc-

ess which is performed in the use of the apparatus

described, respectively, in this cause as ‘Model 12,’

‘Mode! 50,’ and ‘Model M-50’ or equivalents, including

any process, (1) in which liquid coating material is

advanced in a thin film to the edge of an atomizing

head, an electrical potential is created at said edge by

applying voltage to said atomizing head, said electrical

potential being sufficient to create an electrostatic field

between said atomizing head and the objects to be

coated of sufficient strength to atomize, disperse and

deposit the liquid coating material on the articles to

be coated; or, (2) any process in which liquid coating

material is advanced in a thin film to the edge of an

atomizing head, an electrical potential is created at

said edge by applying voltage to said atomizing head,

said electrical potential being sufficient to create an

electrostatic field between said atomizing head and the

objects to be coated of suiicient strength to disperse

and deposit the liquid coating material on articles to

be coated and atomizing liquid coating material at the

point of highest concentration of the lines of force in

the electrostatic field, during the life of any United

States Letters Patent No. 2,685,536, No. 2,794,417, No.

2,893,893 and No. 2,893,894.

“(c) Actively inducing others to perform, or con-

tributing to the performance by others of, any of the

acts enjoined in subparagraphs (a) and (b) immedi-

ately above.’

The decree of the ceurt, including the injunctive pro-

visions of paragraph 19, was appealed and was affirmed

in Ransburg Electro-Coating Corp. v. Proctor Electric

Company, Inc. and Ionic Electrostatic Corporation, 4 Cir.

1963, 317 F.2d 302.

Defendant, while admitting that the provisions of the

decree are binding, and that the question of validity, both

of the patents in suit and of the injunctive provisions of

the decree therein, may not be raised by collateral attack,

does in substance question the propriety of the injunctive

provisions, and, on the matter of damages, seeks to show

that the accused devices, if construed as contravening the

court’s decree, would fall within the prior art.’

6 Paragraph (a) is not involved, except as the devices in question

are “equivalents” of those of plaintiff. The emphasis herein has

rather been upon the infringement of the process portions of para-

graph (b), defendant conceding that the contributory infringe-

ment provisions of (c) would make it liable, if the accused processes

fall within paragraph (b).

7 Defendant has been as versatile in its shifting of counsel as it

has been in its proliferation of processes. Original counsel were

— for the appeal. Appeal counsel appeared in the first phases

f the contempt proceedings but thereafter withdrew, whether vol-

untarily or by request is not known and in any event is immaterial.

Their tenure was not of sufficient length or character for the court

to have adequate opportunity to appraise them. The court does

have great respect for original trial and present counsel for de-

fendant, and for plaintiff’s counsel, who have continued without

change throughout all stages.

18

The Accused Processes.

In considering the processes employed by the accused

devices, particular importance must be paid to at least two

aspects of the language of Paragraph 19(b) of the decree.

First, the process thereby enjoined is an “electrostatic

spray coating process”, not simply an electrostatic atomiz-

ing process. Secondly,® while (b)(1) relates to a process

in which the electrical potential created at the atomizing

head is sufficient to create an electrostatic field between the

atomizing head and the objects to Be coated of sufficient

strength to “atomize, disperse and deposit” the liquid coat-

ing material, (b)(2) requires the field only to be of suffi-

cient strength to disperse and deposit the liquid coating

material, and that the liquid coating material be atomized

[by any means] at the point of highest concentration of

the lines of force in the electrostatic field.

The accused processes are practiced through the use of

Ionic Model 10 hand gun, Ionic Model 25 and Ionic Model

30. Although a word description is necessary, diagrams of

these three devices were introduced into evidence as Plain-

tiff’s Exhibits 9, 7 and 8 respectively, and are attached as

Appendix A. On the diagrams, the metal portions of the

models are indicated by heavy oblique lines.®

8 While the difference will be obvious to one who has closely fol-

lowed the primary case, the gilding of the Jily may be excused as

to others, who may think of the lily primarily as a more expensive

and less edible variety of the onion family.

- 9QOn the diagram (Plaintiff’s Exhibit 9) forming part of Appen-

dix A, the head of the Model 10 is shown as metal. The current

Model 10 is apparently furnished with a plastic head, although

this is interchangeable with metal heads.

The Model 25 has a metal head.

The Model 30 has a plastic head.

The functional descriptive notations on the diagrams of the

Models 25 and 30; e. g. “high voltage grid for charging mechani-

cally pre-atomized * * * materials to facilitate electrostatic deposi-

tion”, “point of highest field intensity” and “no contact with

19

In each of the devices the head is mounted on the meta!

shaft of a metal air motor which, with the head, is insulated

from ground.” Either the metal motor, or some other

metal element of each device is connected to the high-

voltage source (“power pack”). In some instances this

connection is established through an electrical resistance

provided for safety purposes.

Model 10.

This device is intended to be held in the hands of an

operator during use. It has a tubular handle of insulating

material, about two inches in diameter and three feet in

length, at one end of which the atomizer is mounted. In

some devices, the handle is straight, while in others it is

bent adjacent the atomizer.

The handle completely houses the air motor, but the rotat-

ing head, which has a diameter of about 1% inches, projects

from the end of the handle. The paint to be sprayed, and

the air for operating the motor are supplied by passages

extending through the long handle. A high voltage lead

from the power pack also extends through the handle and

has its front end connected to the metal motor body through

an electrical resistance.

In at least some early Model 10 devices, the cup-like

head?! was of metal and was directly connected to the high-

voltage source through the motor shaft and the lead con-

tained within the handle. The head was thus directly

charged, and defendant does not seriously contend that

this is not the equivalent of its old Model 12, and an

atomizer or paint supply” are defendant’s self-serving characteriza-

tions and are not to be considered as factual.

10 The importance of this feature is later discussed.

11 None of the accused devices has a flat disc head, such as was

discussed in the principal case.

infringement; and to the extent, if any,!? to which sold

after the decree, a contempt.

According to the Ionic instructional manual, the power

pack supplied with the Modei 10 has three output terminals

respectively providing voltages of 15,100, 20,100, and 27,600.

Model 25.

This model is adapted to be mounted on a stationary sup-

port for use in painting articles carried past it by a con-

veyor.. The metal air motor, which is not enclosed, is

mounted on the end of an elongated insulator, and the cup-

like head is mounted in the forwardly projecting end of

the motor-shaft. Behind the motor, the long insulator bears

a forwardly flaring conical member of insulating material

the rim of which is about five inches in diameter and laced

with a fine wire, which is connected to the high-voltage

source. The Model 25 is regularly sold with a metal head

about 134 inches in diameter.

Defendant in its literature suggests that the head of the

Model 25 may be spaced four inches from the work and

that in most instances the potential applied to the wire lac-

ing be 90,000 volts.

In defendant’s Bulletin 100 relating to the Model 257° it

12 During the course of the contempt hearings, defendant’s coun-

sel undertook to supply the date upon which it was contended that

sale of the Model 10 with a metal head was discontinued. This

was not done.

There has been no testimony as to any effort by defendant to

recall any of the metal-headed Model 10’s sold before the decree,

or to endeavor to require purchasers before the passage of the

decree thereafter to remove the metal heads. For the reasons

hereafter tc be stated, the court does not mean to imply that sub-

stitution of plastic for metal heads would avoid infringement

and/or contempt.

18 Plaintiff’s Exhibit 50, page 5. Although it is stated that this

is for “precipitation” only, it is the required operational voltage

for the system.

21

is stated that the required operational voltage “may be

induced merely by an indirectly coupled electrostatic con-

centrator [presumably the wire lacing], or may be applied

directly to the head of the atomizer.” [Emphasis supplied].

Model 30.

This device, like the Model 25, is intended to be mounted

on a stationary support for use in coating articles conveyed

past it. Further like the Model 25, its exposed metal air

motor is mounted on an insulator. The Model 30 differs

from the Model 25 in that the wire lacing is replaced with

a head-surrounding, sharp-edged metal ring 14 inches in

diameter located about 234 inches rearwardly of the head-

rim and connected to the power pack. The head is of plastic

and about three inches in diameter.

For the Model 30, defendant suggests that the spacing

between head and work may be two inches and that in most

instances the voltage applied to the ring ve 90,000 volts.

Discussion.

Plaintiff contends that all three of defendant’s devices

are, and employ processes that are, infringing. Defendant

(except as to the Model 10 with a metal head) contends

that none of the devices is, or employs a process which is,

infringing, and that therefore there is no contempt. The

impact of the provisions of Paragraphs 19(b) (1) and 19(b)

(2) will have to be considered separately.

Paragraph 19(b) (1) of the decree— Field sufficient to

atomize, disperse and deposit.

Defendant seems to deny (1) the existence of a, field

between the head of the devices and the article. to be

painted ; and (2) if there be such a field, that it is sufficient

Sa al BA Sait ts ns ate a coi ta Se Ra SR a rie

22

(a) to atomize the liquid coating material, or (b) to dis-

perse it; and seems to aver (3) that deposition is not a true

function of the potential existing at the various heads.

With respect to the application of the provisions of sec-

tion (b) (1) of Paragraph 19 of the decree, the testimony

ranged from the highly theoretical to the pragmatically

practical.

On the theoretical side, defendant relied largely upon

the testimony of its expert, Dr. Seville Chapman.'* He had

made extensive study of the “geometry” of fields, and had

prepared two- and three-dimensional analogs of the

“fields” associated with the accused devices, using metal

heads’® on all three. His starting point was that really

there existed a universal field, and that this field was dis-

torted by the introduction of “anything” into it; the dis-

tortion being greater in the case of the introduction of a

man-made electrical “field”?® within it.

As to the Model 25 and the Model 30, and conceding that

for the purposes of the case it was satisfactory to speak

of a “field” with respect thereto, he testified that the

“field” was between the electrodes on those devices and the

work; and that there was really no field between the atom-

izing heads and the work; although he recognized that in

the case of metal heads they were charged simultaneously

14 Dr. Chapman impressed the court far more favorably than did

defendant’s experts in the main case, both as to competence and

fairness. He frankly admitted, however, that he had had no prac-

tical experience, or even acquaintance, with commercial electro-

static spray coating. His highly involved, and theoretical, approach

will become apparent in the course of this opinion.

15 He explained that it was impractical to use plastic heads in

these studies. If the results be accepted as establishing the con-

clusions he sought to draw, his comment that (except in one in-

stance) they would have been even less favorable to plaintiff if

plastic heads could have been used, appears reasonable.

16 Or “sub field” (%) or “sub-sub field” (?), ete.

fae th Se ad Oxy wl aS

eee fee

23

with the throwing of the switch creating the field between

the electrodes and the work; and that with respect to plastic

heads, they came to their fiela potential also simultane-

ously. In this concept, there were infinite lines of descend-

ing gradients between the electrodes (the highest potential,

or 100) and the work (0) ; the atomizing heads, as any other

intrusion into this field, being subjected to the gradient

associated with its position between the electrodes and the

work.

Dr. Chapman also recognized that in the ordinary (and

practically, necessary) coucept of the man-created field

associated with electrostatic coating of materials, the

“field” was created by all the elements present; a change

in any, would affect the geometry of the field. Although

there was one field “all over the place”, one could focus on

any particular part, and for convenience, or by way of

shorthand, reference could be made to the “field” between

the head and the work.'” In this context, between the head

and the work, the field at the head was at the highest inten-

sity of anywhere in that area, location or dimension.!®

Defendant’s devices are designed to be, and in fact are,

operated at high rotational speeds, in the order of 21,000

revolutions per minute. With the application of current

to the metal head of the Model 10, or indirectly to the

plastic head of a Model 10, the metal head of the Model 25,

and the plastic head of the Model 30, at least five forces

were operative, acting upon paint presented to the edge of

any -of the revolving heads. Of these, surface tension

tended to maintain the integrity of the paint, and to keep

it from disintegrating (“atomizing”), dispersing and de-

positing. Opposed to this were electrostatic, centrifugal,

17 Transcript, page 1155.

18 Transcript, page 1153.

sii ih ab Aa pa

aerodynamic and gravitaticnal forces. The paint therefore

could not be broken into droplets until one or more of

these opposing forces was sufficient to overcome surface

tension. Of these opposing forces, the electrostatic force

would tend to draw the paint into droplets, and to break

them off from the body of the paint. As the electrostatic

field is created between the head and the “work”, the gen-

eral tendency would be for the droplets so created to be

directed toward the work; moreover, such atomizing force

would impart an electrical charge to the droplet which

would direct it toward the work (dispersion and deposi-

tion). Such force, whatever it be, would not be eliminated

by the other existing forces.’® Centrifugal forces would

tend toward radial distribution of the formed drops, and

the aerodynamic or “drag” forces would tend toward tan-

gential dispersion. Gravity would be manifested in its

ordinary connotation of attraction toward the center mass

of the earth.

The asserted relationship of these forces was set forth

in an exhibit prepared by Dr. Chapman, reproduced here

as Appendix B, which was the subject of substantial direct

and cross-examination ‘and rebuttal testimony. Dr. Chap-

men at first took the position that these disruptive forces

were “additive”, and specifically that this was true of the

centrifugal and aerodynamic forces.” This was changed

promptly to the statement that their relationship was that

of “vectors”, not .rithmetical.?? He was insistent that elec-

trostatic forces ~suld not be responsible for a “primary”

drop”* smaller than 25 mils.

19 Transcript, page 1153.

20 Transcript, page 1069.

21 Transcript, page 1128.

22 Transcript, page 1129.

23 Although Dr. Chapman frequently referred to the “primary”

drop fermed by electrostatic atomization, through the pinching off

RT TN ee Ee eS eee

“hs

25

With the greatest respect for the testimony of defend-

ant’s expert, the court cannot accept it, particularly as to

his denial of the significance of the electrostatic forces.

1. Plaintiff’s expert pointed out with irrefutable logic

that

(a) As surface tension was the only force maintainirg

the integrity of the paint at the head of the atomizing de-

vice, any force exceeding surf :e tension would be suffi-

cient to overcome surface tension; therefore there could be

no cumulation.

(b) Electrostatic forces in fact produced droplets finer

than 25 mils.

(c) Since neither aerodynamic or centrifugal forces alone

would be able to overcome the surface tension associated

with the formation of drops of %o mils (Appendix B) none

should be formed, but Dr. Chapman testified that with the

aerodynamic and centrifugal forces available, something

under ten per cent of the drops produced would be as large

as 4 mils.2* The physical demonstrations showed the falsity

of this assumpticn.

of the “Mae West” waist, followed by “secondary” droplets, he

never amplified this. The inference that the court obtained was

that a number or series of such secondary drops could be formed,

and that they were smaller than the primary drops. If the primary

drops were electrostatically formed, and if the secondary drops

were the sequelae, they likewise would appear necessarily also to

be electrostatically formed. Whether they wou!d likewise carry a

“built-in” charge was nowhere directly discussed by parties or wit-

, nesses; although the fair implication is that, as plaintiff contended,

’ that as all atomization was electrostatic in nature, or that at least

»

electrostatic forces pleyed a significant part, these succeeding (or

secondary) particles would likewise carzy built-in charges.

24 Transcript, page 1134.

26

2. Dr. Chapman admitted that his exhibit (Appendix

B) had a margin of error of 1% pi-2-pi.25

_ 3. The physical exhibits (“zip strips”) clearly demon-

strated the difference in size of drops, at high rotational

speeds, with the field off and with the field on, the drops

being smaller in the latter case.

4. Plaintiff’s exhibits adequately established that the

fields variously present between the heads of the painting

devices and the work were adequate electrostatically to

atomize paint at 0 revolution per minute. As rotation does

not eliminate the electrostatic forces, and as surface ten-

sion was the only force maintaining the integrity of the

paint, the electrostatic force of itself would continue ade-

quate for atomization at least in the range down to below

10 mils and below that point would assist in “softening up”

the paint to be, or where acted upon by, another force or

forces. In any “ase the electrostatic forces either were of

sufficient strength to atomize, or predominated, or formed

a significant factor in the process.

The court therefore finds that on the preponderance of

the evidence, the electrical potential at the edge of the

atomizing head is sufficient to create an electrostatic field

between the atomizing head and the objects to be coated of

sufficient strength to atomize the paint. As the court also

finds in the following section that the electrical potential is

sufficient to create an electrostatic field between the atom-

25 A 400 percent (1.57 to 6.28) margin of errsr; many times

that permitted of District Judges.

It would perhaps not be amiss here to dispose of the battle of

similes. Dr. Chapman asserted that the atomization significance of

the electrostatic field at 21,000 r.p.m. was equivalent to the squash-

ing effect of the feather in the cap of an elephant when it stepped

on a hen egg. Plaintiff responded with the story of the physicist

who “conclusively” proved that the anatomy of the bumble bee

would not permit it to fly.

27

izing head and the work of sufficient strength to disperse

and deposit the paint, a fortiori these provisions of Pera-

graph 19(b) (1) of the decree are met.

Paragraph 19(b) (2) of the decree—Field sufficient to

disperse and deposit; atomization occurring at the point of

highest concentration of the lines of foree in the electro-

statie fleta,

These factors mey conveniently be considered in reverse

order:

(1) “atomizing liquid coating material at the point of

highest concentration of the lines of force in the electro-

static field * * *.” There is no dispute but that atomization,

however produced, occurs at (ox immediately adjacent to)*®

the edge or rim of the head. Also, there is no dispute that

the highest concentration of lines of force, between the

head and the work, is at the head. The dispute as argued -

by the parties, is as to whether there is a “eld” between

the head and the work, cr whether the “field” to which

reference is made in the above quotation is the field be-

tween the electrode and the work. The court is clearly of

the opinion, and finds, that within the language of Para-

graph 19(b) (2) of the injunctive decree, there is a “field”

between the atomizing head and the work, and that the

highest concentration of lines of force within this field is

at the atomizing head, where atomization occurs.

A number of considerations lead to this finding:

1. The main argument made by defendant is that the

field must exist between (a) the forward edge of the motor,

in the Model 10 with a plastic head; (b) the wire lacing of

the Model 25; (c) the metal ring of the Model 30—and the

26 Under any theory, the drops are formed as the paint leaves

the head.

28

work. This has in part been dealt with in connection with

section (b) (1) of Paragraph 19 of the decree, where it

was pointed out that for convenience or by way of short-

hand, one could refer to the “field” between the head and

the work. This seems almost inevitable, because, on the

“universal field” approach, there would be no “field” be-

tween any electrode and any work, but only a distortion of

the universal field. So the electrode, the line transformer,

the power house generator, the earth, moon, sun and stars

are significant only as distortions in or of this universal

field.

~The fact that metal atomizing heads are charged and

plastic heads ccine to their field potential, simultarcously

with the energizing of the electrode (as established by all

the evidence, and as manifested by the necessity that the

head be insulated from ground—see footnote 10 and text),

and that the paint contacts the heads and not the electrodes,

certainly justifies considering the gradient potential be-

tween the head and the work as a field.

Moreover, the context in which the word “field” is used in

section (b) (2) of Paragraph 19 of the decree practically

requires this construction. That section refers to an elec-

trical potential applied to the edge of an atomizing; head,

said electrical potential being sufficient to create “an elec-

trostatic field” between the head and the work of sufficient

strength to disperse and deposit liquid coating material,

and “atomizing liquid coating material at the point of high-

est concentration of the lines of force in the electrostatic

field * * *” (Empiuasis supplied). “The electrostatic field”

is clearly the only electrostatic field previously mentioned

—the one between the head and the work.

2. As mentioned above, defendant’s Bulletin 100 relat-

ing to the Model 25, states that the required operational

29

voltage “may be induced merely by an indirectly coupled

electrostatic concentrator, or may be applied directly to the

head of the atomizer.” Aside from an apparent concession

of equivalence, which would be a direct violation of the

injunction, this langi.age?’ must mean that there is a field

between the atomizing head and the work; otherwise, the

Model 25 would be inoperative as would be the Model 10,

particularly with the metal head.

3. While a concession, or even a direct assertion, by a

party on another occasion cannot make true that which in

fact is false, it is significant as ©> that party’s understand-

ing. When an assertion is made to secure the issuance of a

patent, and denied when the party is being sued for in-

fringement of another patent, perhaps the highest degree

of significance is reached.

Defendant’s president is the patentee of United States

Patent 3,051,394 for “Electrostatic Spray Coating Appa-

ratus and Method,” issued on August 28, 1962, on a division

of an application filed December 1, 1955.

The specification refers to a spray or atomizing gun

surrounded by a discharge electrode.

“Here, there is no direct contact between the dis-

charge electrode and the head end of the spray gun,

the head end being charged by induction.’?®

2 * * *

“In this invention, a source of electrostatic high

potential, having one terminal grounded and its oppo-

site terminal surrounding the atomizing head, creates

a strong electrostatic field at the head by means of

induction. The field extends between the head and the

article to be coated, the article being grounded. The

force of this field transforms the atomized coating

27 Significant aiso on the question of the measure of damages.

28 Column 2, lines 5$-62.

30

material into a spray of charged particles and creates

an attraction which pulls the spray toward the

grounded article.’”®

The specification further recites that the discharge elec-

trode “may be adjusted forwardly and rearwardly relative

to the head end of the gun in order to vary the degree of

induction at the head end of the gun * * *”8°

In United States Patent 3,001,890 to defendant’s presi-

dent, for “Electrostatic Deposition,” issued September 26,

1951 on application filed July 27, 1956, in the more particu-

larly described process the high voltage source is led to the

head end of a spray gun and to an insulated rotating dise

“so as to raise same to a sufficiently high potential to charge

the liquid supptied thereto and discharged therefrom.”

“Also, if desired, the spray gun may be grounded and the

high voltage may be applied directly to a grid ring or any

shape of electrode which is disposed so as to charge the

dise which is insulated. In this instance, the dise will also

be at high potential due to the capacity effect between the

grid ring or electrode and the disc itself.’*?

In another arrangement of electrical circuitry in which

a high voltage source is connected to charge the nozzle and

the dise, or at any time when the disc “ts charged either

directly or indirectly” and the work is grounded directly or

indirectly, it is stated that “there is an electrostatic field

between the atomizer and the object * * *”*

This leaves for consideration the question of whether

26 Column 3, lines 54-62; emphasis supplied.

30 Column 6, lines 9-11.

31 Column 3, lines 38-40.

32 Column 3, line 74; column 4, line 4.

33 Column 4, lines 12-16; emphasis supplied.

31

the field between the head and the work is sufficient (a) to

disperse and (b) to deposit, the paint.

It is quite clear that if the formed particles acquire a

charge at formation, or later acquire a charge in space, the

charge is similar (positive or negative in each case), and

as like charges tend to repel, the necessary effect is to cause

a separation, or dispersal. In fact Dr. Chapman, in criticiz-

ing the testimony on behalf of plaintiff that when the field

was on, the spot sizes deposited tended to be smaller than

when the field was off (plaintiff plausibly contending that

the particles were originally smaller in size because of

electrostatic atomization, or because of the effect of elec-

trostatic forces) explained that with the field on, the larger

spots™* tended to repel, rather than agglomerate with, the

smaller spots.

The court has never had explained to it how paint parti-

cles, similarly, and so charged, that they were attracted

te the work, can fail to exhibit both repulsion and disper-

sion. It is true that with regard te the work, the dispersion

which would be effected by purely centrifugal or aerody-

namic atomization would be far wider than that associated

with electrostatic atomization. With purely centrifugal or

aerudynamic atomization, the amount of paint deposited

therefore would be nominai. But in electrostatic atomiza-

tion, there is both the attraction of each particle toward

the work, and a repulsion against coalescense, which rep-

resent the optimum attainable.

If the contention that the paint particles acquired their

charge (presumably by ion bombardment) only after for-

34 Again indicating the unreliability of Appendix P, in that it

represented at best a tendency, as distinguished from an accurate

determination, or even a reliable forecast. See footnote 23, and

associated text.

32

mation, were sound, elimination of the “field” between the

head and the work, while preserving the “field” between

electrode and work, should not reduce the efficiency of

deposition; while elimination of the ion bombardment

“field” between the electrode and the work, while maintain-

ing the “field” (which would then uncontrovertably be a

“field”) between the head and the work, should materially

reduce that efficiency. Actual tests*® showed the contrary.

Eliminating the “field” between head and work by ground-

ing the motor reduced the deposition efficiency by over 80

percent in the case of metal heads and by over 70 percent

in the case of plastic heads. Eliminating the ion bombard-

ment “field” did not lower deposition efficiency, but if any-

thing slightly increased it.

These data, along with the specifications in United

States Patents Nos. 3,051,394 and 3,001,890, supra, clearly

establish, and the court finds, that in the accused devices,

whether with meta! or plastic heads, the potential thereto

applied is sufficient to create an electrostatic field between

the atomizing head and the work of sufficient strength to

disperse and deposit the paint on the work, and that the

paint is atomized at the point of highest concentration of

the lines of force in the electrostatic field, and that the in-

junctive provisions of section (b) (2) of Paragraph 19 of

the decree have been violated.*®

35 Plaintiff’s exhibit 44.

36 Defendant was permitted to offer what it claimed to be prior

art patents after an express disclaimer that there was any purpose

to invalidate the patents in suit, but only to “limit the possible in-

terpretation which may be given to the claims or the language of

the injunction * * *” (Transcript, page 1319). Much of this prior

art had been expressly considered in the main case and rejected as

non-anticipatory, and the balance is no more pertinent. The finding

that the accused devices and processes violate the injunction is the

equivalent of a finding of infringement; and if they infringe, they

cannot be following the non-anticipatory prior art, for “that which

33

By way perhaps of ove: caution, but as emphasis the

court points out that defendant admits that Model 10 with

a metal head is an infringement; and defendant’s opera-

tional bulletin with respect to Model 25 establishes that it

is a process equivalent to those of plaintiff held valid in

the original cage.

Judgment will accordingly be entered in favor of plaintiff

on its motion for contempt of the court’s decree herein.

Damages.

In the original case, the court found that a strong

case had been made for the allowance of treble damages

under 36 U.S.C. § 284, and reasonable attorney’s fees under

35 U.S.C. § 286, and that the question was a close one, but

in its discretion denied such allowance.*’ While, as indi-

cated, the court in general is not inclined to award what

are, in patent cases, in the nature of punitive damages, it

feels that the facts in this case call, if indeed they do not

cry, for such allowance. ,

The Model 10 with a metal head is an admitted in-

fringement.

The starting point for the remaining accused devices is

the court’s admonition in the previous case that an ar-

propriation 2? a patentee’s idea is an infringement, even

if the accrsed device is an impairment of the invention.**

In this case there has been a further studied effori to

appropriate plaintiff’s invention but to avoid literal in-

fringement by a deliberate degradaticn. As frankly stated:

infringes, if later, would anticipate, if earlier.” (Marshall v. Proc-

ter & Gamble Mfg. Co., D.Md. 1962, 210 ae 619, 633, citing

Peters v. Active Mfg. Co., 1889, 129 U.S. 530, 537, 9 S.Ct: 389, 392,

32 L.Ed. 738).

37 203 F.Supp. at pages 258-259.

38 203 F.Supp. at page 258; and cases cited.

34

“The head of the centrifugal atomizer is the most

convenient and practical member to use as the charging

electrode to create an electrostatic field for depositing

paint because the field created begins and ends at the

head and work respectively and is strongest for the

amount of voltage applied and therefore most efficient.

The head was thus charged in the Models 12, 50 and

M-50 devices, but this unfortunately was held to con-

stitute an infringement at the triai.

“To place the centrifugal atomizer head elsewhere

with relation to the field presents a problem because it

-decreases the efficiency of the electrostatic system

* @ #9939 ‘

Moreover, defendant haa deliberately sought to postpone

the evil day of reckoning. Defendant’s original trial counsel

expressed a desire to have the new devices promptly pre-

sented to this court for determination as to infringement,

vel non, and violation of the injunction. This was seriously

impeded by defendant, which used a change of counsel, and

then the withdrawal of discretion on the part of such coun-

sel, particularly with respect to making the accused devices

available, directly by purchase by plaintiff, or indirectly

through examination at the premises of purchasers from

defendant, as a delaying device, as an obstacle.

As to the contention that there was no field between the

atomizing heads ard the work, and that the charge, if any,

on the heads, was insufficient not only for atomization, but

for dispersion and/or deposition, patents Nos. 3,001,890

and 3,051,394 to defendant’s president have previously been

cited. While it is true that these do not establish the factual

accuracy of the disclosures therein, they clearly establish

that defendant could not have believed, at the time of the

development of the accused devices, that they differed

from plaintiff’s devices as contended in the contempt pro-

89 Defendant’s brief, page 11.

35

ceedings—particularly as to any question as to the exist-

ence of a charge on the atomizing head; as to the existence

of a field between the head and the work; and as to the

contention that the atomized paint received its charge only

between the head and the work.

Finally, defendant’s contention that it reiied upon the

advice of counsel, instead of showing its good faith, is

under the facts a further instance of double dealing.”

Here, defendant purportedly sought the advice of one

counsel as to the Model 30 and another as to the Model 25.*"

In connection with the rendition of such opinions, it was

represented with respect to the Model 30 that “only the

large remote grid ring was charged” and that as to the

Model 25 that the charge was “carried only to the sharp

* * * to the sharp edged remote grid”; and in each case

the attorney was told that the coating material was “me-

chanically” atomized or pre-atomized. It should also be

noted that the opinion with respect to the Model 25 was

obtained five days before the decree herein in which the

court refused to limit the injunction to heads directly

charged.

Moreover, the opinions were not sought as to the validity

of devices (or processes) to be put upon the market, but

only after they had been marketed.

40 The court does not mean to intimate that there is any impro-

priety in seeking, and relying upon, the advice of counsel, in an

effort to be forehanded if any charge of wilful infringement is

later made. But the court considers that there is a close analogy

between the rules applicable to such cases, and those in which the

advice of counsel is relied upon eas a defense to an action for

malicious prosecution. In the latter, there must be a full and frank

disclosure to counsel of all facts that the client knows, or by rea-

sonable diligence could discover; and the advice of consel must

have been sought with the intent of relying upon it.

41 Defendant's exhibits 36, 31.

42 Transcript, page 1311.

43 Transcript, page 1313.

DINE ME Ip at :

36

Plaintiff is accordingly entitled to (i) a judgment that

defendant is in contempt of sections (b) (1) and (b) (2)

of Paragraph 19 of the decree; (ii) damages for the in-

fringement of plaintiff’s patents, which damages will be

trebled under 35 U.S.C. § 284; and (iii) reasonable at-

torney’s fees undex 25 U.S.C. § 285. The parties are directed

to submit within ten days a decree satisfactory as to form,

or if they are unable to do so, to submit proposed forms of

decrees.

APPENDIX A

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38

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40

APPENDIX B

FORCZS ON PAINT AT EDGE OF ROTATING DISC

The following formulas represent the forces acting on a droplet about the time

it is “atomized”. I give results in terms of force ner unit weight (F/mg) for the

droplet to facilitate comparison. I have arbitrarily called drops large, medium,

medium small and small. I have arbitrarily chosen certain parameters as indi-

cated.

f = $650 revolutions/second = 21,000 revolutions/minute

R= radius of disc = 4cm = 1.6 inch

v = 2efR = 8,800 cm/sec

s = density of paint = 1 gram/cm! (approximate)

D = density of air = 0.0012 gram/cm? .

= surface tension of paint = 25 dynes/cm (approximate)

Emax = sparking field = 30,000 volts/em (maximum)

g = acceleration of gravity = 32 ft/sec? = 9.8 meters/sec?

r = radius of droplet

Cp= drag coefficient = 0.5 for big and medium droplets =

€o = permittivity of space = 8.854 x 10-12 farad/meter

1.0 for small

FORCE PER UNIT WEIGHT F/mg

Large Medium - Medium Small

xr = 0.1 cm r=0.0l1cm Small r = 0.001 cm

= 80 mils = 8 mils r=0.005cm = 58 mils

dia. dia. = 4 mils dia. dia.

Surface Tension

Force Required _3! 3.8 380 1520 38,000

per unit weight 2r? s g

Gravity 1 1 1 : 1 1

: “a0 :

Electrostatic 2 eo(Emaz) 12 120 240 1,200

2rs@

- D 2

I oe 180 1,800 4,300 36,000

8rsg

Centrifugal v?/R¢ 20,000 20,000 20,000 20,000

Seville Chapman Oct. 1, 1963

DEFENDANT'S CONTEMPT EXHIBIT NO. 24

CASE NO. 10181

ADMITTED IN EVIDENCE OCT 16 1963

41

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MARYLAND

RANSBURG ELECTRO-COATING CORP., |

Plaintiff,

vs. CIVIL ACTION

; NO. 10181

IONIC ELECTROSTATIC CORPORATION,

Defendant. |

Contempt Decree

This cause came on to be heard on the petition of plaintiff

Ransburg Electro-Coating Corp., filed September 28, 1962,

to have this Court issue an order directed to defendant

Tonic Electrostatic Corpuration, that it appear and show

cause why it should not be held in contempt of this Court,

and that, failing such showing, defendant Ionic Electro-

static Corporation be punished for civil contempt for violat-

ing the :ajunction provisions of the judgment of this Court

entered May 7, 1962, in favor of the plaintiff in this cause,

and ordered to account for and pay damages to the plain-

tiff, together with the profits defendant derived from its

acts committed in violation of said judgment, and with the

expenses and costs, including attorneys’ fees, incident to

the brirging and prosecution of the contempt proceeding.

Upon consideration of the said petition and accompany-

ing affidavit in support of the allegations thereof; upon

consideration of the answer to plaintiff’s petition filed

- October 18, 1962, by defendant Ionic Electrostatic Corpora-

tion, pursuant to this Court’s order of September 28, 1962,

that the defendant Ionic Electrostatic Corporation show

cause within twenty days from that date why the plaintiff's

petition should not be granted; upon consideration of the

42

motion filed September 11, 1963, by plaintiff to amend its

petition for contempt order to include a prayer that the

damages be increased to three times the amount assessed;

upon preliminary hearings had on November 27, 1962, and

June 25, 1963; upon the presentation of evidence by both

plaintiff and defendant in eleven days of additional hear-

ings, the filing of briefs and a full day of oral argument;

and it appearing to the Court, and the Court having filed

an opinion on May 19, 1965, finding, inter alia, (1) that said

defendant Ionic Electrostatic Corporation is in contempt

of this Court, in this cause, by having made, used, and sold

devices identified as Ionic “Model 10”, “Model 25”, and

“Model 30”, by having actively induced others to use said

devices and to practice the processes through the use of

said devices, and by having contributed to said use of said

devices and processes by others, al] subsequent to, and in

violation of, the injxnction provisions of the judgment of

this Court entered in this cause May 7, 1962; and (2) that

the acts of said def2ndant constituting said contempt were

in deliberate and wanton disregard of the rights of plain-

tiff, and were carried out in such bad faith that an award

of increased damages and attorneys’ fees is appropriate in

this cause;

IT IS HEREBY ORDERED, ADJUDGED, AND DE-

CREED:

1. That the said Ionic Electrostatic Corporation is in

contempt of this Court, having acted in wanton violation

of sections (b)(1), (b)(2) and (c) of Paragraph 19 of the

permanent injunction set out in the decree of this Court

entered herein on May 7, 1962, through its manufacture,

use and sale of devices identified herein as Ionic “Model

10”, “Model 25”, and “Model 30” and by having actively

induced others to use said devices and to practice the proc-

esses through the use of said devices, and by having con-

43

tributed to the said use of said devices and practices by

others, subsequent to the date of the service of the said

permanent injunction upon the said defendant herein.

2. That plaintiff recover from defendant Ionic Electro-

static Corporation damages for infringement of United

States Letters Patents No. 2,685,536, No. 2,794,417, No.

2,893,893, and No. 2,893,894, pursuant to Title 35 U.S.C.

Section 284, by reason of defendant Ionic Electrostatic Cor-

poration making, using, and selling in the United States,

since the date of service upon it of the aforesaid decree

and injunction, one or more of the aforesaid “Model 10”,

“Model 25”, and “Model 30” coating devices, and by having

actively induced others to use said devices and to practice

the processes through the use of said devices, and by hav-

ing contributed to the said use of said devices and practices

by others, which damages will be trebled under 35 U.S.C.

section 284.

3. That the Court, having previously appointed on June

25, 1963, Samuel J. Fisher as a Special Master in this

cause to ascertain and report to the Court the amount of

damages adequate to compensate the plaintiff, together

with interest thereon, for infringement of said patents

found to exist by the judgment of May 7, 1962, hereby refers

the contempt portion of this cause to said Special Master

to take and state an account, separately, of the amount of

damages adequate to compensate the plaintiff for said acts

of infringement constituting said contempt, together with

interest thereon.

4. That the amount of said damages for the acts of

infringement constituting said contempt be increased to

three times the amount so ascertained and reported to the

Court by said Special Master, under 35 U.S.C. Section 284.

44

5. That the action of the Special Master in the contempt

portion of this cause shall be deferred until after the time

for appeal herefrom has expired, if no appeal is taken, or

until the return of the mandate from the Court of Appeals,

if an appeal herefrom should be taken.

6. That the plaintiff recover from defendant Ionic Elec-

trostatic Corporation its costs, together with reasonable

attorneys’ fees, under 35 U.S.C. Section 285.

7. That the parties hereto having, at the direction of

the Court, submitted proposed forms of decrees, said forms

are hereby denied by the Court except to the extent incor-

porated herein, and the parties are hereby given exceptions

to the extent that their proposed forms have not been incor-

porated herein by the Court.

/s/ BR. Dorsey WatxK'Ns

United States District Judge.

June 22, 1965.

45

RANSBURG ELECTRO-COATING CORPORATION,

a corporation, Plaintiff,

Vv.

PROCTOR ELECTRIC COMPANY, Inc.

& corporation, and

IONIC ELECTROSTATIC CORPORATION,

@ corporation, Defendants.

Giv. A. No. 10181.

United States District Court

D. Maryland.

March 15, 1962.

R. DORSEY WATKINS, District Judge.

This case involves claims by plaintiff for infringement

of patents relating to electrostatic spray-coating systems,

and counterclaims by defendants for declarations that

said patents are invaiid, and are not infringed. The actual

devices developed by plaintiff and defendants are used

solely in the field of electrostatic painting, and except with

respect to a discussion of the prior art, only that field need

be considere4,

Background-—Parties.

Plaintiff Ransburg Electro-Coating Corporation (plain-

tiff, or Ransburg) is an Indiana corporation organized on

January 1, 1948, with its principai office and place of busi-

~ ness in Indianapolis, Indiana. It was preceded in business

by a partnership of Harper J. Ransburg and his sons Har-

old, Gregg and Edwin. Plaintiff owns the patents in suit,

relating to methods and apparatus for electrostatic spray

painting.

IOAN ~*

46

Defendant Proctor Electric Company, Inc. (Proctor) is

a Pennsylvania corporation with a regular place of busi-

ness in Baltimore, Maryland. It is a purchaser and user of

certain alleged infringing devices, its acts having occurred

in the District of Maryland.

Defendant Tonic Electrostatic Corporation (Ionic) is a

New Jersey corporation. It was organized in May 1957

by John Sedlacsik, Sr., and his son, John Sedlacsik, Jr.,

doing business in the manufacture and sale of various types

of electrical equipment. Ionic markets airless electrostatic

spray-coating eouipment. It has no place of business within

the District of Maryland, but voluntarily entered its ap-

pearance, answered the original complaint, and has con-

ducted the defense for both defendants.

Background—Painting.

In addition to the use of the familiar paint brush, many

articles have for a number of years been, and are being,

satisfactorily painted by dipping, roller coating, flow coat-

ing, and spraying. We are concerned only with the prob-

lems associated with spray-coating.

For many years, painting has been done with compressed

air spray guns. Paint is brought to a head or nozzle and

subjected to compressed air which “atomizes” the paint

and projects or propels the atomized particles for deposi-

tion up the articles to be painted. A skilled operator can

closely control the size of the particles, and produce an

excellent finished product. However, some of the particles

fall short of the mark; and as the air must escape, a sub-

stantial volume of paint is carried away as “overspray”

from, and misses, the target. Moreover, where the article

1The word “atomize” is customarily used to describe the frag-

mented particles of paint created by the flow of air.

47

to be coated is not solid and flat, the method is still less

efficient. Health and safety considerations require the use

of spray-booths, exhaust systems, and cften, paint-recovery

apparatus.

Paint losses in the use of compressed air spray guns

may amount to sixty per cent, more or less, of the paint

sprayed.

The Ransburg partnership had developed, and since 1944

had been marketing,? a patented improvement on the old

compressed-air spray-gun method.- This process was and

is generally referred to as the “No. 1 Process.” A conven-

tional compressed air spray gun was used, but after atomi-

zation the atomized particles were directed toward and

exposed to an electrostatic field maintained between a fine

wire electrode and the articles to be painted, which were

maintained at ground potential. To the extent that such

particles received an electrical charge, they would be

“urged” by electrostatic forces toward deposition on the

work. The system represented a decided improvement over

the compressed air gun, and effected a saving of about

fifty per cent of the paint previously lost. However, not

all the particles “atomized” received a charge, or a suffi-

cient charge, to guide them to the work; and in some in-

stances the force imparted in atomization, or by the current

of air, was sufficient to result in overspray. Equipment

such as spray-booths, exhaust systems, and paint recovery

apparatus were still necessary.

Thought was given to methods of controlling or elimi-

nating the current of air. The impetus toward the methods

and apparatus in suit was adventitious. An exhibit of the

No. 1 System was being prepared, consisting of a platform

2The system was licensed to several hundred users. Many of

the licenses are still in effect.

48

on which was mounted the electrostatic spray grid, the

spray gun, a spray booth, and the high voltage supply to

the grid. An employee of the Ransburg partnership was

standing on the platform, ironically enough preparing to

put the finishing touches on the booth with a conventional

paint orush, when he noticed that tne paint was leaving the

bristles in a fine spray, and was being depesited on an

opposed grounded metal surface. This was reported to the

partnership, and an analysis disclosed that the painter was

standing on a wooden platform, holding the brush near the

charged grid, and the paint on the brush had been subjected

to the field between the grid and the grounded metal. This

suggested an airless atomization and deposition, and led

to further work resulting in the patents in suit.®

The Patents in Suit.

In the original complaint, infringement of four patents

was alleged. Thereafter, leave was granted to file a sup-

plemental complaint charging defendants with infringement

of two newly issued patents, and substituting a reissue pat-

ent for an originally issued one. Defendants counterclaimed

for declarations of invalidity and noninfringement as to all

these patents. Plaintiff withdrew charges of infringement

of Patent No. 2,658,472, and stated for the record in open

court that no suits on this patent would be brought, or

threats of suit be made against the defendants or any claim-

ing through or under them with respect to any apparatus

then in use by either defendant. There is no evidence, or

proffer with respect thereto, as to the validity vel non of

3 Some of the drawings in the first two patents reflect the effort

to reproduce this situation, substituting for the bristles, snaced

apertuxes with means for replenishing the paint as used.

49

Patent No. 2,658,472, and no declaration with respect to

validity will be entered in this case.‘

The patents presently in suit, all owned by plaintiff, are:

Patent No. Patentee Issued

2,685,536 W.A. Starkey and E.M. Ransburg Aug. 3, 1954

2,794,417 W.A. Starkey and E.M. Ransburg June 4, 1957

2,893,893 W. W. Crouse July 7, 1959

2,893,894 E. M. Ransburg July 7, 1959

Re.24,602 C. C. Simmons Feb. 17, 1959

(a reissue of original patent 2,808,-

343, issued Oct. 1, 1957).

Of these, the following claims are:

Typical

Patent No. Claims Allegedly Infringed Claims

2,685,536 1-11 4, 10

2,794,417 3-4 3, 4

2,893,893 1, 2, 3,5, 6,8-—10 2,9

2,893,894 1-8 AS

Re.24,602 1, 6-10, 12, 13, 15-21 8, 13, 15, 20

For reading convenience, the “typical claims” are printed

as Appendix A.

Plaintiff claims that the patents in suit disclose methods

_ and apparatus in which for the first time, in an airless elec-

trostatic field, the paint is made the electrode and electro-

statically atomized, or that at least the paint is charged

and atomized at the point of highest field intensity, is at

“The court is willing to incorporate in the decree a finding that

plaintiff is estopped from asserting against defendants or their

privies any claim that any device of defendants in existence at the

conclusion of the trial infringes said patent.

Et PO WA LO LORRI ALELL, ALL ARIE AAA CELL IPOS 5 he Oe it AE wt E

the moment of atomization given a “built-in” charge, and

that the electrostatic field thereupon disperses the particles,

and deposits them upon the work.

The methods claimed by plaintiff have been highly suc-

cessful commercially. Substantially one-hundred per cent

of paint used is deposited upon the work. Over 500 licenses

exist, from which plaintiff derives $2,000,000 to $3,000,000

annually in royalties.

Defendants have introduced the usual defenses of inva-

lidity and noninfringement. As is to be expected of com-

petent counsel (and not to be discounted because of lack

of “novelty”), these have encompassed the aspects of antici-

pation, lack of novelty, misuse of patent monopoly, lack

of adequate disclosure, indefiniteness and excessive breadth

of claims and double patenting. As to the scope of the pat-

ents, if valid, and on the question of infringement, defend-

ants raise the issue of file wrapper estoppel. With respect

to scope of the patents, and infringement, defendants con-

tend that the patents, if valid, are limited to those appli-

cations in which electrostatic forces are the sole source

of atomization, dispersion and deposition. Otherwise stated,

defendants claim that no infringement occurs if, specifi-

cally, centrifugal force plays any part, no matter how

small, in either and/or atomization, dispersion or deposi-

tion. These contentions make it more than usually difficult

to departmentalize the treatments of validity and infringe-

ment.

During the trial of the case, and at its conclusion, the

court of record stated to counsel the principal problems

the court believed to be involved, and an adequate oppor-

tunity was given counsel to brief these and any other ques-

tions, and thereafter some two days oi oral argument were

allowed. As a result, some narrowing of the issues resulted.

baer ten lee dine irate shi sm ting OLE ae, Ries STH halts

51

The defense of misuse of the patent monopoly was not

formally abandoned, but was not pressed, and the court

finds that there is no legally sufficient evidence to support

this defense. The claim of anticipation by public use has

been reduced from three alleged instances to one.®

All reliance by defendants on prior publications has been

abandoned.

Of the prior art references as to anticipation and/or

lack of novelty, cited by defendants in advance of trial, one

of their alleged experts testified as to the supposed signifi-

cance and effect of 35.6 Only seven were seriously pressed

in defendants’ final brief and argument.

General Description of Nature of Patents in Suit.

Patent 2,685,536 (Starkey ’536) represents the method

aspects of the first development of the airless electrostatic

painting, which in its entirety has frequently been described

as the No. 2 Process. All claims are in suit, claims 4 and

10 having been selected by plaintiff as typical.

The method is based upon the alleged discovery that with

an electrostatic field established between a grounded object

to be painted, and unatomized paint, and if the field were

5 The court does not criticize defendants’ counsel for initially

raising these three alleged instances. In ‘iew of the complete failure

of the evidence with respect to two of them, the court would

have been highly, and vocally, critical, if they had further been

ne is, perhaps, only fair to state that in the prosecution cf the

five patents in suit the Patent (Office cited, as to ©

636 Patent 19 references

417 Patent 5 references

893 Patent 16 references

894 Patent 13 references

602 Reissue Patent 15 references

— = - Rina he LAREDO EDEMA AIBN LD LEBD ERE LOE ABLE omen,

52

of appropriate strength,’ and the paint were presented in

a sufficiently thin condition, the field would, without the aid

of air blast, centrifugal, hydraulic or other mechanical

force, atomize the paint into particles, electrically charge

such particles simultaneously or coincidentally with their

formation, disperse them and deposit them on the object

to be coated, the deposition being in accordance with the

lines of force established between the paint at the points

of atomization and the work.

Starkey ’536 discloses several specific forms for an atom-

izing head by which unatomized paint may be presented

to the field. In each of the examples the head presents

toward the article to be painted an extended straight edge

to which the paint is fed at a controlled rate, and along

which edge the paint is presented in the form of separated,

supported droplets, the spacing of said droplets being

determined by the mechanical structural features of the

head.

In each of the examples or forms specifically illustrated,

the head is stationary; and as no air blast, centrifugal or

hydraulic forces are shown or suggested, the atomization

therefrom must, if it occurs (and it does*) have been solely

electrostatically effected. However, the claims of Starkey

036 are not in terms limited to an electrostatic painting

method in which the atomizing head is stat’onary, or pre-

7 Ordinarily of the nature of 90,000 volts, direct current.

8 The court, at the request of counsel, spent more ‘han three days

out of the court room, examining physical demonstrations of all

plaintiff’s devices (or replicas thereof), of the accus<d devices, and

of some of the alleged prior art. Reporters were present during

the demonstrations, and a record was made of any statements, ex-

planations and questions of counsel. In addition, in several in-

stances after the completion of particular demonstrations, the

court dictated into the record, in the presence of counsel, and with

full opportunity to counsel to object at attempt to correct, a sum-

mary of the court’s observations.

53

sents the paint to the electrostatic field only in a straight

line; or where the electrostatic field is the sole agent aifect-

ing or contributing to atomization, dispersion and deposi-

tion; although in Claim 10 there must be “an electrostatic

field of sufficient strength that it both electrostaticaliy

atomizes small particles of coating material from such ex-

posed termini and electrostatically deposits them * * *”

The method claims in Starkey 536 do eliminate the use

of a high-velocity air blast for atomizing and depositing

paint particles. Starkey ’536 also discloses the paint as the

charging electrode; or at least the presenting of the paint

for atomization at the point of highest field intensity, where

it is effectively charged sufficiently to cause its dispersal

and deposition by the existing electrostatic field and forces.

Starkey ’417 discloses and claims apparatus aspects of

Starkey 536. It resulted from a voluntary division of the

application maturing into Starkey ’536, and has the same

disclosures and drawings as Starkey ’536. Claims 3 and 4

are in suit. They are directed to heads in which droplets

are formed, either completely separated, or bridging the

spaces at their bases. The claims are not, in terms, limited

to apparatus in which the head is stationary, or to any

specific structural mechanical feature with reference to the

places where atomization occurs; nor is the electrostatic

field claimed as the sole source and cause of atomization,

dispersion and deposition, although the electrostatic field

must be “capable of” atomization, dispersion and deposition.

Crouse ’893 resulted from the discovery that electro-

static atomization could be effected without the initial sep-

aration, by mechanical means, of the fed paint into discrete

droplets. Again, the specific heads shown are stationary.

In each, the liquid is fed through an arcuate, annular, or

straight line slot or opening to form it into a film of uni-

SEED ARH ALD AA IORI A a ice EDA RAD eect

form thickness when presented to the electrostatic field. In

all except one illustration of arcuate structures, a plug is

inserted.

When the paint is subjected to the electrostatic field, the

field forms or deforms the edge of the film into a series

of spaced projections or streamers, frequently referred to

as “cusps,” the charged ends of which are broken off by

the field, dispersed as a spray and deposited on the work.

The spacing of the points of atomization is uniformly

effected by the field, without the need of structural separa-

tion. The spacing is a function of the quantity of paint

presented to the field, and the strength of the field. Much

closer spacing of the points of atomization is possible than

through mechanical spacing of droplets, and hence a greater

amount of painting can be done in the same time.

While in Crouse ’893 paint is fed under pressure to a

chamber, all the devices shown rely upon a gravity flow;

except in one instance, all the devices shown are designed

to be operated with the work immediately below them. In

the single exception illustrated, the work is placed imme-

diately above an inverted container or head.

In practice, the annular form of apparatus is preferred.

The field strength is substantially identical at ail locations,

as distinguished from the concentration of field strength

which occurs at the ends of a straight-edged head. One

apparent disadvantage of the use of the circular head is

that it tends to cause the deposit of paint in a doughnut®

shaped pattern.

Claims 1-3, 5, 6 and 8-10 of Crouse ’893 are asserted

against all the accused structures, claims 2 and 9 being as-

® Mid-Western nomenclature, used throughout the trial of the

ease. My own Baltimore, Maryland heritage would refer to the

shape as that of a cruller.

55

serted as typical. Although all illustrations show stationary

heads, the claims are not in terms so limited; nor are they

limited to cases in which the film presented to the electro-

static field is formed by passing it through un elongated

slot. Again, while the asserted claims are not in terms lim-

ited to heads in which the electrostatic field is the sole atom-

izing agency, the claims do call for the maintenance between

the film edge and the article to be painted of a field “of

sufficient strength” to draw the film into cusps and electro-

statically to atomize particles from the edge of the film or

from the cusps, and disperse and deposit them.

Ransburg ’894 states that it is an improvement upon

Crouse ’893. It sought to produce greater uniformity in

the pattern of the spray, and to overcome the gravitational

limitations of stationary heads, by “rotating the film-sup-

porting atomizer about the film axis.” The specific embodi-

ment described relates to an annular film, but other forms

of atomizers are specifically not disclaimed.

All the claims in Ransburg ’894 are asserted against the

accused devices. Claims 1 and 7 are asserted to be typical.

Other than that the heads must be rotatable, the claims

are not in terms limited to any particular form of head.

Again, while the claims are not in terms limited to heads

in which the electrostatic field is the sole atomizing agency,

the claims do call for the maintenance between the film

edge and the article to be coated of an electrostatic field

“of sufficient strength” to draw the film into cusps and to

_ electrostatically atomize particles from the cusps, and dis-

perse and deposit them.

In the specifications it is stated’® that with a cylindrical

head three inches in diameter, operated eight inches from

10 Column 5, lines 35-44.

56

the surface to be coated, synthetic enamel was successfully

applied, 75,000 volts being used to produce the atomization

and precipitation of the material, while the head was being

rotated at approximately 150 r.p.m.

Further, on speeds of rotation, and the relative effects

of centrifugal force and field strength on degree of atom-

ization and shape of spray, the specifications recite.’

“The speed at which my atomizer is rotated in order

to obtain the benefits of the invention will depend upon

several factors. If the atomizer axis is vertical with

the cusp-tips lying in a horizontal plane, and rotation

is employed solely to effect uniformity of distribution,

the atomizer may rotate slowly, say at a speed of a

few dozen turns per minute. If the atomizer-axis is

not vertical and rotation is relied upon to counteract

the force of gravity, higher rotational speeds will be

employed; but even with the atomizer-axis horizontal

and a liquid of relatively low viscosity being atomized,

the tendency of the liquid to collect at and near the

low point of the atomizer edge can be effectively coun-

teracted by rotating the atomizer at a speed which will

subject the liquid to a centrifugal force equal at most to

several times the force of gravity. It may be conven-

ient in some cases to employ speeds higher than neces-

sary, as where higher speeds would simplify or lessen

the cost of the atomizer-rotating means.

“Experiments establish that such centrifugal force as

is imposed on the liquid by my rotating atomizer has

far less effect than field-strength on either the degree of

atomization or on the shape of the liquid spray, and

that if the field has the preferred strength—i. e. an

average potential-gradient of the order of 10,000 volts

per inch—the speed of atomizer-rotation has no signifi-

cant effect. For example, if an atomizer like that of

Fig. 5 having an annular edge two inches in diameter,

is positioned opposite an extended flat plate and an

11 Column 6, line 64—Column 7, line 42.

ee a an ee . err a

ov

electrostatic field having an average gradient of 10,000

volts per inch is created between atomizer and plate,

the fineness of atomization and the shape of the spray

are substantially the same at 5,000 r.p.m. as they are

at 200 r.p.m. But, if under the same conditions, the

atomizer is rotated at a constant speed—say 1,000

r.p.m.—and the field strength is gradually reduced by

lowering the potential-difference maintained between

atomizer and plate, the spray begins to spread and

atomization becomes much coarser, which coarser

atomization can be prevented by maintaining an ade-

quate potential gradient at the leading edge, irrespec-

tive of the polarity thereof.

“T am aware that it has heretofore been proposed

in United States Letters Patent No. 1,861,495, granted

June 7, 1932, to atomize a liquid by feeding it to a

rotating element driven at such a speed that the liquid

is broken up into drops as it is thrown from the ele-

ment by the action of centrifugal force. It is my

experience, however, that in such atomizers, even when

they are rotated at speeds sufficient to subject the

liquid to centrifugal forces many hundred tims that

of gravity, the atomization is very materially coarser

than that which can be produced electrostatically with

a field having a potential gradient in the neighborhood

of 10,000 volts per inch.”

The only claim in which any reference is made to speed

of head rotation is Claim 6, which claims the method of

Claim 1, “further characterized in that the speed of

head rotation is insufficient in itself to produce comparable

atomization.”

Reference has been made to the hollow center of the

spray produced by annular heads embodying the teachings

of Crouse ’893 and Ransburg ’894. In the coating of ex-

12 Column 8, lines 22-24. Further discussion of this aspect is

postponed to the consideration of the question of infringement.

ATLAS APE Nn Nt CRC ROR GI NE NH Sel LES WRT K t

58

tended surfaces, this caused a variation in coating thick-

ness transversely of the direction of surface movement

through the spray. A successful expedient to overcome this

defect and to produce a satisfactory uniform coating was

to combine the use of several annular spray heads (usually

three; a larger inner one, and two smaller outer ones,

diagonally disposed toward each other) so that an overlap-

ping would produce a composite coating of substantially

uniform thickness. Defendant Proctor is using such a

“three-bell” system under license from plaintiff Ransburg."®

Simmons, Re. 24,602 seeks to make a virtue of the annular

hollow spray pattern of Ransburg ’894. The specific systems

of Re. 24,602 employ rotating atomizing heads, each ar-

ranged on a vertical axis. The articles to be painted are

moved in a path around the axis of the spray, and the pro-

jection of the spray is generally radial. When the vertical

dimension of the article to be coated is large enough to

require it, the atomizing head may be reciprocated verti-

cally. The paths of the articles within the spray are shown

as essentially circular. The system subjects the articles to

be painted to the rim, and not the hole, of the doughnut.

The circular path of the articles also permits an extension

of the length of time to which the articles are exposed to

the spray, allowing the gradual build up of the coating to

any desired thickness.

Validity.

Defendants do not contend that any cited art anticipates

any of the five patents in suit. They do claim that:

1. All five patents are invalid for lack of novelty, or of

invention over the prior art;

13 No objection by plaintiff has been made as to the right of a

licensee to contest validity in an infringement suit.

SS een Soh ards ae

Lb i ae RR IE LS cc LED a as NILE AS. = NES:

59

2. Starkey °417 is invalid as double patenting over

Starkey '536;

3. Crouse 893 and Ransburg ’894 are invalid because

of prior public use.

The statutory presumption of validity through the issu-

ance of the patent, U.S.C. Title 35, § 282, is strengthened

in this case by:

(a) The tortuous path of the patents through the Patent

Office, during the course of which the patents now relied

upon by the defendants were considered by the Examiner,

and most of them made of record at the foot of the patent;

(b) the upholding by the Seventh Circuit of the validity

of the Starkey 536 and 417 patents, and obliquely of the

validity of the Crouse ’893 and Ransburg ’894 patents,

Binks Manufacturing Company v. Ransburg Electro-Coat-

ing Corp., 7 Cir. 1960, 281 F.2d 252, cert, gi. 1960, 364 U.S.

926, 81 S.Ct. 353, 5 L.Ed.2d 265; writ dismissed, 1961, 366

U.S. 211, 81 S.Ct. 1091, 6L.Ed.2d 239; and (c) the very

striking commercial success enjoyed by the patents.

The parties seem to be in agreement thet Starkey ’536

and °417 are the “basic” of the five patents, and that the

other three are in the nature of “improvements.” In Binks,

the Seventh Circuit referred to the Starkey patents as “a

broad and basic invention” (281 F.2d at 256), and referred

to the rotating bell or disc as a “mere improvement” (281

F.2d at 256), or “at most improvements” (281 F.2d at 261).

It would therefore appear that it should be possible

generally to consider the patents relied upon by defendants,

rather than discussing them with respect to the individual

patents, They are:

60

E. Pugh 1,855,869 April 26, 1932

Method and apparaius for Coating Articles.

Darrah 1,958,406 May, 15, 1934

Electrical Spraying Device

Gravley 2,359,476 October 3, 1944

Electrostatic Method and Apparatus

Hopkins, et al. 1,861,475 June 7, 1932

Method of Applying Lacquer or the Like

Chaffee, et al. 1,832,096 November 17, 1931

Electrical System

Harper J. Ransburg,

et al. 591,474 (British) August 9, 1947

Apparatus for Spray Coating Articles

Harper J. Ransburg,

et. al. 452,041 (Italian) October 6, 1949

Method and Device for the Electrostatic Coating of Objects.

The first six of these were considered by the Patent

Office in the prosecution of the various patents, and were

made of record.’* Darrah and Gravley were considered in

Binks, 281 F.2d at 255.

Pugn 1,855,869 discloses a coating system in which finely

divided particles are produced by compressed aix atom-

izers, which discharge into a chamber through which the

‘articles to be coated are carried by a conveyor. The

atomizers are slightly rearward of, and discharge through

holes in, one wall of the chamber. The articles to be charged

are at ground potential. The nozzles and chamber walls are

positively charged.

14The Starkey 536, the Crouse ’893, the Ransburg ’894 and

Simmons Re. ’602 were al! assigned to “C’. 117-93” by the Patent

Office; an Starkey ’417 to “Cl. 118-51.”

61

The uncontradicted evidence is that the charged wall

would substantially shield the atomizer, resulting in a weak

field at the point of atomization.'5 ie

Darrah 1,958,406 discloses electrostatic atomization of

liquids by an apparatus in which one or more capillary

nozzles or tubes are surrounded by a ring-like electrode

between which and liquid in the nozzles or tubes an electro-

static field is maintained. Apparently a spray was claimed

to be electrostatically produced and projected beyond the

ring electrode. There is no reference to or disclosure of a

spray-receiving object to attract or receive the deposition

of the spray. The only uses suggested by the patent werc

in dust collection, and in the promotion of chemical rela-

tions between the atomized liquid and the gas into which it

was to be atomized.

The references in the Darrah patent to particles which

“remain suspended indefinitely in air’!® and the suggested

use of alternating current, which would not be used or

usable if deposition were desired’ negative its application

to coating operations. Moreover, Darrah, the holder of

some 100 patents, testified by deposition that he had never

found any practical use for his invention;'® and that even

after he saw electrostatic painting demonstrated, he had no

“ideas as to how [his] apparatus might be made to work.’”®

Graviey 2,359,476 discloses a system for removing excess

paint from articles which have been previously painted, as

. 15 Tr, 3443-44; 3453-54. The witness also testified that to the best

of his knowledge, Pugh had never been used commercially. Tran-

script 3442.

16 Specifications, page 2, line 35.

17 Transcript, 3437.

18 PX 258, page 5.

19 PX 258, page 30. Particularly in view of the well-known

claiming proclivity of inventors, this certainly tends to negate

“obviousness” of the inventions in suit.

62

by dipping. By gravity, the excess flows as “tears” to low

points, and is drawn from the painted article by electro-

static atomization and attraction to a charged grid. So far

as the process is concerned, the excess paint may leave as

large drops, small drops, or mist. The process is essentially

a decoating one. In such decoating, it is the removal that is

all-important; not the size of the drops nor their ultimate

disposition or deposition. Perhaps the larger the drop, the

quicker and better the detearing. But entirely different

problems are presented, and different end results desired,

in coating articles commercially. The large drops (slugs)

will cause a raised and pitted finish; too small particles will

dry too rapidly, and cause unsatisfactory adherence. Fur-

ther, the object of detearing is to get rid of a fixed quantity

of paint once and for all. In electrostatic coating, the atom-

ized paint must be replenished at a uniform and controlled

rate. Gravley, rather than teaching the art of the patents

in suit, would indicate that electrostatic forces were not

suitable for coating.

Hopkins 1,861,475 discloses a centrifugal atomizer in

which the coating material is atomized in the form of an

extended film from the edge of a rotating cone. The disclo-

sures and claims relate to atomization without the direct

action of compressed air thereon, or its admixture there-

with. The spray, centrifugally produced, “tends to fly in all

directions’”° and is directed toward the object to be coated

“by projecting a hollow jet or stream of compressed air

from the gun in the direction of the work and surrounding

the spray, so as to form in a sense a sheath or envelope

which encloses the spray and causes it to follow a certain

course. The compressed air does not constitute an atomiz-

ing medium, nor does it even form a carrying medium in

20 Page 1, lines 61-62.

haw base

m RARER IE WR OR i. Bat a

63

the usual sense * * *”?! The recommended speed was 10,000

r.p.m.

Hopkins does not disclose or claim the use of an electro-

static field in any aspect; on the head, at the point of atomi-

zation, or for charging or deposition.

“Chaffee et al. 1,832,096 was intended to produce electrical

charges on discrete particles of matter, such as sand, clay,

marble dust, cement dust, and the like, to dissolve clouds

and fog, and to produce rain, or to dissipate or dissolve

dust clouds, smoke clouds, or the like.

It is difficult for the court to conceive the relevance of the

Chaffee citation. Clearly the inventor is not concerned

wnether the “rain falleth upon the just or the unjust”; nor

is the desire to coat, an object of the invention. Further, the

last that the inventor or the users of the invention would

desire would be the replenishment of the source to be “dis-

solved or replaced”, let alone its replenishment at a uniform

rate.

Harper J. Ransburg, et al. 591,474 (British). This patent

was cited of record by the Patent Office in the issued patents

on 893 and ’894. It is particularly “directed to safety equip-

ment and control apparatus for handspraying in an electro-

static field, wherein the spray gun may be grasped and

manipulated by an operator * * *”?? Primarily, the operator,

the cage in which he operates, the articles to be coated, and

the spray gun are grounded, while the electrode past which

the particles atomized by the gun are projected is at high

potential.2* Alternatively, it is stated that the operator and

the gun may be of the same potential as the electrode; the

21 Page 1, lines 67-74.

32 Complete Specifications, page 1, lines 24-25.

38 Complete Specifications, page 2, lines 108-112.

RA Bae STIS OI tt 2 greme wc cee VO nats UG e eS Rea nld clk Ce h i tne De Even

electrode may be carried directly upon the gun forwardly

thereof in spaced relation.

It is obvious that this is a Ransburg No. 1 Process. The

patent refers to “Apparatus for Spray Coating Articles.”

It does not disclose or claim an electrostatic atomization.

At the most, it relates to relative locations of the electrode

at which charges are to be imparted. As shown below,

under the discussion of infringement, either no, or an im-

paired, charge could be imparted, where the atomizing gun

and the electrode, no matter how associated, are of the same

potential.

More particularly, 591,474 (British) does not teach

electrostatic atomization, or atomization at the point of

highest field strength.

Harper J. Ransburg, et al. 452,041 Italian. Apparently

defendants do not contend that its disclosures, which are

similar to those of Crouse ’893 and Ransburg ’894, are

anticipatory thereof. They do contend that the Italian

Patent either anticipates, or discloses an invention in view

of which Reissue 24,602 would be obvious to one skilled in

the art. Apparently this contention is based upon Figure

9 which defendants claim shows an atomizer used vertically,

between two straight-line conveyors parallel to, but spaced

away from, the surfaces to be coated. It is defendauts’

position that these atomizing heads may be (a) recipro-

cated, (b) rotated and (c) positioned between two

conveyors.

As the court construes the specifications, and Figure 9,

there is taught the use of an atomizer arranged. above a

double row of articles moving on a single conveyor, in

which the centrifugal and electrostatical forces act in the

same direction and not at an angle to each other; and, per-

24 Complete Specifications, page 3, lines 7-77.

Ai OER Rad Hos

nS al Sait LO Sale CLAP LIS ENS S

65

haps more importantly, the reciprocation is used only to

position the atomizer inside hollow articles. This is com-

pletely different from, and not anticipatory of, or teaching,

the use of the doughnut pattern as disclosed in Re. 24,602.

The court is of the opinion that the Patent Office was

clearly right in holding that the patents in suit are valid in

view of the state of the prior printed art.

The Alleged Dukes Use.

Defendants assert that apparatus allegedly designed and

built by Dukes in 1949 is a substantial anticipation of the

Crouse 893, Ransburg ’894 and Simmons ’602 patents, as

a prior public use.

Summary disposition can be made of this contention as to

Simmons ’602. On the weight of the evidence the court

finds as a fact and concludes as a matter of law that Dukes

did not position his spray head or heads as was done by

Simmons, but sprayed paint vertically to a moving con-

veyor.”> In any event, the second device, relied upon by

defendants, functioned unsatisfactorily,?* and could not be

considered anticipatory of Simmons, which, on the testi-

mony and as witnessed by the court, is an eminently satis-

factory operation.

Dukes had been employed by a very well-known manufac-

turer of air gun spray type equipment. In 1946, Dukes

decided to go into business for himself. Prior thereto, he

had worked on the design of a centrifugal dise spray device.

' He began his independent operations with air gun spray-

ing, dipping and flow coating, and then began to experiment

with centrifugal rotating disc atomizers. Various modifica-

tions of spacing between the discs, and different feed

25 Transcript, pages 2295-97.

26 Transcript, page 1955.

66

systems, were tried. These sprayed vertically to a moving

conveyor. Dukes testified that in 1948 or 194977 he used

an electrostatic field, directly charging the gun and the

work. The specific devise relied upon by defendants was,

fortunately or unfortunately, allegedly destroyed by a fire

in 1953. Importantly and remarkably, Dukes although still

in the job painting business, has never since returned to

the equivalent of the Simmons ’602, nor, apparently, to the

Ransburg ’894.

Significantly, as will be developed under the question of

infringement, Dukes found that the particle size in all his

operations, decreased with the field on?*; and it never oc-

curred to him, despite his wide experience, to use electro-

static forces in painting until he saw the Ransburg

applications.”®

It is extremely doubtful if the evidence as to the alleged

Dukes prior use, even as above limited, could be considered

as proof “clear, satisfactory, and beyond a reasonable

doubt”, Washburn & Moen Mfg. Co. v. Beat ’Em All Barbed

Wire Co., 1892, 143 U.S. 275, 284, 12 S.Ct. 443, 36 L.Ed. 154;

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

923; Colgate-Palmolive Co. v. Carter Products, Inc., 4 Cir.

1956, 230 F.2d 855, 861. Were it necessary, the court would

find as a fact, and conclude as a matter of law, that the

proof offered did not meet the above requirements as to

Crouse ’893 and Ransburg ’894.°° However, it is clear that

in any event the effective dates of the ’893 and ’894 patents

(March 5, 1948 and October 29, 1948, respectively) well

27 1949 is clearly the earliest possible date, as it was only then

that he acquired his first “power pack”, permitting the imposition

of positive and negative charges.

28 Transcript, page 2023.

29 Transcript, page 2031.

30 Simmons ’602 has already been ruled out factually, even ac-

cepting the Dukes’ testimony as credible.

3

67

precede any possible date attributable to Dukes. Each was

a continuation-in-part application—an application which

contained both subject matter taken from an earlier appli-

cation, and new subject matter not disclosed in the earlier

application. No contrary significance can be drawn from

the date shown in the heading of a patent resulting from a

continuation-in-part application, which is always that of the

continuation in part, never that of the original application.

Ex parte Ellis, 1919, C.D. 64, 264 O.G. 863, Ex parte Ko-

menak, 45 U.S.P.Q. 186. The cusp-forming feature of the

electrostatic field had been disclosed in the 1948 parent of

the ’893 and ’894 patents.*! The ’893 and ’894 claims in suit

are entitled to the parents’ filing dates. Davis Co. v. Baker-

Cammack Hosiery Mills, D.C.M.D.N.C.1949, 86 F.Supp. 180,

186, aff’d., 4 Cir. 1950, 181 F.2d 550, 558.

Double Patenting.

Defendants contend that the Starkey °417 apparatus

patent is invalid as “double patenting” over the Starkey

536 method patent. This contention was also made in the

Binks case, and decided adversely to the position of defend-

ants, Binks Manufacturing Co. v. Ransburg Electro-

Coating Co., 7 Cir. 1960, 281 F.2d 252, 257, on reasoning

entirely satisfactory to this court. See also, Hartford-

Empire Co. v. Obear-Nester Co., 8 Cir. 1934, 71 F.2d 539,

561; Fehr et al. v. Activated Sludge Co., 7 Cir. 1936, 84

F.2d 948, 957.

The court therefore concludes that the patents in suit are,

’ and each of them is, valid. In the court’s opinion, the valid-

ity of the patents is clear. Were this a “close” case on the

question of validity, the striking and unusual commercial

success (Hutzler Bros. Co. v. Sales Affiliates, 4 Cir. 1947,

164 F.2d 260, 267; Florence-Mayo Nuway Co. v. Hardy, 4

31 PX 47 A, page 3; PX 48 A, page 7.

68

Cir. 1948, 168 F.2d 778, 781; B. F. Goodrich Co. v. United

States Rubber Co., D.C.Md. 1956, 147 F.Supp. 40, 73,

affirmed 4 Cir. 1957, 244 F.2d 468) and the tribute of praise

to the prior art but the tribute to the patent by defendants’

copying (Diamurd Rubber Co. of New York v. Consolidated

Rubber Tire Co., 1911, 220 U.S. 428, 441, 31 S.Ct. 444, 450,

55 L.Ed. 527; Ackermans v. General Motors Corp., 4 Cir.

1953, 202 F.2d 642, certiorari denied 1953, 345 U.S. 996, 73

S.Ct. 1139, 97 L.Ed. 1403, rehearing denied 1953, 346 U.S.

842, 74 S.Ct. 16, 98 L.Ed. 362; Florence-Mayo Nuway Co.

v. Hardy, 4 Cir. 1948, 168 F.2d 778, 782) would easily weigh

the scales in plaintiff’s favor.

Infringement.

In the early 1950’s, after the Ransburg No. 1 Process had

been on the market for a number of years, the Sedlacsiks,

under the name of Scientific Electric Company, (Ionic)

began the sale of an electrostatic spray-coating system

using a compressed air spray gun.*? After the Ransburg

No. 2 Process became publicly known, following its 1951

public disclosure, the Sedlacsiks built and exhibited an

airless electrostatic spray-coating system, employing an

atomizer, later known as the Model 12. That atomizer had

a rotating, conical, electrically charged head, on which the

paint was formed into a film, and fed to the rim of the

head, by centrifugal force, and from that rim was atomized,

dispersed and deposited under the influence of a high-

voltage electrostatic field maintained between the head and

the work. In 1956, the Sedlacsiks began exhibiting a second

atomizing device, known as the Model 50, which likewise

32 This was a studied, and apparently successful, technical modi-

fication that avoided literal infringement. This has been indicative

of Ionie’s procedure—noncreative, but evasive. If successfully eva-

sive, it is of course legal; but it does not elicit a sympathetic or

— approach ; as subsequent matters of credibility will re-em-

phasize.

69

employed centrifugal force to feed the paint in a film to

the rim of a rotating electrically charged disc or bell-shaped

atomizer. Whether the atomization therefrom is purely

centrifugal, purely electrostatic, or an aggregation or a

combination of the two, and if so in what significant pro-

portions, is the basis of dispute on the question of infringe-

ment.

After this suit was started, Ionic began selling a third

form of atomizer, known as the Model M-50, which com-

prised two Model 50 devices on a common support. Plaintiff

charges that all three, Models 12, 50 and M-50 are infringe-

ments of the patents in suit.

In 1955, defendant Proctor was using, under license from

plaintiff, the Ransburg No. 2 Process in the painting of

ironing boards with equipment employing a plurality of

rotating heads disposed on horizontal axes and arranged to

project over-lapping conical sprays axially toward ironing

table parts moved through the sprays in a straight path.

At Proctor’s request, plaintiff designed an additional No.

2 Process installation employing a plurality of rotating

atomizers disposed on vertical axes, and a conveyor of the

type shown in Re. 24,602 for carrying ironing board tops in

a circular path around the atomizers. In 1955, plaintiff

submitted to Proctor drawings and other data relative to

such equipment, and accompanied such data with a pro-

posed license contract covering installation and use of the

proposed system. Proctor did not accept the contract sub-

mitted by plaintiff. Instead, Proctor entered into negotia-

’ tions with Scientific Electric Company, and after several

months, and after the disclosure of the general nature of

Proctcr’s negotiations with plaintiff, was shown a Model 50

device. Proctor eventually purchased two Model 50 atom-

izers (on a hold-harmless agreement) and incorporated

them into an installation which, except as to the contour of

70

the path to be traversed by the work, was a duplicate of

the additional No. 2 installation designed and submitted by

plaintiff. The infringement with which Proctor is charged

is the use of equipment which includes the two Ionic Model

50 atomizers.

All of the systems accused as infringements of the pat-

ents in suit embody one or more rotating atomizing heads

which spread liquid coating material fed at a controlled

rate into a thin, uniform film presented circularly to an

electrostatic field created by applying a negative electricai

potential, usually in the nature of 90 KV, to the atomizing

head while the articles to be coated are maintained at

ground potential in positions spaced from the head at dis-

tances such that arcing will not occur. Except perhaps with

respect io liquid coating material which is not readily elec-

trostatically atomizable**, at the rim of the head the field

is of liquid-atomizing strength. The field is therefore “of

sufficient strength to” electrostatically atomize, or “capable

of” such atomization. In such field, the edge of the film is

formed into a series of spaced cusps, the tips of which

repeatedly and continuously break off to form fine, electri-

cally charged particles, which are electrostatically de-

posited on the work by the electrostatic field. At the tips

of the cusps, where atomization takes place, the field is

strong, and the lines of force are highly concentrated.

Each particle, as formed, bears a substantial and effective

“in-born” or “built-in” electrical charge, as the result of

which the particles are electrostatically urged to follow

the lines of force toward deposition on the work.

Defendants contend that all of plaintiff’s patents (except

Simmons Re. 24,602) require that the paint “is and must

33 There was no evidence that defendants commercially, or ever,

used coating materials which were not, in business operations,

readily electrostatically atomizable.

71

be atomized through electrostatic forces alone to the ez-

clusion of any other force.’** This is based upon the alleged

limitations in the claims (heretofore discussed) in said

patents, and by their history as disclosed in the various file

wrappers. In substance, defendants claim that with knowl-

edge of the limitations of the prior art, they deliberately

departed from the idea of electrostatic atomization, and

developed the accused devices, which they contend con-

stitute centrifugal, as distinguished from electrostatic

atomizers.

The contention of deliberate and learned departure from

electrostatic atomization, and the development of centrifu-

gal atomizing devices, deserves and will receive summary

disposition. Sedlacsik, Jr. testified as to his thorough

search, anticipatory of such alleged development, of the

patent files in the New York Public Library in 1949, de-

scribing the physical layout of the patent section, and the

way in which various patents were assembled and bound.

Subsequent evidence, not challenged, showed a filing system

in the Library so different at the time of the alleged search

from that described by Sedlacsik that his testimony is un-

worthy of belief, and is unacceptable to the court.

Secondly, all of defendants’ devices do call for a charge

on the atomizing head. As will later be considered in more

detail, defendants claim that nevertheless the atomization

is centrifugal only. For reasons to be stated, the court

finds to the contrary.

_ Third, on July 14, 1959, on anf application filed August

18, 1958, there was issued to J. Sedlacsik, Jr. Patent No.

2,894,485, “Apparatus for Electrostatically Applying Multi-

Coatings”. This discloses a variety of atomizer arrays

“each employing one or more atomizers and one or more

34 Transcript, page 4267, emphasis supplied.

72

deflector heads which may be rotary and/or electrostatic.”

A conventional high voltege source is connected between

ground and the atomizers.°® Normally paint iz centrifu-

gaily moved to the peripheral edge of the atomizing disc

where it “is atomized due to the centrifugal action axd the

electrostatic charge of the particles * * *°7 Claims 1, 7,

15, 16 and 26 relate to atomizing heads with “an electro-

static field between said atomizer array and said articles

for atomizing and depositing said coating materials on said

articles * *” The M-50 admittediv is within this patent

coverage. The court is unable to understand how the use

of an electrostatic field related to a charged atomizing

head “for atomizing” can represent a studied and success-

ful (!) effort to get away fron: electrostatic atomization

and solely into centrifugal atomization; or why an eicciro-

static force should atomize paint on a Sedlacsik device, but

not on plaintiff’s devices; or why, if atomization is to he,

and will be, solely centrifugal, any char:se is placed on the

atomizing head.

The questicn of file wrapper estcppel or limitation of

plaintiff’: claims through Fatent Office procedure is difficult

to summarize. As stated, it is defsndants’ position that —

plaintiff’s patents are all limited to electrostatic atomiza-

tion through electrostatic forces alone, to the exclusion of

any other fcree. Ii is possible technically to dismiss this

contention in its literal sense by pointing cut that the Pat-

ent Office in allowing claims for any device except a station-

ary one, necessarily allowed claims calling for a force other

than electrostatic force alone; a rvtating head of necessity

intreduces some mechanical force. In an effort to escape

this dilemma, def+ndants’ counsel argued that centrifugal

force could be used with the field on, resulting in electro-

35 Column 1, lines 33-35.

36 Column 3, lines 1-2.

87 Column 3, lines 44-51; emphasis supplied.

73

static atomization up to the speed at which centrifugal

atomization would have occurred had there not been a field;

at any and all higher speeds, atomization was no longer

electrostatic (within the patent coverage) but centrifugal

(outside the patent coverage). Plaintiff claims that as long

as the paint is made the electrode, or the paint is atomized

at the point of greatest field intensity so that the benefits

of the “in-born” or “built-in” charge are obtained, the pat-

ents are infringed whether or not, and if so at what rate,

rotation occurs.

The court concludes that the Patent Office procedure does

not suppert defendants’ contentions, in the literal, or their

somewhat broader, aspects. Whether they support the con-

tention of plaintiff in its broadest aspects it will not be

necessary to decide.

Tn the prosecution of the ’894 patent, all the claims were

rejected by the Examiner on a hypothetical aggregation of

Crouse with either Hopkins or Chaffee.** He concluded

that “It is not seen to be inventive to use Hopkins’ spread-

ing means, i. e., rotating means, in Crouse’s apparatus or

to use Crouse’s charging means in Hopkins’ apparatus”;

and that “no invention is seen in roteting Crouse’s gun

according to the teachings of Chaffee whose disclosure

shows the charging of liquid particles in a gun similar to

that of Crouse except that it is rotated to distribute the

material to be charged.”*®

The action of the Examiner was appealed to the Board

of Appeals. At the hearing before the Board, appellant

‘offered motion pictures showing applicant’s atomizer and

that of the Hopkins reference in action. The hearing room

88 Other grounds were advanced by the Examiner, but were

abandoned.

89 PX 48 B, page 71.

74

could not be darkened; the pictures were projected, but

visibility was so poor that leave was given to file “stills”

from the individual frames of the motion picture films.

This was done.*! These showed, with respect to “open”

articles, such as one-inch metal tubes disposed on three-

inch centers, that with a cup-shaped atomizing head de-

scribed in the appealed claims, with a head speed of 900

r. p. m. and a head potential of 100 KV, the paint was finely

atomized. Some of the paint, under the influence of the

momentum acquired from electrostatic forces during the

move:nent from the head, passed between the adjacent

tubes, and then, still under the influence of the lines of

force, changed its direction and was deposited on the rear

of the tubes.

Another “still” showed a scaled reproduction of the head

shown in Fig. 2 of the Hopkins reference. It had a head

speed of 10,000 r. p. m. (the speed recommended by Hop-

kins) and a head potential of 100 KV and an air pressure

ring at 15 p. s. i. Despite the effect of the electrostatic field,

much of the paint was carried past the work and lost as

overspray, due to the force of the air sheath.

Another “still” was taken under the same 10,000 r. p. m.

and 15 p. s. i. conditions but with the head uncharged. A

substantial overspray loss again occurred, and in addition,

the air sheath (unaided by electrostatic forces) was unable

to divert all the centrifuged paint even toward the target,

some paint being thrown centrifugally through the air

sheath and falling to the floor between the head and the

target (or work).

In a six-page opinion, the Board of Appeals affirmed the

40 Persons accustomed to the most complex patents apparently

could not solve an ordinary problem, even by moving to another

room.

41 PX 48 B, pages 168-171.

Sikes, abi 208 this a

ietcend

75

Examiner, saying that “the examiner has properly com-

bined the references and that such combination anticipates

the appealed claims.”** The Board admitted that if Hop-

kins were modified merely by charging the head, appellant’s

criticism of loss of paint by “overshooting the work” was

valid, but suggested that “the air stream may well be

omitted 2 2 e))

That appellant would not readily be satisfied“ with this

decision, or the basis thereof, may well be imagined. A civil

action was filed in the United States District Court for the

District of Columbia. Before the case came to trial, a con-

ference was had with the Primary Examiner. He was fa-

vorably impressed with the contention that while the Board

of Appeals had apparently concluded that since either an

42 PX B, page 175. “Anticipation” by an hypothetical combina-

tion or aggregation seems extreme. Possibly the Board meant lack

of novelty was shown.

43 PX 48 B, page 175.

44Neither the Examiner nor the Board claimed that Crouse,

Hopkins or Chaffee provided any criteria in their disclosures for

these ex post facto selections, assemblies and omissions. Hopkins

was concerned exclusively with centrifugal atomization, and the

use of an air sheath to prevent the particles from being thrown

off radially, and to direct them toward the work. He contemplated

no grid or field, much less a charged atomizer. Moreover, it is at

least doubtful if the atomizer could successfully work if charged,

as it appears to be shielded, which would eliminate or greatly

reduce the field. To eliminate that which was essential to Hopkins,

in order to add something he did not contemplate or desire, and

possibly could not use, is an extremely tortucus and attenuated

approach to invalidate claims.

At least as remote is the aggregation of Hopkins and British

Ransburg 591,474 which defendants contend is the equivalent of

- a Model 12. As pointed out in the discussion of that patent, supra,

it is primarily a Ransburg No. 1 Process. It does not teach electro-

static * caus tion, or atomization at the point of greatest field

strength.

If defendants wish centrifugally to atomize and project spray

through a grid, as in Ransburg No. 1 Process, they are probably

free to do so. However, in all instances they apply the field directly

to an unshielded head, as taught by the patents in suit.

76

electrostatic field or centrifugal force can atomize liquid,

applicant’s claims were directed to nothing more than an

aggregation of the atomizing effects of electrostatic and

centrifugal forces; applicant in fact used centrifugal force

to present the liquid to the field in such a form that the

field was able to produce finer atomization; a combination,

rather than an aggregation.

There were produced and filed two photographs,** show-

ing the operation of the claimed invention using a bell-type

and a disc-type atomizer.

The bell had a diameter of four inches, rotating at a

speed of 900 r. p. m., and with an electric potential of

100.000 volts. The disc had a diameter of twenty inches,

rotating at a speed of 2,000 r. p. m., and with an electric

potential of 100,000 volts. In each instance the formation

of cusps and the atomization and dispersion of particles

from the tips thereof under the influence of the field was

apparent. While certainly the rotation of a twenty-inch

disc at 2,000 r. p. m. would produce some centrifugal atomi-

zation, it was claimed that the centrifugal force existing

in either atomizer was far below what would have been

required to produce centrifugal atomization cf the fineness

shown in the photographs.

Thereafter a new application was filed as a continuation

of and a substitute for the current application, and it was

allowed without amendment as the ’894 patent, and the suit

in the United States District Court for the District of

Columbia was dismissed.*®

45 PX 48 B, 186, 187.

46 After allowance but before issuance the title was changed from

“Method and Apparatus for Electrostatically Atomizing Liquid”

to “Method and Apparatus for Electrostatically Coating” on the

representation that “* * * the allowed claims are not directed

to an electrostatic atomizing system but rather to a complete coat-

ing method or apparatus in which an atomizing step, or an atomizer

is only one of the recited features.” PX 48 C—pages 37-38.

eT ee oe ae ee ee

17

Certainly this procedure in the Patent Office did not

limit the scope of plaintiff’s patents to claims in which the

paint is, and must be, atomized through electrostatic forces

alone, to the exclusion of any other force. The centrifugal

force represented by rotation of a twenty-inch disc at 2,000

r. p. m. is certainly some force other than electrostatic force

alone; and at least the participation (and assistance, in

the sense of forming, thinning and presenting the paint to

the field) of centrifugal force is too clear for argument.

The court is of the opinion that the minimum clearly al-

lowable to plaintiffs as the result of the Patent Office prose-

cution is that plaintiff’s patents cover any case in which

the paint, as presented to the field (by gravity,*’ cr centrif-

ugal force) is then atomized under circumstances in which

electrostatic forces either predominate, or form a signifi-

cant factor.

Defendants admit that in their Model 12 device, “[p]er-

haps the electrostatic field has a minor effect upon the

atomization.”4“* They claim, however, that as there is a

concurrence of centrifugal force with electrostatic forces,

there can be no infringement—an approach which the court

has rejected.

Alternatively, defendants contend that in fact, in the

operation of the accused devices, the atomization is not

electrostatic, but centrifugal. This is based in part upon

the testimony of Sedlacsik, Jr., but primarily upon the

testimony of two “experts”—Dr. Charles L. Mantell and

Harry J. Green. Sedlacsik, Jr. and Dr. Mantell were open

advocates; Green a less obvious one. Their testimony is

not convincing, per se, or in the iight of visual demonstra-

tions and exhibits. |

47 Which might itself be considered a “force” non electrostatic

in nature.

48 Final brief, page 31.

78

Sedlacsik, Jr., Mantell and Green each testified that in

the commercial operations conducted by defendants, the

paint was not on the charged atomizing head long enough

to receive a*® charge; the atomization was solely centrifu-

gal. The particles so atomized were then charged by the

“field”; apparently primarily immediately adjacent to the

edge of the rotating head, where a corona-like field existed;

but in part the charging might occur along the pathway of

the particle toward the work.®° Mantell and Green further

testified that under the influence of the field, originally

centrifugally formed particles might further atomize—

which, if true, would seem to be electrostatic atomization,

although Mantell denied this.

This testimony seems to mean that the paint, at a peri-

pheral speed of 133 m. p. h. at the edge of the head, and

electric forces, moving at 186,000 miles a second, both

leave the edge of the head without any charge being im-

parted; but immediately upon centrifugal atomization oc-

curring, most of the articles receive a charge. Admittedly,

in the paints ordinarily used, with the field on, electrostatic

atomization occurs when the head is stationary; and it oc-

curs when the head is rotated at any speed just short of

that where centrifugal atomization would take place if the

head was not charged. In these cases, the electric charge

49 Dr. Mantell was not entirely consistent. At one point he seemed

to indicate that the paint might receive a partial charge at the

rim of the atomizing head, but that such charge would be insuf-

ficient to effect electrostatic atomization.

50 The charging, for purposes of dispersion and deposition, out

of the line of greatest electrostatic intensity, is a concept pre-

senting some difficulty to the court, particularly where the face

of the head is parallel to the work. The result of purely centrifugal

atomization would be the throwing of particles off the edge in a

- eirecular pattern, none of which would be likely to reach the work.

If the centrifugal force were sufficient to throw particles through

t::e field at its point of greatest intensity, without receiving a

charge, it is hard to understand why they would, travelling awa,

from the field, later come under its influence.

79

has “time” to charge and electrostatically atomize the paint.

But defendants contend that as soon as a rate of rotation

sufficient centrifugally to atomize is reached, then whether

the head is charged or not, the atomization becomes solely

centrifugal.

On some of the heads, 900 r. p. m. seemed the point at

which centrifugal atomization would occur. According to

defendants’ position, at 0 r. p. m., 1 r. p. m., etc. up to 900,

the atomization is electrostatic (centrifugal force merelv

presenting the paint to the rim in a continuous film for

electrostatic atomization); but at 901 r. p. m. centrifugal

force takes over and ousts the charge as an atomizing

agent; the paint does not stay on the head or at the rim a

time long enough to be atomized: Were this the case, there

would be no point in charging the head; the creation of a

field immediately adjacent the edge of the head would

suffice.5! But defendants do charge the heads, despite the

insulating problems so created.

This effort to use the teachings of the Ransburg patents

but to deny their efficacy is suspect.

When the first accused Ionic system was initially brought

out, head speeds were low. In an early magazine article,

Sedlacsik, Jr. described the speed of the Model 50 as “vari-

able from 400 to 2,000 r. p. m.” During 1956 and 1957, the

Model 50 speeds recommended to customers were in the

1,150-2,500 r. p. m. range. In January 1958, Sedlacsik, Sr.

said that with respect to the Model 12, speed “is not im-

portant. Anywhere from several hundred to several thou-

sands.” In January 1958, Sedlacsik, Jr. deposed that the

51In fact, Green testified that in his opinion a modification of

Ransburg No. 1, in which paint was centrifugally atomized and

thrown into a grid field, would be better; there was a loss by

placing the field at the “top” of the disc.

ce ee eae SATS re Er ey ee eee oe eee

standard speed of the Model 12 was 1,500 r. p. m., although

it was capable of variation from 0 to 4,000 r. p. m.

During the trial, as the defense of centrifugal atomiza-

tion developed, it was testified that the recommended Model

12 speed “in most cases” was 4,000 r. p. m. and could reach

7,000 r. p. m. The trial testimony was that the other (disc-

type) heads normally operated “in most cases” at 2,000 to

4,000 r. p. m. |

During the trial of the case, Sedlacsik, Jr., in his effort

to show how completely centrifugal force overcame electro-

static forces, testified’? that at speeds where centrifugal

atemization would take place, 25 to 50 per cent of the par-

ticles are mechanically projected and deposited on the work,

the electrostatic field having no influence on them at all.

He was asked how, if this were the case, some of these

particles were not cast in the direction of the spaces be-

tween articles to be painted, and so would pass through,

and be lost. He replied that with the field on, “being the

particles are cast through the charged zone, they pick up

a sufficient charge to effect wraparound of any particles

that would be normally going through the part, beyond

the part.”

He repeated this testimony, saying :**

“In other words, what I am trying to say is that any

particles which would be—well, Je+ -.. sxplain it this way:

Without the electrostatic field, you are depositing X amount

of particles on the object, and the balance of these particles

would be driven through and would deposit or fall out on

to the floor; whereas when the electrostatic field is applied

in that case, the particles which would normally fall out

52 Transcript, pages 2642-2648.

53 Transcript, page 2646.

4

81

would be precipitated over to the object either directly in

front of it or effect wraparound.”

Perhaps the most charitable interpretation of this would

be to call it absurd. According to Sedlacsik, Jr., all par-

ticles start centrifugally atomized and uncharged. All pass

through an electrostatic field. Those (some 25 to 50 per

cent) which by mechanical force happen to be directed so

that they would hit a moving target remain uncharged.

Those which by virtue of their direction would miss the

moving target become charged, and so are deposited either

direciiy, or as wraparound. The basis of selectivity by

which the field determines those not properly aimed, and

kindly charges them and them alone, and passes by the

others, is not disclosed or suggested. Somehow or other,

the mechanically properly aimed particles carry little

“Keep off” signs, and those that would be lost have “Help

wanted” signs; which signs are invariably read, under-

stood and obeyed by the electrostatic field.

To the court, the contention of plaintiff is far more

plausible that when the field is on and the head is not

shielded, with or without rotation, the atomization is

electrostatically effected, or at least occurs at the point

of greatest field intensity; that all particles are given their

charge at that time, and then follow their predestined

course along the various lines of force from the head to

the work.

Green admitted that his theory that at high rates of

rotation the paint did not remain on the head long enough

to receive a charge, and that the charge was imparted as

the particle traveled from the head toward the work, and

that further break-up occurred in flight, did not occur to

him until after the trial had begun. It developed after the

trial had begun. It developed from his observation of the

82

operation of Ionic devices and his study of high speed

pictures of such operations, and of various spot sizes found

on “zip strips.’

This post litem motam theory might well be compared

with the statements by Green in the application for a patent

on the Ransburg No. 1 System, of which Green was a co-

inventor, in which it is said that where “the gun itself is

the discharge electrode * * * all particles of the spray may

then be expected to be electrically charged * * *” 5

Green admitted that he had had no experience with centri-

fugal atomization, and several times wondered why he was

being retained by defendants, and how he could help. Ap-

parently he found out, in time to testify.

Despite his professional background, the court doubts

Dr. Mantell’s qualification as an expert in this case.5*® He

54 So called because solid strips of paper or aluminum would be

placed between the head and the work, and then quickly pulled

or “zipped” away. A number of particles would be intercepted, and

deposited on the strip.

55 Patent No. 2,247,963, issued July 1, 1941 to Harold P. Rans-

burg and Harry J. Green, column 1, lines 36 to 38. Emphasis

supplied.

56In over 88 pages ot the Transcript (3067-3154) largely in-

tended to indoctrinate the court into the mysteries of the electro-

static field, with blackboard and a “Listen My Children and You

Shall Hear” technique, he insisted that an ampere is “the quantity

of silver deposited per second” (3070, 3153-3154) and that “no

voltage is set in that relation.” (ibid.); that this was the Bureau

of Standards definition.

The definition to which Mantell apparently intended to refer

was that found in 15 U.S.C.A. § 221 before repeal in 1950, in

which the ampere is defined as “the practical equivalent of the

unvarying current, which when passed through a solution of nitrate

of silver ‘n water in accordance with standard specifications,

deposits silver at the rate of one thousand one hundred and eighteen

millionths of a gram per second.” (Emphasis supplied).

Under Mantell’s definition it might well be asked: “How many

amperes in a dime, Doctor?”

The volt, the unit of electromotiv: foree, was then defined,

15 U.S.C.A. § 221, as “the electromotive force that, steadily applied

to a conductor whose resistance is one international ohm, will pro-

duce a current of an international ampere * * *,”

83

testified®’ that in electrostatic atomization, cusps formed

in radial lines, projecting almost radially outward, and at

the end the cusp breaks into droplets. In centrifugal atomi-

zation “cusps” form, curl, a drop or “tadpole” is formed,

larger than the ligament (umbilical cord) attaching it to

the mother liquid, and it is then torn or whipped off. Ap-

parently the umbilical cord retracts, and the process is

repeated. He further testified that on the high speed motion

pictures of defendants’ devices in operation, some of both

types of atomization could be seen—(in which event the

atomization is clearly not wholly centrifugal). However,

he flatly refused®* to examine stills taken from these very

motion pictures and say if they were taken with the field

on or off—a determination that the court was able success-

fully to make for itself some months later at the argument,

and without having first referred to the labels.

His “clincher” that atomization on Ionic devices was

centrifugal was that only about 100 waits of power were

supplied to the field, while a one-half horse power motor

(378 watts) was used to rotate the head, therefore the

effectiveness of the centrifugal force must be approxi-

mately four times that of the field, is a patent non sequitur.

That Manitell was an advocate was demonstrated in his

insistence that electrostatic atomization existed only if the

disrupting electric force were imparted and received at the

face or edge of the head. In his opinion, if a drop were

formed mechanicaliy, and was further broken up in and by

the field; or if the charge were transmitted from the atom-

izing head through the umbilical cord to a centrifugally

formed drop, and the drop thereby disintegrated, neither

57 Transcript, pages 3236-3237.

58 Transcript, pages 3253-3255.

PRR, WRN Opn eI IMe. (remem OD Tone

84

of these was electrostatic atomization."® To the court, par-

ticles that are electrostatically atomized are formed as the

result of electrostatic atomization, no matter where they

are so atomized.

Although insisting that the atomization at 2,500 r.p.m.

on a fifteen-inch dise was purely centrifugal, Mantell did

say that the existence of a field on the dise made it easier

to atomize mechanically; that a charge might be trans-

mitted from the dise through the umbilical cord to a drop,

causing its disintegration; and that (along with Green)

further atomization after leaving the dise might be effected

by the field—each of which certainly negatives purely cen-

trifugal or mechanical atomization, and all of which

strongly indicate, if, they do not in fact require, the con-

clusion that defendants are using plaintiff’s patents and

at least getting some benefit from them.

The plaintiff's expert, Dr. Emery P. Miller, was far more

persuasive both in the manner and content of his testimony.

His statement was not contradicted that with voltage ap-

plied to the head of the atomizing device (dise or bell)

under any of the commercial aspects practiced by tne

parties, the spot size of the atomized particles was always

smaller, at any particular speed of rotation, than at the

same speed of rotation at no voltage.*' This would show

that the effect of electrostatic forces on atomization was

never completely superseded or blanked out by centrif-

ngal force. The court accepts this testimony, and draws —

59 Transcript, pages 3241, 3251.

6 Mantell was also obviously in error in his conclusion that the

centrifugal force at the periphery of a four-inch dise rotating at

5,000 r. p. m. would be greater than that at the periphery of a

two-inch dise rotating at 10,000 r. p. m. Transcript, page 3232;

see rebuttal, Transcript pages 3590-3594.

61 See PX 100. Dukes, called by defendants, testified to the same

observations.

the conclusion indicated. This would seem sufficient to con-

stitute infringement under the holding in Tilghman v.

Proctor, 1880, 102 U.S. 707, 26 L.Ed. 279—a case ~trongly

relied upon by plaintiff in briefs and argument, but as to

which defendants have attempted no answer or differ-

entiation.

Tilghman’s patent dealt with a method of creating fatty

acid: from fats. In the prior art this had been done by a

process involving the treatment of fats with both water

and lime in an open vessel, sometimes with the introduc-

tion of superheated steam, at temperatures below the boil-

ing point of water. Tilghman discovered that the same

result could be obtained by elimiaating the use of lime, and

treating the fats with water only, in a closed vesse! at a

temperature well above tke bciling point of water (612° F.

being preferred) but under sufficient rressure to prevent

the water from boiling. His patent claimed “* * * the

manufacturing of fat acids and glycerine from fatty bodies

by the action of water at a high temperature and pressure.”

The defendants in Tilghman used water, and lime in the

proportions of 4-7 per cent (in place of the prior art 12-14

per cent), in admixture with fat, and a temperature of 210°

F. In holding this to be an infringement, the court said:

«* * * They use water in admixture with fat, heated

to a high degree, far above the boiling point, and yet

subjected to such pressure as to prevent the water

from being converted into steam; and though they may

also use other things at the same time, which other

things may facilitate the operation, or render a less

degree of heat necessary than would be required when

water alone is used, and thus actually improve the

process of Tilghman; yet this process is included in

their cperation, and forms the basis of it. It is idle,

therefore, to say that they do not infringe Tilghman’s

patent. It is unnecessary to determine what precise

86

part the lime used by the defendants plays in their

process; whether, as the complainant contends, it sa-

ponifies the fat to a certain extent, leaving the re-

mainder to be acted upon by the water alone purely

after the process of Tilghman; or whether, as the de-

fendants contend, the lime produces a more perfect

and active commixture of the fat and water, or pre-

disposes the fat to unite with the requisite elements

of water necessary for producing glycerine and the fat

acids—in either case the process of Tilghman, modi-

fied or unmodified by the supposed improvement, un-

derlies the operation performed in the defendants’

boilers.” (102 U.S. 731-732, 26 L.Ed. 279).

«e * * Tt is probably true, as contended for by the

defendants, that by the use of a smali portion of lime,

the process can be performed with less heat than if

none is used. It may be an improvement to usc the

lime for that purpose; but the process remains esub-

stantially the same. The patent cannot be evaded in

that way. The matter may be stated thus: Tilghman

discovers a process of decomposing fats by mixing

them with water, and heating the mixture to a high

temperature under a pressure that prevents the forma-

tion of steam. It is a new process, never known be-

fore. The defendants seeing the utility of the process,

and believing that they can use a method somewhat

similar without infringing Tilghman’s patent, put a

little lime into the mixture, and find that it helps the

operation, and that they do not have to use so high a

degree of heat as would otherwise be necessary. Still,

the degree of heat required is very high, at least a

hundred degrees above the boiling-point; and a strong

boiler or vessel is used in order to restrain the water

from rising into steam. Can a balder case be con-

ceived of an a*tempted evasion and a real infringement

of a patent?” (102 U.S. 733, 26 L.Ed. 279).

But it is not necessary to decide this case by choosing

a winner in the battle of the experts. In the court’s opinion,

AS TAA WDROP LE AT SEA ALEDG SUE

87

irrefutable evidence, apart from opinions, exists that in

none of the operations practiced by either plaintiff or

defendants is electrostatic atomization eliminated. Refer-

ence has been made to the distinctive appearance of the

cusps in purely electrostatic atomization from that of the

“cusps” or balls or “tadpoles” incident to centrifugal atom-

ization.

First: High speed photographs” showing the forms

assumed oy the liquid at the rims of heads rotating at and

above the speeds at which defendants’ witnesses contended

centrifugal force suppresses (eliminates) electrical atomiz-

ing effects, clearly show the persistence of electrostatic

atomization.

Second: Motion pictures were exhibited by defendants

of dual disc operations (M-50), the Modei 12 and the Hop-

kins nozzle at various speeds and voltages. Because of

the positions at which defendants had directed that the

camera be placed, and the amount of, and lack of control

over, the paint fed, definition at high speeds was equivocal.

If it did not clearly identify electrostatic atomization, with

the field on, it certainly did not establish its suppression.

At lower speeds, the characteristic electrostatic atomiza-

tion could be clearly observed.

One striking occurrence did take place. Motion pictures

of the operation of a No. 12 device, at 350 to 6,000 r.p.m.

with and without a field, were exhibited. One sequence was

titled as showing the operation at 6,000 r.p.m. with 0 volt-

age, and another at 6,000 revolutions with 100 KV. Dr.

Miller, observing the pictures, noticed the “tadpole” struc-

tures in the sequence supposed to be with voltage on, and

62 Plaintiff graphically, but with over-simplication characterizes

electrostatic atomization as resembling a machine gun discharge,

and centrifugal atomization as resembling sling shots.

63 E. g., PX 97, 98, 102, 233, 286.

MEM DGPS KE

88

tue characteristic electrostatic atomization in the sequence

supposed to be with voltage off. He concluded that the

labels or titling had been reversed. This was admitted by

defendants. The court does not believe the error to have

been intentional. It dees show that recognizable differ-

ences existed between the two forms of atomization so un-

mistakable that a trained observer could distinguish,

despite the labels; and that electrostatic atomization per-

sisted at 6,000 r.p.m.

Third: The M-50 consists of two similar discs, of vary-

ing sizes. Normally they are spaced four inches apart,

rotate in the same direction, and carry similar charges of

like polarity. Since like charges repel, it would be expected

that the field between the discs would be cancelled out, or at

least be weaker than on opposite sides of the discs. Such

is the fact.

In the course of defendants’ demonstrations of the M-50

in action, the court observed** that there was a definite

deposition of paint on the floor of the booth, heaviest in the

space immediately between the two discs, and then fanning

out noticeably for a radius of two and one-half to three feet,

and then rapidly thinning out with some fine deposition

up to the throat of the booth. There also appeared to be

a cloud-like build-up between the two discs. Defendants

argued that this had nothing to do with atomization, but

only with an inadequate charging of the articles after for-

mation. However, a high speed photograph® of all of one

dise, and a portion of the other, clearly shows a mixture

of centrifugal and impaired electrostatic atomization in the

roughly 90° sections of the dise circumferences nearest each

other, and purely electrostatic atomization in the remain-

ing 270°.

64 Transcript, page 565.

65 PX, 101 B. 203 F.Supp.—17.

89

Fourth: In view of defendants’ theory that paint would

not, at high speeds, remain on the surface iong enough to

be charged, and that particles were formed entirely by

centrifugal force and acquired their charge in space, plain-

tiff. prepared apparatus to test it. This apparatus was

essentially a Model 50 system, except that two sharp-edged

washers were installed, one immediately over and the other

beneatk the disc, each extending outwardly beyond the disc

edge. The disc and the two washers were connected to the

high voltage source, the washers thus acting as shields,

and preventing any effective charge on the paint, and any

atomizing field gradient at the disc edge.** The paint de-

posited with the washers removed (the normal Model 50

operation) was 75 per cent greater than when the disc

was insulated and the washers provided the field. The

ignorant } aint apparently found that it did have time to

acquire a charge while on the dise under ordinary operat-

ing conditions.

The court finds as a fact, and concludes as a matter of

law, that the accused devices in operation do not atomize

exciusively by centrifugal force, and do not supersede

electrosiatic atomization. Defendants concede that a charged

disc assists centrifugal atomization. Plaintiff recogizes that

centrifugal force increases the amount of liquid that can

be electrostatically atomized in a given period of time, by

presenting it to the field in a uniform, thin, replenished

film.

Defendants are accordingly making use of the matters

claimed in the claims in suit of the Starkey 2,685,536 and

2,794,417, the Crouse 2,893,893, and the Ransburg 2,893,894

patents, and are liable for infringement of such claims.

It matters not that they may not be using all that is dis-

66 PX 245; transcript, pages 3621-3631.

etree ravens caer emmmnnn

9

closed and claimed, or that they may be making an impaired

use (as in the M-50 operation).

Even under defendants’ theory, atomization occurs at

the point of greatest field intensity.

If defendants were sincere in their professions, they

would not charge the rotating heads, but would create a

field adjacent to, or away from, the atomizing head.

[1,2] The inventive ideas of plaintiff have been appro-

priated; supplementation or modification, even if an

improvement, will not avoid infringement, Specialty Equip-

ment & Machinery Corp. v. Zell Motor Car Co., 4 Cir. 1952,

193 F.2d 515, 519; nor will an impairment, Weiss v. R. Hoe

& Co., 2 Cir. 1940, 109 F.2d 722, 726; Matthews v. Allen,

4 Cir. 1950, 182 F.2d 824, 827-828; Eames v. Andrews, 1887,

122 U.S. 40, 70, 7 S.Ct. 1073, 30 L.Ed. 1964; Hoeltke v.

C. M. Kemp, 4 Cir. 1936, 80 F.2d 912, 941. “If the in-

fringing device performs the same function as the patented

device, it is immaterial that it also performs some other

function. It is still * * * an appropriation of the patented

invention.” Chesapeake & Ohio Ry. Co. v. Kaltenbach, 4

Cir. 1939, 95 F.2d 801, 804.

Defendants’ Model 12 apparatus is not charged with in-

fringing the ’602 patent.

Defendants concede®’ that if the ’602 is valid, their Model

50 apparatus would infringe. The court has found the ’602

patent to be valid, and therefore finds it infringed by de-

fendants’ Model 50 apparatus.

Defendants de

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