Petition for a Writ of Certiorari — General Motors Corp. v. Devex Corp.
Supreme Court brief1973
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TABLE OF CONTENTS
PAGE
r,, . 1
,,, A...... 2
QUESTIONS PRESENTED ...................... 2
r cue abscissa 2
oe tie ge SES RO Ee ee ae 2
CONSTITUTIONAL PROVISION AND
STATUTES INVOLVED ........................ 3
STATEMENT OF THE CASE ................... 3
The Validity Decision Of The Court Of Appeals
For The Seventh Circuit ........................ 2
The Non-Infringement Ruling Of The Court Of
Appeals For The Seventh Circuit ................ 6
The Infringement Ruling Of The Court Of Appeals
— d ²˙ 7
REASONS FOR GRANTING THE WRIT ....._. 10
otto dheeae pe BR OT OO? ETT 10
2E... 14
%% 18
APPENDIX
United States Constitution, Art. I §8,CL8........ A-1
3 U.S. Code, Section 103 ........................ A-1
35 U.S. Code, Section 112 ........................ A-1
Consolidated Cases (Devea v. General Motors, De-
vex v. Houdaille)
Opinion, findings of fact, conclusions of law on
validity (unreported) ..................... A-3
ii
PAGE
Opinion on validity, Court of Appeals for the
Seventh Cireuit (321 F.2d 234) ............. A-13
Deveæ v. Houdailie Industries
Opinion on infringement, Court of Appeals for the
Seventh Cireuit (382 F. 2d 17) ʒ 7 A-20
Deve v. General Motors
Opinion of Delaware Distriet Court on Motion for
summary judgment on infringement (263 F.Supp.
RO FOREN — — A-29
Opinion, findings of fact, and conclusions of law on
infringement (316 F.Supp. 1376) .............. A-39
Opinion on infringement, Court of Appeals for the
Third Circuit (467 F.2d 257) ................. A-54
Judgment, Court of Appeals for the Third Circuit A-61
Order denying petition for rehearing, Court of Ap-
peals for the Third Circuit ...... “yo aaa A-63
CASES CITED
Anderson’s Black Rock v. Pavement Salvage Co., 396
e œ œ-ui!:!:!:!: Ä‚——. . 9, 14
Ad P Tea Co. v. Supermarket Corp., 340 U.S. 147
rr Ae ae ea 11,14
Beckman Instruments v. Chemtronics, Inc., 439 F.2d
,, are 16, 17
Blonder-Tongue Labs v. University of Illinois, 402
,,,, ̃ .... 12
Calmar, Inc. v. Cook Chemical Co., 383 U.S. 26 (1966) 14
Carter-Wallace v. Otte, ... F.2d ..., 176 USPQ 2
,,, ag te taal aaa a 15,17
Devex v. General Motors and Houdaille Industries,
321 F. 2d 234 (7th Cir. 19863000ꝝ ; 1, 2,5
Deveæ v. General Motors, 263 F.Supp. 17 (D. Dela-
,, ¾ ,... 7, 8, 12
iii
PAGE
Deveæ v. Houdaille Industries, 148 USPQ 74, 77 (N.D.
ESE EE ON SE IR t eM ae 6
Dever v. Houdaille Industries, 382 F.2d 17 (7th Cir.
PPP. ͤ Naa Re TE 1, 2, 6, 10, 15
Devex v. General Motors, 316 F.Supp. 1376 (D. Dela-
T: Gace Rac eg Ue a ys 2,8
Devex v. General Motors, 467 F.2d 257 (3d Cir.1972).. 1
Exhibit Supply Co. v. Ace Patents Co., 315 U.S. 126
—r! ͤ y 13
Graham v. John Deere Co., 383 U.S. 1 (1966) ....... 14
Graver Tank & Mfg. Co. v. Linde Air Products, 336
. EEN a alla 16, 17
Hamtlton-Brown Shoe Co. v. Wolf Bros. & Co., 240
rr eanae ieee 14
Linde Air Products v. Graver Tank & Mfg. Co., 167
F. 2d 531 (7th Cir. — ͤ os 16
Voll v. O. M. Scott & Sons Co., 467 F. 2d 295
c 14, 17
Smith v. Hall, 301 U.S. 21UU·˖ . 12
United Carbon Co. v. Binney and Smith Co., 317 U.S.
hr 9
United States v. Adams, 383 U.S. 39 (2558) ....... 14, 16
Universal Oil Products Co. v. Globe Oil and Refining
Co., 322 U.S. 471 —Aͤ 10
Weber Electric Co. v. Freeman, 256 U. S. 668 (1921) .. 10
CONSTITUTION
US. Constitution, Article I, Section 8, Cl. S. 3, A-1
STATUTES AND RULES
TTV... 2
1771111 3, A-1
VW 3, A-1
In THE
Supreme Court of the United States
OorokRR Term 1972
No. 72-1161
GENERAL MOTORS CORPORATION,
Petitioner,
v.
DEVEX CORPORATION, et al.,
Respondents.
PETITION FOR A WRIT OF CERTIORARI TO
THE UNITED STATES COURT OF APPEALS
FOR THE THIRD CIRCUIT
Petitioner, General Motors Corporation, respectfully
prays that a writ of certiorari issue to review the judgment
entered on September 26, 1972 by the United States Court
of Appeals for the Third Circuit.
OPINIONS BELOW
The infringement opinion of the Court of Appeals for
the Third Circuit in this case is reported at 467 F.2d 257
(A-54, infra) i. The conflicting non-infringement opinion of
the Court of Appeals for the Seventh Circuit in the case of
Devex v. Houdaille Industries is reported at 382 F.2d 17
(A-20, infra). The opinion of the Court of Appeals for
the Seventh Circuit holding validity in the previously con-
solidated case of Dever v. General Motors and Houdaille
1 Citations to the Appendix at the rear of this petition are desig-
noted by an “A” page number and “infra”.
2
Industries is reported at 321 F.2d 234 (A-13, infra). The
opinion, findings of fact and conclusions of law of the Dis.
trict Court of Delaware holding no infringement in this
case are reported at 316 F. Supp. 1376 (A-39, infra).
JURISDICTION
The judgment of the Court of Appeals was entered on
September 26, 1972 (A-61, infra). A timely petition for
rehearing was denied November 29, 1972 (A-63, infra) and
this Petition For A Writ Of Certiorari was filed within
90 days of that date. The jurisdiction of this Court is
invoked under 28 U.S.C. § 1254(1).
QUESTIONS PRESENTED
1.
Where a patent monopoly has been upheld solely on the
basis of a new and surprising synergistic result occurring
under one of many process applications, may the monopoly
be expanded thereafter and enforced against other process
applications in which such result does not and cannot be
shown to occur?
- The Court of Appeals for the Third Circuit has held
“yes”.? The Court of Appeals for the Seventh Circuit has
held “no”.
May a process patent claim which unambiguously defines
in broad terms a combination of old elements which are
known to the prior art and which, as written, is invalid in
2 Devex v. General Motors, 467 F.2d 257 (3d Cir. 1972) (A-54,
infra.)
3 Dever v. Houdaille Industries, 382 F.2d 17 (7th Cir. 1967)
(A-20, infra.)
3
view of the prior art, be held valid by giving the claim a
narrow construction limited to a new and surprising syner-
gistic result which is not described in the patent and which
occurs only under certain conditions?
CONSTITUTIONAL PROVISION AND
STATUTES INVOLVED
This case involves Article I, Section 8, Clause 8 of
the Constitution (A-1, infra); Section 103 of the Patent
Act of 1952, 35 U.S.C. § 103 (A-1, infra); and Section 112
of the Patent Act of 1952, 35 U.S.C. § 112 (A-1, infra).
STATEMENT OF THE CASE
Claim 4 of reissue patent No. 27,017,* here at issue, con-
cerns the old process of applying a lubricant to steel prior
to deforming the original shape. For example, automobile
bumpers are manufactured by coating the flat steel stock
with lubricant and placing it between dies, which are then
squeezed together to bend the steel and form the bumper.
The lubricant reduces friction and wear on both the steel
product and the die, thus serving much the same pur-
pose as soap applied to the finger to remove a ring, or to
a wood screw to ease insertion. The three components of
the lubricant, and each of the steps of the process, have
been used alone and in combinations in the prior art.
The contested patent claim literally recites broad mo-
nopoly rights over lubricating processes involved in any
PX 1, Vol. 1. Five volumes of exhibits and seven volumes of a
printed appendix which were before the Third Cireuit Court of
Appeals have been transmitted as part of the certified record to this
Court. Hereinafter “Vol.” followed by the volume number refers
to an exhibit book and “App.” followed by the volume number and
page number refers to the printed Court of Appeals’ appendix.
4
type of cold steel forming.“ After the grant of the reissue
patent in 1955, the patent holders brought infringement
actions against General Motors and Houdaille Industries,
making bumpers and other products. These defendants
responded by contesting the validity of the claim in light
of the prior art.
The Validity Decision Of The Court
Of Appeals For The Seventh Circuit
In 1959, Devex v. General Motors was consolidated with
Devex v. Houdaille Industries, for a trial in the Northern
District of Illinois on the common issue of patent validity.
The District Court, after hearing, concluded that the claim
was invalid as met by the prior art.“ The court noted
plaintiffs’ argument that, under certain limited conditions,
a chemical reaction of borax with soap and zinc phosphate
of the phosphate coating occurred in a new and surprising
manner “essential to the successful operation of the process
described in claim 4...”.7 It pointed out that these chemical
reactions were not disclosed in or suggested in the patent,“
and held further that the patent claim was void for failure
Claim 4 recites:
5“The process of working ferrous metal which comprises forming
on the surface of the metal a phosphate coating and superimposing
thereon a fixed film of a composition comprising a solid meltable
organic binding material containing distributed therethrough a
solid inorganic compound meltable at a temperature below the melt-
ing point of the ferrous metal phosphate of said coating and having
a hardness not exceeding 5 on the Mohs’ hardness scale, and there-
after deforming the metal.”
6 App. 1:261 (A-3, infra).
7 App. 1:243 (A-7, infra).
8 (A-7, infra.) The language of Claim 4 is significant in that it
says nothing about any coaction of the ingredients or any particular
process temperature, pressure, or other conditions, nor does it recite
either soap or borax.
E. oe. e
Ss
5
to “particularly point out and distinctly claim . . the in-
vention as required by 35 U.S.C. 112.”
On appeal from this finding of patent invalidity, the
Court of Appeals for the Seventh Circuit reversed.!° While
confirming the lower court’s conclusion that the claim did
not state anything other than already available combina-
tions of old elements known to prior art, the Court of
Appeals found validity in the “new and unexpected results”
which resulted from “coaction” of the elements under certain
process applications.“! Specifically, the court relied upon
evidence that under the high pressure and temperatures
associated with some tests on steel wire drawing “the abra-
sive phosphate coating reacts with the borax to form amor-
phous glassy materials which contribute significantly to the
lubricating value of the coating. 12 These synergistic ef-
fects, which occurred only under certain conditions, were
held adequate to validate the patent. is
App. 1:260, 261 (A-8, 11, infra).
1% Dever Corp. v. General Motors and Houdaille, 321 F.2d 234
(1963) (A-13, infra).
"The Court of Appeals in part justified this result by holding
that patent claims may be “generic in character and do not neces-
sarily have to be specific”. 321 F.2d at 238 (A-17, infra).
12 In the tests, phosphate coated steel wire rods having an initial
diameter of about one-fourth of an inch were drawn through two
dies in succession. Each die reduced the cross-section area about
N percent, giving a total reduction of about 40 percent. (App.
3917-19) No metal bending, such as in the bumper forming proc-
e now accused, was involved. The lubricant used over the phos-
phate coating was 50 percent borax (App. 3:913-14) rather than
the 5 percent borax and 15 percent borax in the lubricants used in
the presently accused processes. (n. 23, infra).
n This Court denied the ensuing Petition for Certiorari, 375
US. 971. It was opposed by Devex, inter alia, on the ground that
the judgment of the Seventh Circuit was interlocutory.
6
The Non-Infringement Ruling Of The Court
Of Appeals For The Seventh Circuit
Following the Seventh Circuit reversal on the issue of
validity, the Houdaille and General Motors cases followed
separate courses.
In the Houdaille case, plaintiffs brought a motion for
summary judgment of infringement, on the sole ground
that Houdaille had successfully used soap, borax and phos-
phate metal deforming processes to make bumpers. There
were issues of fact on whether Houdaille’s method pro-
duced the unexpected results referred to in the validity
decision. Notwithstanding, since the process was literally
within the language of the claim which the Court of Appeals
had held valid, the District Court believed itself bound
and granted plaintiff’s motion.“ On appeal, the Seventh
Circuit reversed,’ again recognizing that the claim if read
literally would be invalid,! and emphasizing that “our pre-
vious decision [on validity] requires that the claim in suit
be given a narrow and restricted construction.!”
The Court of Appeals added that the plaintiffs “having
obtained a decision of validity on a narrow and restricted
basis . . . now contend, inconsistently we think, that the
claim must be applied literally to defendant’s alleged in-
fringing process.“ The Court then stated that:
14148 USPQ 74, 77 (1965).
18 Dever v. Houdaille Industries, 382 F.2d 17 (1967) (A-20,
infra).
16“The ‘new and unexpected result’ which plaintiffs urged upon
this Court in their argument in behalf of validity, to which we gave
recognition, certainly was not revealed by a literal reading of Claim
4. In fact, we can surmise with some assurance that if a literal
reading of the claim had been relied upon, we would have affirmed
the District Court in its holding of invalidity in view of the prior
art.” 382 F. 2d at 23 (A-26, infra).
17 382 F. 2d at 22 (A-25, infra).
18 382 F. 2d at 22, 23 (A-25, 26, infra).
Aes: alte” as Fd i pi nt
7
“Such a construction would monopolize the whole
broad field of metal forming with any use of a dry
soap and borax over phosphate at any temperature or
pressure, regardless of the results.” 382 F. 2d at 23
(A-26, infra)
The Seventh Circuit held that in order to prevail, the
plaintiffs must carry the burden of proving that the same
new and surprising result would have been obtained in the
drawing of defendant’s alleged infringing automobile bump-
ers. o It found that there was an issue of fact on this matter.
Indeed, it noted that “in the instant case, as in General
Motors, there is evidence that the patentee’s process recog-
nized by this Court required ‘extreme temperatures and
pressure of from 100,000 to 250,000 pounds Hertz stress,’ ”
and that “the ( Friedberg) tests relied upon (to hold val-
idity) were made in the drawing of wire rods.
In short, the Seventh Circuit held that plaintiffs could
not successfully prosecute infringement claims without
proving that the accused processes were under conditions
producing the same chemical coaction or synergistic result
upon which the finding of validity had been based.
The Infringement Ruling Of The Court
Of Appeals For The Third Circuit
After the Seventh Circuit ruling on validity, the GM
case was transferred to the District of Delaware, where the
plaintiffs brought a similar motion for summary judgment
on the infringement issue as in the Houdaille case. Unlike
the Chicago District Court, the Delaware District Court
denied the motion, finding that there was an issue of fact as
to whether the GM processes had the unexpected results
upon which the Seventh Circuit had sustained validity.?!
19 382 F.2d at 23, 24 (A-26, 27, infra).
% 382 F. 2d at 23 (A-26, infra).
u 263 F. Supp. at 25 (A-29, 37, infra).
Judge Caleb Wright stated:
. . . the construction of a claim when its validity is
contested controls the construction of that same claim
when its infringement is alleged. The patentee cannot
urge a restrictive interpretation of his claim to avoid
invalidity and then an expansive interpretation to en-
snare infringers”. 263 F. Supp. at 25 (A-37) 22
In the subsequent infringement trial, plaintiffs attempted
to prove that the accused GM processes? employed temper-
ature and pressure conditions which produced the same
chemical coaction and synergism as had been relied upon
by the Seventh Circuit in holding validity. Defendant ad-
duced contrary evidence.
On the basis of detailed findings of fact, the District Court
held for defendant, concluding that no infringement had
been shown.?“ The court held that plaintiffs had the burden
“to prove that a coaction occurs in the accused processes
among the soap, borax and phosphate at high temper-
atures and pressures, causing new compounds, includ-
ing but not limited to glassy amphorous compounds,
to be formed, and inhibiting the formation of water
insoluble compounds.“
22 This statement was quoted with approval by the Court of
Appeals for the Seventh Circuit in its Houdaille non-infringement
opinion. 382 F.2d at 23 (A-26, infra).
23 The processes here accused are the Pontiae bumper forming
process, the Diesel Equipment “valve lifting plunger process” and
the Pontiac “rocket forming” process (A-43 to 46, infra). The first
process used “Bonderlube 246”, containing 15% borax and 85%
soap. The last two processes used “Bonderlube 235”, containing 3%
borax, 2% sodium nitrite, and 85% soap. (Id.). None of the three
processes involved any form of wire drawing, as was used in the
tests relied upon in the validity holding, nor did they use 50%
borax.
24 316 F. Supp. 1376 (A-39, infra).
25 A-41, infra. Judge Wright, in the earlier motion ruling deny-
ing summary judgment of infringement, held that defendant was
bound by the Seventh Circuit ruling on validity (263 F.Supp.
at 25), a holding which was affirmed by the Court of Appeals for
the Third Circuit, 467 F.2d at 262 (A-59, infra).
9
and concluded that plaintiffs had failed to carry that
burden.
The Court of Appeals for the Third Circuit did not dis-
tarb these or any other underlying findings of fact. But it
nevertheless reversed. It did so by applying a standard
squarely rejected by the Seventh Circuit and the District
Court of Delaware. It stated that:
“if it is directly determinable that if the two lubricants
have essentially the same components, are applied in
the same way and that the results of their use are
essentially the same, the disputation of chemists about
the chemical interactions that occurred in the processes
cannot be decisive.
Only by ignoring the fact that it was precisely such “chem-
ical interactions” that prompted the previous holding of
patentability was the Third Circuit able to conclude that:
“In these circumstances, the demonstrated effectiveness
of GM practice in producing a satisfactory drawing
and ease of cleaning that Hendricks had achieved must
prevail over any contrary inference drawn from dis-
puted expert testimony as to comparative i
in what may well not have been equivalent situations.
36 467 F. 2d at 261 (A-58, infra).
* Id. at 262 (A-59, infra). The Court appears to have regarded
satisfactory results as sufficient to demonstrate patent infringement.
This is not the law. A result (or function) is not patentable.
United Carbon Co. v. Binney and Smith Co., 317 U.S. 228, 234
(1942). Where, as here, there is a combination of old elements,
patentability rests on the existence of coaction or synergistic effect.
Anderson’s Black Rock v. Pavement Salvage Co., 396 U.S. 57, 61-3
(1969). The Seventh Cireuit based its holding of validity on the
presence of coaction. The only coaction alleged in the present case
is the chemical coaction, the only way to prove such coaction is by
chemical testimony, and the undisturbed fact findings below are
that such coaction did not occur in the accused processes.
10
Nowhere did the Third Circuit deal with the crucial fact
finding“ that plaintiffs had failed to prove that the GM
process possessed the “new and unexpected coaction” which
had formed the sole basis for the earlier finding of patent
validity.
In effect, the Third Circuit ruled that where a process
patent is given limited validity by a holding based solely on
coaction not described in the claim, and to which the claim
is not limited, the patentee may nevertheless enforce its
patent monopoly against other processes within the claim’s
unspecific language, even where such coaction has not been
shown to occur.
REASONS FOR GRANTING THE WRIT
Question No. 1
This question presents a highly significant and increas-
ingly important issue concerning the scope and reach of the
patent monopoly, as to which a clear conflict?® exists between
the Third Circuit and the Seventh Circuit. In its validity
decision in the consolidated case, the Seventh Circuit found
validity because of synergistic coaction. After separation
of the cases, the Seventh Circuit in Houdaille held that the
allegedly infringing process must achieve the same syner-
gistic coaction upon which patent validity was sustained,
thus giving the claim the same limited construction on
infringement as on validity. However, the Third Circuit in
28 Findings of Fact 10-14, 316 F.Supp. at 1383-1389 (A-46 to
52, infra).
29 In Universal Oil Products Co. v. Globe Oil & Refining Co., 322
U.S. 471 (1944), this Court granted certiorari to resolve a conflict
between Courts of Appeals which as to the same patent and upon
substantially the same facts reached conflicting conclusions as to
infringement. See also Weber Electric Co. v. Freeman, 256 US.
668 (1921) where a similar conflict between circuits on infringe-
ment was resolved.
11
the present case has given the patent a broader scope inso-
far as enforcement is concerned, holding that there was in-
fringement by a process in which the requisite synergistic
eoaction was not shown.
Unless the decision is reversed, the Third Circuit will
have extended the patentee’s monopoly to processes not
providing the critica] chemical coaction and synergism upon
which validity was based. Simply stated, the court below
has enforced a patent monopoly, held valid only as to a spe-
cific process, against a different process which has not been
held patentable.
The result is to prohibit the public from free use of un-
patentable processes.
“The function of a patent is to add to the sum of useful
knowledge. Patents cannot be sustained when, on the
contrary, their effect is to subtract from former re-
sources freely available to skilled artisans.” AP Tea
Co. v. Supermarket Corp., 340 U.S. 147, 152 (1950)
Citing A&P, the Court of Appeals for the Seventh Circuit
found patent validity only by concluding that a particular
process displayed the requisite coaction and synergistic re-
sult.°° May the Third Circuit below, after this limited deci-
sion, now vitiate the entire doctrine of A by finding
infringement through a combination of old elements which
do not achieve the requisite coaction and synergistic re-
sult? The effect of the decision below is illogically to limit
the A doctrine to validity and not to infringement.
The decision below clearly destroys the traditional con-
gruence between the concepts of validity and infringement.
As a logical necessity, no process may infringe a patent
claim unless such Process would itself have been patentable
382 F. 2d at 22 (A-25, infra).
12
under the same principles which sustained the validity of
the existing patent. This cardinal principle has been ig-
nored by the court below.
The only other way to explain the decision is that the
court below while paying lip service to the proposition that
the validity of the patent claim was not to be relitigated, in
fact sub silentio relitigated the validity of the patent which
had been previously determined by the Seventh Circuit. By
disregarding the findings of the District Court that the
plaintiffs had failed to prove that the accused processes
embodied the chemical coaction and synergism which had
formed the basis for the earlier finding of validity, the
Third Circuit has in effect held petitioner liable for in-
fringement of a process the validity of which petitioner
never had the opportunity to contest. 1
In Blonder-T ongue Labs v. University of Illinois, 402 U.S.
313 (1971), this Court held that a ruling of patent invalidity,
once made, is binding in all future cases on the patent. The
same necessarily applies to a ruling of narrow and limited
validity. In the present case, the Seventh Circuit twice
made clear that the claim was invalid if construed as writ-
ten, but was only valid in a much narrower context. Con-
sequently, the plaintiffs were estopped under Blonder-
Tongue to assert a broader claim construction and in effect
relitigate validity. Yet, the court below adopted a signifi-
cantly broader construction in order to sustain its finding
of infringement—a construction that disregards the critical
aspects which prompted the Seventh Circuit to find the
patent valid.
Other decisions by this Court also point to the proper res-
olution of this question. In Smith v. Hall, 301 U.S. 216, 220
31 The Delaware District Court had previously refused to re-
litigate the validity of the patent, 263 F.Supp. at 19-24 (A-29, 31-
37, infra).
13
(1937), an infringement ruling whereby the claim was
broadly construed preceded the validity consideration be-
fore this Court. This Court held that the patentee was fore-
closed from asserting a new and more narrow patent scope
to save the patent from invalidity. In the “file wrapper
estoppel” cases, exemplified by Exhibit Supply Co. v. Ace
Patents Co., 315 U.S. 126 (1942), this Court has held that
patentees are strictly limited by the claim amendments they
insert in the Patent Office to procure claim allowance over
the prior art. The reasoning of these cases would seem to
apply where, as here, the infringement ruling follows the
validity decision and where, as here, the basis of upholding
patent validity is a surprising coaction not set forth in the
claim, as distinguished from one that is formally inserted
into the claim to procure allowance.
It follows that when the validity ruling has been made
first, the patentee must live within that determination in
pressing his monopoly rights in subsequent infringement
claims. It is true that this Court has never specifically so
ruled. But, as the present case so graphically demonstrates,
such a decision is necessary to make clear that where
process patent claims are narrowed beyond their terms in
court proceedings in order to save their validity, that deter-
mination must be binding in subsequent proceedings to en-
force the patent against a process accused of infringing.
Otherwise, a patent holder achieves à monopoly over that
which has been previously held unpatentable.
Decisions of this Court in the past three decades, particu-
larly those since the 1952 Patent Code, make it crystal
clear that a patent to a combination of old elements stands
or falls on the existence or non-existence of a surprising
coaction or synergistic effect. Most patents are directed to
such combinations. Indeed, the last five patent validity
14
rulings** of this Court each pertain to such a patent. But
this Court has not ruled that the same surprising coaction
or synergistic effect must be applied to find infringement
as has been applied to find validity or even, more broadly,
that patent infringement must be determined by the same
strict standard as is patent validity. Absent such ruling,
a decision of patent validity may arm the patent owner
with a power to expand the monopoly and charge as an
infringement acts that would have failed the test of patent
validity. Such ruling is clearly needed, as the present con-
flict between the Third Circuit and the Seventh Circuit on
the same patent demonstrates.
Question No. 2
The validity decision of the Seventh Circuit is a sub-
stantial departure from the Jaw pertaining to patent speci-
fications and claims, and should be reviewed by this
Court.“ It conflicts with decisions rendered by the Second
and Fifth Circuits and is analogous to the decision of the
Sixth Circuit in Noll v. O. M. Scott & Sons Co., 467 F. 2d
295 (6th Cir. 1972), now before this Court on Petition for
Certiorari.
In the present case, the Seventh Cireuit, in considering
35 USC $112, recognized the unspecific character of the
claim. It excused this deficiency stating that “patent claims
should be generic in character and do not necessarily have
82 A&P Tea Co. v. Supermarket Corp., 340 U.S. 147, 152 (1950);
Graham v. John Deere Co., 383 U.S. 1 (1966); Calmar, Inc. v. Cook
Chemical Co., 383 U.S. 26 (1966); United States v. Adams, 383
U.S. 39 (1966); Anderson’s Black Rock v. Pavement Salvage Co.,
396 U.S. 57 (1969). *
83 The judgment of the Court of Appeals for the Seventh Circuit
is open to present review by this Court. Hamilton-Brown Shoe Co.
v. Wolf Bros. & Co., 240 U.S. 251, 257-8 (1915).
15
to be specific’**, But the court inconsistently upheld the
claim only because it treated the claim as if it were limited
to specific ingredients and particular conditions of tempera-
ture and pressure which achieved the new and surprising
synergistic result. Indeed, the court has specifically stated
that it gave the claim “a narrow and restricted construc-
tion” in order to find validity. This restricted construc-
tion apparently ignored the Chicago District Court’s un-
reversed findings that “the patent does not describe any
chemical reactions, se that some ingredients within the
claim are not workable, “ and that the prior art “British
patent 494,830 . . . contains disclosure of a lubrication
composition for drawing and deforming ferrous metal
within the broad terminology employed in Claim 4 of the
patent in suit“. ss In short, the Seventh Circuit Court of Ap-
peals completely rewrote Claim 4 to fit its own concept
of what the invention should be and failed to determine
what the patentee actually claimed as required by 35 USC
9112. 3°
The ruling of the Court of Appeals of the Seventh Circuit
is in conflict with that of the Second Circuit in Carter-
Wallace v. Otte, F. 2d 176 USPQ 2, 9-12 (1972).
There, the broadly claimed chemical compound was obvious
in view of the prior art. Carter-Wallace sought to avoid
a holding of patent invalidity on the ground that the com-
pound had unexpected tranquilizing properties which, how-
ever, were not described in the patent specification. The
Court of Appeals for the Second Circuit rejected the
patentee’s argument. It held that the “novel, unexpected,
or superior non-obvious property must be disclosed in the
24321 F.2d at 238 (A-17, infra).
35 382 F.2d 22 (A-25, infra).
96 (A-7, infra).
7 (A-5, inf ra).
38 (A. 7, inf ra).
0 (A-1, infra).
16
patent application in order to be relied upon as a basis for
patentability.” In contrast, the Court of Appeals for the
Seventh Circuit in the present case has held the patent
valid because of unexpected synergistic coaction even
though nowhere described in the specification.
Moreover, the Seventh Circuit decision fails even to re-
quire that the claim state the ingredients with specificity.
In Graver Tank & Mfg. Co. v. Linde Air Products, 336 U.S.
271, 276-7 (1949), this Court rejected patent claims because
of such lack of specificity. The claims there unambigously
recited “silicates”, but some of the silicates were not opera-
tive. The Court of Appeals for the Seventh Circuit had
sustained the patent by limiting the claims to the opera-
tive silicates. Linde Air Products v. Graver Tank, 167
F. 2d 531, 537-8 (1948). This Court held that the claims
could not be saved by construing them narrowly to cover
only those silicates that had proved operative. It held that
claims “fail . .. to perform their function as a measure of
the grant when they overclaim the invention”, and that the
Court of Appeals for the Seventh Circuit“ had erred in its
view that claims could be sustained by limiting them to
operative silicates.“
4° Similarly, the Fifth Cireuit in Beckman Instruments v. Chem-
tronics, Inc., 439 F.2d 1369 (1970) held that the court’s discretion
to construe narrowly the patent claim in order to avoid the prior
art is limited by the claims the patent actually makes. The court
stated: “The claims of Clark’s patent are not, however, limited to
any set of materials that produce any specific synergistic result
.. . They cannot be read to be further limited. It is this fact,
not want of invention, that invalidates the patent.” (439 F.2d at
1374)
41 167 F. 2d at 538.
2 In U.S. v. Adams, 383 U.S. 39, 49 (1966) this Court sustained
a claim to a battery despite its failure to specify water as the elec-
trolyte. This Court noted that “taken together with the stated ob-
ject of disclosing a water-activated cell, the lack of reference to any
electrolyte in Claims 1 and 10 indicates water alone could be used.”
17
The law on limiting patent claims to save patent validity
is now completely unsettled. The Court of Appeals for the
Seventh Circuit, despite Graver Tank, has reverted to the
view that claims need not be specific. The Court of Appeals
for the Sixth Circuit in Noll, supra, has reached the same
result by relying upon the changes made when Section 112
of the 1952 Patent Code replaced the prior statute. The
Court of Appeals for the Fifth Circuit, however, has
adopted the opposite view and has narrowly viewed the
extent claims can be limited to preserve validity.“ And the
Court of Appeals for the Second Circuit, contrary to the
ruling of the Seventh Circuit in the present case, has held
that unexpected results not described in the patent specifi-
cation cannot be relied upon to save validity.“
We submit that this Court should grant certiorari on
the second question here presented and on the same question
in the Noll case, and reexamine this important subject in
the light of the statutory requirement that the patent
“particularly point out and distinctly claim” the invention
(35 USC § 112).
43 Beckman, supra.
“ Carter-Wallace, supra.
18
CONCLUSION
For the reasons stated, this Petition for Certiorari should
be granted.
Respectfully submitted,
Grorce N. Hrssen
332 South Michigan Avenue
Chicago, Illinois 60604
Gronda E. Frost
3044 W. Grand Blvd.
Detroit, Michigan 48202
Dax mL K. Mayers
Rosert A. GxRAnD
900 17th Street, N. W.
Washington, D. C. 20006
Counsel for Petitioner
HIn BRN, Noyes & BickNELL
Win, Cutter & Pickerine
Of Counsel
United States Constitution, Art. I, §8, Cl. 8
The Congress shall have Power * * * To promote the
Progress of Science and useful Arts, by securing for lim-
ited Times to Authors and Inventors the exclusive Right
to their respective Writings and Discoveries.
UNITED STATES CODE, TITLE 35:
9103. Conprrions ror PaTentasiity; Non-Osvious
Supsect Matrer
A patent may not be obtained though the invention is
not identically disclosed or described as set forth in section
102 of this title, if the differences between the subject mat-
ter sought to be patented and the prior art are such that
the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordi-
nary skill in the art to which said subject matter pertains.
Patentability shall not be negatived by the manner in which
the invention was made. July 19, 1952, e. 950, $1, 66 Stat.
798.
9112. Specirication
The specification shall contain a written description of
the invention, and of the manner and process of making
and using it, in such full, clear, concise, and exact terms as
to enable any person skilled in the art to which it pertains,
or with which it is most nearly connected, to make and use
the same, and shall set forth the best mode contemplated
by the inventor of carrying out his invention.
The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention.
A-2
An element in a claim for a combination may be ex-
pressed as a means or step for performing a specified fune-
tion without the recital of structure, material, or acts in
support thereof, and such claim shall be construed to cover
the corresponding structure, material, or acts described in
the specifications and equivalents thereof. July 19, 1952,
c. 950, § 1, 66 Stat. 798.
HISTORICAL AND REVISION NOTES
Reviser’s Note. Based on Title 35, U.S.C., 1946 ed., § 33 (RS.
4888 [derived from Act July 7, 1870, e. 230, § 26, 16 Stat. 201],
amended (1) Mar. 3, 1915, e. 94, § 1, 38 Stat. 958; (2) May 23,
1930, e. 312, § 2, 46 Stat. 376).
*
eo a
The clause relating to the claim is made a separate paragraph to
emphasize the distinction between the description and the claim or
definition, and the language is modified.
A new paragraph relating to functional claims is added.
Prior Law. For prior law on the subject of this section, see for-
mer section 33 of this title, set out in Appendix II at the end of
this title.
A-3
Portions Of Opinion And Findings Of Fact And
Conclusions Of Law In
Devex Corporation et al v. General Motors Corporation
and Houdaille Industries
(Judge Edwin A. Robson, N.D. Illinois, February 1, 1962)
DECISION ON MERITS ON VALIDITY OF
CLAIM 4 OF REISSUE NO. 24,017
It is the Court’s conclusion that Claim 4 of the reissue
patent is invalid as anticipated by prior patents, prior use,
and prior publications. The United States patents to
Singer, Orozeo and Whitbeck, the British patents, the 1943
runs at Briggs Manufacturing Company, and the German
publications considered together reveal the phosphate coat-
ings on metals to be drawn, in conjunction with lubricants,
some co-acting with the phosphate coating. While it is
arguable that the precise combination and co-action indi-
cated by the patent are not found verbatim in the prior art,
one armed with the knowledge of a worker skilled in that
field could, the Court believes, have achieved the result
covered by Claim 4 of the reissue patent. Furthermore, the
breadth and indefiniteness of proportions of the elements
of that claim“ preclude a holding of its validity in view of
the knowledgeable prior art,‘ in view of the disclosures
of the specifications, and unwarranted monopolizing of the
field of use of borax and soap.
The specifications state that borax is to be used in the propor-
tions of two to five times the amount of soap.
There is no specification, disclosure or limitation in Claim 4 of
the amount or proportions of solid inorganic eompound (borax)
or solid meltable organic binding material (soap).
5 OReilly, et al. v. Morse, et al., 56 U.S. 65 (1853); Holland
Furniture Company v. Perkins Glue Company, 277 U.S. 245 (1928) ;
The Incandescent Lamp Patent, 159 U.S. 465 ( 1895) ; General Elec-
tric Co. v. Wabash Appliance Corp., et al., 304 U.S. 364 (1938) ;
United Carbon v. Binney & Smith Co., 317 U.S. 228 (1942).
* * *
A
* 3 *
Defendants contend that a patentee may not compel inde-
pendent experimentation by others to ascertain the bounds
of the claims” and a patentee may not by claiming a method
broadly in terms of a result or function, foreclose all means
and ways of practically obtaining such result or objective."
Substitution of one material for another of the same class
in an old combination does not constitute invention.“ The
broadness of a claim such as Claim 4, defendants assert,
has long been condemned.“
On the other hand, patentable invention is claimed by
plaintiffs in that it is asserted that Henricks’ patented proc-
ess, although using old elements, achieves new and surpris-
ing results, or, stated differently, the whole exceeds the sum
of the parts.“
They frankly concede that all the elements of the Hen-
ricks’ invention were old, but urge they were put together
in a new way, resulting in new and unpredictable results
12 Standard Oil Company of California v. Tide Water Associated
Oil Co., 154 F.2d 579 (3rd Cir. 1946).
13 National Carbon Co., Inc. v. Western Shade Cloth Co., 93 F.2d
94 (7th Cir. 1937).
14 Johnson Laboratories, Inc. v. Meissner, 98 F.2d 937 (7th Cir.
1938).
15 OReilly, et al. v. Morse, et al., 56 U.S. 61 (1853); Holland
Furniture Company v. Perkins Glue Company, 277 U.S. 245 (1928);
The Incandescent Lamp Patent, 159 U.S. 465 (1895); General Elec-
tric Co. v. Wabash Appliance Corp., et al., 304 U.S. 364 (1938);
United Carbon Co. v. Binney & Smith Co., 317 U.S. 228 (1924).
16 Great Atlantic & Pacific Tea Co. v. Supermarket Equipment
Corp., 340 U.S. 147 (1950) ; Lewyt Corporation v. Health-Mor, Inc.
et al., 181 F.2d 855 (7th Cir. 1950); Blaw-Knoz Company v. I. D.
Lain Company, Inc., 230 F.2d 373 (7th Cir. 1956) ; The Mojonnier
Dawson Company v. U.S. Dairies Sales Corporation, 251 F.2d 345
(7th Cir. 1958); Armour & Co. v. Wilson & Co., Inc., 274 F.2d 143
(7th Cir. 1960) ; Donner v. Sheer Pharmacal Corporation, 64 F.2d
217 (8th Cir. 1933).
A-5
and reactions. They emphasize that Claim 4 uses a phos-
phate coating (the abrasive coating of the Singer process),
seemingly a retrogression in the art; a fixed overlying film
of which the solid meltable organic constituent is soap and
a meltable inorganic compound (Borax) distributed there-
through, meltable at a temperature below the melting point
of the abrasive phosphate coating and having a hardness
not more than 5 on the Mohs’ scale.
The “amazingly efficient” and “remarkable” results
claimed by plaintiffs from the Henricks’ patented process
is that “the surface of the product is improved, product
dimensions are maintained with consistency, tool life is
lengthened, and the practical limits of the shaping opera-
tion are extended.” Further, the “formation of insoluble
or difficultly-soluble deposits on the drawn metal is inhib-
ited, such as zine stearate. Instead of the phosphate coating
reacting with the soap to form insoluble abrasive com-
pounds, the phosphate reacts with the borax to form amor-
phous, glassy materials which contribute significantly to the
lubricating value of the coating and assist in the drawing
operation and yet, amazingly do not present any problem
of cleaning.” The process results in articles of “superior
quality at lower cost.” Defendants, on the other hand, deny
any unexpected or surprising co-action or results by the
use of soap-borax lubricants over phosphate. They note
that there is no substantial difference in the rods introduced
in evidence, drawn only with phosphate coating and with
soap, and with soap and borax.
The Court concludes that Claim 4 of the Reissue Patent
No. 24,017 is invalid for several reasons.
The claim does not specify the kind of phosphate coating,
the kind of meltable organic binding, and the kind of solid
inorganic compound to be utilized, as well as not specifying
A-6
the amounts and relative proportions of any such items. As
defendants’ proof showed, some processes could be con-
ceived of ingredients of those classes which would not be
workable.
0 . 8
FINDINGS OF FACT AND CONCLUSIONS OF LAW
ENTERED PURSUANT TO THE COURT'S DECISION
ON MERITS ON VALIDITY OF CLAIM 4
OF REISSUE NO. 24,017
6. (a) It was well known in the art prior to the patent
in suit on April 29, 1946, that it was a definite improvement
and aid in cold drawing and deforming steel to provide the
surface of the steel with integral phosphate coatings and
apply lubricants over such coatings.
(b) The use of zinc phosphate coatings to which oil is
applied as a lubricant in drawing and deforming steel tubes
is disclosed in Defendant’s Exhibit 42, British patent
496,866 of 1938.
(c) The drawing and deforming of steel provided with
manganese phosphate coatings impregnated with oil or fat
or a mixture of oil and fat as a lubricant is disclosed in
Defendant’s Exhibit 41, British patent 494,830 of 1938.
With respect to lubricants that had been known for use
in drawing operations, this patent also discloses (column 1,
lines 14-22):
“It is known to treat iron pipes, in particular, prior
to a drawing process, with fats or oils, or to precipitate
deposits thereon, in order to soften the surface and to
reduce the wear on the drawing tools. It has also been
the practice to mix the oil or fat with pulverulent sub-
stances, such as tale or litharge, for the purpose of
increasing its efficiency.”
A-7
The fats disclosed in this patent include fats such as tal-
lows, of which many are known to be solid at room tempera-
ture, and the litharge (lead oxide), which the patent states
it had been the practice to mix with the oil or fat for the
purpose of increasing its efficiency. There is thus disclosed
a composition providing a solid meltable organic binding
material (namely, fats known to be solid at room tempera-
ture) containing distributed therethrough a solid inorganic
compound (namely, the litharge) meltable at a temperature
below the melting point of ferrous metal and having a hard-
ness not exceeding 5 on Mohs’ hardness scale, all within the
definition of the corresponding language employed in claim
4 of the patent in suit. Lead oxide (litharge) is specifically
listed in the patent in suit, column 9, Table I, under fusible
pigments suitable for use as a solid inorganic compound
meltable at a temperature below the melting point of fer-
rous metal phosphate and having a hardness not exceeding
5 on Mohs’ hardness scale, called for by the corresponding
language in claim 4 of the patent in suit (Gibson R. 617-
623).
The British patent 494,830 therefore contains disclosure
of a lubricating composition for drawing and deforming
ferrous metal within the broad terminology employed in
claim 4 of the patent in suit.
12. Plaintiffs alleged at trial that compounds other than
zinc phosphate and the borax are formed by chemical reac-
tion of the borax with soap and the zine phosphate of the
phosphate coating, and are essential to the successful opera-
tion of the process described in claim 4 of the patent in suit.
The patent in suit does not describe any chemical reac-
tions in the drawing operations with soap-borax applied
over phosphate coatings which produce or require the pro-
duction of any other compounds to be essential to success-
ful drawing operations; claim 4 of the patent in suit con-
A-8
tains no reference to or requirement of the presence of such
other compounds in the operation of the process defined
by the claim.
The other compounds alleged to be produced by a chemi-
cal reaction of the borax in the coating and the phosphate
of the coating were not identified with certainty by or in
the X-ray diffraction patterns produced, Plaintiffs’ Ex-
hibits 22, 23, 24 and 25 (R. 191-210, 543-558).
It was admitted that no quantitative values or amounts
of the compounds alleged to have been formed by chemical
reaction of the borax and alleged to be present could be
determined from the X-ray diffraction patterns (R. 243.
245). There is no evidence that the compounds alleged to
have been formed by chemical reaction of the borax and to
have been present in the samples tested were present in any
significant quantity or had an controlling or significant
effect in the drawing operations.
27. The evidence establishes that in 1943 and for more
than two years prior to the time, April 29, 1946, the date
relied upon by plaintiffs in this case for the making of the
invention of claim 4 of the patent in suit, the differences
between the subject matter sought to be patented in claim
4 and the prior art were such that the subject matter as a
whole would have been and was obvious to persons having
ordinary skill in the art of drawing and deforming steel.
28. Claim 4 of the patent in suit is indefinite and fails to
particularly point out and distinctly claim, as required by
the Patent Act, 35 U.S.C. Section 112, the subject matter
which applicant regards as his invention.
With respect to the use of borax as the solid inorganic
compound of the claim, in answer to defendant’s inter-
rogatory 16:
* * *
State the minimum and the maximum proportions
of borax and soap that plaintiffs will contend at the
A-9
trial of this cause to be within the scope of the said
claim 4 of said reissue patent.”
plaintiffs answered as follows:
“Plaintiffs will make no contentions and cannot
speculate as to the minimum and maximum proportions
of borax and soap which might be within the scope of
claim 4 of Reissue Patent No. 24,017 because all circum-
stances must be evaluated and considered. ”
At the trial the patentee Henricks speculates (R. 468-
504) with vague references to unidentified literature regard-
ing mineralogy and cosmetics, without being able to define
any minimum or maximum amount of borax required, and
his final summation of the matter leaves the question wholly
indeterminate and indefinite (R. 501, 503, 504).
Claim 4 says nothing whatever about the amounts or
proportions of “solid meltable organic binding material”,
or the amounts or proportions of “solid inorganic com-
pound”.
As written, the claim includes as “solid meltable organic
binding material” all of the multitude of compounds men-
tioned in the patent and others that could be selected from
the tables and literature which could be regarded as organic
—capable of becoming solid—and meltable. It is alleged in
this case to include also sodium stearate soap, which is
listed in the standard chemical handbooks as an inorganic
material (Dr. Gibson, R. 794-796, 803-808, 810-812).
As written, the claim includes as “solid inorganic com-
pound” all compounds listed in column 9, Table I—F usible
Pigments, in the patent in suit, which could be selected from
the tables and literature and which would melt below the
melting point of ferrous phosphate and have a hardness
less than 5 on the Mohs’ hardness scale.
A-10
The claim contains no limits or instructions as to the
proportions of such compounds that would be operable to
carry out the alleged process invention stated by the claim.
The claim does not specify or call for the alleged mineral-
izing, metamorphizing or fluxing of the phosphate of the
coating to form glass, or for the alleged emulsifying of the
residual coating or film left after drawing.
There is no evidence that all of the materials includable
within the terminology of the claim would perform the
alleged functions.
No one could determine otherwise than by extensive
experiments whether all or how many of the compounds
includable within the terminology employed could be used,
or in what mixtures or proportions they could be used, nor
whether they would accomplish the alleged mineralizing,
metamorphizing or fluxing.
The claim does not particularly point out and distinctly
claim the alleged invention, i.e., emulsifying, or mineral-
izing, metamorphizing and fluxing, that Henricks (R. 421)
states he swore the oath to. All such matter was cancelled
from the application for the patent (Finding 13).
Henricks considers sulfur to be an inorganic pigment
within the terminology of claim 4, and admits that it per-
forms none of the alleged glass forming mineralizing
functions of borax, and is of no help in cleaning effect (R.
513-514).
CONCLUSIONS OF LAW
1. Claim 4 of the patent in suit Re. 24,017 is invalid:
(a) On the ground of lack of lawfully patentable inven-
tion in view of the prior art known and practiced at and
before the time the alleged invention of claim 4 was made;
A-11
(b) On the ground that the process of claim 4 was known
to and used by others before the applicant for the patent in
suit claims to have made the discovery or invention thereof i
(o) On the ground that the patentee did not invent the
subject matter purported to be described in claim 4 but
merely adopted a process which, in view of the prior art
and practice known in 1943, was obvious and known to per-
sons familiar with and skilled in the art of drawing metal;
(d) On the ground that claim 4 defines merely an aggre-
gation of process steps that were separately old and well
known and that when combined produce no new, unexpected
or unobvious result.
(e) On the ground that claim 4 fails to meet the require-
ments of the Patent Act, 35 U.S.C. Section 112, in failing
to particularly point out and distinctly claim subject matter
which the patentee regards as his invention, or subject mat-
ter for which the patentee is lawfully entitled to Letters
Patent.
2. That the complaints filed herein be dismissed for want
of cause for action.
8/ Epwin A. Rosson
United States District J udge
COPY BOUN
DEVEX CORPORATION et al., Plaintiffs
Appellants,
v.
MOTORS CORPORATION
et al., Defendants-Appellees.
No. 138979.
United States Court of Appeals
Seventh Circuit.
July 12, 1963.
Rehearing Denied Sept. 4, 1963.
Suit for infringement of reissue pat-
ent No. 24,017 relating to lubrication of
netal surfaces in cold drawing and form-
ing operations. The United States Dis-
riet Court for the Northern District of
llinois, Eastern Division, Edwin A. Rob-
wn, J., rendered a judgment holding the
oly claim in issue invalid and plaintiff
appealed. The Court of Appeals, Duffy,
Circuit Judge, held that the claim was
valid and was not invalid as being too
broad and lacking in specificity, as adop-
tion of process which was obvious to
person skilled in art or on grounds of
pblic use.
Reversed,
L Patents S101 (6)
That claim distinguished from $1
references in mature art, none of which
uticipated, clearly established that it
vas not too broad and indefinite. 85
USC.A. § 112.
1 Patents S101 (8)
Patent claims should be generie in
curaeter and do not necessarily have
to be specific,
1 Patents 118.21
Statutory presumption of validity
il patent is not overcome except by clear
ud cogent evidence. 35 U.S. C. A. § 282.
|, Claim 4 reads:
“4. The process of working ferrous
metal which comprises forming on the
mrface of the metal a phosphate coating
superimposing thereon a fixed film
somposition comprising a solid melt-
ID CLOSE TO EDGE
4. Courts 408.3 (16)
Where evidence relied upon in adju-
dicating validity of patents appeared in
depositions, Court of Appeals was in as
good position as trial court to examine
it and determine whether its use was pub-
lic use.
5. Patents S862 (3)
To invalidate patent on ground of
public use, prior public use must be es-
tablished by clear and convincing proof.
6. Patents S328
Claim No. 4 of resissue patent No.
24,017 relating to lubrication of metal
surfaces in cold drawing and forming op-
erations was valid, and was not invalid
as being too broad and lacking in speci-
ficity, as adoption of process which was
obvious to person skilled in art or on
grounds of public use.
— ne rns
Frank H. Marks, Chicago, III., William
C. McCoy, Jr., Cleveland, Ohio, Walter J.
Blenko, Pittsburgh, Pa., for appellant.
Arthur W. Dickey and Neal A. Wal-
drop, Detroit, Mich., for defendant Gen-
eral Motors Corporation.
Benjamin H. Sherman, Carlton Hill,
Chicago, III., for defendant-appellee, Hou-
daille Industries, Inc.
George N. Hibben and Jerome F. Fal-
lon, Chicago, III., for other appellees.
Before DUFFY and SWYGERT, Cir-
cuit Judges, and MAJOR, Senior Circuit
Judge.
DUFFY, Circuit Judge.
These are two civil suits for infringe-
ment of Henricks’ Reissue Patent No.
24,017 which were consolidated for trial
on the common issue of validity. Claim 4
is the only claim at issue. 1 The District
Court held Claim 4 of the patent in suit
distributed therethrough a solid inorganic
compound meltable at a temperature be-
low the melting point of the ferrous
metal phosphate of said coating and hav-
ing a hardnese not exceeding 5 on the
Mohs’ hardness seale, and thereafter de-
Cite as 32)
to be invalid in view of the indefiniteness
of the claim, the prior art and prior pub-
lic use.
The patent in suit relates to lubrication
of metal surfaces in cold drawing and
deforming operations in shaping steel to
desired forms by dies, to reduce friction
between the steel workpiece being drawn
or shaped and the die, to avoid scoring
and tearing of the metal being drawn and
to avoid injury to the surface of the dies.
The patent in suit is the outcome of an
application, Serial No. 665,905, filed
April 29, 1946 by the patentee Henricks,
which was abandoned in favor of a con-
tinuation-in-part application filed Octo-
ber 31, 1950, upon which was issued
United States Patent No. 2,588,234, dated
March 4, 1952, for which application for
reissue was filed March 1, 1954, upon
which Re. Patent No. 24,017 now in suit
issued on June 7, 1955.
Claim 4, the only claim in issue, is iden-
tical to Claim 45 as allowed by the Pat-
ent Office in the 1946 application. April
29, 1946, the date when the 1946 appli-
cation was filed, is therefore the record
date of invention to which the patentee
is entitled.
The patent in suit relates particularly
to the lubrication of metal for drawing
and forming operations. It concerns cold
forming operations as opposed to hot
forming operations. When metal is
drawn or deformed, to transform a blank
or workpiece into another desired shape,
there is necessarily some movement be-
tween the surface of the blank and the
surface of the die, and an accompanying
generation of high pressures and temper-
atures. Adequate lubrication is essen-
tial. Unless suitable provision for lubri-
cating the surfaces is made, tearing of
the metal or galling of the dies results.
The problem is most acute where difficult
draws of ferrous metals are involved.
Drawing operations require costly tools
and dies. It follows that wear and abra-
sion are very important considerations
in tool and die work.
Among the suggestions contained in
COPY BOUND CLOSE TO EDGE
upon the surface of the work to be d
an integral phosphate coating and apph-
ing thereto a film of sodium tallow soa
having borax distributed therein. It js
contended that a solid meltable organi
binding material mentioned in Claim 4
includes sodium tallow soap and that 2
solid inorganic compound mentioned in
the claim includes borax.
Mohs’ hardness scale is a known stand.
ard for indicating the relative hardness
of materials. It is used in Claim 4 asa
specification that the “solid inorganic
compound” of the claim should not be
hard enough to scratch the steel being
drawn.
The prior art disclosed a number of
lubricating schemes. These included the
use of ordinary lubricating oils or lubri-
cants containing finely divided infusible
pigments such as clay, lime, mica or
graphite. Most of such schemes wer
classified as “wet-film” lubricants which
were wet and oily to the touch.
Later followed what is known as Sing-
er's process, evolved in Germany and de-
scribed in Singer United States Patent
No. 2,105,015. Singer’s scheme was to
form a sponge-like coating, such as 4
phosphate, on the surface of the work-
piece. The coating was not wet or flow-
able but was integral with the workpiece
and could not be squeezed out in the dra
ing operation.
Phosphate coatings had been in use
as early as 1914. These coatings had
no lubricating value per se. They we
in fact, abrasive and caused tool and die
wear even through superposed lubricant:
The reason they were used in lubricating
schemes was due to their ability to ab
and carry lubricant into a high pressure
zone.
The next step forward in the art
the Singer process, was the development
of the Gilron “Dry-Film” soap and borat
lubricant. In this process, soap and b
ax were mixed with water and
as an aqueous solution to the surface of
the workpiece. The soap and borax
ing was then dried by heat lamp;
Tir nid
COPY
js drawn, it was a hard fixed film and
el with the workpiece in the high
pesure zones. No other lubricant was
red.
The Gilron soap-borax coating on bare
pial being transparent, permitted in-
getion of the workpiece and eliminated
eabrasive phosphate. The Gilron proc-
ss mpplanted the Singer process in the
gel case program of the United States
(ernment during World War II.
jn 1942 and thereafter until 1945, Hen-
ids, the patentee of the patent in suit,
employed by Gilron Products Com-
ay and was familiar with the uses of
lubricants described in pat-
s No. 2,469,473 and 2,530,837. The
lubricating product for use in
steel was sold under the trade-
“Drawcote” and was composed
pally of sodium soap formed from
and palm oil, and of borax in pro-
tion by weight of 10-33% soap to 67-
Nt borax.
Drawcote was sold in the form of a dry
. Gilron Products Company ob-
patents on Drawcote and its use.
States Patents No. 2,469,473 dat-
May 10, 1949, and No. 2,530,837 dat-
November 29, 1950, were obtained up-
the joint application of Gilbert H. Or-
a partner of Gilron Products Com-
yand his employee Henricks, the pat-
of the patent in suit.
Drawcote was extensively sold and used
1M2 and 1943 in cold drawing of steel
cases. In those years during
War II, there was a shortage of
w for making brass shell cases for
ammunition used in military and
arms weapons. The Government
i manufacturers of shell cases
mike them from steel by cold draw-
ind deforming. This manufacture of
shell cases occurred largely during
period 1942-1944, after which copper
in became available.
Inthe manufacture of shell cases, Gil-
it Drawcote was able to replace the
Mother lubricants such as lubricat-
r coatings for steel and lubricat-
PY BOUND CLOSE IN CENTER
In 1943, among those using a lubricat
phosphate coating on steel in the ope
tion of cold drawing steel 75 mm. she
cases, was Briggs Manufacturing Comp
ny, Detroit. That Company was the
providing zine phosphate coatings o
steel blanks and applying thereover
sulphurized grease as a lubricant. Abo
June 1943, Whitbeck of Gilron Produc
Company sold Drawcote to Briggs.
experimentation, Briggs found it cou
successfully carry out its cold drawi
operation with the Drawcote soap-bo
lubricant applied directly to the surf
of the steel without the phosphate
ing.
Plaintiffs admit the Gilron borax cc
ing solved many drawing problems e
isting at that time and that even tod
it is satisfactory for many draws. He
ever, plaintiffs claim the process has i
limitations and cannot do what the He
ricks process does.
The Patent Office was fully advised
the nature and advantages of the Gil
process. Patent No. 2,469,473 was a fi
wrapper reference.
Several references are made in
briefs to the “German Process.” T
was developed prior to 1942. In th
process, a phosphated workpiece is so
ed as long as fifteen hours in an aquec
soap solution to form thereon by cher
cal interaction between the phosphate a
soap, a water-insoluble soap film. A se
ous defect in this scheme was that
residual deposit was not water solub
and presented a difficult cleaning proble
especially if the workpiece was to
electroplated.
Plaintiffs concede all of the eleme
which Henricks employed in Claim 4
the patent in suit were cld per se or
other combinations and have been a
able in the art for some years. Howev
plaintiffs contend that the elements whi
Henricks selected were put together
a new way and achieved a new and une
pected result.
Plaintiffs claim that in the specific
bodiment of Claim 4, the “phosphate co:
er process—a seeming retrogression in
the art. The overlying film is a fixed
one and the “solid meltable organic” con-
stituent thereof is soap, the use of which
had previously been found undesirable
because of the cleaning problem. The
‘solid meltable inorganic compound” dis-
buted therethrough, meltable at a tem-
perature below the melting point of the
abrasive phosphate coating and having a
hardness not more than 5 on the Mohs’
cale, is borax.
Plaintiffs argue that new and unexpect-
ed results flow from the conjunction of
lements defined in the drawing process
of the Henricks’ patent; that tool and die
fe is greatly increased and severe draw-
ng operations can now be performed
hich were previously impossible. Plain-
iffs say there is a coaction during the
high temperatures and pressures where-
by the abrasive phosphate coating reacts
vith the borax to form amorphous glassy
materials which contribute significantly
> the lubricating value of the coating;
hat the formation of insoluble organic
naterials is inhibited and there is no
eaning problem.
There is substantial evidence in the
cord to prove that a new coaction be-
n the soap, borax and phosphate oc-
rred during the drawing process.
Friedberg's tests showed that in the Hen-
process, new compounds are form-
d; the formation of insoluble organic
fompounds is inhibited, and the abrasive
phosphate is transformed into a glassy
morphous compound having highly ef-
ective lubricating properties.
There was also proof based upon com-
mercial use and experience. Metal Form-
ng & Coining Corporation tried a num-
of the prior art schemes including
ils, waxes and drawing compounds, but
testimony showed that the only proc-
ss that enabled this Company to cold
orm or coin small parts commercially is
he combination in the Henricks’ patent
n suit. Testimony showed tool and die
ife was increased one thousand fold so
hat for given tools, three or four hun-
ed thousand pieces were run where pre-
COPY BOUND CLOSE TO EDGE
Cite as 321 F.2d 234 (1963)
this argument we said at page 256 of 2
viously only three or four hundred 5
could be run. The Henricks’ pre
made it possible to manufacture cle
of superior quality at a much lower ec
the advantage being so marked in 80
cases as to spell the difference }
success and failure on heavy reductio;
and difficult extrusions,
Defendants have engendered a
interest in an endeavor to have the Her
ricks’ patent in suit declared invalj
The defense of this action has — 90
ducted primarily by the attorneys for th
Parker Rust Proof Company of D
Parker supplies phosphate and lubricai
ing materials to defendant General
tors, and is holding General Motors!
Jess. Parker solicited financial and leg
help in this lawsuit from a number of it
own competitors, and at least three «
these competitors in manufacturing an
selling phosphate and lubricating ma
al, have given assistance in this case. (
course, these competitors had the ri
to give such assistance. However, sud
interest does indicate that the proc
covered in Claim 4 of the patent in suit
something of special value and merit ar
of great importance to those working
the field of cold drawing and deformi
operations.
The trial court held Claim 4 too bre
and lacking in specificity. The court sta
ed the claim did not specify the kind
phosphate coating, the kind of organ
binding, the kind of solid inorganic ec
pound, as well as not specifying
amounts and relative proportions of
such items.
Pertinent on this point is a recent cai
before this Court, Binks Manufacturi
Company v. Ransburg Electro-Coati
Corporation, 281 F.2d 252. In that ca:
the claim was made that the metl
claims of the patent there in suit didi
satisfy the requirements of the p
statute (35 U.S.C. § 112) due to fai
to specify voltage, spacing and liquids
which they are applicable. In overruli
F.2d: “The process claims define
specific steps of procedure ang
COP
ms being addressed to those skilled
feart * * * need not recite de-
We further stated at page 257
#1 F.2d: “There is no requirement
quantitative values for such factors
witage, spacing and liquid character-
cs be recited. The fact that experi-
jon or the exercise of judgment is
mary to adapt a patented process to
material or to obtain the par-
results desired does not impair
ity of the patent.”
fl} The fact that Claim 4 distin-
from thirty-one references in a
art, none of which anticipate,
dearly establishes that the claim
too broad and indefinite.
ft} Patent claims should be generic
r and do not necessarily have
specific. It is entirely proper to re-
in Claim 4 to “a phosphate coating”
specifying which “phosphate
*
n examples stated in the patent in
and the specification teach the use
and borax over phosphate. They
formulas for the soap and borax and
identify the phosphate coating baths
one skilled in the art could make
The trial court was in error in
that Claim 4 in the patent in
too broad and lacking in specifici-
It is fundamental that a patent
ned to be valid and the burden
ablishing invalidity rests on the par-
ting it (35 U.S.C. § 282). It is
established the presumption of valid-
not overcome except by clear and
evidence. Radio Corporation of
fea v. Radio Engineering Labora-
Inc., 293 U.S. 1, 7, 55 S.Ct. 928, 79
163; Hazeltine Research, Inc. v.
Electric Company, Inc., 7 Cir., 271
218, 224.
dants claim the Patent Office did
ider Singer Patent No. 2,105,015
British Patent No. 494,830 of 1938,
several publications. However,
ager process is described in British
Yo. 496,866 which was relied upon
the patent. Soap and borax dry-film lu-
bricants are described in Patents No. 2.—
469,473 and 2,470,062. The former was
relied upon as a reference in the Patent
Office and the latter is referred to in the
body of the specification of the Henricks’
patent in suit.
The Patent Examiner had before him
as prior art, all of the elements of Hen-
ricks’ combination and found patentable
invention in the combining of these ele-
ments. In fact, the Patent Office twice
found invention over the prior art, first,
when the original patent was granted,
and second, when the reissue patent was
granted. There is no showing in this
case that the most pertinent prior art
was not considered by the Patent Office.
On the contrary, we think the most perti-
nent art was cited and was found insuffi-
cient to negative patentability.
We cannot sustain the conclusion of
law of the trial court that Henricks mere-
ly adopted the process which, in view of
the prior art, was obvious to persons
skilled in the art. The history of Parker
Rust Proof Company demonstrates the
process was not obvious. Parker Rust
Proof has been a self-proclaimed leader
in this field since 1914, but Parker re-
mained uncertain as to how the problem
should be solved until some considerable
time after the Henricks’ invention date.
Dr. Gibson was Technical Director for
Parker in 1949 when they decided to de-
velop a lubrication system. Dr. Gibson is
now a professor of chemistry and quali-
fied as one “skilled in the art.” Parker,
in 1949, was operating in the light of the
prior art. Dr. Gibson was in charge of
this development. They started in “ba-
sically with a literature search.” They
then worked with wet-film lubricants be-
cause, as Dr. Gibson testified, “We hadn’t
realized the true value of drying that
particular film.” Parker experimented
with the formation of an organic film
with phosphate as mentioned in the Ger-
man references. Finally, Parker came
to the Henricks’ combination which it
extolled in its literature as a new develop-
SOPY BOUND CLOSE IN CENTER
The literature references which Parker
now points to as teaching the invention,
taught Parker nothing. Neither did the
practices at Briggs Manufacturing Com-
pany. The substitution of soap and bor-
ax dry-film for the wet lubricant in the
Singer process was, in fact, not obvious
to Parker.
The Henricks’ process was not, in fact,
obvious to the defendants and the others
now associated with them in the defense
of this suit. None of them made the sub-
stitution of elements in the Singer proc-
ess which, by hindsight, now appears to
them to have been “obvious.”
Although the learned trial judge found
Claim 4 of the patent in suit to be in-
valid on all suggested grounds, we are
of the view that the closest question in
the case is the finding and conclusion of
the trial court as to public use. This, in
turn, refers to use at Briggs Manufac-
turing Company in 1943. All of the evi-
dence on this point, except patentee’s own
evidence, is contained in depositions. It
is apparent from Finding 14 that the
Court relied upon the testimony of Tous-
ley and Brown which appeared in deposi-
tions.
[4] As the evidence relied on appears
in depositions, we are in as good a posi-
tion as the trial court to examine it and
determine for ourselves whether the use
at Briggs Manufacturing Company was a
public use. Kiwi Coders Corporation v.
Acro Tool & Die Works, 7 Cir., 250 F.2d
562, 568; Lewyt Corporation v. Health-
Mor, Inc., 7 Cir., 181 F.2d 855, 857.
The trial court did not hold the combi-
nation claimed in the patent in suit was
publicly used in its entirety or that the
valuable new result flowing from the
combination was understood or achieved
at Briggs. What the trial court decided
was: “While it is arguable that the pre-
cise combination and coaction indicated
by the patent are not found verbatim in
the prior art, one armed with the knowl-
edge of a worker skilled in that field
could, the Court believes, have achieved
the result covered by Claim 4 of the
reissue patent.” The al court he
COPY BOUND CLOSE TO EDGE
Cite as 321 F. ad 234 (1963)
recognized that the patentee in the pater
in suit did make a stride forward in 1
art but apparently thought it was 18
sufficient to merit a patent monopoly,
{5] There exists a well establish.
rule that to invalidate a patent on tb
ground of public use, the prior public ys
must be established by clear and convine
ing proof.
In Smith v. Hall, 301 U.S. 216, 233, 5
S.Ct. 711, 718, 81 L.Ed. 1049, the Coy
refers to the rule as * * the hey
burden of persuasion which rests up
one who seeks to negative novelty in
patent by showing prior use.” In Rad
Corporation of America v. Radio Eng
neering Laboratories, Inc., 293 U.S. 1,
55 S.Ct. 928, 931, 79 L.Ed. 163,
Court cites with approval a number
cases for the proposition, the burden
proof is upon the party setting it up
“every reasonable doubt should be resol
ed against him.” Indeed, the late Chi
Judge Learned Hand stated the rule
even more emphatic language in Block
Nathan Anklet Support Co., Inc., 2 Ci
9 F.2d 311, 313, “* * * but insu
cases probability, even extreme probab
ty, is not enough. The proof must be
absolute as in a criminal conviction;
deed, the rule comes nearly to this, th
one must have contemporaneous reco
verbal or structural.”
In June 1943, when Henricks came
the Briggs Manufacturing Company
behalf of the Gilron Products Drawed
a number of experiments were conduc
which led to the changeover from
Singer process to Gilron. Each b
tested was subjected to six consecut
forming operations. Henricks exp
mentally ran two baskets of blanks wit
phosphate undercoat. There were
proximately one hundred test pieces
the two baskets, a very small amount ¢
sidering the large volume being hand
No further notice was taken of the pi
themselves, and they were enveloped
the big flow of material that was inp
ess. The success of the process w:
no way there demonstrated. This g
COF
ise of the patented combination
y Briggs. In fact, Briggs abandoned
the use of phosphate entirely. The tem-
prary and almost casual experiment
rith soap and borax went into the dis-
ard.
„ After the decision in this case by the
tial court, Henricks received informa-
„I that the United States Government
“Bpirsenal at Joliet, might have a report
shich would show the true facts as to the
Briggs operation. Inquiry there reveal-
nothing. The inquiry was forwarded
Frankfort Arsenal. Nothing was
nd there, but when the inquiry was
arded to the Record Files in Mis-
ri, a report was located. Henricks
permitted to read the report and
ke extracts therefrom.
Plaintiffs filed a motion to amend the
ings of fact and for a new trial. The
rt denied the motion. This was un-
ndable where the Court considered
patent to be invalid on all grounds
wed. However, as our view is that the
ling point of this case is the question
ileged public use at Briggs, we think
report should have been considered,
tially that part which deals with the
ial experimentation with the Gilron
It would appear reasonable that
dere had been any significant or more
experimental use of soap and borax
phosphate in cartridge-case manu-
at Briggs, it would surely have
ured in the report which the Briggs
nals made to the army ordnance.
ther convincing argument in favor
jaintiffs’ contention is that if soap
borax had been applied over phos-
in regular production, there would
ily have been a tank for phos-
solution and a separate tank for
wap and borax solution arranged in
u so that the baskets containing the
8 or workpieces would move succes-
through the two solutions. There
daim that any such procedure was
We hold there is no sufficient
ing of prior public use and that
4 of the patent in suit is valid.
will, therefore be remanded
—
PY BOUND CLOSE IN CENTER
to the District Court for further pre
ceedings consistent with this opinion, 2
the question of validity only was passe
upon in the previous trial.
Reversed.
DEVEX CORPORATION et al., Plaintiffs-
Appellees,
V.
HOUDAILLE INDUSTRIES, INC,
Defendant-Appellant.
No. 15732.
United States Court of Appeals
Seventh Circuit.
July 12, 1967.
Action for patent infringement.
The United States District Court for the
Northern District of Illinois, Eastern
COPY ROLIND Ci OSE TH ENGE Cc
Edwin A. Robson, J., granted
iffs’ motion for summary judg-
est, and defendant appealed. The
ert of Appeals, Major, Senior Circuit
ge, held that importance of difference
tween patent holders’ process requiring
meme temperatures and pressures of
1.000 to 250,000 pounds Hertz stress
pi alleged infringing process requiring
y 10 to 25,000 pounds Hertz stress
fact question, precluding summary
ment decreeing infringement and
joining further infringement of pat-
ist claim which was to be given nar-
wand restricted construction.
Reversed and remanded.
Courts €=406.1(3)
A court with jurisdiction to hear
al from injunction order must have
diction to consider propriety of the
mise upon which injunction issued.
US.C.A. § 1292(a) (1).
Patents S324 (5)
Reviewing court’s authority to con-
wr propriety of injunction against
ther patent infringement carried
th it the authority to consider the in-
bngement issue. 28 U.S.C.A. § 1292
a) (1).
Patents S324 (2)
Court of Appeals had jurisdiction
appeal from summary judgment grant-
injunction against further infringe-
mt of patent. 28 U.S.C.A. § 1292(a)
: Fed. Rules Civ. Proc. rule 56(c), 28
CA.
Patents S324 (5½)
Defendant did not waive right to
lain on appeal of error in summary
ment for injunction against further
ent infringement although defendant
med notice of motion informing plain-
tis that defendant, without waiving
rights, would present attached draft
ummary judgment order. Fed. Rules
Proc. rule 56 (e), 28 U.S. C. A.
Courts 406.3 (1)
bn appeal from summary judgment,
*
Appeals to make determination on
factual issues. Fed. Rules Civ. Proe.
rule 56 (e), 28 U.S. C. A.
6. Federal Civil Procedure 22461
Caution is to be exercised in grant-
ing summary judgment. Fed.Rules Civ.
Proc. rule 56(c), 28 U.S. C. A.
7. Patents S157 (1)
The construction of a claim when
patent validity is contested controls con-
struction of same claim when infringe-
ment is alleged.
8. Patents S323
Importance of difference between
patent holders’ process requiring ex-
treme temperatures and pressures of
100,000 to 250,000 pounds Hertz stress
and alleged infringing process requiring
only 10 to 25,000 pounds Hertz stress was
fact question, precluding summary judg-
ment decreeing infringement and enjoin-
ing further infringement of patent claim
which was to be given narrow and re-
stricted construction.
9. Patents S312 (8)
Whether 1946 disclosure relating to
glyceryl borate was equivalent of soap-
borax over phosphate disclosed in patent
specifications filed in 1950 was fact
issue for expert testimony, in patent in-
fringement case.
10. Patents S314
That patentee made admission to
Canadian Patent Office contrary to that
made to court in United States with re-
lation to date of patent disclosure re-
lated to patentee’s credibility and pre-
sented matter for consideration by trier
of faets.
—
Carlton Hill, Benjamin H. Sherman,
Chicago, III., for appellant.
Walter J. Blenko, Arland T. Stein,
Pittsburgh, Pa., William C. McCoy, Jr.,
Cleveland, Ohio, Frank H. Marks, Chi-
cago, III., for appellees.
Before MAJOR, Senior Circuit Judge.
and SWT GERT and CUMMINGS, Cir-
S reer r err er rr
MAJOR, Senior Circuit Judge.
This appeal is a continuation of litiga-
ion of long duration. On November 13,
1956, plaintiffs filed their complaint
gainst General Motors and Metal Lu-
bricants Company for infringement of
Henricks Patent Re. 24,017, dated June
7, 1955. On May 22, 1957, plaintiffs
iled a companion case against the in-
stant defendant (Houdaille Industries,
Inc.), for infringement of the same pat-
ent. In both cases plaintiffs relied
solely upon Claim 4. The cases were
onsolidated on the common issue of va-
idity, and Judge Robson held the Hen-
icks patent invalid. On appeal, this
ourt reversed, held the claim valid
and remanded the case for further
proceedings consistent with the opinion.
Devex Corp. et al. v. General Motors
orp. et al., 7 Cir., 321 F.2d 234, cert.
den. 375 U.S. $71, 84 S.Ct. 490, 11 L.Ed.
Pd 418. Upon remand, the case against
Metal Lubricants Company was dismissed
by consent and that against General
Motors, on motion by plaintiffs, was
ansferred to the District of Delaware.
In the instant case plaintiffs moved
or a summary judgment that defendant
ad infringed Claim 4 of the Henricks
patent, which was first denied. After
urther deposition testimony was taken,
plaintiffs renewed their motion and on
ebruary 17, 1966, it was allowed. The
fase is here on defendant’s appeal from
his judgment.
On June 23, 1965, prior to plaintiffs’
enewed motion for summary judgment,
efendant, with leave of the Court, filed
n amended answer setting up additional
efenses, including (a) license, (b)
aches, (c) prior public use by defendant,
d) shop right, (e) patent misuse, (f)
mtervening rights, (g) lack of contin-
ity between the original patent and the
receding abandoned application and
h) release. The amended answer al-
egedly was based upon facts ascertained
Tom the May 17, 1965 deposition of
Henricks. In connection with its
COPY BOUND CLOSE TO EDGE
the production of documents, which
denied.
The Court in its summary judgment
decreed infringement of Claim 4, es
joined defendant from further infringe.
ment and referred the case to a Special
Master to hear and submit to the Court
findings on the issue of damages. The
judgment also provided for a determin
tion by the Master of the affirmative ¢
fenses invoked by defendant. On!
8, 1966, defendant’s motion to vacate the
summary judgment was denied.
8 enen
The companion case of General Motors
transferred to the Delaware District
previously shown, was heard by Jud;
Caleb M. Wright on plaintiffs’ motior
for summary judgment. In a weil re.
soned opinion the Court concluded th
summary judgment was inappropria
and denied such relief. Devex Corp. e
al. v. General Motors Corp., 263 F.Supp
17. Concerning the Delaware case, de
fendant on brief states, “So far as in
fringement is concerned, the issues th
are substantially identical with those ir
volved here.” Plaintiffs take no iss
with this statement, in fact do not eve
mention the case although it was decide
more than two months prior to the dat
on which plaintiffs’ brief was filed
this Court, with the same counsel rep
senting plaintiffs in both cases.
E , r i rl | |
In the interest of brevity, we refer
our previous opinion written by Jud
Duffy, for a history of plaintiffs’ paten
its purpose and scope, the claim reli
upon and the reasoning on which validi
was sustained.
At the inception we are met with plai
tiffs’ challenge that the order under
tack is not appealable and should be d
missed. Defendant responds that
have jurisdiction under Par. (a) (1)
(4) of Sec. 1292, Title 28 U.S.C.A.
former provides jurisdiction of an appé
from an order granting an injunctic
the latter from judgments for patent
fringement which are final except for
counting. Plaintiffs cite a number
cases in support of the point ths
COF
njunction brings up for review
wihing but the propriety of granting
te injunction,” and such appeal “does
wt bring up for review those parts of
be decree which affect only the reference
pa Master and bear no necessary rela-
tion to the merits of the injunction.”
In Loew’s Drive-In Theatres, Inc. v.
uk: In Theatres, Inc., 1 Cir., 174 F.2d
ul, 550, the Court stated:
“Our jurisdiction over this cause of
action on appeal, however, is another
matter. For although injunctive re-
lef is granted in the judgment ap-
pealed from and we have appellate jur-
isdiction over such judgments under
%U.S.C.A. Sec. 1292 (1) even though
interlocutory, we have jurisdiction to
review only that part of such judg-
ments as have to do with the injunc-
tive relief afforded and no other.”
fn Racine Engine & Machinery Co. v.
‘mnfectioners’ Machinery & Mfg. Co., 7
iner, 234 F. 876, 878, speaking to the
point, this Court stated:
if and after the patent is
sustained, infringement found and in-
jmction awarded, upon appeal this
curt may finally determine the va-
lidity of the patent, and its determina-
tion is binding on the District Court.”
3] These and other cases cited by
ntiffs recognize that a court with
isdiction to hear an appeal from an
junction order must necessarily have
iction to consider the propriety of
premise upon which the injunction
d. As applied to the instant case,
authority to consider the propriety
te injunction carries with it the au-
ity to consider the infringement is-
upon which the injunction issued.
my be that we are without authority
tmsider the affirmative defenses in-
sed by defendant prior to the entry
the summary judgment and referred
he Master for decision. We need not
toncerned in this regard, however, be-
ther on brief nor in their appendix
d in support thereof do plaintiffs
~~
>OPY BOUND CLOSE IN CENTER
cause, assuming we have such authorit
we would not be disposed to exercise i
in the absence of a ruling by the cou
below on such issues. We hold that w
have jurisdiction of the appeal from th
injunction order and of the infringemen
issue upon which it is predicated.
[4] Plaintiffs also contend that de
fendant has no standing to complain o
the order enjoining it from further in
fringement, on the basis that it cor
sented to and openly invited its en
thereby waiving any right to complai
of error. We see no reason to cite or dis
cuss the cases cited in support of thi
contention. They are without applies
tion to the facts of the case.
In this connection plaintiffs plac
much emphasis on the assertion that th
judgment order was proposed by defend
ant. True, it was so labeled, but the
clearly emerges, on a confusing record
the fact that defendant did not conse
to or invite the order, particularly tha
part which enjoined it from further in
fringement. Plaintiffs attached to thei
original and again to their renewed mo
tion for summary judgment a form o
proposed judgment. The Court in a
oral decision granted plaintiffs’ renewe
motion and, at the Court’s suggestio
plaintiffs submitted a revised form o
judgment. On February 16, 1966, de
fendant served on plaintiffs a “Noti
of Motion,” notifying them that defend
ant “without waiving any rights will pre
sent the attached draft of a judgmen
order.” The February 17 order allege
to have been proposed by defendant ws
presented to the Court, “approved as
form.“ 1
Defendant in no way consented
the injunction or waived its oppositio
thereto; its activities were confined
limitations on the forms of judgmen
submitted by plaintiffs. Moreover, de
fendant subsequently attacked the entir
judgment order by its motion to vacate
which was denied March 3, 1966. Plain
posed “without waiving any rights” and
was “approved as to form” only.
ffs’ argument on this phase of the
se is entirely without merit.
[5] Preliminary to any discussion
the narrow issue for decision, we
ust keep in mind that it is not within
r province to make a determination
factual issues. The sole question is
hether plaintiffs under Rule 56 (e),
ederal Rules of Civil Procedure, were
titled to a summary judgment and
ereby precluded defendant of the right
a hearing. The citation of only a
of the many cases which have
ounced the criterion to be employed
resolving such question will suffice.
In Poller v. Columbia Broadcasting
stem, Inc., et al., 368 U.S. 464, 467,
2 S.Ct. 486, 488, 7 L.Ed.2d 458, the
durt stated:
“This rule authorizes summary judg-
ment ‘only where the moving party
is entitled to judgment as a matter
of law, where it is quite clear what
the truth is, * * * [and where] no
genuine issue remains for trial * *
[for] the purpose of the rule is not
to cut litigants off from their right
of trial by jury if they really have
issues to try.“
he Court further stated (page 473, 82
.Ct. page 491):
“We look at the record on summary
judgment in the light most favorable
to Poller, the party opposing the mo-
not have been granted.”
In National Screen Service Corp. v.
oster Exchange, Inc., 5 Cir., 305 F.2d
7, 651, the Court stated:
“The rule should be invoked cautiously
in order to allow a full trial where
there is a bona fide dispute of facts
between the parties. Summary judg-
ment should be granted only where
the moving party is entitled to judg-
ment as a matter of law, where it is
quite clear what the truth is, when no
genuine issue remains for trial, and
it is not the purpose of the rule to
deny to litigants a right of trial if
COPY BOUND CLOSE TO EDGE
Cite as 382 F.2d 17 (1967)
tion, and conclude here that it should
the Court to decide factual issues, byt
only to determine whether there are
factual issues to be tried [Citing ease.
„ „A long line of cases have
held that summary judgment should
not be granted if there is the ‘slightest
doubt’ as to the facts; which is acty.
ally another way of stating that there
is no genuine issue as to any materi
fact. The fact that it may be surmised
that the party against whom the mo
tion is made is unlikely to prevail
the trial is not sufficient to author
summary judgment against him.“
eln 91
Is] Among other cases which hay
emphasized that caution is to be ex
cised in granting summary judgment
two of this Court. American Securit C
v. Hamilton Glass Co., Inc., 7 Cir., 25
F.2d 889, 892, and Technograph Printe
Circuits, Ltd. v. Methode Electronic
Inc., 7 Cir., 356 F.2d 442, 446.
After much study of the volumino
record, we conclude that the Court erre
in allowing plaintiffs’ motion for sum
mary judgment. We think defendant
entitled to a trial on the infringemer
issue, as well as any relevant iss
raised by its amended answer. i
Judge Robson in his opinion (not pu
lished) discusses the restrictions place
by this Court on Claim 4 as a basis f
our holding of validity, it seems to
that he mistakenly based his conclusi
on a literal reading of the claim. In
opinion he states, As plaintiffs poi
out, there can be little question that
fendant’s practice responds to Claim
so as to constitute infringement there
Following this statement he analyzes
claim element by element, concludes t
defendant’s process responds to each
said elements and states, “The Co
therefore concludes that the plaintif
renewed motion for summary judgm
should be granted * * *; that 0
should be a finding of infringement
the defendant of Claim 4 of the Reis
Patent No. 24,017, upon the basis
defendant’s answers to the i
Arie
COF
Concerning the holding of Judge Rob- with the borax to form amorphous
n plaintiffs on brief state: glassy materials which contribute sig-
«# * be held that Houdaille’s at- nificantly to the lubricating value of
tempts to avoid a finding of infringe- the coating; that the formation of
ment by reading the claim restrictively insoluble organic materials is inhibited
yas not warranted by the language of and there is no cleaning problem.
tat opinion [821 F.2d 234], or by the “There is substantial evidence in
language of the claim itself.” the record to prove that a new coaction
For reasons subsequently shown, we between the soap, borax and phosphate
nk this is a fallacious approach to the occurred during the drawing process.
fringement issue. Our previous deci- Friedberg’s tests showed that in the
requires that the claim in suit be Henricks’ process, new compounds are
ma narrow and restricted construc- formed; the formation of insoluble
organic compounds is inhibited, and
the abrasive phosphate is transformed
into a glassy amorphous compound
first hearing considered and upon having highly effective lubricating
in he found Claim 4 invalid. In our Properties.
ws decision (321 F.2d 234), re- We further pointed out that there was
his holding of invalidity we testimony that by use of the process
ed (page 236): “tool and die life was increased one
“Plaintiffs concede all of the ele- thousand fold” and that the process made
mnts which Henricks employed in it possible “to manufacture articles of
(aim 4 in the patent in suit were old Superior quality at a much lower cost.”
wr se or in other combinations and It is difficult to discern how plaintiffs
lave been available in the art for can contend with any plausibility that
wme years. However, plaintiffs con- defendant is an infringer, based upon a
tad that the elements which Henricks literal reading of the claim. In the previ-
rected were put together in a new ous case plaintiffs urged as a ground for
ay and achieved a new and unex- sustaining validity a narrow and re-
Jed result.” stricted application of the “specific em-
Thus, it was conceded that all of the bodiment of Claim 4.” On brief they
mts of the claim were old in the state:
but plaintiffs sought to uphold “Specifically, there is a coaction during
idity upon the basis that such elements the high temperatures and pressures
m put together in a new way and of the drawing process whereby the
ed a new and unexpected result.” abrasive phosphate coating reacts with
solely on this basis that this Court the borax to form amorphous glassy
ned validity and reversed the Dis- materials which contribute signifi-
t Court. In this connection we cantly to the lubricating value of the
(page 237): coating. The formation of insoluble
"Plaintiffs argue that new and un- organic materials is inhibited and
i results flow from the con- there is no cleaning problem.”
ion of elements defined in the They also relied on “new and sur-
wing process of the Henricks’ prising results” to meet the test of Great
ent; that tool and die life is greatly Atlantic & Pacific Tea Co. v. Super-
meased and severe drawing opera- market Equipment Corp., 340 U.S. 147,
can now be performed which 71 S.Ct. 127, 95 L.Ed. 162. Thus, having
previously impossible. Plaintiffs obtained a decision of validity on a nar-
there is a coaction during the high row and restricted basis, they now con-
res te press av ,
We need not give any consideration
the prior art which Judge Robson in
—
COPY BOUND CLOSE IN CENTER
tf
Qu 302 0
endant’s alleged infringing process. assurance that if a literal readinz
buch a construction would monopolize the claim had been relied upon, we would
he whole broad field of metal forming have affirmed the District Court in iu
ith any use of a dry soap and borax holding of invalidity in view of the prior
ver phosphate at any temperature or art. The patentee’s thesis of “new and
pressure, regardless of the results. unexpected result” was based upon the
g addition to the patent specifications of
17) Judge Wright of the Delaware Examples XIX and XX, filed Octob
ourt in the General Motors case (263 31, 1950, in connection with his contin
‘Supp. 17) followed the decision of ation-in-part application, Serial No. 413,
his Court in sustaining the validity of 490. These Examples, which
laim 4 (that here involved) but dis- formulas for soap and 8 ‘dea bo
greed with Judge Robson in allowing phate, were included in the patent issued
laintiffs’ motion for summary judg- March 4, 1952 and, as stated by plai
ent. In his opinion he pointed out tiffs on brief, “By issuance of thi
umerous unresolved factual issues which patent, the Henricks applications u
ormed the basis for his denial of plain- first pet available to the public an
iffs’ motion for a summary judgment. thereby, for the first time, became put
ithout restating the issues which he ;, knowledee.” ;
iscussed, it is significant to note that
e refused, on the issue of infringement, Based upon Examples XIX and XX
o give effect to a literal reading of the Friedberg tests were made, whi
laim 4. Instead, he held that the re- formed the basis of this Court's state
rictions placed upon the claim by this ment that there was evidence of a “n
ourt in sustaining validity must be coaction between the soap, borax a
aken into account. In so doing he Phosphate during the drawing process,
ted (page 25): Judge Wright on this point stated (pag
„„ the construction of a claim 25):
when its validity is contested controls “The Friedberg tests involved dray
the construction of that same claim conducted under high pressures it
when its infringement is alleged. The volving severe deformation of th
patentee cannot urge a restrictive in- metal, whereas the GM operation i
terpretation of his claim to avoid volves much lower pressures. An
invalidity and then an expansive Henricks, the patentee, himself state
interpretation to ensnare infringers.” that it is a high pressure operatid
This principle has been recognized by generating sufficient heat to thaw t
is Court. In Fife Mfg. Co. v. Stan- Tmeltable pigment which forms a |
ord Engineering Co., 7 Cir., 299 F.2d of his invention. The Court requi
23, 226, we stated: the aid of expert testimony to dete
“It is well settled that a patent mine whether these differences
owner may not apply a narrow con- or are not, important.”
struction to his claim to avoid the [8] In the instant case, as in Genet
prior art and then apply a broad con- Rotors, there is evidence that the p
struction to include an accused device.“ entee's process recognized by this Co
e also Wire Tie Machinery Co. et al. required “extreme temperatures
Pacific Box Corp. et al., 9 Cir., 107 pressures of from 100,000 to 250,0
2d 54, 55. pounds Hertz stress.” There is also
The new and unexpected result” which dence that defendant’s alleged infringi
laintiffs urged upon this Court in their process requires pressures of only
rgument in behalf of validity, to which to 25,000 pounds Hertz stress.” Mc
gave recognition, certainly was not over, the tests relied upon were mac
ealed by a literal reading of Claim the drawing of wire rods, J
}
COPY BOUND CLOSE TO EDGE ‘ cor
as to whether the same result would
re been obtained in the drawing of
dendant’s alleged infringing auto-
pile bumpers.
While these issues are riot all inclusive,
m think they alone are such as to negate
ie propriety of a summary judgment.
We might with propriety conclude our
non at this point. Even so, we think
should discuss the issue of “inter-
rights,” relied upon by defend-
as a defense to the charge of in-
gement. As already noted, defend-
on June 23, 1965, after having first
uined leave of the Court, filed an
mded answer setting forth a number
affirmative defenses. (Of such de-
only “intervening rights” is
med here.) Plaintiffs on brief refer
these defenses as “last minute affirm-
defenses,” even though the amended
er was filed prior to the filing of
intiffs’ second motion for summary
ment. No attack was made upon
h defenses by motion to dismiss the
er or otherwise.
judge Robson in his bench discussion
wa the Court is of the opinion that on
his remand it is not within its
wovince to reassess the validity of
gute patent as it might be affected by
iam defense of prior public use.“
is statement no doubt was based upon
finding of this Court in its previous
tion that the patentee’s record date
invention was April 29, 1946, since
in 4 is identical to Claim 45 allowed
de Patent Office, and defendant may
how assert the October 31, 1950 date.
u F.2d 234, 236.)
tis not claimed that our holding rela-
to public use in connection with the
of validity is res adjudicata with
mence to the defense of intervening
Bis to the charge of infringement.
District Court did not so decide but
i referred the issue to the Master
decision. In doing so, the Court
*
am aware of them, will more or less
fall by the wayside and it would be
a matter of a reference to the Master,
but certainly I am willing to consider
any and all matters which may be
concerned.”
We doubt the propriety of such refer-
ence, see Prepo Corp. v. Pressure Can
Corp., 7 Cir., 284 F.2d 700, 704, but
need not dwell on the point inasmuch as
the judgment is to be reversed.
On the state of the record shown, we
think it plain that the issue relating to
the defense of “intervening rights” re-
mains before the Court and must be
resolved on the record made in this
case, which is quite different from that
previously before this Court.
There is evidence that defendant com-
menced use of the alleged infringing
process as early as April 25, 1949, more
than one year prior to the filing of the
continuation-in-part application upon
which was issued Patent No. 2,588,234,
dated March 4, 1952, from which the
reissue patent in suit was issued June
7, 1955. Thus, defendant contends that
the coaction on which this Court found
inventiveness (a soap-borax fixed film
over an integral phosphate coating) was
not disclosed by Henricks in his earlier
but abandoned application; in fact, it
was first disclosed in his continuation-
in-part application filed October 31, 1950,
which matured into the patent in suit.
[9] As previously shown, “the new
and unexpected result” which plaintiff
urged upon this Court followed the dis-
closures in Examples XIX and XX,
first made a part of the patent specifica-
tions filed October 31, 1950. In fact,
Henricks on deposition so admitted. He
was asked, “What I am trying to under-
stand, Mr. Henricks, is this: you had
no soap-borax over phosphate in your
abandoned application?” and he an-
swered, “Correct.” Plaintiffs attempt
to bridge this gap by arguing that in
the abandoned application the “glyceryl
borate” was “fully equivalent” to the
COPY BOUND CLOSE IN CENTER
that made in 1950, upon which he ob-
tained an adjudication of validity, is an
issue of fact. Graver Tank & Mfg. Co.,
Inc., et al. v. Linde Air Products Co.,
339 U.S. 605, 609, 70 S.Ct. 854, 94 L.Ed.
1097. Moreover, the issue is one for
expert testimony.
Also material to the issue under dis-
cussion is a matter presented by defend-
ant as newly discovered evidence in con-
nection with its motion to vacate the
judgment. On October 29, 1951, Hen-
ricks filed with the Canadian Patent
Office his appiication for a patent en-
titled “Method of Drawing Metal,”
which was allowed. In the Canadian
application Henricks stated that he was
entitled to the October 31, 1950 United
States filing date under Treaty or Con-
vention Rights of Applicants as it “re-
lates to all claims,” because the United
States 1950 application wass
the first application for patent for the
said invention filed in any country by
him or anyone claiming under him.”
The specifications, including Examples
XIX and XX, and the claims, including
Claim 4 in suit, of the Canadian
patent were identical with the 1950
United States application. Thus, Hen-
ricks represented to the Canadian Patent
Office that his 1950 United States appli-
tation disclosed for the first time the
oap-borax-over-phosphate, the premise
pon which this Court sustained validity.
Plaintiffs on brief make no denial of
facts just recited relative to the pro-
dings in the Canadian Pate t Office.
They state:
“On October 29, 1951, Henricks
filed a corresponding Canadian patent
application. That application made
reference to the continuation-in-part
application filed in the United States
on October 31, 1950 for the purpose
of obtaining a prior date of invention
under the International Convention
and Canadian law insofar as the mate-
rial in the continuation-in-part appli-
cation may have been added as ‘new
COPY BOUND CLOSE TO EDGE
matter’. As to that material whi
may not have been added as ‘ney
matter’ in the continuation - in- aan
application, Henricks is relegated u
his filing date in Canada for his day
of invention insofar as the Canadia,
patent is concerned.” (Italics sy
plied.)
This is an admission that Henrici
represented to the Canadian 21
Office, apparently for a self-serving pur
pose, that the disclosure made in hi
1950 application in the United
“may have been added as ‘new matter’
The “new matter” referred to, as
understand, consisted of the disclos:
made for the first time in Exam
XIX and XX of Henricks’ 1950 applic
tion, which enabled plaintiffs to ob
the “new and unexpected result”
upon this Court.
Plaintiffs on brief, following the s
ment lastly quoted, further state:
“The reference in the Canadian a
plication to the 1950 United
application had no effect upon H
ricks’ United States patent i
tions.”
{10} We think the accuracy of th
statement is open to doubt. Assumir
it to be correct, however, it misses
point. The fact that he made an admi
sion to the Canadian Patent Office
to the date of his patent disclosure cc
trary to that which he previously m
to this Court, in which he now persi
relates to his credibility and presents
matter for consideration by the trier
the facts.
We decide nothing more than that su
mary judgment was improvidently
lowed. Anything we have said is
to be construed as a resolution of
factual issue. We have attempted o
to point out some of the issues of
rial fact which, in our judgment, ent
the parties to a hearing.
The judgment appealed from
reversed and the cause remanded for
purpose.
DEVEX CORPORATION et al. Plaintiffs,
v.
GENERAL MOTORS CORPORATION,
Defendant.
Civ. A. No. 3058.
United States District Court
D. Delaware.
Jan. 16, 1967.
Civil action for patent infringement,
wherein patentee moved for summary
judgment. The District Court, Caleb M.
Wright, Chief Judge, held that the issue
of validity of patent was set to rest by
Seventh Circuit Court of Appeals which
reversed judgment of federal district
court sitting in Illinois and held a claim
valid, and decision of the Court of Ap-
peals was binding upon the district court
as law of the case and similarly bound
federal district court in Delaware to
which district court in Illinois trans-
ferred the case, but that papers raised
fact issue as to whether corporate defend-
ant whose process did not explicitly over-
lap claim of Patent relating to lubrica-
tion of metal for drying and forming op-
erations was guilty of infringement, pre-
cluding summary judgment.
Motion denied.
I. Patents 2288 (8)
Where defendant resides“ for pur-
pose of venue in patent actions means
state of incorporation in case of corpo-
rate defendant. 28 U.S.C.A. § 1400(b).
See publication Words and Phrases
for other judicial constructions and
definitions.
2. Patents 288 (83)
The degree of use required to estab-
lish proper venue in patent infringement
cases is of a lesser order of magnitude
than that required to establish infringe-
ment for liability purposes. 28 U.S.C.A.
§ 1400(b).
3. Patents S288 (8)
1 5 —— and >
fense of p ° 2 at action
COPY BOUND CLOSE IN CENTER
objection corporation had timely made,
but corporation’s subsequent conduct con-
sisting of permitting trial judge to enter
judgment in corporation’s favor on the
merits and not cross appealing, despite
language of judge’s consolidation order
assuring corporation that venue matter
would be considered before entry of judg-
ment on validity question, did amount to
such a waiver. 28 U.S.C.A. § 1400(b).
4. Patents S242)
Denial of corporation’s motions to
dismiss patent infringment action be-
cause of improper venue and entry of
final judgment of patent invalidity be-
fore resolution of corporation’s venue
contentions presented sufficient founda-
tion from which corporation could have
taken cross appeal had it desired upon ap-
peal of patentee from judgment on the
merits. 28 U.S.C.A. § 1400(b).
5. Courts 277.1
In view of corporate defendant's
waiver of venue in patent infringement
case originally initiated in Illinois, trans-
fer of the case to Delaware on motion of
corporate plaintiff should have been made
under statute authorizing transfer of
civil actions to other districts for con-
venience of parties and witnesses in in-
terest of justice, not under statute au-
horizing transfer because venue has
been laid in wrong district. 28 U.S.C.A.
$§ 1404(a), 1406.
Courts ¢=277.1
Expediency and comity dictated that
federal district court sitting in Delaware
pt patent infringement action trans-
fer, which was erroneously made under
tatute permitting transfers of cases lay-
ing venue in wrong district instead of
tatute permitting transfers for conven-
ence of parties and witnesses in interest
of justice, as having been made under the
proper statutory authority, in view of
djudication of validity of patent by
nsferring court. 28 U.S.C.A. §§ 1404
a), 1406.
Courts 277.1
Courts of coordinate jurisdiction
COPY BOUND CLOSE TO EDGE
function and pass upon correctness
discretionary transfer orders. 28 Ug
C.A. §§ 1404(a), 1406.
8. Patents S324 (6)
The issue of validity of patent y,
set to rest by Seventh Circuit Court of
Appeals which reversed judgment of fe
eral district court in Illinois and held
claim valid, and decision of the Court of
Appeals was binding upon the distri
court as law of the case and sim
bound federal district court in Delawa
to which district court in Illinois
ferred the case.
9. Courts €406.9(14)
Courts should be even more
usually constrained not to transgress doe
trine of law of the case where a full tri
and appeal of the question, involving
stantial investment of judicial energ
have occurred.
10. Courts 277.1
Even if federal court sitting in I
linois lacked venue of patent infring
ment action, it did not lack power to de
with substantive rights of corporate
fendant over which court had pe
jurisdiction.
11. Patents S170
The extent of prior art de
scope of proffered invention.
12. Patents 170
Claims of patent infringement m
be viewed against backdrop of prior
13. Patents S157 (01)
Construction of patent elaim
its validity is contested controls const
tion thereof when its infringement is
leged.
14. Patents ¢-168(24)
Patentee will not be permitted
urge restrictive interpretation of
claim to avoid invalidity and then ex
sive interpretation to ensnare inf ringe
15. Patents S823
Papers raised fact issue as to
er corporate defendant whose process
not explicitly overlap claim of Pat
RFR Se£Paaes.
COP"
ig OD ions was guilty of ir
precluding summary judg-
for patentee.
Patents C16, 226
“Theory” is not prerequisite to pat-
ty but is important when scru-
for infringement.
Patents 229
Process which falls within literal
of patent claim but can be
to operate in different manner
patented process does not infringe
the patent.
Courts 2277.1
Venue changes at later stages of
od, especially in patent cases. 28
8 1400(b), 1404(a), 1406.
— —ũ—ꝓ—ẽ—
F. Anderson, Berl Potter & An-
Wilmington, Del., Walter J. Blen-
Blenko, Hoopes, Leonard & Buell,
rgh, Pa., of counsel, for plaintiffs.
ns S. Lodge, Connolly, Bove &
Wilmington, Del., George N. Hib-
Hibben, Noyes & Bicknell, Chicago,
Neal A. Waldrop, Harness, Dickey &
* and George N. Shampo, Detroit,
of counsel, for defendant.
OPINION
‘B M. WRIGHT, Chief Judge.
ts is a civil action for patent in-
4 reads as follows:
1 The process of working ferrous
wtal which comprises forming on the
arface of the metal a phosphate coat-
™ and superimposing thereon a fixed
{im of a composition comprising a solid
whable organic binding material con-
ming distributed therethrough a solid
‘rganic compound meltable at a tem-
wrature below the melting point of the
metal phosphate of said coating
i having a hardness not exceeding
pe the Mohs’ hardness scale, and
t deforming the metal.”
Corp. v. Fisher Governor Co.,
upp. 716, 719 (S.D.Tex.1963) ;
Products Corp. v. H & B Ameri-
Corp., 202 F.Supp. 824, 826 (S.D.
2); C-O-Two Fire Equipment Co.
The patent in suit is Num-
ber 24,017; the only claim at issue is
number 4.1 The plaintiff, Devex Corpo-
ration (Devex), has moved for summary
judgment. Fed.R.Civ.P. 56(a).
{1,2} Prior to any consideration of
the merits of Devex’ motion an account
of the history of this litigation is essen-
tial to place this case in proper perspec-
tive. The complaint was filed in the
Northern District of Illinois on Novem-
ber 13, 1956. Before answering General
Motors Corporation (GM) moved for a
dismissal on the ground of improper
venue. Section 1400(b), 28 U.S.C.A.
(1948), provides that venue in patent
actions, shall be in either: the district
where the defendant resides, or the dis-
trict where the defendant has committed
acts of infringement and has a regular
and established place of business. Where
the defendant resides has been consist-
ently interpreted to mean, in the case of a
corporate defendant, the state of incor-
poration. Since GM is a Delaware cor-
poration, the plaintiff’s decision to lay
venue in the Northern District of Illinois
was necessarily predicated upon the de-
fendant's having committed acts of in-
fringement within that district. The
motion to dismiss was denied by Judge
Barnes, who expressly reserved the ques-
tion of venue. On July 16, 1957 GM an-
“Well now, I have thought quite a
bit about this case. Venue here is
based upon the fact that it is alleged
that an infringement was committed in
this district, is that it?
* * 5
* —
“I am not going to try that patent
does not prove an infringement in this
I guess I would not have
risdiction because I wasn’ bron
＋
OPY BOUND CLOSE IN CENTER
swered. Paragraph 11 of its answer
again challenged the propriety of the
plaintiff's choice of venue.
On February 4, 1959 Devex moved in
the Illinois District Court to consolidate
the action against GM with a similar ac-
tion pending in the same district against
Houdaille Industries (Houdaille). GM
objected to the consolidation of the two
actions on the ground that venue had
not been established with respect to GM.
But after a pretrial conference Judge
Robson ordered consolidation of the two
cases. In order to protect GM Judge
Robson’s order provided for a considera-
tion of the venue question before any de-
cision on validity was entered with re-
spect to GM.
“(2) Immediately following the con-
clusion of said consolidated trial on the
common issue of validity, the issue of
infringement within the Northern Dis-
trict of Illinois by General Motors Cor-
poration as it relates to the issue of
venue of that Defendant will be tried
in Civil Action No. 56 C 1912.
“(3) The issue of infringement
within the Northern District of Illinois
by defendant General Motors Corpora-
tion in Civil Action No. 56 C 1912 will
first be decided by this Court in order
that the issue of venue of that defend-
ant may be determined prior to the
rendering of any decision on the issue
of validity with respect to defendant
General Motors Corporation.” (Em-
phasis added.)
The case, as consolidated, went to trial
on the question of validity. On February
other than to dismiss the case, would
be without jurisdiction.
“That is the chance the plaintiff is
taking. I have not seen the patent yet.
I am not going to attempt to try the
case on a motion to dismiss.
a * 5 „ a
“I am just telling you that I have
been thinking about it a long time.
Since you are both here I would like
to tell you right now. I am not sure
you should thank me. If there is no
showing to prove infringement in this
district you won't have an adjudica-
tion.”
COPY BOUND CLOSE TO EDGE
1, 1962 Judge Robson handed doy
decision on validity, holding the pat
invalid. On June 29, 1962 Judge
son entered his Findings of Fact »
Conclusions of Law and a Final Jud
ment, dismissing the complaints in ent
action with prejudice. GM did not obje
to the entry of judgment despite the
standing venue issue.
Devex took an appeal to the
Circuit. There was no cross-appeal
GM. The Seventh Circuit reversed J
Robson, held claim 4 valid, and remat
both cases to the District Court for
ther proceedings. On January 14, 1
Judge Robson entered an order “as
rected by the Mandate of the Court
Appeals” holding claim 4 valid.
Devex instituted discovery on {
venue question, but on April 20, 1965
cided to present a motion for tran
under 28 U.S.C.A. § 1406 (a) (1%
Devex sought transfer to the District
Delaware. The motion was heard
Judge Robson on June 23, 1965, te
with GM’s motion to dismiss und
1406(a) and a further GM motion to
cate paragraph 1 of the Court’s judgm
order of January 14, 1965 in the
the transfer should be granted‘ J
Robson granted the plaintiff’s motion
transfer and denied both of the defe
ant’s motions.
On January 3, 1966 the plaintiff fi
the instant motion for summary ji
ment. Devex contends that the valid
of the patent has been established,
that the January 14, 1965 judgment
the Illinois District Court remains b
gree of use required to establish p
venue is of a lesser order of magnit
than that required to establish i
ment for liability purposes. Watsco,
v. Henry Valve Co., 232 F.Supp. 88
D.N.Y.1964). If Watsco is correct
the fact that the plaintiff fails “to
infringement” within the forum <¢
at trial may not “deprive him of an
judication” with respect to inf
in other districts.
4. The January 14, 1965 order, it will
recalled, was Judge Robeon's entry of
final judgment of validity.
cor
jather contends that GM’s answers to
sierrogatories 2-5 and 12 constitute ad-
gisions of infringement. Accordingly,
es plaintiff argues for the entry of
„r judgment on the grounds that
further issues remain for adjudication
tween the parties.
GM resists the motion on two grounds:
frst, GM argues that the question of va-
Wity has not been determined because
January 14th order is ineffective for
of proper venue; second, GM denies
its answers to interrogatories admit
ngem
Pintiff’s argument that the validity
ine has been settled rests upon the
ise that GM has waived its venue
In support of this essentiz
the plaintiff cites Neirbo Co. v.
ehem Shipbuilding Corp., 308 U.S.
B60 S.Ct. 153, 84 L.Ed. 167 (1939)
furter). Neirbo stands for the
sition that venue is something less
an absolute right; it is a privilege
ned for the convenience of the liti-
which may be waived by conduct in-
intent with the assertion of the priv-
Specifically Neirbo holds that the
imation of a statutory agent for serv-
of process in order to qualify a for-
n corporation to transact business in
state constitutes a waiver of venue in
subsequent federal court proceed-
However, Neirbo cannot be con-
to make the act of participation
wurt proceedings following a timely
objection a waiver. Professor
in discussing Rule 12 of the Fed-
clarifies any possible confu-
“Under the former practices, both
law and in equity, a party could, by
1 procedure, raise the defenses
)-(5), and losing thereon proceed to
gate on the merits, and losing on
merits appeal, and attack the judg-
both on the merits and on such
(1)-(5) as he had urged.
a judgment on the merits for the
Barnes’ denial of GM’s motion to
*
the defendant. The plaintiff
plaintiff would be set aside, whe
the defendant had properly challen
* * * that the venue was imprope
and I that] the lower court was in errc
in denying his defense. Rule 1200
does not change that rule.” 2 Moo
Federal Practice {| 12.12 (2d ed. 1965
[3,4] Although the defendant’s a
pearance and defense on the merits d
not constitute a waiver of the venue o
jection timely made, GM’s subsequer
conduct did amount to such a waive
Having prevailed on the merits befo
Judge Robson, GM permitted J udge Rot
son to enter judgment in its favor, d
spite the language of the Judge’s own o
der of consolidation which assured G
that the venue matter would be consic
ered before entry of judgment on th
validity question. There is no record of
jection on the part of GM to Judge Rob
son’s departure from the procedure ou
lined in his order of consolidation. O
can only assume that GM condoned, i
deed applauded, the entry of judgmen
Also, despite Judge Barnes’ denial 0
GM’s motion to dismiss for imprope
venue, GM neglected to take a eross-an
peal to the Seventh Circuit in order
present to that tribunal its venue conten
tions.5 GM's condoning of Judge Rob
son’s departure from his own order, and
its failure to take a cross-appeal on th
venue matter were fatal. This Cou
holds that GM waived its venue righ
before Judge Robson. The transparenc
of GM’s conduct is apparent. By argu
ing before the Seventh Circuit for af.
firmance of Judge Robson, GM sought to
preserve a judgment which would oper:
ate as res judicata in any subsequent ac
tions between the parties. GM's strat.
egy, having succeeded on the merits, w
to discard its venue contentions which
even should they prove successful, would
not be as efficacious as a judgment on
the merits.
This Court’s holding that the failure te
take a cross-appeal constituted a waive
of venue objections is not an unpre
solved GM's venue contentions pr.
att Ve
o BOUND CLOSE IN CENTER
ented one. Peoria & Pekin Union Ry.
d. v. United States, 263 U.S. 528, 44
8. Ct. 194, 68 L.Ed. 427 (1924) (Bran-
Heis). In Peoria the plaintiff brought
n action in the Southern District of
llinois against the United States to en-
pin the enforcement of an order of the
CC. The proper venue for the action
yas the District of Iowa, and the United
States made timely objection to the II-
inois venue. The objection was over-
led and the United States prevailed on
he plaintiff's motion for a temporary in-
unction. The plaintiff appealed the de-
ial of the motion for a temporary in-
unction; the United States failed to
a cross-appeal on the venue point.
he Supreme Court held the United
tates’ neglect was fatal.
“The provision that suit shall be
brought in the district of the residence
of the party on whose petition the or-
der was made is obviously one inserted
for his benefit. If there were a lack
of jurisdiction in the District Court
over the subject matter, we should be
obliged to take notice of the defect,
even if not urged below by the appellee.
[Citation omitted] But the challenge
is merely of the jurisdiction of the
court for the particular district. The
objection is to the venue. [Citation
omitted] This privilege not to be
The United States was en-
titled to insist upon compliance with
the venue provision, and its objection
was properly taken below. But, by
failure to enter a cross-appeal from the
court’s action in overruling its objec-
tion, the right to insist upon it here
was lost.” 263 U.S. at 535-536, 44 S.
Ct. at 196.
he GM rejoinder to the Peoria case is
hat there the venue contentions of the
nited States had been fully heard and
sposed of, laying the foundation for an
peal, whereas in the present case GM
ontends there has been no consideration
the venue question. GM overstates its
— — had denied a venue
e, And further,
ue * v
COPY BOUND CLOSE TO EDGE
sued elsewhere can be waived * * *.
entered a judgment in GM’s favo
out first handling the venue objecti
Judge Robson’s conduct in entering
judgment presumes venue, because,
turn GM’s argument back upon itself, i
venue had been wanting there could ben
entry of a valid judgment—despite th
fact that it went in GM’s favor. Thu
GM did have a sufficient foundatic
from which to take a cross-appeal.
Having been reversed on appeal G
sought to reinstate its venue objectic
before Judge Robson on January 14, 196
at the hearing regarding the entry of
judgment of validity. Judge Robs
severed the GM case from the Houdaill
case and his order seems to contemplat
giving GM a second chance to urge th
venue objection.
GM never got that chance. On Jun
23, 1965, at oral argument, Judge Re
son granted the § 1406(a) transfer
Delaware. In granting the transf
Judge Robson denied the defendant's m
tion to dismiss; he felt that transf
was the better alternative to conserve j
dicial effort.
“While ordinarily a motion to tran
fer coming this late in litigation wou
be frowned upon, yet where there ¥
the separation of issues with trial on
on validity, there has been no loss
time.”
Clearly, if the existing validity de
mination were to be void, there wot
have been a great loss of time, and
transfer to a District where the es
would have to be recommenced would
wasteful.
Judge Robson’s comments from
bench indicate that his action in
ferring the case stemmed from a des
to avoid a legal hassle about whether
perimental use” of an infringing pre
would be sufficient to lay venue in
Northern District of Illinois. Ju
Robson’s comments about conserving
dicial energy and avoiding added iss
when viewed in context, support the
that Judge Robson anticipates that
Court would eschew ar 1
COF
Alb. and perhaps most significant-
lige Robson denied the defendant’s
jn to strike paragraph 1 of his Janu-
4, 1965 order holding the patent
If, as GM maintains, Judge Rob-
transfer acknowledged the lack of
over GM, then the proper course of
jn would have been for Judge Robson
make the judgment insofar as GM
concerned. Judge Robson’s express
il of just such an order bespeaks his
landing that the validity deter-
ion would be accepted by this Court
the law of the case.
however, the
i Conceptually,
of the case is distressing. If
was waived, and this Court holds
it was, then transfer to this District
have been made under 28 U.S.C.A.
(a) (1948), rather than under §
(a). This inconsistency permits of
mmedies. Either this Court may re-
ron its own motion on the ground
11 1406 (a) motion would not lie;
tis Court may accept the transfer
teat it as having been made under
oper statutory authority—§ 1404
Expediency and comity dictate the
course of action. Gulf Research &
nent Co. v. Schlumberger Well
ying Corp., 98 F.Supp. 198 (D.Del.
) (Leahy, C. J.), mandamus denied
Gulf Research & Development
* Leahy, 193 F.2d 302 (3d Cir.
aff'd, 344 U.S. 861, 73 S.Ct. 102,
4.668 (1952).
) Gulf Research is a much cited
t which admonishes against re-
The rationale is that courts
dinate jurisdiction should not
a essentially appellate function
upon the correctness of discre-
y transfer orders. As Judge Leahy
put it:
dless of my own view as to
wer the California Court was right
i interpretation of §§ 1391 (c) and
Moore, Federal Practice 1 0.404[8].
e is somewhat different, how-
when the transferee—district
asked to reconsid Pulin
—
SOPY BOUND CLOSE IN CENTER
Cite as 263 F.Supp. 17 (1967)
1400(b), and, admittedly, there is seri-
ous conflict as to the proper interpre-
tation of those sections, I do not think
it meet or proper that I review J udge
Harrison’s decision on the merits. To
do so would be a usurpation of an ap-
pellate function; * * *, * # «# It
is now for an appellate court—not for
me—to correct any error, if error there
be, in his opinion. It is not only the
principle of comity and the fact that
Judge Harrison’s opinion may be
likened, at this stage, to the ‘law of this
case’ which compels me to this conclu-
sion, but, what seems of most impor-
tance to me are considerations for the
orderly functioning of the judicial
process.” 98 F.Supp. 200-201.
[8] Mindful of Judge Leahy’s coun-
sel, this Court declines to retransfer the
case to Illinois.
venue was waived in Illinois, and intends
to apply the validity determination of the
Seventh Circuit as the law of the case.
The Court holds that
“Where a case has been decided by
an appellate court and remanded, the
court to which it is remanded must pro-
ceed in accordance with the mandate
and such law of the case as was estab-
lished by the appellate court.” 1B
Moore, Federal Practice f 0.404 [10]
(2d ed. 1965).
Applying Professor Moore’s teaching to
the facts of this case, the validity issue
was set to rest by the Seventh Circuit,
and was binding upon Judge Robson as
the law of the case in subsequent pro-
ceedings. It has been recognized by com-
mentators that, as far as transferee
courts are concerned, the law of the case
doctrine applies to rulings on points
other than the actual transfer. With re-
spect to such questions other than trans-
fer the transferee court takes the case in
the same posture as if it had not been
transferred. Accordingly, if the valid-
ity determination of the Seventh Circuit
case had not been transferred. Orii-
narily one judge does not consider a
point previously decided by another
bound Judge Robson then this Court is
similarly bound.
{9] One final argument which lends
support to the Court’s conclusion that the
law of the case doctrine should be applied
to preserve the validity determination of
the Seventh Circuit is the fact that here
a full dress trial and appeal of the ques-
tion have been had. Concededly, the law
of the case doctrine is not a limitation
upon a court’s power. However, courts
should be even more constrained to trans-
gress the doctrine where a full trial and
appeal of the question, involving a sub-
stantial investment of judicial energy,
have occurred. See 1B Moore, Federal
Practice | 0.404[4] (2d ed. 1965). Cf.,
Dalzell v. The St. Nicholas, 109 F.Supp.
595 (S.D.N.Y.1951).
[10] There is an alternative route by
which the validity determination of the
Seventh Circuit may be preserved with-
out altering the authority for the motion
from § 1406 to § 1404(a). Assuming
arguendo that the Illinois court lacked
venue, it did not lack the power to deal
with the defendant’s substantive rights.
Goldlawr, Inc. v. Heiman, 369 U.S. 463,
82 S.Ct. 913, 8 L.Ed.2d 39 (1962) (Black).
In Goldlawr the Supreme Court condoned
a § 1406(a) transfer from the Eastern
District of Pennsylvania to the Southern
District of New York where the trans-
feror court lacked personal jurisdiction
over the defendants. The transfer was
to avoid the running of the statute of
limitations. Mr. Justice Harlan’s sting-
ing dissent assures us that the issue was
squarely before the majority:
“The notion that a District Court
may deal with an in personam action in
such a way as possibly to affect a de-
fendant’s substantive rights without
first acquiring jurisdiction over him is
not a familiar one in federal jurispru-
dence.” 369 U.S. 467-468, 82 S.Ct. 916.
The majority saw no reason why the
fact situation did not present an appro-
priate occasion for the invocation of §
1406(a)’s transfer power. The purpose
Polat ~, Ae -le' tiie «at err a2 a et - -o
“whatever obstacles may impede
expeditious and orderly adjudicatic
of cases and controversies on thei
merits. * * * If by reason of t
uncertainties of proper venue a mis
take is made, Congress, by the enact .
ment of § 1406 (a), recognized tt
‘the interest of justice’ may requi
that the complaint not be dismissed bya
rather that it be transferred in ordeal
that the plaintiff not be penalized }
what the late Judge Parker aptly ch
acterized as ‘time-consuming and ju
tice-defeating technicalities.’” 369
S. 466-467, 82 S.Ct. 916.
In this particular case Judge !
invoked § 1406(a) for precisely the san
reason, to avoid that waste of judicial ¢
fort which would have attended a dismi
sal and recommencement of the ca:
Further, in this case, unlike Goldla
the Northern District of Illinois had pe
sonal jurisdiction of the defendant.
rationale of Goldlawr may be felicitous
applied in the present case to avoid %
tedious reconsideration of issues ful
and effectively litigated by the parties
the transferor forum. To refuse to f
low the Seventh Circuit’s determinati
would unnecessarily prolong a case whi
has already aged ten years.
Having accepted the first premise
Devex’ motion, that the patent is v
it remains for the Court to consid
whether there remain any material iss
of fact with respect to infringem
The patent in suit relates to the lub
tion of metal for drawing and formi
operations. Specifically, the patent e
first for the application of a phosph
coating to the metal, and the sup
position thereon of a fixed film con
ing a solid meltable organic mate
which in turn contains a solid inorga
compound with a melting point
that of the phosphate. The coating
fixed film lubricant permits the exe
tion of drawing operations with a m
mum of abrasion either of the mate!
being drawn or the dies used in the ¢
The defendant, GM, p
from the Parker-Rustproof Com-
“These materials are used in its
operations. Plaintiff alleges
these lubricants, when superimposed
a phosphate coating, infringe claim
dthe patent. Devex contends the in-
mgement is admitted by GM’s answers
ertain interrogatories. Summary
ment is thought to be a suitable rem-
(uy because, based on similar answers to
tories, Judge Robson granted
judgment in the companion
against Houdaille.
l-l4) However, this case is in a
7 different posture from the compan-
Houdaille case. Here the case has
transferred to another District. The
s are before another court, which
the benefit of having heard the tes-
yon validity. It is well-established
the extent of the prior art deter-
sw the scope of the proffered inven-
and that any claims of infringement
be viewed against the backdrop of
wior art.? Further, the construction
idaim when its validity is contested
fers the construction of that same
when its infringement is alleged.
patentee cannot urge a restrictive
tion of his claim to avoid in-
ty and then an expansive inter-
ution to ensnare infringers.
The doctrines set forth above
specially important when the de-
is charged with infringement
respect to a process which does not
ily overlap the patent and which
ahibit salient differences from the
tes process. Specifically, before
th Circuit Devex relied heavily
series of tests run by one Fried-
lo demonstrate its patent’s improve-
er the prior art. The Friedberg
involved draws conducted under
sures involving severe deforma-
e. E., Huntman Stabilizer Corp. v.
Motors Corp., 144 F.2d 963 (3d
), cert. denied, 323 U.S. 782, 65
271, 89 L.Ed. 624.
k. Diamond Rubber Co. v. Consol.
Co, 220 U.S. 428, 435-436, 31 S.
447, 55 L.Ed. 527 1911). “Ax
—
tion of the metal, whereas the GM opera-
tion involves much lower pressures. And
Henricks, the patentee, himself stated
that it is a high pressure operation gen-
erating sufficient heat to thaw the
meltable pigment which forms a part of
his invention. The Court requires the
aid of expert testimony to determine
whether these differences are, or are not,
important. Likewise, the patentee’s in-
vention is said to consist in part in its
ability to avoid the formation of water
insoluble compound—zinc stearate—
which impedes the cleaning process after
the draw is completed. To achieve this
result the patentee employed a compound
containing sufficient borax—the solid in-
organic compound—to emulsify the zinc
Stearate. Infra-red tests conducted at
the behest of GM demonstrated the pres-
ence of significant amounts of zinc
stearate in those GM operations which
Devex contends infringe the patent. Ab-
sent a trial the Court is unable to con-
clude that these differences are insig-
nificant.
16, 171 The plaintiff, in its “Reply
to Defendant’s Brief in Opposition to
Plaintiff’s Motion for Summary Judg-
ment,” contends that such factors as the
formation of zinc stearate are irrelevant.
The plaintiff would have the Court hold
that the application of a soap and borax
film over a phosphate coating, regard-
less of the manner in which these con-
stituents operate to facilitate the draw-
ing process, constitutes infringement.
In support of this position the plaintiff
cites a series of cases which hold that
the inventor does not have to under-
stand the scientific principles by which
his invention operates. These cases are
inapposite. Although the “theory” is not
prerequisite to patentability, it is im-
portant when scrutinizing for infringe-
ment. If an allegedly infringing process
merit that he may not know all of the
forces which he has brought into opera-
tion? It is certainly not necessary that
he understand or be able to state the
scientific principles underlying his inven-
tion, and it is immaterial whether he can
—
‘ORY ROLINT et eser erer
falls within the literal language of the
claim, but can be shown to operate in
a different manner from the patented
process then there is no infringement.
Specifically, in the present case the pat-
ent teaches the application of a soap
and borax solution over a phosphate
coating. The patent was granted over
the prior art German process because of
Henricks’, the patentee’s, contentions
that the patent represented a significant
advancement in the art since it elim-
inated the formation of water insoluble
compounds such as zinc stearate. The
essence of Henricks’ invention was the
improved “cleanability” offered by his
process.? If the GM tests be believed
then the GM process cannot infringe be-
cause it presents the same cleaning prob-
lems found in the art prior to the Hen-
ricks’ patent.
[18] In conclusion, the Court believes
that to exércise its discretion and grant
summary judgment would be most un-
wise because of the existence of what
appear to the non-technical mind to be
genuine and significant issues. It may
well be that what the Court perceives
to be significant issues will turn out to
be unimportant after a full trial. Re-
grettably, the Court has not had the
benefit of having heard the testimony
concerning validity, and must, perforce,
approach the infringement issue cau-
tiously. That some factual ground will
have to be retraced is the inevitable
result of the parties having sought trans-
fer at the later stages of a complicated
litigation. Such a course should gen-
erally be avoided, especially in patent
cases, because of the inevitable dupli-
ation of judicial effort required to edu-
9. Henricks testified in his deposition of
April 28, 1960:
“That is one of the differences, as I
see it, between my invention and the
prior art. In other words, I did not
put forth any reaction such as zinc
stearate.” p. 49
The Court of Appeals for the Seventh
Circuit made this one of their reasons
for rejecting the argument that claim 4
was anticipated by the prior art:
cate the transferee court in the p
ion, the plaintiff’s motion for aunm
judginent is denied.
Submit order.
tween the soap, borax and phosphate ¢
curred during the drawing proces
Friedberg’s tests showed that in the Hen
ricks’ process, new compounds are form
ed; the formation of insoluble organié
compounds is inhibited, and the abra
sive phosphate is transformed into
glassy amorphous compound having high
ly effective lubricating properties.”
vex Corp. v. General Motors Corp., 34
F.2d 234, 237 (7th Cir. 1965
DEVEX CORPORATION et al.
Plaintiffs,
v.
GENERAL MOTORS CORPORATION,
Defendant.
Civ. A. No. 3058.
United States District Court.
D. Delaware.
Sept. 8, 1970.
Action was brought for patent in.
fringement. The District Court, Caleb
M. Wright, Chief Judge, held that plain.
tiffs, asserting infringement of claim
four of Reissue Patent No. 24,017, relat-
ing to lubrication of metal surfaces in
cold drawing and deforming operations in
shaping steel to desired forms by dies,
failed to show by a preponderance of eyj-
dence that accused Processes achieved
same new and unexpected results which
formed basis for upholding validity of
claim.
Judgment for defendant.
1. Patents 314
In making findings of fact in patent
infringement action involving mass of
technical data and analysis, court is not
conducting laboratory analysis but is ap-
plying a legal judgment to evidence be-
fore it and making a determination
whether the facts are proved or not prov-
ed and whether the party who has burden
on given issue has sustained it or not.
2. Patents 3128)
Finding in patent infringement ac-
tion against party with burden does not
require absolute conviction that oppos-
ing party has proved contrary case.
8. Patents €=312(3)
Patentees had burden of proving
patent infringement by a preponderance
of evidence.
4. Patents €157(1)
Construction of claim when its valid-
ity is contested controls construction of
that same claim when its infringement is
4
~ a, Fens 88 Aeneas ee „„ 2 oe Gc eee oe
r N
Reissue Patent No. 24,017, relating
to lubrication of metal surfaces in cold
drawing and deforming operations in
shaping steel was not infringed by the
defendant’s processes.
6. Patents S312 (3)
Plaintiffs, asserting infringement of
claim of reissue patent relating to lu-
brication of metal surfaces in cold draw-
ing and deforming operations in shaping
steel to desired forms by dies failed to
show by a preponderance of evidence that
accused processes achieved same new and
unexpected results which form basis for
upholding validity of claim.
— — —
David F. Anderson, of Potter, Ander-
son & Corroon, Wilmington, Del., Walter
J. Blenko, Frederick B. Ziesenheim, and
Arland T. Stein, of Blenko, Leonard &
Buell, Pittsburgh, Pa., of counsel, for
plaintiffs.
Thomas S. Lodge, of Connolly, Bove &
Lodge, Wilmington, Del., George N. Hib-
ben, of Hibben, Noyes & Bicknell, Chica -
go, III., Neal A. Waldrop, of Harness,
Dickey & Pierce, Detroit, Mich., and Wil-
liam S. Pettigrew, Detroit, Mich., of Gen-
eral Motors Corp., of counsel, for defend
ant.
OPINION
CALEB M. WRIGHT, Chief Judge.
This is an action for infringement of
Claim Four of Reissue Patent No. 24, 017.
It has been tried on the merits without
a jury and the Court has heard posttrial
argument,
DISCUSSION
Claim Four is now the creature of
judicial construction. Its validity was
saved by a narrow reading in the Court of
1. See also Devex v. Houdaille Industries,
382 F.2d 17, 22-23 (7th Cir. 1967).
2. In Devex v. Houdaille Industries, 382 F.
2d 17, 22-23 (7th Cir. 1907), plaintiffs
contended that the claim should be applied
COPY BOUND CLOSE TO EDGE
v. General Motors, 321 F.2d 234 (JN
1963), applied here as the law of
case, Devex v. General Motors, 263
Supp. 17, 23-24 (D. Del. 1967). 1 i
not the law, and the premise has not be
seriously advanced, that proof of lite
infringement would entitle plaintiffs
a judgment.
In reversing the lower court decisi
that the process was unpatentable |
cause obvious from the prior art,
Court of Appeals relied on evidence
“new and unexpected results flow
the conjunction of the elements defi
in the drawing process * .“
F.2d at 237. The new and unexpec
results are not found in the language
the claim, but they are now its essen
Similar processes with different rex
do not infringe. This Court said in
earlier opinion, “If an allegedly infri
ing process falls within the literal
guage of the claim, but can be sho
to operate in a different manner
the patented process, then there is
infringement.” Devex v. General
tors, 263 F.Supp. 17, 25, 26 (D.
1967). Plaintiffs were obliged, th
fore, to show by a preponderance of
evidence, that the accused processes
plicated the critical results.
As in many patent cases, the
found itself confronted with a m
technical data and analysis. The
dence consisted largely of tests prep
by experts for each side in prep
for litigation. The test results and
pert conclusions are conflicting, as m
be expected, and, even to a laym
appears that objectivity, the unremitqy
master of every laboratory, has no
ways been a fixed star in the ing
conducted and presented to the
Although the errors, mostly of
sion, seem to have occurred from
gence in the pursuit of proof
court said in response, Such 4 ¢
struction would monopolize the 1
broad field of metal forming with any
of a dry soap and borax over pho
any temperature or pressure, regard
ben :
COP
from bad faith or fraud, their pres-
¢ has compounded the burden of one
d in the technology attempting
mach a correct result.
, ) Because the issues are vigor-
y disputed by learned men of science,
outcome depending entirely on which
analyses, and explanations the
adopts, it is well to recall, as did
e Kirkpatrick, “that we are engaged
the determination of a dispute between
parties in a court of law, rather than
m excursion into the realm of scien-
research, and we must approach the
ion from the standpoint of the rules
ich the law has established for re-
the controverted issue.” Shi-
u v. Electric Storage Battery Co.,
FSupp. 42, 62 (E.D.Pa.1936). In
ing findings of fact, the Court is
conducting laboratory analyses, but
ying a legal judgment to the evidence
pit. It is making a determination
facts are proved or not proved, that
party who has the burden on a given
has sustained it or not. A finding
inst the party with the burden, as the
makes here, does not require ab-
conviction that the opposing party
proved a contrary case. Any other
would require judges to know
about the technology of a patent
the experts whose disagreement
js the dispute to court.
intiffs were obliged to prove that
tion occurs in the accused processes
g the soap, borax and phosphate at
temperatures and pressures, caus-
mew compounds, including but not
ied to glassy amorphous compounds,
formed, and inhibiting the forma-
of water insoluble compounds.
results were demonstrated by
iffs’ witness Henry Friedberg and
on by the Court of Appeals to
in the claim’s validity. 321 F.2d
This Court heard nineteen days
testimony, which comprised most
expert opinion relied on by the
It has reviewed the evidence
proportion
—
and the exhibits offered to it and to the
courts which considered validity, and it
concludes that plaintiffs have not met
their burden in establishing the essential
results. The Court has no doubt that
defendant's processes are effective, bene-
ficial and an improvement over earlier
solutions to their lubricating problems,
nor that they utilize some of the learning
upon which the patent is based. Use o
that learning is not actionable, however,
unless it produces the critical results,3
THE NEW COMPOUNDS
Plaintiffs’ expert Henry Friedberg
was again a key witness at the infringe-
ment trial. Plaintiffs relied almost sole-
ly on his tests and analyses to show that
the new compounds are formed in the
accused process. The Court was not com-
fortable, however, with Friedberg’s re-
liance on his earlier experience with
tests on the patented process to justify
shortcuts in analysis of the accused ones.
He failed to repeat his tests on the ac-
cused processes, to develop any standard
charts, and to make any tests on the ac-
cused process without borax; he was
quick to accept minimal evidence to
identify the purported new compounds.
His conviction was no substitute for the
doubts implanted by probing crossexami-
nation, and the Court was unpersuaded
that the coaction occurred and new com-
pounds formed even before defendant
began its case.
The testimony of Dr. Martin Buerger
coneluded the issue. Dr. Buerger was
a convincing witness, confident in his
methods and his conclusions yet honest
in their limitations. He found no evi-
dence of the new compounds identified by
Friedberg, and plaintiffs did little to
shake the strength of his testimony. His
conclusions were in accord with the find-
ings of defendant's other expert, Dr.
Cheever, and although Dr. Cheever lacked
the confident demeanor and commitment
to objectivity displayed by Dr. Buerger,
that they should agree on this point is
;OPY BOUND CLOSE IN CENTER
significant, and it strengthens the find-
ing that defendant's evidence was on the
whole more convincing.
AMORPHOUS COMPOUNDS
Plaintiffs relied on the results of
Friedberg’s X-ray charts to establish the
existence of the glassy amorphous com-
pounds supposedly produced by the coac-
tion. It is undisputed however, that in
most cases such compounds are not dis-
coverable, much less identifiable by X-ray
analysis. Friedberg admitted that the
basis for his conclusion, the flattening
out of the tracings, could be due to the
wiping action of the deformation proc-
ess. The Court could not conclude that
the amorphous compounds were present
when the only evidence was a test not
designed to disclose them.
WATER INSOLUBLE COMPOUNDS
The debate centered around zinc stear-
ate, since it was that substance which
was created by the prior art German
process and the inhibition of which Hen-
ricks, the patentee, specifically claimed
as an advance. On this issue again, there
was no reason to disbelieve Friedberg’s
statement that he found no zinc stearate,
but his failure to identify, or even to
search extensively for, the peaks at the
low angles was unsettling. When de-
fendant’s explanation that the low angle
peaks actually represent a type of basic
zinc stearate, admittedly not recorded in
the ASTM files but chemically logical
nevertheless, was presented, the Court
found itself in a quandary.
Although Friedberg discovered up-
on reexamination that the mysterious
peaks corresponded to those for barium
stearate given in the ASTM files, plain-
tiffs did not present a chemical analysis
of the substance either as produced by
defendant or as found in residue after
boiling a workpiece. The innuendoes
that defendant had created a new sub-
stance and was being less than honest
about its composition were not support-
ed by proof, and the Court would not
COPY BOUND CLOSE TO EDGE
son to doubt credibility or t
fraud appeared. Defendant had at
a standoff, and the plaintiffs,
the burden on the issue, must suffer t
facts to be found against them.
Having found these three groups
facts, as well as others not disc
herein, against the plaintiffs, the
must enter a judgment for defendy
and will do so upon submission of
proper order.
The foregoing and the findings of
and conclusions of law which follow
made in compliance with Rule 52
Fed.R.Civ.P., 28 U.S.C.
FINDINGS OF FACT
1. The plaintiffs herein are as
lows:
Devex corporation, an Ohio cor
tion located at Lakewood, Ohio;
Technograph, a North Carolina ec
ration having its principal place of b
ness at 920 Northwest Boulevard,
ston-Salem, North Carolina;
William C. McCoy, now <
citizen of the State of Ohio
2712 Claythorne Road, Shaker Heig
Ohio;
Theodore A. TeGrotenhuis, a cit
of the State of Ohio residing at
Columbia Road, Olmsted Falls, Ohio
Frederick B. Ziesenheim, a citize
the Commonwealth of Pennsylvani
siding at 355 Woodside Road, F
burgh, Pennsylvania, and one of
torneys of record for plaintiffs in
action;
Marjorie E. TeGrotenhuis, a citiz
the State of Ohio residing at
Columbia Road, Olmsted Falls, Ohi
William C. McCoy, Jr., a citizen
State of Ohio residing at Shaker B
vard, R. D. #3, Chagrin Falls, Ob
Katherine M. Bassett, a citizen
State of Connecticut residing at 2
Ridge Lane, Darien, Connecticut.
2. Defendant General Motors U
ration, is a Delaware 2
—
PS1G))
COP
‘The patent in suit is the outcome
1 application, Serial No. 665,906,
April 29, 1946, by the patentee
ari This application was aban-
din favor of a continuation-in-
application filed October 31, 1950,
gh issued as United States Patent
2588,234, dated March 4, 1952. Ap-
ation for reissue of Patent No. 2,-
was filed March 1, 1954 and
June 7, 1955, issued as Patent No.
swe 24,017 now in suit. PTO 2.
( Plaintiff Technograph holds all
s in and to Henricks Patent Re.
7 save for bare legal title which
ins in the individual named plain-
Plaintiff Devex has remained
y to this action by virtue of certain
y rights. PTO 1, 2.
Only Claim 4 of the Henricks Pat-
No. Re. 24,017 is charged to be in-
by defendant in this action.
daim is as follows:
m process of working ferrous metal
& comprises forming on the surface
the metal a phosphate coating and
imposing thereon a fixed film of a
ition comprising a solid meltable
ic binding material containing dis-
td therethrough a solid inorganic
i meltable at a temperature be-
the melting point of the ferrous
phosphate of said coating and hay-
a hardness not exceeding 5 on the
hardness scale, and thereafter de-
ing the metal.
This patent infringement action
originally filed on November 13,
in the United States District Court
Northern District of Illinois un-
il Action No. 56-C-1912. A sim-
tion was filed against Houdaille
ries in the same Court on May
under Civil Action No. 57-C-
These Civil Actions Nos. 56-C-
and 57-C-892 were consolidated
hal on the issue of validity of Claim
Henricks Patent No. Re. 24,017.
trial, Judge Edwin A. Robson held
4of Henricks Patent No. Re. 24,-
id. On appeal, the Court of
—
Appeals of the Seventh Cireuit reversed
and held Claim 4 valid, 321 F.2d 234.
After remand, and on plaintiffs’ motion,
the case as to General Motors was trans-
ferred to the District of Delaware on
July 16, 1965. The issues are raised in
the Amended Complaint filed July 17,
1968 and in the Answer to the Amended
Complaint filed August 19, 1968.
7. On January 16, 1967, this Court,
by an opinion reported at 263 F.Supp.
17, denied plaintiffs’ motion for sum-
mary judgment on the infringement is-
sue.
8. Plaintiffs charge that the follow-
ing metal forming processes of defend-
ant infringed Claim 4 of the Henricks
patent as held valid by the Court of Ap-
peals of the Seventh Circuit. PTO 3-19.
A. Pontiac Bumper Forming Process
PTO 3-10
(1) During 1955 and 1956 prior to
commencement of this action, defendant
at its Pontiac Motor Division plant
formed automobile bumpers in progres-
sive dies after Spra-Bonderite 111X had
been applied to form a phosphate coat-
ing and after Bonderlube 246 had been
applied in a dilute solution to the phos-
phate coating and dried. PTO 3.
(2) Spra-Bonderite 111X was an acid
zinc phosphate solution containing
12.0% Zn, 9.3% NOs, 29.2% PO, and
the balance water. The Bonderlube 246
in its dry state contained 15% borax
and the balance sodium stearate-sodium
palmitate soap. PTO 3.
(3) After flat steel blanks had been
polished on one side to the finish desired
on the bumper part prior to electroplat-
ing, and after the polished blanks had
been spray cleaned in a Parco No. 341
cleaning solution and rinsed in hot wa-
ter, Spra-Bonderite 111X phosphating
solution was sprayed onto the blanks at
a temperature of about 140° F to 160° F
for 50 seconds. The phosphating step
was then followed by cold and hot water
js rinses. PTO 4-5
SOPY BOUND CLOSE IN CENTER
Cite as 316 F.Supp. 1376 (1970)
(4) The phosphate coated blanks were
then rinsed in a hot solution of Parco-
lene 21 and water, and the excess solu-
tion thereafter removed from the
surface with rubber squeegee rolls.
Parcolene 21 in its dry state is 90%
borax and 10% sodium nitrite and the
Parcolene solution is made by mixing 2
pounds of Parcolene 21 with 100 gallons
of water, Parker Specification No. 96,
PX 60. PTO 5.
(5) A solution of Bonderlube 246 in
water was then roller coated onto the
phosphate coated blank at a temperature
of approximately 190° F. The Bonder-
lube solution was prepared for coating
and replenished during coating in ac-
cordance with the Parker Rust Proof
Specification No. 113, PX 61, wherein
100 pounds of Bonderlube 246 were
mixed with 100 gallons of water. PTO
5.
(6) The coated blanks were then
passed through an infrared drying oven
maintained at an interior air tempera-
ture of 425° F for a period of 20 sec-
onds to remove the water and form a
dry film on the blank. This completed
the coating operation in preparation for
cold forming the bumper parts. PTO 5.
(7) The bumper parts comprised the
front bumper lower impact bar (Part
No. 521374), the front bumper bomb
guards (Part Nos. 521424—5, Assembly
Part Nos. 521794-5), the front bumper
impact bars (Part Nos. 521338-9, As-
sembly Part Nos. 521771-2), and the
rear bumper cross bar (Part No. 518851,
Assembly Part No. 518963). The blanks
which had been previously subjected to
the above-stated lubricating steps, were
then formed into the final bumper con-
figuration and also cut, trimmed and
pierced in a continuous operation by a
series of dies in separate presses. PTO
5-8.
(8) The metal used for the flat steel
blanks was a low carbon steel SAE 1008
and 1010 having a thickness of .110 to
Pott ~~. ae ~- toe Bh on ot oe.” os eS. el a. Re
(9) After being formed, the bum»
parts were cleaned and prepared
electroplating as follows:
(a) The bumper parts were fir
passed through a three stage washer ;
which Wyandotte cleaner called Fe
(an alkaline solution) was sprayed on
a temperature of approximately 189°
PTO 9.
(b) After drying, the bumper pa
were inspected and hand polished,
necessary, to remove spot defects
burrs. PTO 9.
(e) Then the bumper parts were ;
through a power washer in which
were sprayed with Wyandotte No.
alkaline cleaner at approximately 180°
for about 3 to 3% minutes. PTO 9%.
(d) The bumper parts were t
rinsed in hot water for about one m
ute. PTO 9.
(e) The bumper parts were then i
mersed for approximately 4 minutes
a McDermid cleaner at a temperat
of 180° F. The McDermid cleaner
cluded sodium hydroxide,
phosphate and sodium carbonate. f
9.
(f) The bumper parts were f
rinsed in cold water for approxima
½ minute, placed in an acid dip of !
sulphuric acid by volume for 4% mi
and then rinsed in cold water. PTC
(g) After cleaning, the bumper p
were inspected for defects and,
necessary, spot polished by hand. F
10.
(10) The cleaning steps and clea
materials and solutions used in clea
the surfaces of the bumper parts
drawing and prior to eleetroplatin
above described in subparagraphs
to (f) of paragraph (9), were the
as those used in Pontiac’s prior bu
forming process wherein a lubri
Mar-Proof, described as a “sticky
or a “sticky gunk,” was applied
to forming. The cleaning steps
the same results in the BL 246 pr
as in the prior Mar-Proof proce
Valve Lifter Plunger Process PTO
10-15
i) Defendant commercially cold
in an extrusion operation hy-
valve lifter plungers from fer-
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