Cold Metal Process Co. v. Carnegie-Illinois Steel Corp.

• Decision Date: 26 February 1940
• Docket Number: No. 6701,6702.,6701
• Citation: 108 F.2d 322
• Parties: COLD METAL PROCESS CO. v. CARNEGIE-ILLINOIS STEEL CORPORATION et al. CARNEGIE-ILLINOIS STEEL CORPORATION et al. v. COLD METAL PROCESS CO.
• Court: U.S. Court of Appeals — Third Circuit

108 F.2d 322 (1939)

COLD METAL PROCESS CO. v. CARNEGIE-ILLINOIS STEEL CORPORATION et al. CARNEGIE-ILLINOIS STEEL CORPORATION et al. v. COLD METAL PROCESS CO.

Nos. 6701, 6702.

Circuit Court of Appeals, Third Circuit.

June 15, 1939.

Rehearing Denied November 14, 1939.

Writ of Certiorari Denied February 26, 1940.

Wall, Haight, Carey & Hartpence, of Jersey City, N. J. (Thomas G. Haight, of Jersey City, N. J., Clarence P. Byrnes, of New York City, Walter J. Blenko, and Wm. H. Webb, both of Pittsburgh, Pa., of counsel), for Cold Metal Process Co.

Merrell E. Clark, of New York City, John E. Jackson, of Pittsburgh, Pa., Charles H. Walker, of New York City, and Lindabury, Depue & Faulks, of Newark, N. J., for Carnegie-Illinois Steel Corporation and U. S. Steel Corporation.

Before DAVIS, BUFFINGTON, and THOMPSON, Circuit Judges.

Writ of Certiorari Denied February 26, 1940. See 60 S.Ct. 590, 84 L.Ed. ___.

BUFFINGTON, Circuit Judge.

In the court below the Cold Metal Process Company, assignee of Abram F. Steckel, brought suit against Carnegie-Illinois Steel Company and the United States Steel Corporation, charging, inter alia, infringement of Patent No. 1,779,195, hereafter styled '195, for "method and apparatus for rolling thin sheet like material." As stated therein, "This application is a division of my application Serial No. 648,761, filed June 30, 1923." It is here noted that said Serial No. 648,761 resulted in the grant of Patent No. 1,744,016, hereafter referred to as '016. On final hearing that court in an opinion reported at Cold Metal Process Co. v. American Sheet & Tin Plate Co., D.C., 22 F.Supp. 75, held patent '195 invalid for lack of invention and dismissed the bill. The court also held patent '016 valid and infringed and from a decree so adjudging the defendants took an appeal. It also appears the Cold Metal Company brought suit likewise charging defendants with infringement of patent No. 1,744,017, hereafter called '017, granted January 14, 1930, to Abram P. Steckel for rolling metal strip, with infringement of patent No. 1,744,018, hereafter called '018, granted January 14, 1930 to Abram P. Steckel for method and apparatus for rolling; with infringement of patent No. 1,881,056, hereafter called '056, granted October 4, 1932 to William C. McBain for Tension Device. All these cases were consolidated and disposed of in the above stated opinion, so that the situation as to '195, '017, '018 and '056 now is that the bills were dismissed, from which dismissals Cold Metal has appealed. As to '016, which was held valid and infringed, the defendants have appealed. As did the court below, we dispose of all patents in this opinion. In doing so we first consider and dispose of '195 and '016.

In an earlier case between the same parties the United States District Court for the Western District of Pennsylvania, in an opinion reported at Cold Metal Process Co. v. United Engineering & Foundry Co., 3 F.Supp. 120, held patent '195 valid and infringed. Reference to the two comprehensive opinions of the different District Courts illustrates the art and saves needless repetition in this opinion.

As stated in patent '195 specification, "It applies particularly to the rolling of thin sheet-like material in long lengths. It provides a mill which may be operated at high speeds and permits of rolling metal strips of practically unlimited length. In cold rolling I have successfully operated a mill of the character herein disclosed at speeds up to 1200 feet per minute."

It will therefore be noted that we are here concerned first, with the process of cold as contrasted with hot rolling, and, secondly, with a "thin strip" of steel product as compared with thicker steel products. This distinction between thin strip and thicker steel sheet products and between cold and hot rolling was such as to really evidence two essentially different fields in the steel art and this is strikingly evidenced by the fact that while there were many advances made in heavier steel rolling, there was no advance made in the thin strip art and the method in use when this patent was applied for in 1923 was the same "pack" method in use for two hundred years. In 1908 in the case of Donner v. American Steel and Tin Plate Company, 3 Cir., 165 F. 199, 203, this court had occasion to consider the "pack" process as then used in steel rolling and after considering the uncontradicted proof of the state of the art by men experienced therein, we there held that even with continuous rolling "the packs stick and produce scrap to such a degree as to make such rolling commercially unsuccessful."

Indeed, the inability of a pack process to produce the low gauged finished sheets the art was calling for is shown by the defendants' own proofs in a patent to Cushwa, No. 904,605, wherein the patentee states: "The most commonly employed process of producing sheet and similar metal is to start with a sheet bar which is about 5/8 to 3/4 of an inch in thickness, and 5 to 8 inches wide, and of a length approximately equal to the width of sheets to be formed. These sheet bars are heated and reduced in breaking down rolls, which are ordinarily 2-high rolls through which the plate is fed a number of times. Two or more sheets thus formed are then piled one on the other and rolled down to about 18 to 20 gage. These sheets are then separated or opened up and again piled and reheated to a good rolling temperature and then further reduced. For the coarser gages the packs are doubled one or more times, again reheated and further reduced. This old hand process requires a large amount of labor and repeated reheatings, thus adding considerably to the cost of production. It also results in the production of a large amount of scrap, this being due to the fact that when piled the sheets do not stay in exact position but slip sidewise or endwise and thus result in producing edge portions which are of unequal thickness. If the edges are very thin they do not elongate in the further reduction but are caused to crack. All of these cracked and unequal edges must be sheared off. Furthermore, it is not possible to handle long packs by hand, and owing to the tendency of the sheets to separate and slip they are rolled mostly in lengths from 8 to 10 feet long. At each end of these sheets there is from 6 to 10 inches of scrap which must be sheared off."

Without discussing the art in great detail, the fact is that neither by the old "pack" method, which employed a stand of two rolls to roll heated metal, nor by any known four-roll stand, nor by any continuous roll process, was the art able to make advance in thin strip steel rolling either cold or hot. In that respect we agree with the statement in the patentee's specification that in the divisional application '016 "cold rolling has theretofore been primarily an expensive finishing process, and not a cheap reduction process." The art was stagnant. Why such was the fact will be better understood by a statement of what the "pack" system was and what limitations and objections were incident thereto.

The evolution of the art and the ultimate standardization of "pack" rolling is thus summarized by Clinton H. Hunt, an experienced steel man: "Tin plate manufacture is supposed to have had its beginning, I think, in Saxony, way back probably in 1500 or 1600. As we know it now, it was brought into Wales, and they produced tin plate by taking a piece of crude iron, spreading it out on an anvil or a flat plate and then hammering it with a hammer until it was reduced down to some degree of thinness. They were not able to get it very uniform in thinness nor very thin. Later on they discovered that by putting two pieces together they wouldn't stick together when they were hammered because of the scale between them, so that they put two together and hammered them down and were able to get the two of them by that means a little thinner. They kept on doing that until they were able to produce comparatively thin sheets and not so much variation in roughness or thickness. That went on until about 1740, when some one discovered that they could take these two plates and put them together and roll them between a pair of rolls and get them to the same thinness and better — they would would be more flat and level and have a more uniform degree of thickness. That process has been going on, that is, the making of plate after that fashion — up until the present time, or up until 1922."

As "pack" rolling represents the peak of the working art when the patent in suit was applied for, we here reproduce in reduced size an exhibit which illustrates the "pack" method.

The proofs are that these roll stands are called hand mills, that the rolls for tin plate mills are about 2 feet 6 inches in diameter and each roll weighs from fourteen to fifteen thousand pounds. The ends or necks of the roll are of reduced size and revolve in brass bearings. The pressure employed in the process is many thousand pounds.

Referring to the foregoing illustration, the process is thus explained:

"The drawing, Exhibit P-55, represents in general diagram, with substantial accuracy, the several steps involved in pack rolling.

* * * * * *

"The starting material which is employed in pack rolling is known as sheet bar. The sheet bar, as it comes from what we call the sheet bar mill, is usually in thirtyfoot lengths. The sheet bar is cut into sections of the proper lengths to make the width of sheet that is desired. * * *

"When the sheet bar is rolled, that is done in a sheet bar mill. It is rolled on flat rolls and travels in a lengthwise direction through the rolls. The edges of the sheet bar * * * are rounded. It has been compressed from a thicker bar, until reduced to this thickness. Without any rolls on the edge to retain it, or without any pass in the rolls to retain it, it is squeezed out in that form by being reduced. That is to say, the rounded edge which is found on the sheet bar is the...