Metals Disintegrating Co. v. Reynolds Metals Co., Civ. No. 1120.

• Decision Date: 11 March 1955
• Docket Number: Civ. No. 1120.
• Citation: 130 F. Supp. 227
• Parties: METALS DISINTEGRATING COMPANY, Inc., Plaintiff, v. REYNOLDS METALS COMPANY, Defendant.
• Court: U.S. District Court — District of Delaware

130 F. Supp. 227

METALS DISINTEGRATING COMPANY, Inc., Plaintiff, v. REYNOLDS METALS COMPANY, Defendant.

Civ. No. 1120.

United States District Court, D. Delaware.

March 11, 1955.

Arthur G. Connolly (of Connolly, Cooch & Bove), Wilmington, Del., W. D. Keith and Paul S. Bolger, New York City, for plaintiff.

James R. Morford (of Morford & Bennethum), Wilmington, Del., Raymond F. Adams and Curt Von Boetticher, Jr., New York City, for defendant.

LEAHY, Chief Judge.

This is a patent infringement suit. Patent No. 2,002,891 covers a method of producing leafing pigments and also covers a leafing aluminum paste product. The other patent, No. 2,144,953, relates to an improved method of preparing a leafing aluminum paste pigment. Defendant, alleging misuse of patents, initially brought a motion for summary judgment which aimed at dismissal of this action. Later, plaintiff amended its complaint, alleging any prior misuse of the patents had ended and the effects of misuse had been dissipated. Defendant's motion for summary judgment was denied. Metals Disintegrating Co., Inc. v. Reynolds Metals Co., D.C.Del., 92 F. Supp. 896. Then defendant filed answer alleging unenforceability because of misuse and a defense of license. Plaintiff's motion to strike the defense of license was granted. Metals Disintegrating Co., Inc. v. Reynolds Metals Co., D.C.Del., 98 F.Supp. 201. Thereafter plaintiff moved for a separate trial of the misuse issue. After trial the court found the misuse terminated, the consequence dissipated, and the patents in suit enforceable as of April 3, 1947. Metals Disintegrating Co., Inc. v. Reynolds Metals Co., D.C.Del., 107 F.Supp. 105. Infringement and validity of the two patents in suit. No. 2,002,891, which expired May 28, 1952, and No. 2,144,953, which issued in 1939 and has not yet expired, are the present issues.

Claims Nos. 2, 3, 4, 5, 7 and 10 of '891 are here in issue. The present issues as to this patent are defendant's infringement of these claims in the period April 3, 1947, to the date of the expiration of the patent, May 28, 1952. Claims Nos. 1, 2, 3 and 4 of '953 patent are also in suit. Plaintiff withdrew claim 2. The precise issue as to this patent is whether defendant infringed any of claims 1, 3 and 4, in the period from April 3, 1947, to date. Defendant denies infringement and has attacked validity of all claims in suit. For the '891 patent, plaintiff seeks general damages. As to the '953 patent, plaintiff seeks injunctive relief and also general damages.

Opinion Including Findings of Fact.¹

Plaintiff corporation is the successor of a company which was formed prior to 1917 and in which Everett J. Hall, an Assistant Professor of Columbia University, was a principal owner.² Plaintiff and its successor engaged in the manufacture of powdered metal, including copper, zinc, aluminum, lead and solder powder.³ Aluminum powder has been an article of commerce for years and has been used for chemical purposes, ingredient in fireworks, incendiary, and pigment purposes.⁴

The issues deal with defendant's infringement of the patents in suit in the manufacture of aluminum powder and aluminum paste, a product which contains aluminum powder, for pigment purposes, where the aluminum powder or aluminum paste is in the form of "leafing". Prior to 1930, the only leafing aluminum pigment which was an article of commerce was manufactured and sold in the form of dry aluminum powder.⁵

A leafing aluminum pigment contains aluminum flake powder, the powder flakes having had the quality of leafing imparted to them during manufacture. Leafing as known in the industry is that property imparted to aluminum particles which makes them rise to the surface of the vehicle or liquid in which they are carried to orient themselves at the surface to give a bright metallic luster to the surface.⁶ The principal suppliers of this dry leafing aluminum powder prior to 1930, were Aluminum Company of America and the United States Bronze Powder Works, Inc. Defendant, Reynolds Metals Company, was also a supplier.⁷ Prior to 1930, plaintiff company did not engage in the manufacture or sale of any leafing aluminum pigments.⁸ About 1917, Professor Hall developed a ball milling method for producing various types of powdered metals, including copper and aluminum. For this method, he obtained U. S. patent No. 1,569,484.⁹ When this method was applied to aluminum, it produced an aluminum powder known as aluminum flake salable to the fireworks industry in the pyrotechnic field for flares and other incendiary fields. This aluminum powder did not have the ability to leaf and was not a leafing aluminum pigment.¹⁰ Prior to 1930 leafing aluminum powder had been made commercially by a stamping process in which small particles of aluminum were placed on an anvil and pounded into small flakes by repeated blows of mechanical hammers. During the stamping a lubricant was used to facilitate the process. After the stamping operation the aluminum flakes were polished with a leafing agent to impart the leafing quality to the flakes. Thereafter the polished powder was stored for 30 to 60 days to improve the leafing characteristic.¹¹ Prior to 1929, attempts were made by plaintiff to make leafing aluminum pigment by the ball milling process which had been invented by Hall in 1917 and patented by him.¹² These attempts were unsuccessful. Efforts to impart leaf to the aluminum flaked product produced by this ball milling process by polishing those flakes were also unsuccessful.¹³

As To Patent '891.

1. About 1929, Hall devised a new ball milling process by which leafing aluminum pigment could be produced; and devised a new stable leafing aluminum pigment which was principally composed of leafing aluminum flakes dispersed in a liquid carrier such as mineral spirits which was innocuous to the leafing film.¹⁴

Plaintiff started to manufacture this leafing aluminum paste product invented by Hall in 1930 at its plant in Elizabeth, New Jersey. This was the first time a leafing aluminum pigment had been in paste form.¹⁵ This development of the leafing aluminum paste pigment attracted the attention of the dominant suppliers of leafing aluminum powder pigment: United States Bronze Powder Works, one of the dominant suppliers of the dry leafing aluminum powder, which was up to that time the aluminum pigment of the industry, solicited and obtained in 1930 the right to sell plaintiff's production of this new aluminum paste pigment and continued to sell plaintiff's production of this new pigment until about 1945, when plaintiff started to sell directly to the public;¹⁶ Aluminum Company of America, the other dominant supplier of leafing aluminum powder pigment, started, in 1931, negotiations for a license from plaintiff and, in 1933, acquired from plaintiff a license to manufacture and sell the leafing aluminum paste.¹⁷ Defendant also took action after Hall developed leafing aluminum paste pigment. Before Hall's death, in September, 1931, defendant had expressed its interest in the product to him. Following Hall's death defendant suggested to plaintiff the consolidation of the defendant and plaintiff company.¹⁸ The offer of consolidation failed. Then defendant in 1934 installed ball milling equipment for the manufacture of leafing aluminum paste pigment and began manufacture and sale of the paste in 1936. It installed further ball mills, all of which it has continued to use through the years in the manufacture of the leafing aluminum paste.¹⁹

Defendant began manufacture of its No. 30 and No. 40 grades of leafing aluminum paste in 1936 and 1938, and these represent the bulk of defendant's total production in the period 1947 to date.²⁰ As a result of defendant's early activities in the manufacture of leafing aluminum paste pigment, plaintiff, on December 24, 1938, brought action against defendant in this court, alleging infringement. The action was dismissed upon stipulation of the parties following the execution by plaintiff and defendant of a license, dated November 29, 1939.²¹ The history of the relations of the parties is fully set forth in Metals Disintegrating Co., Inc. v. Reynolds Metals Co., D.C.Del., 107 F.Supp. 105.²²

The leafing aluminum paste pigment developed by Hall offered many advantages over the dry leafing aluminum powder pigments. When used in a paint, it produced a more brilliant and smoother finish than was obtained by the use of the dry leafing aluminum pigment. It had greater opacity. It produced paints with greater coverage, the covering power of a paste, containing only 65% of aluminum, being greater than that of an equal weight of the dry leafing powder which was composed entirely of aluminum. When used to produce inks, the resultant ink had improved consistency and free flowing qualities. The leafing aluminum paste had better mixing qualities. Moreover, the explosion and fire hazards incident to the handling by workmen of the dry leafing aluminum powder, and the contamination caused by floating or dusting of dry leafing aluminum powder in the air of plants using aluminum pigments, were eliminated by the use of the leafing aluminum paste pigment.²³ As stated before, in 1930, before plaintiff began manufacture of Professor Hall's leafing aluminum paste pigment product, the only leafing aluminum pigment made and sold in the industry was the dry leafing aluminum powder. By 1934 the new leafing aluminum paste pigment occupied about 15 to 20% of the total market. By the end of 1939 about 65 to 70% of the total leafing aluminum pigment market was furnished by the leafing aluminum paste pigment. In 1952 the leafing aluminum paste pigment occupied 80 to 85% of the total market.²⁴

The process of ball milling developed by Hall in 1930 is usable to manufacture either the new leafing aluminum paste pigment developed by him or dry leafing aluminum powder pigment, and has been used by plaintiff and defendant to make both pigments.²⁵ The process of ball...