Metals Disintegrating Co. v. Reynolds Metals Co., 11631.

• Decision Date: 13 January 1956
• Docket Number: No. 11631.,11631.
• Citation: 228 F.2d 885
• Parties: METALS DISINTEGRATING COMPANY, Inc. v. REYNOLDS METALS COMPANY, Appellant.
• Court: U.S. Court of Appeals — Third Circuit

228 F.2d 885 (1956)

METALS DISINTEGRATING COMPANY, Inc. v. REYNOLDS METALS COMPANY, Appellant.

No. 11631.

United States Court of Appeals Third Circuit.

Argued November 3, 1955.

Decided January 13, 1956.

Elmer M. Cunningham, Richmond, Va. (Walter L. Rice, Donald L. Rose, William H. Hogeland, Jr., Richmond, Va., James R. Morford, William H. Bennethum, Wilmington, Del., on the brief), for appellant.

W. D. Keith, New York City (Arthur G. Connolly, Wilmington, Del., Paul S. Bolger, New York City, on the brief), for plaintiff.

Before GOODRICH, STALEY and HASTIE, Circuit Judges.

HASTIE, Circuit Judge.

This is an action for infringement of two patents, No. 2,002,891 and No. 2,144,953, both used in the manufacture of aluminum paints. The District Court held both valid and found infringement of each from the date plaintiff purged itself of their prior misuse. D.C.D.Del. 1955, 130 F.Supp. 227. Appellant, contending that both patents are invalid for lack of invention, does not contest the claim of infringement if they are valid, but argues that, in any event, the District Court erred in fixing the date when purge was effected.

The setting of the controversy is this. The basic components of metallic paints are a liquid paint vehicle and a pigment in the form of finely divided metal particles. Much of today's aluminum paint is made by mixing a leafing aluminum bronze paste with an ordinary paint vehicle such as varnish. "Bronze" as used here is neither a metal nor a color, but rather the form of small flakelike particles to which certain metals, and particularly aluminum, can be and are reduced for various commercial uses. Thus, aluminum bronze is aluminum in tiny flaked particles. "Leafing" or "mirroring" is a property which bronzed particles may be caused to exhibit in such liquids as oils and varnishes. It is the property of rising to the surface of the liquid and there dispersing yet overlapping to form a thin continuous metallic film. This extraordinary behavior must be artificially induced, particularly since the metal is specifically heavier than the liquid vehicle. It is important in metallic paint because it increases opacity, coverage and brilliance of finish.

In this connection it should be noted that two distinct problems are involved in the art of making aluminum pigment. First, a quantity of aluminum must be reduced to the bronze form. Second, a satisfactory leafing quality must be imparted to the bronze. Before the inventor Everett Hall devised the process described in Patent No. 2,002,891, hereinafter called Hall '891, it was the teaching and practice in this field that these two essentials be accomplished in separate stages. In the first stage a milling operation reduced the metal to bronze. There followed a separate process of "polishing" the flakelike particles with a leafing agent, often stearic acid, and "aging" these treated particles. According to the evidence in this case and the proper findings of the District Court thereon, this polishing and aging was the commercially accepted method of inducing leafing until Hall devised the process here in question.

The new teaching of Hall '891 was a method of reducing and processing the metal in a single stage to produce a leafing paste which was more satisfactory to handle than the familiar leafing powder and made a better paint. More particularly, Hall '891 taught that where aluminum, while being reduced by impact in a ball mill, is treated with approximately 3 per cent of its weight of stearic acid in a volatile liquid like paint thinner in the presence of oxygen and heat, a satisfactory leafing quality will be imparted to the bronze; that evaporation of the excess liquid at a temperature not more than 50° C. will leave a homogeneous, stable paste which is a satisfactory leafing pigment; and, if a leafing powder is desired, this may be accomplished by further evaporation at the indicated temperature.

It is agreed that invention inheres in the discovery and devising of such an advanced process for making a superior pigment. But, it is argued against the patent in suit that in an earlier patent Hall had revealed and described essentially the same process, although he may not have realized its full significance at that time. Therefore, it is contended that the monopoly which is being asserted by Hall's assignee in this case cannot be extended beyond the life of the earlier patent, which had expired before the presently alleged infringement. Thus, the matter in dispute here is essentially the relationship between the patent in suit and an earlier Hall patent, No. 1,569,484, hereinafter called Hall '484.

On its face Hall '484 was concerned only with an improved solution of the problems involved in the disintegration of metals into flakes or powders. In other words, bronzing alone rather than leafing or any combination of bronzing and leafing is the problem to which this invention addresses itself. Indeed, the evidence shows that this patent was employed industrially in the reducing of metals for use in making fireworks, other incendiary preparations and chemicals rather than in paint making. What Hall '484 disclosed was a wet ball milling process for disintegrating metals. It taught the placing of the metal in a ball mill and so revolving the structure as to subject the metal to the hammering action of ball against ball and ball against mill wall. At the same time, to facilitate such reduction, prevent aggregation of particles, and reduce the hazards of oxidation and explosion, Hall taught that during the milling process the metal should be covered with a lubricating agent. When disintegration was completed the liquid contents of the mill were evaporated to produce a flakelike powder.

Color is lent to the claim that Hall '484 anticipates and teaches the alleged later disclosures of Hall '891 by these additional facts. The lubricant proposed by Hall '484 was a petroleum oil with a small amount of stearic acid added. The end product of that milling process, although a so-called "dry" powder, was in fact greasy with a residual coating of stearic acid. Admittedly, stearic acid is the basic leafing agent in the process taught by Hall '891. Thus, it is argued that, whether Hall realized it or not, his earlier patent taught a way of making a leafing pigment essentially no different from what he claimed later as a distinct invention in Hall '891.

We agree with the District Court that this position is not well taken. We start with the undisputed, though inconclusive, fact that the wet ball milling process of Hall '484 was not conceived or intended to produce a leafing metallic pigment. However, beyond such intendment the critical question of fact is whether that process, essentially unchanged, was afterwards utilized in Hall '891 to produce a leafing pigment.

The District Court found as a fact that efforts had been made without success to make a leafing pigment by the process described in Hall '484. Recognizing the importance of this finding appellant says it is based upon misinterpretation of the evidence. We have examined the testimony and think that it supports the finding.

But, however that may be, appellant also argues that once stearic acid is recognized as an effective...