Bede v. Baker & English, Inc.

• Citation: 274 F.2d 833
• Decision Date: 11 February 1960
• Docket Number: No. 13843.,13843.
• Parties: James A. BEDE and Bede Products Corporation, Plaintiffs-Appellants, v. BAKER & ENGLISH, INC., Spee-Flo Company, Inc., Defendants-Appellees.
• Court: U.S. Court of Appeals — Sixth Circuit

274 F.2d 833 (1960)

James A. BEDE and Bede Products Corporation, Plaintiffs-Appellants, v. BAKER & ENGLISH, INC., Spee-Flo Company, Inc., Defendants-Appellees.

No. 13843.

United States Court of Appeals Sixth Circuit.

February 11, 1960.

William E. Williams, Cleveland, Ohio (of Hudson, Boughton, Williams, David & Hoffmann, Cleveland, Ohio, on the brief), for appellants.

H. F. McNenny, Cleveland, Ohio (of Richey, McNenny & Farrington, Cleveland, Ohio; Clifford E. Bruce, Cleveland, Ohio, on the brief), for appellees.

Before McALLISTER, Chief Judge, and MILLER and CECIL, Circuit Judges.

McALLISTER, Chief Judge.

Appellant, James A. Bede, the owner of the patent in suit¹ relating to a paint heater, of particular utility in the hot spraying of paint, filed his complaint against appellee, Baker & English, Inc., claiming that it infringed his patent. Bede Products Corporation, the other appellant, is Bede's exclusive licensee. The other appellee, Spee-Flo Company, Inc., is the manufacturer of the accused paint heater, and filed an answer as an intervenor. Appellees' defense to Bede's complaint was that his patent was invalid for want of invention, and furthermore, that there was no infringement. The District Court determined that the patent was valid, but held that it had not been infringed. From this decision, Bede, and the Bede Products Corporation appeal. On appeal, it is contended by appellees that not only have they not infringed the patent, but also that it is invalid for want of invention.

The circumstances constituting the background of the case disclose that both hot and cold spraying of paint was known prior to the issuance of the patent in suit. It appears that, in cold spraying, the paint, being highly viscous, cannot readily be sprayed. Accordingly, it is required to be thinned by the addition thereto of solvent thinners. The addition of these thinners reduces the ratio of solid pigment in the paint, so that a cold sprayed paint results in such a thin film that it is necessary to apply a number of coats to a surface in order properly to cover it, and produce a paint film of the requisite thickness.

It has long been recognized that if paint is heated, it is more readily flowable and can be more effectively sprayed. Heated paint does not require the addition of large amounts of thinner solvents, and, accordingly, does not call for the application of a number of coats of paint to a given surface. Hot spraying produces smoother surfaces than can be produced by cold spraying.

However, the methods which were first used to heat the paint by steam coils and the like, proved inefficient; and the more efficient method of direct transfer of heat from electric heating elements to the paint proved dangerous because of explosive vapors. It was found, however, that the paint could be safely heated by an electric element if such element were protected or enclosed in an explosion-proof cover. Such explosion-proof cover was required to be strong enough to withstand internal explosions within the cover, caused by the seeping in of explosive vapors, and their coming in contact with a spark of the electric heating element, and to be of such construction that flames from such an internal explosion would be prevented from leaking out and igniting explosive vapors outside the cover.

One form of explosion-proof cover used in the art prior to the patent in suit consists of a threaded cap, machined to certain dimensions, so that when it is screwed into place, it leaves a leakage passageway through the threads, of a certain critical length and width — the critical relation of length to width depending upon the particular gas or explosive vapor encountered. The leakage passageway through the threads, as above described, provides a minute escape passage, so that any possible flame formed at the electric heating element will not be able to get through the passageway formed by the threads, and ignite the explosive vapors beyond, but will be extinguished before it gets outside the cap.

Appellant Bede had, prior to the patent in suit, been granted a patent on a paint-spraying apparatus, No. 2,481,813, providing for a heating transfer element consisting, among alternative heat-conducting media, of a solid aluminum block which was heated by an electric heating unit. Surrounding the heating transfer element was a coil through which passed, under pressure, the paint to be heated. No explosion-proof cover protected the electric heating unit in this earlier patent; and the underwriters refused to approve the apparatus, when Bede submitted it to them.

In the patent in suit, Bede followed to some extent, at least, his earlier patent which, insofar as this case is concerned, partakes of the prior art. He chose a cylindrical heat transfer block of aluminum. Instead of a coil around the aluminum block as in the prior patent, the aluminum block was cast around an helically coiled tube, with inlet and outlet conduits controlled by valves. The aluminum block was heated by an electric heating element. This heating element was at the top of the heat transfer block of aluminum instead of at the bottom, as in the earlier patent. Moreover, the electric heating element was protected by an explosion-proof cover. The explosion-proof cover was of a conventional type, and was purchased by Bede, in the open market, from the seller and manufacturer, the Crouse-Hinds Company. The explosion-proof cover was screwed onto the top of the aluminum block over the electric heating element, which, in effect, was thus located within an explosion-proof "chamber." The whole was surrounded by a jacket of heat insulating material, located within a shell, as housing, as was the apparatus and insulation of the prior patent.

In his opinion, the trial judge stated that during the trial he entertained some doubt as to the inventive character of the patent in suit, but that he had finally concluded that it had inventive status "because of the novel, unique arrangement and disposition of the essential elements and incorporation of the `builtin' explosion-proof chamber and leakage passageway within the heat exchange block, so as to produce a compact, convenient, economical and commercially successful paint heater not theretofore disclosed in the prior art." The opinion went on to say that appellant Bede had combined known elements in such a new and useful way as to add something of value to the art of hot paint spraying. The trial court continued: "The prior art perhaps discloses the individual elements which were adopted by Bede but no one before Bede disclosed a completed combination so ordered and organized as to meet the type of heater that the paint spraying industry had been looking for, as evidenced by the response when Bede appeared with his heater * * * something more than mechanical or electrical engineering skill would have been required to combine the essential elements of the plaintiffs' paint heater into such a compact, convenient unit of the character described and patented by Bede. At least it had not been obvious before Bede's disclosure."

In holding that Bede's patent was valid, the trial judge in his opinion, nevertheless, concluded that all of the combined elements of the patent in suit were in the public domain, and had been disclosed by the earlier art and publications.

We proceed, then, to consider the question of validity of the patent. Although the District Court held that the patent was not infringed by appellees, it did determine that the patent was valid; and while appellees did not file a cross appeal from the holding of validity, nevertheless that issue is properly before us for decision. Not only was it conceded on the argument of the case that, in order to raise the question of validity, it was not necessary for appellees to file a cross appeal from the District Court's holding of validity, but, according to the authorities, appellees are entitled to an affirmance of the judgment if, for any reason, it is right, even though appellees rely upon invalidity, and did not file a cross appeal from the District Court's finding that the patent was valid; and where an appeal is taken from a judgment dismissing a patent infringement action on the ground that the patent involved was not infringed, it brings up the whole case, and appellees are entitled to an affirmance on the ground that the patent is invalid, although the judgment of the District Court was based only upon a determination of non-infringement. Merco Nordstrom Valve Co. v. W. M. Acker Organization, Inc., 6 Cir., 131 F.2d 277; Pennington Engineering Co. v. Spicer Mfg. Corp., 6 Cir., 165 F.2d 59; Stelos Co. v. Hosiery Motor-Mend Corp., 295 U.S. 237, 55 S.Ct. 746, 79 L.Ed. 1414; Langnes v. Green, 282 U.S. 531, 51 S.Ct. 243, 75 L.Ed. 520. See also Powder Power Tool Corp. v. Powder Actuated Tool Company, Inc., 7 Cir., 230 F.2d 409.

The uncontroverted evidence shows that an explosion-proof chamber like the one in the patent in suit is old; that it serves the same function generally and is constructed in the same way as explosion chambers had always previously been constructed; that the heat transfer element, or cylindrical aluminum block, had been used before the patent in suit for the same purpose and in the same way as in Bede's patent in suit; that such a metal block had been heated by an electric heating unit in the same way in the prior art as was patentee's apparatus; and that there was no joint action between Bede's explosion-proof chamber formed by the explosion-proof cover and the heat transfer block that produced any different results than the individual results of those elements. In other words, the explosion-proof chamber functioned in the same way whether it was within the metal block or in a separate box, outside the block; and the function of the electric heating unit remained unaffected and unchanged by the presence or absence of the explosion-proof chamber. As far as...