STERLING ALUMINUM PROD. INC. v. Bohn Aluminum & Brass Corp., 14472.

• Decision Date: 03 February 1962
• Docket Number: No. 14472.,14472.
• Citation: 298 F.2d 538
• Parties: STERLING ALUMINUM PRODUCTS, INC., Plaintiff-Appellant, v. BOHN ALUMINUM & BRASS CORP., Defendant-Appellee.
• Court: U.S. Court of Appeals — Sixth Circuit

298 F.2d 538 (1962)

STERLING ALUMINUM PRODUCTS, INC., Plaintiff-Appellant, v. BOHN ALUMINUM & BRASS CORP., Defendant-Appellee.

No. 14472.

United States Court of Appeals Sixth Circuit.

February 3, 1962.

Lawrence C. Kingsland, John H. Bruninga, St. Louis, Mo., for appellant, Alfred E. Wilson, Dearborn, Mich., on the brief.

Karl B. Lutz, Pittsburgh, Pa., for appellee, Rockwell T. Gust, Butzel, Eaman, Long, Gust & Kennedy, Detroit, Mich., on the brief.

Before MILLER, Chief Judge, and WEICK and O'SULLIVAN, Circuit Judges.

O'SULLIVAN, Circuit Judge.

This appeal involves the validity of Patent No. 2,771,328, issued on March 20, 1956, and owned by plaintiff-appellant, Sterling Aluminum Products, Inc., herein referred to as Sterling. Appellant brought this action against defendant-appellee, Bohn Aluminum & Brass Corporation, referred to herein as Bohn, for infringement of such patent and for unfair competition. Bohn denied infringement and counterclaimed for a declaratory judgment declaring the patent to be totally invalid. After trial, the District Judge dismissed the complaint and gave judgment to Bohn, declaring the patent invalid and void in toto.

The complaint charged Bohn with infringement of the patent without excluding from such charge any of the fourteen (14) claims thereof. Bohn's answer and counterclaim asserted invalidity of the entire patent. Upon pretrial hearing, Sterling restricted its charge of infringement to claims 2, 6, 7, 10 and 14. Upon the imminence of trial, Sterling further limited such charge to its claims 7 and 10. The District Judge, however, held that the validity of all the claims of the patent had been placed in issue by the complaint and the counterclaim; that these pleadings presented an "actual controversy" within the intendment of § 2201, Title 28 U.S.C.A. Judgment was entered upon the basis of such finding.

The patent issued described its subject as a Piston Ring Groove Protector. Pistons now in use in automobiles and trucks, whether of gasoline or diesel power, are almost universally made of aluminum. These pistons have grooves therein to carry the piston rings. While the ring grooves of the standard passenger motor vehicles are not ordinarily reinforced, the heavier duty motors of trucks, tractors, etc., are latterly having one or both of the sides of some of the grooves reinforced by an insert made of a ferrous metal harder than aluminum. This reinforcement functions to reduce the wear and impact on the ring grooves from the hammering thereon during the reciprocations of the piston. Such wear and distortion of the ring grooves results in a loosening of the piston rings, allowing leakage of gas past the ring and other undesirable consequences described in the testimony.

The particular device involved may be generally described as a flat metal ring, or disc. The disc is serrated on its outer periphery. It is placed in a piston casting mould in such manner that when aluminum is poured into the mould in the process of making the piston casting, the disc becomes integrated into the piston. The aluminum, upon cooling, shrinks inwardly, thereby bonding the disc to the body of the piston. Upon the machining of the grooves into the casting, the metal ring becomes a part of either the upper or lower (or both) of the facings of the groove.

Sterling and Bohn are both manufacturers of aluminum pistons for the automobile industry. Bohn had been manufacturing pistons for Ford Motor and General Motors. It had employed various types of metal ring groove protectors in making such pistons. Chevrolet became acquainted with the particular type of ring groove protectors described in the Sterling patent. It suggested that Bohn use the same in substitute for forms suggested by Bohn. Bohn's witnesses testified that it did adopt the Sterling disc, not because it provided a better method of ring groove protection, but because its dimensions were such that it could be used without changing the dimensions of, or reengineering, the piston desired by Chevrolet. Bohn used the so-called Sterling protector in several hundred thousand pistons made for Chevrolet. Infringement is admitted if Sterling's patent is valid.

Bohn attacked the validity of the patent upon its charge that every part of the alleged invention of the patent was already within the public domain by reason of the prior art (Title 35 U.S.C.A. § 102), and that whatever differences there were between Sterling's device and the prior art were such that, "the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." (Title 35 U.S.C.A. § 103.) The District Judge sustained such defense.

On this appeal, Sterling challenges the District Court's finding of invalidity of its patent and asserts in the alternative that such a finding should have been limited to claims 7 and 10 of the patent, and in any event, that if all claims were...