Kolene Corporation v. Motor City Metal Treating, Inc.

• Decision Date: 28 July 1969
• Docket Number: Civ. A. No. 25283.
• Citation: 307 F. Supp. 1251
• Parties: KOLENE CORPORATION, and Deutsche Gold-Und-Silber-Scheideanstalt Vormals Roessler, Plaintiffs, v. MOTOR CITY METAL TREATING, INC., Defendant.
• Court: U.S. District Court — Western District of Michigan

307 F. Supp. 1251

KOLENE CORPORATION, and Deutsche Gold-Und-Silber-Scheideanstalt Vormals Roessler, Plaintiffs, v. MOTOR CITY METAL TREATING, INC., Defendant.

Civ. A. No. 25283.

United States District Court E. D. Michigan, S. D.

July 28, 1969.

Daniel G. Cullen, and Bernard J. Cantor, of Cullen, Sloman & Cantor, Detroit, Mich., for plaintiffs.

Martin J. Adelman, Birmingham, Mich., and Joseph Levin, Detroit, Mich., for defendant.

OPINION

TALBOT SMITH, District Judge.

This case involves a process patent. The use of the process on certain metals, particularly ferrous, results in a tough and wear resistant surface, with greatly increased fatigue strength. Thus "Helicopter rotor blade dampers have service life tripled."¹ It has been described as a "new technology" and there is no doubt that the description is accurate. But this case has an unusual circumstance, new in our experience at least, of significance in some phases of the case. Although we have heard extensive oral testimony, have seen moving pictures, have examined many documents and depositions (the parties have prepared and tried the case with great care), have examined metallic pieces treated by the process, as well as much trade literature, we have yet to be told just how or why the process works as it does. The parties disagree and their experts disagree. We will examine this matter further in due course.

The parties before us are Plaintiff Kolene Corporation (hereafter Kolene), a Michigan corporation, doing business at 12890 Westwood Avenue, Detroit, Plaintiff Deutsche Gold-Und-Silber Scheideanstalt Vormals Roessler (hereafter referred to as Degussa, its trade name), a corporation of the Federal Republic of Germany with offices in Frankfurt-am-Main, West Germany, both collectively referred to hereafter as the plaintiff, and Defendant Motor City Metal Treating, Inc. (hereafter Motor City), a Michigan corporation doing business at 3400 Dunn Road, Detroit.

Involved here is Claim 1 of U.S. Patent No. 3,022,204, issued February 20, 1962 on an application filed by Johannes Muller and Carl Albrecht. The patent is entitled "Process for Nitriding Metals". The plaintiffs claim that the defendant is guilty of infringement and seek an injunction and an accounting.

The defendant alleges that the patent-in-suit is invalid, due to obviousness, and moreover, that the patent is not infringed by the defendant's accused process. In addition, the defendant asserts that the patent is unenforceable and invalid because of alleged fraud on the Patent Office and misuse by the plaintiffs. Defendant also counter-claims for treble damages under the Federal Anti-Trust laws on the ground that the plaintiffs practiced a fraud on the Patent Office in securing the patent, such fraud arising from an alleged failure to advise the Patent Office of the best prior art and in making deliberate misrepresentations to the Patent Office. There is no issue as to jurisdiction of this Court, title to the patent-in-suit, or notice of infringement. There is no serious dispute that the defendant's principals and organizers had knowledge of the patent-in-suit when defendant was organized in October of 1963, when the defendant began its alleged infringing activities and, actually, at an even earlier date, that is, when they were associated with another company, Commercial Steel Treating, prior to mid 1963, and shortly after the issuance of the patent in February of 1962.

Prior to the issuance of the patent-in-suit there was extensive metal-treating history relating to what is called "nitriding". This term, broadly speaking, refers to the casehardening of a piece of metal by the use of nitrogen.² The prior art background of the heat treating of metals begins with gas and liquid nitriding processes.³ The use of these processes was unrestricted to certain of the ferrous alloys since they were not usable on all ferrous materials, such as cast iron. The gas and liquid processes were lengthy and expensive, the former (subjecting the piece to a high temperature nitrogen gas atmosphere) being used particularly for parts where high cost was not a factor, such as in selected governmental and aircraft operations. In the liquid nitriding processes (such as Chapmanizing, which involved heating in the range of 1550 to 1600°F, Malcomizing, Kaliding, and others) the part was immersed in a high temperature molten cyanide bath for prolonged periods of time.

To those skilled in the art the term nitriding was synonymous with marked disadvantages. It did, it is true, result in a wear-resistant surface on some ferrous metals but at the cost of brittleness, lengthy treatment, and high costs. In addition, there was the problem of distortion in the processing. Mr. Michael Soviak, the Chief Metallurgist at Commercial Steel Heating Corporation, testified by deposition and referred in part to the difficulties involved due to the high temperatures used. "* * * We had a tremendous problem with this thing, using carbo-nitriding and cyanide treatments of all kinds where we had to heat to a high temperature and quench. * *" And at a later point, "One of the biggest headaches in our business in distortion. We carry a battery of straighteners that are expensive and their job is to straighten things that distort." In addition, of course, the original dimensions of the piece had to take into account the machining and grinding required to correct the distortion resulting from the process. Under these circumstances there was a real need for a commercially feasible, non-distorting process that would impart to ferrous materials both wear resistance and fatigue resistance and at the same time maintain ductility, thus avoiding brittleness. It should, as well, be economically feasible.

In approximately 1954 Dr. Johannes Muller, a Chemist and Metallurgist who was employed by plaintiff Degussa, developed a "soft" nitriding process which anteceded the patented process we here consider. "Soft" nitriding⁴ involved using a salt bath as the nitriding medium. The active ingredients were sodium cyanide or potassium cyanide or mixtures of both. Dr. Muller states (Ex. B) that the nitriding effect of sodium or potassium cyanide was the result, for example, of the oxidation of sodium cyanide to sodium cyanate. In the decomposition of the latter, nitrogen appeared in the nascent state and could penetrate steel. There was thus obtained a thin, ductile, and tough "compound" layer formed of non-brittle, ductile iron-nitrides, beneath which layer a deeper nitrogen diffusion zone was found. The process was a relatively short one, requiring about 90 minutes, resulting in both increased wear and fatigue resistance, and without the sacrifice of ductility. Moreover, due to the operating temperature of approximately 1050°F there was no significant distortion. These findings of Dr. Muller were reported in articles published in Germany, which articles form part of the prior art in this suit. We will refer to this process hereafter as the "non-aerated" process in order to distinguish it from the aerated process before us in the patent-in-suit.

Promising though it seemed in the laboratory, however, and in use on a small scale, it had one serious drawback. The results were not uniform. Commercially applied, the process was erratic to the degree that variations were not only found from batch to batch, but within parts in a single batch. Similar variations were found in both fatigue and wear resistance. Dr. Muller, himself, spoke of the experience of Volkswagen, "They found one day 50 per cent reference is here made to per cent of improvement in the fatigue properties; another 70 per cent; another 20. So that describes the situation." As a result "They decided to not continue the tests or to introduce a process into the production or to approve it for production." Daimler-Benz "stopped all the test work after a certain while, * * * because of not reproducible results." In fact, Dr. Muller himself when asked whether he or his company ever used a non-aerated cyanidecyanate bath in commercial processing answered, "I would say not really", and went on to explain "because the results I got from this non-aerated bath were not consistent enough, so it was not possible to, let's say, enlarge the use in this field." When asked whether anyone used such a bath commercially in the commercial processing of workpieces, he replied that one company did (Braunschweig) but that "they threw it away after a certain while." This process, we find, was a commercial failure.

We now reach the gist of the patent. We have noted that the simple immersion of the metal in the chemicals, "soft" nitriding, although it resulted in the marked advantages described, was commercially unusable because of its fatal defects as to inconsistency and lack of uniformity. This was particularly harmful to its employment in large volume production. In 1959 one Carl Albrecht, collaborating with Dr. Muller, decided to experiment with the theretofore relatively quiescent bath by adding another step, namely, that of air-bubbling. Sub-surface air was introduced into the vessel and allowed to bubble through the mixture. The results, for some reason, were not only uniformity, consistency, and large-volume reliability, but an increase in the favorable attributes (e. g. ductility) obtained from the commercially unsuccessful non-aerated salt bath. As we have noted heretofore, just why this is true no one seems to know. Counsel for both parties presented theories, as did various experts. Plaintiff's counsel thought that if aeration oxidizes cyanide (as usually contended) it does so by forming a nascent cyanate in situ. This, of course, would be in addition to the already present cyanate. Dr. Muller, the patentee, theorized that when aeration forms a nascent cyanate in situ, the bath in effect contains two forms of cyanate, a normal cyanate and an iso-cyanate. But Dr. Muller does not tell us why this reaction...