530 F.2d 435 (1st Cir. 1976), 75--1309, Norton Co. v. Carborundum Co.

Docket Nº:75--1309, 75--1310,
Citation:530 F.2d 435
Party Name:706 NORTON COMPANY, Appellant-Cross Appellee, v. CARBORUNDUM COMPANY, Appellee-Cross Appellant.
Case Date:February 03, 1976
Court:United States Courts of Appeals, Court of Appeals for the First Circuit

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530 F.2d 435 (1st Cir. 1976)


NORTON COMPANY, Appellant-Cross Appellee,


CARBORUNDUM COMPANY, Appellee-Cross Appellant.

Nos. 75--1309, 75--1310,

United States Court of Appeals, First Circuit

February 3, 1976

Argued Nov. 4, 1975.

As Amended Feb. 23, 1976.

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[Copyrighted Material Omitted]

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Allen Kirkpatrick, Washington, D.C., with whom Kevin E. Joyce, Cushman, Darby & Cushman, Washington, D.C., Joseph L. Cotter, and Goodwin, Procter & Hoar, Boston, Mass., were on brief, for Norton Co.

William H. Webb, Pittsburgh, Pa., with whom John M. Webb, Pittsburgh, Pa., John M. Hall, Boston, Mass., Webb, Burden, Robinson & Webb, P.A., Pittsburgh, Pa., and Choate, Hall & Stewart, Boston, Mass., were on brief, for Carborundum Co.

Before COFFIN, Chief Judge, McENTEE and CAMPBELL, Circuit Judges.

McENTEE, Circuit Judge.

This is a patent infringement action brought by Norton Company ('Norton'), appellant and cross-appellee, against Carborundum Company ('Carborundum'), appellee and cross-appellant. 1 Both parties are large manufacturers of industrial abrasives, and this litigation involves several of their product lines. At issue is patent No. 3,181,939 ('the '939 patent'), 2 which deals with fused alumina/high-zirconia abrasives. 3

The applicant indicated in the original patent application that the following was one of the objects of the invention for which the '939 patent was sought: 'to provide an abrasive of high strength and hardness . . . having a high degree

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of durability . . . (and having) high impact strength suitable for use in snagging operations.' 4 By fusing alumina (specifically 'alpha-alumina') and zirconia the inventors wished to produce a product combining the strength and hardness of alumina with the durability of zirconia. 5 The district court passed on, inter alia, the validity and the scope of the '939 patent and whether it was infringed by Carborundum's product called 'Big Red' or 'BR'. 6 The conclusions of the district court are well summarized in its 'Substitute Interlocutory Judgment and Final Judgment' 7 (hereinafter 'Final Judgment'), entered on July 15, 1975:

'1. Patent No. 3,181,939, Fused Alumina-Zirconia Abrasives, Marshall and Roschuk, now ascribed to Marshall, Roschuk and Thibault, May 4, 1965, is to be read as limited to products originating from a raw mix consisting essentially of alumina and zirconia, and not to include a raw mix containing bauxite (a mined material that converts largely into alumina, with some small portions of other minerals).

  1. As so read the patent is valid and enforcible.

  2. Carborundum's BR sandpaper, so-called, but none other of its accused products infringes the patent.

  3. The counterclaim asserting violations of 15 U.S.C. §§ 2 and 15 is dismissed.

  4. Damages for infringement, and the allocation of costs, are reserved. 8

Our review of the district court's several findings of fact is, of course, governed by the 'clearly erroneous' standard of Fed.R.Civ.P. 52(a). ' (I)f the district court's findings, considering the record as a whole, whether based on live or other types of evidence are reasonably supported, they must stand.' Custom Paper Products Co. v. Atlantic Paper Box Co., 469 F.2d 178, 179 (1st Cir. 1972). See also Graver Tank & Mfg. Co., Inc. v. Linde Air Products Co., 336 U.S. 271, 274--75, 69 S.Ct. 535, 93 L.Ed. 672 (1949); Texas Co. v. R. O'Brien & Co., 242 F.2d 526, 529 (1st Cir. 1957).

The first three of the conclusions contained in the Final Judgment of the district court are appropriately considered together, since the issue of infringement can be dealt with only after the patent's scope, validity and enforceability have been determined. These first three conclusions are based on two essential holdings of the district court, which are themselves bottomed on numerous findings of fact. We may summarize the two crucial holdings as follows:

(a) The '939 patent does not cover the product of a raw mix containing bauxite because the claim when read in the light of the specifications and the file wrapper fails to include a product so produced. Therefore, only a narrow reading of the patent (viz. as including the product of an alumina mix, but not the product of a bauxite mix) is justified. (Hereinafter we refer to this as the scope issue.) 9

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(b) If, as it argues, Norton's patent application should be read as including the product of a bauxite mix, then Norton is guilty of misconduct for its failure to cite patent No. 1,240,491 ('the '491 patent'). Bacause of this misconduct, the '939 patent would be unenforceable if read broadly so as to include a bauxite mix. (Hereinafter we refer to this as the enforceability issue.)

We have carefully studied the record and the briefs and heard oral arguments of both parties, and we have given appropriate weight to the meticulous and well-reasoned opinion of the district court. We affirm its determination that the scope of the '939 patent should be narrow and the consequences of that determination, notably the holding that Carborundum's Big Red infringes. Since we agree with the district court that the '939 patent must be read narrowly, we find it unnecessary to pass on the contingent 10 holding of the district court that Norton's disabling misconduct would render the '939 patent unenforceable if broadly construed. 11 (We shall, however, inquire as to whether the enforceability of the '939 patent in its narrow reading is affected by any possibly disabling misconduct on Norton's part.)

The district court's conclusion that the '939 patent cannot reasonably be read as covering a bauxite mix was based on its consideration of the following items, all of which are part of the file wrapper: the claims of the patent, the specifications, the process claims (later abandoned) in the original application and a statement made by Norton to the patent examiner on April 2, 1962.

Claim 1 (the principal claim) 12 describes the invention in these terms:

'A fused abrasive material consisting essentially of a mixture of alpha-alumina and zirconia and containing less than 0.1% soda, said zirconia being present in an amount from 10 to 60% by weight of said mixture, said mixture consisting of protions (a) and (b), portion (a) of said abrasive material being an alumina-zirconia eutectic and portion (b) being crystals of a member selected from the group consisting of alpha-alumina and zirconia, said crystals having an average size not greater than 300 microns, said abrasive material having a high impact strength whereby it is suitable for snagging stainless steel.' (emphasis supplied)

As the district court correctly noted, this claim certainly does not affirmatively suggest a bauxite mix. It is true that the language of claim 1, especially the phrase 'consisting essentially of,' does not negate the possibility of a bauxite mix being covered by the patent if other parts of the file wrapper sufficiently supported such a reading of the claim. The court found, however, that they did not, and we agree with that finding.

The specifications, after several general statements about the proposed invention and an enumeration of its purposes, make the following declarations relative to the raw mix:

'It has been found that these . . . (purposes) may be attained by combining the desirable properties of fused alpha-alumina and zirconia. In this manner, an abrasive material is produced which combines the strength and hardness of alumina with the durability

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and wear resistance of zirconia and it has been found that this abrasive is especially suitable for snagging operations.

'More particularly, it has been found that high purity alpha-alumina may be mixed with zirconia, also of high purity, in the proportions indicated hereinafter. . . .

'A study of fused combinations of alumina and zirconia revealed that those having between about 90% alumina-10% zirconia and 40% alumina-60% zirconia are products which can be crushed into grits with extremely high impact strength and which are particularly outstanding as a snagging abrasive. . . .

'Alpha-alumina which may be successfully utilized in the process of this invention is preferably of high purity, usually at least 99.8% by weight Al2 O3 and containing less than 0.1% sodium oxide. Another form of alumina which may be used is of a slightly lesser degree of purity and may contain up to as much as 0.4% sodium oxide.'

The specifications continue on, more or less in the same vein, but nowhere do they indicate that the use of a bauxite mix is contemplated. They simply do not support in any way the broad reading of the '939 patent for which Norton contends.

The remaining contents of the file wrapper do not serve to buttress Norton's case. The process claims, which formed part of the original application but were subsequently withdrawn, nowhere indicate that bauxite might be used in the raw mix. 13

With one exception, the file wrapper--the 'written record of the preliminary negotiations between the applicant and the Patent Office for a patent monopoly contract,' D & H Electric Co. v. M. Stephens Mfg., Inc., 233 F.2d 879, 883 (9th Cir. 1956)--contains nothing which supports the broad reading of the '939 patent sought by Norton. 14 The only item in the file wrapper which provides a small amount of grist for Norton's mill is the following statement made by Norton's patent attorney to the Patent Office on April 2, 1962, in response to the patent examiner's initial rejection of October 6, 1961:

'The abrasive product produced by this invention is, chemically, Al2 O3 and Zr O2 with minor amounts of impurities introduced with the source (such as bauxite) of alumina and the source of zirconia. . . .' (emphasis supplied)

The three words which we have italicized are those upon...

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