579 F.2d 1 (2nd Cir. 1978), 997, Eutectic Corp. v. Metco, Inc.

Docket Nº:997, 1281, Dockets 76-7490, 76-7514.
Citation:579 F.2d 1
Party Name:197 U.S.P.Q. 129 EUTECTIC CORPORATION, New Metals Corporation and Metallizing Company of America, Inc., Plaintiffs-Appellees and Cross-Appellants, v. METCO, INC., Defendant-Appellant and Cross-Appellee.
Case Date:February 06, 1978
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

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579 F.2d 1 (2nd Cir. 1978)

197 U.S.P.Q. 129

EUTECTIC CORPORATION, New Metals Corporation and Metallizing

Company of America, Inc., Plaintiffs-Appellees and



METCO, INC., Defendant-Appellant and Cross-Appellee.

Nos. 997, 1281, Dockets 76-7490, 76-7514.

United States Court of Appeals, Second Circuit

February 6, 1978

Argued May 2, 1977.

Rehearing Denied May 17, 1978.

John M. Calimafde, New York City (Hopgood, Calimafde, Kalil, Blaustein & Lieberman, Eugene J. Kalil and Marvin N. Gordon, New York City, on the brief), for plaintiffs-appellees and cross-appellants.

Arnold Sprung, New York City (Burgess, Dinklage & Sprung, Nathaniel D. Kramer, New York City, on the brief), for defendant-appellant and cross-appellee.

Before TIMBERS and VAN GRAAFEILAND, Circuit Judges, and OWEN, District Judge. [*]

OWEN, District Judge.

This is an appeal from a determination of the District Court for the Eastern District of New York, reported at 418 F.Supp. 1186 (1976), that certain patents are valid but not infringed. The patents are two and involve the art of spraying various bi-metallic composites from a flame spray gun onto a metal surface, much as paint is sprayed. United States Patent No. 3,322,515 (the '515 Patent) covers the flame spray materials in powder or wire form. 1 No. 3,436,248 (the '248 Patent) covers the process of spraying the materials described in the '515 Patent.

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The patents teach the artisan that various specified pairings of metals (E. g., nickel and aluminum) prepared and sprayed under appropriate circumstances, will cause a firm, self-bonding coating upon an unprepared metal surface. Essential to this result, the patents teach, is the generation of a certain minimum amount of additional heat during the spray flight. This is caused by the two metals already heated to a reaction point by the flame spray gun thereafter interreacting to form intermetallic compounds, and, in the process, giving off heat. The artisan, according to the patents, may vary the proportions in the various pairings according to what is desired as the coating, so long as the proportions selected produce the required additional heat in spray flight. There are standard metallurgical diagrams to which an artisan can refer to determine which proportions will produce the required heat and which will not, and the '515 Patent provides some examples.

Only one spray powder, consisting of essentially 95% Nickel and 5% Aluminum by weight, is involved here because of its substantial commercial success. Each particle of the fine powder has a nickel nucleus surrounded by even finer aluminum particles bound to the nucleus by resin. 2

Plaintiffs are the claimed infringers. They are the Eutectic Corporation and New Metals Corporation, manufacturers of products in this general field, and Metallizing Company of America, a manufacturer and seller of flame spraying equipment and a purchaser for resale of Eutectic's powders. Plaintiff Eutectic markets flame spraying powders under the trade names "ExoTec," "XuperBond," and "DuroTec." Plaintiff Metallizing markets Eutectic's powder as "Moguloy M-55."

Defendant Metco, Inc. is the owner of the patents in question, and markets its successful "Metco 450" thereunder. It is conceded that the Eutectic and Metallizing powders are nickel-aluminum compositions substantially identical to the "Metco 450" powder. 3

Plaintiffs in this action sought a declaratory judgment of non-infringement and invalidity of the patents. 4 Defendant Metco counterclaimed, charging infringement by each plaintiff. 5 The District Court found validity, but concluded the patents were not infringed. All parties have appealed.

The history of this field is instructive. Flame spraying of metal onto a metal surface is usually accomplished by placing flame spray material in either rod, wire or powder form into a flame spray gun in which, by gas-oxygen reduction or electric arc flame, it is reduced to a molten or semi-molten state and thereupon propelled onto the surface to be coated. From the turn of the century to the 1940's, the only practicable method of assuring some degree of bonding between the coating and the surface was to mechanically roughen the surface to provide crevices and undercuts into which the sprayed molten particles would enter, forming a mechanical interlock. In the mid-1940's, a substantial advance was achieved when one Arthur P. Shepard, a Metco engineer and deceased co-patentee of the patents in suit, discovered that molybdenum, when used as a flame spraying material, would self-bond on a clean unprepared surface. Shepard was granted a patent thereon.

For the next fifteen years molybdenum wire was the only widely-used material in the flame spray field, notwithstanding a number of disadvantages. It was difficult and messy to use, caused wear on equipment because of its hardness, could only be applied at a relatively slow spray rate,

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would not satisfactorily bond to certain surfaces, required a high degree of operator skill, and could not be used where the part being sprayed would subsequently be subjected to use at temperatures above 600 degrees, at which the molybdenum would oxidize and deteriorate, destroying the bond. Thus, there remained during those years a clear need to be filled in the flame spraying art to overcome the problems associated with molybdenum.

As events would have it, this need was also met by a Metco engineer, Ferdinand J. Dittrich, who, working under Shepard, discovered the solution in a powder, each particle having a nickel core surrounded by finely divided aluminum particles bound together by a resin. This powder, when heated to a certain temperature in a flame spray gun, would thereafter exothermically react that is, each element would chemically react with the other, releasing additional heat during the spray's flight from the tip of the gun to the surface being coated. This heat-creation during flight, Dittrich discovered, would cause a secure bonding even to a smooth, clean, unprepared surface. To phrase it in the approximate language of one of the claims of the '515 Patent, the powder had the ability of generating heat during flame spraying which aided in bonding to the surface being sprayed. Clearly, the key to this generation of heat was to be found in the percentage relationship of the components and the arrangement of each particle.

The plaintiffs, at the outset, attack the District Court's conclusion of patentability. They claim that all the basic elements of the Metco patents are found in the prior art. Clearly, the prior art...

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