Escoa Fintube Corp. v. Tranter, Inc., 79-1518

• Citation: 631 F.2d 682
• Decision Date: 18 September 1980
• Docket Number: No. 79-1518,79-1518
• Parties: ESCOA FINTUBE CORPORATION, an Oklahoma Corporation, Plaintiff-Appellant, v. TRANTER, INC., a Michigan Corporation, Defendant-Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals (10th Circuit)

Page 682

631 F.2d 682

207 U.S.P.Q. 1067

ESCOA FINTUBE CORPORATION, an Oklahoma Corporation, Plaintiff-Appellant, v. TRANTER, INC., a Michigan Corporation, Defendant-Appellee.

No. 79-1518.

United States Court of Appeals,

Tenth Circuit.

Argued July 7, 1980.

Decided Sept. 18, 1980.

Harold L. Jackson of Jackson, Jones & Price, Law Corp., Tustin, Cal. (Albin H. Gess of Jackson, Jones & Price, Law Corp., Tustin, Cal., and Thomas R. Brett of Jones, Givens, Brett, Gotcher, Doyle & Bogan, Inc., Tulsa, Okl., with him on the brief), for plaintiff-appellant.

William S. Dorman, Tulsa, Okl. (William C. Anderson of Doerner, Stuart, Saunders, Daniel & Anderson, Tulsa, Okl., with him on the brief), for defendant-appellee.

Before BARRETT, DOYLE and LOGAN, Circuit Judges.

WILLIAM E. DOYLE, Circuit Judge.

This is an appeal from a judgment of the United States District Court for the Northern District of Oklahoma. The action in that court sought enforcement of two patents, the Boose '228 and the Boose '774. The claim was that Tranter, Inc. had infringed. The judgment was that patent '228 was invalid and unenforceable under 35 U.S.C. § 102(a) and (b). The ruling was that it had been anticipated by the prior art. Also, the trial court held The two patents in suit are numbered 3,752,228 and 3,764,774. These have been referred to in the briefs and are referred to here as '228 and '774. Both were issued to Robert C. Boose and now are owned by the plaintiff Escoa Fintube Corporation (Escoa).

Boose '774 to be invalid within the terms of 35 U.S.C. § 103 in that it was obvious in view of the prior art.

The trial court denied relief on the grounds noted above, and we must determine whether the court erred in its findings, conclusions and judgment.

In addition to the general contentions which are that the court erred in holding the Boose '228 patent invalid under 35 U.S.C. § 102(a) and (b) as being anticipated by the prior art, and that the court erred in concluding that the Boose '774 patent was invalid as being obvious in view of the prior art, there are additional challenges, which are that the district court erred:

In concluding that claims 1, 2, 5, 6 and 7 of the Boose '774 patent are invalid under 35 U.S.C. § 112.

In its application of Graham v. John Deere, 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), and United States v. Adams, 383 U.S. 39, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966).

In holding that the presumption of validity attaching to patents '228 and '774 had been weakened due to a Japanese pamphlet published by the Dengensha Company of Hiroshima, Japan, and also had been weakened by the construction of the Thermatool welding machine. The court thought it significant that neither of these had been called to the attention of the examiner. Plaintiff-appellant argues that neither reference was pertinent as a prior art patent.

In concluding that the Japanese language pamphlet referred to above was a printed publication that constituted a full disclosure of the Boose '228 patent.

In not considering the commercial success, long felt need and failure of the experts in considering obviousness.

In characterizing the invention of the '774 and '228 patents as an aggregation of elements old in the art which performed no new or different function.

In comparing the inventions of the Boose '228 and '774 patents with the prior art on an element by element basis rather than viewing the inventions as a whole.

In the inferences it drew from certain foreign and U. S. prior art, some of the foreign documents being introduced into evidence without the benefit of English translation.

STATEMENT OF THE FACTS

Suit was filed by Escoa in 1976 pursuant to 35 U.S.C. § 271 seeking recovery for willful infringement of Boose '228 and '774 patents against Tranter, Inc.

Escoa was shown to have been engaged in the manufacturing and sale of heat exchange tubes. Tranter, although a Michigan corporation, has had a place of business in Tulsa, Oklahoma, known as its Kentube Division. The Tulsa location serves as the site of manufacture of serrated fin heat exchange tubes, the embattled product and the subject of the infringement action.

Boose '228 patent was issued August 14, 1973, and Boose '774 was issued October 9, 1973. Tranter had begun the manufacture of serrated finned tubing in September 1973. The charge is that Tranter, or Kentube, infringed claims 1 and 2 of the Boose '228 patent and claims 1, 2, 5, 6 and 7 of the Boose '774 patent. Infringement is denied on the basis of invalidity of the patents and, of course, it is denied that there is any infringement.

The trial court concluded that both patents were invalid, and on the basis of its holding concluded that the patents were not infringed.

The product here is a species of finned tubing which operates in heat exchangers. These finned tubes transfer the heat from hot gases circulated over the exterior of the tube to cooler fluids circulated in the interior of the tubes. The amount of heat transferred is important and it is affected by the large surface area of the tube. The heat The fins are formed from flat strips of metal which are secured to the tube on an edge so as to form an I-type fin, or the fins may be bent in the form of a U, V or L to provide U-shaped, V-shaped and L-shaped fins, respectively. The fins are fastened to a tube longitudinally, or helically wrapped around it. The fins may be plain and also solid, notched, serrated or perforated.

transfer is greater in relationship to the large surface area. The increase of surface area, so it is said, has been increased by various factors such as studs, rings and fins which are secured to the surface of the tubes by brazing, soldering, low frequency resistance welding, fillet welding, high frequency resistance welding, etc. Each type of extended heat transfer surface is said to have certain advantages over other types. For high temperature applications, fins which are secured to the tubes by high frequency resistance welding, have been preferred.

The serrated I-type fins spirally wound around the heat transfer tube are said to be advantageous as compared with plain or perforated fins. Appellant claims that prior to their discoveries, although there was a need for helically wound I-type serrated tubing, experts doubted whether the high frequency welding process could be used to weld such a fin around a tube. Appellant says that Mr. Boose, by using the Thermatool machine and experimenting, succeeded in accomplishing it.

Finned tubes have a variety of applications in the process of heat exchange, ¹ and are used, for example, in turbines, boilers, economizers, coolers and generators. Metal fins are attached to the exterior of tubing in order to increase the effective surface area for heat transfer between a cooler fluid flowing through the interior of the tubing and a hotter gas or liquid circulating over the exterior of the tube. Finned tubes consist of a solid metal tube with attached metal fins extending radially outward from the surface of the tube. Finned tubes are manufactured in a variety of configurations according to their ultimate use: the larger the surface area of the tube, the greater the heat transfer efficiency. Each type has advantages and disadvantages. The relative advantages and disadvantages of the different welding methods, and the various configurations of finned tubing according to their applications are discussed at length in the trial court's opinion, pp. 4-7. See Findings Nos. 8, 9 and 10. The fins are secured to the outside of the tube by various types of welding techniques such as brazing, soldering, low frequency resistance welding, fillet welding or high frequency resistance welding. The fins may be fastened to the tube longitudinally or wound around it helically. The fins themselves take different forms, typically either solid, or segmented. Solid fins consist of a solid metal strip, while segmented fins consist of a metal strip with vertical segments formed by punching slots (notched fins) or cutting slits or serrations (serrated fins) at intervals along the length of the metal strip. The root or base of the fin which is welded to the tube also may take various forms. For L-type, U-type and V-type fins, a flange is bent out from the base of the fin and in either an L- U- or V-shape, and this flange is welded to the tube. For I-type fins, there is no flange; the lower edge of the metal strip is welded directly onto the tube. See Findings Nos. 18, 19 and 20.

Among the various welding methods, low frequency resistance welding has been used since the late 1940's for welding footed fins such as the L-type, U-shape and V-shape. Resistance welding involves application of an electric current to the tube and fin. The weld is formed by molten metal at the point of contact between the fin and the tube. A pressure wheel is used to bend the fin and simultaneously to forge the fin to the tube. ²

Until the early 50's, it was not possible to manufacture I-type finned tubing by resistance welding. In the early 1950's, however, Wallace Rudd, founder of the predecessor of AMF Thermatool Corp., developed an apparatus for high frequency resistance welding of finned tubing, and adapted the process for manufacture of helically wound I-type solid finned tubing. This apparatus, the "Thermatool machine," as well as several high frequency welding processes, are covered by patents owned by AMF Thermatool, including U. S. Letters Patent No. 2,821,619 (Rudd '619), 3,047,712 (Morris '712) and 3,362,058 (Morris '058). Thermatool has sold its machine to patent licensees, including both Escoa Fintube and Tranter.

Escoa purchased a Thermatool machine and entered into a license agreement with Thermatool in 1968. According to the testimony of Harold W. Jarvis, the president of Escoa, the license agreement was drafted broadly to include the manufacture of both solid and serrated fin tubes in order to cover everything that could...