Kloster Speedsteel AB v. Crucible Inc.
| Decision Date | 11 June 1986 |
| Docket Number | Nos. 85-2174,85-2214,85-2215 and 85-2274,s. 85-2174 |
| Citation | 793 F.2d 1565 |
| Parties | , 230 U.S.P.Q. 81, 231 U.S.P.Q. 160 KLOSTER SPEEDSTEEL AB, Speedsteel of New Jersey, Inc., Appellants, Stora Kopparbergs Bergslags AB, A Swedish Corp., and Uddeholms AB, A Swedish Corp., et al., Appellants/Cross-Appellees v. CRUCIBLE INC., etc., and Crucible Materials Corp., etc., Appellees/Cross- Appellants. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
Francis J. Hone, of Brumbaugh, Graves, Donohue & Raymond, New York City, argued for appellants Stora, etc. With him on brief was Richard S. Clark, of Brumbaugh, Graves, Donohue & Raymond.
Wayne A. Cross, of New York City, argued for appellants Kloster, etc. With him on the brief were William Dunnegan, of Reboul, MacMurray, Hewitt, Maynard & Kristol, and Arthur D. Gray, Stuart J. Sinder, William J. McNichol and Scott A. Wisser, of Kenyon & Kenyon, of counsel.
Ford F. Farabow, Jr., of Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, D.C., argued for appellees Crucible, etc. With him on the brief were Michael C. Elmer and Allen M. Sokal, of Finnegan, Henderson, Farabow, Garrett & Dunner.
Before MARKEY, Chief Judge, NICHOLS, Senior Circuit Judge, and NEWMAN, Circuit Judge.
Consolidated appeals from a judgment of the United States District Court for the Western District of Pennsylvania holding claim 30 of U.S. Patent No. 3,746,518 ('518 patent) and claim 4 of U.S. Patent No. 3,561,934 ('934 patent) valid and infringed. Crucible, Inc. v. Stora Kopparbergs Bergslags AB, 594 F.Supp. 1249, 226 USPQ 36 (W.D.Pa.1984). We affirm in part and remand in part.
In 1974, Crucible, Inc. (Crucible), assignee of the '518 patent (issued July 17, 1973 to Frederick C. Holtz, Jr., on an application filed February 26, 1965), and of the '934 patent (issued February 9, 1971 to Gary Steven on an application filed September 11, 1967), charged Stora Kopparbergs Bergslags AB and Stora Kopparberg Corp. (Stora) with patent infringement in manufacturing and selling "ASP" steel products. On July 25, 1974, Stora filed a declaratory judgment action in the United States District Court for the District of New Jersey alleging patent invalidity, non-infringement, and violation of the antitrust laws.
On October 4, 1974, Crucible 1 sued Stora 2 in the Western District of Pennsylvania, where the district court consolidated the suits and severed the antitrust and damage issues for later trial.
In 1976, a proceeding was initiated in the Patent and Trademark Office (PTO) on Stora's protest against a continuing application related to the '518 patent. Crucible's failure to cite a reference during prosecution of the application that resulted in the '518 patent was reviewed in that proceeding.
The district court tried the case without a jury on 18 dates between September 13 and October 6, 1982, filed an opinion on September 19, 1984, and entered judgment for Crucible on October 11, 1984. The court held that: (1) claim 30 of the '518 patent had not been proved invalid under 35 U.S.C. Secs. 102, 103, or 112, and was infringed by Stora; (2) claim 4 of the '934 patent had not been proved invalid under 35 U.S.C. Secs. 102 or 103; 3 (3) Stora had waived its defense that the patents were unenforceable because of inequitable conduct; (4) Crucible was not entitled to increased damages; and (5) no litigant was entitled to attorney fees. In its October 11, 1984 order, the court permanently enjoined Stora and its "successors in interest and assigns" from making infringing ASP steel products.
On October 31, 1982, the 25th day after trial and almost two years before the court's decision, Fagersta AB, a Swedish corporation, and Stora formed Kloster Speedsteel AB and its subsidiary, Speedsteel of New Jersey, Inc. (Kloster), and Kloster purchased the facility Stora used to make the infringing products.
In a March 12, 1985 order disposing of post-trial motions, the district court reviewed its decision and opinion in light of arguments presented by Stora (and repeated by Stora before us). The court: (1) denied a motion by Kloster to modify the injunction by excluding Kloster or by deleting "successors in interest and assigns"; (2) refused to stay the injunction pending appeal; (3) amended the October 11, 1984 order to enjoin Stora from infringing the specifically upheld claims; and (4) anticipating an appeal, amended its opinion to enter a finding that undisclosed art was not more material than that considered by the examiner, and that, if Stora had not waived its unenforceability defense, it had in any event failed to establish inequitable conduct before the PTO. 226 USPQ 842 (W.D.Pa.1985).
Stora in Appeal No. 85-2215 and Kloster in Appeal Nos. 85-2174/2274 4 contest the determination that Stora had not shown the claims invalid, 5 and Kloster contests the refusal to modify the injunction. In Appeal No. 85-2214, Crucible cross-appeals from the portion of the judgment refusing to find willful infringement and denying increased damages under 35 U.S.C. Sec. 284 and attorney fees under 35 U.S.C. Sec. 285. On stipulated motion, this court consolidated the appeals on June 14, 1985. 6
The present field of technology is that of metal alloy compositions. The focus at trial High speed tool steels generally contain relatively large amounts of carbon and significant amounts of alloying elements that form metallic carbides distributed throughout the microstructure of the steel. Conventionally cast high speed tool steels have a microstructure characterized by an inhomogeneous distribution of coarse carbides, i.e., striations and stringers resulting primarily from the time required to cool the ingot. That carbide distribution adversely affects grindability and cutting efficiency.
was on "high speed" tool steels used to make metal cutting tools. High speed tool steels must possess properties of grindability, heat resistance, hardness, toughness, and dimensional stability. Those properties minimize tool replacement and resulting production line shut-downs.
Prior art workers investigated powdered metallurgical techniques. Those workers initially produced a particulate alloy, preferably by atomization, and then applied heat and pressure to consolidate the resulting powders into an integral product.
To achieve substantially full density, workers had to compact the powders at elevated temperatures. High temperatures, however, cause increased rate of carbide growth and agglomeration and loss of carbon. Low temperatures, on the other hand, render the powder insufficiently malleable for suitable densification. Thus, prior art workers had to choose between high densification and fine carbide size. The invention disclosed in the '518 patent made it possible for the first time to maintain fine, uniformly dispersed carbides while achieving a fully dense product having satisfactory interparticle bonding.
Claim 30 of the '518 patent reads:
A consolidated integral alloy body which is substantially fully dense formed of a hot worked supersaturated solid solution of an inherently alloying composition, said alloy body consisting essentially of a continuous metallurgical phase with a uniformly disbursed hard phase of minute dispersed hard phase particle sizes that are substantially entirely less than three microns in maximum dimension, said alloying composition consisting essentially by weight from about .5% to about 5% carbon at least 10% of a hard phased forming element selected from the group consisting of Cr, W, Mo, Ti, Ta, Cb, Zr, Hf, V, and Al, and mixtures thereof, and the remainder base metal and incidental impurities, wherein said base metal is selected from the group consisting of cobalt, iron and nickel, and wherein the total amount of base metal is at least 30%.
Claim 4 of the '934 patent reads:
An article of manufacture as defined in claim 2, in the form of a hob for use in milling applications.
On May 2, 1978, Crucible disclaimed, under 35 U.S.C. Sec. 253, claim 1 and its dependent claim 2 of the '934 patent. Because it depends from and thus includes all limitations of claims 1 and 2, however, claim 4 properly reads:
As an article of manufacture, a metal body constructed of compacted particles of a high speed tool or die steel composition containing a metal component capable of reacting with carbon to form carbides, said reactive metal component being at least one metal selected from the group consisting of titanium, vanadium, molybdenum, zirconium, columbium, tungsten and tantalum each of said particles having carbides of said reactive metal substantially evenly dispersed throughout, said body having a hardness of at least about 58 Rc and being characterized by size change uniformity upon austenitising, quenching and tempering, the composition of said metal body [consisting] of, in percent, 0.80 to 3.00 carbon, up to 2 manganese, up to 1 silicon, up to 0.5 sulfur, up to 18.0 tungsten, up to 10.0 chromium, up to 12 molybdenum, up to 5 vanadium, up to 12 cobalt and balance iron, with tungsten + molybdenum + chromium + vanadium being equal to at least 10 percent, [said metal body being] in the form of a hob for use in milling applications.
Whether the district court erred in: (1) refusing to hold the asserted claims invalid; (2) refusing to hold the patents unenforceable; (3) denying increased damages and attorney fees; and (4) enjoining Stora's "successors in interest and assigns".
OPINIONTo meet its burden at trial, Stora was required to prove by clear and convincing evidence facts compelling a conclusion of invalidity. See Datascope Corp. v. SMEC, Inc., 776 F.2d 320, 323-24, 227 USPQ 838, 840-41 (Fed.Cir.1985). To meet its burden on appeal, Stora must persuade this court that the district court committed...
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