Union Carbide & Carbon Corp. v. Graver Tank & Mfg. Co.

• Decision Date: 02 June 1952
• Docket Number: No. 10532.,10532.
• Citation: Union Carbide & Carbon Corp. v. Graver Tank & Mfg. Co., 196 F.2d 103 (7th Cir. 1952)
• Parties: UNION CARBIDE & CARBON CORP. v. GRAVER TANK & MFG. CO., Inc. et al.
• Court: U.S. Court of Appeals — Seventh Circuit

196 F.2d 103 (1952)

UNION CARBIDE & CARBON CORP. v. GRAVER TANK & MFG. CO., Inc. et al.

No. 10532.

United States Court of Appeals Seventh Circuit.

March 26, 1952.

Writ of Certiorari Denied June 2, 1952.

Edward A. Haight, Chicago, Ill., John F. Oberlin, James R. Stewart, Thomas V. Koykka, all of Cleveland, Ohio, Casper W. Ooms, Chicago, Ill., Dugald S. McDougall, Chicago, Ill., for appellant.

Richard R. Wolfe, Chicago, Ill., John T. Cahill, Cahill, Gordon Zachry & Reindel, New York City, Carlson, Pitzner, Hubbard & Wolfe, Chicago, Ill., Crumpacker, May, Beamer, Levy & Searer, South Bend, Ind. (James A. Fowler, Jr., New York City, George N. Beamer, South Bend, Ill., of counsel), for plaintiff-appellee.

Before MAJOR, Chief Judge, KERNER and LINDLEY, Circuit Judges.

Writ of Certiorari Denied June 2, 1952. See 72 S.Ct. 1059.

MAJOR, Chief Judge.

This is an appeal from a judgment, entered December 10, 1951, by Judge Charles A. Dewey, sitting by assignment in the United States District Court for the Northern District of Indiana, Hammond Division, adjudging defendants in contempt of court for violating an injunction issued by Judge Luther M. Swygert July 10, 1950. The proceeding which led to the entry of the judgment in controversy was an aftermath of litigation involving United States Patent No. 2,043,960, relating to a process or method of electric welding and to compositions for use in such process. In the original suit, sixteen process and seven composition claims were relied upon. All of the process claims, as well as composition claims 24, 26 and 27, were held invalid. Composition claims 18, 20, 22 and 23 were held valid and infringed. Linde Air Products Co. v. Graver Tank & Mfg. Co., D. C., 86 F.Supp. 191. This holding of validity and infringement as to these four claims was, on appeal, affirmed by this court. 7 Cir., 167 F.2d 531. At the same time, this court held valid all process claims and composition claims 24, 26 and 27. On certiorari, the Supreme Court affirmed judge Swygert in all particulars and reversed this court insofar as its decision was inconsistent with that of Judge Swygert. 336 U.S. 271, 69 S.Ct. 535, 93 L.Ed. 672 (afterward referred to as the first decision of the Supreme Court). The Supreme Court granted rehearing, limited to the question of infringement of the four valid composition claims, and again sustained Judge Swygert's finding of infringement as to defendants' composition 660, by application of the doctrine of equivalents. 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097 (afterward referred to as the second decision of the Supreme Court). Thereupon, plaintiff disclaimed all the process claims and composition claims which had been held invalid.

Subsequent to the second decision of the Supreme Court and on July 10, 1950, Judge Swygert, pursuant to the mandate of that court, issued a permanent injunction enjoining defendants "From making, using, advertising or selling Lincolnweld 660 flux or any other welding composition or flux covered by any of Claims 18, 20, 22, and 23 of said Patent No. 2,043,960, or offering so to do, aiding or abetting or in any way inducing infringement of said Claims * *."

Of the four claims held valid by Judge Swygert and sustained by the Supreme Court, for the infringement of which defendants have been held in contempt by Judge Dewey, plaintiff says, and we think correctly, that claim 23 is typical. It reads: "23. A finely-divided unbonded fusible composition for use in electric welding employing a bare metal electrode as a source of weld metal, said composition being substantially free from substances capable of evolving a detrimental quantity of gas under welding conditions and containing calcium fluoride and a major proportion of one or more alkaline earth metal silicates." (Italics here and subsequently in this opinion ours, unless otherwise noted.)

Defendants continued the manufacture and sale of 660 flux until July 10, 1950. In the meantime and during the course of the litigation, defendants commenced the manufacture and sale of its composition fluxes numbered 770, 780 and 760 (sometimes referred to as the "700 series" Lincoln fluxes). Plaintiff's contempt motion, filed in December 1950, named only the "700 series" fluxes. Early in 1951, defendants introduced another composition, 840. Thereupon, the court gave plaintiff leave to amend its motion for contempt so as to include this new number.

The controversy here revolves around the effect given to the requirement of the claims that the composition contain "a major proportion of one or more alkaline earth metal silicates." In the former litigation, the controversy was confined to the words, "one or more alkaline earth metal silicates," while instantly it is more specifically directed to the words, "a major proportion." Defendants' 660, adjudged to infringe, consisted of 95% or more of manganese silicate, while plaintiff's Unionmelt 20 consisted of slightly less than 95% of alkaline earth metal silicates. The Supreme Court in its second decision held that manganese silicate was the equivalent of an alkaline earth metal silicate and, applying the doctrine of equivalents, found infringement. In the compositions of both plaintiff and defendants there before the court, the ingredients were component parts and had been fully prefused, with complete chemical reaction. That this dual action was taught by the patent there can be no doubt. Whether it was required is a question, as will subsequently appear, of much importance in the instant case.

Plaintiff states that the appeal involves a single contested issue, that is, whether the trial court was clearly in error in finding that the defendants violated the writ of permanent injunction by the manufacture, sale and use of the accused fluxes. Obviously, that is the ultimate issue, but its resolution is dependent upon numerous subsidiary issues raised by the defendants. They contend, (1) that none of the accused fluxes contain "a major proportion of alkaline earth metal silicates," as called for by the claims; (2) the specifications demand that "the chemical reaction between the components of the welding composition must be completed before it is used in welding," i. e., that silicates be formed therefrom; (3) broader claims were rejected and the limitations to "a major proportion" and to "silicates" as distinguished from their component ingredients introduced to avoid rejection; (4) the limitations were relied on both in the Patent Office and in the courts to distinguish the claimed flux from the prior art, and (5) the distinction expressed in these claim limitations and the specifications has become res adjudicata in this case.

Other contested issues raised by the defendants may or may not become material, dependent upon a decision of those which we have stated.

The prior electric welding art, the nature of the Jones invention, the reason for sustaining the validity of the four composition claims now in dispute, as well as that for invalidating three composition and all process claims, are shown in detail in the opinion and findings of Judge Swygert, by the opinion of this court and by the opinions of the Supreme Court, and we need indulge in no detailed repetition. It may be noted, and we think this is without dispute, that plaintiff's flux, with its "alkaline earth metal silicates," as well as defendants' 660 flux, held to infringe by use of its manganese silicate, adjudicated to be an equivalent, are both completely reacted and, when fused, consist of chips of homogenous, glassy material described by the patent as "characterized by vitreous fracture" (i. e., broken glass). On the other hand, the accused fluxes consist of non-homogenous granules composed of particles of the different components held together by a binder but visibly retaining their individual characters. This difference is due to the fact that the chemical reaction between the components of plaintiff's welding composition are complete before use, while in the accused compositions the chemical reaction is not complete before use. True, there is a dispute; in fact, defendants contend that there is no chemical reaction between the components of the accused fluxes, while plaintiff contends that at least partial reaction takes place. Defendants contend that they do nothing more than heat the raw materials in a gas oven for the purpose of driving out water vapor and other gases, and not for the purpose or with the result of producing chemical reaction among the components.

We think it is not in dispute but that the chemical reaction is essential to produce the "silicates" called for in the claims.¹ Defendants' process by which their compositions are produced requires heating for short time to a maximum temperature of from 1400° F. to 1800° F., while plaintiff's process by which its fluxes are produced requires heating for a longer period at a temperature of 2800° F. This difference in the temperature accounts for the fact that plaintiff's fluxes are completely chemically reacted prior to use in the welding process while those of the defendants experience no such chemical reaction or, at any rate, only partial reaction. More specifically, plaintiff's product when manufactured and sold is completely reacted from a chemical standpoint, while defendants' product is not. At most, and this is doubtful, it has been only partially reacted, and the completion of the reaction takes place, if at all, at the time of and in connection with the welding process.

Plaintiff devotes more energy than necessary, we think, in emphasizing the importance of its invention. Its merits have been sufficiently extolled by the courts before which it has been litigated and it requires no further testimonial. And we think some of the confusion in the case arises from the failure to distinguish between plaintiff's composition as described in the four claims in suit and the process employed in the utilization of its...