United States G. & PE Corp. v. Hanson-Van Winkle, etc., Co.

• Decision Date: 12 June 1939
• Docket Number: No. 4429.,4429.
• Citation: 104 F.2d 856
• Parties: UNITED STATES GALVANIZING & PLATING EQUIPMENT CORPORATION v. HANSON-VAN WINKLE-MUNNING CO.
• Court: U.S. Court of Appeals — Fourth Circuit

104 F.2d 856 (1939)

UNITED STATES GALVANIZING & PLATING EQUIPMENT CORPORATION v. HANSON-VAN WINKLE-MUNNING CO.

No. 4429.

Circuit Court of Appeals, Fourth Circuit.

June 12, 1939.

Clifton V. Edwards, of New York City, and John S. Stump, Jr., of Clarksburg, W. Va. (Frank A. Bower, of New York City, on the brief), for appellant.

H. A. Toulmin, Jr., of Washington, D. C. (Steptoe & Johnson, of Clarksburg, W. Va., Toulmin & Toulmin, of Washington, D. C., D. H. Hill Arnold, of Elkins, W. Va., James Guiher, of Clarksburg, W. Va., and H. A. Toulmin, of Washington, D. C., on the brief), for appellee.

Before PARKER, NORTHCOTT and SOPER, Circuit Judges.

PARKER, Circuit Judge.

This is an appeal in a suit involving patent infringement and unfair competition in the claiming of such infringement. The plaintiff is the Hanson-Van Winkle-Munning Company, a manufacturer of electroplating apparatus, which in the year 1935 sold and installed an electroplating machine for Revere Copper & Brass, Inc., of Rome, N. Y. Shortly after this machine was installed, both plaintiff and its customer received letters from counsel of defendant, the United States Galvanizing & Plating Equipment Corporation, notifying them that the machine so constructed constituted an infringement of patents Nos. 1,475,198 and 1,959,799 owned by the defendant. Plaintiff thereupon instituted this suit asking that the patents relied on by defendant be held invalid and not infringed by the machines of plaintiff's manufacture and that defendant be enjoined from suing or threatening to sue plaintiff or its customers for infringement thereof or giving to plaintiff's customers further notices of infringement. Defendant filed answer admitting the sending of the notices but denying that they constituted unfair competition. By way of counterclaim it pleaded ownership of the patents, alleged infringement thereof by plaintiff and asked an injunction and accounting because of such infringement.

When the case came on for hearing, defendant specified claims 5, 9, 19, 20 and 21 of patent No. 1,475,198 and claims 34 and 36 of patent No. 1,959,799 as the claims infringed by plaintiff. At the conclusion of the hearing, it withdrew all contention with respect to the two claims of the second patent and gave notice that it was filing a disclaimer as to them in the Patent Office. The claims specified from the other patent were held not infringed and invalid. Decree was thereupon entered holding that both patents were invalid and not infringed by machines of plaintiff's manufacture and that the notices of infringement had been given by defendant in bad faith and constituted unfair competition. Injunction was granted restraining defendant from suing plaintiff or its customers for infringing either of the patents or from sending them letters or notices claiming infringement thereof; and the cause was referred to a master to report as to costs incurred by plaintiff as a result of the litigation including attorney's fees, loss of profits and damages. For opinion below see Hanson-Van Winkle-Munning Co. v. U. S. Galvanizing & Plating Equipment Corporation, D.C., 24 F.Supp. 249. Defendant has appealed and four questions are presented for our consideration: (1) whether claims 5, 9, 19, 20 and 21 of patent No. 1,475,198 are valid and infringed by plaintiff; (2) whether plaintiff is entitled to relief in this suit under the Declaratory Judgment Act; (3) whether the evidence warrants the granting of relief on the ground of unfair competition; and (4) the scope of the decree to be entered.

The patent in suit, No. 1,475,198, covers a device for cleaning and electroplating metallic articles. Its distinguishing characteristic is that, in a tank containing a mixture of chemicals designed for cleaning and a cyanide of the metal to be used in plating, it submerges the articles to be plated and, when it has carried them part of the way through the mixture, causes an electric current to flow through it in such way as to deposit on the articles, which are in contact with the cathode of the electric circuit, a plating of the metal which is in solution. Its action is thus described in the specification: "When the combined cleaning and plating operations are to be carried on in this tank the supporting means for the articles are provided with current conducting means in contact with the articles and serving to collect electroplating current from the articles as they pass through the solution. * * * The following ingredients have been found efficient in action to produce a preliminary cleaning and a copper strike: caustic soda six parts, soda ash six parts, aluminum silicate one part, sodium cyanide one part, copper cyanide one part to one hundred and twenty-eight parts of water. The temperature of the solution may be varied to control the speed of the operation, the same effect being obtained in one minute at a temperature of 180 degrees F. that is obtained in six minutes at a temperature of 50 degrees F. With these various ingredients and the electroplating at the discharge end of the tank the article is first thoroughly cleaned and then immediately plated. The caustic soda acts as a cleaner on the steel and the soda ash acts directly on the grease while the aluminum silicate prevents the conversion of the soda and greases into a soap. At the same time the three ingredients offer an ideal combination for the generation of gas by which means the inert material is thrown off leaving a chemically clean surface. On this surface there is immediately secured a deposit of the metal carried in the solution which in the above example is copper."

There are twenty-three claims in the patent, most of which relate to the apparatus. None of the apparatus claims is relied on by defendant except claim 21, which relates to means for varying without use of rheostats the electric current supplied to the various tanks of the machine. The other claims relied on are process claims and are as follows:

"5. The process of cleaning and electroplating, comprising treating an article with an alkali cleaning solution and then electroplating the article without removing it from the cleaning solution."

"9. The process of cleaning and plating which comprises cleaning the article in an alkali solution containing a cyanide of the metal to be deposited and then electroplating the article without removing it from the cleaning solution."

"19. The process of cleaning and electroplating, comprising immersing an article in a solution containing cleaning ingredients and a salt of the metal to be deposited, then after the article has been immersed for a certain length of time passing an electric current through said article while in the solution to electrically clean the surface and immediately secure the deposition of the coating on the clean surface.

"20. The process of cleaning an article preparatory to electroplating it, comprising immersing the article in a cleaning solution and after the article has been immersed in the solution for a certain length of time passing electric current through the article to further clean the surface thereof."

Defendant relies on these process claims as covering two separate processes: (a) A combined process of cleaning and plating in one tank with one solution without removing the article from the solution. (b) The process of immersing the article in such a solution so that it is chemically cleaned without electric current and thereafter turning on the current and electrically cleaning the article and electroplating it. Whether there was novelty in the mechanism designed for applying the process, we need not stop to inquire, as claims involving the mechanism are not before us. Defendant has seen fit to rest its case upon the process claims quoted (except as to claim 21 which we shall discuss hereafter); and these claims are clearly void because all of them are so broadly drawn as to include processes old in the art.

Levy patent No. 923,864 of 1909 discloses very clearly the chemical and electro-chemical cleaning of articles to be plated and the plating of them in one bath or mixture, the specification thereof containing the following description of the process:

"The following is a description of the process: The metal articles are used as a cathode in a bath made of a concentrated solution of an alkaline substance, soda, potash and the like with a slight addition of an alkaline cyanid, and at the same time an anode is employed, made of the metal or alloy intended to be deposited. The latter ingredient added to the bath may vary according to the nature of the material to form the deposit. For instance, for coppering excellent results have been found from the use of a quantity of cyanid corresponding to one tenth of the alkaline salt used. In place of cyanids other alkaline salts may be used as additions to the alkaline solution, such as chlorids or iodids and the like. In these cases however a suitable solvent, such as alkaline sulfites or hyposulfites, must also be added to the electrolytes. These latter ingredients may also be added jointly with cyanids as addition to the alkaline substance. The same result may likewise be obtained when an alkaline phosphate or pyrophosphate is used with or without an addition of alkaline sulfites or hyposulfites as addition to the alkaline solution. The passage of the current through such an electrolyte effects, in the first place, the complete removal of grease from the metal articles serving as the cathode and at the same time, owing to the attack of the anode, results in the formation of the necessary electrolyte for the subsequent metallic deposit on these articles. Therefore, this bath must be under current for some time before it supplies satisfactory deposits; nevertheless the result may be obtained immediately if instead of the whole or part of the alkaline cyanid a like quantity of the corresponding metallic cyanid, metallic chlorid, iodid, and the...