Aluminum Co. of America v. Thompson Products, Inc.

• Decision Date: 09 October 1941
• Docket Number: 8330.,No. 8329,8329
• Citation: 122 F.2d 796
• Parties: ALUMINUM CO. OF AMERICA v. THOMPSON PRODUCTS, Inc. THOMPSON PRODUCTS, Inc., v. ALUMINUM CO. OF AMERICA.
• Court: U.S. Court of Appeals — Sixth Circuit

122 F.2d 796 (1941)

ALUMINUM CO. OF AMERICA v. THOMPSON PRODUCTS, Inc. THOMPSON PRODUCTS, Inc., v. ALUMINUM CO. OF AMERICA.

Nos. 8329, 8330.

Circuit Court of Appeals, Sixth Circuit.

October 9, 1941.

Drury W. Cooper, of New York City (C. Blake Townsend, of New York City, on the brief), for Aluminum Co. of America.

John H. Bruninga, of St. Louis, Mo., for Thompson Products.

Before HICKS, SIMONS, and ALLEN, Circuit Judges.

SIMONS, Circuit Judge.

We have heretofore had presented to us the problems encountered in the search for an aluminum piston that could be reciprocated in the iron cylinder of an internal combustion engine with minute clearances. Our previous study was directed to patents involving the structure of such pistons designed to overcome the difficulties presented by the relatively higher thermal expansivity possessed by aluminum over other metals.¹ The patents involved in the present infringement suit concern themselves with the composition and solidification of aluminum alloys and have for their objectives increase in the properties of tensile strength and ductility and a lowering of the thermal expansivity of the metal utilized.

The patents in suit are Archer and Edwards, No. 1,572,459, granted February 9, 1926, upon an application filed November 27, 1920, directed to "making castings of aluminum-silicon alloys," and Archer and Kempf, No. 1,799,837, granted April 7, 1931, upon an application filed December 22, 1928, for an "aluminum base alloy and piston made therefrom." Of the first patent, claims 1, 2, 3, 4, 6, and 13 were held invalid, and claim 7 valid but not infringed. It is from the decree of invalidity of the claims other than 7, and from the holding of the non-infringement of claim 7 that the plaintiff appeals. Claim 1 of the second patent was held to be valid and infringed, and this phase of the decree, together with the holding that claim 7 of the first patent is valid, is assailed by the cross-appeal of the defendant below.

We are told that aluminum has been used commercially only since about 1889 when it was made available by the invention of the Hall electrochemical process. Pure aluminum being light and ductile, but not very strong, had from the beginning been alloyed with other metals to improve its strength, hardness, or other properties, — copper and zinc being the most commonly used metals for that purpose. For many years there had been controversial discussion in scientific literature of aluminum-silicon alloys, leading to the belief that silicon was an undesirable and dangerous impurity in its effect upon aluminum, and so to be avoided. There was, therefore, no practical art of aluminum-silicon alloys prior to 1920 when Dr. Pacz began conducting experiments which led to his patent No. 1,387,900 for what is known as a "chemical modification" method, which involved treating molten aluminum-silicon alloy with a chemical modifier. The effect of the Pacz invention, and of his later patents, was to stimulate great activity in research upon aluminum-silicon alloys by the appellant and others, leading to the discovery of chemical modifying agents other than those disclosed by Pacz, but producing similar results. Little use was made of the chemical modification method by the practical art because of non-uniformity of product. It was not until the Archer and Edwards disclosure that there developed an aluminum-silicon industry of substantial magnitude.

The inventors claim to have discovered that better and more uniform results could be obtained by a simple mechanical process of casting the alloy; that by a properly controlled and sufficiently rapid rate of cooling and solidification a beneficial and fundamental change in its character could be produced with improvement in the resulting casting; that this change differs not in degree but in kind from that produced by rapid cooling of other alloys as they had been solidified in the prior art. Their patent recites the behavior of other alloys when rapidly solidified, and the merits of rapidly solidified aluminum alloys containing silicon in substantial amount. Their chief object was to provide a simple and effective method of making aluminum-silicon alloy castings with greatly increased tensile strength and ductility, and was based upon the alleged discovery that such alloys are markedly affected by the rate of solidification. They asserted that rapid cooling produces such fundamental change in the character of the structure of the alloy as is illustrated by micrographs showing the change not only in the relative sizes and arrangement of the silicon and aluminum constituents, but also their relative quantities.

Of the claims of Archer and Edwards in suit, claims 1, 2, 3, and 4, printed in the margin,² are for a method of making castings of aluminum-silicon alloy, and claims 6, 7, and 13, likewise set forth in the margin,³ are for a product resulting from the practice of the method. It will be noted that of these claims, claim 7 alone is specific with respect to the amount of silicon employed in the method, or as a constituent of the product. Other claims not in suit recite differing limitations or merely as in claim 13 that the amount of silicon and other alloys is substantial. Both master and court in the trial below concluded that the absence of silicon limitations in the claims other than claim 7, invalidated them. The appellant, however, points to the specification as indicating that the amount of silicon can be varied considerably but should not, in general, be less than 3% nor more than about 15%. It urges upon us the application of the rule that claims must be read and construed in the light of the specification and so liberally interpreted as to uphold and not destroy the right of the inventor in the substance of his invention. Westinghouse E. & M. Co. v. Quackenbush, 6 Cir., 53 F.2d 632, and cases therein cited. We are of the opinion that the rule there applied is limited to claims that are ambiguous and so require construction, and is in no event applicable where it appears to be clear that the inventor sought a broader monopoly than would seem to be justified by his invention as he has described it. Wm. B, Scaife & Sons Co. v. Falls City Woolen Mills, 6 Cir., 209 F. 210; Union Switch & Signal Co. v. Kodel Elec. & Mfg. Co., 6 Cir., 55 F.2d 173; In re Lowry, Cust. & Pat. App., 93 F.2d 909; Cf. Kalle & Co. v. Multazo Co., 6 Cir., 109 F.2d 321. In the first of the cited cases the general rule is clearly stated to the effect that a claim which is capable both of broad and narrow construction in the light of the specification will be given that construction which sustains the patent, but therein it is held that "where, from the specification or the history of the application or the language of the claim it is clear that the patentee intended to claim and the Patent Office intended to grant the broader monopoly which turns out to be invalid, the courts will not, for the arbitrary purpose of saving the claim, read into it a limitation which it does not have." 209 F. 213.

The appellant would have us interpolate into the defeated claims of its patent a limitation upon the silicon content of the patented alloy not there expressed. Not only are the claims held to be invalid without ambiguity, but it would appear to be clear that the inventor intended to...