Aluminum Co. of America v. Thompson Products

• Decision Date: 01 July 1938
• Docket Number: No. 5407.,5407.
• Citation: 25 F. Supp. 175
• Parties: ALUMINUM CO. OF AMERICA v. THOMPSON PRODUCTS, Inc.
• Court: U.S. District Court — Northern District of Ohio

25 F. Supp. 175

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

No. 5407.

District Court, N. D. Ohio, E. D.

July 1, 1938.

Brockett, Hyde, Higley & Meyer and John W. Meyer, all of Cleveland, Ohio, Drury W. Cooper, Sturges S. Dunham, and C. Blake Townsend, all of New York City, and W. D. Keith, of New Kensington, Pa., for plaintiffs.

John H. Bruninga, of St. Louis, Mo., and Kwis, Hudson & Kent, of Cleveland, Ohio, for defendants.

WEST, District Judge.

This case is before the court on exceptions to the master's comprehensive report. The first patent in suit is to Archer and Edwards for making castings of aluminum-silicon alloy, No. 1,572,459, dated February 9, 1926 on application filed November 20, 1920. The claims in suit are Nos. 1, 2, 3, 4, 6, 7 and 13, of which 1 to 4 are method, and 6, 7 and 13 product claims. It is sufficient to copy Nos. 1, 4, 7 and 13.

"1. The method of making castings of aluminum-silicon alloy, comprising filling the mold with the molten alloy and causing the silicon in the alloy to take the form of minute particles by solidifying the alloy rapidly."

"4. The method of making castings of aluminum-silicon copper alloy, comprising filling the mold with the molten alloy and by rapid cooling causing the alloy to solidify with a fine-grained structure and the precipitating silicon to take the form of minute particles."

"7. As a new product, a chill casting of aluminum-silicon alloy containing not less than about 3 nor more than about 15 per cent silicon, characterized by minute subdivision of the silicon, and high strength and ductility."

"13. As a new product, a chill casting of aluminum alloy containing substantial amounts of silicon and copper, characterized by minute subdivision of the silicon and increased strength and ductility."

The master found all these claims except 7 invalid for failure to state proportions of the constituents of the alloy, and refused to read such proportions into the claims from the specification. He held that only when the claim is ambiguous or where elements of an article claim are referred to in terms of means to perform a function can the specification be resorted to to interpret the claim; to this might have been added inoperative claims.

The specification recites: "The amount of silicon in the alloy can be varied considerably but should not, in general, be less than about 3 nor more than about 15 per cent."

As frequently held by the courts, the claims measure the invention. But they in turn are limited by the specification, and nothing not there disclosed can properly be claimed; consequently all claims in suit, either for the process, one step of which, or for the article, one element of which, is an alloy of aluminum-silicon in proportions substantially different from those stated in the specification, are void. Such claims, except No. 7, call for a combination of aluminum and silicon, the latter in any possible proportion; in that respect they are broader than the invention; and as this clearly appears on the face of the patent, and the claims are not ambiguous, the case is not one for interpretation, but for disclaimer under R.S. § 4917, 35 U.S.C. § 65, 35 U.S.C.A. § 65.

Our Circuit Court of Appeals, in Lamb Knit Goods Co. v. Lamb Glove & Mitten Co., 6 Cir., 120 F. 267, 269, said: "If the patent, when construed upon what stands `within its four corners,' claims more than the actual invention, the patentee must disclaim the excess in order to save that to which he is really entitled."

In Hildreth v. Lauer & Suter Co., D. C., 204 F. 792, 797, Judge Rose remarked: "It is hornbook law that a claim which covers more than the patentee really invented is invalid."

As to the importance of the proportions of the alloy's constituents, see In re Lowry, 93 F.2d 909, 36 U.S.P.Q. 254, decided by the Court of Customs & Patent Appeals. The court approved the views of the Examiner, saying: "He further stated that claims to an alloy should specifically state the percentages of the cobalt-nickel composition as well as the percentages of other ingredients because, he said, `it is well known small changes in percentages of the ingredients often produce alloys of totally different characteristics." And it will be noted that although the application as amended stated a range of percentages of both nickel and cobalt, the court refused to read them into the claims "which were rejected as being indefinite and broader than appellant's invention."

In Ludlum Steel Co. v. Terry, D.C., 37 F.2d 153, there was a disclaimer of limitations in a claim of certain percentages of chromium and silicon going to make up an improved alloy.

In Crown Cork & Seal Co. v. Sterling Cork & Seal Co., 6 Cir., 217 F. 381, 386, 387, it is said: "Only when necessary to make the claims operative, or in case of ambiguity apparent on the face of the claims, or induced by their study in connection with the specification and prior art, is a court permitted to read in an element not expressly named therein, in order to narrow a claim, so as to make valid one otherwise invalid. McCarty v. Lehigh Val. R. Co., 160 U.S. 110, 16 S.Ct. 240, 40 L.Ed. 358. This court has applied this rule, and has refused thus to narrow a claim, and confine it to what turned out to be the real invention, in many cases (see National Cash Register Co. v. Gratigny (C.C.A.) 213 F. 463, 467); and we have, for that purpose, limited a claim beyond its apparent scope only in cases like Lamb Knit Goods Co. v. Lamb Glove & Mitten Co. (C.C.A.) 120 F.267, 269, when it contained some general term of reference which was capable of being so narrowed by interpretation without importing an element distinctly foreign."

The last expression quoted does not mean that our Circuit Court of Appeals holds that every claim capable of being given a narrow construction by reference to the specifications will be so construed in order to save it. What is decided on this point in Lamb Knit Goods Co. v. Lamb Glove & Mitten Co., supra, is found on page 269. Judge Severens announces the general rule that claims must stand or fall as made, citing Keystone Bridge Co. v. Phoenix Iron Co., 95 U.S. 274, 24 L.Ed. 344; states the exceptions permitting construction by reference to the specifications, for certain limited purposes; and then says that when the claim specifically calls for matter not described at all, "this can not be done", such construction being allowable only where there is a description to which the claim, when correspondingly restricted, may apply. Having disposed of the matter of construction of the claim so far as called for by the case, he proceeds to deal with claims like those here, in the language respecting disclaimer quoted above.

In Union Switch & Signal Co. v. Kodel Elec. & Mfg. Co., 6 Cir., 55 F.2d 173, appears the following:

"Claims 1 and 2 call for `copper having cuprous oxide formed thereon, said combination constituting in and of itself a uni-directional current carrying device.'"

"Claims 1 and 2, however, cannot be sustained. These claims would be met by a piece of copper of any size or shape having thereon a splotch of cuprous oxide of any size or shape. There is no suggestion in either of them of internal boundary rectification over a relatively wide area, which, as we have said, is the essence of the Grondahl invention." Page 176.

The last sentence suggests finding in the broad claims under discussion the essence of the invention, to wit, dispersion or precipitation of silicon in the form of minute particles, and therefrom an implied limitation of the proportion of silicon to such percentages as will cause or allow the dispersion or precipitation. But this would run counter to Wm. B. Scaife & Sons Co. v. Falls City Woolen Mills, 6 Cir., 209 F. 210, 213. In that case, to avoid an anticipation, the patentee sought without success to have claim 10, which called for a filter, construed as intending a filter of specific construction shown and described. The court held that where the improvement is described in the claim in terms capable of either broad construction rendering it invalid in view of the prior art, or of a narrower construction preserving its validity, the courts will give it the latter, with this important qualification: "But 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."

The Archer & Edwards specification discloses the proportions of constituents and from it alone no purpose to seek the broader monopoly can be deduced. The history of the application contains some fairly strong indications of such purpose, for originally some of the process claims (now in unlimited form) were limited to proportions of silicon named in the specification. See Ex. 49, pp. 10-12. This is true of product claims, both as originally filed and as granted. Ex. 49, pp. 1214. See the Scaife Case, supra, where the court regarded the fact that claims other than No. 10 called for the peculiar form of filter, as important. Symington v. National Mall. Cast. Co., 250 U.S. 383, 385, 39 S.Ct. 542, 63 L.Ed. 1045, and Smith v. Snow, 294 U.S. 1, 14, 55 S.Ct. 279, 79 L.Ed. 721.

Finally, the language of the claims under examination, so far as any evidence before the court goes, was deliberately employed for a definite purpose, and leaves no reasonable doubt that it was the intention of the patentees to claim and of the Patent Office to grant the broad monopoly expressed by such terms. A narrower construction will not preserve to the patent "the validity which it should have had". Scaife Case, page 213. (Italics mine).

These claims, except No. 7, are not entirely within the invention, never possessed validity, and the court cannot...