Arthur J. Schmitt Found. v. Stockham Valves & Fittings, Inc.
| Decision Date | 28 October 1966 |
| Docket Number | Civ. A. No. 63-383. |
| Citation | 292 F. Supp. 893 |
| Court | U.S. District Court — Northern District of Alabama |
| Parties | ARTHUR J. SCHMITT FOUNDATION and Morris Bean & Company, Plaintiffs, v. STOCKHAM VALVES AND FITTINGS, INC., Defendant. |
Leigh M. Clark, of Cabaniss, Johnston, Gardner & Clark, Birmingham, Ala., Truman S. Safford, William C. Conner and John A. Mitchell of Curtis, Morris & Safford, New York City, and James M. Parker of Gary, Parker, Juettner, Pigott & Cullinan, Chicago, Ill., for plaintiffs.
Douglas Arant of Bradley, Arant, Rose & White, Birmingham, Ala., and Thomas F. Reddy, Jr., S. Leslie Misrock, Robert J. Kadel and Sidney R. Bresnick of Pennie, Edmonds, Morton, Taylor & Adams, New York City, for defendant.
FINDINGS OF FACT AND CONCLUSIONS OF LAW
This action was submitted for decision after thirty-one days of testimony. Upon such testimony, the exhibits, oral arguments and briefs; and the Court being fully advised, enters the following Findings of Fact and Conclusions of Law pursuant to Rule 52.
1. This is an action brought under the patent laws of the United States, U. S. Code, Title 35 and Title 28, Section 1400(b), and charges infringement of four patents relating to resin-coated sand as used in the making of foundry molds for casting iron and other metals. The patents in suit are:
Patent No. Filing Date Issue Date Patentee Subject
2,991,267 Apr. 10, 1957 July 4, 1961 X. L. Bean Resin Coated Sand
2,914,823 Dec. 4, 1950 Dec. 1, 1959 X. L. Bean Casting Mold
2,706,188 July 5, 1952 Apr. 12, 1955 C. W. Fitko Partially Reacted
& J. S. Horn Resin Coated Sand
2,706,163 June 5, 1953 Apr. 12, 1955 C. W. Fitko Resin Coated Sand
with Waxy Coating
2. The December 4, 1950, application was a composite one covering a method of making foundry molds employing a distintegrable plaster pattern and a resin coated sand invention. The Patent Office required a division of the application, and a divisional application was filed August 16, 1956. A further division was required and on April 10, 1957, a continuation-in-part application was filed. Patent No. 2,836,867, not here in suit, covering a disintegrable plaster pattern was issued on the original application; No. 2,914,823 was issued on the divisional application, and No. 2,991,267 on the continuation-in-part application.
3. Plaintiff Morris Bean & Co. is an Ohio corporation engaged in the foundry business and having its principal office at Yellow Springs, Ohio. It is the owner of the Xarifa L. Bean patents Nos. 2,991,267 and 2,914,823 in suit.
4. Plaintiff Arthur J. Schmitt Foundation (hereinafter "Schmitt Foundation") is a non-profit Illinois corporation having its principal office in Chicago, Illinois. It is the owner of the Fitko et al. patent No. 2,706,188 and the Fitko patent No. 2,706,163 in suit.
5. Defendant Stockham Valves and Fittings, Inc. (hereinafter "Stockham") is a Delaware corporation engaged in the foundry business and having its principal office at Birmingham in the Northern District of Alabama, Southern Division.
6. Reichhold Chemicals, Inc., a Delaware corporation having its principal office at White Plains, New York, which supplies part of the specially formulated phenol formaldehyde resin used by Stockham in making its resin coated sand, has by and at its expense conducted the defense of this action, and has agreed to indemnify Stockham against patent infringement in such use of its resin.
7. Prior to World War II, the basic method of making molds for foundry castings involved the use of "green sand" containing sufficient clay and moisture to give it "green strength" or tackiness and cause it to retain the shape of a pattern against which it was pressed.
This green sand process involved considerable skilled labor and was therefore relatively expensive. The molds, with their enclosing flasks, were also heavy and unwieldy. The molds could not be stored for any substantial period of time, and had to be formed as they were needed.
8. Following the War, United States experts uncovered in occupied Germany a significant discovery known as the Croning or "C" process of making "shell" molds. This process involved mixing sand with about 6% to 8% by weight of dry, powdered phenol formaldehyde resin to form a free-flowing granular mixture which could be dumped onto a heated metal pattern and, without any pressure except that of gravity, would flow into conformity with the pattern contour. The heat of the pattern caused the resin first to melt and flow and ultimately to harden and thermoset to bind the sand grains together to form a rigid shell some ¼ inch or 3/8 inch thick adjacent the pattern. Inverting the pattern would allow the excess, unbonded mixture to fall back into the supply box for subsequent use.
Two of these shells were placed together to form a complete casting cavity. The shells were usually backed up with loose sand, steel shot or the like to support them against the pressure of the molten metal. The shells retained their strength long enough for the molten metal to solidify sufficiently to become self-supporting, after which the heat from the casting caused decomposition of the resin binder with resulting disintegration of the shells so that they would readily crumble away to free the casting.
The Croning process supplied a number of advantages over the green sand process, including improved dimensional accuracy and surface finish of the castings, susceptibility to production with unskilled labor or even automatic machinery, and light weight and storability of the shells. The process had a number of disadvantages including the following:
a. Due to the great difference in density of the sand and the powdered resin, handling of the mixture caused the resin to segregate from the sand and become unevenly distributed in the mixture. In areas of low resin concentration, the shells were apt to be weak, while elsewhere the resin might be so concentrated as to fill the spaces between the sand grains and destroy the permeability necessary to permit escape of the gases generated during casting. If these gases could not escape through the mold in the usual way, they tended to blow back into the molten metal causing "blow holes" in the surface of the casting.
b. The powdered resin "dusted" out of the mix, creating a fire and explosion hazard, as well as causing dermatitis in many persons of allergic susceptibility.
c. Much of the expensive resin was wasted.
d. The powdered resin-sand mix could not be handled or transported by many types of automatic machinery or conveyors, and could not be blown by air pressure into the heated core cavities of automatic core-making machinery, without causing separation of the resin from the sand. Thus, even after the Croning process went into commercial use for making shells, cores still had to be made by the old baked core process.
9. The Ford Motor Co., which started using the Croning process commercially about 1950 for the casting of valves and other automotive parts, recognized the aforementioned difficulties with process and experimented for a number of years in attempts to overcome these difficulties. Much of Ford's experimental work was in its attempt to prevent the segregation and dusting of the powdered resin by first wetting the sand grains with minor percentages of various wetting agents and adding the powdered resin in an attempt to cause it to adhere to the moistened grains. These efforts met with no success. Other companies using the process were experiencing similar difficulties with segregation and dusting, and had conducted unsuccessful experiments in an attempt to alleviate these difficulties.
10. In September, 1950, Mrs. Xarifa L. Bean, Director of Research of plaintiff Morris Bean & Co., discovered that the phenol formaldehyde resin could be coated onto sand grains by dissolving the resin in a solvent, such as acetone, adding the resin solution to the sand and mulling the mixture until the solvent fully evaporated. The resulting coated grains were dry, free-flowing and dustless. Although Mrs. Bean reduced the amount of resin to about 4% by weight of the sand and produced coatings of only about one ten-thousandth of an inch around each grain, the resin coated sand upon heating was capable of forming strong foundry molds wherein the sand grains were bonded together at the points of contact of the grains, leaving substantial open interstices between the grains for the escape of gases through the mold. Such resin coated sand has been used commercially by Morris Bean & Co. from about October, 1950 to the present. It has sold almost twelve million dollars worth of castings made with resin coated sand, most of which castings could not have been made at all without such coated sand.
11. About February, 1951, Schmitt Foundation, owners of Acme Resin Company, commenced a program of research in an attempt to develop a resin coated sand. Experiments were conducted throughout the year 1951 and into 1952. Its chemists added the resin in liquid form and employed heat to "advance" or polymerize the resin in their attempt to produce a coating of solid resin on the grains.
Throughout 1951, the Foundation was unable to achieve a commercially satisfactory resin coated sand. In the 1951 experiments a liquid "one-step" resin1 had been employed. Beginning early in 1952 a novolak or "two-step" resin2 was employed. Hexamethylenetetramine (hereinafter "hexa") was added as a hardening agent. When heated, the hexa breaks down into formaldehyde and ammonia, the latter acting as a catalyst for the reaction between the formaldehyde and the excess phenol of the resin, so that the polymerization reaction can proceed to completion, causing the resin to harden or thermoset. The resin, sand,...
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