Barber Asphalt Corp. v. La Fera Grecco Contr. Co.

• Decision Date: 22 December 1939
• Docket Number: Civ. A. No. 13.
• Citation: 30 F. Supp. 497
• Court: U.S. District Court — District of New Jersey
• Parties: BARBER ASPHALT CORPORATION et al. v. LA FERA GRECCO CONTRACTING CO. et al. (STULZ-SICKLES CO., Intervenor).

30 F. Supp. 497

BARBER ASPHALT CORPORATION et al. v. LA FERA GRECCO CONTRACTING CO. et al. (STULZ-SICKLES CO., Intervenor).

Civ. A. No. 13.

District Court, D. New Jersey.

December 22, 1939.

Pitney, Hardin & Skinner, of Newark, N. J. (George J. Harding and Hayward H. Coburn, both of Philadelphia, Pa., of counsel), for plaintiffs and defendant on counterclaims.

Osborne, Cornish & Scheck, of Newark, N. J. (Samuel Ostrolenk, of New York City, of counsel), for defendant, intervenor and counterclaimants.

FORMAN, District Judge.

This suit is brought by Barber Asphalt Corporation¹, legal title owner of the patent in suit, and the Johnson-March Corporation, exclusive licensee, against La Fera Grecco Contracting Company for direct infringement of United States Letters Patent No. 1,684,671, dated September 18, 1928, to Harold P. Hayden for Method of Preventing Evaporation from Concrete during Curing. Stulz-Sickles Company, a dealer in bituminous emulsion, intervened as a party defendant. Validity and infringement are denied. A further issue is advanced in the counterclaim of the defendant and intervenor. Thompson Materials Corporation is joined as a defendant therein. It is alleged that a conspiracy between Barber Asphalt Corporation, Johnson-March Corporation and Thompson Materials Corporation to stifle free competition in the sale of bituminous emulsion was formed contrary to the laws of the United States.

Concrete consists of an intimate mixture of cement, sand, gravel or crushed rock and water. It has long been known that an abundance of water is indispensable to the proper curing of concrete after it has been laid, because evaporation of the original supply of water in the mixture in the normal course would result in cracks. This additional supply of water may be superimposed by wetting the surface of the concrete. Hayden has improved this means of treatment and has avoided the necessity of additional water. His method retards the normal evaporation of the original water supply. To effect this result his patent provides that the surface should be sprayed with bituminous emulsion after the concrete is laid. This forms a water-impervious, adherent film and prevents the escape of the water, insuring a gradual dehydration. It is to be observed at the outset that Hayden lays no claim to the chemical composition of bituminous emulsion — an unpatented staple article of commerce — produced in the United States by many concerns and in common use by their customers for many purposes.

The validity of the patent has heretofore been sustained by the courts in the case of Barber Asphalt Company v. Stulz-Sickles Company et al., 3 Cir., 89 F.2d 960, reversing, D.C., 14 F.Supp. 212. On appeal the Supreme Court denied plaintiff's claim for relief on the ground that it sought by its method of doing business to extend the monopoly to unpatented material used in practicing the invention. Leitch Mfg. Co. v. Barber Co., Inc., 302 U.S. 458, 58 S.Ct. 288, 82 L.Ed. 371.

Of the patent the Circuit Court of Appeals for the Third Circuit had this to say: "The make-up of concrete and the action of water in forming it are well known. It is caused by the chemical action of water on powdered Portland cement mixed with sand and crushed stone. When first mixed, the resultant is physically, as the proofs show, very soft and offers no resistance whatever to any weight placed on it or anything coming in contact with it. It would immediately sink of its own weight. But hydration, or the action of the water, goes on and in a few hours the mixture is `set.' Thereafter the hydration proceeds constantly and `cures' the mix, with the result of stonelike hardness being attained." 89 F.2d 960, 962.

"* * * Thus in claim 4 we have the element `spraying upon such surface, before the concrete has set, a bituminous emulsion'; in claim 9, applying `before the concrete has set, a water-external-phase bituminous emulsion'; and in claim 5, applying `before the concrete has set, a coating of unheated bituminous paint-like material.'

"From the proofs it is clear that these elements, (a) the bituminous emulsion, (b) the spraying of it, and (c) the doing so before the concrete is set, are the gist, so to speak, of Hayden's process. And if such is the case, this eliminates the German patent, No. 337,134, issued in 1921 to Lechler which the court below considered a complete anticipation.

"Lechler, in his disclosure, stated the well-known fact that `cement concrete attains great strength much more quickly if it is kept moist during the hardening (lapidifying) period,' and that his new process consists in that the still-fresh concrete is so inclosed on all sides with a coating material which is resistant to water. He nowhere referred to or disclosed any suggestion of its use in roadway construction or of spraying a bituminous emulsion. On the contrary, his primary idea was to use forms to shape concrete articles, and after such articles were set, remove them from the forms and then dip them in a bituminous bath — whatever it was. His directions were: `Cement articles, as soon as they have sufficiently set and can be removed from the form, are dipped in the coating material, or are coated therewith on all sides.' Manifestly, this threw no light on road construction, and that art, furnished, as it was, with able engineering staffs, eager for improvement, continued to use the old methods for the seven years that intervened between Lechler's and Hayden's patents. Nor does Lechler's suggestion of the use of his patent in `concrete structures, such as retaining walls, foundations, and the like,' throw any light on concrete roadway construction. There is no proof as to how such process could be practically used and the proof is that it could not be practically utilized. It will thus be seen that Lechler failed to meet the standard of anticipation laid down by this court in Skelly Oil Co. v. Universal Oil Products Co. 3 Cir., 31 F.2d 427, 431, that: `A patent relied upon as an anticipation must itself speak. Its specification must give in substance the same knowledge and the same directions as the specification of the patent in suit.'" 89 F.2d 960, 964.

The quotation above recognizes the claim of the Hayden patent for the application of bituminous emulsion prior to the "setting" of the concrete. The word "set" as used in the patent is a term familiar to those with experience in the laying of concrete, and is descriptive of the period in which the evaporation-deterrent is applied. The industry recognizes that the curing of concrete is divided into two stages. First, prior to the "setting" stage the concrete is more or less mobile, and requires some restraint to hold it in place. After it has "set" it no longer needs restraint, but time must elapse — the second stage or hardening period — before it reaches a stone-like quality.

In support of the contention of invalidity defendants cite the Lechler patent No. 337,134, the German publication, Zement, and the German publication, Die Betonstrasse.

This court does not feel at liberty to review the Lechler patent as the argument presented herein demonstrates no addition to the contentions made before the Circuit Court. See 3 Cir., 89 F.2d 960, 964, supra.

The German publication, Zement, not before the Circuit Court, will be considered here in the light of the following pertinent statement:

"The formation of shrinkage cracks is prevented through Inertol paint stipulated to be a bituminous cut-back, a solution of asphalt in a solvent in a natural manner like through the application of wet cloths. These, however, must be constantly wetted which causes in hot, dry weather much work, while Inertol paint coats applied with tar brushes in simple manner require no additional work. The smoothing effect produced by Inertol paint coats which would be impractical on concrete roads can be avoided by painting once with a diluted Inertol or when normal Inertol is used, by lightly spraying the fresh coat with fine sand. Then the pores of the concrete are filled but no smooth skin is produced.

"The application of Inertol on concrete is best done as soon as the concrete has somewhat dried on the surface."

It is contended that this quotation points out the application of the Lechler process to concrete roads, and, therefore, should be held to anticipate the Hayden patent. It is true that the Circuit Court distinguished the Lechler patent on the ground that it did not refer to its application on concrete roads. However, this court is not convinced that there is such a revelation in Zement as would anticipate the patent in suit. The application of Inertol with a paint brush would be impractical on a concrete highway. Indeed, the quotation recognizes this. Furthermore, the reference to the application of Inertol upon a surface "somewhat dried" suggests that the concrete is "set". Lastly, there is testimony to the effect that unset concrete has no pores that can be filled with another material such as sand. It follows that this article concerns the application of an evaporation-deterrent at a stage subsequent to the period contemplated by Hayden, that is, before "set", and is not anticipatory of the patent in suit.

The German publication, Die Betonstrasse, bears the date, November 1, 1927 as compared with October 12, 1925 the date of filing of the application which resulted in the patent in suit. Hence, this reference is not prior art and does not require any discussion in that connection.

Considerable emphasis is made of the fact that Hayden was not the first person to utilize a means to retard the evaporation of water prior to the setting stage of the concrete, and as proof of this fact, it is argued that it had been the practice to spread wet burlap bags on the surface of concrete while it was "unset". Without determining whether or not such was the custom this court is of the opinion that the argument is irrelevant. Even if such were the...