Binks Mfg. Co. v. Ransburg Electro-Coating Corp.

• Decision Date: 27 July 1960
• Docket Number: No. 12737.,12737.
• Citation: 281 F.2d 252
• Parties: BINKS MANUFACTURING COMPANY, etc., Plaintiff-Appellant, v. RANSBURG ELECTRO-COATING CORPORATION, etc., Defendant-Appellee.
• Court: U.S. Court of Appeals — Seventh Circuit

281 F.2d 252 (1960)

BINKS MANUFACTURING COMPANY, etc., Plaintiff-Appellant, v. RANSBURG ELECTRO-COATING CORPORATION, etc., Defendant-Appellee.

No. 12737.

United States Court of Appeals Seventh Circuit.

July 27, 1960.

Charles F. Meroni, Otto R. Krause, Chicago, Ill., for plaintiff-appellant.

James P. Hume, Chicago, Ill., Elbert R. Gilliom, Harry T. Ice, Verne A. Trask, Indianapolis, Ind., for appellee.

Before SCHNACKENBERG, KNOCH and CASTLE, Circuit Judges.

CASTLE, Circuit Judge.

Binks Manufacturing Company, plaintiff-appellant, prosecutes this appeal from a judgment of the District Court holding claims 1 to 6, 8, 10 and 11 of Starkey and Ransburg method patent No. 2,685,536 and Claim 4 of Starkey and Ransburg divisional apparatus patent No. 2,794,417 valid and infringed by use of the plaintiff's electrostatic spraying emitter. The judgment order enjoined plaintiff from further infringement, granted damages, reasonable attorneys' fees and costs to defendant, and dismissed plaintiff's cross-counterclaim alleging anti-trust law violations by defendant. Ransburg Electro-Coating Corporation, defendant-appellee, is the assignee-owner of both patents.

The action originated in the District Court as a complaint for declaratory judgment which was dismissed as moot when the defendant patentee counterclaimed charging plaintiff with infringement. Plaintiff's answer raised the issues of validity and infringement and its cross-counterclaim charged anti-trust law violations, unfair competition and misuse of patents. Substituted pleadings retained the same issues. The cause was heard on the pleadings, stipulations, admissions, answers to interrogatories, depositions, exhibits and the testimony of witnesses for the defendant.

The parties will be referred to by their original designations as plaintiff and defendant. Defendant is the patentee asserting infringement. Plaintiff is defending against that charge and affirmatively asserting anti-trust law violations.

The patents in suit relate to a method and apparatus for electrostatically coating articles with liquid coating material, including paint. There are several methods by which many articles of manufacture may be painted, including dipping, roller-coating, flow-coating and spraying. Defendant (and the predecessor partnership composed of its owners) has developed two methods of electrostatic coating. A compressed-air electrostatic system is referred to as the No. 1 Process. The patents in suit relate to an airless electrostatic system referred to as the No. 2 Process. During the year 1957 the total cost of all paint, varnish and lacquer used industrially in the United States approximated 644 million dollars. Approximately one per cent was applied by defendant's No. 2 Process and 0.6% by defendant's No. 1 Process.

In the No. 1 Process the paint is sprayed by means of compressed-air spray guns into an electrostatic field which is maintained between wires or electrodes and the conveyorized articles of manufacture so that paint particles are electrostatically charged and urged toward deposition upon the articles by the effect of the field.

In the No. 2 Process, the airless system to which the patents involved relate, the electrostatic field is maintained directly between an atomizing device and the articles on the conveyor. The liquid coating or paint is fed at a controlled rate to and distributed along the extended edge of a stationary or a rotary atomizing head. The strength of the electrostatic field at the edge is such that the field is capable of electrostatically atomizing fine electrically charged particles from the liquid. The field disperses these particles in the form of a spray and deposits them upon the articles to be coated. Patent No. 2,685,536 is upon the method employed in such airless electrostatic coating or spray-painting and patent No. 2,794,417 is upon the apparatus employed therein. The method and device electrostatically effect atomization, dispersion and deposition in combination and under control.

The No. 1 Process reduced coating material losses due to over-spray but in many instances considerable loss persisted because the electrostatic field only partially counteracted the tendency of the compressed-air blast to carry the coating material elsewhere than to the articles to be coated or painted. The No. 2 Process eliminated the necessity of compressed-air spray guns to atomize the coating materials. In many applications it virtually eliminated over-spray, and thus paint loss or waste. It reduced labor costs for clean-up operations and substantially reduced the manufacturer's investment in spray booths, exhaust systems and related equipment.

The District Court made 94 detailed findings and 11 conclusions of law. The evidence included testimony of defendant's witnesses, including expert testimony. Consequently, insofar as the findings concern factual issues such as the use made of prior art, and the nature of the improvement made over prior art, Rule 52(a) Federal Rules of Civil Procedure, 28 U.S.C.A. applies. The scope of our review is thus limited to a determination of whether such findings are "clearly erroneous". Armour & Co. v. Wilson & Co., Inc., 7 Cir., 274 F.2d 143, 156. If they find support in the evidence we are bound thereby.

The errors relied upon by plaintiff arise out of the District Court's findings and conclusions and its exclusion of certain evidence offered by plaintiff.

Plaintiff contends the patents are invalid for lack of invention over prior art; that the court's finding of commercial success was error because the stationary electrostatic atomizing heads shown and described in the patent were never commercialized; that the method claims in suit fail to set forth a patentable invention; that Claim 4 of the apparatus patent is invalid as constituting double patenting; that representations of commercial success made to the patent office were false and the patents procured were therefore a fraud on the public and unenforceable; and that Claim 4 of the apparatus patent is invalid because of public use.

Prior art relied upon by plaintiff includes a description of a procedure referred to as "spinning sealing wax" in an 1850 publication entitled "Electrical Experiments" by one Francis; an 1887 article by C. V. Boys describing an experiment characterized as "electrical spinning"; 1915 and 1917 articles by Professor John Zeleny concerning the effect of electrical current on surface points of liquids and the instability of electrified liquid surfaces; Littlefield patents Nos. 1,360,654 and 1,854,475; Darrah patent No. 1,958,406; Gravley patent No. 2,359,476 and Heis patent No. 1,475,995.

The Francis and Boys articles disclose nothing more than laboratory experiments demonstrating that an electrostatic field could form threads or fibers from molten wax or other viscous material. Zeleny disclosed laboratory demonstrations of the fact that an electrostatic field is capable of exerting atomizing action from liquid surfaces. These references disclose action due to electrostatic forces. They neither disclose nor suggest the combination of steps or elements which endows defendant's method and apparatus patents with novelty and which adds to the source of useful knowledge. The Littlefield patents, at most, disclose electrostatic atomization, and like the Darrah reference which, in addition, shows projection of the atomized liquid by electrostatic force, they contain no suggestion of a spray-receiving object to attract the particles. Nor was defendant's electrostatic detearing process described in the cited Gravley patent suggestive of either a method or a device to apply a coating. Gravley discloses the use of electrostatic force to remove an excess of coating. In that process an article coated, as by dipping, with an excess of liquid coating material is partially drained and then brought into association with an electrostatically charged grid. The "tears" of excess liquid at the bottom of the article are attracted to the grid by electrostatic force and leave the article. The Heis patent deals with a method and apparatus wherein gaseous substances are passed through an electrostatic field to promote chemical reaction. It suggests nothing useful in the field of the patents here challenged. That plaintiff's accused device uses an atomizing head similar to the conductive disks disclosed by Heis does not have the effect, as plaintiff seems to urge, of suggesting defendant's novel adaptation of electrostatic atomization, dispersion and deposition to the field of spray-coating or spray-painting. None of the prior art teaches nor suggests the combined atomization, dispersion and deposition of coating material through utilization of electrostatic force.

Defendant's patents are combinations of old elements in a novel manner productive of new and useful results. The District Court was not in error in finding the defendant's method and apparatus patents impregnable as against the cited references to prior art, nor in finding they constituted a broad and basic invention. The evidence substantially supports the District Court's factual findings and it applied the correct criteria of invention. Leeds & Catlin Co. v. Victor Talking Machine Co., 213 U.S. 325, 332, 29 S.Ct. 503, 53 L.Ed. 816; Lewyt Corp. v. Health-Mor, Inc., 7 Cir., 181 F.2d 855, certiorari denied 340 U.S. 823, 71 S.Ct. 57, 95 L.Ed. 605; Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 95 L.Ed. 162.

The District Court's finding of commercial success was not "clearly erroneous". It was well supported by the evidence. Such a finding is not of itself determinative of the issue of invention. It cannot lend validity to a patent where invention is plainly lacking. Goldman v. Bobins, 7 Cir., 245 F.2d 840, 844; Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 153, 71 S.Ct. 127, 95 L.Ed. 162. But, although...