Carboline Company v. Mobil Oil Corporation

• Decision Date: 14 May 1969
• Docket Number: No. 65 C 2080.,65 C 2080.
• Citation: 301 F. Supp. 141
• Parties: CARBOLINE COMPANY, Plaintiff, v. MOBIL OIL CORPORATION, Defendant.
• Court: U.S. District Court — Northern District of Illinois

301 F. Supp. 141

CARBOLINE COMPANY, Plaintiff, v. MOBIL OIL CORPORATION, Defendant.

No. 65 C 2080.

United States District Court N. D. Illinois, E. D.

May 14, 1969.

Sidney Neuman and Robert L. Austin, Pendleton, Neuman, Seibold & Williams, Chicago, Ill., H. L. Kirkpatrick, R. W. Furlong, Fish, Richardson & Neave, Boston, Mass., of counsel, for plaintiff.

Roy E. Hofer, Hume, Clement, Hume & Lee, Chicago, Ill., Jerome G. Lee, John D. Foley, Morgan, Finnegan, Durham & Pine, New York City, of counsel, for defendant.

DECISION ON THE MERITS

ROBSON, District Judge.

Carboline Company brings this action against Mobil Oil Corporation for alleged infringement of its patent. The plaintiff seeks injunctive relief and an accounting for damages. The defendant counterclaims for a declaratory judgment on the grounds that the plaintiff's patent is invalid and unenforceable and, further, that the defendant has not and is not infringing upon the patent in suit. The jurisdiction of this court is undisputed. The defendant has sold its accused products in the Northern District of Illinois, where it maintains a regular and established place of business. Therefore, venue is proper in this judicial district. 28 U.S.C. § 1400. After a trial on the merits, this court is of the opinion that judgment should be rendered for the plaintiff.

On October 2, 1962, United States Letters Patent No. 3,056,684, entitled "Protective Coatings," were issued to Stanley L. Lopata and William R. Keithler upon an application filed on June 4, 1959. The plaintiff is the owner of the entire right, title, and interest in Patent No. 3,056,684 (hereinafter "the Lopata patent"). The Lopata patent relates to a coating which provides corrosion protection for iron and steel. The coating is of the type containing a large proportion of powdered zinc and operates by galvanic action between the powdered zinc and surface of the iron and steel in the presence of atmospheric moisture. The Lopata patent specifically concerns the vehicle¹ in which the zinc dust is suspended.

The controversy between the parties involves the plaintiff's assertion that the defendant has infringed and is infringing upon the Lopata patent by making, using and selling protective coatings which embody the invention set forth in Claim 1 of the patent.² Specifically, the plaintiff charges that the defendant's coatings designated as Mobilzinc 7, 13 F 7, and 46 F 70³ infringe upon Claim 1 of the Lopata patent. The parties have stipulated that the defendant has sold its Mobilzinc 7 coating within this judicial district since June, 1965.

The defendant, in its counterclaim for a declaratory judgment, asserts that the Lopata patent is invalid and void because the alleged invention was obvious and anticipated by the prior art, particularly by an invention of John R. Saroyan, by an article published in a Belgian chemical journal, and by a published British patent. The defendant further denies any infringement of the Lopata patent on the ground that its accused products are manufactured in accordance with Mobil's own prior Patent No. 2,524,358 (hereinafter "the Robey patent") granted in 1950, which the plaintiff allegedly disavowed during prosecution of its application for the Lopata patent.

HISTORY AND BACKGROUND OF THE INVENTION

Corrosion resistant coatings containing quantities of powdered zinc in certain liquid vehicles have been known for over one hundred years. Such coatings are generically designated as "zinc rich" coatings. Long before the Lopata patent, two types of vehicles were known and used for such coatings: organic vehicles such as phenolic oil, and inorganic vehicles such as sodium silicate or other alkali metal silicates. Both of these vehicles had serious commercial drawbacks. Zinc rich coatings made with organic vehicles prior to 1959 were subject to attack by solvents, and burned and charred when exposed to high tempperatures. These disadvantages were well known in the late 1940's, when at least one such coating was sold commercially in this country. Zinc rich coatings made with inorganic vehicles were sold commercially in this country under the trade names "Zincillate" and "Dimetcote" in the early 1950's. These coatings were resistant to solvents and charring, but the Zincillate coating could be hardened only by baking in an oven at a high temperature, and the Dimetcote product could be hardened only by applying a second coat of curing solution over the first coat of Dimetcote.

Large iron and steel structures of the type on which zinc rich corrosion resistant coatings are commonly used are frequently coated in the field or out of doors, and are therefore exposed to varying weather conditions. Coatings such as the inorganic Zincillate, which had to be baked in an oven to harden, could not be applied in the field or to large structures. This disadvantage was generally recognized when Zincillate became commercially available in the late 1940's. Because of the baking problem, this coating was not widely used or accepted.

Zinc rich aqueous sodium silicate coatings, such as Dimetcote No. 2 and No. 3, available about 1950, require that the second coat of curing solution be applied after a minimum of two hours following application of the first coat in order to become impervious to rain. If exposure to rain occurs before the coating has hardened, the coating is washed away and must be reapplied. Damage to such coatings by rain has been a common occurrence in practice and was generally recognized as a problem in the early 1950's. In addition, the second coat increased the cost of the applied coating, and thorough, expensive preapplication cleaning of the steel by white metal sandblasting was required.

The uncontroverted evidence shows that prior to the invention claimed in in the Lopata patent, there was a commercial need for a satisfactory inorganic zinc rich coating which would selfcure⁴ at an ordinary temperature without application of a separate curing solution. Because zinc provides galvanic protection only in its metallic form, an appropriate vehicle for the coating was needed which, in addition to possessing all the commercially desirable properties described above, would not react with the very reactive zinc metal.

THE LOPATA INVENTION

Stanley L. Lopata, one of the joint inventors of the patent in suit, founded the plaintiff, Carboline Company, in 1946. From its inception, the plaintiff was involved in the general field of corrosion resistant coatings. Mr. Lopata's work with powdered zinc coatings began in the early 1950's when he became familiar with the Dimetcote product and its shortcomings. In 1956, Mr. Lopata and William R. Keithler, an employee of the plaintiff, discovered the invention leading to the patent in suit. The vehicle they employed was a partially hydrolyzed ethyl silicate, which they prepared with the use of information contained in a Carbide and Carbon brochure.⁵ Prior art in the form of this brochure taught merely that partially hydrolyzed ethyl silicate vehicles were useful for chemical and heat-resistant paints and for decorating rough-cast or sand-blasted metal. The article also taught that such paints do not adhere strongly to smooth metallic surfaces or protect metal against corrosion, and that such paints were not stable if certain reactive pigments (not including zinc) were mixed with the vehicle. It was also known that zinc metal was reactive and that reaction products of zinc did not provide galvanic protection.

Carbo Zinc 11, manufactured by the plaintiff according to Claim 1 of the Lopata patent, solved the problem of providing a zinc rich corrosion resistant coating which becomes completely inorganic when cured or hardened, and hence is not subject to charring or to attack by most solvents; which is self-curing at ordinary temperatures and requires no oven baking or separate application of curing solution; which is capable of hardening to the point that it is impervious to rain within a time as short as twenty minutes; and which adheres tightly even to smooth steel and to steel which has been cleaned only to a moderate extent.

Filling a long-felt commercial need, the plaintiff's Carbo Zinc 11 achieved commercial success rapidly without extensive advertising.⁶ In 1960, Carbo Zinc 11 sales totaled $104,000, or 6.9 per cent of the total sales of the plaintiff's Maintenance Division. By 1965, the product sales had increased 1457 per cent to $1,620,000 or 41.8 per cent of the Division's total sales. Advertising expenditures, on the other hand, which were $13,300 in 1960, increased to a maximum of $21,200 in 1965, an increase of only 59 per cent. During this same period, total advertising expenses of the Division for all products increased 166 per cent, while the portion of the total spent on advertising the Lopata patented product decreased from about 40 per cent to less than 20 per cent. The evidence does not indicate that Carbo Zinc 11 was advertised any more widely or effectively than competing corrosion resistant coating. Carbo Zinc 11 was marked with the Lopata patent number.

A new combination of well-known elements which produces new, useful and unexpected results is patentable. United States v. Adams, 383 U.S. 39, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966); Anderson Company v. Sears, Roebuck & Co., 265 F.2d 755 (7th Cir. 1959). This court finds that at the time of the Lopata invention, it was not obvious to one having ordinary skill in the pertinent art to make a corrosion resistant coating containing zinc powder dispersed in an homogeneous liquid vehicle of partially hydrolyzed ethyl silicate. It was not obvious at that time to what extent the zinc would react with the vehicle. Consequently, it was not obvious whether such a coating would adhere satisfactorily to a steel or iron surface, particularly a surface of smooth steel. When all the elements of a patented combination are well known and the problem solved by the patent is...