Cold Metal Process Co. v. Aluminum Co. of America
| Decision Date | 18 August 1961 |
| Docket Number | Civ. A. No. 661. |
| Citation | 200 F. Supp. 407 |
| Parties | COLD METAL PROCESS COMPANY and Union National Bank of Youngstown, Ohio, Trustee v. ALUMINUM COMPANY OF AMERICA. |
| Court | U.S. District Court — Eastern District of Tennessee |
William H. Webb, Pittsburgh, Pa., Clarence B. Zewadski, Detroit, Mich., R. M. McConnell, Knoxville, Tenn., Morton Burden, Jr., Joseph R. Robinson, Jr., Pittsburgh, Pa., for plaintiffs.
W. D. Keith, New York City, R. R. Kramer, Knoxville, Tenn., Andrew H. Schmeltz, New Kensington, Pa., F. B. Ingersoll, Pittsburgh, Pa., Robert E. Isner, New York City, R. T. Teeter, New Kensington, Pa., for defendant.
Cold Metal Process Company (hereinafter called Cold Metal) brought this suit on March 20, 1945 against Aluminum Company of America (hereinafter called Alcoa) for infringement of U. S. Letters Patent Nos. 1,774,016 and 1,779,195 issued respectively on January 14, 1930 and October 21, 1930 and referred to herein as '016 and '195. Each patent was issued upon the original application of Abram P. Steckel on June 30, 1923 and each has long since expired. On December 28, 1945, Cold Metal assigned the patents to Union National Bank of Youngstown, Ohio, which thereupon became a party-plaintiff herein.
Alcoa denied the validity, and denied infringement, of each patent. It also raised the question of jurisdiction of the Court with respect to transactions with the United States Government, under 28 U.S.C. § 1498, during the period February 24, 1941 through September 20, 1945. (This will be referred to as the Government defense.) The defenses that United Engineering & Foundry Company, a licensee of Cold Metal, (referred to herein as United) is an indispensable party and that plaintiffs lack equitable title were also made. For the sake of completeness, it should be noted that defendant claimed also that plaintiffs were barred by laches and that plaintiffs had misused the patents.
There were twenty-one mills of defendant which were alleged to infringe. One of these, R, was not included in the Order Pursuant to the Pre-Trial Conference. Of the remaining twenty, this Order limited plaintiffs' proofs with respect to infringement to eleven mills, listed below, the question of infringement of the remaining mills to be held in abeyance pending an accounting proceeding or until further order of the Court. The eleven mills upon which proof was adduced were:
Identification Charged to
in Infringe
Pre-Trial Patent(s) Nature of Usual
Orders No(s) Operation Identification
C '016 and '195 Cold strip mill Edgewater 42" Mill
D '016 and '195 Cold strip mill Edgewater 60" Mill
E '016 and '195 Cold strip mill West Plant 4 High Tandem
H '016 and '195 Cold strip mill North Plant A Tandem
I '016 and '195 Cold strip mill North Plant B Tandem
J '016 and '195 Cold strip mill North Plant C Mill
These six were all cold strip mills, were charged to infringe both patents, and all had Morgoil bearings. The remaining five, charged only to infringe '195, were:
Identification Charged to Width
in Infringe in
Pre-Trial Patent(s) Nature of Usual Inches
Orders No(s) Operation Identification
G '195 Hot mill Continuous Hot Mill (North Plant) 80"
K '195 Foil mill (cold) Arnold 42" Foil Mill No. 159 42"
L '195 Foil mill (cold) Arnold 34" Foil Mill No. 45 34"
P '195 Foil mill (cold) Edgewater 34" Foil Mill No. 4 34"
S '195 Foil mill (cold) Foil Cluster Mill No. 3 (Alcoa) 60"
Of these five, G was a five stand continuous hot mill. The remaining four were all single stand foil mills for cold rolling. These five had roller bearings. As we shall see, the six mills having Morgoil bearings were held not to infringe either patent and the ruling was not seriously contested by plaintiffs. So, the five mills before the Court at this time are G, K, L, P and S.
On January 23, 1953, the Court referred the cause to a Special Master who received the evidence, and on June 29, 1959 filed his Report, including Findings of Fact and Conclusions of Law. Briefly, the Master found that the claims in suit of each patent were, in the scope asserted in this cause, both invalid and uninfringed, but observed that if the Court should disagree with him as to the validity of '195 then he would have to conclude that the five mills other than the Morgoils, dealt with by the evidence, would infringe. He found this Court had no jurisdiction of a claim involving the Government defense, but that such suit would have to be brought in the Court of Claims. He found further that United is an indispensable party and that the Master and Court lacked jurisdiction because United was not joined as a party to the action; and that plaintiffs lacked equitable title to all accused cold and hot mills coming within United's license. He concluded that plaintiffs were not guilty of laches or of misuse of the patents.
These patents, and license agreements issued thereunder, have been heavily litigated both in this Circuit and in others. Twice, in litigation involving steel companies as defendants, the Court of Appeals for the Sixth Circuit has passed upon questions of validity and infringement of these patents. These two cases are Cold Metal Process Co. v. Republic Steel Corp., 233 F.2d 828 (certiorari denied 352 U.S. 891, 77 S.Ct. 128, 1 L.Ed.2d 86) and Cold Metal Process Company v. E. W. Bliss Company, 285 F.2d 231, decided December 21, 1960.
At the hearing on April 10-11, 1961 upon the Objections to the Master's Report, plaintiffs conceded that the Court of Appeals' decision of December 21, 1960 was determinative of the issues in this case with regard to Patent '016 and would be conclusive and binding upon this Court provided the petition for a writ of certiorari were denied by the Supreme Court. (Certiorari was denied May 1, 1961.) On the basis of these decisions, therefore, and particularly that in the Bliss case, that mills using Morgoil bearings, as distinguished from the "anti-friction bearings" claimed in the patents in suit, do not infringe said patents, patent No. '016 will not be considered by the Court either upon the question of validity or of infringement. It should be noted that issues as to patent '016 received only a token argument from each party.
Although for different reasons, there was concurrence by both parties at the hearings that it is unnecessary for the Court to consider the "Government defense". Defendant did not object to the Master's adverse decision on the issues of laches and of misuse of the patents and neither party argued those issues at the hearing.
Remaining, therefore, in the case, for disposition by the Court, are the issues: (1) of validity and of infringement of '195; (2) whether United is an indispensable party, and (3) whether plaintiffs have equitable title to the patents in suit. As to the issue of validity, the burden of proof rests upon the defendant; as to proof of infringement, the burden lies with plaintiff.
Patent '195 is for a combination of old elements which plaintiffs say achieves a new function and a new result. It has been described, a score or more times, in District Court and Court of Appeals decisions both in this Circuit and in others, to some of which reference is here made. Cold Metal Process Co. v. Carnegie-Illinois Steel Corp., 108 F.2d 322, 334 (C. A.3); Cold Metal Process Co. v. Republic Steel Corp., 123 F.Supp. 525 (D.C.N.D. Ohio E.D.); E. W. Bliss Company v. Cold Metal Process Company, 174 F. Supp. 99 (D.C.N.D.Ohio E.D.); Cold Metal Process Co. v. Republic Steel Corp., 233 F.2d 828 (supra); and Cold Metal Process Company v. E. W. Bliss Company, 285 F.2d 231 (supra).
However, it will be necessary again to refer to this patent and to its claims in order to lay the groundwork for decision here. Briefly patent '195 is for an apparatus or machine for the high speed rolling of "metal strips of practically unlimited length". The patent described a rolling mill consisting of two working rolls between which the metal strip was passed, together with two backing rolls of larger diameter having anti-friction mounting or bearings, adapted to withstand the rolling pressures encountered and the high speeds employed. The drawings show that the four rollers of the mill are mounted in a vertical plane one above the other with one large backing roll at the bottom, the two working rolls above it and the second backing roll at the top. In the jargon of the industry, a mill so designed was referred to as a "4-high", as distinguished from a rolling mill with only the two work rolls and no backing rolls which is known as a "2-high", or a mill with one backing roll known as a "3-high"; and, as further distinguished from a mill with two work rolls and two backing rolls for each work roll, arranged in V-shaped clusters above and below each work roll, this assembly being sometimes referred to as a "cluster mill".
Twelve claims of the '195 patent are in issue, namely, apparatus claims 3, 4, 6, 7, 8 and 11 to 17. The four accused cold rolling foil mills are charged to infringe only claims 3, 4, 6, 7, 13, 14, 15 and 17. Claims 8, 11, 12 and 16 relate to multiple stand mills. At the hearings before this Court, counsel for plaintiffs selected and read claim 4 as being typical. It reads as follows:
...
To continue reading
Request your trial