Cold Metal Process Co. v. Republic Steel Corp.

• Decision Date: 18 June 1954
• Docket Number: Civ. No. 21390.
• Citation: 123 F. Supp. 525
• Parties: COLD METAL PROCESS CO. et al. v. REPUBLIC STEEL CORP.
• Court: U.S. District Court — Northern District of Ohio

123 F. Supp. 525

COLD METAL PROCESS CO. et al. v. REPUBLIC STEEL CORP.

Civ. No. 21390.

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

June 18, 1954.

William H. Webb, Pittsburgh, Pa., Howard F. Burns, Cleveland, Ohio, Clarence B. Zewadski, Detroit, Mich., Morton Burden, Jr., Joseph R. Robinson, Jr., Pittsburgh, Pa., for plaintiffs. Baker, Hostetler & Patterson, Cleveland, Ohio, Webb, Mackey & Burden, Pittsburgh, Pa., Whittemore, Hulbert & Belknap, Detroit, Mich., of counsel, for plaintiffs.

T. F. Patton, Cleveland, Ohio, for defendant. Drury W. Cooper, John N. Cooper, W. D. Keith, Robert E. Isner, Cooper, Byrne, Dunham, Keith & Dearborn, New York City, T. J. Doran, Hyde, Meyer, Baldwin & Doran, Cleveland, Ohio, of counsel, for defendant.

LEVIN, District Judge (sitting by designation).

This infringement action by The Cold Metal Process Company against Republic Steel Corporation was commenced on August 14, 1942 and involves United States Letters Patent Nos. 1,744,016 and 1,779,195 (hereinafter respectively referred to as '016 and '195), both of which patents have expired since the filing of this suit.¹ Cold Metal is an Ohio corporation and Republic is a New Jersey corporation doing business in Ohio. The alleged acts of infringement are said to have been committed within the Northern District of Ohio.

On December 28, 1945, subsequent to the commencement of this suit, Cold Metal, owner of the patents, assigned them to The Union National Bank of Youngstown, Ohio, as Trustee, which then joined as a party plaintiff to the action.

Republic has interposed numerous defenses asserting (a) the invalidity of the patents, for lack of novelty and invention as well as for other reasons, and (b) the absence of infringement, both because the accused mills do not practice the art disclosed in the patents and because Republic enjoys an immunity under a certain license agreement between Cold Metal and the party from whom Republic purchased the mills, United Engineering & Foundry Company.

After disposing of numerous preliminary motions, an order of reference was made to William L. West, Esq., of Cleveand, Ohio, as special master, to receive testimony and other evidence and for an advisory report only, the scope of the inquiry on reference being restricted by an order pursuant to plaintiffs' motion to such of the accused mills as are hereinafter discussed.

During the proceedings before the special master a daily copy of the transcript was submitted to me which indicated that the parties received a fair and complete hearing. I was also in receipt of copies of the briefs submitted to the master, and I have before me his comprehensive and helpful report.

A personal inspection of the accused mills and of certain prior art mills was made in the company of counsel. At the completion of this inspection, several days of oral argument were had on the objections of the two sides to the findings of the special master, and I now conclude that, except for certain claims which I shall hereinafter discuss, the plaintiffs must prevail on the issue of validity of the two patents. As to the issue of infringement, I find that certain of the accused mills, as will later appear in detail, came within the scope of the valid claims of the disputed patents, but plaintiffs are precluded from recovery by virtue of the license agreement.

On January 14, 1930, '016 issued to Cold Metal as assignee of an application, Serial No. 648,761, which had been filed on June 30, 1923 by Abram P. Steckel. '195 issued on October 21, 1930 to Cold Metal as assignee of another of Steckel's applications, Serial No. 412,742 filed on December 9, 1929. Although the '195 application was filed considerably after the application upon which '016 issued, it is said to have been a division of said application and is claimed to be entitled to the same filing date.

Both of these applications disclosed a mill for rolling at high speeds thin metal in strip or sheet form and commercial tin plate. Thin sheet metal is used for a variety of purposes: automobile bodies, fenders, hoods, refrigerators, metal furniture, utensils, etc. It is characterized by a high ratio of width to thickness and has a high surface finish. In the process of rolling steel, a short, thick bar of the metal is successively passed between rollers for flattening, smoothening, and elongating into a thin sheet or strip. The difficulties of rolling steel into thin sheets or strips in this fashion increase as the reduction in thickness progresses, and they become so pronounced when the ratio of width to thickness is in the neighborhood of 400 to 1 that this proportion is accepted as the dividing line between "ordinary" sheets and "thin" sheets or strips. Such thin strips range in thickness from .1379" to .0123". Tin plate, so-called, is sheet metal with an especially high ratio of width to thickness, generally being rolled to a thickness of between .010" and .0079". It is then surfaced with tin and used in the manufacture of cans and similar products.

Prior to the 1923 disclosures of Steckel, there were three common techniques for producing sheet or strip metal: hot pack rolling, hot strip rolling and cold strip rolling.

Hot pack rolling was the least efficient of the three methods and is described at length in two previous cases: Cold Metal Process Co. v. United Engineering & Foundry Co., D.C., 3 F.Supp. 120, 121-122 and Cold Metal Process Co. v. Carnegie-Illinois Steel Corp., 3 Cir., 108 F.2d 322, 324-328. Quite briefly, in this process a workman would feed by hand a hot bar of steel between the rolls of a 2-high mill, that is, a mill stand in which one roll is arranged vertically over the other. The steel bar was then picked up manually by a workman on the other side of the mill stand and handed back to the first workman over the top of the mill so that it might be passed through again in the same manner. Frequent reheating was required, after which two pieces would be placed on top of each other to be passed through the rolls simultaneously. The plies were thus increased as the rolling and reheating continued until the metal was of the desired thickness. It was impossible to get satisfactory accuracy of gauge by such a technique; scrap losses were very high; and the size of the finished product was limited by the capacity of the men to handle excessive weights. It was a slow and laborious process, totally inappropriate to the large industrial demand then existing for thin metal sheets.

Hot strip rolling was also carried out on 2-high mill stands. The reduction of the metal was carried out usually on a continuous mill wherein several mill stands were arranged in a row, one after the other, so that the piece being rolled would pass through the successive mill stands at a high speed, being in two or more stands simultaneously during the course of its progress through the mill. The motive power was applied to the necks of the rolls to move the bar through the mill series, and, as the strip issued from the last mill stand, it was gathered into a coil. The best reduction that could be achieved on such an operation was to a ratio of 200 to 1, which did not satisfy the requirements for thin metal.

In cold strip rolling the metal is fed into the rolls at room temperature, and extreme pressures are applied to the metal through the rolls. The principal power for moving the cold strip through the rolls was likewise furnished by motive power connected to the necks of the rolls, and the strip was gathered into a coil as it issued from the roll. However, in some of these cold rolling mills, a motor was connected to the reel around which the strip was wound when it came out of the mill, and a tension was maintained on the strip sufficient to keep it taut and straight. By repeating this operation the steel can be reduced to the requisite thinner gauges, and a highly finished surface on the metal can be obtained, such as was not possible in the hot strip rolling process.

However, because of the magnitude of the pressures required to reduce the metal in cold strip rolling, it was not feasible to use roller-type bearings on the necks of the roll bodies because there was insufficient space between the roll necks of the two roll bodies to accommodate roller-type bearings of adequate size and sturdiness to withstand such pressures. In the 2-high mills which were in general use it was necessary that the diameter of the roll necks be approximately two-thirds of the diameter of the roll bodies to prevent the necks from being broken off under the heavy loads characteristic of this type of rolling process. The only space that remained for fitting-in an adequate roller bearing was between the periphery of the roll neck and the periphery of the roll body, since a bearing assembly that extended beyond the periphery of the roll body would interfere with the bearing assembly on the companion roll body.

Thus, plain brass or babbit bearings were used, causing the roll necks to overheat. As the pressure was increased, the oil film used for lubricating these bearings would be broken, making the frictional resistances even higher and more variable. This frictional heat at the roll necks would spread to the roll bodies, causing uncontrollable expansions and producing buckling and riffling in the metal strip, destroying its commercial value, and resulting in frequent scrapping of the entire strip.

These cold rolling mills had to be operated at low speeds to minimize the distortions caused by this heating up of the roll necks and the roll bodies, 100 to 165 feet per minute being the maximum speeds for the cold rolling of thin sheets. Furthermore, the metal became harder and less ductile in proportion to the amount of reduction that had been made. This tendency made it necessary to remove the strip and to subject it to annealing in the middle of a rolling so as to permit the grain structure to be reformed. This combination of slow...