Cold Metal Process Company v. EW Bliss Company, 13994-13997.

• Citation: 285 F.2d 231
• Decision Date: 21 December 1960
• Docket Number: No. 13994-13997.,13994-13997.
• Parties: COLD METAL PROCESS COMPANY and The Union National Bank of Youngstown, Ohio, Trustee, Appellants, v. E. W. BLISS COMPANY, Appellee. E. W. BLISS COMPANY, Appellant, v. COLD METAL PROCESS COMPANY and The Union National Bank of Youngstown, Ohio, Trustee, Appellees. UNION NATIONAL BANK OF YOUNGSTOWN, OHIO, Trustee, Appellant, v. GREER STEEL COMPANY, Appellee. UNION NATIONAL BANK OF YOUNGSTOWN, OHIO, Trustee, Appellant, v. E. W. BLISS COMPANY, Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals (6th Circuit)

285 F.2d 231 (1960)

COLD METAL PROCESS COMPANY and The Union National Bank of Youngstown, Ohio, Trustee, Appellants, v. E. W. BLISS COMPANY, Appellee.

E. W. BLISS COMPANY, Appellant, v. COLD METAL PROCESS COMPANY and The Union National Bank of Youngstown, Ohio, Trustee, Appellees.

UNION NATIONAL BANK OF YOUNGSTOWN, OHIO, Trustee, Appellant, v. GREER STEEL COMPANY, Appellee.

UNION NATIONAL BANK OF YOUNGSTOWN, OHIO, Trustee, Appellant, v. E. W. BLISS COMPANY, Appellee.

Nos. 13994-13997.

United States Court of Appeals Sixth Circuit.

December 21, 1960.

William H. Webb, Pittsburgh, Pa., Morton Burden, Jr., Pittsburgh, Pa., Howard F. Burns, Cleveland, Ohio, Joseph R. Robinson, Jr., John M. Webb, Webb, Mackey & Burden, Pittsburgh, Pa., Baker, Hostetler & Patterson, Cleveland, Ohio, on brief, for Cold Metal Process Co. et al.

Charles Walker, of Fish, Richardson & Neave, New York City, for E. W. Bliss Co. et al.

James H. Tilberry, Cleveland, Ohio, Williams, Tilberry & Golrick, Cleveland, Ohio, Donald E. Degling, New York City, Fish, Richardson & Neave, New York City, on brief for E. W. Bliss Co.

Thomas J. Doran Cleveland, Ohio, Meyer, Baldwin, Doran & Young, Cleveland, Ohio, on brief for Greer Steel Co.

Before McALLISTER, Chief Judge, and MILLER and CECIL, Circuit Judges.

SHACKELFORD MILLER, Jr., Circuit Judge.

These four appeals arise out of three actions brought in the District Court involving the validity and infringement of Steckel patents Nos. 1,779,195 (hereinafter referred to as 195) and 1,744,016 (hereinafter referred to as 016) for improved mills and methods for the rolling of hot and cold metal in strip or sheet form.

Patent 016 issued January 14, 1930, on an application filed June 30, 1923, by Abram P. Steckel, hereinafter referred to as Steckel, Patent 195 issued October 21, 1930, on an application filed December 9, 1929, as a division of the original Steckel application.

Steckel assigned his applications to The Cold Metal Process Company, hereinafter referred to as Cold Metal, and the patents were issued to that company. Thereafter, pending this litigation, the Steckel patents were assigned to The Union National Bank of Youngstown, Ohio, Trustee of the Leon A. Beeghley Fund, hereinafter referred to as the Trustee.

The three actions in the District Court involved Cold Metal and the Trustee, as the owners of the patents, and E. W. Bliss Company and the Greer Steel Company, as alleged infringers.

E. W. Bliss Company, hereinafter referred to as Bliss, is a Delaware corporation, engaged in the manufacture and sale of rolling mills.

Greer Steel Company, hereinafter referred to as Greer, is a West Virginia corporation and is a user of rolling mills. It purchased several mills from Bliss and one from United Engineering & Foundry Company, hereinafter referred to as United.

The actions in the District Court are as follows:

1. E. W. Bliss Company v. The Cold Metal Process Company and The Union National Bank of Youngstown, Ohio, Trustee, Equity No. 5402. (Appeal No. 13,994 by Cold Metal and No. 13,995 by Bliss.)

This action was filed by Bliss on January 20, 1936, seeking a declaratory judgment with respect to the validity and infringement of Steckel patents 016 and 195. Cold Metal filed its answer on May 20, 1939, but at that time asserted no counterclaim. In January, 1949, Cold Metal and the Trustee moved to amend the answer by adding a counterclaim charging Bliss with infringement. This motion was sustained by order of May 8, 1950. On May 26, 1950, pursuant to such order, Cold Metal and the Trustee amended the original answer by adding a counterclaim charging Bliss with infringement.

The District Court held patent 195 valid and infringed by Bliss with respect to certain mills in issue, but not infringed by certain other mills. Certain limitations were engrafted by the Court upon patent 016 and, as so limited, patent 016 was held valid but not infringed. The District Court also considered and ruled upon the measure of damages in conjunction with its ruling on validity and infringement. Judgment was entered in accordance with these rulings, which also provided that damages were to be later determined in accordance with the ruling contained in the opinion.

2. The Union National Bank of Youngstown, Ohio, Trustee, v. Greer Steel Company. Civil Action No. 24,189 (Appeal No. 13,996).

This action was filed by the Trustee in July, 1946, charging Greer with infringement of patents 016 and 195 by reason of Greer's use of rolling mills purchased from Bliss and United.

The District Judge held that the mill purchased by Greer from United infringed patent 195, but that by reason of an exclusive license granted by Cold Metal to United, Cold Metal was estopped from asserting its claim against Greer for infringement by use of the mill purchased from United. A judgment was entered dismissing the complaint against Greer.

3. The Union National Bank of Youngstown, Ohio, Trustee, v. E. W. Bliss Company. Civil Action No. 26,542 (Appeal No. 13,997).

This action was filed June 1, 1949, and charged Bliss with infringement of patents 016 and 195. This action was between the same parties and involved the same issues as were raised by the counterclaim in Equity No. 5402. This action was filed as a precautionary suit to stop the running of the Statute of Limitations against the claim of infringement, because of the delay with respect to the ruling of the Court on the Trustee's motion for leave to amend its answer by asserting its counterclaim against Bliss in Equity No. 5402.

Judgment was entered dismissing this action against Bliss.

The three actions were consolidated for hearing in the District Court and were discussed and decided in a very thorough and carefully prepared opinion of the District Judge, reported at E. W. Bliss Company v. Cold Metal Process Company, 174 F.Supp. 99.

Appeal No. 13,994 was taken by Cold Metal and the Trustee from that portion of the judgment in Equity No. 5402 which limited the claims of patent 016, the ruling that patent 016 was not infringed, and the ruling with respect to damages.

Appeal No. 13,995 was taken by Bliss from that portion of the judgment in Equity No. 5402 which held patent 195 to be valid and the ruling which gave effect to the counterclaim which it claims was erroneously permitted to be filed.

Appeal No. 13,996 was taken by the Trustee from the judgment in Civil Action No. 24,189 dismissing the complaint against Greer.

Appeal No. 13,997 was taken by the Trustee from the judgment in Civil Action No. 26,542 dismissing the complaint against Bliss.

The four appeals were consolidated and heard together by this Court.

These two Steckel patents have been involved in extensive litigation and have previously had the careful consideration of this Court. A discussion of the problems in the steel industry, to the correction of which these patents were directed, the patent office history with respect to the applications and issuance of the patents, and a description of the patents themselves are fully set out in United States v. Cold Metal Process Co., D.C.N.D.Ohio, 62 F.Supp. 127, affirmed, 6 Cir., 164 F.2d 754, certiorari denied 334 U.S. 811, 68 S.Ct. 1016, 92 L.Ed. 1742, rehearing denied 334 U.S. 835, 68 S.Ct. 1343, 92 L.Ed. 1761, and Cold Metal Process Company v. Republic Steel Corp., D.C.N.D.Ohio, 123 F.Supp. 525, affirmed, 6 Cir., 233 F.2d 828, certiorari denied 352 U.S. 891, 77 S.Ct. 128, 1 L.Ed.2d 86, rehearing denied 352 U.S. 955, 77 S. Ct. 323, 1 L.Ed.2d 245. See also: Cold Metal Process Co. v. McLouth Steel Corp., 6 Cir., 170 F.2d 369; Cold Metal Process Co. v. United Engineering & Foundry Co., D.C.W.D.Pa., 3 F.Supp. 120, appeal dismissed, 3 Cir., 68 F.2d 564, certiorari denied 291 U.S. 675, 54 S.Ct. 530, 78 L.Ed. 1064; Cold Metal Process Co. v. American Sheet & Tin Plate Co., D.C.N.J., 22 F.Supp. 75, affirmed in part and reversed in part Cold Metal Process Co. v. Carnegie-Illinois Steel Corp., 3 Cir., 108 F.2d 322, opinion withdrawn and complaint dismissed as moot, 3 Cir., 115 F.2d 33; Cold Metal Process Co. v. Commissioner, 6 Cir., 247 F.2d 864. In view of what has been said in the opinions in the foregoing cases, to which reference is made, and also in the opinion of the District Court in this case, it is unnecessary to restate the patent office history of the Steckel application and divisional application upon which the two patents issued (see 62 F.Supp. 127) or to describe in detail the two patents involved. For the purposes of this opinion and the rulings herein made, the following description and discussion of the patents is sufficient.

Patent 195.

This patent relates to the rolling of thin sheet-like metal strips in long lengths. It provides a mill which may be operated at high speeds and permits of rolling metal strips of practically unlimited length. It applies to both the hot and cold rolling of the metal. It is especially useful in the rolling of metal of great thinness relative to its width. Steckel stated in the application,

"I provide working rolls having backing rolls of larger diameter and anti-friction mounting for said backing rolls of a character adapted to withstand the rolling pressures encountered and the high speeds which are employed. In a preferred form of the invention the backing rolls are provided with necks which carry the anti-friction bearings, these necks being of sufficient size to withstand the rolling pressure, and the diameter of the backing roll body relative to the diameter of the working roll being of exaggerated size so as to permit of using anti-friction bearings of sufficient size for the conditions encountered. It is important that the bearings be of adequate size and of proper character, and in the form of the invention herein particularly described, roller bearings employing spaced-apart rollers are used."

Basically, the claims define a 4-high mill with antifriction bearings on the backing rolls. Power is supplied to...