Consolidated Car Heat. Co. v. Chrome-Gold Alloys Corp.

• Decision Date: 02 December 1952
• Docket Number: Civ. No. 3841.
• Citation: Consolidated Car Heat. Co. v. Chrome-Gold Alloys Corp., 109 F.Supp. 652 (N.D. N.Y. 1952)
• Parties: CONSOLIDATED CAR HEATING CO., Inc. v. CHROME-GOLD ALLOYS CORP. et al.
• Court: U.S. District Court — Northern District of New York

109 F. Supp. 652

CONSOLIDATED CAR HEATING CO., Inc. v.CHROME-GOLD ALLOYS CORP. et al.

Civ. No. 3841.

United States District Court N. D. New York.

Submitted November 25, 1952.

Decided December 2, 1952.

Andros & Smith, Albany, N. Y., for plaintiff.

Wiswall, Wood, Olson & Schoonmaker, Albany, N. Y. (Chester Wood, Albany, N. Y., and Karl W. Flocks, Washington, D. C., of counsel), for defendants.

BRENNAN, Chief Judge.

This is the usual patent infringement action with the usual prayer for relief.

The answer denies the validity and infringement of the patent in suit.The answer of Chrome-Gold Alloys Sales, Inc., also alleges as a counterclaim a cause of action against the plaintiff based upon unfair competition, which is denied in plaintiff's reply.No evidence was offered on the trial to support the allegations of the counterclaim.It is deemed abandoned and is dismissed for failure of proof.

The plaintiff is a corporation having an office for the transaction of business at Albany, New York, and is the owner of United States PatentNo. 2,072,911, issued March 9, 1937, and referred to throughout the trial as the "Touceda" patent.As far as pertinent here its activities involve the manufacture and sale of an alloy known as "Ticonium", the principal use of which is in the field of dentistry, and particularly in the casting and manufacture of dentures.The product manufactured under the Touceda patent has been used by the public about sixteen years, and the plaintiff has granted some two hundred fifty licenses for the use of the patent.The patent in suit has never before been questioned, although the product is subject to business competition.

DefendantChrome-Gold Alloys, Inc., is a corporation organized about 1948.It is engaged in the manufacture of the alleged infringing product at Averill Park, New York, with an office at Albany, New York.DefendantChrome-Gold Alloys Sales, Inc., is a corporation organized in 1950.It has an exclusive sales agreement whereby it sells the product of the co-defendant, and it occupies an office with the manufacturing company at Albany, New York.Two individuals are officers of both companies.The defendants manufacture and sell an alloy known as "Chrome-Gold".Its principal use is as a casting alloy in the manufacture of dentures and is, therefore, in direct competition with the plaintiff's product Ticonium.

Concisely stated, it is the claim of plaintiff that the defendant's product, known as "Chrome-Gold", contains components combined in such a manner as to infringe the patent under which its product Ticonium is manufactured.

The controversy here which involves the validity and infringement of the Touceda patent is reduced by the limitation of plaintiff's contention that only Claim 1 of the Touceda patent is infringed.The issues here are concise and narrow, although as is usual in this type, a considerable amount of evidence was offered and voluminous briefs are submitted.The consideration of the case will then begin with an analysis of the Touceda patent, and especially claim I thereof.

The patent discloses an alloy, the essential ingredients of which are:

    Chromium             10.0 to 35%
                    Nickel               20.0 to 50%
                    Cobalt               20.0 to 50%
                    Beryllium             0.1 to  5%
                    Molybdenum            0.1 to  8%
                    Nickel and cobalt    55.0 to 80%
                

The end result is obtained by using the well known chromium-nickel-cobalt alloy and adding beryllium thereto; thereby producing an alloy which substantially changes the characteristics of the chromium-nickel-cobalt alloy in ten respects.Without discussing these changes, it is perhaps sufficient to say that the principal distinguishing characteristics proven upon the trial are: (1) a higher yield point; (2) a greater fluidity at casting temperatures, and (3) a cleaner surface in the "as cast" condition.These three characteristics are obtained by the addition of beryllium, and, as stated by one of the witnesses, the use of beryllium is the key to the Touceda patent.

Approaching the problem before us here, it would seem logical first to consider the contention that the Touceda patent is invalid.Wabash Corp. v. Ross Electric Corp., 2 Cir., 187 F.2d 577 at page 581.An invalid patent can not be infringed.Concisely stated, the defendant contends that the Touceda patent at best consists only of an advancement of the art such as would normally be expected as the result of the knowledge and labor of those skilled therein.It is also contended that the results obtained by Touceda were disclosed by the prior art and in documents and writings.

The approach to the consideration of these contentions is made with a realization that the burden of proof to establish invalidity is upon the party alleging it.The burden placed upon the defendant here is not a light one.The measure of proof required has been variously stated, ranging from a preponderance of evidence to that of beyond a reasonable doubt.It would seem at least that the defendant is required to produce convincing evidence of invalidity before this Court is justified in making such a finding.Radio Corp. v. Radio Engineering Laboratories, 293 U.S. 1 at pages 7, 8, 55 S.Ct. 928, 79 L.Ed. 163;Crosley Corp. v. Westinghouse, 3 Cir., 152 F.2d 895 at page 904.

The issuance of the patent itself is prima facie evidence of its validity.Custom Undergarment Corp. v. R. H. Macy & Co., 2 Cir., 140 F.2d 197.While invention is the ultimate question to be decided, Great A. & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 71 S.Ct. 127, 95 L.Ed. 162, commercial success utility and imitation may well add strength to such prima facie showing.Schering Corp. v. Gilbert, 2 Cir., 153 F.2d 428 at page 432.As a practical matter the fact that the patent has remained unchallenged for a period equal to about 90% of its legal life is not without significance.

Another well known legal principle of patent law must also be considered; namely, that a combination of known or old elements to be patentable must produce a new result. "— unusual or surprising consequences —" is the test of invention where such a combination is the basis thereof.Great A. and P. Co. v. Supermarket Equipment Corp., supra, 340 U.S. at page 152, 71 S.Ct. 127.

This Court is not unmindful of the tendency of courts to raise the standard of originality necessary for an invention.Foxboro Co. v. Taylor Instrument Companies, 2 Cir., 157 F.2d 226.The point where the skill of the art ends and inventive genius shows itself appears to be variable with the knowledge and experience of the judge making the decision in the particular field in which the patent falls.The problem is more difficult in the chemical or metallurgical field than in the mechanical, since mechanical results are more easily discerned by the untrained eye, than those which must be measured by the skill of a metallurgist or chemist.

The evidence discloses that the Touceda patent would produce an alloy especially useful in the casting of dentures which have peculiar requirements in their practical use.The point at which the denture product would recover its shape without deformity after the application of stress is higher than that which could be obtained without the use of beryllium.Its fluidity at casting temperature is greater, insuring a completely filled mold.Its surface, as cast, or after the investment...