Devex Corp. v. General Motors Corp.
| Decision Date | 13 January 1982 |
| Docket Number | No. 80-2550,No. 80-2551,80-2551,Nos. 80-2550,80-2550,s. 80-2550 |
| Citation | 212 USPQ 643,667 F.2d 347 |
| Parties | DEVEX CORPORATION, Technograph, Inc., William C. McCoy, Theodore A. Te Grotenhuis, Frederick B. Ziesenheim, Marjorie Te Grotenhuis, William C. McCoy, Jr., and Katherine M. Bassett v. GENERAL MOTORS CORPORATION, Devex Corporation, Technograph, Inc., William C. McCoy, Jr., individually and as Executor of the Estate of William C. McCoy, deceased, Theodore A. Te Grotenhuis, Frederick B. Ziesenheim, Marjorie Te Grotenhuis, and Katherine M. Bassett, Appellants inGeneral Motors Corporation, Appellant in |
| Court | U.S. Court of Appeals — Third Circuit |
Sidney Bender (argued), Aaron Lewittes, Leventritt, Lewittes & Bender, Garden City, N. Y., Frederick B. Ziesenheim, Lynn Alstadt, Buell, Blenko, Ziesenheim & Beck, Pittsburgh, Pa., David F. Anderson, Potter, George E. Frost (argued), William A. Schuetz, Saul Schwartz, Detroit, Mich., Arthur G. Connolly, Harold Pezzner, Connolly, Bove & Lodge, Wilmington, Del., for General Motors Corp.
Anderson & Corroon, William C. McCoy, Jr., Pearne, Gordon, Sessions, McCoy & Granger, Cleveland, Ohio, for Devex Corp., et al.
Before GIBBONS and HUNTER, Circuit Judges and STERN, * District Judge.
Plaintiffs charge defendant with massive patent infringement. The patent ("Claim 4," "Devex patent," "Henricks process") which is at the root of this litigation provides as follows:
The process of working ferrous metal which comprises forming on the surface of the metal a phosphate coating and superimposing thereon a fixed film of a composition comprising a solid meltable organic binding material containing distributed there through a solid inorganic compound meltable at a temperature below the melting point of the ferrous metal phosphate of said coating and having a hardness not exceeding 5 on the Mohs' hardness scale, and thereafter deforming the metal.
This process is used in cold forming metal car parts by pressure.
The happy result of (the Devex) process is that phosphate, soap and borax work to lubricate the pressure-forming operation, preventing harmful contact between the metal products and the machinery with which they are formed.... (The Devex process) is especially beneficial because it may be easily cleaned from the metal product following its formation.
Devex Corp. v. General Motors Corp., 494 F.Supp. 1369, 1372 (D.Del.1980). The Devex patent expired in 1969; thus, only damages issues are before us.
This litigation, which began twenty-five years ago, is now in the accounting phase. Defendant and plaintiffs cross-appeal from the judgment of the district court, which was based in part on the report of a Special Master. For the reasons which follow, we will affirm.
The complaint in this case was filed November 13, 1956 in the Northern District of Illinois. After a trial, Judge Robson of that court held on February 1, 1962 (final judgment entered June 29, 1962) that the Devex patent was invalid. The United States Court of Appeals for the Seventh Circuit reversed, Devex Corp. v. General Motors Corp., 321 F.2d 234 (7th Cir. 1963), cert. denied, 375 U.S. 971, 84 S.Ct. 490, 11 L.Ed.2d 418 (1964), and held that the patent was valid because "the elements which Henricks selected were put together in a new way and achieved a new and unexpected result." 321 F.2d at 236. The court further stated:
There is substantial evidence in the record to prove that a new coaction between the soap, borax and phosphate occurred during the drawing process. Friedberg's tests showed that in the Henricks' process, new compounds are formed; the formation of insoluble organic compounds is inhibited, and the abrasive phosphate is transformed into a glassy amorphous compound having highly effective lubricating properties.
321 F.2d at 237. In other words, the use of a borax and soap combination in conjunction with phosphate resulted in improved lubrication of the metal during the deforming (cold forming by pressure) process and in improved cleanability of the product after its formation. The improved lubrication and cleanability combined to make the process patentable.
The court of appeals remanded the case for further proceedings. At that point, General Motors moved to have the case against it transferred to Delaware, and its motion was granted. Devex Corp. v. General Motors Corp., 146 U.S.P.Q. 346 (N.D.Ill.1965). 1
Judge Wright of the United States District Court for the District of Delaware ruled in 1967, in the suit between Devex and General Motors, that summary judgment in favor of plaintiffs on the issue of infringement was inappropriate. Devex Corp. v. General Motors Corp., 263 F.Supp. 17 (D.Del.1967). In 1968, he granted a motion by Devex for permission to amend its complaint to assert the doctrine of equivalents. Devex Corp. v. General Motors Corp., 285 F.Supp. 109 (D.Del.1968). 2
After an infringement trial, Judge Wright ruled that the patent had not been infringed by General Motors. 316 F.Supp. 1376 (D.Del.1970). That ruling was reversed by this court. Devex Corp. v. General Motors Corp., 467 F.2d 257 (3d Cir. 1972), cert. denied, 411 U.S. 973, 93 S.Ct. 2145, 36 L.Ed.2d 696 (1973). We rejected the district court conclusion "that infringement was not proved because Devex failed to establish that General Motors achieved the unexpected results that made the Henricks combination patentable." 467 F.2d at 260. After examining the materials before us, we concluded that the accused practices led to satisfactory lubricity and cleanability, which meant that those practices infringed. We specifically rejected General Motors' contention that, because the chemical reactions involved were arguably different from those taught by the Henricks patent, the General Motors practices did not infringe.
(I)f it is directly determinable that the two lubricants have essentially the same components, are applied in the same way and that the results of their use are essentially the same, the disputation of chemists about the chemical interactions that occurred in the processes cannot be decisive.
Moreover, it may well be that chemical reactions differed in degree, and perhaps in kind as well, in different applications of the Henricks process. Claim 4, even as restricted and held valid in the Seventh Circuit, covers and protects the combination of soap and borax in proportions to be varied according to the nature and difficulty of the draw to be facilitated so that the process will yield its claimed advantages over a wide range of drawing pressures and temperatures. It is not claimed that in every Henricks mix under every temperature, chemical reaction and its products will be identical. Thus, if one accepts as persuasive the testimony of GM experts that reactions and substances produced during the GM drawings were not identical with those that the Henricks process is said to have produced using different proportions of ingredients under different pressures at different temperatures, it does not follow that GM practice failed to produce the results that made the Henricks process patentable.
In these circumstances, the demonstrated effectiveness of GM practice in producing the satisfactory drawing and ease of cleaning that Henricks had achieved must prevail over any contrary inference drawn from disputed expert testimony as to comparative chemistry in what may well not have been equivalent situations.
467 F.2d at 261-62. Thus, because the results produced by the accused practices were identical to those produced by the Devex patent, the accused practices infringed. The differences between the specific chemical processes of the Devex patent and those of the accused practices were not determinative, so long as the results were identical.
Based upon our prior opinion, 467 F.2d at 261, the Special Master ruled that the accused practices which involved the use of borax-based lubricants (soap and borax) in cold forming bumpers and non-bumpers infringed the Devex patent, where the use of those lubricants led to cleanability in conjunction with lubricity, and where the advantages of both the cleanability and lubricity were used by General Motors. Thus, the Special Master concluded that accused bumper practices 4, 5, 12, 13, 36, 48, 49, 51, and non-bumper practices 7, 9, 16, 17, 22, 25 (in part), 26, 27, 28, 30, 31, 37, 38, 42, 47, 54 and 56 infringed the Devex patent. Special Master's Report at 27; Appendix at 287.
The Special Master also ruled that General Motors' use of tetrapotassium pyrophosphate (TKPP) as a borax substitute in bumper making (accused practices 6, 14, 50, 52, and 53) and of trisodium phosphate (TSP) as a borax substitute in non-bumper making (accused practices 3, 11, 15 and 45) infringed the Devex patent. Special Master's Report at 29-38; Appendix at 289-298.
The Special Master found as a fact that "TKPP was put in (to the lubricant) as a borax substitute, to help the soap do the job of efficiently lubricating the workpiece." Special Master's Report at 31; Appendix at 291. General Motors argued that the use of TKPP did not infringe the patent because pure TKPP melts at a higher temperature than the ferrous metal phosphate coating, which meant that TKPP did not fit the literal language of the patent. The Special Master rejected that argument, found as a fact that TKPP, when mixed in the coatings and as a matter of actual practice, melts before the ferrous metal phosphate coating, and concluded that the use of TKPP as a borax substitute to improve lubricity and cleanability therefore infringed the Devex patent. Special Master's Report at 32-37; Appendix at 292-297. The...
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