DEVEX CORPORATION v. General Motors Corporation

• Decision Date: 08 September 1970
• Docket Number: Civ. A. No. 3058.
• Citation: 316 F. Supp. 1376
• Parties: DEVEX CORPORATION et al., Plaintiffs, v. GENERAL MOTORS CORPORATION, Defendant.
• Court: U.S. District Court — District of Delaware

316 F. Supp. 1376

DEVEX CORPORATION et al., Plaintiffs, v. GENERAL MOTORS CORPORATION, Defendant.

Civ. A. No. 3058.

United States District Court. D. Delaware.

September 8, 1970.

David F. Anderson, of Potter, Anderson & Corroon, Wilmington, Del., Walter J. Blenko, Frederick B. Ziesenheim, and Arland T. Stein, of Blenko, Leonard & Buell, Pittsburgh, Pa., of counsel, for plaintiffs.

Thomas S. Lodge, of Connolly, Bove & Lodge, Wilmington, Del., George N. Hibben, of Hibben, Noyes & Bicknell, Chicago, Ill., Neal A. Waldrop, of Harness, Dickey & Pierce, Detroit, Mich., and William S. Pettigrew, Detroit, Mich., of General Motors Corp., of counsel, for defendant.

OPINION

CALEB M. WRIGHT, Chief Judge.

This is an action for infringement of Claim Four of Reissue Patent No. 24,017. It has been tried on the merits without a jury and the Court has heard posttrial argument.

DISCUSSION

Claim Four is now the creature of judicial construction. Its validity was saved by a narrow reading in the Court of Appeals for the Seventh Circuit, Devex v. General Motors, 321 F.2d 234 (7th Cir. 1963), applied here as the law of the case, Devex v. General Motors, 263 F. Supp. 17, 23-24 (D.Del.1967).¹ It is not the law, and the premise has not been seriously advanced, that proof of literal infringement would entitle plaintiffs to a judgment.

In reversing the lower court decision that the process was unpatentable because obvious from the prior art, the Court of Appeals relied on evidence that "new and unexpected results flow from the conjunction of the elements defined in the drawing process * * *." 321 F.2d at 237. The new and unexpected results are not found in the language of the claim, but they are now its essence. Similar processes with different results do not infringe. This Court said in an earlier opinion, "If an allegedly infringing process falls within the literal language of the claim, but can be shown to operate in a different manner from the patented process, then there is no infringement." Devex v. General Motors, 263 F.Supp. 17, 25, 26 (D.Del. 1967).² Plaintiffs were obliged, therefore, to show by a preponderance of the evidence, that the accused processes duplicated the critical results.

As in many patent cases, the Court found itself confronted with a mass of technical data and analysis. The evidence consisted largely of tests prepared by experts for each side in preparation for litigation. The test results and expert conclusions are conflicting, as might be expected, and, even to a layman, it appears that objectivity, the unremitting master of every laboratory, has not always been a fixed star in the inquiries conducted and presented to the Court. Although the errors, mostly of omission, seem to have occurred from diligence in the pursuit of proof rather than from bad faith or fraud, their presence has compounded the burden of one unskilled in the technology attempting to reach a correct result.

Because the issues are vigorously disputed by learned men of science, the outcome depending entirely on which tests, analyses, and explanations the Court adopts, it is well to recall, as did Judge Kirkpatrick, "that we are engaged in the determination of a dispute between two parties in a court of law, rather than in an excursion into the realm of scientific research, and we must approach the question from the standpoint of the rules which the law has established for resolving the controverted issue." Shimadzu v. Electric Storage Battery Co., 17 F.Supp. 42, 52 (E.D.Pa.1936). In making findings of fact, the Court is not conducting laboratory analyses, but applying a legal judgment to the evidence before it. It is making a determination that facts are proved or not proved, that the party who has the burden on a given issue has sustained it or not. A finding against the party with the burden, as the Court makes here, does not require absolute conviction that the opposing party has proved a contrary case. Any other approach would require judges to know more about the technology of a patent than the experts whose disagreement brings the dispute to court.

Plaintiffs were obliged to prove that a coaction occurs in the accused processes among the soap, borax and phosphate at high temperatures and pressures, causing new compounds, including but not limited to glassy amorphous compounds, to be formed, and inhibiting the formation of water insoluble compounds. These results were demonstrated by plaintiffs' witness Henry Friedberg and relied on by the Court of Appeals to sustain the claim's validity. 321 F.2d at 234. This Court heard nineteen days of live testimony, which comprised most of the expert opinion relied on by the parties. It has reviewed the evidence and the exhibits offered to it and to the courts which considered validity, and it concludes that plaintiffs have not met their burden in establishing the essential results. The Court has no doubt that defendant's processes are effective, beneficial and an improvement over earlier solutions to their lubricating problems, nor that they utilize some of the learning upon which the patent is based. Use of that learning is not actionable, however, unless it produces the critical results.³

THE NEW COMPOUNDS

Plaintiffs' expert Henry Friedberg was again a key witness at the infringement trial. Plaintiffs relied almost solely on his tests and analyses to show that the new compounds are formed in the accused process. The Court was not comfortable, however, with Friedberg's reliance on his earlier experience with tests on the patented process to justify shortcuts in analysis of the accused ones. He failed to repeat his tests on the accused processes, to develop any standard charts, and to make any tests on the accused process without borax; he was quick to accept minimal evidence to identify the purported new compounds. His conviction was no substitute for the doubts implanted by probing crossexamination, and the Court was unpersuaded that the coaction occurred and new compounds formed even before defendant began its case.

The testimony of Dr. Martin Buerger concluded the issue. Dr. Buerger was a convincing witness, confident in his methods and his conclusions yet honest in their limitations. He found no evidence of the new compounds identified by Friedberg, and plaintiffs did little to shake the strength of his testimony. His conclusions were in accord with the findings of defendant's other expert, Dr. Cheever, and although Dr. Cheever lacked the confident demeanor and commitment to objectivity displayed by Dr. Buerger, that they should agree on this point is significant, and it strengthens the finding that defendant's evidence was on the whole more convincing.

AMORPHOUS COMPOUNDS

Plaintiffs relied on the results of Friedberg's X-ray charts to establish the existence of the glassy amorphous compounds supposedly produced by the coaction. It is undisputed however, that in most cases such compounds are not discoverable, much less identifiable by X-ray analysis. Friedberg admitted that the basis for his conclusion, the flattening out of the tracings, could be due to the wiping action of the deformation process. The Court could not conclude that the amorphous compounds were present when the only evidence was a test not designed to disclose them.

WATER INSOLUBLE COMPOUNDS

The debate centered around zinc stearate, since it was that substance which was created by the prior art German process and the inhibition of which Henricks, the patentee, specifically claimed as an advance. On this issue again, there was no reason to disbelieve Friedberg's statement that he found no zinc stearate, but his failure to identify, or even to search extensively for, the peaks at the low angles was unsettling. When defendant's explanation that the low angle peaks actually represent a type of basic zinc stearate, admittedly not recorded in the ASTM files but chemically logical nevertheless, was presented, the Court found itself in a quandary.

Although Friedberg discovered upon reexamination that the mysterious peaks corresponded to those for barium stearate given in the ASTM files, plaintiffs did not present a chemical analysis of the substance either as produced by defendant or as found in residue after boiling a workpiece. The innuendoes that defendant had created a new substance and was being less than honest about its composition were not supported by proof, and the Court would not prefer them to evidence when no reason to doubt credibility or to suspect fraud appeared. Defendant had at least a standoff, and the plaintiffs, having the burden on the issue, must suffer the facts to be found against them.

Having found these three groups of facts, as well as others not discussed herein, against the plaintiffs, the Court must enter a judgment for defendant, and will do so upon submission of a proper order.

The foregoing and the findings of fact and conclusions of law which follow are made in compliance with Rule 52(a), Fed.R.Civ.P., 28 U.S.C.

FINDINGS OF FACT

1. The plaintiffs herein are as follows:

Devex corporation, an Ohio corporation located at Lakewood, Ohio;

Technograph, a North Carolina corporation having its principal place of business at 920 Northwest Boulevard, Winston-Salem, North Carolina;

William C. McCoy, now deceased, a citizen of the State of Ohio residing at 2712 Claythorne Road, Shaker Heights, Ohio;

Theodore A. TeGrotenhuis, a citizen of the State of Ohio residing at 7315 Columbia Road, Olmsted Falls, Ohio;

Frederick B. Ziesenheim, a citizen of the Commonwealth of Pennsylvania residing at 355 Woodside Road, Pittsburgh, Pennsylvania, and one of the attorneys of record for plaintiffs in this action;

Marjorie E. TeGrotenhuis, a citizen of the State of Ohio residing at 7315 Columbia Road, Olmsted Falls, Ohio;

William C. McCoy, Jr., a citizen of the State of Ohio residing at Shaker Boulevard, R. D. #3, Chagrin Falls, Ohio;

Katherine M. Bassett, a citizen of the State of...