Devex Corporation v. General Motors Corporation

• Decision Date: 04 September 1963
• Docket Number: No. 13979.,13979.
• Citation: 321 F.2d 234
• Parties: DEVEX CORPORATION et al., Plaintiffs-Appellants, v. GENERAL MOTORS CORPORATION et al., Defendants-Appellees.
• Court: U.S. Court of Appeals — Seventh Circuit

321 F.2d 234 (1963)

DEVEX CORPORATION et al., Plaintiffs-Appellants, v. GENERAL MOTORS CORPORATION et al., Defendants-Appellees.

No. 13979.

United States Court of Appeals Seventh Circuit.

July 12, 1963.

Rehearing Denied September 4, 1963.

Frank H. Marks, Chicago, Ill., William C. McCoy, Jr., Cleveland, Ohio, Walter J. Blenko, Pittsburgh, Pa., for appellant.

Arthur W. Dickey and Neal A. Waldrop, Detroit, Mich., for defendant General Motors Corporation.

Benjamin H. Sherman, Carlton Hill, Chicago, Ill., for defendant-appellee, Houdaille Industries, Inc.

George N. Hibben and Jerome F. Fallon, Chicago, Ill., for other appellees.

Before DUFFY and SWYGERT, Circuit Judges, and MAJOR, Senior Circuit Judge.

DUFFY, Circuit Judge.

These are two civil suits for infringement of Henricks' Reissue Patent No. 24,017 which were consolidated for trial on the common issue of validity. Claim 4 is the only claim at issue.¹ The District Court held Claim 4 of the patent in suit to be invalid in view of the indefiniteness of the claim, the prior art and prior public use.

The patent in suit relates to lubrication of metal surfaces in cold drawing and deforming operations in shaping steel to desired forms by dies, to reduce friction between the steel workpiece being drawn or shaped and the die, to avoid scoring and tearing of the metal being drawn and to avoid injury to the surface of the dies.

The patent in suit is the outcome of an application, Serial No. 665,905, filed April 29, 1946 by the patentee Henricks, which was abandoned in favor of a continuation-in-part application filed October 31, 1950, upon which was issued United States Patent No. 2,588,234, dated March 4, 1952, for which application for reissue was filed March 1, 1954, upon which Re. Patent No. 24,017 now in suit issued on June 7, 1955.

Claim 4, the only claim in issue, is identical to Claim 45 as allowed by the Patent Office in the 1946 application. April 29, 1946, the date when the 1946 application was filed, is therefore the record date of invention to which the patentee is entitled.

The patent in suit relates particularly to the lubrication of metal for drawing and forming operations. It concerns cold forming operations as opposed to hot forming operations. When metal is drawn or deformed, to transform a blank or workpiece into another desired shape, there is necessarily some movement between the surface of the blank and the surface of the die, and an accompanying generation of high pressures and temperatures. Adequate lubrication is essential. Unless suitable provision for lubricating the surfaces is made, tearing of the metal or galling of the dies results. The problem is most acute where difficult draws of ferrous metals are involved. Drawing operations require costly tools and dies. It follows that wear and abrasion are very important considerations in tool and die work.

Among the suggestions contained in the patent in suit is that of providing upon the surface of the work to be drawn, an integral phosphate coating and applying thereto a film of sodium tallow soap having borax distributed therein. It is contended that a solid meltable organic binding material mentioned in Claim 4 includes sodium tallow soap and that a solid inorganic compound mentioned in the claim includes borax.

Mohs' hardness scale is a known standard for indicating the relative hardness of materials. It is used in Claim 4 as a specification that the "solid inorganic compound" of the claim should not be hard enough to scratch the steel being drawn.

The prior art disclosed a number of lubricating schemes. These included the use of ordinary lubricating oils or lubricants containing finely divided infusible pigments such as clay, lime, mica or graphite. Most of such schemes were classified as "wet-film" lubricants which were wet and oily to the touch.

Later followed what is known as Singer's process, evolved in Germany and described in Singer United States Patent No. 2,105,015. Singer's scheme was to form a sponge-like coating, such as a phosphate, on the surface of the workpiece. The coating was not wet or flowable but was integral with the workpiece and could not be squeezed out in the drawing operation.

Phosphate coatings had been in use as early as 1914. These coatings had no lubricating value per se. They were, in fact, abrasive and caused tool and die wear even through superposed lubricants. The reason they were used in lubricating schemes was due to their ability to absorb and carry lubricant into a high pressure zone.

The next step forward in the art after the Singer process, was the development of the Gilron "Dry-Film" soap and borax lubricant. In this process, soap and borax were mixed with water and applied as an aqueous solution to the surface of the workpiece. The soap and borax coating was then dried by heat lamps or the like onto the surface of the workpiece. As drawn, it was a hard fixed film and stayed with the workpiece in the high pressure zones. No other lubricant was used.

The Gilron soap-borax coating on bare metal being transparent, permitted inspection of the workpiece and eliminated the abrasive phosphate. The Gilron process supplanted the Singer process in the shell case program of the United States Government during World War II.

In 1942 and thereafter until 1945, Henricks, the patentee of the patent in suit, was employed by Gilron Products Company and was familiar with the uses of soap-borax lubricants described in patents No. 2,469,473 and 2,530,837. The Gilron lubricating product for use in drawing steel was sold under the trade-name "Drawcote" and was composed principally of sodium soap formed from tallow and palm oil, and of borax in proportion by weight of 10-33% soap to 67-90% borax.

Drawcote was sold in the form of a dry powder. Gilron Products Company obtained patents on Drawcote and its use. United States Patents No. 2,469,473 dated May 10, 1949, and No. 2,530,837 dated November 29, 1950, were obtained upon the joint application of Gilbert H. Orozco, a partner of Gilron Products Company and his employee Henricks, the patentee of the patent in suit.

Drawcote was extensively sold and used in 1942 and 1943 in cold drawing of steel cartridge cases. In those years during World War II, there was a shortage of copper for making brass shell cases for the ammunition used in military and small arms weapons. The Government required manufacturers of shell cases to make them from steel by cold drawing and deforming. This manufacture of steel shell cases occurred largely during the period 1942-1944, after which copper again became available.

In the manufacture of shell cases, Gilron's Drawcote was able to replace the use of other lubricants such as lubricated copper coatings for steel and lubricated phosphate coatings for steel.

In 1943, among those using a lubricated phosphate coating on steel in the operation of cold drawing steel 75 mm. shell cases, was Briggs Manufacturing Company, Detroit. That Company was then providing zinc phosphate coatings on steel blanks and applying thereover a sulphurized grease as a lubricant. About June 1943, Whitbeck of Gilron Products Company sold Drawcote to Briggs. By experimentation, Briggs found it could successfully carry out its cold drawing operation with the Drawcote soap-borax lubricant applied directly to the surface of the steel without the phosphate coating.

Plaintiffs admit the Gilron borax coating solved many drawing problems existing at that time and that even today, it is satisfactory for many draws. However, plaintiffs claim the process has its limitations and cannot do what the Henricks process does.

The Patent Office was fully advised of the nature and advantages of the Gilron process. Patent No. 2,469,473 was a file wrapper reference.

Several references are made in the briefs to the "German Process." This was developed prior to 1942. In this process, a phosphated workpiece is soaked as long as fifteen hours in an aqueous soap solution to form thereon by chemical interaction between the phosphate and soap, a water-insoluble soap film. A serious defect in this scheme was that the residual deposit was not water soluble and presented a difficult cleaning problem especially if the workpiece was to be electroplated.

Plaintiffs concede all of the elements which Henricks employed in Claim 4 in the patent in suit were old per se or in other combinations and have been available in the art for some years. However, plaintiffs contend that the elements which Henricks selected were put together in a new way and achieved a new and unexpected result.

Plaintiffs claim that in the specific embodiment of Claim 4, the "phosphate coating" is the abrasive coating of the Singer process — a seeming retrogression in the art. The overlying film is a fixed one and the "solid meltable organic" constituent thereof is soap, the use of which had previously been found undesirable because of the cleaning problem. The "solid meltable inorganic compound" distributed therethrough, meltable at a temperature below the melting point of the abrasive phosphate coating and having a hardness not more than 5 on the Mohs' scale, is borax.

Plaintiffs argue that new and unexpected results flow from the conjunction of elements defined in the drawing process of the Henricks' patent; that tool and die life is greatly increased and severe drawing operations can now be performed which were previously impossible. Plaintiffs say there is a coaction during the high temperatures and pressures whereby the abrasive phosphate coating reacts with the borax to form amorphous glassy materials which contribute significantly to the lubricating value of the coating; that the formation of insoluble organic materials is inhibited and there is no cleaning problem.

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...