EW Bliss Company v. Cold Metal Process Company

• Citation: 174 F. Supp. 99
• Decision Date: 02 June 1959
• Docket Number: Civ. A. No. 24189,Equity No. 5402,26542,31849.
• Parties: E. W. BLISS COMPANY, Plaintiff, v. COLD METAL PROCESS COMPANY and Union National Bank of Youngstown, Ohio, Trustee, Defendants. UNION NATIONAL BANK OF YOUNGSTOWN, OHIO, Trustee, Plaintiff, v. GREER STEEL COMPANY, Defendant. UNION NATIONAL BANK OF YOUNGSTOWN, OHIO, Trustee of the Leon A. Beeghly Fund, Plaintiff, v. E. W. BLISS COMPANY, Defendant. E. W. BLISS COMPANY, Plaintiff, v. COLD METAL PRODUCTS COMPANY, Defendant.
• Court: U.S. District Court — Northern District of Ohio

174 F. Supp. 99

E. W. BLISS COMPANY, Plaintiff, v. COLD METAL PROCESS COMPANY and Union National Bank of Youngstown, Ohio, Trustee, Defendants.

UNION NATIONAL BANK OF YOUNGSTOWN, OHIO, Trustee, Plaintiff, v. GREER STEEL COMPANY, Defendant.

UNION NATIONAL BANK OF YOUNGSTOWN, OHIO, Trustee of the Leon A. Beeghly Fund, Plaintiff, v. E. W. BLISS COMPANY, Defendant.

E. W. BLISS COMPANY, Plaintiff, v. COLD METAL PRODUCTS COMPANY, Defendant.

Equity No. 5402; Civ. A. Nos. 24189, 26542, 31849.

United States District Court N. D. Ohio, E. D.

May 8, 1959.

On Motion to Correct Opinion June 2, 1959.

COPYRIGHT MATERIAL OMITTED

Charles H. Walker, Stuart A. White, Donald E. Degling, New York City, Charles W. Williams, Cleveland, Ohio, for plaintiffs.

William H. Webb, Morton Burden, Jr., Joseph R. Robinson, Jr., John M. Webb, Pittsburgh, Pa., Howard F. Burns, Cleveland, Ohio, for defendants.

WEICK, District Judge.

The Consolidated Cases.

These four actions were consolidated for trial.

They involve the validity, scope and infringement of three patents for improved mills and methods for the rolling of hot and cold metal in strip or sheet form.

The patents in suit are: No. 1,744,016 ('016) issued January 14, 1930 on an application filed June 30, 1923 by Abram P. Steckel, hereinafter referred to as Steckel; No. 1,779,195 ('195) issued October 21, 1930 on an application filed December 9, 1929, as a division of the original Steckel application; No. 2,706-original Steckel application; No. 2,706,422 ('422) issued April 19, 1955 on an application filed May 2, 1947 by William B. Lockwood, hereinafter referred to as Lockwood.

Steckel assigned his applications for patent to the Cold Metal Process Company, an Ohio corporation, 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, Trustee of the Leon A. Beeghly Fund.

The Lockwood patent was first assigned to the Cold Metal Products Company, an Ohio corporation and thereafter through mesne assignments to the Youngstown Research & Development Company, an Ohio corporation.

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

Greer Steel Company, hereinafter referred to as Greer, is a West Virginia corporation having a place of business at Dover, Ohio and is a user of rolling mills. It purchased several mills from Bliss and others from United Engineering & Foundry Company, hereinafter referred to as United.

1. Equity No. 5402.

This action was filed by Bliss against Cold Metal on January 20, 1936 seeking a declaratory judgment with respect to the validity and infringement of Steckel Patent Nos. '016, '195 and two other patents which were eliminated from the case at a pre-trial conference.

On motion of Cold Metal, the complaint was dismissed on April 12, 1937 for lack of a justiciable controversy. On appeal, the order of dismissal was reversed. 6 Cir., 1939, 102 F.2d 105. Cold Metal filed its answer on May 20, 1939, but asserted no counterclaim at that time.

A motion for summary judgment by Bliss as to the validity of Patent No. '195 was denied. D.C.1942, 47 F.Supp. 897.

In 1947, after the patents had expired, and the issues had become moot, Cold Metal and the trustee moved for leave to file a counterclaim charging Bliss with infringement of Patent Nos. '016 and '195. Bliss then moved to dismiss the complaint. Leave to file the counterclaim was granted and it was filed on May 26, 1950. The motion to dismiss was denied.

Bliss thereafter moved to dismiss the counterclaim with respect to all mills sold by it more than six years prior to the date of the filing of said counterclaim. It asserted that such claims were barred by the Statute of Limitations. The motion was denied by the Court for the reason that the filing of the declaratory judgment action had tolled the Statute of Limitations. D.C.1957, 156 F.Supp. 63.

This case is the oldest one on the docket of the Court. It was filed at a time when the Court had separate dockets for law and equity cases which long since have been abolished.

2. Civil Action No. 26,542.

This action charges Bliss with infringement of Patent Nos. '016 and '195. The issues are the same as Equity No. 5402.

It is claimed by Cold Metal that this action was a precautionary suit to stop the running of the Statute of Limitations in the event it was held that the Statute was not tolled by the filing of Equity No. 5402.

3. Civil Action No. 24,189.

This action charges Greer with infringement of Patent Nos. '016 and '195 by reason of its use of mills which it purchased from Bliss and United.

4. Civil Action No. 31,849.

This action was instituted by Bliss for a declaratory judgment with respect to the validity and infringement of Lockwood Patent No. '422. A motion to dismiss for lack of a justiciable controversy was denied by the Court.

The trial of the consolidated cases lasted for more than two months. One week was spent by the Court with counsel in viewing rolling mills in six different states. A total of 768 exhibits were offered in evidence, some of which were depositions and testimony of witnesses stipulated from the records of other cases.

Mill Types

In a 2-high mill there are only two rolls which are at different elevations. A sketch of a model 2-high mill with all its essential parts identified is reproduced below.

A similar sketch of a model 4-high mill is also reproduced. It has rolls at four different elevations. The two rolls in the center are called working rolls each of which is supported by a backing roll.

A 4-high mill permits the use of smaller working rolls in a wide mill than does a 2-high mill because of the support provided by the backing rolls.

If small working rolls were used on a 2-high mill, they would not be able to withstand the heavy pressures required for substantial reductions of metal and the rolls would tend to bow apart. The 4-high mill with large backing rolls provides the necessary support for small working rolls, prevents bowing and permits their use for heavy reductions.

The sketch below illustrates the roll arrangement of 2-high, 3-high, 4-high and cluster mills with the strip between the rolls.

Mill Types

It will be noted that in the cluster mill the working rolls are nested in the crotch between the backing rolls thus obtaining horizontal as well as vertical support. A mill other than the 2-high mill is usually referred to as a backed up mill, because the work roll or rolls are supported or backed up by backing rolls.

Patent No. '195.

In Steckel's original application for patent filed June 30, 1923 he presented claims for a mill with small working rolls and relatively large backing rolls. The backing rolls were to be mounted on antifriction bearings (roller bearings). In addition, he presented claims for the application of tension on the strip as a driving force of the mill. In 1929 the Patent Office required division of the claims involving tension as a means for driving the mill and those for the mill stand per se. This resulted in the application, filed on December 29, 1929, upon which Patent No. '195 issued.

Claims 3, 4, 6, 7, 8 and 11 to 17 of that patent are here in suit. It is unnecessary to pass on the remainder. No infringement is charged as to them and, the patent having expired, their validity is moot.

The claims in question are all mill claims. Claims 8, 11, 12 and 16 specifically relate to continuous mills, while the remainder describe single mill stands. Basically, they define a 4-high mill with antifriction bearings on the backing rolls.

At the time of Steckel, and long prior thereto, antifriction bearings were understood in the art as meaning ball or roller bearings as distinguished from friction or sliding bearings on which one metal surface would slide over another without the interposition of balls or rollers.

The claims vary from one another in that some refer to the control of roll neck heating by the application of roller bearings while others refer to the possibility of obtaining greater speeds through the use of the roller bearings.

In the claims appears language which, to my point of view, is simply excess verbiage describing a properly designed backing roll or roller bearing. Examples of this are found in Claims 3, 4, 8, 13 and 14 wherein it is stated:

* * * the backing rolls having necks of sufficient size to withstand the rolling pressure * * *

Any competent mill builder would design his mill so that the roll necks would withstand the rolling pressures. To do otherwise would be sheer folly.

By the same token, several of the claims describe the bearings to be used as "of sufficient size to withstand the rolling pressure" (Claims 8, 14 and 17) or "of such character as to withstand speeds which are high relative to those ordinarily employed" (Claims 4, 7, 8 and 13). To say this in a patent relating to a mill intended to be run at a high speed and to make heavy reductions is only to say use an adequate roller bearing. Again, an engineering fundamental.

Stripping the claims of the verbiage and looking to their essentials they disclose a 4-high mill with roller bearings on the necks of the backing rolls.

The advantages claimed for this mill are expounded in the specifications.

"By my invention the limitations of speed on both hot and cold mills are removed.

* * * * * * *

"Where the roller bearings are applied to the backing roll necks they eliminate the heating of such necks, which heat adversely affects the shape of the working roll body.

* * * * * * *

"My invention is also highly advantageous in that the amount of power required is markedly reduced * * *

* * * * * * *

"By the use of my improved mill these high speeds may be readily attained and this with relatively low power requirements."

It...