Fried. Krupp Aktien-Gesellschaft v. Midvale Steel Co.

• Decision Date: 11 October 1911
• Docket Number: 43.,41,42,40
• Citation: 191 F. 588
• Parties: FRIED. KRUPP AKTIEN-GESELLSCHAFT v. MIDVALE STEEL CO. (four cases).
• Court: U.S. Court of Appeals — Third Circuit

191 F. 588

FRIED. KRUPP AKTIEN-GESELLSCHAFT v. MIDVALE STEEL CO. (four cases).

Nos. 40, 41, 42, 43.

United States Court of Appeals, Third Circuit.

October 11, 1911

James R. Sheffield, T. De Witt Cuyler, and James J. Cosgrove, for Fried. Krupp Aktien-Gesellschaft.

A. H Wintersteen, G. J. Harding, and Frank S. Busser, for Midvale Steel Co.

Before BUFFINGTON and LANNING, Circuit Judges, and YOUNG, District judge.

BUFFINGTON Circuit Judge.

These are four bills in equity brought in the Circuit Court of the United States for the Eastern District of Pennsylvania by Fried. Krupp Aktien-Gesellschaft, hereinafter called Krupp Company, a corporation of the empire of Germany, against the Midvale Steel Company, hereinafter called Midvale Company, a corporation of the commonwealth of Pennsylvania.

The Krupp Company is the owner of American patent No. 534,178 granted February 12, 1895, for a process of manufacturing armor-plates, on application filed January 24, 1893, to Albert Schmitz and Emil Ehrensberger, residents of the German Empire. This American patent, which is referred to below as the grain-refining patent, is one of a series of patents for the same alleged invention granted abroad as follows: In Germany, patents Nos. 72,547 and 74,242, dated November 16 1892; in France, No. 226,286, dated December 9, 1892; in Belgium, No. 102,523, dated December 10, 1892; in Great Britain, No. 23,228, dated December 16, 1892; in Spain, No. 14,054, dated February 9, 1893; and in Italy, No. 33,126, dated December 31, 1892. By one of its bills the Krupp Company charges the Midvale Company with infringing the fifth claim thereof. The Krupp Company is also the owner of American patent No. 642,926, granted February 6, 1900, to said Albert Schmitz for a process of improving the quality of steel armor-plates. It is referred to below as the 'fibering' patent. In a second bill the Krupp Company charges the Midvale Company with infringing the first claim thereof. The Krupp Company also owns American patent No. 651,965, granted June 19, 1900, to said Emil Ehrensberger for a process of hardening and toughening armor-plate, and in a third bill it charges the Midvale Company with infringement of the first and third claims thereof. Lastly, the Krupp Company owns American patent No. 653,413, granted July 10, 1900, to said Emil Ehrensberger for a process of improving armor-plate. In a fourth bill it charges the Midvale Company with infringing its first and third claims. These last two patents are referred to below as the differential heating patents.

The four cases were heard as one by the court below. There was a large amount of expert testimony, but that court, without entering into a discussion of that portion of the testimony, confined itself to a consideration of the two fact witnesses who testified to what the Midvale Company actually did, as seen by them, in making armor-plate, and reached the conclusion that infringement by the Midvale Company was not proven. In that regard its opinion held:

'Undoubtedly the plaintiff was obliged to establish infringement by the weight of the evidence; but upon this vital point the record contains comparatively little, and in my opinion such evidence as was presented is not sufficiently satisfactory either in quality or amount. For this reason, without touching the other questions involved, the plaintiff must fail.'

In accordance therewith that court entered decrees dismissing said bills for noninfringement. Thereupon the Krupp Company took the present four appeals from such decrees. These appeals were heard as one by this court.

The question of infringement being one of fact, we might be justified in following, in the absence of manifest error, the finding of the court below, for, as recently said by the Supreme Court of the United States in Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405, 28 Sup.Ct. 748, 52 L.Ed. 1122:

'The lower courts, therefore, found that the invention was a broad one, and that the machine used by the Continental Company was an infringement. And these were questions of fact upon which, both of the courts concurring, their findings will not be disturbed, unless clearly wrong.'

But while we might adopt that course here, and while, after full consideration, we are satisfied the case could rest on the basic question of noninfringement which the learned judge below so tersely and pointedly set forth, yet, in view of the importance of armor-plate to several governments, of the fact that numerous companies both in this country and abroad who are not parties to this bill are interested in the subject-matter of this case, and bearing in mind also the industry, research, and zeal of counsel displayed in taking proofs and the argument of these cases, we have felt impelled to record our views more at length than we would otherwise do and respond to that reasonable expectation on counsel's part of a full discussion by this court of a case wherein, to use their own words, 'the questions involved are of great importance, not alone to the art, but to the armament of the nations, and, in a broad sense, to the times in which we are living.'

We deem it proper, however, to say for the guidance of patent practitioners in this circuit that it should be borne in mind that infringement is not only a question of fact, but is a tort or wrong, the burden of establishing which, as in all torts, clearly rests on those who charge such wrong. The absence of actual fact proof is not met by the presence of expert speculations no matter how voluminous. In this particular case the whole superstructure of the vast mass of expert testimony, in the last analysis, depends on what the Midvale Company did when making armor-plate as testified to by Leonard and Ross. They were the only witnesses who saw and testified thereto, and, when the judge below became convinced that these two witnesses did not prove facts which showed infringement, he rested, and could rightfully rest, his decision on that ground. That such a course has commended itself to the master minds of the law is illustrated by what was said of the late Lord Chancellor Halsbury, that 'he had exercised a remarkable influence over the judicial temper of the House of Lords by always acting on the maxim that you must first settle what are the real facts of the case before you begin to apply the law.'

The genius of John Ericsson, a native of Sweden, embodied in the original iron-clad Monitor of his adopted country, revolutionized the naval equipment of the world. The Monitor's battle-tried plates taught the shipbuilder the possibility of a vessel resisting and countervailing the impact of a projectile. From that time the contest in naval construction and equipment became one between the makers of projectiles and the makers of armor-plate, for, as the projectile gained in penetrating power,-- armor-plate had to increase in resistance efficiency. Thus the two arts supplemented and instructed each other. At first the armor maker followed the crude pathway of mere bulk, and thickened his iron plates. To such an extreme did this go that in 1871 the British armor-clad Inflexible carried a 24-inch iron armor belt backed by 11 inches of wood. This armor weight made vessels practically unmanageable, and it was soon found that even 10 and 12 inch iron-clads were so restricted in fuel capacity, to say nothing of quarters and supplies for crews, that their steaming radius was shortened, and their protected area restricted to narrow limits. Moreover, the increased penetrating power of projectiles, due to hardened steel and more powerful explosives, decreased the relative defensive capacity of iron plates. It soon, therefore, became apparent that the vital qualities in a plate were differential strata, viz., a correspondingly hardened face to counteract the hardened projectile and a toughened back which would not only afford cohesion and support to the hardened front of the plate, but would serve to cushion or distribute the ballistic force of the projectile. These facts are summarized by one of complainant's witnesses, Prof. Howe, who says:

'In order that the plate shall remain intact, its rear must be ductile; that is to say, capable of undergoing a great deal of deformation without cracking. The force of the blow given by the projectile is so enormous that, unless the plate is made extremely thick, it must either bulge or break. It must be made no thicker than is absolutely necessary, so that it may weigh down the vessel as little as possible, and thus may give the vessel the maximum possible coal-carrying capacity, and the maximum possible steaming radius. To break would be fatal, but to bulge under the blow of the projectile does no harm. Therefore the back of the plate should be of material which will neither crack nor break under the impact of the projectile, and therefore must be of ductile material which is capable of bending without breaking or cracking. In steel, in general, hardness and ductility exclude each other. Those steels which are ductile are not hard; and those steels which are hard are not ductile. Hence comes the necessity of having a radically different set of properties in the face of the plate from those in the back of the plate. The face must be intensely hard in order to arrest and shatter the projectile, and this hardness almost necessarily implies that it shall not be ductile or capable of bending, and, indeed, the lack of ductility has the great advantage of causing flaking rather than puncture. The back, on the other hand, must be ductile, lest it crack, and this ductility almost necessarily prevents its being hard. Thus the plate must needs be hard, and hence cannot be ductile in its face, and yet must be ductile,

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