Henkel Corp. v. Coral, Inc.
| Decision Date | 06 March 1991 |
| Docket Number | No. 89 C 3385.,89 C 3385. |
| Parties | HENKEL CORPORATION, Plaintiff, v. CORAL, INC., Defendant. |
| Court | U.S. District Court — Northern District of Illinois |
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William Denby Heinz, Jenner & Block, Chicago, Ill., for plaintiff.
Dennis R. Schlemmer, John Kilyk, Jr., Leydig, Voit & Mayer, Ltd., Chicago, Ill., for defendant.
The plaintiff, Henkel Corporation ("Henkel") brought this action seeking at the outset a preliminary injunction to restrain the defendant, Coral, Inc. ("Coral") from infringing Henkel's patent United States Patent No. Re. 32,661, by manufacturing and selling a low temperature cleaner called Clene 100/ACC-2 to manufacturers of aluminum cans for the food and beverage industry. The defendant responded with a motion for summary judgment. The matter proceeded in its early stages before the court on both matters, the parties supporting their positions with extensive briefs and voluminous submissions of evidentiary materials. In an opening memorandum and order this court set the matter down for an evidentiary hearing with live witnesses and further evidentiary submissions to be followed by oral arguments and post-hearing briefs. Transcripts of these matters fill many pages, and the documented evidence and written arguments have been exhaustive. The written printed and transcribed materials submitted to the court by the parties fill many thousands of pages.
Even though the subject matter relates to a recent modernization almost so ordinary in the grocery shopping experiences of the youngest adults among today's general population as to have transpired without much notice, the technical matters involved impressed the court with the need of the ordinary consumer for being educated about the manufacturing of containers for the daily marketing of beverages. The court itself learned that the change from bottled beverages to the use of three piece soldered "tin" cans and then to cans punched in paper thin sheets of aluminum has been but a part of a recent expansion of the use in industry of chemicals and water for cleaning purposes during the shaping of metal parts that are indispensable to the myriad of mechanisms that permeate modern life.
The availability of the aluminum can as a beverage container answered a restless need because of its light weight, its strength, its appearance and its ability to leave undisturbed the original flavor of the beverage; but in return for all of its advantages it presented problems in its own manufacturing process. For example, aluminum oxidizes when heated during its forming process, leaving residues that have to be removed. Also, during the forming process lubricants have to be used which, along with so-called aluminum fines left on the surfaces, have to be removed. In addition, since both the insides of the cans which have to be left spotless and as pure as the beverages themselves, and the outsides of the cans on which painted messages have to be sprayed, both the insides and the outsides of the cans require that the surfaces of the metal must be cleaned to a degree that is called "water-break-free", a term that means that the water runs evenly over and off the surfaces of the aluminum without beading. If beading occurs the interiors would not be substance free and the coatings that later would be applied to the outsides would not lay down uniformly.
The cleaning of metal products in industry is not new, but from almost the beginning of the use of aluminum cans for beverages the industry has been busy turning out various cleaning solutions, some containing alkaline combined with a detergent — these gaining only limited acceptance, and some containing acids combined with detergents, but they have had to be maintained for use at relatively high temperatures and this has always presented difficulties with the machinery used in the forming process as well as with the aluminum itself. The acid generally used has been sulfuric acid, and the temperature of the chemical "bath" has until recently been required to be kept between 170-190 degrees F.
When heated sulfuric acid solutions proved usable, their use still had negative secondary effects. First, they proved to be caustic, eating away at the applicating equipment, including the spray nozzles, and they continue to incur high heating costs. The industry has remedied some of the early problems of corrosion by adding chromates but these also have continued to produce negative side-effects. Chromates were found to be carcinogenic and toxic to the industrial plants and the plant workers.
According to the discussions of both parties in this case the history of the pioneering in the development of both an aluminum surface cleaning composition and a method for applying the cleaner, or a combination of both a composition and a process, begins with an article published in the Journal of the American Welding Society by a research authority on the treatment of aluminum composites for airplane parts named W.F. Hess. Hess found that a combination of hydrofluosilicic acid and a wetting agent was a suitable solution for accomplishing his special purposes.
Twenty years later in 1964 one John J. Grunwald obtained a patent numbered 3,140,203 and entitled "A Method of and Composition for Treating Aluminum and Aluminum Alloys." His patent taught that a strong oxidizing agent called persulfate, when added to sulfuric acid produced a solution for effectively deoxidizing and desmutting aluminum.
In 1970 a patent was issued to a Floyd L. Mickelson and a Robert Bland and numbered 3,510,430, for a composition for treating aluminum surfaces which avoided using either hydrofluoric acid or sulfuric acid by making a combination of specific amounts of ferric sulfate, alkali metal bisulfate, alkali metal nitrate and alkali metal silicofluoride.
Then in 1973 Patent No. 3,728,188 was issued to a Robert Warren Yarrington for a chrome-free deoxidizing and desmutting composition and method that would serve as a follow-up cleaner for aluminum surfaces to be applied after the use of the Grunwald or the Mickelson composition.
In 1972 a company named Amchem, the company from whom just before the filing of this case the plaintiff herein, the Henkel Corporation purchased the patent that is the subject matter of this case, assigned one of its research chemists, a Robert E. Binns, to the task of developing an aluminum can cleaner that would effectively clean aluminum cans for use in the beverage industry and do so at low temperatures. Binns eventually added to the then well known use of sulfuric acid various quantities of fluoride and then combined them with a surfactant, itself as in the instant patent in specific amounts and qualities, one of the distinguishing features between the patent in suit and the prior art, in such a manner as to effect a cleaner that would not only work at an especially low temperature but would clean surfaces to a "water break free" condition.
As Binns progressed with his inventing, using various combinations of his products he applied for and eventually received a series of three patents. In 1977 U.S. Patent 4,009,115 (the '115 patent) was issued to him and assigned to his employer. It was for a "Composition and Method for Cleaning Aluminum at low temperatures." Then on September 26, 1978 U.S. Patent 4,116,853 (the '853 patent) was issued to him. It was for a composition for cleaning aluminum surfaces. Finally, on November 7, 1978 U.S. Patent 4,124,407 (the '407 patent) was issued to him claiming a method for cleaning aluminum surfaces when using the compositions described in the two earlier patents. The '407 patent was a special method for using the '115 and the '853 compositions. As Binns progressed with his research his patent prosecutions in the Patent Office were the subject of continuous competitive objections and challenges before the examiner led by the defendant in this case, the Coral Company. Amchem, to whom Binns had assigned all three patents initiated reissue proceedings in the Patent Office on all three patents in September of 1980, and after conducting these contested proceedings the Patent Office reissued '407 (the method for applying the '115 and '853 compositions) as Patent No. Re. 31,198. This reissue was on April 5, 1983. Finally, two and a half years later, as a result of its undergoing substantial changes, the reissue proceedings which had been begun on the original '115 patent culminated in the reissue of that patent as Patent No Re. 32,661. This happened on May 3, 1988.
In the meantime back in 1983, as soon as the reissue of Binns' third patent, his '407 patent as Patent No. Re. 31,198 came through, Amchem Products Company, to whom Binns had assigned the patent, brought a suit against Coral Chemical Company, the defendant herein, charging that Coral's product Clene 100/ACC-2 infringed the '198 patent. That case was assigned to a colleague of the instant Judge, the Honorable Prentice H. Marshall, a judge of this court who commands great respect from the bench and bar for the excellence of his judicial performance. When the case was brought before him the application for reissue of the original '115 patent was still under prosecution before the Patent Office, and when in August of 1987 Judge Marshall decided Amchem's battle with Coral over the '198 patent the reissue of the '115 patent was still being prosecuted.
Judge Marshall on August 31, 1987 decided the '198 patent claim of Amchem in favor of Coral. The reissue of the '115 patent was still before the Patent Office, and though his decision about the '198 patent became a matter of concern for the Examiner in Washington it had been impossible for Judge Marshall in his decision to have taken into consideration what would be happening to the...
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