Mannesmann Demag Corp. v. Engineered Metal Products
| Decision Date | 04 March 1985 |
| Docket Number | Civ. A. No. 83-24-WKS. |
| Citation | 605 F. Supp. 1362,226 USPQ 466 |
| Parties | MANNESMANN DEMAG CORPORATION, Plaintiff, v. ENGINEERED METAL PRODUCTS COMPANY, INC., Defendant. |
| Court | U.S. District Court — District of Delaware |
Arthur G. Connolly, Jr., Connolly, Bove, Lodge & Hutz, Wilmington, Del., Fritz L. Schweitzer, Jr., Michael A. Cornman, Mandeville and Schweitzer, New York City, for plaintiff.
R.H. Richards, III, Richards, Layton & Finger, Wilmington, Del., Marshall A. Burmeister, Francois N. Palmatier, Burmeister, York, Palmatier, Hamby & Jones, Chicago, Ill., for defendant.
This is a patent infringement action between two companies involved in the manufacture of electric arc furnaces. Mannesmann Demag Corporation ("Mannesmann") has charged Engineered Metal Products Company, Inc. ("EMPCO") with infringement, inducing infringement and contributory infringement of various claims of United States Patent No. 4,207,060 "Vessel For Metal Smelting Furnace" ("Zangs" or "Zangs patent"). EMPCO denies infringement and has counterclaimed seeking a declaration that the patent-in-suit is invalid.
EMPCO is a corporation of the State of Delaware. Mannesmann is a corporation of the State of Michigan. This Court has jurisdiction over the subject matter of this action under 28 U.S.C. § 1338(a), and venue is proper in this District under 28 U.S.C. §§ 1391(c) and 1400(b). This opinion constitutes my findings of fact and conclusions of law with respect to validity and infringement.
An electric are furnace is an apparatus designed to produce steel from metal scrap. The structure of a typical electric arc furnace in the early 1970's included a vessel consisting of an outer steel shell lined inside with refractory brick, with three electrodes extending through the roof and into the vessel.
The electric arc furnace functions as follows: the furnace is "charged" when the furnace roof is removed and scrap metal is dropped into the vessel. The electrodes are lowered into the scrap where the "arc" is struck between the electrodes and the scrap, thereby causing the meltdown. The vessel is then tilted and the melted scrap or charge is poured out. The electrodes are subsequently lifted, the roof is swung away, and the electric are furnace cycle begins again with the introduction of a fresh charge.
The electric arc furnace is unique among furnaces because of the severe conditions under which it operates. Extreme mechanical stresses are created when tons of metal scrap are dumped from above into the vessel; mechanical stress is further compounded by the tilting of the vessel to dispose of the melt. More significantly, electric arc furnaces are exposed to extremely stressful thermal conditions. The temperature around the electrodes reaches 6000° C (11,000 ° F). Moreover, the furnace must withstand frequent huge fluctuations of temperature since each melting cycle lasts only several hours.
Until the early 1970's, the industry attempted to protect the steel shell of the furnace from the extreme conditions encountered therein by lining the vessel wall completely with refractory brick. The use of refractory, however, was not a wholly satisfactory solution, since the refractory itself is subject to considerable wear. As a result, furnace operations were periodically halted in order to install new refractory linings. These interruptions led to a decrease in production and accounted for a considerable percentage of operating expenses.
During the early and mid-1970's, water cooled "box type" panels and other panels of different design were introduced to replace refractory in portions of the furnace vessel outside of the smelting zone. Some of these designs did not literally replace refractory, but instead functioned to cool the refractory and prolong its life.
The patent-in-suit purports to be a solution to the problem of refractory wear above the smelting zone in electric arc furnaces, as well as a significant and novel improvement over the box type and other water-cooled panels previously mentioned. Basically, the Zangs patent teaches a vessel that has an interior wall formed, at least in part, by a cooling pipe coil. The pipe coil is composed of pipe sections arranged in a contacting relation. The specifications in the patent declare that the construction of the furnace wall from pipe coil solves the problem of thermal stress by permitting the forced guidance of cooling water through the pipes, thereby prolonging the life of the furnace. Also, the specifications claim that the cooling coils disclosed in the Zangs patent are aptly suited to withstand the mechanical stress characteristic of electric are furnaces. The patent-in-suit also purports to obviate the need for any refractory lining above the smelting zone.
The Zang specifications also point out that a layer of slag or melt forms on the pipe surfaces facing the interior of the vessel, and that the slag layer acts as a thermal insulator and further reduces thermal stress. This slag layer forms when slag in the smelt zone is splashed onto the coil panels during furnace operations. To enhance slag adherence, the pipes facing the interior are equipped with prominances such as burls.
EMPCO concedes that its accused devices are water-cooled pipe panels especially designed for use in electric arc furnaces, and that the accused devices have been sold in the United States.1
The accused panel comprises a plurality of eccentrically spaced pipes. "Eccentrically spaced" means that alternating pipe sections are positioned with their centers in different planes. In addition, each pipe section of the accused device is separated from its neighbor by a space which EMPCO claims has the important function of acting as a dovetail shaped keyway to receive and anchor a protective layer of solidified slag on the pipes. The spaces between the pipe sections of the accused device are completed by a slag-stopper or space bar inserted into the space and allegedly designed to prevent the egress of slag through the panel itself. The EMPCO panels also show a backbone bar, which is a support structure welded to alternate pipe sections on the exterior side of the panel. Finally, on the face of the pipes facing the interior of the vessel, the accused panel shows numerous diagonal "slag-catching" bars that slope in opposite directions on alternate pipe sections to lengthen the downward path of the molten slag and thereby improve slag adherence to the pipe surfaces.
Dr. Ludger Zangs, the inventor of the device disclosed by the patent-in-suit, filed a German patent application for the same device on October 11, 1977, No. P 27 45 622.0-24. The German application was granted as German patent DE 27 45 622 C2. The Zangs U.S. patent application was filed in the U.S. Patent and Trademark Office on June 26, 1978. The U.S. application was accorded the priority benefit of the German application, pursuant to Section 119 of the Patent Act. 35 U.S.C. § 119. On June 10, 1980, the U.S. Patent and Trademark Office granted the Zangs U.S. Patent No. 4,207,060.
A document of some importance to this litigation warrants a brief description. The so-called "Demag brochure", published in Germany by Mannesmann Demag AG, the parent company of the plaintiff, is a promotional flyer advertising a device under the commercial name "TW 2000" that fits the description of the device disclosed by the Zangs patent. The Demag brochure was the first piece of promotional material relating to the TW 2000 system that was published by the parent company in Germany. The date, "6.77," appears on the back of the brochure.
The Zangs patent is presumed valid. 35 U.S.C. § 282. This presumption may be overcome only by evidence that demonstrates invalidity clearly and convincingly. Moreover, the Court of Appeals for the Federal Circuit has recently held that the presumption of validity is neither weakened nor destroyed by pertinent prior art not considered by the Patent and Trademark Office, and that 35 U.S.C. § 282 requires a court to presume that the patent is useful, novel and nonobvious as well as not subject to a statutory bar. Leinoff v. Louis Milona and Sons, Inc., 726 F.2d 734, 738 (Fed. Cir.1984) (citing Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1534 (Fed.Cir. 1983)); TP Laboratories v. Professional Positioners, 724 F.2d 965, 971 (Fed.Cir. 1984); Medtronic, Inc. v. Cardiac Pacemarkers, Inc., 721 F.2d 1563, 1567 (Fed. Cir.1983).
EMPCO argues that Zangs patent is invalid under Section 102(b) of the Patent Act because the Demag TW 2000 brochure or prospectus (PX-8) was published more than one year prior to the June 26, 1978 filing date of the U.S. patent application.2
EMPCO contends that the date appearing on the Demag brochure, "6.77," is the date that the brochure was actually published. In support of this argument, EMPCO points to certain information arising from the proceedings on the German patent application, No. P 27 45 622.0-24, filed October 11, 1977, corresponding to the U.S. patent-in-suit (DX-65, parts 1-9). The German patent application resulted in the issuance of German Patent No. DE 27 45 622 C2, which was followed by the filing of five oppositions.3 Benteler-Werke AG filed one of the oppositions (DX-65, part 6; English translation), citing the Demag brochure as prior art, and included with its opposition a copy of the page of the brochure showing the "6.77" date. In reference to the Demag brochure, Benteler-Werke stated in pertinent part: "Enclosed is a prospectus sheet issued in June 1977 (cf. the printing notation in the lower right hand corner) by the predecessor in title of the patent holder...."
The patent attorneys for plaintiff's West German parent company, Mannesmann AG, responded to the various oppositions (DX-65, part 7; English translation), and with respect to the Demag TW 2000 brochure, replied:
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