Oxy Metal Industries Corp. v. Roper Corp.
| Citation | 579 F. Supp. 664 |
| Decision Date | 18 January 1984 |
| Docket Number | Civ. A. No. R-79-1805. |
| Parties | OXY METAL INDUSTRIES CORP., Plaintiff, v. ROPER CORPORATION, Defendant. |
| Court | U.S. District Court — District of Maryland |
Don K. Harness, Harness, Dickey & Pierce, Birmingham, Mich., Andrew Jay Graham, Kramon & Graham, P.A., Baltimore, Md., for plaintiff.
John A. Diaz, Morgan, Finnegan, Pine, Foley & Lee, New York City, Joel J. Feinberg, Piper & Marbury, Baltimore, Md., for defendant.
Oxy Metal Industries Corporation filed this action for infringement of United States Patent No. 3,444,007 on September 27, 1979. The patent in suit relates to a process for coating zinc and zinc alloy surfaces prior to painting. The plaintiff charges that the defendant, Roper Corporation, has infringed this patent, and asks for an injunction against further infringement by Roper and for an accounting of damages arising out of defendant's infringement. Roper denies any infringement, and contends that the '007 patent is both invalid and unenforceable. The case was tried before this Court without a jury. Pursuant to Fed.R.Civ.P. 52(a), the Court makes the following findings of fact and conclusions of law.
When the plaintiff filed suit, it was a corporation organized and existing under the laws of the State of California, and had its principal place of business in the State of Michigan. During the course of this litigation, Oxy Metal was merged into Hooker Chemicals & Plastics Corp., a corporation of the State of New York, which on April 1, 1982, changed its corporate name to Occidental Chemical Corporation. For the convenience of the Court and the parties, Occidental Chemical Corporation, the successor corporation, was referred to at trial as "Oxy Metal," and will be designated by its earlier name in this opinion. Defendant Roper is organized and existing under the laws of the State of Delaware, and has its principal place of business in Maryland. The alleged acts of infringement were committed in Maryland.
United States Patent No. 3,444,007 '007 patent or Maurer patent, entitled "Process of Forming Paint-Base Coatings on Zinc and Zinc Alloy Surfaces," was issued on May 13, 1969, to Oxy Metal, as the assignees of James I. Maurer and Vinod D. Shah. The patent is based upon applications no. 310,877, filed September 23, 1963, and no. 623,513, filed May 13, 1967, and is a "use" patent because it claims the use of a process, a chemical formulation, to reach an end result.
Under the process described in the '007 patent, zinc or zinc alloy surfaces are dipped in or sprayed with an aqueous alkaline solution which contains at least one metal ion and a complexing agent. Zinc ions and the added metal ion or ions form a "complex oxide coating." The complex oxide coating provides good corrosion resistance and a flexible paint base so that the metal can be bent or formed after painting without the paint flaking or chipping off the metal surface along the bent areas.
Prior to the process described in the '007 patent, phosphate coatings commonly were used on galvanized steel prior to painting, but a phosphate coating, because of its crystalline structure and lack of flexibility, was not totally satisfactory as a paint base on galvanized steel that was to be bent or formed after painting. The evidence demonstrates that Oxy Metal's commercial product, "Bonderite 1303" (which is covered by the '007 patent) is superior to phosphate coatings in both bending and formability. Roper itself switched from an acid phosphate coating process (sold by Oxy Metal to Roper as Bonderite 37S) to Oxy Metal's Bonderite 1303. Roper's chemist who oversees metal treatment and painting at the Baltimore, Maryland plant admitted the superiority of Oxy Metal's Bonderite 1303 product over prior phosphate treatments.
Roper used the plaintiff's Bonderite 1303 product before switching in 1979 to the process that Oxy Metal alleges to infringe its patent. From 1964 to March, 1979, Roper purchased Bonderite 1303 materials from Oxy Metal, and used these materials in a method for treating galvanized steel coil stock. During 1972, Roper treated a series of galvanized test panels with a material called "Bondcoat," which it obtained from Heatbath Corporation, and treated a corresponding series of test panels with Oxy Metal's Bonderite 1303 material. Roper subjected the panels to Florida outdoor exposure tests for six or seven years. The results of these tests demonstrated to Roper that the treatment material appeared equivalent from a paint adhesion standpoint. In 1979, primarily for cost reasons, Roper decided to buy Heatbath's Bondcoat material to treat its galvanized steel prior to painting instead of Oxy Metal's Bonderite 1303, and has used Bondcoat materials since that time to pretreat its galvanized steel. When Roper changed from Bonderite 1303 material to Bondcoat, it used generally the same sequence of operations for treating galvanized steel with Bondcoat that it had with Bonderite. In 1979, Oxy Metal offered Roper a license under the '007 patent to practice the method covered by the claims set forth in the patent, but Roper declined to accept the offer. Oxy Metal then filed suit on September 27, 1979.1
1. The Claims—Oxy Metal's '007 or Maurer patent, which is titled "Process of Forming Paint-Base Coatings on Zinc and Zinc Alloy Surfaces," states six "claims" that delimit the bounds of this use patent. Each claim varies slightly, and describes a process which achieves a specified result. Claims 2-6 incorporate Claim 1. As will be discussed later, unauthorized duplication of any one of these processes as described by the claims would constitute infringement of the patent.
Oxy Metal contends that Roper has infringed Claims 4, 5, and 6, and 1, 2, and 3 to the extent that 4, 5, and 6 are dependent upon 1, 2, and 3. Claim 1 of the '007 patent reads as follows:
A method for coating zinc and zinc alloy surfaces which comprises contacting said surface with an aqueous alkaline solution having a pH of at least about 11, which solution contains at least one metal ion other than an alkali metal ion selected from the group consisting of silver, magnesium, cadmium, aluminum, tin, titanium, antimony, molybdenum, chromium, cerium, tungsten, manganese, cobalt, ferrous and ferric iron and nickel, and a complexing agent present in said solution in an amount sufficient to hold said other metal ions in said solution and effecting a reaction between said solution and said metal surface to form a complex oxide paint-base coating on the metal surface, said metal ion selected from the indicated group being present in the treating solution in an amount sufficient to produce a coating quality which enables the thus-produced complex oxide coating to function as a base for paint.
In other words, Claim I describes a chemical solution that effects a reaction with the zinc or zinc alloy surface to form a complex oxide coating which "functions as a base for paint." This solution must have three ingredients:
Claims 2-6, inclusive, expand upon Claim 1:
2. The Bondcoat Process—Oxy Metal alleges that Roper merely has substituted Heatbath's Bondcoat chemicals for the patented Bonderite 1303 chemicals. Roper, however, contends that its Bondcoat process varies from the Bonderite process it used prior to 1979. Accordingly, the current Roper process must be examined closely to determine whether all or part of the '007 patent claims are mirrored in the Bondcoat process. There is little dispute between the parties as to what is involved in the Roper process. They disagree strongly, however, about the characterization of various stages of the process.
The Bondcoat materials supplied by Heatbath Corporation to Roper are in the form of concentrates. The Bondcoat bath is prepared by adding about 90% by volume water to about 10% by volume of Bondcoat concentrate. Bondcoat contains sodium hydroxide, triethanolamine TEA, cobalt nitrate, ferric nitrate, and water. Oxy Metal contends that the TEA functions not only as an alkaline producing agent, but also as a complexing agent designed to maintain the cobalt and iron ions in solution.
The steel passes first through an alkaline cleaning bath to remove oils and extraneous substances and then through a spray water rinse to remove the residual cleaner. Next, if the steel has been supplied to Roper as hot dipped galvanized steel, it passes through an electroplating section with the current turned off so that no further galvanization occurs, but if the steel supplied to Roper has not been previously galvanized, it passes through the electroplating section with the current turned on to electrodeposit a zinc plating.4 In either case, after the galvanized steel passes through the electroplating section, it is again water rinsed. Both the hot dipped galvanized steel and the steel electrogalvanized then...
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