Proler Steel Corporation, Inc. v. Luria Brothers & Co.

• Decision Date: 31 October 1969
• Docket Number: No. 22495,22495
• Citation: 417 F.2d 272
• Parties: PROLER STEEL CORPORATION, INC., Appellant, v. LURIA BROTHERS & CO., Inc., et al., Appellees.
• Court: U.S. Court of Appeals — Ninth Circuit

417 F.2d 272 (1969)

PROLER STEEL CORPORATION, INC., Appellant, v. LURIA BROTHERS & CO., Inc., et al., Appellees.

Nos. 22495, 22495-A.

United States Court of Appeals Ninth Circuit.

September 25, 1969.

As Modified on Denial of Rehearings October 31, 1969.

John L. McConn, Jr. (argued), of Butler, Binion, Rice, Cook & Knapp, Houston, Tex., Harris, Kiech, Russell & Kern, Donald C. Russell, Los Angeles, Cal., for appellant.

Eben M. Graves (argued), and Frederick C. Carver, of Brumbaugh, Free, Graves & Donohue, New York City, McCutchen, Black, Verleger & Shea, Max K. Jamison and Joseph R. Austin, Los Angeles, Cal., for appellee.

Before DUNIWAY and CARTER, Circuit Judges, and CROCKER^*, District Judge.

DUNIWAY, Circuit Judge:

Proler Steel Corporation, Inc., plaintiff, appeals from a summary judgment for defendants in a patent infringement suit. The patent is the Proler reissue patent, Re. 25,034. Claim 9 is the only claim that is involved. It is conceded that defendants do not infringe claims 1 through 8 or claim 10. The trial court held that claim 9 is invalid on a number of grounds, and that defendants do not infringe it, assuming that it is valid. We hold that claim 9 is invalid as a matter of law, for want of invention, and we therefore do not pass upon any of the other questions presented.

On this appeal, plaintiff urges that it was error to grant summary judgment because there are genuine issues of material fact, so that there must be a trial. It does not say that on this record, claim 9 of Re. 25,034 must be found valid as a matter of law.

1. Summary judgment in a patent case.

The propriety of granting summary judgment depends upon whether "there is no genuine issue as to any material fact and * * * the moving party is entitled to a judgment as a matter of law." Rule 56(c), F.R.Civ.P. It is well settled, in this and other circuits, that summary judgment, holding a patent claim invalid, is proper if the foregoing requirements are met. We cite only cases decided by this court. Groen v. General Foods Corp., 9 Cir., 1968, 402 F.2d 708, 709-710; Barofsky v. General Elec. Corp., 9 Cir., 1968, 396 F.2d 340; Henderson v. A. C. Spark Plug Div. of General Motors Corp., 9 Cir., 1966, 366 F.2d 389, 393-394; Walker v. General Motors Corp., 9 Cir., 1966, 362 F.2d 56, 59-60; Rankin v. King, 9 Cir., 1959, 272 F.2d 254, 258. And see Super Mold Corp. v. Clapp's Equip. Div. Inc., 9 Cir., 1968, 397 F.2d 932; Fromberg, Inc. v. Gross Mfg. Co., 9 Cir., 1964, 328 F.2d 803; Engelhard Industries, Inc. v. Research Instrumental Corp., 9 Cir., 1963, 324 F.2d 347; Hovlid v. Asari, 9 Cir., 1962, 305 F.2d 747. Cf. Bentley v. Sunset House Distrib. Corp., 9 Cir., 1966, 359 F.2d 140. As is pointed out in some of the foregoing cases, it is not error to grant summary judgment even though there be some issues of fact presented in the affidavits or other evidence before the court. The issues must be "of material fact"; if they are not, summary judgment is proper.

2. The patent claim in suit.

Claim 9 of Re. 25,034, reads as follows:

"9. Process of refining a raw ferrous bearing scrap material comprising 1. shredding the raw material, 2. separating the more ferrous bearing shredded material from the less ferrous bearing shredded material, and 3. individually compacting and balling up the pieces of the more ferrous bearing shredded material to densify it while maintaining the individuality of the separate pieces, whereby a fluent mass is obtained."

(We have inserted numbers in brackets for ready reference to the three steps involved in the process.)

This is a claim to a process, not to the product of the process, i. e., the "fluent mass" of refined ferrous scrap. Re. 25,034 is an August 29, 1961 reissue of patent No. 2,943,930, awarded to Sam Proler on July 5, 1960, pursuant to an application first filed August 12, 1957. The reissue added claims 9 and 10 to the original patent; it makes no changes whatever in the drawings and specifications.

The purposes of the invention are described in the patent as follows (in part):

"A particular object of the invention is to convert material heretofore suitable only for making what is known in the trade as a number 2 or number 3 scrap bale into a material equivalent or superior to a number 1 bale of scrap. * * *

"A further object of the invention is to produce a flowable material, analogous to graded hard coal or rock, which can readily be handled by conventional continuous conveyors such as augers or buckets or belts, as distinguished from unitized bales requiring individual handling."

Briefly stated, the example of the process described in the specifications involves 4 steps, and consists of the following: (1) cutting and shredding worn out whole automobiles, stoves, refrigerators and other things made principally out of steel, in a hammer mill, thereby reducing the material to pieces that will pass through grates having openings with dimensions from 6" × 10" up to a maximum of 12", (2) separating the nonferrous material from the ferrous by means of a magnetic separator, (3) roasting the separated ferrous material at temperatures from 1300° to 1600° F. to burn off paper, wood, grease, oil, paint, rubber, and other combustibles, to melt off tin, lead and other nonferrous materials, and to crack off porcelain and other stonelike finishes, and (4) running the ferrous material through rollers to reduce the dimensions of the pieces, thereby achieving a density of a mass of the pieces of about 50 pounds per cubic foot. Trommelling after roasting to separate out freed nonferrous material and again after rolling, plus further magnetic separation, are described as additional but not necessary steps. The patent describes the product as follows:

"It is a high quality material suitable for charging all types of steel furnaces. By virtue of the process it is substantially free of loose and adhered nonferrous material and has a maximum piece dimension less than one foot with the possible exception of a few bars which may have escaped cutting into shorter lengths in the hammer mill and gone through its grate end-wise. It will have a density of at least 50 pounds per cubic foot and usually more in the vicinity of 60 pounds per cubic foot or even higher * * * there is produced at low cost a refined scrap material product that is comparable or superior to number 1 scrap bales for which there is great demand as a furnace charging material. The material is suitable for either direct feed into a steel furnace, or into hot metal from a blast furnace or into a blast furnace directly along with the ore to increase the yield. It is suitable for use in all types of furnaces."

All of the claims in the original patent, except claim 2 describe the process in terms of all four of the foregoing steps. Claim 2 purports to cover the product of the four step process described in claim 1. Claim 5 adds a fifth step, a second magnetic separation after roasting. Claims 1, 3, 4 and 5 do not specify specific means. Claims 6 and 7 and, claim 10, specifically describe the use of a rolling mill to accomplish the fourth step, which is step 3 of claims 9 and 10. Claim 10 was added by the reissue, but, like claims 1 to 8, is not here involved. Claim 9, like claim 10, but unlike any of the original claims, omits the third, roasting, step.

Defendants produce a comparable product. They admittedly use the first step, shredding the raw material, which they do in a hammer mill, and the second step, separating the ferrous material from the nonferrous, which they do by means of a magnetic separator. They then take the larger pieces of the shredded ferrous materials and put them back in the hammer mill, where they are further reduced in size. There is evidence that the hammer mill shreds some pieces and compacts or balls up others. Defendants call this "recycling." Plaintiff says that it is the same as its step 3, "individually compacting and balling up the pieces of the * * * shredded material to densify it while maintaining the individuality of the separate pieces." This is the claimed infringement, a question that we do not reach.

The affidavits and other evidence disclose the background of the claimed invention. The problem of what to do with worn out automobiles and other manufactured goods which principally contain iron and steel has long plagued the processors and users of scrap iron and steel. The iron and steel in such goods would be very valuable if it could be recovered efficiently and delivered to the steel manufacturers in a form which could be used readily in the making of new steel. For decades the best known method for processing such material was to drop the articles (which contain about 20 per cent of impurities, including nonferrous metals), into a large press which mashed everything together into a solid bulky bundle or bale, known as a No. 2 bale, which often weighed more than a ton. The acceptability of these bundles declined over the years because they were cumbersome and caused breakage when dropped into steelmakers' furnaces, because steelmakers were unable to determine the impurities in the bundles, and because the bundles would not fit compactly into the furnace so that it was difficult to get a high enough weight of steel in a single charge for efficient operation of the furnace.

In 1935 Clarence M. Gregg filed a patent application which ultimately issued as patent No. 2,059,229 on a process which he thought would solve these problems. This process consisted of (1) shredding the pieces of obsolete scrap in a hammer mill, which also resulted in the loosening of the nonferrous materials, (2) separating the ferrous from the nonferrous materials by a magnetic blanket, and (3) putting the separated ferrous materials into a baling press where they were interlocked in a bale or bundle. This process was abandoned as an economic failure.

Plaintiff concedes that hammer mills, magnetic separators, and rollers are old and...