Ransburg Electro-Coating Corp. v. Proctor Electric Co.

• Decision Date: 15 March 1962
• Docket Number: Civ. A. No. 10181.
• Citation: 203 F. Supp. 235
• Parties: RANSBURG ELECTRO-COATING CORPORATION, a corporation, Plaintiff, v. PROCTOR ELECTRIC COMPANY, Inc., a corporation, and Ionic Electrostatic Corporation, a corporation, Defendants.
• Court: U.S. District Court — District of Maryland

203 F. Supp. 235

RANSBURG ELECTRO-COATING CORPORATION, a corporation, Plaintiff, v. PROCTOR ELECTRIC COMPANY, Inc., a corporation, and Ionic Electrostatic Corporation, a corporation, Defendants.

Civ. A. No. 10181.

United States District Court D. Maryland.

March 15, 1962.

G. C. A. Anderson, Anderson, Barnes & Coe, Baltimore, Md., James P. Hume, Howard W. Clement, Byron, Hume, Goen & Clement, Chicago, Ill., for plaintiff.

Everett L. Buckmaster, Buckmaster, White, Mindel & Clarke, Baltimore, Md.; Stanton T. Lawrence, Jr., W. Brown Morton, Raymond B. Canfield, Pennie, Edmonds, Morton, Barrows & Taylor, New York City; Herbert J. Smith, Garfield, N. J., of counsel, for defendants.

R. DORSEY WATKINS, District Judge.

This case involves claims by plaintiff for infringement of patents relating to electrostatic spray-coating systems, and counterclaims by defendants for declarations that said patents are invalid, and are not infringed. The actual devices developed by plaintiff and defendants are used solely in the field of electrostatic painting, and except with respect to a discussion of the prior art, only that field need be considered.

Background — Parties.

Plaintiff Ransburg Electro-Coating Corporation (plaintiff, or Ransburg) is an Indiana corporation organized on January 1, 1948, with its principal office and place of business in Indianapolis, Indiana. It was preceded in business by a partnership of Harper J. Ransburg and his sons Harold, Gregg and Edwin. Plaintiff owns the patents in suit, relating to methods and apparatus for electrostatic spray painting.

Defendant Proctor Electric Company, Inc. (Proctor) is a Pennsylvania corporation with a regular place of business in Baltimore, Maryland. It is a purchaser and user of certain alleged infringing devices, its acts having occurred in the District of Maryland.

Defendant Ionic Electrostatic Corporation (Ionic) is a New Jersey corporation. It was organized in May 1957 by John Sedlacsik, Sr., and his son, John Sedlacsik, Jr., doing business in the manufacture and sale of various types of electrical equipment. Ionic markets airless electrostatic spray-coating equipment. It has no place of business within the District of Maryland, but voluntarily entered its appearance, answered the original complaint, and has conducted the defense for both defendants.

Background — Painting.

In addition to the use of the familiar paint brush, many articles have for a number of years been, and are being, satisfactorily painted by dipping, roller coating, flow coating, and spraying. We are concerned only with the problems associated with spray-coating.

For many years, painting has been done with compressed air spray guns. Paint is brought to a head or nozzle and subjected to compressed air which "atomizes"¹ the paint and projects or propels the atomized particles for deposition upon the articles to be painted. A skilled operator can closely control the size of the particles, and produce an excellent finished product. However, some of the particles fall short of the mark; and as the air must escape, a substantial volume of paint is carried away as "overspray" from, and misses, the target. Moreover, where the article to be coated is not solid and flat, the method is still less efficient. Health and safety considerations require the use of spray-booths, exhaust systems, and often, paint-recovery apparatus.

Paint losses in the use of compressed air spray guns may amount to sixty per cent, more or less, of the paint sprayed.

The Ransburg partnership had developed, and since 1944 had been marketing,² a patented improvement on the old compressed-air spray-gun method. This process was and is generally referred to as the "No. 1 Process." A conventional compressed air spray gun was used, but after atomization the atomized particles were directed toward and exposed to an electrostatic field maintained between a fine wire electrode and the articles to be painted, which were maintained at ground potential. To the extent that such particles received an electrical charge, they would be "urged" by electrostatic forces toward deposition on the work. The system represented a decided improvement over the compressed air gun, and effected a saving of about fifty per cent of the paint previously lost. However, not all the particles "atomized" received a charge, or a sufficient charge, to guide them to the work; and in some instances the force imparted in atomization, or by the current of air, was sufficient to result in overspray. Equipment such as spray-booths, exhaust systems, and paint recovery apparatus were still necessary.

Thought was given to methods of controlling or eliminating the current of air. The impetus toward the methods and apparatus in suit was adventitious. An exhibit of the No. 1 System was being prepared, consisting of a platform on which was mounted the electrostatic spray grid, the spray gun, a spray booth, and the high voltage supply to the grid. An employee of the Ransburg partnership was standing on the platform, ironically enough preparing to put the finishing touches on the booth with a conventional paint brush, when he noticed that the paint was leaving the bristles in a fine spray, and was being deposited on an opposed grounded metal surface. This was reported to the partnership, and an analysis disclosed that the painter was standing on a wooden platform, holding the brush near the charged grid, and the paint on the brush had been subjected to the field between the grid and the grounded metal. This suggested an airless atomization and deposition, and led to further work resulting in the patents in suit.³

The Patents in Suit.

In the original complaint, infringement of four patents was alleged. Thereafter, leave was granted to file a supplemental complaint charging defendants with infringement of two newly issued patents, and substituting a reissue patent for an originally issued one. Defendants counterclaimed for declarations of invalidity and noninfringement as to all these patents. Plaintiff withdrew charges of infringement of Patent No. 2,658,472, and stated for the record in open court that no suits on this patent would be brought, or threats of suit be made against the defendants or any claiming through or under them with respect to any apparatus then in use by either defendant. There is no evidence, or proffer with respect thereto, as to the validity vel non of Patent No. 2,658,472, and no declaration with respect to validity will be entered in this case.⁴

The patents presently in suit, all owned by plaintiff, are:

                Patent No.               Patentee                          Issued
                2,685,536     W. A. Starkey and E. M. Ransburg           Aug. 3, 1954
                2,794,417     W. A. Starkey and E. M. Ransburg           June 4, 1957
                2,893,893     W. W. Crouse                               July 7, 1959
                2,893,894     E. M. Ransburg                             July 7, 1959
                Re.24,602     C. C. Simmons                              Feb. 17, 1959
                              (a reissue of original patent 2,808,343
                              issued Oct. 1, 1957)
                

Of these, the following claims are:

                                                                            Typical
                Patent No.    Claims Allegedly Infringed                    Claims
                2,685,536     1 - 11                                     4, 10
                2,794,417     3 - 4                                      3, 4
                2,893,893     1, 2, 3, 5, 6, 8 - 10                      2, 9
                2,893,894     1 - 8                                      1, 7
                Re.24,602     1, 6 - 10, 12, 13, 15 - 21                 8, 13, 15, 20
                

For reading convenience, the "typical claims" are printed as Appendix A.

Plaintiff claims that the patents in suit disclose methods and apparatus in which, for the first time, in an airless electrostatic field, the paint is made the electrode and electrostatically atomized, or that at least the paint is charged and atomized at the point of highest field intensity, is at the moment of atomization given a "built-in" charge, and that the electrostatic field thereupon disperses the particles, and deposits them upon the work.

The methods claimed by plaintiff have been highly successful commercially. Substantially one-hundred per cent of paint used is deposited upon the work. Over 500 licenses exist, from which plaintiff derives $2,000,000 to $3,000,000 annually in royalties.

Defendants have introduced the usual defenses of invalidity and noninfringement. As is to be expected of competent counsel (and not to be discounted because of lack of "novelty"), these have encompassed the aspects of anticipation, lack of novelty, misuse of patent monopoly, lack of adequate disclosure, indefiniteness and excessive breadth of claims and double patenting. As to the scope of the patents, if valid, and on the question of infringement, defendants raise the issue of file wrapper estoppel. With respect to scope of the patents, and infringement, defendants contend that the patents, if valid, are limited to those applications in which electrostatic forces are the sole source of atomization, dispersion and deposition. Otherwise stated, defendants claim that no infringement occurs if, specifically, centrifugal force plays any part, no matter how small, in either and/or atomization, dispersion or deposition. These contentions make it more than usually difficult to departmentalize the treatments of validity and infringement.

During the trial of the case, and at its conclusion, the court of record stated to counsel the principal problems the court believed to be involved, and an adequate opportunity was given counsel to brief these and any other questions, and thereafter some two days of oral argument were allowed. As a result, some narrowing of the issues resulted. The defense of misuse of the patent monopoly was not formally abandoned, but was not pressed, and the court finds that there is no legally sufficient evidence to support this defense. The claim of anticipation by...