Ransburg Electro-Coating Corp. v. Nordson Corporation, Civ. A. No. 65 C 1195.
| Decision Date | 14 June 1968 |
| Docket Number | Civ. A. No. 65 C 1195. |
| Citation | 293 F. Supp. 448 |
| Parties | RANSBURG ELECTRO-COATING CORP., a Corporation, Plaintiff, v. NORDSON CORPORATION, a Corporation, Defendant. |
| Court | U.S. District Court — Northern District of Illinois |
Hume, Clement, Hume and Lee, Chicago, Ill., for plaintiff.
Hibben, Noyes & Bicknell, Chicago, Ill., for defendant.
1. Plaintiff, Ransburg Electro-Coating Corp., is a corporation incorporated under the laws of the State of Indiana and has its principal office and place of business at 3939 West 56th Street, Indianapolis, Indiana. .)
2. Defendant, Nordson Corporation, is a corporation incorporated under the laws of the State of Ohio, having its principal office and place of business at Amherst, Ohio, and a regular and established place of business at 5350 McDermott Drive, Berkeley, Illinois, within this district. ).
3. This action arises under the patent laws of the United States, 35 U.S.C. Sections 271, 281 et seq. .) The following United States Letters Patent, all owned by plaintiff, are involved:
Patent No. Inventor Date
3,048,498 J. W. Juvinall &
J. C. Marsh August 7, 1962
3,169,882 J. W. Juvinall, E. Kock
& J. C. Marsh February 16, 1965
3,169,883 J. W. Juvinall February 16, 1965
Defendant is charged with directly infringing all the above patents and additionally with actively inducing and contributing to, infringement by others.
4. Acts of defendant complained of by plaintiff as infringements with respect to each patent in suit, including actively inducing infringement and contributing to infringement, have been committed in this district and elsewhere subsequent to the issue date of each patent in suit.
5. The original complaint herein filed on July 16, 1965 named as defendants Nordson Midwestern, Inc. and Marvel Metal Products Co., alleged infringement of United States Letters Patent Nos. 3,048,498, 3,169,882, and 3,169,883 and prayed for injunctive relief and for damages together with costs. The original complaint was dismissed against defendant Marvel Metal Products Co. after it took a license under the patents in suit. Nordson Midwestern, Inc., the original defendant was a sales affiliate of the present defendant, Nordson Corporation. By stipulation between the parties, approved December 21, 1966, Nordson Corporation was substituted for, and in all respects stands in the place of, Nordson Midwestern, Inc. as party defendant.
6. On October 28, 1967, plaintiff, with leave of court, filed an amended complaint naming as defendant Nordson Corporation and alleging infringement of United States Letters Patents Nos. 3,048,498, 3,169,882 and 3,169,883 and praying for injunctive relief and for damages together with costs. Defendant answered the amended complaint on December 5, 1967 denying validity and infringement and asserted that the patents are not enforceable under theories of laches, fraud in the procurement of the patents, and patent misuse. Defendant also filed a counter-claim seeking a declaratory judgment of invalidity and non-infringement and non-enforceability of the patents asserted by the plaintiff.
7. The trial of the case began January 2, 1968, continued for sixteen days, and concluded January 23, 1968. At the beginning of the trial demonstrations were conducted which included the spray coating of articles by prior art methods and apparatus, by commercial methods and apparatus (Tr. 132-160). Both methods and apparatus of plaintiff embodying the inventions of the patents in suit and accused methods and apparatus of the defendant which are being currently marketed and are charged to be infringed, were demonstrated (Tr. 161-186). Both plaintiff and defendant conducted exhaustive pretrial discovery. At the trial plaintiff had three live witnesses (Tr. 189, 2542 and 2742) and relied on the testimony of nineteen deposition witnesses (2617, 3202-3257), and defendant had six live witnesses (1078, 1099, 1115, 1238, 1808 and 2446) and relied on the testimony of ten deposition witnesses (Tr. 1032, 1133, 1204, 1265, 1475, 1493, 1524, 1636, 1754, 2337 and 2422).
8. Prior to 1944, substantially all industrial spray painting was accomplished by non-electrostatic air-spray guns where a small stream of paint forced through an orifice was hit by one or more high-velocity jets of compressed air which both atomized the paint and directed the atomized particles toward the work (article to be painted) (Tr. 200).
9. The principal type of non-electrostatic air-spray gun used prior to 1944 was a metallic gun held in the hand and manipulated by a workman to coat an article. Such a gun is commonly referred to as a "hand gun". Guns were also marketed that were mechanically supported in spaced relation to a conveyor so that articles carried by the conveyor would move past the gun and be painted by the spray emanating from it. Such guns were referred to as "automatic guns". (Tr. 200.)
10. Spray painting with such air-spray guns provided a high quality finish and permitted a reduction in labor costs over conventional hand painting techniques such as with the use of a brush, but spray painting was extremely wasteful of paint. Much of the paint sprayed, rather than being deposited on the work, was carried past the work and lost as "overspray". The term "overspray" describes that portion of the paint sprayed which is not deposited on the surface of the work. Overspray represents a serious waste of paint, is a health hazard, and usually requires the use of relatively expensive overspray collecting equipment to prevent contamination of the factory area. In spraying certain articles with these air-spray guns, as much as 75% of the paint is lost as overspray. (Tr. 133-145.)
11. The large waste of coating material associated with air-spray guns and resulting from "overspray" encouraged the search for spray painting systems which would deposit a greater percentage of the total paint sprayed on the article (the percentage of sprayed paint which is deposited on an article is called "transfer efficiency"). Those working in the art of spray coating concluded that if the particles of paint could be attracted to the article rather than being projected toward or in the direction of the article, the amount of overspray would be substantially reduced. Thus it was determined that the electrostatic attraction phenomena might be advantageously employed in spray painting. By imparting an electrical charge to the spray particles, these particles would be electrostatically attracted to the grounded article to be painted. At least some of the particles that would otherwise be lost in overspray would be deposited on the article and the transfer efficiency of the overall system would be enhanced (Tr. 202-203).
12. The first commercial electrostatic spray painting system was pioneered by Harper J. Ransburg Company, a partnership, and plaintiff's predecessor in the electrostatic spray painting business. The partnership, consisting of Harper J. Ransburg and his three sons, was engaged in the production and sale of kitchen cannisters and other housewares which were spray painted by conventional air-spray guns. Concerned over the large waste of paint in the use of conventional non-electrostatic air spray painting equipment, Harold Ransburg, one of the sons, turned his attention to the reduction of that waste. The outcome of his inventive efforts was the first commercially successfully, automatic electrostatic spray coating process, which is known as the "Ransburg No. 1 Process". (Tr. 140-148, 190-204.)
13. The No. 1 Process, which was introduced commercially in the mid 1940s, employed compressed-air spray guns for spraying paint into an electrostatic field maintained between conveyorized articles and an electrode, comprising an open-ended, fire-wire, cage-like grid structure. Entering the field, the paint particles were electrically charged by bombardment with ions emanating from electrode wires and were urged toward deposition by the effect of the field (Tr. 194-197). The effect of electrostatic forces in reducing overspray loss is manifest not only in actual paint savings, but also by the presence of deposited paint on article surfaces which do not face the gun. This characteristic of electrostatic spray painting is called "Wrap around". (PX 484A, 487; RA 248-251, incl.; Tr. 156-157.)
The No. 1 Process substantially reduced paint losses as compared with the conventional, non-electrostatic air spray system. However, there were still significant paint losses, especially in painting open articles such as tubular metal chair frames and automobile steering wheels (Tr. 145).
14. Ransburg's continued efforts in the electrostatic painting field culminated in another invention, namely the "No. 2 Process". This process entirely eliminated the paint-wasting air blast and, in many applications, almost 100 percent transfer efficiency was attained (Tr. 207-208). One commercial form of the No. 2 Process was an automatic system utilizing a rotating, electrically charged paint atomizer or "head" of bell-like form on the inner surface of which the paint was distributed as a film. An electrostatic field was established between the atomizer and the work. Such field atomized the paint at the bell edge, highly charged the paint and deposited it on the work. (Tr. 207-210.)
15. Both the No. 1 Process and the No. 2 Process found extensive use in industry, but each had certain limitations (Tr. 247). The No. 1...
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