Reynolds Metals Co. v. Aluminum Co. of America
| Decision Date | 06 June 1978 |
| Docket Number | No. S 74-172.,S 74-172. |
| Citation | 457 F. Supp. 482 |
| Parties | REYNOLDS METALS COMPANY, a corporation, Plaintiff, v. ALUMINUM COMPANY OF AMERICA, a corporation, and National Can Corporation, a corporation, Defendants. |
| Court | U.S. District Court — Northern District of Indiana |
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Franklin A. Morse, II, Thornburg, McGill, Deahl, Harman, Carey & Murray, South Bend, Ind., John W. Malley, William T. Bullinger, Sherman O. Parrett, Cushman, Darby & Cushman, Washington, D. C., John F. C. Glenn, Patent Counsel for Reynolds Metals Co., Richmond, Va., for plaintiff.
John J. Lorber, South Bend, Ind., Robert E. Isner, Richard C. Conover, Nims, Howes, Collison & Isner, New York City, Carl R. Lippert, Legal Dept., Patent Div., Alcoa Center, Pa., Robert T. Teeter, Patent Counsel, ALCOA, Legal Dept., Patent Div., Alcoa Center, Pa., for defendant Aluminum Co. of America.
James H. Pankow, Milton A. Johnson, South Bend, Ind., Walter J. Blenko, Jr., James C. Valentine, Blenko, Buell, Ziesenheim & Beck, Pittsburgh, Pa., Robert A. Stenzel, Corporate Patent Counsel, National Can Corp., Chicago, Ill., for defendant National Can Corp.
FINDINGS OF FACT
CONCLUSIONS OF LAW
This Court has determined to include all of the above items in this one document in the interest of clearly stating in one place the factual conclusions and the legal reasons therefore in this protracted and hotly contested case.
This case was tried to the Court without a jury during fifteen trial days by most able and experienced counsel. The Court heard extended oral argument for one full day and has entertained and carefully considered briefs and proposed findings and conclusions.
This shall constitute the findings of fact and conclusions of law as required by Rule 52 of the Federal Rules of Civil Procedure.
Plaintiff Reynolds Metals Company (hereinafter "Reynolds") is a Corporation of the State of Delaware and is a resident of and has its principal place of business in Henrico County, Virginia, Henrico County, Richmond, Virginia, and is the owner and assignee of the United States Letters Patent No. 3,691,972 entitled "Aluminous Metal Articles and Method" which issued on September 19, 1972 in the name of Linton D. Bylund (hereinafter the '972 Bylund patent) and United States Letters Patent No. 3,814,590 entitled "Aluminous Metals Articles and Aluminum Base Alloys" which issued on June 4, 1974 in the name of Linton D. Bylund (hereinafter the '590 Bylund patent).
Defendant, Aluminum Company of America (hereinafter "Alcoa"), is a corporation of the State of Pennsylvania and has a regular and established place of business at South Bend, Indiana, within this district.
Defendant, National Can Corporation (hereinafter "National"), is a corporation of the State of Delaware, and has a regular and established place of business at LaPorte, Indiana, also within this district.
This action arises under the patent laws of United States Title 35, United States Code, and including Sections 271 and 281 et seq.
Jurisdiction is conferred on this Court by Title 28 of United States Code, Section 1338 and is conceded by counsel for the parties.1
The acts complained of have been committed, inter alia, in the Northern District of Indiana and venue is proper under Title 28, United States Code, Section 1400(b).
The '972 Bylund patent relates to aluminum foil and other articles including drawn and ironed can bodies produced from aluminum base alloys containing up to 2.5% iron and which have a low work hardening rate above 75% reduction and/or which exhibit sufficient ductility at high cold work levels to permit cold working to the extent of at least 90% without the necessity of annealing or stress relieving PRM 20662. The Bylund patent was based on an application Serial No. 889,790, filed in the United States Patent Office on July 9, 1970, which application was a division of application Serial No. 712,314, filed on January 16, 1968, now United States Patent No. 3,571,910, which application was a division of Serial No. 660,132 which was a continuation-in-part of a now abandoned application Serial No. 573,776, filed in the United States Patent Office on August 8, 1966 and which was in turn a continuation-in-part of a now abandoned application Serial No. 379,782, filed in the Patent Office on July 2, 1964.
The '590 Bylund patent was based on a United States patent application, Serial No. 234,780, filed in the United States Patent Office on March 15, 1972, which is a division of application, Serial No. 889,790, filed in the Patent Office on July 9, 1970, now United States Patent No. 3,691,972, which was a division of application Serial No. 712,314, filed in the United States Patent Office on January 16, 1968, now United States Patent No. 3,571,910, which was a division of United States patent application Serial No. 660,132, filed in the United States Patent Office on August 11, 1967, now Patent No. 3,397,044, which was a continuation-in-part of a now abandoned United States patent application Serial No. 573,776, filed in the United States Patent Office on August 8, 1966, which in turn was a continuation-in-part of a now abandoned United States patent application Serial No. 379,782, filed in the United States Patent Office on July 2, 1964.
Defendants have answered the second amended complaint and have denied all allegations concerning the infringement of the patents in suit and have also denied the validity of and enforceability of the patents in suit.
Defendant Alcoa has counterclaimed under the patent laws for declaratory judgment of non-infringement, invalidity and non-enforceability, as to each of the patents in suit and has further alleged that Reynolds' assertion and utilization of the patents in suit are violations of the laws of the United States and are contrary to the public policy of the United States. Reynolds has denied these allegations. Defendant National has counterclaimed under the patent laws that the patents in suit are invalid, not infringed, and have been misused and are unenforceable. Defendant National has also counterclaimed under the antitrust laws alleging that Reynolds has sought to monopolize trade and commerce on drawn and ironed cans and unpatented aluminum sheet, a stable article of commerce. Reynolds has denied these allegations.
The chronology of Bylund Inventions and patent applications filed in the United States Patent Office has been provided to the court in graphic form. The Court now adopts the same and incorporates same here as evidenced by the attached appendix A.
The inventor of the patents in suit, Linton D. Bylund, is a metallurgist who has been working for Reynolds Metals since 1946. He testified and was cross-examined for three or more days at the trial. To the extent that it matters this Court finds Mr. Bylund to be highly credible. During long and vigorous cross-examination by most adroit counsel Mr. Bylund's credibility remained intact. Between 1946 and 1951, Bylund worked as a metallurgist for various Reynolds plants, and in 1951 was transferred to the Metallurgical Engineering Division in Richmond, Virginia. Tr. 468-470 This Division is a small department, never numbering more than five or six metallurgists, and serves in a corporate staff function.
In 1962, Mr. Bylund was spending the majority of his time working on metallurgical aspects of light gauge aluminum foil. The sales people at Reynolds had asked the Metallurgical Engineering Division to see what could be done by way of making a stronger "Reynolds Wrap", the household aluminum foil being made and sold by Reynolds. Bylund got the idea that an aluminum-iron type alloy might provide just such a stronger foil, and proceeded to have one made to try out the idea. Tr. 475 The particular alloy he proposed was one called MD79. In experiments with this MD79 it was found that it did not result in any significant increase in the strength of the foil. However, Bylund noted something very unusual and very interesting about this MD79 alloy. As it was rolled down to very light foil gauges, it was found that the MD79 did not work harden normally, and indeed had a zero work hardening rate at high cold work levels around 90% reduction. Tr. 486
By April of 1964 Mr. Bylund had discovered that this unusual behavior of the work hardening characteristics of MD79 could be exploited so as to result in more economical foil production. Specifically, he discovered that the MD79 could be rolled down to very thin foil gauge, without resorting to the conventional annealing heat treatments that had been used previously to periodically soften aluminum as it was being rolled. A patent application directed to the use of the MD79 for foil was filed in July, 1964. PRM 2056 This patent application contained drawings illustrating the unusual zero work hardening rate of the MD79 alloy. As Mr. Bylund testified, and as is apparent from his subsequent actions, his work in the foil area instilled in him a keen interest in the behavior of aluminum alloys at high cold work levels. Tr. 509-513
During 1964-1965, Bylund's department at Reynolds had also begun to get somewhat involved in the metallurgical problems that the Reynolds Can Division was having in manufacturing drawn and ironed cans. The Can Division was experiencing low efficiencies in that some of the aluminum alloy sheet received from the Reynolds' rolling mills ran very well in the draw and iron presses and some did not. Work was going forward to isolate and correct the variables in the aluminum sheet that led to the variable performance. Mr. Bylund, along with other members of the Metallurgical Engineering Division, was involved in this work to the extent of serving as liaison between the Reynolds Can Division and the rolling mills that were fabricating the aluminum sheet, and trying to bring in ideas that might help the situation. Tr. 496-498 The...
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