Van Der Horst Corp. v. Chromium Corp.

• Decision Date: 19 June 1951
• Citation: Van Der Horst Corp. v. Chromium Corp., 98 F.Supp. 412 (S.D. N.Y. 1951)
• Parties: VAN DER HORST CORP. OF AMERICA v. CHROMIUM CORP. OF AMERICA.
• Court: U.S. District Court — Southern District of New York

98 F. Supp. 412

VAN DER HORST CORP. OF AMERICA v.CHROMIUM CORP. OF AMERICA.

United States District Court S. D. New York.

June 19, 1951.

COPYRIGHT MATERIAL OMITTED

Jeffery, Kimball & Eggleston, New York City(J. Stanley Preston, New York City, Jerome G. Lee, New York City, of counsel), for plaintiff.

Burgess, Ryan & Hicks, New York City(Newton A. Burgess, H. H. Hamilton, New York City, of counsel), for defendant.

IRVING R. KAUFMAN, District Judge.

Plaintiff, owner of patent No. 2,412,698 issued December 17, 1946 sues for infringement of claims 4, 6, 9, 13 and 22 to 27 of the patent.Hendrik van der Horst, President of the plaintiff corporation, is the inventor named in the patent and plaintiff's assignor, and the patent states that the invention "relates to chromium wearing surfaces, i. e. surfaces subject to friction, and especially cylinder bores."

Dr. van der Horst apparently has been working in the field of chromium surfaces, which are hard and therefore good wearing surfaces, for many years.He patented a chromium surface for pen point tips in Holland in 1933 and one for chromium plated needles in the same year in Great Britian.At about that time he also applied for a patent covering a method of chromium plating the cylinder bores of internal combustion engines, and a patent was issued on this method in the United States on July 21, 1936, numbered 2,048,578.

However this coating of solid or "dense" chromium on cylinder bores was not the ultimate of perfection because of a certain "picking up" action whereby pieces of chromium are torn away from the surface of the cylinder bore and as a result the chromium wears out more rapidly than is desirable.

On March 23, 1943 a patent was issued in the United States covering a method of producing chromium wearing surfaces that would be longer wearing and would avoid the "picking up" action.According to this patent, numbered 2,314,604 and hereafter designated the "process patent", after the chromium is electroplated onto the engine cylinder bore, the current is reversed in the plating bath or electrolytic solution so that the chromium plated cylinder becomes an anode.This "anodizing" or reverse current treatment causes the formation of numerous grooves, pits or depressions in the surface of the chromium so that under working conditions oil is retained in these depressions, friction is reduced and there is no tendency for the chromium to pick up.

The patent in suit is a "product patent" and covers, generally speaking, grooves, pits and depressions in chromium wearing surfaces.The claims of the patent in suit which it is alleged defendant infringed are as follows:

"4.A member having a surface to engage in moving contact with another member, said surface of the first mentioned member consisting of chromium and the body of said first mentioned member being formed of another material, and there being in the exposed surface of the chromium grooves, pits or other depressions to contain lubricant, the distribution, number, size and depth of said grooves, pits or depressions being at least as great approximately as the distribution, number, size and depth of those grooves, pits or depressions which result from passing a current through an electroplated chromium surface, in an electrolyte, and in such a direction that the chromium is an anode, until from about 150 to about 450 ampere-minutes of electricity per square decimeter of the surface has passed through the surface and thereafter honing the surface to finish.

"6.A wearing member having a face of chromium to operate in frictional contact with another wearing member, there being a multitude of small depressions in said face and the bottoms of at least many of said depressions being irregular, the irregularities of such bottoms being of microscopic dimensions but of sufficient size to be measurable under a magnification of 100 diameters.

"9.A wearing member having a face of chromium to operate in frictional contact with another wearing member, there being in said face a multitude of depressions at least some of which, as observable looking directly at the face, are more than about 0.00015 inch and less than about 0.004 inch in width and few if any are more than about 0.0125 inch in width.

"13.The subject matter of claim 8 characterized by the fact that the major number of said depressions are more than 0.0002 inch deep.

"22.A wearing member having a face of chromium to operate in frictional contact with another wearing member, said face being composed primarily of interspersed plane and major depressed areas, at least many of said major depressed areas having projections rising from their bottoms and forming small cavities.

"23.A wearing member having a face of chromium to operate in frictional contact with another wearing member, said face being composed primarily of interspersed plane and major depressed areas, at least some of the major depressed areas being more than about 0.00015 inch and less than about 0.004 inch in maximum width.

"24.A wearing member having a face of chromium to operate in frictional contact with another wearing member, said face being composed primarily of interspersed plane and major depressed areas, at least some of the major depressed areas being less than about 0.004 inch in maximum width and the widest being between about 0.002 inch and about 0.0125 inch in maximum width.

"25.A wearing member having a face of chromium to operate in frictional contact with another wearing member, said face being composed primarily of interspersed plane and major depressed areas, the major depressed areas being of various widths, the narrowest of them being between about 0.0001 inch and about 0.004 inch in maximum width, and the widest of them being between about 0.002 inch and about 0.0125 inch in maximum width.

"26.The subject matter of claim 22 characterized by the fact that the said major depressed areas occupy between six percent and seventy-five percent of the total area of the face.

"27.The subject matter of claim 22 characterized by the fact that at least the larger number of said major depressions are between about 0.0001 inch and about 0.003 inch deep."

I.Infringement

The first question to be determined is whether defendant infringes.In the case of Graver Tank & Mfg. Co. v. Linde Air Products Co., 1950, 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097, the Supreme Court stated that: "In determining whether an accused device or composition infringes a valid patent, resort must be had in the first instance to the words of the claim.If the accused matter falls clearly within the claim, infringement is made out and that is the end of it."339 U.S. at page 607, 70 S.Ct. at page 855.

However, even if there is not exact duplication, infringement may still be established.As Mr. Justice Jackson, speaking for the Court, continued in the Graver case, 339 U.S. at pages 607-609, 70 S.Ct. at page 856:

"But courts have also recognized that to permit imitation of a patented invention which does not copy every literal detail would be to convert the protection of the patent grant into a hollow and useless thing.Such a limitation would leave room for — indeed encourage — the unscrupulous copyist to make unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would be enough to take the copied matter outside the claim, and hence outside the reach of law.One who seeks to pirate an invention, like one who seeks to pirate a copyrighted book or play, may be expected to introduce minor variations to conceal and shelter the piracy.Outright and forthright duplication is a dull and very rare type of infringement.To prohibit no other would place the inventor at the mercy of verbalism and would be subordinating substance to form.It would deprive him of the benefit of his invention and would foster concealment rather than disclosure of inventions, which is one of the primary purposes of the patent system.

"The doctrine of equivalents evolved in response to this experience.The essence of the doctrine is that one may not practice a fraud on a patent. * * *

"`To temper unsparing logic and prevent an infringer from stealing the benefit of an invention' a patentee may invoke this doctrine to proceed against the producer of a device `if it performs substantially the same function in substantially the same way to obtain the same result.'Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42, 50 S.Ct. 9, 13, 74 L.Ed. 147.The theory on which it is founded is that `if two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form or shape.'Union Paper-Bag Machine Co. v. Murphy, 97 U.S. 120, 125, 24 L.Ed. 935.* * * Today the doctrine is applied to mechanical or chemical equivalents in compositions or devices. * * *" See also Walker on Patents, Sections 464-480.

The alleged infringing devices in this action are two engine cylinders, plaintiff's Exhibits 8 and 9, which the Court finds were plated with porous chromium (i. e. chromium with depressions) by the defendant.Plaintiff's Exhibits 37 and 38 are photographs of portions of the surfaces of one of these cylinders (Exhibit 9)at 50 magnifications, and Exhibits 23, 24, 26, 27, 28 and 29 are plane and cross-sectional photographs of areas of the other cylinder (Exhibit 8).

With the aid of a simple ruler (divided into tenths of an inch) it is apparent that the depressions in defendant's cylinders infringe upon the dimensions and descriptions of depressions found in claims 6, 9, 13 and 22-27.The defendant's depressions are mainly towards the upper limits and to some extent beyond plaintiff's ranges of sizes, but since few depressions are more than about .0125 of an inch in width, the defendant technically infringes upon the ranges of sizes and depth of the depressions as specified in plaintiff's claims...