Warner v. Tennessee Products Corporation

• Decision Date: 05 April 1932
• Docket Number: No. 5851.,5851.
• Parties: WARNER v. TENNESSEE PRODUCTS CORPORATION.
• Court: U.S. Court of Appeals — Sixth Circuit

57 F.2d 642 (1932)

WARNER v. TENNESSEE PRODUCTS CORPORATION.

No. 5851.

Circuit Court of Appeals, Sixth Circuit.

April 5, 1932.

Ed T. Seay, of Nashville, Tenn., and John Boyle, Jr., of Washington, D. C., for appellant.

C. P. Hatcher, of Nashville, Tenn., and S. E. Darby, of New York City (Pitts, McConnico & Hatcher, of Nashville, Tenn., on the brief), for appellee.

Before MOORMAN and HICKENLOOPER, Circuit Judges, and HAHN, District Judge.

HICKENLOOPER, Circuit Judge.

Appellee brought action in the court below for an infringement of patent No. 1,220,416, for a process of making ferrophosphorus in a blast furnace, granted March 27, 1917, to one J. J. Gray, Jr., and subsequently assigned to the appellee, hereinafter referred to as complainant. On July 10, 1924, the patentee Gray had filed a bill of complaint against the present appellant, defendant below, charging infringement of the same patent now in suit. Such action was fully tried and submitted to the court, but before decision was rendered the parties agreed upon a consent decree adjudicating the patent valid and infringed, and adjusting the matter of profits and damages. Thereafter Gray assigned the patent to the present complainant.

It is conceded by the defendant, and in view of the authorities the rule could not well be otherwise, that this adjudication in 1924, although by consent, constitutes an estoppel by judgment binding upon the parties or their privies, and that all questions of law and fact distinctly put in issue and determined by the decree cannot be disputed in a subsequent suit between such parties or their privies. Southern Pacific R. Co. v. U. S., 168 U. S. 1, 18 S. Ct. 18, 42 L. Ed. 355; Nashville, C. & St. L. R. Co. v. U. S., 113 U. S. 261, 5 S. Ct. 460, 28 L. Ed. 971; Ingraham Co. v. Germanow, 4 F.(2d) 1002 (C. C. A. 2); Vapor Car Heating Co. v. Gold Car Heating & Lighting Co., 7 F. (2d) 284, 287 (C. C. A. 2). Cf. Hart Steel Co. v. Railroad Supply Co., 244 U. S. 294, 37 S. Ct. 506, 61 L. Ed. 1148. It is therefore wholly unnecessary for us to determine the question of the validity of the patent in suit, or whether the process practiced by the defendant in 1924 should properly have been considered an infringement. Had Gray not assigned the patent to complainant, presumably the present questions would have been raised in contempt proceedings (Leman et al. v. Krentler-Arnold Hinge Last Co., 284 U. S. 448, 52 S.Ct. 238, 76 L. Ed. ___), and then the principal question for our determination would have been, as it is now, whether the process practiced at the later date (1929) was essentially and substantially the same as the process adjudicated an infringement in 1924. Roberts Cone Mfg. Co. v. Bruckman, 266 F. 986 (C. C. A. 9). Cf. Buckeye Incubator Co. v. Boling, 46 F.(2d) 965 (C. C. A. 6).

It is the contention of the defendant that at the time of the alleged infringement of 1929 he was practicing the two-step process covered by patent No. 1,646,268, granted to him October 18, 1927; that the patent in suit was one in an already crowded art, purporting to be merely an improvement over the process disclosed in the prior patent to Gray, No. 831,427, September 18, 1906; that the claims in suit, although accepted as valid, must therefore be strictly construed as limited to a one-step process made operable only by the use in the burden of the blast furnace of an extra charge of coke every fifth charge, followed immediately by a straight pig iron charge; and that, when the claims are so construed, it is apparent that they are not infringed, for the simple reason that the defendant did not use the extra charge of coke every fifth charge, or the pig iron charge which followed it.

Except for the estoppel above mentioned, the defendant's argument would have much to commend it. Ferrophosphorus is an alloy of iron and phosphorus. In order to be merchantable it must contain at least 17 per cent. of phosphorus, and throughout the record it is apparently assumed that the patent in suit is limited to production of the commercial product. That which contains less than 17 per cent. phosphorus is spoken of as "off-ferrophosphorus." In the ordinary pig iron operation of a blast furnace the furnace is charged with suitable quantities of iron ore and limestone. The heat necessary to reduce the iron ore and limestone to their elemental ingredients is supplied by the ignited coke to which a blast of superheated air is transmitted. Limestone is used to the end that its lime content may flux the silicates contained in the iron ore. The result is a molten slag which may be drawn off through tap holes. The elemental iron passes through the burden of the furnace to its bottom or hearth, whence it is likewise drawn off and cast into pigs. In his first patent, No. 831,427, Gray disclosed a process for producing ferrophosphorus by substituting phosphate rock (phosphate of lime) for limestone and smelting the mixture. In practicing this process it is obviously necessary to increase greatly the quantity of phosphate rock, over the limestone previously used in the pig iron practices, in order to secure the desired quantities of phosphorus in the resulting alloy. The patent says nothing as to any increase in the coke content of the charge, except that "it should be noted that care must be exercised in the operation of the furnace to obtain the desired phosphorus content and the heat and blast regulated from time to time to adapt them to the varying conditions of the furnace, as will be understood by those skilled in the art," but it is apparent that if the quantity of rock to be reduced be largely increased, a corresponding increase in the heat-producing coke must be made. The increase in the quantity of phosphate rock also resulted in a marked increase in the lime content, requiring the addition of silicious material to produce a proper flux. Under this patent much is left to the understanding of those "skilled in the art," for the process is claimed simply as consisting "in charging the blast furnace with a mixture of iron ore, a neutral phosphate, and sufficient silica to free the desired amount of phosphorus therefrom, and then smelting the mixture."

Before the date of filing application for the patent in suit, another patent was issued to Gray, No. 1,168,495, January 18, 1916, hereinafter referred to as Gray's second patent. While this patent purports to deal with the process of simultaneously producing phosphorus and phosphids in a blast furnace, and while it goes into much greater detail as to the chemical and physical reactions taking place within the furnace than does his first patent, the disclosure includes, and the claims read upon, the operation of producing ferrophosphorus here involved unless, as hereinafter noted, additional steps (the pig iron and extra coke charges) were added by the patent in suit. As to the quantities of coke and air necessary, this second patent says: "Only sufficient coke is used to provide sufficient heat to bring about the desired chemical reactions between the various elements and to produce and maintain in the furnace more than enough carbon monoxide CO, than is necessary for the deoxidation of the phosphorus compounds liberated by the operation. The air is also used in quantities insufficient to completely ignite the coke or other carbon materials, and only in quantities sufficient to supply the oxygen necessary to the production of the requisite heat in the furnace and to form a portion of the carbon monoxide." (Italics ours.) The claims...