Witherow Steel Corporation v. Donner Steel Co.

• Citation: 31 F.2d 157
• Decision Date: 31 January 1929
• Docket Number: No. 1043.,1043.
• Parties: WITHEROW STEEL CORPORATION et al. v. DONNER STEEL CO., Inc.
• Court: U.S. District Court — Western District of New York

31 F.2d 157 (1929)

WITHEROW STEEL CORPORATION et al. v. DONNER STEEL CO., Inc.

No. 1043.

District Court W. D. New York.

January 31, 1929.

COPYRIGHT MATERIAL OMITTED

Locke, Babcock, Hollister & Brown, of Buffalo, N. Y., and Byrnes, Stebbins & Parmelee, of Pittsburgh, Pa. (Walter J. Blenko, Geo. E. Stebbins, and Clarence P. Byrnes, all of Pittsburgh, Pa., of counsel), for plaintiffs.

Kenefick, Cooke, Mitchell & Bass, of Buffalo, N. Y., and Green & McCallister, of Pittsburgh, Pa. (Lyman M. Bass, of Buffalo, N. Y., and Jonathan S. Green and Edgar W. McCallister, both of Pittsburgh, Pa., of counsel), for defendant.

HAZEL, District Judge.

In this suit in equity plaintiffs, by supplementary bill, seek relief by injunction and damages for alleged infringement by defendant corporation of ten United States letters patent, viz.: Nos. 1,572,343, 1,577,430, 1,502,705, 1,516,069, 1,570,660, 1,600,782, 1,607,498, 1,607,445, 1,597,955, and 1,609,045. The original bill also alleges, as an additional cause of action, unfair trade by the defendant company in relation to the asserted acts of infringement, and, by the supplemental bill, that defendant continues and threatens to continue such acts, to the irreparable loss and injury of plaintiffs.

The Colonial Trust Company, as alleged, and as the evidence shows, has a mortgagee's title to the properties, including the various patents in suit owned by the plaintiff Witherow Steel Corporation, which was acquired from its predecessor, the Witherow Steel Company, and, by reservations in the mortgage agreement, the Witherow Steel Corporation is exclusive licensee of all the involved patents, and, accordingly, I deem that both plaintiffs were properly joined.

All the enumerated patents (for convenience designated Witherow patents) relate to the manufacture of automobile axles in nearly finished form — that is, front axle blanks and rear axle shafts, produced in series or strings and then readily sheared into singles from which front axles and rear axles are later finished by forging or machining parts — and a few other metallic articles (not involved), by what is described herein as die rolling with flash and in a single pass.

The art of rolling and shaping white or molten metal ingots after reduction in size, in a broad sense, for commercial use, is very old. Modern die rolling, credited to Henry Cort in 1783, has greatly expanded, and, for perhaps fifty years or more, has been adapted for so-called parallel rolling and roll flattening (different types of die rolling) for shaping tie rods, concrete bars, plates, flats, rounds, angles, rails, knives, forks, coupling pins, and certain other metallic articles, each having uniform cross-section or a limited change in shape only. These limitations, as to what was accomplishable in rolling or die-rolling operations, were well understood, and, by Witherow's invention, a new art in a familiar field, or a special class of die rolling, is claimed to have been evolved or developed, achieving a new and distinctive result, which was followed by abandonment of old die-rolling methods of fabricating certain rolled, metallic articles of nonuniform type and dimensions, or so-called complex articles, including front axle blanks and rear axle shafts for use in automobiles.

The defenses interposed in the main are prior public use, prior patents, and publication, and specifically that plaintiffs' adaptations were performable on the old die-rolling machines — no new die-rolling machines being described in any of the patents — and accordingly, Witherow's concept was not a new art or method of die rolling as contemplated by section 4886, R. S.; in short, that die rolling complex articles and front axle blanks and rear axle shafts was inherent or a natural sequence in the customary die-rolling practices, and, further that neither the use of a declared rudimentary leader bar of the claims of certain Witherow patents, nor generally the rolling of blanks with a fin or flash, presented any serious difficulties of operation which were not remediable or surmountable by any one skilled in the rolling mill art.

To establish validity of the various patents in controversy and infringement by defendant of the 75 collective claims, and in support of the various defenses, a large number of witnesses were sworn on both sides, as the record, consisting of nearly 4,000 typewritten pages, and voluminous briefs, readily disclose.

Defendant's confidence in its belief that all the involved patents are clearly invalid is seemingly apparent by the fact that admittedly it began to die roll axle blanks and shafts for use in automobiles at its plant, after an inspection by its president of Witherow's operations in such productions under the patents, adapting, as plaintiff avers, substantially the same mode of operation, and selling its axle forms to the automobile industry.

The questions submitted are in many aspects highly technical and complicated. We are not particularly interested in a rolling mill proper as a machine, or with mechanical parts, but our distinctive concern is with an art or process by which certain articles are fabricated. At the outset, a brief definition of a few of the terms freely used at the hearing as bearing upon the principles specified in the patents and their application may not be amiss. Parallel rolling is a known method of rolling a hot metal bar of uniform cross-sectional size and form between a pair of smooth or grooved rolls for reducing its thickness and altering its shape; and, in die rolling a round bar, uniform grooves are graved or cut into the periphery of the roll or rolls, one ordinarily disposed above the other in their operations. The ordinary hot leader or bar is formed or pressed to the required size from a huge billet, and the leader in its plastic state is fed into the rolling pass between the two rolls for compression, reducing the thickness and lengthening and shaping to form the particular article or series of articles. There is also a well-known shaping and forming of the leader by a method of roll flattening and rounding of parts. Defendant's expert, Prof. Trinks, tersely and accurately defined die rolling to be "any rolling in which there is a variation in the contour of at least one of the two grooves of the rolls." In parallel rolling the leader bar engages the pass or groove formed in a way to avoid irregular fins or overfills, since the material, if incumbered with such excess metal, is admittedly, in ordinary rolling with grooved rolls, a detriment and regarded as either commercially useless or as involving expense to put the material or articles in proper condition. Fins or overfills comprise thin extra portions of metal exuded sidewise from between grooved rolls, and, in common practice, to avoid them (for they may lap over the material or spread in such manner as to break the rolls), the roll surfaces were suitably designed or adjusted, or the leader, in parallel rolling, for example, made narrower than the grooves to eliminate the evil. In ordinary rolling, the leader generally fits into the groove, and may, in parts, be either longer or shorter than the matrix portion on the periphery of the rolls. Complex articles are understood to be die rolled and comprise articles requiring reduction in size or thickening at intermediate parts, or where the cross section and center lengths are dissimilar, as, for example, in front and rear axles which, by their contour, are required to have thinner and narrower portions between, but not at, the ends. Rollset implies spacing and adjustment of the rolls to enable the exuding metal fin, overfill, or flash, as Witherow calls it, to spread sidewise of the groove; while the rudimentary leader, so-called in the specification and claims, is said to be distinguishable by its shape from a leader bar used in ordinary rolling, in that its length is reshaped relative to the pass and roll grooving, and corresponding to desired intermediate portions of the blank, or center to center length requirements. In die rolling Witherow axle blanks and shafts, definite flash zones, intentionally and with an essential object, appear uniformly along the opposite sides of each blank in a string of blanks, unlike the irregular sized and ragged fin or overfill in common rolling, and unlike forging flash which concededly lacks purpose or function. Defendant, however, defines flash as an ordinary fin or overfill with which the art has long been familiar, and, in the main, urges that the Witherow uniform flash must, on proper construction of the claims including such element, be limited to its formation in flash gutters during close contact of the two rolls, one placed above or adjoining the other. By tolerance is implied a deviation in dimensional length requirements of the matriced designs and the axle blanks and shafts, or an agreed safety zone allowance, as counsel for defendant puts it, for the length variations within which the blanks or forms are acceptable to the automobile manufacturers.

Before adverting to the original disclosure and claims in suit, it will be an aid to understanding the intendment to refer to the earlier manner in which automobile axles or shafts were produced. There were several known methods of rolling or fabrication — first, by forming and shaping a front axle blank by the drop forging process, wherein the original impression was separately formed by the use of two heavy metallic dies. Hot metal was put into depressions on the roll surfaces, and both metal and rolls were forcibly driven together for shaping a front axle blank; while rear axle shafts were either drop forged or made by a so-called Ajax process of rolling or machining from bars. The Ajax method required several manual passes of the leader bar forwards and backwards between the matriced rolls to form a unit, which proved to be a very slow method in production, and concededly was unsatisfactory. By...