Cold Metal Process Co. v. Aluminum Co. (200 F. Supp. 407, 1961)

ROBERT L. TAYLOR, Chief Judge.

Cold Metal Process Company (hereinafter called Cold Metal) brought this suit on March 20, 1945 against Aluminum Company of America (hereinafter called Alcoa) for infringement of U. S. Letters Patent Nos. 1,774,016 and 1,779,-195 issued respectively on January 14, 1930 and October 21, 1930 and referred to herein as ’016 and ’195. Each patent was issued upon the original application of Abram P. Steekel on June 30, 1923 and each has long since expired. On December 28, 1945, Cold Metal assigned the patents to Union National Bank of Youngstown, Ohio, which thereupon became a party-plaintiff herein.

Alcoa denied tjie validity, and denied-infringement, of each patent. It also raised the question of jurisdiction of the Court with respect to transactions with the United States Government, under 28 U.S.C. § 1498, during the period February 24, 1941 through September 20, 1945. (This will be referred to as the Government defense.) The defenses that United Engineering & Foundry Company, a licensee of Cold Metal, (referred to herein as United) is an indispensable party and that plaintiffs lack equitable title were also made. For the sake of completeness, it should be noted that defendant claimed also that plaintiffs were barred by laches and that plaintiffs had misused the patents.

There were twenty-one mills of defendant which were alleged to infringe. One of these, R, was not included in the Order Pursuant to the Pre-Trial Conference. Of the remaining twenty, this Order limited plaintiffs’ proofs with respect to infringement to eleven mills, listed below, the question of infringement of the remaining mills to be held in abeyance pending an accounting proceeding or until further order of the Court. The eleven mills upon which proof was adduced were:

These six were all cold strip mills, were charged to infringe both patents, and all had Morgoil bearings. The remaining five, charged only to infringe ’195, were:

Of these five, G was a five stand continuous hot mill. The remaining four were all single stand foil mills for cold rolling. These five had roller bearings. As we shall see, the six mills having Morgoil bearings were held not to infringe either patent and the ruling was not seriously contested by plaintiffs. So, the five mills before the Court at this time are G, K, L, P and S.

On January 23, 1953, the Court referred the cause to a Special Master who received the evidence, and on June 29, 1959 filed his Report, including Findings of Fact and Conclusions of Law. Briefly, the Master found that the claims in suit of each patent were, in the scope asserted in this cause, both invalid and unin-fringed, but observed that if the Court should disagree with him as to the validity of ’195 then he would have to conclude that the five mills other than the Morgoils, dealt with by the evidence, would ■ infringe. He found this Court had no jurisdiction of a claim involving the Government defense, but that such suit would have to be brought in the Court of Claims. He found further that United is an indispensable party and that the Master and Court lacked jurisdiction because United was not joined as a party to the action; and that plaintiffs lacked equitable title to all accused cold and hot mills coming within United’s license. He concluded that plaintiffs were not guilty of laches or of misuse of the patents.

These patents, and license agreements issued thereunder, have been heavily litigated both in this Circuit and in others. Twice, in litigation involving steel companies as defendants, the Court of Appeals for the Sixth Circuit has passed upon questions of validity and infringement of these patents. These two cases are Cold Metal Process Co. v. Republic Steel Corp., 233 F.2d 828 (certiorari denied 352 U.S. 891, 77 S.Ct. 128, 1 L.Ed.2d 86) and Cold Metal Process Company v. E. W. Bliss Company, 285 F.2d 231, decided December 21, 1960.

At the hearing on April 10-11, 1961 upon the Objections to the Master’s Report, plaintiffs conceded that the Court of Appeals’ decision of December 21, 1960 was determinative of the issues in this case with regard to Patent ’016 and would be conclusive and binding upon this Court provided the petition for a writ of certiorari were denied by the Supreme Court. (Certiorari was denied May 1, 1961.) On the basis of these decisions, therefore, and particularly that in the Bliss case, that mills using Morgoil bearings, as distinguished from the “anti-friction bearings” claimed in the patents in suit, do not infringe said patents, patent No. ’016 will not be considered by the Court either upon the question of validity or of infringement. It should be noted that issues as to patent ’016 received only a token argument from each party.

Although for different reasons, there was concurrence by both parties at the hearings that it is unnecessary for the Court to consider the “Government defense”. Defendant did not object to the Master’s adverse decision on the issues of laches and of misuse of the patents and neither party argued those issues at the hearing.

Remaining, therefore, in the ease, for disposition by the Court, are the issues: (1) of validity and of infringement of ’195; (2) whether United is an indispensable party, and (3) whether plaintiffs have equitable title to the patents in suit. As to the issue of validity, the burden of proof rests upon the defendant; as to proof of infringement, the burden lies with plaintiff.

Patent ’195 is for a combination of old elements which plaintiffs say achieves a new function and a new result. It has been described, a score or more times, in District Court and Court of Appeals decisions both in this Circuit and in others, to some of which reference is here made. Cold Metal Process Co. v. Carnegie-Illinois Steel Corp., 108 F.2d 322, 334 (C. A.3); Cold Metal Process Co. v. Republic Steel Corp., 123 F.Supp. 525 (D.C.N.D. Ohio E.D.); E. W. Bliss Company v. Cold Metal Process Company, 174 F. Supp. 99 (D.C.N.D.Ohio E.D.); Cold Metal Process Co. v. Republic Steel Corp., 233 F.2d 828 (supra); and Cold Metal Process Company v. E. W. Bliss Company, 285 F.2d 231 (supra).

However, it will be necessary again to refer to this patent and to its claims in order to lay the groundwork for decision here. Briefly patent ’195 is for an apparatus or machine for the high speed rolling of “metal strips of practically unlimited length”. The patent described a rolling mill consisting of two working rolls between which the metal strip was passed, together with two backing rolls of larger diameter having anti-friction mounting or bearings, adapted to withstand the rolling pressures encountered and the high speeds employed. The drawings show that the four rollers of the mill are mounted in a vertical plane one above the other with one large backing roll at the bottom, the two working rolls above it and the second backing roll at the top. In the jargon of the industry, a mill so designed was referred to as a “4-high”, as distinguished from a rolling mill with only the two work rolls and no backing rolls which is known as a “2-high”, or a mill with one backing roll known as a “3-high”; and, as further distinguished from a mill with two work rolls and two backing rolls for each work roll, arranged in V-shaped clusters above and below each work roll, this assembly being sometimes referred to as a “cluster mill”.

Twelve claims of the ’195 patent are in issue, namely, apparatus claims .3, 4, 6, 7, 8 and 11 to 17. The four accused cold rolling foil mills are charged to infringe only claims 3, 4, 6, 7, 13, 14, 15 and 17. Claims 8, 11, 12 and 16 relate to multiple stand mills. At the hearings before this Court, counsel for plaintiffs selected and read claim 4 as being typical. It reads as follows:

“4. A mill for rolling material of substantially uniform thickness, comprising working rolls provided with backing rolls of larger diameter, the backing rolls having necks of sufficient size to withstand the rolling pressure, anti-friction bearings for said backing roll necks, the diameter of the backing roll body relative to the diameter of the working roll being such as to permit of using anti-friction bearings of sufficient size to withstand the rolling pressure, said anti-friction bearings being of a character to withstand operation at speeds which are high relative to those ordinarily employed, a working roll having a neck extending between the anti-friction bearings of the backing rolls, and means for supplying rolling power through the working roll neck.”

Plaintiffs conceded in their brief on their objections to the Master’s report and in their oral argument before this Court, that each of the individual elements of the mill described in '195 was: old. They asserted that it was the combination of old elements, bringing them-together and positioning and proportioning them to function properly in the-combination, which was new, and patentable.

It is generally held that, to be-patentable and valid, a combination of old elements must produce a new function or new result. This principle of law is accepted by both parties. In Sheffield' Car Co. v. D’Arcy, 6 Cir., 194 F. 686, 693, our Circuit Court had this to say:

“It is, furthermore, clear that a combination of old elements, to be patentable, must produce a, new force, effect, or result as the product of the combined forces, as distinguished from a mere aggregation of the results of the old elements, each working out its separate effect and that a combination consisting merely of old parts and of old results, without the addition of any new and distinct function, is not patentable. * * * ” (Emphasis added!)

In Great Atlantic & Pacific Tea Company v. Supermarket Equipment Corp., 340 U.S. 147, 151, 71 S.Ct. 127, 129, 95 L.Ed. 162, 1952, the Supreme Court said:

“The negative rule accrued from many litigations was condensed about as precisely as the subject permits in Lincoln Engineering Co. of Illinois v. Stewart-Warner Corp., 303 U.S. 545, 549, 58 S.Ct. 662, 664, 82 L.Ed. 1008: ‘The mere aggregation of a number of old parts or elements which, in the aggregation, perform or produce no new or different function or operation than that theretofore performed or produced by them, is not patentable invention.’ * * * The conjunction or concert of known elements must contribute something; only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable. * * *

“Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements. The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained when, on the contrary, their effect is to subtract from former resources freely available to skilled artisans. A patent for a combination which only unites old elements with no change in their respective functions * * * obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men. * * * ” (Emphasis added.)

See also France Mfg. Co. v. Jefferson Electric Co., 6 Cir., 106 F.2d 605, 609; Cugley v. Bundy Incubator Co., 93 F.2d 932, 934 (C.A.6); White Tool and Supply Co. v. Air Reduction Co., Inc., 48 F.2d 720-721 (C.A. 6), which were cited by plaintiff.

We have cited these eases, not as bearing on the validity of patent ’195, but for the principle that in a patent which consists of a combination of old elements, one must look for a new function or force or result. The principle was applied by Judges Allen and Miller, respectively, in Cold Metal Process Co. v. Republic Steel Corp., supra, and in Cold Metal Process Company v. E. W. Bliss Company, supra, and each found new results and functions.

One other matter should be considered before reaching the merits. This Court is aware, as the Supreme Court has said in Sinclair & Carroll Co., Inc. v. Inter-Chemical Corporation, 325 U.S. 327, 330, 65 S.Ct. 1143, 89 L.Ed. 1644, that it is the better practice to inquire fully into the validity of a patent even where the accused device has been held not to infringe. But it will be remembered that patent ’195 expired shortly after suit in this case was brought and that a determination of validity in such situation is probably moot.

Judge Allen went into this question rather fully for the Court of Appeals of this Circuit in Dow Chemical Co. v. Skinner, 6 Cir., 197 F.2d 807, 811. The following quotation is from her opinion at pages 811-812.

“We next consider whether we are required to rule upon the validity of the Skinner patent although infringement has been found not to exist. It has been held both in the lower courts and in the Supreme Court that under such circumstances validity should not be adjudicated. Electrical Fittings Corp. v. Thomas & Betts Co., 307 U.S. 241, 59 S.Ct. 860, 83 L.Ed. 1263; Altvater v. Freeman, 319 U.S. 359, 363, 63 S.Ct. 1115, 87 L.Ed. 1450; Landis Machinery Co. v. Chaso Tool Co., 6 Cir., 141 F.2d 800, 805. In Altvater v. Freeman the rule that to hold a patent valid when.not infringed is to decide a hypothetical case was held not to apply partly because of the existence of many claims in addition to the one involved in the issue of infringement and also because of the pending counterclaim which stated a real and existing controversy. In the instant case no counterclaim was filed and the issue of both infringement and validity was raised in the answer and amended answer. The claims involved in both issues (Nos. 1, 3, 4, 5, and 6) are the same.

“A later expression of the Supreme Court upon this question is found in Sinclair & Carroll Co., Inc. v. Interchemical Corp., 325 U.S. 327, 330, 65 S.Ct. 1143, 1145, 89 L. Ed. 1644 which declares:

“ ‘There has been a tendency among the lower federal courts in infringement suits to dispose of them where possible on the ground of non-infringement without going into the question of validity of the patent. Irvin v. Buick Motor Co., 8 Cir., 88 F.2d 947, 951; Aero Spark Plug Co. v. B. G. Corp., 2 Cir., 130 F.2d 290; Franklin v. Masonite Corp., 2 Cir., 132 F.2d 800. It has come to be recognized, however, that of the two questions, validity has the greater public importance, Cover v. Schwartz, 2 Cir., 133 F.2d 541, and the District Court in this ease followed what will usually be the better practice by inquiring fully into the validity of this patent.’

“Electrical Fittings Corp. v. Thomas & Betts Co., supra, and Alt-vater v. Freeman, supra, are not cited. In view of the wording of the paragraph quoted we think that a discretion resides in the lower courts to determine whether or not decision upon validity is required. The Supreme Court employed the significant word ‘usually,’ thus indicating that a ruling upon validity is not essential in all eases involving both infringement and validity. Here the patent has expired and the public interest involved in ruling upon validity discussed in Cover v. Schwartz, 2 Cir., 133 F.2d 541, which was cited with approval in Sinclair & Carroll Co., Inc. v. In-terchemical Corp., supra, would not seem to be subserved. The question is moot, and we conclude that a ruling upon validity is not required.”

See also Thabet Mfg. Co. v. Kool Vent Metal Awning Corp., 226 F.2d 207, 211 (C.A. 6), where Judge Miller had this to say:

“The Houseman Patent expired November 9, 1954. In view of that fact and our ruling against infringement, we find it unnecessary to rule on the question of the validity of the patent in issue. Dow Chemical Co. v. Skinner, 6 Cir., 197 F.2d 807, 811-812; certiorari denied 344 U.S. 856, 73 S.Ct. 94, 97 L.Ed. 664; Landis Machinery Co. v. Chaso Tool Co., 6 Cir., 141 F.2d 800, 805; Ke-mart Corp. v. Printing Arts Research Laboratories, 9 Cir., 201 F.2d 624, 634.”

The patent here admittedly issued for a combination of old elements. The validity of combinations of old elements rests upon a finding by the Court of a new result or function. On the other hand, should the Court find lack of infringement, in that the accused mills produced no new results or functions, such a finding obviously would rest upon the same considerations. Defendant’s position is that where there is a combination patent in which all elements are old and an accused mill in which all elements are old, both validity and infringement turn upon the same evidence, namely, of new results or function. We believe this position is sound. Thabet Mfg. Co. v. Kool Vent Awning Co., supra, 226 F.2d at page 210; Electric Protection Co. v. American Bank Protection Co., 184 F. 916, 923 (C.A. 8); Electric Railroad Signal Co. v. Hall Railway Signal Co., 114 U.S. 87, 96, 5 S.Ct. 1069, 29 L.Ed. 96.

On the facts defendant states that it did not, by the use of the accused mills, accomplish a new result or function in the rolling of aluminum, over results which had already been achieved by various adaptations of the 2-high mills which were, of course, old. It states that the accused combinations achieved no new results of speed, greater reductions per pass, etc., even by the incorporation into its mills of flood cooling, and back tension which were not claimed in patent ’195. Whether new results were attained in the 4-high or cluster mill with or without the added use of flood cooling and back tension is a question of fact which we shall get into later.

It is plaintiffs’ position, on the other hand, that an alleged infringer may escape infringement in the use of a patented combination by omitting one element of the combination, but that it has never been the law that infringement may be avoided by the addition of other elements to the patented combination. Thus, the question is squarely presented: Assuming new results are obtained, do 4-high and cluster mills using non-friction bearings to which have been added the elements of flood cooling and back tension infringe plaintiffs’ claims?

The Master held that patent ’195 was invalid but that if the Court should disagree and hold the patent valid, then he would have to conclude that the five mills remaining in the case would infringe. The Master, of course, did not consider whether the question of validity was moot, but made the positive finding that there was no validity, and his findings on speed, amount of reduction per pass, etc., will have a substantial bearing on the question of infringement.

Under the holdings of the Court of Appeals in Dow Chemical v. Skinner, supra, and in Thabet Mfg. Co. v. Kool Vent Metal Awning Corp., supra, the Court concludes that it is unnecessary to consider the question of validity. It will, therefore, consider without reference to the Master’s finding of invalidity whether, as a matter of law, if new results are obtained, an accused device may, under certain circumstances, avoid infringement of a combination patent even though it uses the patented combination.

Defendant relies heavily upon the case of United States v. Berdan Fire-Arms Co., 156 U.S. 552, 15 S.Ct. 420, 39 L.Ed. 530, which is strikingly similar on its facts to our case. Plaintiff contends that defendant’s reliance is upon a dictum which cannot be authority here. The portion of the opinion stressed is found at page 565 of 15 S.Ct. 420, 424:

“* * * Beyond this it also appears that the patent was only for a combination, no single element of which was new; that it was intended for, and was successful when used with rim-fire cartridges, and was not successful when used with centre-fire cartridges; that the government uses only the latter cartridges; that, in order to adapt his patent to these cartridges the inventor added a new element for which neither singly nor in combination did he take out any patent. If, therefore, the government had used model No 4, which was presented to the Hancock board, it would not have infringed any patent right. For where several elements, no one of which is novel, are united in a combination which is the subject of a patent, and these several elements are thereafter united with another element into a new combination, and this new combination performs a work which the patented combination could not, there is no infringement. * * * ” (Emphasis added.)

Plaintiffs point to the earlier and latter portions of the same paragraph of the opinion to the effect, respectively, (1) that the United States never manufactured a gun after the model recommendation by the Hancock board and hence never trespassed upon any intangible right created by the patent and (2) that there was no evidence disclosing a contract and had there been an infringement it was only a tort which created no cause of action cognizable in the Court of Claims.

We have examined these two suggestions carefully. Both relate to question of fact — (a) whether the accused device had been manufactured and (b) whether there was a contract — matters which were disputed and the Supreme Court simply affirmed the findings of the Court of Claims. We are impressed that the Supreme Court was not satisfied with affirming this portion of the case on those two grounds alone. Although the fact that those two grounds were mentioned in the opinion may soften the force of the statement of law relied upon by defendant, we do not agree that its force is destroyed on the ground that it is a mere dictum.

Although the Berdan case goes somewhat further than other cases, the basic principle is not a novel one and is well recognized in the law. In Aluminum Company of America v. Thompson Products, 122 F.2d 796, 799 (C.C.A. 6). Judge Simons, speaking for the Court said:

“ * * * While it is true that the mere addition of an ingredient to a patented combination, even if improvement is achieved, will not avoid infringement [Haynes Stellite Co. v. Chesterfield, 6 Cir., 22 F.2d 635], the question is always whether a new and different combination results. Certainly, the patentees may not exclude from their field of monopoly every alloy of aluminum which contains silicon. The question of infringement is one of fact * * (Emphasis added.)

Judge Simons, writing as a District Judge in Gordon Form Lathe Co. v. Wal-cott, 6 Cir., 20 F.2d 673, 674-675, had this to say:

“ * * * I am convinced that Gordon and Redlin were pioneers in the art of turning nongeometric forms, and that the claims of their invention should be given great liberality of construction. It has been held, however, by the highest authority, that mere similarity of function is not conclusive on the question of infringement, even in the case of a pioneer patent. Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 18 S.Ct. 707, 42 L.Ed. 1136. I am equally convinced that Melling constructed his machine upon an entirely different principle from that of the patent in suit, and that the means used for performing the same function, except such means as are common to all lathes, were different. He controlled the transverse movement of his tool with the replica cam of the Blanchard lathe; he reciprocated the cutting tool, and kept it normal to the work by swinging it upon a center remote from its point; his tool transcribed an orbital path, rather than a straight path to and from the work, as disclosed in an analysis of the patented device; and such elements contained in the Mell-ing combination as are claimed to be equivalent to elements in the patent are not such when put to the test of interchangeability. Auto Hone Co. v. Hall Cylinder Hone Co. (D.C.) 3 F.2d 479; Pittsburg Meter Co. v. Pittsburg Supply Co. [3 Cir.] (C.C.A.) 109 F. 644; American, etc., Co. v. Philadelphia, etc., Co. (C.C.) 123 F. 891; Boyer v. Cleveland Pneumatic Tool Co. [6 Cir.] (C.C. A.) 185 F. 808.

“It is contended that the claims in issue of the Gordon and Redlin patent can be read upon the Melling device. This is not conclusive of infringement, where the principle of the two machines is different, and the means used are not the same. Westinghouse v. Boyden Power Brake Co., supra, and cases cited therein.

“The record is conclusive upon the fact that the Melling machine has come into wide commercial use, that it does the work for which the patented implement was designed much more accurately and satisfactorily than the Gordon and Redlin machine, and it would seem to me broadly that it was never the intent or purpose of the patent law to deprive the industry of the superior device, when, as here, the latter conforms to a different principle and uses different means for performing the same function, even though there are elements in each combination that bear some resemblance.” (Emphasis added.)

In Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 568, 18 S.Ct. 722, the Supreme Court said:

“But, even if it be conceded that the Boyden device corresponds with the letter of the Westinghouse claims, that does not settle conclusively the question of infringement. We have repeatedly held that a charge of infringement is sometimes made out, though the letter of the claims be avoided. Machine Co. v. Murphy, 97 U.S. 120, 24 L.Ed. 935; Ives v. Hamilton, 92 U.S. [426] 431 [23 L.Ed. 494]; Morey v. Lockwood, 8 Wall. 230 [19 L.Ed. 339] ; Elizabeth v. Pavement Company, 97 U.S. 126, 137 [24 L.Ed. 1000] ; Sessions v. Romadka, 145 U.S. 29, 12 Sup.Ct. 799 [36 L.Ed. 609]; Hoyt v. Horne, 145 U.S. 302, 12 S.Ct. 922 [36 L.Ed. 713]. The converse is equally true. The patentee may bring the defendant within the letter of his claims, but if the latter has so far changed the principle of the device that the claims of the patent, literally construed, have ceased to represent his actual invention, he is as little subjeat to be adjudged an infringer as one loho has violated the letter of a statute has to be convicted, when he has done nothing in conflict with its spirit and intent. ‘An infringement,’ says Mr. Justice Grier in Burr v. Duryee, 1 Wall. 531, 572, [17 L. Ed. 650], ‘involves substantial identity, whether that identity be described by the terms, “same principle,” same “Modus operandi,” or any other. * * * The argument used to show infringement assumes that every combination of devices in a machine which is used to produce the same effect is necessarily an equivalent for any other combination used for the same purpose. This is a flagrant abuse of the term “equivalent.” ’ ” (Emphasis added.)

In Electric Railroad Signal Company v. Hall Railway Signal Co., 114 U.S. 87, at page 96, 5 S.Ct. 1069, at page 1075, 29 L.Ed. 96 the Court said:

“In considering them it is important to bear in mind that the patent is for a combination merely, in which all the elements were known and open to public use. No one of them is claimed to be the invention of the patentee. He does not claim them himself as separate inventions. It is simply a new combination of old and well-known devices, for the accomplishment of a new and useful result, that is claimed to be the invention secured by the patent. And the well-settled principles of law, heretofore applied to the construction of patents for combinations merely, must apply and govern in the present case.

“The object of the patented combination was the accomplishment of a particular result, that is, to work electric signals on what was known as the ‘block’ system, by means of circuits, operated by a single battery instead of many. But this result or idea is not monopolized by the patent. The thing patented is the particular means devised by the inventor by which that result is attained, leaving it open to any other inventor to accomplish the same result by other means. To constitute identity of invention, and therefore infringement, not only must the result attained be the same, but in case the means used for its attainment is a combination of known elements, the elements combined in both cases must be the same and combined in the same way, so that each element shall perform the same function, provided, however, that the differences alleged are not merely colorable, according to the rule forbidding the use of known equivalents.” (Emphasis added.)

See also Martin v. Ford Alexander Corp., D.C., 160 F.Supp. 670, 676; Blastcrete Equip. Co. v. Ridley, D.C., 174 F.Supp. 277, 279-280.

Apart from the challenged authority of the Berdan case, we cannot say on the authority of the subsequent cases, we have cited, that the mere inclusion of a patented combination of old elements as a part of a new combination of old elements is per se an infringement. Are the results obtained in such a manner that they are the product of the new and expanded combination? Aluminum Co. of America v. Thompson Products, supra.

Infringement

On the question, therefore, of infringement, we have two related questions of fact: (1) Did the accused mills achieve new results of speed, great reductions per pass, etc., in the field of aluminum? (2) Even if the accused mills achieve new results or function, are the improvements to the old combination of flood cooling and back tension such that a new and different combination and principle of operation result?

In the specification of Patent No. T95 certain superior results are claimed for the combination. In paragraph one are asserted: (1) the operation of the mill at high speeds and (2) the rolling of metal strips of practically unlimited length. In paragraph two reference is made to patent’s (3) usefulness in rolling metal of great thinness relative to its width. In paragraph four the applicant amplifies item (1) by stating that he contemplates speeds several times 150 to 200 feet per minute, and removal of speed limitations on both hot and cold mills. In paragraph six and seven we read that the applicant’s handling of the problem of heat controlled the contour of the roll and (4) substantially prevented buckling and wrinkling of the material. In paragraph eight and nine he asserted the advantage of (5) reduction in the amount of power used. In paragraphs nine and ten he said (6) the product was free of heavy center or crown. In paragraph twelve he noted with his device (7) a perceptible lack of wear in the bearings resulting in better adjustment.

In his Report, the Special Master observed that in the Republic Steel case, (233 F.2d 837), the Court of Appeals held that the District Court was justified in finding the following new results:

“(1) Speeds far in excess of the prior art;

“(2) Operation, without overheating of backing rolls and buckling and riffling of the strip, at speeds which under the prior art had brought on overheating and buckling and riffling;

“(3) Elimination of intermediate annealing for low and high carbon steels and some alloys, reduction in the cases of some other alloys, consequent saving of much time and money;

“(4) Increase of thinness of the product by 30 or 40 percent;

“(5) Increase of width of product many times;

“(6) Increase of length of product from a limit of 8 to 13 feet to hundreds of feet.”

To these six the Master added three other results found by Judge Buffington in the Carnegie-IIlinois Steel Corporation case, 108 F.2d 322, namely, a remarkable change in an art theretofore quiescent and stagnant, (which the Master dismissed from consideration as being a mere summarization of the total effect of the others), lessened costs, and improvement in the working conditions of labor.

It should be noted that the result of heavy reduction per pass upon which plaintiffs greatly relied was not claimed in the patent, nor mentioned in these prior decisions.

As the Court has indicated, the burden is upon the plaintiffs to prove, by a preponderance of the evidence, infringement of the accused mills. Where the patent consists, as here, of a combination of old elements, it is not sufficient that plaintiffs show that defendant used the combination claimed in the patent, his task is more diffused — of showing that the accused mills obtained, over other mills in the same field, new and useful results or a new and useful function.

The parties amassed a record in excess of 14,000 pages, exclusive of exhibits, a considerable portion of which dealt with questions not now before the Court. The Court is cognizant that, in its Order of Reference to the Special Master, it stated that the Master’s Report would be advisory only and not binding upon it. Nevertheless, because of the magnitude of the record and because of the meticulous accuracy of the Master’s work, the Court places substantial reliance upon the Master’s findings and especially where they rest upon live testimony taken before him.

With this background, the Court proceeds to a consideration of the question of infringement of patent T95. For perspective in understanding various practices and terminology in the aluminum rolling art, the Court here includes (omitting the references to the Record) the footnote beginning on page 61 of the Master’s Report.

“The following is taken from Defendant’s Main Brief, pp. 16-18, being supported by the record and not in controversy:

“The term ‘sheet’ has been used in aluminum rolling to define sheetlike products of a gauge of thickness ranging from .249 down to .006. Sheet-like products of lesser thickness are called ‘foil’.

“The rolling of aluminum and its alloys is broadly divided between hot rolling and cold rolling. The distinction between ‘hot’ and ‘cold’ rolling is that in hot rolling the metal is intentionally heated to some elevated temperature before entering it in the rolling mill, while in cold rolling the metal is not intentionally heated. The terms ‘hot rolling’ and ‘cold rolling’ do not imply that the aluminum material being rolled is delivered from the mill at any particular temperature. The temperature of delivery varies in each case.

“Hot rolling is used to ‘break down’ the starting material, which is called ingot, to a gauge or thickness where cold rolling is started. It is also used to produce some plate and some sheet. Cold rolling of aluminum and its alloys has always started at a thickness of somewhere between % inch or .500 and about .100 inch. This varied somewhat with the particular plant or location where defendant was conducting rolling operations and the time period involved. Thus in the period 1919 to 1922 defendant usually started cold rolling at thicknesses of .375 to .125 and sometimes as high as .500. But, as years went on, less cold rolling was started at the heavier gauges. In the period 1938 to 1947 at Edgewater Plant defendant usually started cold rolling at thicknesses of .102 to .190. In the period 1941 to 1947 at the Alcoa plants defendant usually started cold rolling at its West Plant at thicknesses of .102 to .162 and at its North Plant at thicknesses of .105 to .200. Hot rolling started on what are known as ‘hot mills’ and was either ended on such mills or on other mills known as ‘continuous mills’.

“The hot rolled material was then sent to the cold mills, where it was cold rolled by one or two methods — • the flat sheet method or the coiled sheet (or strip) method — to produce the commodities foil, sheet and, occasionally plate.

“The great majority of the commodity, plate, was produced entirely by hot rolling, but, sometimes, plate rolling was finished on the cold mills.

“The commodity, foil, was produced exclusively by the cold rolling processes known as ‘coiled sheet’ (or strip) process of cold rolling.

“The commodity, sheet, was produced by cold rolling, which started at the thicknesses above mentioned. If the commodity to be produced was ‘coiled sheet’, sometimes known as ‘strip’, it was produced by the ‘coiled sheet process’. If the commodity to be produced was ‘fiat sheet’, it was produced either by the ‘coiled sheet’ (or strip) method or by the ‘flat sheet’ method.

“Cold mills used in aluminum rolling to cold roll by the coiled sheet (or strip) method are known as ‘strip mills’ or, occasionally ‘coiled sheet mills.’ Cold mills used in aluminum rolling to cold roll by the flat sheet method are known as ‘flat sheet mills.’

“The commodity ‘flat sheet’ is known as such in aluminum rolling, because it is sold in an uncoiled or flat condition in short lengths. It can be, and is, produced either on strip mills, in which case it is rolled in coils by the coiled sheet method and thereafter cut into short lengths and flattened, or it is produced on the flat sheet mills, in which case it is rolled in the flat, as distinguished from the coil form, and in the lengths desired.

“The commodity ‘coiled sheet’, sometimes called ‘strip’, is known as such in aluminum rolling because it is rolled in the form of coils of relatively long length and sold in that form.

“The flat sheet method and the coiled sheet, or strip, method have both been used by defendant in the cold rolling of sheet in the period 1915 to date. Both methods were being used by defendant in 1915 and both methods are used today. Well over half of the total sheet produced by defendant prior to 1922 was produced by the coiled sheet method and such has been the case from 1915 up to today.

“In the flat sheet method the sheet is simply passed back and forth between the rolls maintaining the sheet in its flat condition. The metal is cold rolled in single sheets down to .032 gauge, but for the production of gauges lighter than .032 single sheets are packed, i. e. piled on each other and cold rolled together. The reductions per pass are small, varying from less than 1 per cent up to 5 or 10 per cent. No back tension is used in the flat sheet rolling method.

“In the coiled sheet (or strip) method of cold rolling the metal is rolled in longer lengths and is in coil form before it enters the mill and is coiled after it leaves the mill. (The one exception to this is in the case of the single stand 4-high mill at defendant’s Alcoa North Plant. The sheet is occasionally not coiled after cold rolling but comes out of the mill under a shear which chops it up into short lengths.) The reductions per pass usually vary from 20 to 50 per cent, and back tension is always used on the aluminum material entering the mill. Front, or forward, tension may or may not be used during the coiling up of the aluminum material leaving the mill.”

In the Republic case, Judge Allen found that the elimination of annealing was one advantage justifying a holding of validity of the patent. This advantage may be summarily disposed of, as being nonexistent in this case. Plaintiffs do not now claim that the alleged use of its combination avoided the necessity of annealing. Counsel for plaintiffs categorically so stated in the hearing before this Court: “Elimination of intermediate annealing, they don’t get * * * And that is due to the fact that metalurgically (sic) there are conditions that make it desirable to do the intermediate anneal.” Furthermore, although there was a minor clash in the argument whether working conditions were improved, plaintiffs’ counsel said they did not bother to prove the point. And we are satisfied that there is no cogent proof in the record that the invention substantially ameliorated working conditions.

The Master tended to discount Judge Buffington’s emphasis upon a remarkable change in a stagnant art, as merely a statement of conclusion as to more specific benefits. And we agree. Remaining are six hard core contentions of plaintiffs that the patent ’195 increased the width of strip, the speed of rolling length of strip, thinness of strip, reduction per pass, and eliminated buckling and wrinkling. Reduction of use of power, or reduction of costs, would seem to stem from the achievement, if any, of some or all of the above six claimed benefits.

To understand plaintiffs’ contentions and defendant’s replies with respect to them, it is desirable to look further into the rolling operation. The ingot to be reduced or the sheet to be further reduced (sometimes to the thinness of foil) was fed between the work rolls. In different mills these work rolls had different diameters but were relatively small by comparison with the diameters of the backing rolls. The power necessary to move the material through the rolls was ordinarily applied to the work rolls. Sometimes this application of power was supplemented by forward tension on the strip. That is, it was by various means pulled through the work rolls, much as one would pull a garment through the wringer of an old-fashioned washing machine. This forward tension or pull was involved in No. ’016 — but was not claimed in No. ’195. Power was not applied to the backing rolls. They were normally relatively great in size with roll necks relatively large by comparison to the work rolls, and their function was to support the work rolls and to prevent their deflection. However, in most mills, the backing rolls had an additional function, namely, as the agency for the application of pressure to the strip. This was done by screw devices operating upon the backing roll bearing assembly, and the pressure upon the backing rolls was imparted to the work rolls. Thus, although all members of a 4-high assembly were under strain, one focus of pressure and of generation of heat was at the bearings and necks of the backing rolls, as the resistance from the strip which was being rolled met there the force from the pressure applying screw devices.

The necks and bearings of the backing rolls were thus subjected to stress. It was plaintiffs’ theory that heat developed in the bearings and roller necks, which heat spread to the backing rolls and thence into the work rolls. It is common knowledge that many materials expand with heat. Plaintiffs claim this was true of the backing roll necks and backing rolls proper, and that the hottest part of the roll would be near the necks. It was further the theory that as these portions heated up and expanded, they would impart some of their heat to and impose greater pressure upon the working rolls at those points. The effect would be that the strip passing through the mill would receive greater pressure at its edges, and would therefore be thinner at those points. The strip would thus be measurably thicker in the center where the working roll received less heat and pressure from the backing rolls.

Flatness was the desideratum of metal strip, but if it were thicker in the middle and was rolled more thinly at its edges, its edges tended to become wavy and wrinkled. Sometimes rolls were made a little larger in the middle to compensate for the expansion of their ends; in which case, it sometimes occurred that the strip was thinner in the middle than at the edges producing another type of distortion.

Plaintiffs’ patent was directed toward some of these difficulties by providing a more easily running, or non-friction, bearing which would not heat up as much and would tend to eliminate or reduce this source of heat and of distortion in the strip.

Another, perhaps the major, source of heat was the ingot or strip itself which may have been heated to start with or which became hot from the rolling pressures. The more pressure that was applied, the greater the heat. If finish were not required, it was an advantage of the operation to apply heavy pressures — because the more the strip was reduced at each pass, the fewer the number of passes, with consequent economies.

This, in broad strokes, is the nature of the problem.

By the provision of a non-friction, or roller bearing, plaintiffs claim to have eliminated so much of the wild heat engendered in the rolling operation that the “hard core” results we have listed were attained. Defendant stresses that both 4-high mills and roller bearings were old, and that the claims are directed to elements taken from the public domain, that is, old elements. In such cases, as indicated, infringement is to be tested by new function and result and not by mere comparison of the bare elements of the rolling mill structure with those of the accused mills.

It is plaintiffs’ contention that their combination of work rolls of substantially uniform diameter, backing rolls of much larger diameter and anti-friction mountings on the backing rolls brought about’new and useful results in the rolling of sheet and strip-like material. It is defendant’s contention that all results claimed for the combination had already been achieved by it with various forms of its 2-high mills.

Wider Widths

Plaintiffs claimed that defendant was able to roll wider widths by the coiled sheet method for the production of aluminum sheets, and that prior to 1923 it could not obtain the wider widths by the coil-sheet method, but had to resort to the cumbersome flat-sheet rolling method. Defendant’s answer to this is that the wider widths for coiled sheet were a result of the backing rolls. In order to understand this claim of the plaintiffs, it is well to bear in mind, as the Master found, that defendant rolled wider metal in 1923 on 2-high mills than it has on the accused mills, that it had rolled up to 72" wide as early as 1923. This was by the flat sheet rolling process. So defendant did not and never attained wider sheet by use of the accused mills. The rolling of aluminum had many phases, and width alone was not a result of the accused mills. The Master commented that defendant found 4-highs desirable for certain operations because of their superior rigidity, which resulted in greater reductions per pass (not thinner material), decreased the amount of crown needed in the work rolls, and made possible somewhat greater widths. All this as Steckel pointed out in a speech before a technical group in 1932 was the result of 3-high and 4-high design. He said:

“Fifty years or more ago the inherent weakness of two-high mills as to bending of rolls when rolling wide plates was recognized and cured by a Mr. Lauth who stiffened the mill against roll bending by developing three-high design. The still better four-high design is perhaps as old as the three-high, but we want to emphasize that both of these old developments aimed only at stiffening the mill against roll deflection. * * >’

If the operator wanted wide flat sheets he could get it with a two-high by limiting the amount of the reduction. If he wanted heavier reduction he stiffened or backed his roils and could get a wider sheet with heavier reduction in the process. The real controversy as the Master observed concerned widths cold rolled by the strip or coiled sheet process. And the difference between the flat sheet and coil-sheet method is the reduction per pass — something Steckel didn’t mention in his patent.

Plaintiffs argued that the width limitations on the coil-sheet method prior to 1923 was approximately 20 inches; and that with the coiled sheet method which they say offered greater economies, defendant rolled in ranges from 36 inches up to 64 inches, which was better than three times the widths which could be rolled by the coiled sheet method under the old process. But as we shall see, width and speed had no significance except in connection with heavy reduction per pass, something which was not mentioned in the specifications or claims of No. ’195, nor in the authorities upon which plaintiffs rely.

How important, how basic a result is this quadruple thing of length, width, reduction per pass and speed? Defendant-says the accused mills don’t get the greatest width, nor the greatest length, nor the greatest speed. If these are tied in with reduction per pass, something unclaimed and unmentioned in authorities relied on, then there is a different result but one not dependent upon the combination but upon the stiffening which goes with a back-up mill — or as defendant says with the known results of backed up mills prior to 1922.

In a case of such complex facts as this, it will bear reiteration that the burden of proving infringement rests with the plaintiffs. It is they who must prove by a preponderance of the evidence that the advantageous results claimed for this patent actually flow from the use of the combination rather than from other of the elements of the accused mills.

Pursuing the subject of width a little further, the Master found that the increase in the width of metal strip with 2-high mills was a progressive thing. Between 1917 and 1930, defendant moved from a width of 8 or 9 inches and gauges as low as .0005 on a 9 x 16 inch mill to 16 to 18 inches wide and a gauge of .00025 on a 9 x 22 inch mill. By 1932, using a 10 x 28 inch mill, they rolled 26% to 27 inches wide at a gauge of .00035. In 1941, the first 4-high accused foil mill was installed at the Arnold plant with rolls 42" wide. The widest metal rolled on these mills was 26". On the 34" 4-high, metal was rolled at approximately the same width as on the 10 x 29% two-highs.

As the Master indicated, there is no credible proof that these somewhat increased widths rolled on the 4-highs were not due to the longer work roll with the 4-high backing rather than to the practice of the combination.

During the same period, defendant was utilizing 2-high mills with larger work rolls, up to 14" in diameter. In 1929, it had at the Arnold foil plant six 14x32 inch 2-high mills which rolled material 24 to 26 inches wide and reduced it from .012 to .002 in three passes, an average of approximately 50% reduction per pass. In 1931, 14x32 inch 2-high mills were placed in tandem and rolled metal from 26% to 29 inches wide, reducing the metal from .102 to .006 with reductions of approximately 50% per pass.

The Master’s report states that an accused 4-high mill at Edgewater had 14%x42 inch work rolls which usually rolled up to 35 inches, but had rolled up to 39 inches. Reductions were up to 35% on heat treatable alloys and 50% on common alloys. This was not a foil mill, but was used 60% as a break-down mill and 40% as a finishing mill. As to this mill, the Master concluded that this mill did not displace the 14 inch 2-high mills, although they were displaced by 34 inch long 4-high mills for reasons other than width of product. This conclusion is sound.

Without recounting here all the evidence considered by the Master, the conclusion is justified that with longer 2-high rollers and the addition of bridles, widths up to 20 and 22 inches could be rolled with gauges down to .016. Thinner gauges could be rolled in narrower widths.

Where gauge was not the desideratum with 28" 2-high mills in 1921 to 1927, defendant made reductions of 20% per pass. Width was 34 inches maximum. In 1941 to 1947, there was testimony the same mills used primarily as break-down mills rolled to a width of 40 inches maximum.

A 2-high 30x60 inch mill installed in 1947 equipped with bridles and flood lubrication and Morgoil bearings rolled widths up to 52% inches wide and at speeds of 1150 to 1200 feet per minute. In passing, we would observe that Heil-man testified that the average gauge on this mill was less than on a 4-high although the length of the coil rolled was greater. This instance points up the fact that width, length and gauge are interrelated and depend upon the size of the ingot with which the operation starts. A rubber band has so much mass. If it is stretched, it becomes thinner, and its width may be narrower. The largest ingot ever rolled by defendant was 5600 pounds. Commercial production ran between 3500 and 3700 pounds. Standard size ingots in 1932-38 ran 800, 1500 and 3000 pounds. Standard size for strong alloys for hot rolling in 1943 to 1947 ran 3900 to 4200 pounds. Much depended upon the order. In a very important sense, these factors of width, length and gauge are determined by the product sought. We have permitted ourselves this digression because of further problems involving claimed advantages which must be considered later.

But one thing seems clear that in the 2-highs, if width is what is desired there is a correlation between width and the diameter of the roll. This gives support to defendant’s contention that with respect to width it was the rigidity which went with 4-highs which was important and not the combination. And this rigidity or stiffening was, as Steckel admitted, long known in the art.

Turning to one of the accused mills not now before us, the Edgewater 60" 4-high mill produced a finish width of 48" and break-down widths of 52 to 53 inches. West plant tandems with work rolls 21 inches in diameter rolled in 1941-47 widths up to 51% inches. In the North plant, the accused mills rolled up to 57% and 64 inches.

The Master concluded, “ * * * Bearing in mind constantly that the width of materials rolled is limited by the length of the rolls, that long before Steckel it was a part of the public information that 4-high mills can accommodate rolls much longer than 2-high mills, and that in this case the accused mills with roll lengths of 72" were by that circumstance enabled to roll wider material than 2-high mills with only 60" roll lengths, I find that this record falls far short of showing that * * * the production of aluminum sheets ‘many times wider than was previously possible’ was accomplished by any new thought of Steckel’s.”

The Court concurs in the Master’s finding. Stated in another way, plaintiffs have not carried the burden resting upon them to show that new results in the matter of width resulted from their combination.

Speed of Operation

Coming now to the speed of operation, the Master commented in a footnote, which found full support in the record:

“In foil rolling it is true that in both 2-high and 4-high mill operation the speed of the break-down pass is not as high as that of the intermediate pass. The split pass, which follows next after the intermediate pass, is run at about the same speed as the intermediate pass, if the finish is not to be high, but if the final finish is going to be high, the split pass must be run slower than the intermediate. Thus the speed is determined more by the results desired as to finish than by the type of mill used. In 1938, and aft-erwards, the higher finish would be rolled at a finish pass speed as low as 250 feet but if a high finish was not a primary requisite, the speed was raised to between 300 to 400 f. p. m. 2-high and 4-high operation is alike also in that increasing the speed while rolling produces greater reduction of the strip.” (Emphasis added.)

Thus, it is seen that speed is a relative thing and, like length of strip, may not be considered in a vacuum.

Speed of operation as well as width of strip experienced a progressive development over the years. Around 1920, a 2-high 9x16 inch mill at the Arnold foil plant attained a speed of approximately 45 feet per minute with a water cooled babbitt-lined bearing. A re-wiring of the motor increased this to 65 feet. In 1924, a variable speed motor using alternating current increased this to 140-180 feet per minute and in 1928 a direct current motor increased it to 300 f. p. m. About 1938, flood lubrication (or what has been sometimes called “flood cooling” in the record) improved speed of these mills to 450 f. p. m. with gauges as low as .00035. As one of the defendant’s witnesses commented, improvement in speed was a sort of progressive thing.

Since flood cooling was not claimed by plaintiffs (nor back tension) and since their use was considered by defendant such a departure as to result in a new and different combination we deem it advisable to break into our discussion at this point to obtain a clearer picture of flood cooling.

This usage like others we have been considering evolved over the years. Prior to 1922, defendant had in operation at its Alcoa West Plant a 28x60 inch 2-high mill which had grease lubricated, water-cooled bronze bearings. Originally, the only lubrication of the roll itself (as distinguished from its bearings) was by means of a roller-operated swab. Later drip-type lubrication was provided and operated with about 40 to 50 drops per minute. From these early beginnings it is easy to see why the terms flood cooling and flood lubrication are often used interchangeably.

On other mills, lubrication increased to 60 to 75 drops per minute.

After 1946, there was installed at the Alcoa North Plant a 30x60 inch 2-high mill with Morgoil bearings and equipped for a flood cooling capacity of 350 gallons per minute. The mills equipped with the drip-type lubrication operated at speeds of around 200 feet per minute while the mill with the 350 gallon per minute lubrication ran at speeds of 1150 to 1200 feet per minute.

As the Master noted, the need for direct lubrication of the area of contact between roll and metal was perceived early. But flood lubrication went far beyond that. Equally or more important than the lubrication of the pass was the cooling effect upon the roll body of the lubricant spurting from great numbers of carefully plaeed jets and separately controlled so that the heat might be “driven” here and there in the roll body correcting distortions arising from the high temperatures. The Master contrasted this practice with the utilization of roller or Morgoil or other bearings on the roll necks which were designed to reduce the localized heating effect in the roll necks due to their rotation under load. He commented further: “The use of any such bearings does not eliminate the need for flood cooling. The defendant’s results were obtained by both bearings and flood cooling. * * * Bearings have only a limited ability to control heat. Bearings on backing roll necks, although satisfactorily controlling the heat generated in the roll necks, cannot also serve to cool the bearing necks to the point where roll body heat generated by the friction of reduction can be dissipated without distortion of the rolls. Similar-ily, flood cooling has only a limited ability to control heat. In practice, higher speeds cannot be reached by flood cooling without the help of low friction roll neck bearings, and the reverse also .is true.” (Emphasis added.)

Although not focused on the question of infringement, the Master’s further comments on the accomplishments of the Steekel combination have a pertinency here:

“I recognize that the overcoming, in one of these two seats of obstacles to high speeds, of the adverse factor there present may be invention even though the other problem is not solved by the same conception. As an original proposition the fact that the high speed claim for the patent cannot be fulfilled by Steckel’s combination alone might not of itself prove the absence of invention. But in the Republic Steel decision and in prior decisions the patents have been upheld because of accomplishments, and the inability of Steekel’s combination to achieve the speed and other effects claimed for it without the help of flood cooling indicates that the tests of validity applied in these prior decisions are not satisfied upon the present record.”

Returning to the question of speed, the history of speed improvement on the 14x20 inch 2-high mills at the Arnold foil plant parallels that with respect to the 9x16 inch 2-highs at the same plant. In 1918, they operated at 65 f. p. m. By various improvements in the motors, speeds were stepped up by 1942 to operating speeds of 250 to 345 f. p. m., and this was true when the rolls were lengthened to 30 inches.

Two 14x32 inch 2-high Tusa mills in Unit No. 1 operated in 1941-1947 at speeds of 200 to 300 f. p. m. Two similar mills in the No. 2 plant reached speeds of 290 f. p. m.

Now, we note a startling bit of evidence. Three 14x32 inch 2-high Tusa mills equipped with Morgoil bearings and with flood lubrication operated at speeds up to 600 f. p. m. by 1938. One of these mills used as a break-down mill achieved speeds of 200 to 300 f. p. m.

We shan’t clutter the record with the history of all 2-high mills employed by Alcoa. Our interest is to test the accuracy of plaintiffs’ claim that the various hard core benefits we have enumerated resulted from the use of 4-high mills equipped with non-friction or roller bearings. The evidence mounts that most, if not all, the advantages claimed for the accused 4-highs were obtained by defendant with its more advanced 2-highs. This is especially striking as we consider defendant’s longer 2-hig