United Chromium, Inc. v. Kohler Co. (159 F.2d 979, 1947)

LINDLEY, District Judge.

Plaintiff brought suit for infringement of patent to Fink No. 1,581,188, application filed December 19, 1925, patent issued April 20, 1926, and patent to Fink No. 1,802,463, issued April 28, 1931 upon an application filed September 19, 1925. The court entered judgment of validity of the first patent and infringement by defendant and invalidity of the second. Defendant appeals from the judgment upon the first patent and plaintiff from that upon the second.

The first patent was held valid by the District Court of Connecticut in United Chromium, Inc., v. International Silver Co., D.C., 53 F.2d 390. This judgment was affirmed by the United States Circuit Court of Appeals, Second Circuit, in 60 F.2d 913, 914. The patent was again held valid and infringed, in United Chromium, Inc., v. General Motors Corporation, by the same District Court, D.C., 11 F.Supp. 694. Upon appeal this judgment was reversed in 2 Cir., 85 F.2d 577, the patent being held invalid upon the Udy defense not offered in the International case. On rcargument, the court adhered to its original decision. Cer-tiorari was denied March 15, 1937, 300 U.S. 674, 57 S.Ct. 613, 81 L.Ed. 879. Still later the patent was held valid and infringed by the District Court in United Chromium v. Great Lakes, etc., Co., and in the present case, D.C., 55 F.Supp. 494.

In view of the full discussion of the art appearing in these reported opinions, especially the first decision by the Circuit Court of Appeals for the Second Circuit, we are relieved from burdening the record with the recital of many undisputed elementary facts. As appears from the last mentioned opinion, it is apparent that the art of electroplating is old; that certain common characteristics in the processes of plating various metals exist but that difficulty was experienced in perfecting chromium plating, although scientists were working with the problem from and after 1905. All electroplating involves immersion in a solution of proper ingredients, an anode and a cathode. An electric current passes through the solution to complete the circuit between the two poles, and as a result, the metal contained in the solution is deposited upon the cathode, the object to be plated. This was commonplace in all kinds of electroplating. The difficulty encountered in -chromium plating arose out of questions as to the proper composition of the solution through which the current is passed. All delvers in the art seem to have agreed that chromic acid is the most available form of the metal chromium for use in the solution. As the Court of Appeals pointed 'out in the International Silver case, this acid consists of a molecule of chromium and oxygen in the relation of one atom of the first to three of the second, the compound being ■symbolized as Cr03. The electric current breaks the molecule, setting the chromium free near the cathode where it attaches itself to the cathode and forms the plating. But the solution involved another factor, variously described in the literature of the art and m the court decision as a “catalyst,” “sulfate” or “radical.” Sulfate is one specific radical out of many but is the one universally used both in the art and in commercial practice. The function of this radical, which does not enter into any part of the resulting plating, is that of a catalyst, a “bystander,” so acting, when the current is passed through the solution, as to promote the deposit of chromium upon the cathode. One examining the various references in the art readily learns that all of the chemists working toward, a successful chromium electroplating process experienced trouble in. determining the proper proportionate amount of the radical or sulfate to use in order to achieve efficient results. Fink claims to be the first to have solved the problem completely and the court, in the International Silver case, after examining the prior art, concluded that he was the first inventor of the successful process. At that time the “Udy defense,” which we shall hereafter discuss, was not a part of the prior art references, and not until .the second appeal was that defens.e asserted in that court. In view of Udy’s disclosure, in the second case the court concluded that Fink was not the first inventor but that Udy had taught earlier everything that Fink claimed.

Claim 10, asserted by plaintiff to be typical, reads as follows: “In a method of elec-trodepositing chromium from solutions of ■chromic acid, reducing the chromic acid at the cathode by a catalyst, the total of said .catalyst being stable radicals not exceeding an amount equivalent to the proportion of five grams of sulfate radicals per litre of solution containing 250 grams of chromic acid.” The claim recognizes the prior art. It asserts as a new element the requirement that the totality of all the radical contained in the solution must be taken into consideration and that the total content of that radical shall not exceed the specified proportion. In other words, Fink taught that there must be a ratio, fixed within certain elastic limits, between the total of the catalyst and the chromic acid in the solution.

In 1928 plaintiff filed a disclaimer as to claims 1, 2, 4, 5, 6, 10, 11, 12, 13 and 15, disclaiming any process in which regulating the radical component in proportion to the chromic acid is not practiced in “maintaining the efficiency thereof.” This, said the Court of Appeals, in the International Silver case, had the practical effect of adding is an element a requirement that the radical “must be ‘regulated * * * in maintaining efficiency of the bath’ ” [60 F.2d 914]; in other words, this disclaimer amounted to the addition to the claim of a provision that the proper proportion of the radical shall always be maintained. Consequently the elements of the claims, since the disclaimer, are that, in the process taught by the art, the compounder of the solution should take into consideration the total of all the radical, which should bear a specified ratio to the chromic acid, within rather noncritical limits, and that the ratio within such limits should be maintained throughout the process of plating.

As to the factor of maintenance of the ratio between chromic acid and the radical, the Court of Appeals, in the International case, thought that there was great “plausibility” in the contention that no invention was involved in requiring regulation or maintenance of any electroplating bath once it has been compounded. This, said the court, was the “common practice in the art generally,” and, it would, “indeed seem a very plain thing, when success depends upon the proper proportions of the ingredients and the bath is used repeatedly, to take periodic samples of the solution and correct any variations which occurred. * * * The regulation of the bath was not the invention ; it was a trivial part of the claims.” We agree that, indeed, it would seem elementary, where a scientist has devised a properly balanced solution, through which he passes an electric current in order to secure the deposit of the metal contained in a solution upon a cathode, that the content of that solution, tested and found efficient, should remain somewhat nearly constant in order not to upset or prevent the successful operation. If that be true, then the factors which went into Fink’s claim of invention in his process over and above those taught by the prior art were that the totality of the content of the radical must be considered and that the ratio of total radical to total chromic acid be not more than one to fifty. For, if the requirement of maintenance is fundamentally elementary and obvious, as we believe, then the only remaining factors prescribed by Fink were the maximum ratio and the requirement that the compounder of the solution be careful to see that he had not overlooked any radical included in the solution. This being the situation, the Court of Appeals, in the International case, attributed to the ratio and to the necessity of consideration of the totality of the radical, the inventive feature of Fink’s claims. It remarked that Fink taught that the catalyst was to be calculated from all sources contained in the solution, whether in the chromic acid, as an impurity, or in the substance added as a radical properly speaking or in any other matter in solution. That court said “what Fink really did was to single out the acid radical as the catalyst, disregarding the substance which happened to contain it [and] nobody had thought of this before.” And so that court found “the invention good.” It found that regulation -of the bath in general the art knew; that the anodes were not defined, but that this was not necessary for that had been worked out in prior art, but that Fink was the first to discover the proper ratio between the radical and the chromic acid and to warn the compounder that, in determining this ratio, he should be careful to take into consideration the totality of all radical contained in the solution.

Following the International Silver decision, plaintiff brought suit against General Motors Company. Again the District Court found the patent valid and infringed but this time the Court of Appeals reversed in United Chromium, Inc. v. General Motors Corp., 2 Cir., 85 F.2d 577, 578. It was impelled so to do when it found that Fink was not the first inventor of the process claimed by him. It grounded its decision entirely upon a defense not presented in the first case but raised in the second, namely, the prior art as shown by the earlier patent application of Udy and his earlier practice of the art. The court recalled that in the first decision it had found that what Fink really did was to single out the acid radical without regard to what substance happened to retain it; and that only after repeated experiments had it occurred to Fink that the content of the radical was so important, but, said the court, the record then before it differed from that in the International case in that it clearly established prior invention by Udy, as the court termed it, “a complete and scientific disclosure.” It pointed out that in his investigation and experimentation, as early as 1923, Udy had found that a solution containing chromic acid but no sulfate resulted in no deposit of chromium; that he added sulfate and, observing the varying results, conducted a series of runs to determine the exact effect of the absence or presence of different and varied amounts of radical; that, by this empirical method, he determined what part the acid radical played in the chromium plating; and that it was unnecessary to have- the radical present in the form of chromic sulfate but that it was likely, that a small amount of a free sulfate radical was necessary. By December 7, 1923, said the court, “Udy had a complete understanding of the invention.” On February 4, 1924, he reported that the governing factors in electrolysis of such solution are the radical content and the content of chromium in the solution, saying “the limits to the above factors have already been made and discussed.” And, said the court, in March, 1924, Udy made a full scientific disclosure of “how to make and maintain a bath of pure chromic acid by controlling the acid radical.” , In his application for patent, in June, 1924, Udy declared that, in accordance with his invention, “chromium is deposited from an aqueous solution of chromic acid containing” a closely controlled quantity of sulphuric acid. Therefore, said the court, Udy, not Fink, was the first inventor. As we have remarked, a reargument was granted by the court, the decision adhered to and certiorari denied.

There is extended evidence in this record as to the prior art other than that of Udy but, in view of our conclusion, we do not think it necessary to examine and discuss that art which was largely but not entirely before the Court of Appeals for the Second Circuit in both of the cases cited. Nor is it necessary to determine for ourselves whether, upon the present record, the evidence as to the prior art is .such that a scientist, skilled in his profession and having the benefit of instruction from what had been taught from 1905 to 1924, could, by doing what either Udy or-Fink did, achieve invention. To enter into that determination would prolong our discussion unnecessarily and add nothing to the reasoning upon which we rely. We shall confine our inquiry to whether it can be fairly said that the earlier art of Udy taught Fink what the latter should do.

The terminology of these two qualified and experienced scientists is far from always being the same. At times one speaks of “regulating” and “maintaining” and the other of closely ‘‘controlling.” -One speaks of ratio and proportion; the other of stating the content of one substance as compared with the content of the other substance. One speaks of catalyst; both' and still others speak' of acid radical and sulfates. There is no magic in nomenclature in scientific investigation. The question is what did each scientist, using his Own terms, mean? What did Fink mean? What did Udy mean-? Such is our- essential question in determining, the ultimate effect of the respective expositions of the two delvers in the art. As we have said, there is no question but that Fink did specify and claim that consideration must be given to the total amount of radical sulfate or catalyst present in the solution and that he did fix, within certain elastic limits, his optimum of ratio between the metal compound and the sulfate compound. Then, too, by his disclaimer, he did specify regulation of the solution by maintenance of its essential character. Was he the first to do this or any of this ? The Court of Appeals for the Second Circuit thought he was not, but it is for us to determine the fact for ourselves.

Udy was employed by a subsidiary of the Union Carbide & Carbon Company. At the request of his employer, he went to work to develop processes for electrodepos-iting chromium metal in bulk, termed “chromium winning,” and for plating manufactured articles, and reported monthly successfully plating many articles sent to him to be plated. By trial and error, over a year’s period of time, he determined the proper proportion of sulfate to be included in a successful bath. He reported that his investigation resolved itself into the determination of the effect of SOi- (the radical) in the solution and included definite conclusions as the result of his experiments as to the respective amounts of chromic acid and of sulfate in a successful solution and as to the ratio between them which gave the best results. He reported that “the solution must contain a small amount of an acid radical,” and that the proper amount of the radical depends upon the concentration of the chromium. He reported that after including the desired quantity of pure chromic acid he added to the solution pure sulphuric acid containing the radical. The- amount of SO