Everlube Corp. of America v. Electrofilm, Inc.

154 F. Supp. 788, 115 U.S.P.Q. (BNA) 260, 1957 U.S. Dist. LEXIS 3167, 1957 Trade Cas. (CCH) 68,724
CourtDistrict Court, S.D. California
DecidedJuly 29, 1957
DocketNo. 20315
StatusPublished
Cited by5 cases

This text of 154 F. Supp. 788 (Everlube Corp. of America v. Electrofilm, Inc.) is published on Counsel Stack Legal Research, covering District Court, S.D. California primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Everlube Corp. of America v. Electrofilm, Inc., 154 F. Supp. 788, 115 U.S.P.Q. (BNA) 260, 1957 U.S. Dist. LEXIS 3167, 1957 Trade Cas. (CCH) 68,724 (S.D. Cal. 1957).

Opinion

YANKWICH, District Judge.

By its complaint plaintiff seeks a declaratory judgment of invalidity and non-infringement of Patent No. 2,703,768, dated March 8, 1955, owned by the defendant (28 U.S.C.A. § 2201) and damages for unfair competition (28 U.S.C.A. § 1338(b))

The defendants in their Answer ask for a declaration of validity and by cross claim, charge infringement and unfair competition and ask injunctive relief and damages.

The patent in suit is denominated “Dry Lubrication Process and Product.” The object of the invention is stated in the specifications in this manner:

“In accordance with my invention, graphite may be practically permanently bonded to the surface of the article being treated, and thus provide lubrication or protection for very long periods of time without any further treatment.
“One object of my invention is to provide processes for bonding graphite to the surfaces of articles whereby the graphite is retained at least semi-permanently in a position to produce lubrication.
“Another object of this invention is the production of articles with surfaces having substantial quantities of finely divided particles of graphite embedded impregnated or diffused therein as distinguished from a mere coating of loose graphite particles.
“A further object of this invention is to provide friction surfaces on articles with lubrication in the form of particles of graphite bonded and held securely thereto by means of a resinous bonding agent that is resistant to heat and pressure and that does not deteriorate in the presence of oils and other lubricants.”

At the trial of the case, the issues were reduced to two: (1) validity of the patent and (2) infringement.

In determining the matter, it is well to consider generally the grounds of invalidity alleged in the complaint. The complaint, after alleging the claim of the plaintiff that the patent is invalid and the contrary contention of the defendants and their notice to the plaintiff that .they are infringing, states .generally that the Letters Patent and each of the claims thereof are invalid because

“(a) None of the alleged inventions or discoveries claimed in Letters Patent No. 2,703,768 were or are patentable to the alleged inventor named therein, under the provisions of Sections 101, 102 and 103 of Title 35 of the United States Code.”

More specifically, it is stated that

“(b) All of the claims of Letters Patent No. 2,703,768 are invalid, because the alleged inventions or discoveries described thereby were patented or described in certain printed publications and Letters Patent in .this and foreign countries before the alleged invention or discovery thereof by the applicant for said Letters Patent.
“(c) All the claims of Letters Patent No. 2,703,768 ' are invalid, because, .prior to any supposed invention or discovery by the applicant for said Letters Patent, that which [790]*790is alleged to be patented by said Letters Patent, and particularly that which is described and claimed therein, and all material and substantial parts thereof, had been previously known to, and used by, others in this country.”

We consider first the question whether the patent was anticipated in the prior patented art. (35 U.S.C.A. § 102(a))

I

The Process Patent Involved

The patent involved is a chemical process. The claims, while seven in number, are brief. They are reproduced in the margin.1

In substance, the claims, after describing the general character of surface pretreatment, refer to thermosetting polymerizable materials as vehicles for bonding the solid particles of the lubricant. In the specifications, the vehicle, which will contain the graphite, is described as containing a thermosetting bonding agent and they indicate the desirable properties of the resultant bond. Several thermosetting vehicles are referred to. The specifications also mention the fact that solvents are to be employed as thinners, — that is, they are to be used so as to permit thin coatings to be supplied.

Because the patent uses chemical terms, some of which have only recently come into general use, it is well to define three terms that are significant:

Polymerisation: The combination of several molecules to form a more complex molecule having the same empirical formula as the simpler ones. It is often a reversible process. (Chambers, Technical Dictionary, 1948, p. 662)

Thermosetting compositions — (Plastics): Compositions in which a chemical reaction takes place while they are being moulded under heat and pressure; the appearance and chemical and physical properties are entirely changed, and the product is resistant to further applications of heat (up to charring point); e. g. phenol formaldehyde, urea formaldehyde, aniline formaldehyde, glycerolphtalic anhydride. (Ibid, p. 846)

Thermoplastic: (Chem) Becoming plastic on being heated. Specifically (Plastics), any resin which can be melted by heat and then cooled, the process being able to be repeated any number of times without appreciable change in properties; e. g. cellulose derivatives, vinyl resins, polystrenes, polyamides, acrylic resins. (Ibid, p. 845) 2

[791]*791In substance, what Hall teaches is a method of producing a dry lubricating process and product by using a mixture which can be thermoset in place of other bonding agents, such as varnish or acid resin mixture. He specifies the bonding agent and describes steps which are to be taken to make the bond. The result, as testified to in the record, is a dry lubricant that stands a good deal of wear and can be used on airplanes and other intricate engines in places that cannot be reached by ordinary methods of lubrication.

In claims for processes, it is necessary that all the steps in the process be described. Walker on Patents, Deller’s Edition, 1937, Yol. II, § 171, pp. 813-814; Application of Fahrni, 1954, 210 F.2d 302, 303-308, 41 C.C.P.A., Patents, 768. And when the process consists of old elements known in the art, then patentability exists only if, in the language of an old case, the patentee has added something of value to the sum of human knowledge. O’Rourke Engineering Construction Co. v. McMullen, 2 Cir., 1908, 160 F. 933, 938; and see, Application of Gibbons, 1954, 210 F.2d 299, 301, 41 C.C.P.A., Patents, 788. There has been no break in the continuity of the application of this test over the years. The more recent restatements by the Supreme Court have merely insisted that when applied to a combination of old elements, it must be evident that there is a contribution to prior knowledge before invention is found. Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 1950, 340 U.S. 147, 152, 71 S.Ct. 127, 130, 95 L.Ed. 162. As said by the Court in the case just cited:

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154 F. Supp. 788, 115 U.S.P.Q. (BNA) 260, 1957 U.S. Dist. LEXIS 3167, 1957 Trade Cas. (CCH) 68,724, Counsel Stack Legal Research, https://law.counselstack.com/opinion/everlube-corp-of-america-v-electrofilm-inc-casd-1957.