Westinghouse Electric Corporation v. Titanium Metals Corp. Of America

454 F.2d 515 172 U.S.P.Q. 194 WESTINGHOUSE ELECTRIC CORPORATION, Appellant, v. TITANIUM METALS CORP. OF AMERICA, Appellee. No. 25145. United States Court of Appeals, Ninth Circuit. Dec. 15, 1971. Rehearing Denied March 14, 1972. Harold J. Birch (argued), Edward F. McKie, Jr., of Birch, Swindler, McKie & Beckett, Washington, D. C., W. Bruce Beckley, of Singleton, Beckley, DeLanoy, Jemison & Reid, Las Vegas, Nev., Fred Shapoe, Patent Counsel, of Westinghouse Electric Corp., Pittsburgh, Pa., for appellant. Raymond J. McElhannon (argued), of Cooper, Dunham, Henninger & Clark, New York City, Francis N. Marshall, of Pillsbury, Madison & Sutro, San Francisco, Cal., Herbert M. Jones, Las Vegas, Nev., for appellee. Before CHAMBERS, HAMLEY and CHOY, Circuit Judges. HAMLEY, Circuit Judge: 1 Westinghouse Electric Corporation brought this patent infringement action against Titanium Metals Corp. of America, for infringement of U. S. Patent 3,072,982. The district court held that Titanium had infringed the patent, but rendered judgment for Titanium on the ground that the patent is invalid for obviousness, under 35 U.S.C. Sec. 103 . Westinghouse appeals. We affirm. 2 The patent…

Westinghouse Electric Corporation brought this patent infringement action against Titanium Metals Corp. of America, for infringement of U. S. Patent 3,072,982. The district court held that Titanium had infringed the patent, but rendered judgment for Titanium on the ground that the patent is invalid for obviousness, under 35 U.S.C. § 103 . Westinghouse appeals. We affirm.

The patent pertains to a step in the process for transforming a first arc-cast ingot of reactive metal such as zirconium, having a contaminated surface and lacking homogeneity and soundness, into a clean, sound and highly homogeneous ingot. The process step covered by the alleged patent comprised the employment of the solid arc-cast first ingot, without intermediate fabrication, as an electrode and consumably arc remelting the first ingot alone in a cooled mold, the mold forming the outer electrode.

In support of its determination that the alleged invention was obvious on April 4, 1952, when inventors Hurford and Gordon first disclosed the process to their subordinates, the district court made extensive findings of fact (eighty-two paragraphs), followed by conclusions of law, all of which are set out in 306…

(dissenting):

I respectfully dissent. I would hold that the District Court erred in concluding that the patent was invalid as “obvious at the time the invention was made to a person having ordinary skill in the art” under 35 U.S.C. § 103 .

Accepting as sustained by the evidence in the record all of the findings of fact which are preeursive to consideration of this crucial issue of obviousness, it is my opinion that a conclusion of nonobviousness of the invention is compelled by the following findings:

1. The published prior art contained no suggestion of direct consumable arc remelting of ingots of metal. (16)

2. The fabrication techniques which involved chopping up, or forging and rolling the initial arc-cast ingot before remelting (as in the Bureau of Mines’ “828” process) were time-consuming and expensive and inevitably resulted in “contamination” of the metal. (13, 20, 27)

3. For some months prior to completion of the invention, the Bureau of Mines, by its “828” process, had been remelting zirconium alloy metal, and up to at least July 26, 1952, had remelted three tons of such metal by that process. (19)

4. The wastage, increased cost of production and increased…