Appeal from the District Court of the United States for the Northern District of Illinois, Eastern Division; William H. Holly, Judge.
Before EVANS and SPARKS, Circuit Judges, and BRIGGLE, District Judge.
On February 9, 1926, patent No. 1,572,487, covering aluminum-copper alloy, was issued to appellee, the assignee of Zay Jeffries and Robert S. Archer, whose application was filed January 4, 1921, and on a division, the application for the patent in suit was filed April 29, 1924. The instant suit was brought against two defendants, the Acme Aluminum Foundry Company, an Illinois corporation, and the appellant herein, also an Illinois corporation. The decree sustained the patent, enjoined its further infringement, and directed the payment of damages which were fixed without any accounting at $1,000 and costs of $1,500. The defendant, Acme Aluminum Foundry Company, accepted this decree and did not appeal.
Appellant denies validity of the patent and its infringement.
The patent relates to the art of making and heat-treating aluminum-copper alloy castings and it also covers the resultant -- a heat-treated casting of aluminum-copper alloy. The three claims in suit are set forth in the margin.*fn*
We quote from the specifications of the patent:
"The invention * * * relates to the production of aluminum alloy castings, particularly castings made of alloys containing silicon or copper or both, with or without other metals, and its chief object is to provide a simple and effective method which will produce light-weight castings with a hitherto unobtainable combination of physical properties, especially as regards elastic limit, tensile strength and ductility. * * *
"* * * the invention resides in the discovery that certain alloys are especially susceptible to improvement by heat treatment after casting, and that certain methods of casting such alloys further and peculiarly adapt them to such treatment; and in the additional discovery of temperature and duration of heat treatment in combinations appropriate to the particular alloys and methods of casting involved. With the aid of these discoveries we have been able to produce castings having improved physical properties with respect to elastic limit, tensile strength and ductility to an extent hitherto unattainable, with the result that it is now possible to use aluminum alloy castings for purposes for which their use has previously been impracticable. * * *
"The next step in the example of our process now being described consists in heating the castings to, and maintaining them at a temperature of 500 deg. to 540 deg. C. for a period of time depending upon the results desired and the manner in which the casting was made. The principal object of heating the castings at the temperature mentioned is to cause the CuAl in the net work to go into solution in the solid aluminum-rich constituent. It is found that at the temperatures referred to, this CuAl dissolves slowly, in fact surprisingly slowly. In sand castings the time necessary for maximum solution of this CuAl may be as much as 48 hours, at the temperatures mentioned; while in chill castings, because of the finer network structure, the time for maximum solution is less -- for example, 7 hours has been found to be sufficient in some cases. * * *
"After the heating period the castings are preferably cooled rapidly, as by quenching in water. By the above described procedure, sand castings of an alloy containing 4 per cent copper, 0.2 per cent magnesium and less than .25 per cent iron have been produced with a stencil strength, after aging, of about 50,000 pounds per square inch and an elongation of 8.5 per cent. * * *"
The story of the development of the use of aluminum, made possible through the selection of various metals to be used in aluminum alloys and the application of heat to the alloys and later to the castings, is a fascinating tale of another triumph of the chemist in a new metallurgical field.
Whether Jeffries and Archer made an advance which justified the issuance of the patent in suit and whether appellant used their process, are the questions which we must answer differently from the District Court, or else affirm the decree.
Acme Aluminum Foundry Company procured or made castings of aluminum cooper alloy. It had these castings heat treated by appellant. It then sold the finished product -- the castings. In so heat treating the castings furnished by Acme, did appellant infringe appellee's patented process or the patented product? If so, are the two process claims and the one product claim valid, in view ...