source: Caselaw Access Project

author: DIAMOND, District Judge.

license: Public Domain

text:
    CRUCIBLE, INC., a Delaware corporation, Plaintiff, v. STORA KOPPARBERGS BERGSLAGS AB, a Swedish corporation, and Uddeholms AB, a Swedish corporation, Defendants. STORA KOPPARBERG CORPORATION, a New York corporation, and Uddeholm Steel Corporation, a New York corporation, Plaintiffs, v. CRUCIBLE, INC. a Delaware corporation, Defendant.
    Civ. A. Nos. 74-917, 74-1062.
    United States District Court, W.D. Pennsylvania.
    Sept. 19, 1984.

      Ford F. Farabow, Jr., Laurence R. Heft-er, Michael C. Elmer, Allen M. Sokal, Finnegan, Henderson, Farabow, Garret & Dunner, Washington, D.C., Frederick J. Francis, Meyer, Unkovic & Scott, Pittsburgh, Pa., for plaintiff Crucible, Inc.
    Stuart A. White, Crutis, Morris & Safford, New York City, John M. Webb, Webb, Burden, Robinson & Webb, Paul J. Leventon, Leventon & Leventon, Pittsburgh, Pa., for defendants.
   OPINION

DIAMOND, District Judge.

In these consolidated suits, plaintiff Crucible, Inc. (hereafter “plaintiff” or “Crucible”) seeks to enforce claim 30 of U.S. Patent No. 3,746,518 (hereafter sometimes “the Holtz patent”) and claim 4 of U.S. Patent No. 3,561,934 (hereafter sometimes “the Steven patent”) against a group of corporately related defendants, Stora Kopparberg Corporation, Uddeholm Steel Corporation, Stora Kopparbergs Bergslags AB and Uddeholms AB (hereafter collectively referred to as “defendants” or “Stora/Uddeholm” or “Stora”). Crucible seeks an injunction against sales of Stora/Uddeholm’s infringing products (hereafter “ASP” products) and a determination of willful and intentional infringement. Related antitrust and damage issues have been severed for a later trial.

The Holtz and Steven patents protect powder metallurgy cutting tool products. Crucible contends that Holtz represents a powder metallurgy cutting tool breakthrough because Holtz allegedly achieved both full density and a superior microstructure including a uniform distribution of ultrafine carbides less than 3 microns in size, which combination plaintiff alleges had eluded all prior art investigators. Steven teaches a so-called hob having superior size change uniformity, a long-standing problem in the hob industry, according to the plaintiff.

There are four general issues that must be decided with respect to Holtz claim 30:

1. Is it valid?

2. Is it infringed?

3. Is its infringement willful and intentional?

4. Was fraud committed during prosecution of the Holtz patent?

The defendants contend that the specific issues, which they refer to as the “four dominant issues,” are:

1) Is claim 30 restricted to cutting tools?

2) Is 3 microns a critical carbide size?

3) Are ASP powders a supersaturated solid solution?

4) Is HIPing equivalent to hot-working?

With respect to validity, this litigation was stayed for almost six years so that the United States Patent and Trademark Office (hereafter sometimes “PTO”) could rule on virtually the same validity issues in connection with a subsequent related Holtz application, which was contested by Stora/Uddeholm in inter partes proceedings before the PTO. At trial, .Stora/Uddeholm agreed that the PTO Board of Appeals decision on patentability should be accorded “great weight.” Agreed Finding 9. In addition, our ruling on the fraud issue has been delayed pending a decision of the PTO Board of Appeals, where the parties to the case sub judice litigated, inter alia, the issue of fraud or gross negligence in the prosecution of the Holtz patent. The PTO Board of Appeals rendered its decision on April 25, 1984, finding insufficient evidence of fraud or of culpability under 37 C.F.R. 1.56 (1983). Ex Parte Frederick C. Holtz, Jr., Appeal No. 551-61 (PTO Board of Appeals, April 25, 1984).

The only issue with respect to Steven claim 4 is its validity, because all other issues, including infringement, have been admitted by defendants.

For the reasons set forth below, the court concludes that both patents are valid and have been infringed by defendants.

I.

Holtz Patent

Claim 30 of the Holtz patent states:

A consolidated integral alloy body which is substantially fully dense formed of a hot worked supersaturated solid solution of an inherently alloying composition said alloy body consisting essentially of a continuous metallurgical phase with a uniformly disbursed hard phase of minute dispersed hard phase particle sizes that are substantially entirely less than three microns in maximum dimension said alloying composition consisting essentially by weight from about .5% to about 5% carbon at least 10% of a hard phased forming element selected from the group consisting of Cr, W, Mo, Ti, Ta, Cb, Zr, Hf, V, and Al, and mixtures thereof, and the remainder base metal and incidental impurities, wherein said base metal is selected from the group consisting of cobalt, iron and nickel, and wherein the total amount of base metal is at least 30%.

Plaintiff contends that Mr. Holtz by virtue of this claim had invented a revolutionary process of producing cutting tool steel in that through this process he was able to achieve an alloy which had full density and fine carbide size, the combination of which substantially improved the overall toughness, hardness, fabricability, grindability and wear resistance of high-speed cutting tools made from that alloy.

The defendants attack the Holtz invention on several grounds. First, the defendants claim that the Holtz invention is unpatentable for the reason that it was anticipated by an article entitled “Progress Report on Hot Forging Pre-Alloyed Metal Powders” published in 1952 in the publication Precision Metal Molding, Vol. 10, Nov. 10, 1952, by Lawrence Mott (“Mott”) and by the Reen I invention, U.S. Patent No. 3,150,444, issued September 29, 1964. Second, that the claim description in claim 30 is invalid under 35 U.S.C. § 112 (1982) and cannot be restrictively interpreted to be limited to cutting tools. Third, the defendants contend that the Holtz patent was obvious in light of the prior art and, therefore, invalid under 35 U.S.C. § 103 (1982). Finally, the defendants contend that the Holtz invention is invalid because it constitutes double patenting. With respect to infringement, defendants have stipulated, with two exceptions, to infringement of the elements of Holtz claim 30 by their ASP-steel products, contesting only that their products are formed by hot working and from a supersaturated solid solution.

A.

Validity

Presumption of Validity

Under 35 U.S.C. § 282 (1982), a patent is afforded a presumption of validity. Trio Process Corp. v. L. Goldstein’s Sons, Inc., 461 F.2d 66, 70 (3d Cir.), cert. denied 409 U.S. 997, 93 S.Ct. 319, 34 L.Ed.2d 262 (1972), cert. denied 449 U.S. 827, 101 S.Ct. 91, 66 L.Ed.2d 30 (1980); L.D. Schreiber Cheese Company v. Clearfield Cheese Company, 540 F.Supp. 1128, 1134 (W.D.Pa.1982), aff’d 716 F.2d 891 (3d Cir.1983). One who challenges validity has the burden of proving invalidity by a standard of clear and convincing proof. Id.; Northern Engineering and Plastics Corp. v. Eddy, 652 F.2d 333 (3d Cir.1981), cert. denied 454 U.S. 1146, 102 S.Ct. 1009, 71 L.Ed.2d 299 (1982); Universal Athletic Sales Co. v. American Gym, Recreational and Athletic Co., 546 F.2d 530 (3d Cir.1976), cert. denied 430 U.S. 984, 97 S.Ct. 1681, 52 L.Ed.2d 378 (1977).

The plaintiff here contends that the statutory presumption of validity is strengthened where the Patent Office specifically has considered the prior art relied upon by the party challenging the patentability in a court action, Universal, 546 F.2d at 540 n. 28; where it cannot be demonstrated that any uncited prior art was more pertinent than that cited by the patent examiner, General Battery Corp. v. Gould, Inc., 545 F.Supp. 731, 740 (D.Del.1982); see also Otto v. Koppers Company, 246 F.2d 789 (4th Cir.1957), cert. denied 355 U.S. 939, 78 S.Ct. 427, 2 L.Ed.2d 420 (1958); where the party who challenges validity participated fully in an inter partes proceeding before the PTO and raised virtually the same contentions and prior art before the PTO that the party asserts in the court proceedings; and where the patent claims have been reviewed and affirmed by the PTO Board of Appeals. CMI Corp. v. Metropolitan Enterprises, Inc., 534 F.2d 874, 880 (10th Cir.1976).

However, as defendants correctly note, the statutory presumption of validity attaching to an issued patent may be weakened where it can be shown to the court that relevant prior art was not examined by the PTO. Allegheny Drop Forge Company v. Portec, Inc., 541 F.2d 383, 384 n. 3 (3d Cir.1976); Black & Decker Manufacturing Company v. Disston, Inc., 436 F.Supp. 1175, 1179 (W.D.Pa.1977); Schreiber Cheese, 540 F.Supp. at 1134. This weak ening of the statutory presumption of validity may be ameliorated where the prior art which was omitted is not as relevant or pertinent as that which was examined by the PTO and where it is clear that the PTO was aware of the alleged omission of the prior art. See generally Aluminum Co. of America v. Amerola Products Corp., 552 F.2d 1020, 1024-5 (3d Cir.1977).

The proceedings in the PTO pertaining to this case were long and tortuous. The Holtz patent application was filed on February 26, 1965, and was issued on July 17, 1973. During the course of this litigation, plaintiff alerted defendants to a pending patent application for a continuation on the Holtz invention (the Holtz grandchild application) and invited defendants to participate in an inter partes PTO proceeding to contest the issuance of the continuation patent. The defendants filed a protest against the continuation grandchild application on December 1, 1976, and since that time have participated fully and completely in PTO protest proceedings.

The Holtz grandchild patent application was originally rejected by a patent examiner. On August 6,1981, a panel of the PTO Board of Appeals reversed that ruling and ruled that the patent application was valid and that the patent should be issued. Subsequently, a second patent examiner ruled that the patent was invalid on the basis of the failure of the inventor-applicant for the Holtz Patent to cite prior art, specifically the Comstock reference, British Patent No. 781,083, complete specification published August 14, 1957. On October 7, 1982, this decision was made a final rejection of the Holtz grandchild application. That decision was appealed to the PTO Board of Appeals, which, as we indicated earlier, reversed the rejection on April 25, 1984.

While we apply the statutory presumption of validity under 35 U.S.C. § 282, the question remains whether that presumption must be weakened in light of the fact that the plaintiff concedes that the Comstock reference was not cited to the PTO in the original Holtz application. The extent to which the presumption may be weakened depends upon comparison of the Comstock reference to the art actually cited by the Patent Office. Aluminum Co. of America, 552 F.2d at 1025.

Comstock v. The Prior Art Disclosed at the Patent Office

The plaintiff contends that the prior art before the PTO, i.e., Mott and Reen I, were more pertinent to the Holtz application than the Comstock reference, which plaintiff contends would have been cumulative and not material.

Comstock disclosed a process for cutting tool alloys made by powder metallurgy through a process which required: atomization of a powder; cold-compacting that powder; heating the powder into cold-compacting condition; and, then working that product to achieve densification. In comparison, Reen I disclosed a process which produced a water-atomized powder from a pre-alloyed powder, which was subjected to a hydrogen atmosphere in an attempt to remove the oxide which resulted from the water atomizing process, followed by a cold compacting process, then a sintering process at a high temperature, and finally a series of cold working and sintering steps to achieve a final product for use in cutting tools. The Mott reference deals with high -temperature structural alloys,- in particular X40 cobalt. Mott lists four basic steps, which amount to a forging and hot-coining process with the stated purpose of achieving a completely dense material from an initial structure of complete porosity.

It is defendants' position that the Com-stock reference is indisputably anticipatory of Holtz claim 7 and, therefore, material to the Holtz invention as a whole. However, the court, notes that claims 7, 21, and 22 of the Holtz patent are virtually identical to claims 7, 21, and 22 of the Reen II reference, U.S. Patent No. 3,244,506, and, therefore, more closely related to Reen I than to Comstock. For this reason and for the reason that there was substantial prior art before the PTO, the court concludes in light of the Aluminum Co. of America standard that the failure to cite the Com-stock reference does not materially weaken the statutory presumption of validity attaching to the Holtz patent. In addition, the April 25, 1984, decision of the PTO Board of Appeals in Ex Parte Frederick C. Holtz, Jr., supra, fully supports the foregoing analysis and conclusion.

Anticipation

One element necessary to sustain patent validity is novelty. Eli Lilly & Co. v. Premo Pharmaceutical Laboratories, Inc., 630 F.2d 120 (3d Cir.), cert. denied 449 U.S. 1014, 101 S.Ct. 573, 66 L.Ed.2d 473 (1980). This requirement’has been codified in 35 U.S.C. § 102 (1982) and is closely related to the nonobvious requirement of 35 U.S.C. § 103. The standard for lack of novelty, for “anticipation,” is one of strict identity. To anticipate a claim for a patent, a single prior source must contain all of the essential elements of that claim. 1 D. Chisum, Patents § 3.02 (1978). The classic test of anticipation is set forth in Knapp v. Morss, 150 U.S. 221, 14 S.Ct. 81, 37 L.Ed. 1059 (1893), and it provides “that which infringes, if later, would anticipate if earlier.” Id., at 228, 14 S.Ct. at 84, (quoting Peters v. Active Mfg. Co., 129 U.S. 530, 537, 9 S.Ct. 389, 392, 32 L.Ed. 738 (1889)).

In addition to the novelty requirement, § 102 provides certain statutory bar or lofes of right provisions. Of specific relevance in this case is § 102(b), which the defendants cite as invalidating the Holtz patent at suit.

§ 102 provides in its pertinent part:

A person shall be entitled to a patent unless—
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States ____

The defendants make several contentions with respect to statutory bar and anticipation. First, the defendants contend that the Mott article “Progress Report on Hot Forging Pre-Alloyed Metal Powders,” supra, provides a basis for the invalidation of the Holtz patent. Defendants contend that § 102(b) applies not only to prior publication of the invention in suit, but also to the prior publication of an invention with substantial identity to the patent in suit. Application of Schaumann, 572 F.2d 312, 317 (CCPA 1978); Amphenol Corp. v. General Time Corp., 397 F.2d 431 (7th Cir.1968).

Defendants also claim the Holtz patent was anticipated by the Reen I reference. 35 U.S.C. § 102 provides in this regard that:

A person shall be entitled to a patent unless—
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.

As noted earlier in order to establish anticipation, defendants must show that Reen I contains all of the elements of Holtz.

The principal difference between Reen and the Holtz patent cited by the PTO Board of Appeals is that Reen pertains to a method of obtaining consolidated heat hardenable steels that is not necessarily restricted to cutting tools steels. In contrast, Holtz sought to achieve the desired toughness for cutting tools and was primarily concerned with attaining the combination of full density and a carbide size of 3 microns, facts which the plaintiff cites as evidence that the Holtz invention was limited to cutting tool steel.

To rebut this argument, defendants point to several alleged common factors in the Reen and the Holtz processes, Defendants claim that the Reen process could be formed by hot working; that the chemical composition of the Reen material falls within the range of claim 30 of the Holtz application; that while Reen does not use a supersaturated solution, plaintiff attaches no importance to that element in Holtz claim 30; and, finally, that both Reen and Holtz were concerned with substantial or almost full density in addition to fine and disbursed carbides.

Mr. Thomas Neumeyer, one of plaintiffs experts, opined that Been was unable to achieve full density without sacrificing fine carbide size. Neumeyer also testified that while in his opinion the Been process could be used to produce cutting tools, it would produce an inferior cutting tool due to the chemical inhomogeneity inherent in the Been process resulting in a lack of full density.

Further, Dr. Heilman, an employee and chief technical expert of defendants, testified that a particular carbide size, 3 microns, was critical to the production of acceptable tool steel. As noted by the PTO Board of Appeals, while Been suggested full density and uniform distribution of carbides, there is nothing in Been which indicates the actual size of the carbides.

For these reasons, and in light of the strict requirements of the test for anticipation, the court finds that Holtz was not anticipated by Been.

Specification

Defendants maintained at trial and indeed, argued that it was one of the critical issues in the ease, that the Holtz patent claim by its language could not be restricted to cutting tool steel. In support of their position, defendants offered several arguments to show an intent by Holtz not to restrict claim 30 to cutting tool steel. The point of this contention is that the patent, having not been-restricted to cutting tool steel, was anticipated by Been (see the above section), and/or that the patent is infirm under 35 U.S.C. § 112 which requires that a patent claim be sufficiently descriptive to alert all those in the industry as to what constitutes infringement.

In response, plaintiff offered the testimony of Mr. Neumeyer and Dr. Tien. During his direct examination Mr. Neumeyer listed the essential elements of a metal based cutting tool. He stated that the two essential elements are the metal base or matrix and the alloyed carbides for the so-called hard phase.

Dr. Tien testified that the requirements for high temperature structural alloys and metal base cutting tools differed and that the principal difference was the ultimate tensile strength as tested through bend tests. Dr. Tien further stated that the Holtz patent did not describe high temperature structural alloys and he set forth the bases which led him to conclude that the Holtz process described tool steel properties with special attention to hardness as opposed to high temperature structural alloys. With regard to tool steel density, Dr. Tien contrasted the Holtz invention with the type of steel in a high temperature structural alloy which would be used, for example, in jet engines. He stated that porosity; i.e., lack of density, creates problems with metal fatigue and that in his opinion tool steels were more demanding than structural alloys. According to Dr. Tien, the combination of substantial full density with a uniformly dispersed hard phase described in the Holtz patent clearly indicates that Mr. Holtz contemplated a patent for the production of metal based cutting tools rather than structural alloys, and the court so finds.

In addition, the plaintiff offered the testimony of Mr. Holtz who, as inventor, stated that his invention was clearly limited to cutting tools, a fact proven by the stated purpose of the U.S. Air Force contract commissioning the research by him which resulted in the invention in suit. Finally, plaintiff points out that as a matter of law a patent claim must be interpreted in such a way as to protect its validity, citing Smith v. Snow, 294 U.S. 1, 55 S.Ct. 279, 79 L.Ed. 721 (1935).

On balance, after a review of all of the evidence, the court is convinced that claim 30 indeed is limited to cutting tool steel and is sufficient under 35 U.S.C. § 112. This conclusion is based upon an interpretation of claim 30 in light of the patent specifications, the file wrapper and the prior art as well as the testimony of Mr. Neumeyer, Dr. Tien, and Mr. Holtz. We note especially the fact that those learned in the prior art for a long time had been attempting to achieve the necessary uniform distribution of fine carbides in a fully dense material. Also, the Holtz research commissioned by the Air Force was for the development of this desired superior tool steel and the testing done on the Holtz product; i.e., cutting and transverse rupture tests, evidence this limitation.

Obviousness

Under 35 U.S.C. § 103, a patent may be invalid if it is a patent on an “obvious invention”. Section 103 provides:

§ 103. Conditions for patentability; non-obvious subject matter.
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains____

In Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), the Court set forth the standard to be used in determining obviousness under § 103:

Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

Id. at 11, 86 S.Ct. at 690; Rengo Co. Ltd. v. Molins Machine Company, 657 F.2d 535, 542 (3d Cir.), cert. denied 454 U.S. 1055, 102 S.Ct. 600, 70 L.Ed.2d 591 (1981). Against this standard, we examine the evidence presented in the trial of this case with reference to the Holtz patent.

Prior Art

In determining the question of obviousness, the court is bound to consider all prior art. New York Scaffolding Co. v. Liebel-Binney Construction Co., 254 U.S. 24, 41 S.Ct. 18, 65 L.Ed. 112 (1920). Prior art includes the knowledge, acts, descriptions and patents set forth under 35 U.S.C. § 102. Mooney v. Brunswick Corp. 489 F.Supp. 544 (E.D.Wisc.1980), aff’d 663 F.2d 724 (7th Cir.1981). Pertinent prior art has been defined as that which one of ordinary skill in the art reasonably would be expected to look to for a solution to the problems which the patented article solves. See Tokyo Shibaura Electric Ltd. v. Zenith Radio Corp., 404 F.Supp. 547, 556 (D.C.Del.1975), aff’d 548 F.2d 88 (3d Cir.1977).

The court is persuaded that at the time of the Holtz invention and indeed, today, it is recognized that in order for high speed tool steels to have the optimum measure of toughness, grindability, heat resistance, hardness, dimensional stability, and wear resistance, they must possess characteristics which too often are mutually exclusive. These include full, or, substantially full, density with a resultant lack of porosity, and a uniformly dispersed hard phase of fine carbides. It is also generally conceded that the attainment of these qualities is very difficult because they are produced by opposite effects.

We have considered all of the prior art references cited by the defendants with special attention to those primary sources; i.e., Mott, Comstock and Reen I, and have concluded that no prior inventor was able to achieve the requisite combination of high density and finely dispersed carbides necessary to the production of top quality high speed tool steel. Indeed, no prior inventor even regarded such.a combination as theoretically possible.

Mr. Neumeyer stated that the Comstock process was insufficient to achieve full density. In addition, Neumeyer opined that Comstock could not achieve fine carbides due to the use of “as high a temperature as possible” during the compaction process.

Similarly, with respect to Reen, Neumeyer stated that Reen was unable to achieve full density without sacrificing fine carbide size. As previously noted, Neumeyer suggested that Reen could produce cutting tools, but of inferior quality due to the chemical inhomogeneity of the Reen product.

With respect to Mott, Dr. Tien noted that Mott dealt with high temperature structural alloys. In addition, Tien concluded that the Mott teaching clearly produced insufficient density for cutting tools and indeed, a density which was below even that recommended for the less demanding high temperature structural alloys.

From our review of these references, we conclude that until the Holtz invention, those in the art were left with a choice between the full density achieved through a high temperature process which inevitably yielded undesirable coarse carbides, or a process which controlled carbide growth but which resulted in insufficient density. The Holtz process produced the desired combination of full density and fine carbide size necessary to the production of superior cutting tool steel.

In reaching this conclusion, we necessarily reject defendants’ contention that the 3 micron carbide size is not critical and thus not of “patentable significance.” (Defendants’ Brief After Trial p. 15). The PTO Board of Appeals stated that “the claimed limitation of three microns as the size of the carbides is significant in terms of the utility of high speed tool steels and is not merely an arbitrary quantification.” This conclusion, with which we agree, finds support in the testimony of Mr. Neumeyer and Dr. Heilman. In any event, the criticality of particular range selection by an inventor is only controlling if criticality is essential to nonobviousness. See Application of Kroekel, 504 F.2d 1143 (CCPA 1974). And since we have found that those in the art were unable to achieve the combination of fine carbides and full density, the criticality of 3 micron carbides is not essential with respect to obviousness.

We also summarily reject as unsupported by the weight of the evidence, Dr. Lawley’s conclusion that Holtz claim 30 is obvious.

Other Considerations

We proceed next to the “other considerations” outlined by the court in Graham, supra, because our consideration of the prior art encompassed an examination of the differences between the Holtz patent, the prior art in suit and the level of skill in the art.

Commercial Success

With respect to the commercial success of the Holtz invention, the parties have stipulated to the fact that the substantially improved properties of the Holtz products have led to substantial commercial success of the products of both plaintiff and defendants.

Long-Felt Unsolved Needs/Failure of Others

As evident from the foregoing discussion, we have concluded that those in the art of producing cutting tool steel had long desired to improve their products but were unable to achieve the desired combination of necessary qualities. It was precisely for this reason that the U.S. Air Force commissioned the Holtz research effort.

It also is clear to the court from the testimony of Dr. Heilman that, at the very least, when defendants became aware of Mr. Holtz’ success through his work on the so-called “IITRI” Research Project, defendants commenced work to attempt to achieve the combination of finely dispersed carbides and theoretical full density, and, moreover, recognized that they were substantially behind their American competitor. Additionally, a factor which bears on both commercial success, and long-felt unsolved needs and the failure of others, is the fact that in 1970 Mr. Holtz won an award from Industrial Research Magazine for inventing one of the one hundred most significant scientific developments of the year.

In conclusion with respect to obviousness, the court finds that the Holtz invention was exactly what it purported to be; viz, the development of a new and previously thought unachievable, yet very desirable, method and process for obtaining the necessary and theretofore mutually exclusive properties of theoretical full density and finely dispersed carbides for use in high speed tool steels.

Double Patenting

On the eve of trial, defendants for the first time raised the issue that the Holtz patent was invalid for double patenting. Counsel for defendants argued that no prejudice would result from this timing because the issue could be resolved as a matter of law by a comparison of the claims of two previously issued Holtz patents with the wording of claim 30.

As the court noted during trial, there are two types of double patenting. The first is the same-invention double patenting and the test for this is whether the claim of the subsequent patent literally “infringes” the prior patent. See 3 D. Chi-sum, supra, at § 9.03[1][3]. The second type of double patenting is the so-called “obviousness” double patenting, the test for which is very similar to the one employed to determine the nonobviousness requirement for patent validity. Id. Obviousness double patenting can be cured by the issuance of a terminal disclaimer under 35 U.S.C. § 253 (1982) which permits a patentee or applicant to disclaim the entire, or any part of the term of the patent granted. See generally Application of Vogel, 422 F.2d 438, 57 CCPA 920 (1970).

In light of the representations of counsel for defendants, the only issue before the court is the issue of whether or not there is same-invention double patenting. Since that determination does not involve a factual inquiry into the prior art, we look simply to the claims of the prior Holtz patents and the claim 30 in suit to determine whether or not they are identical and thus, whether double patenting exists. In Application of Vogel, the court stated:

By “same invention” we mean identical subject matter. Thus, the invention defined by a claim reciting “halogen” is not the same as that defined by a claim reciting “chlorine,” because the former is broader than the latter. On the other hand, claims may be differently worded and still define the same invention. Thus a claim reciting a length of “thirty-six inches” defines the same invention as a claim reciting a length of “three feet,” if all other limitations are identical ... A good test, and probably the only objective test, for “same invention,” is whether one of the claims could be literally infringed without literally infringing the other. If it could be, the claims do not define identically the same invention.

422 F.2d at 441 (emphasis in original).

As plaintiff correctly points out, in Application of Vogel, the issued patent claims were limited to pork while the claims on application pertained to meat, on which basis the court found no double patenting. In this case, the claims of the prior Holtz patents are limited to nickel based alloys, while claim 30 in suit pertains to iron and cobalt alloys in addition to nickel base alloys. On this basis upon the authority of Application of Vogel, the court concludes that there is no double patenting.

B.

Infringement

In Graver Tank & Manufacturing Company v. Linde Air Products Company, 339 U.S. 605, 607, 70 S.Ct. 854, 855, 94 L.Ed. 1097 (1950), the Court stated:

In determining whether an accused device or composition infringes a valid patent, resort must be had in the first instance to the words of the claim. If accused matter falls clearly within the claim, infringement is made out and that is the end of it.

In the instant action, defendants have admitted the literal infringement of claim 30 with respect to all of its elements except with respect to “hot working” and “supersaturated solid solution”.

Supersaturated Solid Solution

Defendants contend that “[t]he hallmark of a ‘solid solution’ is the absence of a discernible second phase.” And, further, that since “[t]he ASP powder particles used to form defendants’ accused products do not consist of a single metallurgical phase; they consist of at least two intimately co-mingled metallurgical phases; viz., austenite and carbide____ Defendants’ accused products are not, therefore, ‘formed of a hot worked supersaturated solid solution,’ and for that reason do not infringe.”

Plaintiff’s response is that it is indisputable that the Holtz patent, which has powder particles having discernible carbides, is equivalent to defendants’ ASP product, which has its austenite phase in the powder — the defendants’ so-called second phase.

The court finds that the defendants’ contention that a supersaturated solid solution is limited to a single phase to be a semantic distinction without a difference. To postulate that the creation of austenite particles creates a multiple phase powder reads a limitation into Holtz claim 30 with regard to defendants’ possible infringement, but ignores the fact that within the Holtz powder the dispersed phase of carbides is also theoretically unsaturated and thus, at the very least, the two products are equivalent under the standards set forth in Graver Tank.

Re: HIPing

The defendants’ contend that HIPing, otherwise known as “hot isostatic pressing,” is not “hot working” under the reverse doctrine of equivalents. Under this doctrine, patent law equivalency does not exist if the alleged infringing device produces a different result or the same result in a different way. Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 568-69, 18 S.Ct. 707, 722-23, 42 L.Ed. 1136 (1898).

Defendants cite a list of differences between HIPing and hot working. However, this argument strains credibility in light of the overwhelming evidence that hot working and HIPing both involve the application of comprehensive forces to the powder metallurgy at elevated temperatures, thus, forging the product into a fully dense material. Plaintiff cites International Nickel Co. v. United States, 175 U.S.P.Q. 209 (CCPA 1972) which held at p. 215:

However, the heat treatment regime used is embraced by the patent claims; and the fact that it may vary somewhat from the regime taught in Bieber’s specification does not avoid infringement.

Because we find that through hot isostatic pressing, HIPing, the defendants achieve the same result as Holtz in “substantially the same way,” Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42, 50 S.Ct. 9, 13, 74 L.Ed. 147 (1929), we conclude that defendants have infringed under the doctrine of equivalents. See also Graver Tank, 339 U.S. at 608, 70 S.Ct. at 856.

In conclusion with respect to infringement, the court finds that defendants’ ASP 23, 30 and 60 powder metallurgical products are formed of a hot worked supersaturated solid solution and, thus, infringement of Holtz claim 30 is complete.

II.

Steven Patent

A.

Validity

Claim 4 of the Steven patent, the claim at issue here, provides:

4. An article of manufacture as defined in claim 2, in the form of a hob for use in milling applications.
[2. An article as defined in claim 1 wherein the composition of said metal body consists of, in percent, 0.80 to 3.00 carbon, up to 2 manganese, up to 1 silicon, up to 0.5 sulfur, up to 18.0 tungsten, up to 10.0 chromium, up to 12 molybdenum, up to 5 vanadium, up to 12 cobalt and balance iron, with tungsten + molybdenum + chromium + vanadium being equal to at least 10 percent.]
[1. As an article of manufacture, a metal body constructed of compacted particles of a high speed tool or die steel composition containing a metal component capable of reacting with carbon to form carbides, said reactive metal component being at least one metal selected from the group consisting of titanium, vanadium, molybdenum, zirconium, columbium, tungsten and tantalum each of said particles having carbides of said reactive metal substantially evenly dispersed throughout, said body having a hardness of at least about 58 Rc and being characterized by size change uniformity upon austenitizing, quenching and tempering:]

The defendants challenge Steven on the grounds that it was anticipated and that it is obvious. All other issues of validity and infringement are admitted. In addition, defendants contend that the statutory presumption of validity which normally would attach to the Steven patent is nullified by plaintiffs failure to cite relevant prior art to the patent examiner.

B.

Anticipation

As noted supra, the test of anticipation is one of strict identity. For a reference to be anticipatory, it must contain all of the elements of the claimed invention. 1 D. Chisum, supra, at § 3.02; Skelly Oil Co. v. Universal Oil Products Co., 31 F.2d 427, 431 (3d Cir.1929). Anticipation cannot be shown by combining more than one reference to show the elements of the claimed invention. 1 D. Chisum, supra, at § 3.02; Application of Saunders, 444 F.2d 599, 602, 58 CCPA 1316 (1971). As was noted in Cold Metal Process Co. v. Carnegie-Illinois Steel Corporation, 108 F.2d 322, 333 (3d Cir.1939), cert. denied 309 U.S. 665, 60 S.Ct. 590, 84 L.Ed. 1012 (1940), quoting from an earlier opinion of the Third Circuit in Skelly Oil Co. v. Universal Oil Products Co., 31 F.2d 427, 431 (3d Cir.1929):

A patent relied upon as an anticipation must itself speak. Its specification must give in substance the same knowledge and the same directions as the specification of the patent in suit. Otto v. Linford, 46 L.T. (N.S.) 35, 44. It is not enough to prove that a method or apparatus described in an earlier specification can be made to produce this or that result. Flour Oxidizing Co. v. Carr & Co., 35 R.P.C. 457. A singularly sensible test of the rule of anticipation is given in British Thomson-Houston Co. v. Metropolitan Vickers Electrical Co., 45 R.P.C. 22, by asking the question— “Would a man who was grappling with the problem solved by the patent attacked, and having no knowledge of that patent, if he had had the alleged anticipation in his hand, have said: ‘That gives me what I wish?’ ”____

In this context, defendants allege that Steven is anticipated by Comstock and Holtz.

Steven v. Comstock

The Steven patent provides a process for making hobs, a type of high speed tool, through a powder metallurgical process. The Steven process provides for a hardening treatment stage involving metallurgical phase changes, including austenitizing, quenching, and then, tempering, all designed to achieve size change uniformity and a resultant elimination of out-of-roundness and dimensional instability.

Defendants contend that Comstock’s uniform carbide distribution and substantial non-porosity make it anticipatory of Steven. In support of this position, the testimony of Dr. Lawley was offered. Dr. Lawley testified that the problem recognized by Steven; viz., that out-of-roundness after hardening treatment is a function of carbide alignment, previously was answered by Comstock.

Plaintiff contends that while Comstock mentions tool use in milling cutter applications, it failed to achieve full density or size change uniformity. Plaintiff offered Mr. Neumeyer who testified that Comstock’s use of a hot coining process in a fixed wall die produced density gradients and surface friction causing uneven densification. Neumeyer contended that full density was necessary for hobs, and it is plaintiffs position that this was achieved by Steven and by no other.

In addition, plaintiff contends that Com-stock is inhomogenous. Neumeyer stated that because of the reliance by Comstock on high temperatures, the existence of course carbides was inevitable. This, plaintiff contends, leads to an inability by Comstock to achieve size change uniformity, the necessary predicate to avoiding out-of-roundness.

The plaintiff’s position is supported by the decision of the PTO Board of Appeals wherein the Board in passing on the Holtz grandchild application, assessed the Com-stock reference to be devoid of any caution or concern with regard to the growth of coarse carbides at high temperatures. Given this evaluation with which the court agrees, and the standard for anticipation under 35 U.S.C. § 102, the court finds that the Steven patent is not anticipated by Comstock.

Steven v. Holtz

The court also finds that the defendants’ argument that Holtz anticipated Steven is untenable. The parties agree that the PTO refused to conduct an interference proceeding between the Holtz and Steven patents, however, each side attributes different significance to that fact, Plaintiff contends that although Mr. Holtz achieved size change uniformity, his patent did not disclose that property, and since the PTO refused to declare an interference, this is grounds for finding no anticipation.

Defendants .contend that the failure of plaintiff to convince the PTO to declare an interference constitutes a finding by the PTO of a lack of the inherency required to justify interference. See Gubelmann v. Gang, 408 F.2d 758, 766, 56 CCPA 1013 (1969). Thus, defendants contend that the failure of the plaintiff to gain an interference does not control, since “[t]he important thing is that ... plaintiff admits inherency in this case.”

Defendants are correct in that regard. However, we find that while size change uniformity was inherent in Holtz, it nevertheless cannot be said that Holtz anticipated Steven, since the existence of this inherency alone of merely one element of the claimed invention, does not fulfill the strict requirements of anticipation. See Cold Metal Process Co. v. Carnegie-Illinois Steel Corporation, 108 F.2d at 333.

C.

Obviousness

With respect to the Steven patent, defendants contend the claim invention is obvious. in light of Holtz, Comstock, Frehser and Lement. We consider this contention in light of the statutory presumption of validity and the Graham criteria.

Steven v. Holtz re: obviousness

In considering this issue the court notes the irony of the parties’ positions. Plaintiff contends that Holtz is limited to cutting tools, but maintains that Steven, a concededly similar powder metallurgy hob, a cutting tool, is not obvious. Defendants, on the other hand, contend vigorously that Holtz is not limited to cutting tools, but would have us find that Steven is obvious in light of Holtz because Steven’s hob-producing (cutting tool producing) process is a specific example of the Holtz teachings.

Nonetheless, the court finds that Steven is not obvious. The principal benefit of the Steven process is in its elimination of the out-of-roundness traditionally characteristic in past methods of producing hobs. This, as we previously noted, is achieved through a hardening treatment phase which maximizes size change uniformity, a property particularly essential for hobs because of the reduction of out-of-roundness and resultant increased dimensional stability. While we find that Holtz is limited to cutting tools, the Steven process is not obvious.

Steven v. Comstock re: obviousness

As noted, supra, the Comstock reference pertained to milling cutters of which a hob is a specific example. However, we have also noted that Comstock’s hot-coining process utilized high temperatures and resulted in coarse carbides. As the PTO Board of Appeals found, we also find that this reflects Comstock’s lack of ability to attain full, or substantially full, density and uniformly distributed fine carbide particles. Steven was able to achieve this, and for this reason we believe that Steven is not obvious in light of Comstock.

Steven re: other prior art

Defendants cite the Lement and Frehser references as establishing the obviousness of Steven’s claimed achievement of improved dimensional stability through elimination of inhomogeneous carbide segregations. However, as plaintiff correctly points out, the principal thrust of the teachings of both Lement and Frehser was that distortion was problematic in tool steels, suggesting that “heat treatment without dimensional changes can be achieved only in exceptional cases,” and “dimensional changes that occur in tool steels are due to phase transformations, plasticity, elasticity and thermal expansion.” While both Lement and Frehser recognized the importance of chemical- composition and finishing processes as controls on distortion, neither reference even considers the production of tool steel through a powder metallurgy process. While the Lement reference notes the problems of out-of-roundness, no solution is offered, but instead suggestion is made as to what tempering processes may be used 'to limit this problem. It is evident to the court from these facts, that Steven is not obvious in light of Lement and Frehser.

Steven re: other considerations

The court finds that the long-felt need for the Steven invention is established by the previous consideration of the prior art. It is established that those in the art were unable to achieve a sufficient degree of dimensional stability to cope with the out-of-roundness problem inherent in hobs. Moreover, it appears that those who addressed the problem were in disagreement as to the cause. The Steven process is not only nonobvious, but appears to be revolutionary in its elimination of dimensional instability in hobs.

For the foregoing reasons, the court concludes that the Steven patent is valid.

HI.

Willful Infringement

Under 35 U.S.C. § 284, the court has discretion to award treble damages for willful infringement of plaintiff's patent rights. Trio Process Corp. v. L. Goldstein’s Sons, Inc., 612 F.2d 1353, 1361 (3d Cir.), cert. denied 449 U.S. 827, 101 S.Ct. 91, 66 L.Ed.2d 30 (1980), opinion clarified 638 F.2d 661 (3d Cir.1981). A patent owner is entitled to treble damages where another has knowingly, deliberately, intentionally, willfully or wantonly infringed the patent. Smith v. Alyeska Pipeline Service Co., 538 F.Supp. 977, 986 (D.Del.1982); Jenn-Air Corp. v. Penn Ventilation Co., 394 F.Supp. 665, 676 (E.D.Pa.1975). However, where the issue of patentability is close and litigated in good faith, the court should be reluctant to impose punitive damages. Yoder Bros., Inc. v. California-Florida Plant Corp., 537 F.2d 1347, 1383 (5th Cir.1976); Upjohn Co. v. Italian Drugs Importing Co., 190 F.Supp. 361, 367 (S.D.N.Y.1961).

In this action, while plaintiff cites multiple bases for a finding of willfulness, the essence of plaintiffs case on this issue is Dr. Heilman’s memorandum dated February 5, 1973. The Heilman memo followed a meeting between officials of plaintiff and defendants during which plaintiff alerted defendants to the existence of patent claims which allegedly were being infringed by sales of defendants’ ASP steel in the United States.

Upon review of the Heilman memorandum and consideration of Dr. Heilman’s explanation of the memorandum, at trial, several facts are apparent to the court.

First, Dr. Heilman’s memorandum was based upon the assumption that defendants were infringing plaintiff’s patent claims, as to which assumption he stated “we have no possibilities for checking on this ____” Second, based upon the assumed premise that plaintiff’s patents were valid and being infringed by defendants, Dr. Heilman charted a strategy to check patent validity; contest patent validity; and, in the process, to get defendants’ products into the United States market. Finally, Heilman assessed the costs and prospects of litigation upon the further assumption that “the evaluation give the right result.”

On balance, the court is unpersuaded that the evidence including Dr. Heilman’s memorandum is sufficient to constitute a basis for treble damages. While the patent laws are designed to protect invention, 4 D. Chisum, supra, at § 16.02[1], the availability of damage awards serves that purpose, the treble damage awards should not be used to thwart good faith efforts to contest patent validity. Yoder, supra. Here, when defendants first were made aware of plaintiff’s patent rights by letter from counsel in 1972, they replied that the patents in question were invalid because of Comstock and the 1964 Holtz article in Metalworking Magazine. After the meeting in 1973, the Heilman memorandum merely evidences an aggressive strategy of contesting the patents. The defendants’ claims of good faith have not been overcome by the evidence, and we decline to find this to be such an “exceptional case” under 35 U.S.C. § 284 (1982), to justify-the award of treble damages. The issues of patent validity, especially, presented substantial questions upon which there has been genuine debate and honest disagreement as evidenced throughout this litigation and by the protracted and checkered history of this matter in the PTO.

IV.

Fraud/Unclean Hands

At trial, counsel for defendants stated that defendants were not alleging fraud to invalidate the Holtz and/or Steven patents, but merely were attempting to show unclean hands to establish a basis for attorneys’ fees in the event defendants prevailed. Since defendants have not prevailed, there is no basis for an award of attorneys’ fees to defendants. 35 U.S.C. § 285 (1982).

An appropriate order will follow.

      . Plaintiff's Exhibit 72; Agreed Conclusion of Law 13; Agreed Finding of Fact 109.

      . This opinion constitutes the court’s findings of fact and conclusions of law. See Fed.R.Civ.P. 52(a).

      . Agreed Finding of Fact 51.

      . Agreed Finding of Fact 9.

      . Defendants’ Exhibit GGG(2); See generally plaintiff's post-trial brief at 84-98.

      . Plaintiff’s Exhibit 29; Tr. at 217.

      . Plaintiff's Exhibit 62; Tr. at 228.

      . Plaintiff’s Exhibit 62.

      . Tr. at 1585.

      . Defendants’ post-trial brief at 49.

      . Holtz claims 7, 21, and 22 originated in Reen II and were copied by Holtz to provoke an interference, which Holtz won. Plaintiff's Exhibit 4 at 48, 50, 133, 145-46, 156-57, 162. Crucible’s Post-trial brief at 87. See also Ex Parte Frederick C. Holtz, Jr., supra, at 18, where the Board states:
      It is significant to note that claims 7, 21, and 22 were copied from U.S. Patent No. 3,244,506, which issued as a continuation-in-part application of Reen after a terminal disclaimer had been filed with respect to Reen. This supports Appellant’s position that he always considered Reen more pertinent than Comstock.

      . See generally Plaintiff's Exhibit 4; Plaintiff’s Exhibit 13; plaintiff’s post-trial brief at 87-8.

      . Plaintiff’s Exhibit 9 at 11.

      . Id. at 8.

      . Tr. at 280.

      . Tr. at 260-261.

      . Tr. at 261.

      . Plaintiffs Exhibit 120; Tr. at 1010; Plaintiff's Exhibit 9 at 10.

      . Plaintiffs Exhibit 9 at 12.

      . 35 U.S.C. § 112 provides in part:
      The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
      The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

      . Tr. at 85-6.

      . Tr. at 1567.

      . Tr. at 1574.

      . See Tr. 1294-1498.

      . Tr. at 1308.

      . See Tr. at 1427.

      . In reaching this conclusion, we accept plain- . tiffs proposed finding 17 and necessarily reject defendants' proposed counterfinding 17.

      . Tr. at 1307-8; Plaintiff's Exhibit 68.

      . Tr. at 1361; Plaintiff's Exhibit 69.

      . Agreed Finding 20.

      . Tr. at 142-3.

      . Plaintiffs Exhibit 9 at p. 22 (“neither Reen nor Comstock even cautions against carbide growth at elevated temperatures").

      . Tr. at 226-7.

      . Tr. at 228.

      . Tr. at 280.

      . Tr. at 261.

      . Tr. at 1585.

      . Tr. at 1591-2.

      . Defendants also cite the Williams, Hirsch, Federal Mogul and Holtz I references to establish obviousness. See defendants’ post-trial brief at 22. However, defendants have not pressed their contention with respect to these references but merely state in conclusory fashion that they also establish that Holtz claim 30 is obvious. Nonetheless, the court has reviewed all prior art cited by defendants in reaching the conclusion that the Holtz patent in suit is not obvious.

      . Plaintiff's Exhibit 9 at 10.

      . Tr. at 478.

      . Tr. at 1010, see also Plaintiff's Exhibit 120.

      . Tr. at 2586.

      . Agreed Finding 25; Tr. at 1520-21.

      . Tr. at 1308.

      . Tr. at 1114.

      . Agreed Finding 39.

      . Tr. at 8-10.

      . Defendants’ post-trial brief at 34-35.

      . Defendants’ post-trial brief at 40.

      . Agreed Finding 52; Agreed Conclusion 13; Agreed Finding 109; see generally plaintiff's post-trial brief at 23.

      . Comstock.

      . Steven file history. Plaintiff's Exhibit 7.

      . See generally Plaintiff's Exhibit 5; plaintiff's post-trial brief at 15; defendants’ post-trial brief at 40.

      . Tr. at 2575.

      . Tr. at 227.

      . Tr. at 166.

      . Tr. at 229.

      . Plaintiff's Exhibit 9.

      . Plaintiff's post-trial brief at 16; defendants’ reply brief at 43 n. 12.

      . Defendants’ post-trial brief at 16.

      . Plaintiff’s Exhibit 4.

      . Defendants’ post-trial reply brief at 43, n. 12.

      . “Anisotropic Dimensional Changes due to Heat Treatment of Ledeburitic Chrome Tool Steels” (1953); Defendants' Exhibit BB.

      . “Distortion in Tool Steels” (1959); Defendants’ Exhibit CC.

      . Defendants' post-trial brief at 43; defendants’ reply brief at 44.

      . Defendants’ Exhibit BB at 2 (of translation); see also plaintiff’^ post-trial brief at 15, 102.

      . Defendants’ Exhibit CC at 1.

      . Defendants' Exhibit CC at 53-88.

      . Defendants’ Exhibit CC at 6, 75-76.

      . Id. at 76.

      . The only other prior art reference cited is the Fletcher reference cited by plaintiff. As plaintiff’s note, Fletcher specifically disavowed the relationship between inhomogeneous carbide distribution and dimensional changes. See Plaintiff's Exhibit 255.

      . Plaintiff’s Exhibit 159.

      . The Heilman memorandum was admitted over privilege objections at trial; transcript at 1234 with the question of its admissibility in light of Fed.R.Evid. 408 reserved. Transcript at 1227-8. Upon review of this issue post-trial, the court concludes that Rule 408 is not applicable and the document is admissible. See generally 2 J. Weinstein, Evidence, ¶ 408.01 (1982).

      . See generally, Tr. at 1194-1265; 1857-2050.

      . Plaintiff’s Exhibit 159 at line 127.

      . Tr. at 2689-90.


author: POLOZOLA, District Judge.

text:
    The ELECTRICIANS HEALTH, WELFARE AND PENSION PLANS, I.B.E.W., LOCAL NO. 995 v. Ciro C. GULINO, and Saia Electric, Inc.
    Civ. A. No. 81-239-B.
    United States District Court, M.D. Louisiana.
    Sept. 20, 1984.

      W.P. Wray, Jr., Baton Rouge, La., for plaintiffs.
    Richard B. Nevils, Baton Rouge, La., for defendants.
   POLOZOLA, District Judge.

This suit was filed by the Electricians Health and Welfare Plan and the Electricians Pension Plan, International Brotherhood of Electrical Workers, Local 995 (The Plan) to determine the eligibility of Ciro C. Gulino to participate in the union’s pension plan. Plaintiff seeks a judgment declaring that Gulino is not entitled to participate in the union pension plan, and if he is not entitled to participate, what contributions, if any, The Plan must refund to Gulino’s employer, Saia Electric, Inc. (Saia). In the alternative, should the Court find that Gulino is entitled to participate in the pension plan, then the plaintiffs ask that judgment be rendered against Saia for employer contributions owed.

The parties submitted this matter to the Court on the following facts and circumstances which have been stipulated to by the parties:

1) The Plaintiffs are multiple employer trusts which have been established for the purpose of providing for pension and health and welfare benefits for certain defined employees.
2) The Health & Welfare Trust was established in 1964 as the result of collective bargaining between the employers, through their representatives, Baton Rouge Chapter, Inc., National Electrical Contractors Association (ÑECA), and the employees, through their representatives, International Brotherhood of Electrical Workers Local 995 (Local 995). The Pension Trust was established in 1970 as the result of collective bargaining between the same parties. Each Trust has been separately established pursuant to applicable provisions of the Taft-Hartley Act, as amended and are qualified trusts under all applicable laws, rules and regulations.
3) Each collectively bargained agreement intervening between the years 1964 and 1970 obligated the employers to make certain contributions for health and welfare to the Health & Welfare Trust for covered employees and each collectively bargained agreement since 1970 has likewise obliged the employer for contributions to both Health & Welfare and Pension Trusts based upon agreed upon sums for each hour of work of each covered employee. The collectively bargained agreements for the years 1964 and 1970 were made a part of the record as Exhibits “A” and “B”, respectively.
4) A copy of the Health & Welfare Trust Agreement (and attachments thereto) and Plans (and amendments thereto) was made a part of the record and identified as Exhibit “C”. A copy of the Pension Trust Agreement (and amendments thereto) and plans (and amendments thereto) was made a part of the record and identified as Exhibit “D”.
5) The rates of contribution per hour worked by each covered employee required to be made by employers to the Health & Welfare Trust and Pension Trust have increased during the years intervening between 1964 and 1970 to the present date and each increase in the rate has been the result of collective bargaining between the parties through their representatives.
6) Saia Electric, Inc. is a domestic corporation domiciled in the Parish of East Baton Rouge, State of Louisiana and is engaged in the electrical construction business in the Baton Rouge area. Saia is a member of ÑECA and has been such and represented by NECA in collective bargaining with Local 995 since 1960, or before.
7) Ciro C. Gulino is a person of full age of majority and a resident of the Parish of East Baton Rouge at all times pertinent to this litigation, and has been employed by Saia as its general superintendent since 1960. The employment of Gulino by Saia as its general superintendent has been continuous and uninterrupted.
8) As general superintendent for Saia, Gulino is in charge of and supervises all Saia jobs in the field and has general supervision over the general foreman, foreman and electricians employed by Saia. Gulino, on behalf of Saia, has the responsibility of directing the activities of the employees of Saia in the field and adjusts their grievances for Saia with Local 995 stewards and agents and generally exercises the authority of Saia with respect to employees who are employed by Saia in the field.
9) Gulino is not a member of Local 995. He withdrew his membership and his designation of Local 995 as his agent for bargaining purposes. (By way of a letter filed in the record on January 31, 1984, the parties' have informed the Court that Gulino’s withdrawal from the Union was effected on August 7, 1970.)
10) Local 995 does not bargain for wages, hours, terms or conditions of Gulino’s employment. Saia pays Gulino a salary irrespective of the weather, working conditions, or any other conditions except those policies for management and other salaried employees for Saia. Gulino does not keep any record of his time. Gulino does not work with his tools.
11) Gulino is presently covered by hospitalization through Saia’s group hospitalization.
12) The records of the Health & Welfare Trust and Pension Trust reveal that contributions for Gulino were made by Saia between October 1, 1970 and 1975 in the following amounts:
1970 $162.00
1971 990.00
1972 936.00
1973 936.00
1974 1.040.00
1975 1.384.00
In 1975 Saia discontinued making contributions to the Trusts with Gulino’s express knowledge, consent and agreement and Gulino became a member of Saia’s pension plan (ESOP) for salaried employees. Gulino’s participation in the Saia pension plan is continuing as of this date.
13) Saia made no contributions for Gulino to either the Health & Welfare Trust or the Pension Trust in 1976, 1977, 1978 or 1979. Beginning in July, 1980, Saia made contributions for Gulino to the Health & Welfare and Pension Trusts as follows:
1980 $1,890.00
1981 1,709.26
14) Saia discontinued making contributions for Gulino in 1981 and has not made any further contributions since 1981.
15) After the contributions for Gulino were made by Saia in 1980, Gulino. requested the Trustees of the Health & Welfare and Pension Plan Trusts to give consideration to his eligibility for participation in the respective plans. The Trustees were informed of the nature of Gulino’s work, his non-union status, his position with Saia and of the factors men-, tioned above relative to his employment. After consultation with counsel, the Trustees duly considered Gulino’s eligibility and determined that Gulino was not eligible for participation. Gulino was thereafter furnished with the official letter of the Trustees denying his eligibility in accordance with the determination. A copy of this letter was made a part of the record and is identified as Exhibit “G”.

The parties have submitted the following questions to the Court:

1) Whether or not, as a matter of law, Gulino is entitled to participate in Plaintiffs’ Trusts;
2) Whether or not the action of the Trustees of Plaintiffs’ Trusts was arbitrary and capricious'in determining that Gulino was a nonunion management employee of Saia who was not employed in covered employment nor a member of the bargaining unit, and therefore, ineligible to participate in Plaintiffs’ Trusts;
3) If the Court should find that Gulino was entitled to participate in the Plaintiffs’ Trusts, the amount, if any, that Saia must contribute to the Trusts;
4) If Gulino was not entitled to participate, what amount, if any, must the Trusts return to Gulino’s employer, Saia; and
5) Whether or not the Plaintiffs’ Trusts are entitled to recover attorneys’ fees.

The first two questions of law presented to the Court may be considered together, because they essentially ask the same question. It is now well settled that determinations made by pension fund trustees of eligibility for pension benefits must be sustained as a matter of law unless the plaintiff can prove the trustees’ decision is arbitrary or capricious. Thompson v. Asbestos Workers Local No. 53 Pension Fund, 554 F.Supp. 296, 300 (M.D.La.1983), affd., 716 F.2d 340 (5th Cir.). See, also: Paris v. Profit Sharing Plan for Employees of Howard B. Wolf, Inc., 637 F.2d 357, 362 (5th Cir.1981); Bayles v. Central States, Southeast and Southwest Areas Pension Fund, 602 F.2d 97, 99 (5th Cir.1979). It must be noted that the Court is not being asked to determine whether any violation of ERISA’s- statutory vesting requirements has occurred. See, e.g., Johnson v. Franco, 727 F.2d 442 (5th Cir.1984). The only issues with respect to the trustees’ actions before this Court are whether Gulino was entitled to participate under the terms of the pension plan after withdrawing his union membership, and, if not, what disposition must be made of the contributions made by Saia subsequent to that withdrawal. Thus, in determining whether the decision of the trustees to deny Gulino eligibility to participate in the plans was arbitrary or capricious, the Court must look to the Plans and not to the ERISA statute.

The Court finds that the trustees’ interpretations of the two plans was reasonable and should not be overturned by this Court. Thompson v. Asbestos Workers, supra, 716 F.2d at 343.

A copy of the Trust Agreement by which the Health and Welfare Plan was established has been filed in the record as Exhibit “C”. Article 5, Section 2 of the original Plan defines “Recipients of Benefits,” as follows:

Benefits may be provided in accordance with Section 1 of this Article only for any Employee of a Contributing Employer covered by a collective bargaining agreement between the Employer and the' Union; ____

Section 3 of Article 1 of the Plan defines Employees as “all of the Employees of each Employer for whom the Union is the collective bargaining representative,____” There is no dispute that Saia is an Employer required to contribute to the plan under the Collective Bargaining Agreement. However, it is also clear from the quoted portions of the plan that an “Employee” is the only person eligible to receive benefits under this plan, and an “Employee” must be one for whom the union is the collective bargaining representative. According to the stipulations filed by the parties, Gulino withdrew his designation of Local 995 as his agent for bargaining purposes on August 7, 1970. Local 995 does not bargain for Gulino’s wages, hours, terms or conditions of employment. Therefore, Gulino has not been an “Employee,” as that term is defined in the Plan since August 7, 1970, and, therefore, is not eligible to participate in benefits provided under the terms of the Health & Welfare Plan. Thus, the trustees’ interpretation was reasonable, and cannot be said to be arbitrary or capricious:

The plaintiff filed a copy of the Pension Plan Trust Agreement of October 1, 1970, and a copy of the Amended and Restated Agreement and Declaration of Trust, dated September 30, 1976, into the record. Section 1.12 of the Amended and Restated Agreement defines “Participants” in the Pension Plan, as follows:

The term “Participant” as used herein shall mean any person who has completed the requirements for a Vested Pension (which neither party suggests is the issue before this Court) and any Employee who has worked in covered employment for the minimum amount of time to qualify for pension credits____

“Covered Employment” is defined in Section 1.07 of the Amended Agreement as “employment for which the Employer is obligated by virtue of his Collective Bargaining Agreement with the Union to contribute to the Pension Fund,____” Saia is not obligated by virtue of any collective bargaining agreement insofar as Gulino’s terms and conditions of employment to make contributions to the pension fund. Because Gulino does not work in a “Covered Employment,” he is not eligible to participate in the Pension Trust. The Court finds this interpretation by the trustees to be reasonable, and neither arbitrary nor capricious.

Having found the trustees’ denial of Gulino’s eligibility to participate' to be reasonable, it is not necessary for the Court to determine what additional amount Saia must contribute to the Plan.

It is necessary for the Court to determine what amount, if any, the Pension Trusts must return to Saia. In order to resolve this issue, the Court must analyze 29 U.S.C. § 1144 to determine what law is applicable on this question. Subsection (a) of section 1144 provides that any and all State laws are superseded insofar as they relate to employee benefit plans. However, subsection (b)(1) of section 1144 provides: “This section shall not apply with respect to any cause of action which arose, or any act or omission which occurred, before January 1, 1975.” Thus, the Court must decide whether the Pension Trust must return Saia’s pre-1975 contributions on the basis of the terms of the Pension Trust and applicable state law.

Insofar as contributions made after January 1, 1975, are concerned, 29 U.S.C. § 1103(c)(1) provides, in part:

(T)he assets of a plan shall never inure to the benefit of any employer and shall be held for the exclusive purposes of providing benefits to participants in the plan and their beneficiaries and defraying reasonable expenses of administering the plan.

This prohibition in subsection 1103(c)(1) is modified by section 1103(c)(2)(A), which states:

(2)(A) In the case of a contribution,
(ii) made by an employer to a multiemployer plan by a mistake of fact or law (other than a mistake relating to whether the plan is described in section 401(a) of Title 26 or the trust which is part of such plan is exempt from taxation under section 501(a) of Title 26), paragraph (1) shall not prohibit the return of such contribution or payment to the employer within six months after the plan administrator determines that the contribution was made by such a mistake.
(As amended by Pub.L. 96-364, Title III, § 310, Title IV, §§ 402(b)(2), 410(a), 411(c), Sept. 26,1980, 94 Stat. 1296, 1299, 1308.)

The above amendment to subsection 1103(c)(2)(A) was a part of the. Multiemployer Pension Plan Amendments Act of 1980 (“MPPAA”), Public Law 96-364, which modified many provisions of the original ERISA statute insofar as multiemployer pension plans were concerned. The effective date of the amendment to subsection 1103(c)(2)(A) was explicitly provided for in the MPPAA, as follows:

The amendment made by this section shall take effect on January 1, 1975, except that in the case of contributions received by a collectively bargained plan maintained by more than one employer before the date of enactment of this Act, any determination by the plan administrator that any such contribution was made by mistake of fact or law before such date shall be deemed to have been made on such date of enactment.
(Pub.L. 96-364, Title IV, § 410(c), Sept. 26, 1980, 94 Stat. 1296, 1308.)

As the citation to the amendment indicates, the date of enactment of the MPPAA is September 26,1980. See Pub.L. 96-364, 94 Stat. 1308. Section 410(c) of the MPPAA specifically provides that the 1980 amendment to 29 U.S.C. § 1103(c)(2)(A) was effective on January 1,1975, except where there has been a determination by the plan administrator before September 26,1980, that a contribution was made to the plan due to a mistake of fact or law. In the matter pending before this Court, no such determination was made by the plan administrator before September 26, 1980. Thus, this Court finds that the. 1980 amendment to section 1103(c)(2)(A) of Title 29 is effective as of January 1, 1975. Whether or not Saia’s contributions in 1975, 1980, and 1981 should be refunded must be decided according to the terms of the amended version of subsection 1103(c)(2)(A). Ethridge v. Masonry Contractors, Inc., 536 F.Supp. 365, 368 (N.D.Ga.1982).

There has never been an explicit determination by the trustees that the contributions made on behalf of Gulino by Saia were made by a mistake of fact or law. A narrow reading of the amended form of 1103(c)(2)(A) leads to the conclusion that a contribution may be returned only after the plan administrator has determined that the contribution was made by a mistake of fact or law.- In this action, the only determination made by the trustees was that Gulino was “not a participating employee or participant under the Plan (See 3.09 of the Plan booklet).” The trustees’ letter is dated October 8, 1980. However, after this letter was mailed, Saia made another contribution of $1,709.26 to the plan in early 1981.

The foregoing facts raise the issue of whether or not this Court must remand the case to the plan administrator for an initial determination of the question of whether a refund is due because over-payments were , made due to a mistake of fact or law. In other words, must the employer exhaust his remedies with the plan administrator before seeking judicial relief on the question of a refund made due to a mistake of fact or law. It is clear from the pleadings, the issues of law set forth in the Stipulation, and the memorandums filed herein that the Plan Trustees do not intend to refund any contributions to Saia absent a judgment from this Court declaring that they must do so. The trial memorandum of the plaintiff also makes clear that the plaintiff does not believe that it is obligated by 29 U.S.C. § 1103(c)(2)(A) to return any mistaken contributions because the contributions Saia made on behalf of Gulino, an ineligible employee, were not made on the basis of a mistake of fact. Thus, even though the trustees’ letter-denying Gulino’s eligibility is not precisely in conformity with the statutory requirement that the “plan administrator determines that the contribution was made by (a mistake of fact or law),” 29 U.S.C. § 1103(c)(2)(A)(ii), the question of refundability of Saia’s contributions is properly before the Court. The denial of a refund which is'implicit in the pleadings, the Stipulation, and memoranda makes the Trustees’ position clear. Therefore, a remand of this case to the Trustees for their determination of the cause or character of the overpayment would be expensive, inefficient, and probably futile for Saia.

Applying principles of state law and the terms of the Pension Trust Agreement to the facts of this case, the Court finds that Saia is not entitled to a refund of contributions made prior to January 1, 1975. Section 6.08 of the Amended and Restated Agreement & Declaration of Trust, provides as follows:

“Erroneous Contributions: Contributions made to the Fund by any Employer by a mistake of fact may be refunded to the Employer within one year after the erroneous payment.”

Saia argues that principles of unjust enrichment and equitable relief support its contention that the pre-1975 contributions should be refunded to it. However, where, as here, the parties have made specific contractual provisions for refund, such provisions constitute the law to be applied between the parties. Willing and capable parties may provide in the agreement more restrictive terms, as long as the parties and the terms of the contract do not violate the requirements of the Labor Management Relations Act, 29 U.S.C. § 186(c)(5). United Mine Workers of America Health and Retirement Funds v. Robinson, 455 U.S. 562, 102 S.Ct. 1226, 71 L.Ed.2d 419 (1982); Johnson v. Franco, 727 F.2d 442, 446 (5th Cir.1984). Where pension benefits are being provided for a large group of employees, it facilitates actuarial certainty by limiting the time and reasons for obtaining refunds. A multiemployer trust providing benefits for many employees could not achieve the goals which the Labor Management Relations Act, ERISA, and the MPPAA were enacted for, if funding provided a decade ago or more were to be refunded. Contracts which are negotiated between the union and the employers after these earlier contributions to the plan were made provide for certain benefits which require a certain level of funding. Section 6.08 of the Pension Trust Agreement serves the interests of all parties to the agreement. Finally, there is no basis in Louisiana law for departing from, or refusing to give effect to, the terms of the contract or agreement. Thus, Saia may be refunded erroneous contributions made by it only if such payment was made under a mistake of fact and only within one year of the erroneous payment. More than one year has elapsed since these payments were made. Therefore, Saia is not entitled to a refund of contributions made to the Pension Trust on behalf of Gulino in 1970, 1971, 1972, 1973, and 1974.

The language of 29 U.S.C. § 1103(c)(2)(A) is permissive, and sets forth the broadest limits Congress was willing to extend to employers to seek refunds of erroneous contributions. The parties may derogate from that subsection to the extent that they choose to be more restrictive, but they may not exceed the limits set by Congress. Thus, even though the statute would allow the return of overpayments made on the basis of mistakes of fact or law, the Pension Trust Agreement limits refunds to those overpayments made only as a result of a mistake of fact.

The 1980 amendment to subsection 1103(c)(2)(A), makes it necessary to read out of the agreement the one year refund period in § 6.08 of the Pension Trust Agreement in favor of the shorter period provided by the statute. This provision does not cause a problem in the matter before this Court since the statute allows refunds to be made within six months of the plan administrator’s determination, and not just within six months from the date of the contribution. Under the facts of this ease, the letter of October 8, 1980, which informed Gulino of his ineligibility to participate in the plan has been treated by the Court as the plan administrator’s determination. Plaintiffs filed this suit on March 26, 1981, or, within six months of this determination. Even though it was the Trustees of the Plan and not Saia who sought a declaratory judgment from the Court, the filing of suit and the answer of Saia to the suit are consistent with the requirement that a refund be sought within six months of the plan administrators’ determination.

This Court must now determine whether the payments made by Saia to the Pension Trust in 1975, 1980, and 1981 were made by a mistake of fact. If not¡ they may not be refunded to Saia under the terms of the trust agreement. The Louisiana Civil Code provides that there are two kinds of “error”: errors of fact and errors of law. An error of fact is that which proceeds either from ignorance of that which really exists, or from a mistaken belief in the existence of that which has none. One is under an error of law when he is truly informed of the existence of facts, but draws from them erroneous conclusions of law. The jurisprudence interpreting these Codal provisions is not particularly helpful on this issue, since the jurisprudence is directed to the question of enforceability of a contract entered into when the parties are operating under an error. In the instant action, the Court need only determine the character of the error, since the parties have contractually provided for the results of those errors in § 6.08 of the Pension Trust Agreement. Thus, the question before the Court is whether or not Saia’s 'actions in contributing to the fund was a mistake of law or a mistake of fact. The Court finds that Saia’s contributions in 1975, 1980, and 1981 were the result of a mistake of law, and not a mistake of fact, and thus are not refundable under the terms of the Pension Trust Agreement.

Saia was informed of or capable of ascertaining all the relevant facts concerning Gulino’s status under the collective bargaining agreement. Gulino’s deposition testimony reveals that he withdrew from the Union at the request of his employer. In addition, Gulino knew his salary was above the top rate provided in the collective bargaining agreement at all times. Furthermore, Felix G. LeBlanc, Jr., Saia’s Executive Vice-President, was aware that Gulino was not covered by the wage scale in the collective bargaining agreement. Even more important is the fact that LeBlanc represented the employers’ bargaining agent, the Baton Rouge Chapter, Inc. of the National Electrical Contractors Association, when the Pension Trust Agreement was amended on September 30, 1976. Aware of these facts, Saia proceeded to make contributions to the Pension Trust Fund on behalf of Gulino. In support of its request for a refund, Saia argues that it resumed making contributions in 1980 and 1981 upon the advice of George Reusch, the plan administrator, who repre-. sented that Gulino could add to the benefits he had vested in the pension plan by making additional contributions. It has already been held that such an asserted reliance is not a mistake of fact, but one of law. Martin v. Hamil, 608 F.2d 725 (7th Cir.1979). Even if Saia acted without actual knowledge of Gulino’s withdrawal from the. Union, the deposition testimony cited above makes it clear that Saia had actual knowledge of certain facts and had the opportunity to discover additional facts had it attempted to do so. Thus, the contributions made by Saia in 1975, 1980, and 1981, are not refundable.

Finally, the Court must decide whether or not to award attorneys’ fees to the Pension Trust Fund, pursuant to the discretionary authority granted to the Court -under 29 U.S.C. § 1132(g)(1). In Iron Workers Local No. 272 v. Bowen, 624 F.2d 1255, 1266 (5th Cir.1980), the Fifth Circuit set forth five factors a court should consider in deciding whether or not to award attorneys’ fee:

(1) the degree of the opposing parties’ culpability or bad faith; (2) the ability of the opposing parties to satisfy an award of attorneys’ fees; (3) whether an award of attorneys’ fees against the opposing parties would deter other persons acting under similar circumstances; (4) whether the parties requesting attorneys’ 'fees sought to benefit all participants and beneficiaries of an ERISA plan or to resolve a significant legal question regarding ERISA itself; and (5) the relative merits of the parties’ positions, (citations omitted).

The Court finds an absence of bad-faith on the part of Saia. In addition, Saia’s conduct did not in any way jeopardize the security of the beneficiaries’ interest in the pension plan. Unlike an action under 29 U.S.C. § 1145, this suit did not involve a situation where the plan was forced to sue for delinquent contributions, but was. based on Saia’s intermittent contributions, and the representations of George Reusch, the plan administrator. Thus, no attorneys’ fees or cost should be awarded to the plaintiff under the facts of this case.

Because some of the contributions made by Saia may have been made to both plans, and since Saia may be entitled to a refund on the health plan, the parties shall file with the Court within twenty days from the date of this opinion a proposed judgment which shall conform to the opinion and also set forth the amounts of contributions Saia made to the pension plan.

      . This Court has jurisdiction under 29 U.S.C. § 1132(a)(3) because the trustees of the Plan are fiduciaries, as defined in 29 U.S.C. § 1002(21)(A), seeking to obtain equitable relief to' enforce the terms of the pension plan.

      . It must be noted that only Gulino's eligibility to participate in, and Saia’s liability, if any, for contributions to, the Pension Plan is before the Court. Gulino’s eligibility to participate in the Health & Welfare Trust is not before the Court because the letter of October 8, 1980 informing Gulino of the Trustees’ decision refers only to "the Plan,” and the only Plan sections referred to are sections in the Pension Trust Agreement. See Exhibit "G”, Stipulation of Fact No.. 15. In addition, the October 8, 1980 letter refers to “inception of the Plan, October 1, 1970,” which is the inception date of the Pension Plan. The Health & Welfare Trust Plan was formed in 1964. On the question of whether Saia is due a refund for overpaid contributions, both parties’ memoranda refer the Court to § 6.08 of the Pension Plan, and neither side briefed the question of, or referred the Court to, provisions of the Health & Welfare Trust regarding refunds of overpayments. Thus, the Court must assume that the parties did not intend to put that issue before the Court. Furthermore, there is no indication in the record that the two trusts have been merged or consolidated in- any way. The two trusts provide different, benefits and only the Pension Trust Agreement has a provision for refunds. While Gulino is probably not eligible to participate in the Health & Welfare Trust for the same reasons he is not eligible to participate in the Pension Trust, different legal issues are raised on the question of a refund, and a fuller development of the record is necessary before the Court can reach and decide this issue.

      . No determination has been made by the trustees that Gulino was ineligible for benefits prior to August 7, 1970, or that his right to receive benefits which may have accrued between 1964 and August 7, 1970, has been terminated and not merely suspended during the time he is not a member of the Union.

      . Gulino withdrew from the union in October of 1970. See, Stipulation of Fact No. 12. The Court must determine whether the contributions made by Saia subsequent to this date must be returned to Saia or supplemented by additional contributions by Saia.

      . Included in the Exhibit is a copy of the amendments made to that Plan, effective January 24, 1980.

      . The amendments made to the Agreement in 1980 did not change any portion of the definition of "Employee” relevant to this case.

      . See Stipulation of Fact No. 6.

      . See Stipulation of Fact No. 9.

      . Stipulation of Fact No. 10.

      . See Exhibit ‘D’.

      . See Stipulation of Fact No. 10.

      . See Exhibit 'G' submitted with the Stipulation of Facts, and Stipulation of Fact No. 15.

      . This contribution prompted the filing of this action for declaratory judgment by the Plan Trustees on March 26, 1981.

      . Plaintiff further contends that the trust agreement itself is more restrictive than the statute because the trust agreement allows refunds only in the case of a mistake of fact, and not in the case of a mistake or law, which the statute provides for.

      . In Ethridge v. Masonry Contractors, Inc., supra, the court concluded that a finding by plan administrators that a contribution was made by a mistake of fact or law was not a prerequisite to the return of certain overpayments. The “Court held that such a requirement vests plan administrators with too much discretion, and would allow plan administrators to either (1) never make the appropriate determination or (2) determine that no "contribution was made by such mistake,” 29 U.S.C. § 1103(c)(2)(A), contrary to the intent of Congress, and leaving overpaying employers without any legal recourse. 536 F.Supp. at 368. However, this Court is not willing to go that far, inasmuch as the Ethridge opinion all but reads the requirement of the plan administrators determination of the character of the overpayment completely out of the statute. Bad faith decisions by the plan administrator to never make the appropriate determination can be handled on a case by case basis under established principles of law. A determination by the plan administrator that "no contribution was made by such a mistake," certainly does not leave employers without legal recourse, as it is now well established that actions of pension plan administrators and trustees are subject to judicial review. Johnson v. Franco, 727 F.2d 442 (5th Cir.1984); Bayles v. Central States, Southeast and Southwest Areas Pension Fund, 602 F.2d 97, 100 (5th Cir.1979).

      . By analogy, in a court making a judicial review of an action taken' by an administrative agency may decline to require exhaustion of administrative remedies where the agency's position is so clear and fixed that it would be futile to require proceedings at the agency level. See, K. Davis, 4 Administrative Law Treatise § 26:1, 414-15 (1983).

      . See Exhibit “D”.

      . It is clear these statutes were enacted to safeguard the retirement plans of American workers.

      . It makes good sense to prevent refunds of contributions years after they, were made because such action might necessitate radically different positions each time the parties negotiate a contract in an effort to maintain the anticipated level of benefits.

      . La.Civ.Code, Art. 1820.

      . Id., Art. 1821.

      . Id., Art. 1822.

      . Deposition, Gulino, pp. 20-21. Gulino was mistaken on the date he withdrew from the Union. The parties have stipulated to the correct date.

      . Id., pp. 9-11.

      . Deposition, LeBlanc, pp. 14-15.

      . See Exhibit "D”.

      . An excellent discussion of the law on mistake of fact and acting in conscious ignorance of all the facts may be found in Armco, Inc. v. Southern Rock, Inc., 696 F.2d 410 (5th Cir.1983), and necd not be repeated herein.

      . See Martin v. Hamil, supra; Ethridge v. Masonry Contractors, Inc., supra,