Early Asphalt Litigation Helps Shape the Industry

1924 Roofing Store on Main Street, Three Rivers, Michigan Photograph

People had been mining asphalt, a natural bituminous substance, for use as an adhesive and sealant for centuries before anyone thought of paving a road or roofing a home with it. Asphalt occurs naturally in both asphalt lakes and in rock asphalt. The first recorded use of asphalt dates back 625 B.C. Babylon. The ancient Greeks also used Asphalt; indeed, the term asphalt comes from the Greek word asphaltos meaning “secure.” The Romans also used the substance to seal their baths, reservoirs and aqueducts. Despite these early uses, it would be another several hundred years before American builders would manufacture and use asphalt as a material in first paving, and eventually in shingles for roofing.

Initially, shingles were produced using organic base materials such as cotton rags, manila jute, wool or wood pulp. After a number of years experimenting with asphalt as a roofing material, Henry M. Reynolds of Grand Rapids, Michigan invented the first asphalt shingle at the turn of the 20th Century. In 1903, the first asphalt roof was built. By the 1930s, millions of asphalt shingles were being manufactured throughout the United States for roofing. However, before asphalt could be used to make shingles, the substance would first have to undergo its own bumpy road to conception, perfection, implementation and protection. 

A Swiss engineer named Andre Merian is credited with being the first to pave a road with asphalt. Merian observed horse-drawn carts carrying loads of rock asphalt along a bumpy road shedding bits of rock asphalt along the way. He noticed that the resulting patches of asphalt, when crushed into powder and compressed by traffic over time, actually improved the surface of the road. In 1849, Merian successfully duplicated the process to pave a street in Val-de-Travers, Switzerland. Over the next several decades streets were paved with asphalt in Paris, London and Berlin. Americans, however, were slower to adopt the material. 

In 1870, a Belgian-born chemist, Edmund DeSmedt laid the first successful rock asphalt street pavement in front of city hall in Newark, New Jersey. In 1876, a congressional commission selected DeSmedt to oversee the paving of a portion of Pennsylvania Avenue in Washington D.C. The project was considered such a great success that the city went on to pave more than 70 miles of its streets with rock asphalt in the following decade. Much of the city’s paving work was done by The Barber Asphalt Paving Company which was founded in 1883. Barber Asphalt quickly grew to dominate the market, and by 1989 it had placed 24 million square yards of Trinidad lake asphalt pavement on some 1,500 miles of streets in over 100 American cities.

Barber Asphalt trumpeted the virtues of “genuine Trinidad asphalt” in its advertisements, but other high-quality domestic sources of rock asphalt were becoming increasingly available. In the mid-1970s California oilmen were making asphalt from refined petroleum, and in 1902, a Texas oil company began supplying a similar product. As automobiles proliferated, the demand for smooth resilient roads continued to rise, but there were still no widely accepted standards for asphalt pavement design. In addition, contractors generally lacked experience working with asphalt, so even well-designed paved roads were sometimes constructed improperly. 

In the absence of standards, competing inventors and entrepreneurs raced to develop and patent their own unique mixes of materials. Among the most successful of these was the Warren family of Newton, Massachusetts. The Warren Brothers Company was established in 1900 by the seven sons of Herbert M. Warren. Prior to this, Herbert M. and his five brothers were associated with the asphalt industry as far back as 1847. The second generation of Warrens, including Frederick J. were inevitably reared in an environment closely associated with the asphalt industry. At least three of the brothers, including Frederick J. were, at one time, all connected to the Barber Asphalt Paving Company, with their uncle E. B. Warren playing a role in the establishment of the company. Despite the connection between the Warren Brothers Company and Barber Asphalt, the two entities would become embroiled in litigation with one another during the early aughts.  

The emergence of the Warren Brothers Company was primarily the result of Fred J. Warren’s invention of an improved variety of pavement. Fred realized that pavement quality depended not only on the type of asphalt used, but also on the characteristics of the sand in the mix. Fred experimented with sands of various types and sizes, noting that small changes in the sand would yield markedly different results. This new asphalt pavement was unique in that it entailed the use of various gradings and sizes of crushed stones ranging in size from dust to greater than one inch. The different sized aggregate was then mixed with bituminous cement, interlocking the stone particles to produce a more durable and stable surface than that created by the standard rock sheet asphalt in use at the time.  

In 1901, Warren patented his first proprietary pavement design, marketing it under the trade name  “bitulithic” The product was a commercial success. Between May 16, 1901 and April 14, 1902, Warren filed for eight United States Patents relating to the manufacturing and use of his bitulithic pavement. By 1903, he was granted all eight patents which, together, covered asphalt concrete, asphalt binder, the construction of asphalt cement surfaced roads and streets and the overlayment of “old” roads. By 1912, the bitulithic pavement had been used in 150 cities across America and the material would ultimately be produced in massive quantities for use in paving, roofing and waterproofing. 

Unfortunately, for the Warren Brothers, however, their design was easy for others to copy. Builders, quick to see the advantages of asphalt looked for ways to replicate the material. The Warren family fought numerous legal battles to defend its patents, with those legal battles culminating in 1909 when the Warrens sued several parties throughout U.S. for patent infringement, including The Barber Asphalt Paving Company.

Among the first cases to be filed by the Warren Brothers, was in 1906 for an injunction against the Barber Asphalt Paving Company. The case surrounded the proposal for a construction contract between Barber Asphalt and The City of Owosso, Michigan. Under the contract, Barber Asphalt would be hired by the municipality to pave certain roads throughout the city using hot mix that conformed to certain specifications and was referred to as “bitulithic” 

The Warrens filed an injunction to prevent the generic use of the term bitulithic, asserting that it was a trade name personal to their company that had been habitually used by the Warrens to describe the specific pavement they alone had created. The Warrens furthermore asserted that the trade name had been properly registered and filed in the office of the Secretary of Michigan. Finally, the Warrens asserted that reference to the term bitulithic within the proposal should prevent Barber Asphalt from being awarded the work under the contract because bitulithic pavement was a material protected by U.S patent and to be manufactured solely by the Warren Brothers Company. 

The case made its way to the Supreme Court of Michigan where the court concluded that Barber Asphalt could be awarded the contract, despite the proper registration and habitual use of the term bitulithic as a trade name by the Warrens. The Michigan Supreme Court ultimately concluded that the injunction should not be granted because a trade name does not necessarily give one entity the exclusive right to make or sell a given good. Rather, as concluded by the Court, the purpose of a trade name is to protect the consumer by indicating the origin or ownership of the good, i.e. to inform the consumer exactly from whom he or she is purchasing. Therefore, in a case where the rights of a trade name are invaded, the harm to be avoided, the Court concluded, is the sale of goods by one manufacturer under the false representation that they are the goods of another manufacturer. This risk, the Court opined, was not present and thus the injunction could not be granted. Thus, the Warren brothers were ultimately unsuccessful in their attempt to prevent the widespread use of the term bitulithic by Barber Asphalt and others. 

The Warrens were somewhat more successful in protecting their product, however. In 1909, the Warrens filed a lawsuit against the City of Owasso, Michigan in connection with its contract with Barber Asphalt. This time, to protect the actual reproduction of their bitulithic pavement. The case was filed in the United States District Court for the Eastern District of Michigan and was quickly dismissed without proceeding to trial. Determined to protect their product and processes, the Warren brothers appealed the case to the United States Circuit Court of Appeals for the 6th Circuit. In this lawsuit, the Warren’s alleged that Barber manufactured asphalt pavement for the City of Owosso that infringed upon four claims of the Warren’s patent 727,505 for bitulithic pavement. 

At the Circuit Court level, a three-judge panel made clear to distinguish the Warren’s bitulithic pavement from sheet asphalt which up until that point was the material primarily used in paving. The Court characterized Warren’s invention as the discovery that an aggregate of large and small pieces of stone, together with a certain proportion of stone dust, all mixed together and thoroughly permeated with bitumen or asphalt, which, when set, results in a compact stable structure and that was less likely to disintegrate with traffic or weather. 

The Circuit Court judges went on to analyze whether the pertinent four claims of the Warren patent had indeed been infringed upon.  These claims included:

(5) In a street pavement, a bituminous mineral structure, the mineral ingredients of which are fixed and of several grades, so graded as to give the structure an inherent stability;

(6) A bituminous street pavement structure containing mixed mineral ingredients of such grades as to give the structure of an inherent stability;

(9) A street pavement wearing section composed of a mineral structure of inherent stability formed of several grades of material so proportioned as to have a per cent of voids less than twenty-one percent of the whole, in combination with a comparatively soft bituminous binder filling said voids and rendering the whole permanent in nature and elastic and waterproof in character; and 

(11) A street paving structure composed of a mixture of mineral or wearing ingredients, and a plastic binder, the space between the mineral ingredients being less than twenty-one per cent of the whole, and the plastic binder occupying said space. 

The 6th Circuit Court ultimately held that the method and materials used by Barber Asphalt did indeed infringe upon elements five, six and eleven of the Warren Patent 727,505. However, the court concluded that it could not be properly shown that the Barber used the soft bitumen binder, and thus the ninth element was found to have not been infringed upon by Barber Asphalt.  

Perhaps more importantly, Barber Asphalt also asserted the legal defense of anticipation regarding the Warren’s pavement patent. Under patent law, anticipation refers to the prior invention or disclosure of the invention in question. Essentially the idea that someone else knew about or used the invention before the patent applicant, here Frederick J. Warren, applied for the patent in question. Anticipation, if successfully proven, is grounds for invalidating or rejecting a patent entirely because the claimed invention lacks novelty.  In order to successfully use the defense, it must be shown that the invention was known or used by others before it was invented by the person holding the patent. 

Barber Asphalt pointed to instances, both foreign and domestic, in which bitulithic-like or other hot paving material was used before the Warren’s patent. With regard to the domestic uses, the Circuit Court held that they were a series of experiments intended to discover other uses for asphalt, but not one of those uses went into public use.  The Court further stated that even though a particular composition (similar to the one created by the Warrens) was found useful for reservoir linings, machinery foundations or the floors of small private sheds, such uses should be classified as abandoned experiments which did not anticipate or remove the novelty of Warren’s patent. The Court contrasted the fact that neither of the prior domestic experiments were widely disseminated in the public for use with the Warren’s patented material which had become publicly prolific over the last decade. The Circuit Court looked to the applicable patent law for the defining features of a patent, concluding that Warren was the first inventor, who, by his own thought, made an article or material and first adapts and perfects his discovery for actual use. 

In terms of the foreign uses, Barber Asphalt pointed to the provisional British patents of Van Camp and Clark. However, the Court concluded that both patents were lacking in instruction as to the proportions of mineral ingredients of the different grades. In contrast, the Warren patent gave clear directions as to the construction, and clearly disclosed the factor of stability resulting from properly grading the mineral ingredients in excess of that found in greater density of the sand and asphalt concrete. To overthrow a U.S. patent by a foreign one of prior date, reasoned the court, would require that the description of the invention must be in such full, clear and exact terms that one with the proper skill, could make, construct and practice the invention. The court further reasoned that a mere vague and general representation as to a foreign patent would not support the defense of anticipation. Thus, Barber Asphalt was unsuccessful in its attempt to invalidate the Warren patent altogether. 

The Circuit Court ultimately reversed the decision of the District Court to dismiss the case, and ordered the case be remanded to the District Court for an accounting of damages to be received by the Warren Brothers. The Barber Asphalt Company did attempt a final appeal of the case to the United States Supreme Court, but the Court declined to review the case making the decision of the 6th Circuit Court final. The Warren’s Bitulithic patent expired in 1920.