Borkland v. Pedersen
| Citation | 142 F. Supp. 652 |
| Decision Date | 31 May 1956 |
| Docket Number | No. 51 C 691.,51 C 691. |
| Parties | Gustave W. BORKLAND v. Svend PEDERSEN and Borghild Pedersen, co-partners, doing business as Paramount Plastics Co. |
| Court | U.S. District Court — Northern District of Illinois |
Edward A. Haight, Robert R. Lockwood, John W. Hofeldt, Chicago, Ill., for plaintiff.
Casper W. Ooms, Robert C. Williams, David L. Ladd, Chicago, Ill., for defendants.
The validity of Patents Nos. 2,357,806 and Re. 23,171, both relating to the forming of plastic material, is the chief issue in this case. The plaintiff, as the alleged inventor and owner of the patents, seeks to enjoin, and recover damages for infringement. By answer and counterclaim the defendants ask that this court declare these patents to be invalid for lack of invention and because anticipated by prior use, publications and patents. The denial of infringement contained in the answer was, during the trial, in effect reduced to the contention that, even if the patents were valid, the defendants in certain instances perform their operations in a manner so materially different from the processes and apparatus covered by the patents as not to constitute an infringement and hence any adverse judgment should except the non-infringing processes.
The plaintiff, Gustave W. Borkland, is an individual engaged in the development of processes, products, methods and equipment for the plastics industry. He maintains laboratories in Marion, Indiana.
The defendants, Svend Pedersen and his wife, Borghild Pedersen, are partners doing business in Chicago, Illinois, under the firm name of Paramount Plastics Co. The husband, Svend Pedersen, was by trade a cabinet maker. From 1942 until 1945 he was employed by the General Plastics Corporation to make wooden forms or dies for use in shaping plastic articles. Throughout this period the plaintiff Borkland was president of that corporation. The defendant Svend Pedersen knew nothing about the processing or forming of plastic materials at the time he went to work for General Plastics Corporation. Upon leaving General Plastics Corporation the defendant Svend Pedersen and his wife established their own business of fabricating plastic sheets, in which they admittedly use methods and processes learned from the plaintiff Borkland. The plaintiff has at all times been, and still is, willing to license the defendants to use his patents in return for a very small royalty — one to three per cent of sales price or one cent per pound of plastic used. But the defendants have refused to recognize the validity of the patents. In some of their operations the defendants have added an additional step which they consider an improvement over Borkland's alleged inventions.
The processes and apparatus in litigation may be used in the production of any hollow article made from a plastic sheet material. The exhibits in this case, introduced to illustrate the varied applications of the patent claims, include lamp shades, blister packs used for packaging automobile parts, model of a candle sixty inches tall and six inches in diameter, Gulf Oil Company advertisement containing in bas relief life size face, ears, and front half of cap of Gulf Oil station attendant, ice cube tray, picture frame, blouse form and projector case.
The processes covered by the Borkland patents are admittedly widely used in the commercial production of plastic products. The defendants' counsel estimated that there were at least fifty companies currently using these processes and the plaintiff Borkland estimated that there were nearly two hundred. Approximately $86,000 was received by plaintiff in royalties from licenses issued under these two patents for the fourteen year period from 1941 to 1955, according to the plaintiff's testimony, though he offered no supporting proof. The only substantial license, that to B. F. Goodrich Co., has been cancelled. Two other licenses are now in litigation. Only three licenses were outstanding as of January 1956, on which the plaintiff is still receiving royalties. All of these covered patents in addition to the two here involved. The total income from royalties which plaintiff received in 1955 did not exceed $1,100.
The plaintiff explains the failure of the industry to accord recognition to his patents as due to a concerted plan, fostered by a large manufacturer of sheet plastic material, to infringe. The defendants, on the other hand, explain this non-recognition as due to the industry's knowledge that all the techniques claimed by Borkland as inventions had long been part of the art and hence could be freely adopted and used without paying tribute to Borkland.
The first patent in point of time of issue, which allegedly is infringed by the defendants, is Patent No. 2,357,806, dated September 12, 1944, for a "Method of Making Cupped Formations of Thermoplastic Sheet Material." The patent contains only one claim — a claim for a process which consists of three simple steps. The relative order of the first two steps is immaterial but both of them must precede the third. In the following statement the order which appears in the claim is set forth, although in the specifications preceding the claim the step here designated as step two precedes step one. The three steps are as follows:
First step, heating a sheet of thin plastic material.1
Second step, fastening the sheet securely at the edges so it cannot slip.2
Third step, applying an unheated pressure-exerting means to the heated sheet in such a manner as to stretch and draw the sheet into cupped formations without the pressure-receiving portions of the sheet being in contact with the pressure-exerting means during a substantial part of the drawing and stretching.3
Step three actually involves no more than the use of the customary male die, either alone or in conjunction with a female die, to form ductile sheet material. In the drawings and specifications appearing in the patent the pressure-exerting means disclosed are the usual male die with an accompanying skeleton female die.4 The specifications state that sponge rubber may be used in lieu of a female die to press the sheet material into the configuration of the male die and in the accompanying drawings two of the figures illustrate such a use of sponge rubber.5
Any ordinary male die except one so shaped that it has an absolutely flat bottom and absolutely perpendicular walls at right angles with the bottom, whether used alone or in conjunction with a matching female die, must necessarily draw and stretch a ductile sheet without the portions of the sheet which are being drawn and stretched touching the die during a substantial part of the drawing and stretching operations. This is evident upon analysis of the reaction of a ductile sheet to the application of a male die. The portions of the sheet lying between its firmly secured edges and the first point of the die to touch the sheet will draw and stretch as the die presses against the sheet. From the time the first point of the die touches the sheet until the die reaches its furthest point of pressure, the stretching and drawing continues. Even when the die reaches its ultimate pressure point it may be necessary to use some pressure other than the mechanical force of the male die itself to cause the sheet to conform fully to the male die. In either event, only when the sheet conforms to the die at all points will the drawing and stretching be completed. Until that time a large part, if not all, of the stretching and drawing will have been of portions of the sheet not touching any pressure-exerting means.
The concept that the pressure-receiving portions of the ductile sheet shall be out of contact with the pressure-exerting means "during at least a substantial part of said drawing and stretching operation" (page 2, col. 2, lines 27-30), as it appears in Borkland's first patent, does not involve any element of special timing. Except for the statement in the disclosure of his process that the male die is "brought down gradually onto the sheet" (page 1, col. 2, lines 24-25), there is no other reference to timing in either the specifications or the claim. The apparatus disclosed contains no device to control timing. The unimportance of the timing appears fully from Borkland's contentions in this case that his process represents an advance over the prior art because of its greatly enhanced speed. He testified to a production rate of 2,400 forms an hour achieved by shaping 100 sheets an hour, each sheet containing 24 forms. The sheets are each individually heated and placed under the multiple forming die one after the other. From this it is evident that the gradualness of the descent of the die and the substantial portion of the drawing operation involve at most untimed fractions of a minute.
The second Borkland patent is Patent Re. 23,171, dated November 29, 1949, for "Apparatus for and Method of Forming Sheet Material." The only relevant difference between the process claimed in the reissue patent and that covered by the first patent is that a fourth step is added, the use of differential air pressure to cause the sheet material to conform to the male die.
The reissue patent contemplates that step four may take place in varying relative sequences to the course of the descent of the die in step three of the process disclosed in the first patent but should be in part, if not in whole, concurrent with step three.
The reissue patent contains eight claims. In claims 1, 2, 4 and 5 the process includes the use of "suction" so as "to suck" the ductile sheet material against the male die.6 Claim 3 is for an apparatus in which the male die is equipped with a "suction" device enabling the die to "suck" the ductile sheet material against the die.7 Claims 6, 7 and 8 are for a method in which the sheet is forced against the male die by "exhausting the air" from the space between the sheet and the male die.8 In setting forth the objects of his...
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Borkland v. Pedersen, 11881.
...of both patents. The district court found them infringed by the process employed by defendants, but invalid. In its opinion, reported in 142 F.Supp. 652, the court explored meticulously and discussed at length the issues of law and fact involved and the evidence submitted, and made extended......
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General Plastics Corp. v. Borkland
...that the attendant principle question has been determined in the Federal Courts adversely to appellee. In the case of Borkland v. Pedersen, 1956, 142 F.Supp. 652, 665, the United States District Court for the Northern District of Illinois, in a case involving the validity of the two patents......
- National Farmers Union Prop. & Cas. Co. v. Connally, Civ. No. 6979.