Minnesota Mining & Mfg. Co. v. International Plastic Corp.

• Decision Date: 31 January 1947
• Docket Number: No. 8926,No. 9093-9095.,8926,9093-9095.
• Citation: 159 F.2d 554
• Parties: MINNESOTA MINING & MFG. CO. v. INTERNATIONAL PLASTIC CORPORATION et al. SAME v. COFAX CORPORATION. SAME v. FREYDBERG BROS. STRAUSS, Inc. SAME v. BULKLEY et al.
• Court: U.S. Court of Appeals — Seventh Circuit

159 F.2d 554 (1947)

MINNESOTA MINING & MFG. CO. v. INTERNATIONAL PLASTIC CORPORATION et al. SAME v. COFAX CORPORATION. SAME v. FREYDBERG BROS. STRAUSS, Inc. SAME v. BULKLEY et al.

Nos. 8926, Nos. 9093-9095.

Circuit Court of Appeals, Seventh Circuit.

January 9, 1947.

As Amended January 21 and 31, 1947.

Rehearing Denied January 31, 1947.

Geo. I. Haight and M. K. Hobbs, both of Chicago, Ill., and E. G. Carpenter, Robert I. Coulter, and H. J. Kinney, all of St. Paul, Minn., for Minnesota Mining & Mfg. Co.

Samuel E. Darby, Jr., of New York City, Clarence J. Loftus, of Chicago, Ill., and Theodore S. Kenyon and Frederick Bachman, both of New York City, for International Plastic Corp. et al.

Franklin R. Overmyer, Roy E. Olin, and Adelor J. Petit, Jr., all of Chicago, Ill., for Cofax Corp.

Carlton Hill and Samuel W. Kipnis, both of Chicago, Ill., for Freydberg Bros. Strauss, Inc.

Harry W. Lindsey, Jr., and George N. Hibben, both of Chicago, Ill., for Bulkley et al.

Before SPARKS and MINTON, Circuit Judges, and BALTZELL, District Judge.

SPARKS, Circuit Judge.

These four appeals were argued at the same time before this court. With the exception of Cause No. 9093, all involve appeals from judgments of validity and infringement in plaintiff's suits for infringement of its patent to Drew, No. 2,177,627. No. 9093 is the appeal of the plaintiff from dismissal of its suit against the manufacturer of devices alleged to infringe, on jurisdictional grounds.

In cause No. 8926, plaintiff charged defendants with infringement of claims 4, 5, 6, 8, 10, 11, 15, and 16 of the patent, issued October 31, 1939, on an application filed June 10, 1933. No separate or distinct infringement was charged or found against the individual defendant, and all parties presenting the issues in the case refer to both appellants collectively as "the defendant." We shall do the same.

The nature of the alleged invention is specifically described in the specifications in the following language:

"This invention relates to adhesive sheets having a backing with a non-fibrous surface (such as normal or waterproofed films of regenerated cellulose) and a coating of normally tacky and pressure-sensitive adhesive united thereto. While not limited thereto, the invention relates especially to transparent adhesive sheets, to adhesive sheets in the form of adhesive tapes which may be sold in stacked or coiled form, and to adhesive sheets or tapes which are well adapted to the sealing or securing of wrappers composed of non-fibrous lustrous cellulosic films and the like."

Claim 4 is typical of claims 5, 6, 8, and 15, and claim 10 is typical of claims 11 and 16.¹

The difference between the typical claims lies in the fact that the interposed transparent primer mentioned in claim 10 and its types is not specifically mentioned in claim 4 and its types. Since the adhesive is more cohesive than it is adhesive with respect to the non-fibrous cellulosic film, defendant contends that plaintiff uses the primer in order that the adhesive may be more firmly and sufficiently united to the cellophane. Hence, defendant urges that while the primer is not specifically mentioned in claim 4 and its types, it must of necessity be implied therein from the use of the words "said adhesive being firmly united to said backing." Under the evidence submitted, this conclusion does not follow. The examiner was of the same opinion, and it is not denied that plaintiff made and sold the product with and without the primer. True, plaintiff no doubt prefers the primer, but the claims cover both, and they are entitled to protection.

The accused tapes differ from claim 10 of the patent in two respects, and from claim 4 in one respect. They use no primer between the adhesive and the top surface of the film. The base of the cellophane film is coated with a film of organic material, which defendant characterizes as a repellent to the adhesive, on an overlying layer of the tape which serves to permit the tape to be unwound and to prevent offsetting of the adhesive on the back of the tape when it is unrolled. The defendant's adhesives vary in its different tapes, but in all cases they contain a larger percentage of resin or tack-producing agent than the one to two resin-rubber ratio specified in the patent. This is a difference of degree and not of kind.

The elements involved in the patent are quite old. The straight unmoistureproofed cellophane was in widespread use in 1913. Rubber-resin adhesives were used in the manufacture of shoes as early as 1905, and non-fibrous films were known and used in the photographic art in the last century. Such adhesive was well known to have a four-fold balance of adhesion, cohesion, stretchiness and elasticity, and yet prior to the disclosures of the patent, the thought prevailed that tacky rubber-resin adhesives, and the like, must be coated on cloth or paper tape backings in order to have a mechanical anchorage with a fibrous surface and a greater area of contact. That prevailing thought was proved to be erroneous by the disclosures of this patent, which taught that such adhesive will firmly bond to a smooth film backing, such as cellophane, even without an interposed primer, and yet the tape can be stripped from smooth surfaces without delamination of the tape or offsetting of the adhesive. This is due to the fact that the cohesive characteristic of such rubber-resin adhesive exceeds its adhesive characteristic.

Defendant admits that it uses the same adhesive with a higher percentage of resin than does plaintiff. It also uses a repellent² on the back of the film which merely decreases the adhesiveness of the top of the adhesive to the back of the film when wound for marketing. This no doubt accounts for the fact, which defendant stresses, that the accused tape unrolls with less effort than plaintiff's. This of itself would not be sufficient to differentiate defendant's product from the teachings of the patent. It might be considered as an improvement, but if so, that fact would not avoid infringement.

Furthermore, this record discloses that tests of the accused product or method, without the use of the repellent, and that of the patent without the use of the primer, produced practically identical and successful results as taught by the disclosures of the patent. This is rather convincing that defendant's adhesives are the same, function the same, and secure the same results in the same way as the Drew adhesives, and that defendant's "repellent" is not essential to its tapes.

It is contended by defendant, however, that inasmuch as it does not use an inside "primer," but uses a backside "repellent" it can not be said that appellant infringes claims 10, 11 and 16. We think that in each case the use of the two-layer structure of cellulosic film and inside primer or backside repellent produces substantially the same result in substantially the same way by substantially the same means. In each case the result is to increase the factor of safety as compared to tape in which the inside primer, or backside repellent is omitted. This conclusion seems to be rather well supported by the concessions of defendant's expert, Whitby. We are convinced that defendant's repellent represents a mere inversion of plaintiff's use of its primer. In each case the adhesive is coated on a surface which has a higher specific adhesion toward it than has the back surface on the tape which is contacted when the tape is wound in a roll. For this reason we think each of the claims in issue is infringed as alleged.

Defendant contends that the patent is invalid because it is anticipated by prior public use. In this respect it stresses United States patents No. 1,850,760 to Mantell, and No. 1,760,820 to Drew. The former pertains to a method and means for shading and tracing designs such as pictures, portraits, photographic negatives, tracings and other transparencies and all similar things made by hand or otherwise which are susceptible of being shaded. Its object was to provide a service to commercial artists, who had been using frisket paper and shading films to be attached temporarily to drawings and the like as an aid in processing them for reproduction by photography and printing. It was important that the adherence be so slight that the frisket paper or shading film and the rubber coating could be later stripped from desired areas without pulling away the fibers of the paper, as that would alter the surface appearance when photographed.

For the purpose of maintaining the adhesive in tacky condition, keeping dust from the rubber coating, and protecting it, Mantell used rubber frisket cement and provided a cover sheet of Holland sheeting for the rubber coating. The evidence is uncontradicted that such tackiness was not thus preserved for any appreciable length of time, and the evidence is overwhelming that the adhesive used in frisket cement contains no resin whatever, but consists of pure rubber dissolved in benzol. Substantial evidence further discloses that Mantell's disclosure never became a commercial success, and no evidence discloses that there was ever a sale of his product either prior to or after Drew's date of invention. It does not relate to the adhesive tape art. It was not cited by the Patent Office during the prosecution of Drew's application, and we can see no reason why it should have been. See Adler Sign Letter Co. v. Wagner Sign Service, 7 Cir., 112 F.2d 264.

No. 1,760,820 is referred to by the parties as the Drew Masking Tape patent. The District Court found that the claims in suit are not anticipated by, and that they define invention over, that patent. The court found that the latter is concerned with masking tape having a fibrous, unified paper back, and does not describe nor suggest non-fibrous transparent backings having non-porous surfaces, and that the tape of that patent is different in function and principle of construction from the product set forth...