SUN RUBBER COMPANY v. National Latex Products Co., Civ. No. 31211

• Decision Date: 29 January 1958
• Docket Number: Civ. No. 31211,31212.
• Citation: 159 F. Supp. 661
• Parties: The SUN RUBBER COMPANY, Plaintiff, v. NATIONAL LATEX PRODUCTS COMPANY, Harry R. Gill, Sr., and Harry R. Gill, Jr., Defendants. The SUN RUBBER COMPANY, Plaintiff, v. The AKRON PRESFORM MOLD COMPANY and Theodore A. Miller, Defendants.
• Court: U.S. District Court — Northern District of Ohio

159 F. Supp. 661

The SUN RUBBER COMPANY, Plaintiff, v. NATIONAL LATEX PRODUCTS COMPANY, Harry R. Gill, Sr., and Harry R. Gill, Jr., Defendants.

The SUN RUBBER COMPANY, Plaintiff, v. The AKRON PRESFORM MOLD COMPANY and Theodore A. Miller, Defendants.

Civ. Nos. 31211, 31212.

United States District Court N. D. Ohio, E. D.

January 29, 1958.

A. L. Ely, Bernard C. Frye, Akron, Ohio, for Sun Rubber Co.

Evans & McCoy, Cleveland, Ohio, for National Latex Products Co.

A. H. Oldham, Vern L. Oldham, Akron, Ohio, for Akron Presform Mold Co.

JONES, Chief Judge.

By consent of the parties, these two cases were consolidated for trial for the reason that they each involve the validity and infringement of the same patents. The patents are related to each other, each by reference in the patent, as are the parties related contractually.

One of the patents, Molitor No. 2,629,134 provides for a process or method for making hollow plastic articles. The other, Martin, et al., No. 2,629,131 discloses a machine for making the hollow plastic articles according to the process patent.

The defense is invalidity for lack of invention because of anticipation by earlier patents and because of earlier known publications. It is not thought essential to decision that a detailed recital be given of the extensive evidence and opinions developed in the trial of this case; nor of the wide sweep of the discussions involved in considering the patent claims in issue and the disclosures of the prior art patents and publications. It will be sufficient to set down my reactions, findings and conclusions as to the issues of validity and infringement. The cases were tried before the court for approximately ten days, including extensive oral argument at the conclusion.

I belong to the school that still believes the granting of a patent by the Government presents a strong evidential presumption of validity, and that a heavy burden rests upon those who challenge its validity in an infringement suit. This, I regard as a sound rule, and, unless lack of invention clearly is evident to the court, the defense is of no avail.

Defendants rely chiefly upon the Italian Patent to Delacoste as a challenge to the validity of Molitor's process. Reliance almost entirely rests upon that Italian patent, and defense otherwise depends upon invalidity through lack of invention.

It will be interesting first to determine whether Delacoste, as a foreign patent, is a valid anticipation. Why was Delacoste rejected by the Patent Office? No definite answer is provided. Therefore, I am driven to conclude that it was rejected by the Patent Office probably either for lack of clarity or for lack of patentability. Despite expert Beal's testimony that he could, as one skilled in the art, practice the Delacoste process as disclosed in the patent and without any research or experimentation, I cannot adopt such view from the evidence before me. There appears to have been no history of any practice of Delacoste. On his earlier visit to the United States he mentioned that he had such a patent but did not disclose the process to the men he met. Only on a later visit and upon insistence of the people in Massachusetts with whom he was experimenting (later than Molitor's filing) did he file his second application in the United States Patent Office, endeavoring to clarify and set forth the various steps essential to successful prosecution of the later application.

Working with plastics such as vinyl resins and the like as a more useful and durable material than rubber or its synthetic substitute such as latex was not new (nor was it claimed to be) with Molitor, but the new and improved method for manufacturing completely hollow plastic (plastisol) articles by continuous and automatic rotative mechanism with correlation of timing and temperature witnessed the first commercially successful method and means for producing such articles in an impressive way and in greatly increased and substantial quantities.

But if it should be thought that Delacoste is a valid reference, (which I previously have held as a foreign patent required a clear and definite disclosure which would permit one skilled in the art to practice the invention without experimentation, Simmons Co. v. Champion Spring Co., D.C.1929, 82 F.Supp. 910) then I ask, has any one, under this evidence tried to produce a complete thin-walled hollow plastic article in accordance with the claims and method disclosed by Delacoste? Expert Beal told of the numerous types of hollow articles made of "plastisol" and elements old in the art, but no physical examples or exhibits of drawings, photographs or other publications were produced to support his statements of the earlier practices of which he so freely related in his testimony. He compared Claim 2 of Delacoste with Claim 1 of Molitor in issue. Delacoste was directed to making hollow objects out of synthetic resin completely polymerized, held in suspension in suitable plasticizer, and this to be accomplished by rotating in all directions of closed molds, into which had been deposited a desired amount of the material. The molds to be heated so as to transform the enclosed material to a "gel". Thereafter the mold to be opened and the hollow object removed. No details as to how to practice the process, or the mechanical steps required to accomplish the manufacture of the completed hollow object were given.

One step missing in Delacoste and, as I think, essential (and not obvious) to produce the article is the recognition of the temperature change to accomplish the transition of the material from gel to fusion.

Without considerable experimentation and a search for disclosures in the wide field of heat treating, time exposure and range of temperatures, together with the failure clearly to define the type and composition of material required to make the character of article intended, leaves Delacoste without effective force as anticipation. It is my view that the method or process of Delacoste cannot be accorded the status of an anticipation of Molitor. This view seems to me to be consistent with the...