H. Wenzel Tent & Duck Co. v. White Stag Mfg. Co.

• Decision Date: 30 October 1952
• Docket Number: No. 13132.,13132.
• Citation: 199 F.2d 740
• Parties: H. WENZEL TENT & DUCK CO. v. WHITE STAG MFG. CO. et al.
• Court: U.S. Court of Appeals — Ninth Circuit

199 F.2d 740 (1952)

H. WENZEL TENT & DUCK CO. v. WHITE STAG MFG. CO. et al.

No. 13132.

United States Court of Appeals Ninth Circuit.

October 30, 1952.

Orme E. Cheatham, Portland, Or., Edmund C. Rogers, St. Louis, Mo. (Buckhorn & Cheatham, Portland, Or., and Kingsland, Rogers & Ezell, St. Louis, Mo., of counsel), for appellant.

Samuel B. Weinstein and L. R. Geisler, Portland, Or., for appellee.

Before STEPHENS, HEALY and BONE, Circuit Judges.

STEPHENS, Circuit Judge.

The H. Wenzel Tent & Duck Co., hereafter called plaintiff, brought suit against the White Stag Manufacturing Co., hereafter called defendant, for allegedly infringing plaintiff's patent on a self-cooling cotton canvas water bag. Defendant interposed by way of defense evidence as to its claimed manufacture and sale to the public of a substantially identical product more than one year prior to plaintiff's original patent application. The district court held that since 1940, more than one year before plaintiff's original filing date, there had been "a public use and a disclosure to the public that cotton fabric treated with paraffin to restrict the passage of water through the fabric without rendering the fabric entirely waterproof could be used in place of flax canvas in making self-cooling water bags", and that plaintiff's patent had been anticipated by prior public use and was "inadvertently granted". Judgment was awarded to defendant, and plaintiff appealed.

It has long been known that water in a porous container can be kept cool by the limited seepage and evaporation of the water from the outer surface of the container. A flax bag soaked for twenty-four hours has proved to be a satisfactory self-cooling water bag since the seepage rather nicely equals the evaporation necessary for cooling. With the outbreak of war in Europe in 1939, it became increasingly difficult in the United States to obtain flax. Because of such difficulty the Hirsch-Weis Canvas Products Co., defendant's predecessor, manufactured and sold to the public during 1940 and 1942 several thousand non-flax bags made of 13-ounce cotton duck treated with paraffin wax. The treated fabric used was called "Raintest" and was water-repellent though not waterproof. In a water-repellent fabric, like one made of flax, interstices are not entirely closed but are restricted, allowing limited seepage which, upon evaporation, cools the retained water. There is evidence that the "Raintest" bag was discontinued in 1942 because the War Production Board refused the allocation of cotton for water bag use.

On September 24, 1941, more than one year after the sale of the "Raintest" bags had begun, plaintiff filed an application for a patent on a self-cooling cotton water bag. Plaintiff's application proposed that cotton canvas be treated with a paraffin wax emulsion bath. It was claimed that this process would permit sufficient evaporation to keep the water in the bag cool; and that since paraffin would be used as the agent to restrict the flow of water, there could be no objectionable aroma or souring of the water. 18-ounce duck was recommended as the most satisfactory weight. No patent was issued on plaintiff's 1941 application.

In March, 1943, the Rohm & Haas Co. at the request of the Army Quartermaster Depot independently developed a self-cooling cotton water bag. Under the Rohm & Haas process the fabric was treated with a resin which satisfactorily restricted the pores without actually closing them, and this processed bag was in one respect more satisfactory than plaintiff's paraffin wax treated bag. Paraffin wax has a relatively low melting point. Therefore after a bag so treated was once exposed to heat the paraffin would soften and allow the pores of the bag to open and enable the water to seep through at an increased rate. However, when the temperature dropped the wax would not retract. Resin, on the other hand, has a relatively high melting point and the bag treated with it would more closely equate the seepage and evaporation. The army used the Rohm & Haas bag in 1943 and 1944. It was never patented.

On April 25, 1945, plaintiff filed a second application for a patent which was a "continuation-in-part" of the first application. By filing a "continuation-in-part" instead of an entirely new application, plaintiff sought to take advantage of the earlier filing date of the first application. In its 1945 application plaintiff claimed that a self-cooling cotton water bag could be produced if the cotton fabric was treated with either "a liquid dispersion i.e., solution of a substance that is amorphous,¹ water insoluble, relatively hard at low temperatures, relatively soft at high temperatures, and increasing in softness as the temperature rises," or "a dilute emulsion" of a substance of the same description or "a dilute emulsion of a paraffin wax". In general, plaintiff claimed that the cotton duck could be used to make self-cooling water bags if the fabric were woven to permit uncontrolled seepage, and then impregnated with paraffin or an insoluble plastic to regulate the seepage. The United States Patent Office granted Patent No. 2,467,792 on a self-cooling cotton water container to Fred H. Wenzel and Herman F. Wenzel, plaintiff's assignors, on April 19, 1949.

In 1948 defendant again put a treated cotton water container on the market. Defendant states that this bag was made necessary by a sharp increase in the price of flax in 1947. Defendant's 1948 cotton bag was not made of the "Raintest" material which had been used in 1940 to 1942. Instead, a 14.9-ounce duck treated by the Buckeye Fabric Finishing Company of Ohio was employed as more satisfactory than the "Raintest" material. And in 1949, defendant changed to a treated cotton fabric made by the Champion Textile Finishing Company of Chicago. Defendant has continued to manufacture and market a self-cooling cotton water bag of the "Champion" material to date. It is this bag which plaintiff alleges infringes its patent.

Defendant responded to plaintiff's charge of patent infringement with the contention that a self-cooling water bag of cotton impregnated with paraffin is not patentable because such a product was in public use for at least one year prior to the date plaintiff filed its original patent application, and a resin-impregnated bag was in public use more than one year prior to plaintiff's amended application. Plaintiff contended that there had been no "prior use" within the conditions of patentability laid down by Congress,² because the "Raintest" bag had been an unsuccessful "fugitive episode" which had been abandoned. Plaintiff further contended that defendant's present bag is not the same as the "Raintest" bag, but is the same as plaintiff's bag.

The issuance of a patent to an individual bestows upon him a monopoly protected by the power of the United States in the exploitation of the patented products. Such special privilege would be unwarranted were it not for a specific provision in the United States Constitution giving Congress the power to "promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries". Art. I, § 8, Cl. 8, U.S.C.A. In the exercise of this Constitutional power, Congress has set forth certain reasonable conditions which must be met in order for an individual to obtain a government protected monopoly. To be patentable an invention or discovery, or improvement thereon, must be "new and useful" must not have been "known or used" in the United States or "patented or described in any printed publication" in the United States or foreign country more than one year prior to the application, and must not have been "in public use or on sale in this country" for more than one year prior to the application nor "proved to have been abandoned".³ The principal issue raised in this case is whether or not the "Raintest" bag was substantially identical to plaintiff's bag in its objective and manner of operation, and thus amounted to an anticipation and public use of plaintiff's patent.

Once letters of patent have been issued it is "prima facie evidence that the patentee is the first inventor of the device described in the letters patent, and of its novelty."...