247 F.2d 343 (2nd Cir. 1957), 337, Technical Tape Corp. v. Minnesota Min. & Mfg. Co.

Docket Nº:337, 24207.
Citation:247 F.2d 343, 114 U.S.P.Q. 422
Case Date:August 02, 1957
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

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247 F.2d 343 (2nd Cir. 1957)

114 U.S.P.Q. 422




Nos. 337, 24207.

United States Court of Appeals, Second Circuit.

August 2, 1957

Argued April 12, 1957.

Mandate Recalled Nov. 8, 1957. See 249 F.2d 1.

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H. H. Hamilton, New York City (Harold J. Kinney and Robert I. Coulter, St. Paul, Minn., M. K. Hobbs, Platteville, Wis., and Edward A. Haight and J. W. Hofeldt, Chicago, Ill., of counsel), for appellee.

Before MEDINA and WATERMAN, Circuit Judges, and LEIBELL, District judge.

LEIBELL, District Judge.

Plaintiff instituted this action on November 17, 1951, under the Declaratory Judgment Act (28 U.S.C. § 2201) to have the defendant's patent No. 2, 177, 627, issued to Richard Drew October 31, 1939 1 declared invalid, or, if valid, then not infringed. On a motion in the District Court the complaint was dismissed on the grounds that no justiciable controversy was stated upon which a claim for relief could be founded and that the court lacked jurisdiction. On appeal, this court (200 F.2d 876) reversed and held that an amendment to the complaint in the interest of clarity, should be allowed. Then followed various procedural steps, resulting in an amended complaint, a supplemental complaint, the defendant's answer and plaintiff's reply. In its answer Minnesota set up a counterclaim for an injunction against further infringement of its patent by plaintiff, and for damages. Plaintiff's reply charged a misuse by defendant of its patent, in that defendant allegedly attempted to extend its patent monopoly to cover unpatented products, that defendant illegally restrained competition, and for those reasons a court of equity should not grant defendant any relief on its counterclaim.

The trial of this case before Judge Bicks took five weeks. On July 18, 1956, he filed his opinion (143 F.Supp. 429) and on July 26th signed a judgment. The judgment declared that (a) all of the sixteen claims of the Drew patent are valid 'except claim 9 as to which no adjudication of validity is made, no infringement of said claim having been found'; that (b) the plaintiff had infringed all the claims of the patent (except claim 9); that (c) defendant had not been guilty of inequitable conduct and was not barred from enforcing the patent; that (d) an injunction should issue enjoining and restraining the plaintiff from making or selling any transparent or colored non-fibrous, film-backed pressure-sentitive tape or sheeting embodying the invention of Letters Patent No. 2, 177, 627; that (e) defendant recover of the plaintiff the damages which defendant had sustained by reason of the aforesaid infringement; and that (f) plaintiff's complaint, amended complaint and supplemental complaint be dismissed with costs.

The patent expired October 31, 1956. Plaintiff-appellant has filed a substantial bond for any damages ultimately awarded.

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On this appeal Technical Tape contends (1) that there was no 'invention' in what Drew did (Drew II patent, No. 2, 177, 627); (2) that there was no novelty in what Drew did because other patents anticipated Drew; (3) that plaintiff, Technical Tape, did not infringe the Drew II patent; (4) that Minnesota has abused whatever patent rights it may have had and is entitled to no relief.

Every judge before whom the validity of the Drew II patent (No. 2, 177, 627) was litigated in the District Court (Judges Barnes and Campbell in the Northern District of Illinois and Judge Bicks in the Southern District of New York) has held the Drew II patent valid. Judge Sparks and Judge Minton of the United States Court of Appeals (7th Cir.) and Judge Baltzell, a District Judge who sat with them and heard the appeals from the judgments entered on the decisions of Judge Barnes upheld the validity of the Drew II patent (159 F.2d 554). We have considered the evidence in this case on the issue of validity and we are convinced that Judge Bicks' finding of invention and validity should be sustained.

Judge Barnes in Minnesota Mining & Mfg. Co. v. Pax Plastics Corp., D.C., 65 F.Supp. 303, 306, summarizes the salient features of the Drew II patent, 2 as follows:

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'The claims in suit are drawn to a new kind of adhesive sheet or tape having a filed of utility not possessed by any prior adhesive tape of any kind. Whether transparent or colored, and whether involving a primer or not, this tape is stably and agressively tacky and seals instantly on contact with almost any surface, without moistening or heating. The backing is a thin transparent film having smooth, glassy surfaces, such as cellophane. Both the colored and transparent types have been widely used for sealing packages. The colored type provides an attractive

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decorative seal for packages and has also been widely used as a coding tape for wires and tubes. The adhesive contains coloring material visible through the transparent film backing and produces the optical illusion that the backing film is colored, thus causing the back surface of the tape to have a lustrous colored appearance. The backing film protects the colored stratum from becoming smeared or dirty in use of the tape, and provides a back surface to which dirt does not readily cling. The transparent type of tape provides an 'invisible' sealing, mending and holding tape widely used for sealing packages, mending books, records, maps and charts, and fastening posters on windows and bulletin boards. Both types of tape have many other uses.'

The patent in suit is not invalid on the grounds that it is an aggregation of components that were old. Plaintiff contends that cellophane sheets were old and so was the use of rubber, resin, and rubber-resin adhesive; and that plaintiff's patent is simply an aggregation of the two. Plaintiff's premise does not fully state the facts and its conclusion is not correct. Defendant's aggregation of old elements produced a 'new quality' and 'function, ' and a new article. It contributed something not had before. It added 'to the sum of useful knowledge.' It required 'more than ordinary mechanical skill' to produce it. Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, at pages 151 and 152, 71 S.Ct. 127, at page 130, 95 L.Ed. 162. A novel combination of old elements which cooperate with each other so as to produce a new and useful result is patentable. Weller Mfg. Co. v. Wen Products, Inc., 7 Cir., 231 F.2d 795, 798; Brown v. Brock, 4 Cir., 240 F.2d 723, 726; Zonolite Co. v. United States, Ct.Cl., 149 F.Supp. 953, 955.

It is defendant's contention that Drew was the first to produce film backed, normally tacky, pressure-sensitive and water-insoluble adhesive sheets and tape, all of which is clearly and fairly defined in the specifications and claims of the Drew II patent.

The specifications of the Drew II patent use the words 'adhesive sheets or tapes' in the first paragraph and many times thereafter, although the claims refer to adhesive sheets. The adhesive sheets of the Drew patent claims could be of any width, such as tape size material.

That Drew's patent involved invention is established in several ways. It had been sought by expert chemists of the DuPont Co. and of Johnson & Johnson, for a number of years, unsuccessfully. Expanded Metal Co. v. Bradford, 214 U.S. 366, 381, 29 S.Ct. 652, 53 L.Ed. 1034; Loom Co. v. Higgins, 105 U.S. 580, 591, 26 L.Ed. 1177. In his own experiments Drew stumbled upon it. Of course, after Drew's discovery it all seemed simple. With Drew's patent to point the way, infringing competitors would claim that it was so obvious that there really was nothing to it; that it did not require anything but mechanical skill and the use of known materials. But the demand had long existed; skilled men had sought to meet the demand without success. Inland Mfg. Co. v. American Wood Rim Co., 6 Cir., 14 F.2d 657, 659. In the recent case of Rohm & Haas Co. v. Roberts Chemicals, Inc., 245 F.2d 562 the Court of Appeals for the Fourth Circuit in reversing a District Judge's holding, 142 F.Supp. 499, that the patent in suit before him was invalid for anticipation, stated:

'Since Hester tried and succeeded where Tisdale and the duPont Company tried and failed, we may fairly conclude that the discovery was not obvious to persons skilled in the art.'

The phenomenal success of the Scotch tape produced by the defendant under Drew's patent is not to be overlooked in considering the question of invention. The Seventh Circuit called it 'quite astonishing.' Drew had hit upon something that was useful in many industries in packaging and sealing their

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products. Although commercial success is not decisive on the issue of invention it is a factor that should not be ignored. Wahl Clipper Corp. v. Andis Clipper Co., 7 Cir., 66 F.2d 162, 165.

In considering the issue of invention and 'how far beyond commonplace contriving was the foresight necessary to think out the combination, ' the courts find it enlightening to resort to 'the history of what went before, the duration of the period during which the invention was needed but failed to appear and its acceptance when it did.' L. Hand, J., in Landis Mach. Co. v. Parker-Kalon Corp., 2 Cir., 190 F.2d 543, 546. 'Substantially all inventions are for the combination of old elements; what counts is the selection, out of all their possible permutations, of that new combination which will be servicable.' Safety Car Heating & Lighting Co. v. General Electric Co., 2 Cir., 155 F.2d 937, 939.

The prior art on which plaintiff-appellant relies on this appeal as anticipating Drew II patent will now be discussed.

Plaintiff points to the Brandenberger French patent...

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