Barr Rubber Products Company v. Sun Rubber Company
| Decision Date | 21 November 1967 |
| Docket Number | No. 60 Civ. 4327.,60 Civ. 4327. |
| Citation | 277 F. Supp. 484 |
| Parties | The BARR RUBBER PRODUCTS COMPANY, Plaintiff, v. The SUN RUBBER COMPANY, and Wonder Products, Inc., Defendants. |
| Court | U.S. District Court — Southern District of New York |
COPYRIGHT MATERIAL OMITTED
Ely & Golrick, Cleveland, Ohio, Albert L. Ely, Jr., Cleveland, Ohio, of counsel, Darby & Darby, New York City, Harvey M. Brownrout, New York City, of counsel, Theodore A. Lazar, Columbus, Ohio, for plaintiff.
Pennie, Edmonds, Morton, Taylor & Adams, New York City, Thomas F. Reddy, Jr., New York City, of counsel, Hamilton & Cook, Akron, Ohio, Everett R. Hamilton, Phillip L. Kenner, Akron, Ohio, of counsel, for defendant.
In this action, begun on November 3, 1960, plaintiff, Barr Rubber Products Company, sues The Sun Rubber Company for:
(1) a declaration of invalidity and noninfringement with respect to United States Patent No. 2,629,134 relating to a method of casting plastic articles, and (2) damages and injunctive relief against alleged violations of the antitrust laws and allegedly unfair competitive practices.1
Defendant has counterclaimed for a judgment of validity and infringement of the patent.
In brief, non-technical language, the patent in suit covers a method for the casting of fully enclosed hollow plastic objects "from a liquid mixture of a vinyl resin and a plasticizer therefor" which solidifies and hardens through the application of heat during the procedure which the patentee, Robert P. Molitor (assignor to his onetime employer, Sun), claims to have invented. The steps of the process are: the deposit of the liquid material in one section of a two-piece mold (the amount being measured to produce the desired wall thickness of the finished hollow object); the closure of the mold; rotation of the mold, causing the liquid to spread in a wall around the inside; the simultaneous application of heat to bring the plastic through the stages of "gelation" (in which the matter is a gelatinous or coagulated "cheesy mass") and then "fusion" (the point at which the material becomes hard, its ultimate degree of elasticity depending upon the varying proportions of solid matter and liquid "plasticizer" employed); the cooling of the mold below the "fusion" temperature; and the opening of the mold and removal of the finished object.
In the more artistic language of the patent, Claim 1 (of the four claims) depicts the invention as follows:
"The process of making hollow articles from a liquid mixture of a vinyl resin and a plasticizer therefor, comprising the steps of depositing a measured charge of the said mixture in a hollow sectional mold, said charge being less in volume than the volume of the mold, said mold having non-porous inner surfaces, closing the mold with the charge therein to retain the charge within the cavity, rotating the mold in a multiplicity of planes to distribute the charge as a layer over the entire inner surface of the mold cavity, heating the layer to gel it against the inner surface of the mold while the mold is rotating, then applying additional heat to the closed mold to raise the temperature thereof sufficiently to fuse the gelled layer against the inner surface of the mold, cooling the mold until the temperature of the layer is below the fusing point of the material, opening the mold and removing the article therefrom."2
It will be noted that the material described in the patent claims is referred to as "a liquid mixture of a vinyl resin and a plasticizer therefor." According to defendant and much of the testimony, the quoted words should be read to mean, more briefly, a "plastisol," which is a small-particled polyvinyl chloride resin dispersed in a liquid plasticizer (or softening agent) containing no volatile solvents or diluents.3 While neither the patent claims nor the specifications anywhere use the word "plastisol," and while the patent's words ("liquid mixture of a vinyl resin and a plasticizer therefor") literally include things which are not plastisols, defendant has argued persuasively that the references, in their context, should be deemed to focus on variously formulated plastisols. The subject is one, however, which will engage us again when we come to defendant's contention that an Italian patent claimed by plaintiff to anticipate Molitor's must be cast aside for the reason () that it purports to cover an excessively broad range of materials, including many which would be unworkable.
The foregoing sketch, to be amplified as the discussion proceeds, is a sufficient background against which to consider the patent issues and explain the court's conclusions that (A) the patent is invalid and (B) assuming, for the sake of full adjudication at this level, that the patent were deemed valid, it would be held to have been infringed.
Molitor's alleged invention was an obvious combination of old and well-known elements, failing the test of 35 U.S.C. § 103.4 Despite the length of the trial and the volume of the record, the facts bearing upon this point are largely undisputed.
The technique dubbed "rotational casting" in this case is at least 100 years old. There is specific and persuasive evidence that Molitor, if he was ahead at all, barely preceded several others in applying to the infant subject of plastisols a procedure that would have been obvious "to a person having ordinary skill in the art * * *." Postponing that for a bit, the history of rotational casting of other materials goes far (probably sufficiently far) in itself to refute Molitor's claim that he invented something.
In 1855, one Peters was granted a British patent (No. 1308) for the rotational casting of "ordnance shells and other hollow vessels." Unlike (and superior to) Molitor, Peters showed equipment and a specific mode of rotation around two axes (as against Molitor's vague reference to "a multiplicity of planes") suitable for casting "metal or other substances which can be made sufficiently fluid by heat to be acted upon in the manner * * * described, and which will set or become rigid on cooling down." (P.Ex. 38, p. 4.)
Postponing plaintiff's many other references to early methods and means of rotational casting, one other may be mentioned at this point. In 1920, U. S. Patent No. 1,341,670 issued to Ransom Judd Powell for a machine and means "for shaping or forming plaster, metals and other plastic materials or substances." The invention was described as "particularly directed to the production of hollow objects * * * consisting broadly in achieving such result by the simultaneous turning of a matrix or mold on two different axes." The patented device was described as "adapted to be used in conjunction with molds for casting hollow objects which are substantially completely closed, and the selected embodiment of the invention * * * shown is directed to the casting or molding of relatively light-weight articles, such as statuary, artistic novelties, small figures, toys, etc." The invention described introduction of the liquid material into the mold, rotation (avoiding centrifugal force), and the hardening of the material against the mold wall during such rotation.
Purporting to dispose of such references, and speaking directly to the Powell patent, defendant's expert observed, correctly, that metals harden by cooling and plaster "by crystallization" (aside from Powell's reference to "other plastic materials or substances" and the absence of any reference in Powell to such obvious factors as cooling where appropriate) whereas Molitor dealt with materials which harden upon heating. (As is noted below, all are agreed that the flowing and hardening characteristics of plastisols were commonly known in the art before Molitor, and that he "invented" nothing in this respect.) But even if the Peters and Powell inventions stood alone — as they do not by any means — this asserted distinction seems trivial to the point of being regrettable.5 Granting the customary (and frequently well-founded) humility lay judges are supposed to exhibit when confronted with the mysteries of natural science, machinery, and the like, it is difficult to accept that a patent should issue because somebody applies an ancient casting technique to well-known properties of some new material.
Furthermore, among the many items undisputedly in the prior art was the known process of rotationally casting latex, which does require heating rather than cooling to harden it.6
However, before turning from the Peters and Powell patents, another of defendant's arguments may be noted. Defendant says Peters taught the use of centrifugal force for spreading the material on the inner mold wall whereas plastisols do not spread efficiently when subjected to such force. Instead, it is argued — and the record tends to support this — that to spread a plastisol in rotational casting, the substance should rest in a pool at the bottom of the mold and then adhere as the mold walls pass the pool in turning. There are decisive answers to the point (which is, incidentally, stressed by defendant with respect to other references plaintiff invokes, and is similarly refuted by what follows here). In the first place, Powell taught the avoidance of centrifugal force for plastic and similar materials. Secondly, the evidence establishes, as even laymen might know, that this argumentation about centrifugal force concerns a matter of degree rather than an absolute choice. All rotation produces some centrifugal force. The present point about rotational casting is that the rotation should be relatively slow, minimizing the operation of such force.
Further, and more strikingly, if defendant were correct on this subject, it would be acknowledging a most vital defect in Molitor's patent. There is not a word in Molitor about the speed of rotation or the necessity to avoid or minimize centrifugal...
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