282 F.Supp. 118 (E.D.N.Y. 1968), 62-C-1248, Reeves Bros., Inc. v. United States Laminating Corp.

Docket Nº:62-C-1248.
Citation:282 F.Supp. 118
Party Name:157 U.S.P.Q. 235 REEVES BROTHERS, INC., Plaintiff, v. U.S. LAMINATING CORP., and Travis Rauch, Defendants.
Case Date:January 23, 1968
Court:United States District Courts, 2nd Circuit, Eastern District of New York

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282 F.Supp. 118 (E.D.N.Y. 1968)

157 U.S.P.Q. 235



U.S. LAMINATING CORP., and Travis Rauch, Defendants.

No. 62-C-1248.

United States District Court, E.D. New York.

Jan. 23, 1968

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Kane, Dalsimer, Kane, Sullivan & Smith, New York City, for plaintiff; by Robertson, Bryan, Parmelee & Johnson, Haynes N. Johnson, Roland T. Bryan, Vincent A. Mallare, Stamford, Conn., of counsel.

Irving Moldauer, New York City, for defendants; Henry L. Burkitt, New York City, Caesar, Rivise, Bernstein & Cohen, Philadelphia, Pa., by Abraham D. Caesar and Stanley H. Cohen, Philadelphia, Pa., of counsel.

BARTELS, District Judge.

This action involves two inventions made by John W. Dickey, the first in March, 1956 and the second in May, 1957, upon which three patents were issued and duly assigned to Reeves Brothers, Inc. The First Patent (No. 2,957,793) relates to lamination of polyurethane foam to fabric by the use of flame heat. The Second Patent (No. 3,057,766) relates to an improvement in the method and apparatus for such lamination. The Third Patent (No. Re. 25,493) is a reissue of the Second Patent. Reeves instituted this action under 35 U.S.C.A. § 271 against U.S. Laminating Corp. and Travis Rauch, its general manager and sole owner (since 1965), for infringement of these patents.

In addition to the conventional defenses of patent invalidity for anticipation or obviousness and infringement, defendants interposed in a shotgun approach a number of other defenses predicated upon invalidity or non-infringement, including (1) insufficiency of disclosure, 35 U.S.C.A. § 112; (2) failure to make a full and complete disclosure for the purpose of deceiving the public; (3) addition of new matter by amendment, 35 U.S.C.A. § 132; (4) file wrapper estoppel; (5) abandonment of the Second Patent Application; (6) unauthorized reissue of the Second Patent, 35 U.S.C.A. § 251; (7) prior public use of the invention covered by the First Patent; (8) theft of the invention by the patentee; and (9) patent misuse, unfair competition, and violation of the anti-trust laws in licensing and promoting the patents. Before the trial was completed, which consumed 61 trial days recorded in approximately 9,000 pages of testimony, a number of these defenses were either dismissed by the Court or abandoned by the defendants. 1 Although a resolution of one or more of the remaining defenses would have terminated this dreary and acrimonious litigation without consideration of the other defenses, the procedure apparently preferred in this circuit dictates consideration of all issues which might become relevant if error is committed

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in adjudicating any other issue. Ling-Tempco-Vought v. Kollsman Instrument Corp., 2 Cir. 1967, 372 F.2d 263, 265.

Background of the Dickey Patents

Polyurethane foam of the polyester type (polyurethane foam) was first manufactured in Germany and was not available in the United States in commercial quantities until late 1954. At that time the foam was used for soundproofing, insulation for jacket linings, furniture stuffing, carpet underlay, and cleaning and sponges. Curtiss-Wright Corporation was an early manufacturer of polyurethane foam in this country and in 1956 was promoting its use as carpet underlay, especially for wall to wall broadloom carpeting. Because of the very strong frictional adhesive qualities of the foam, it was difficult to unroll the carpet over the foam underlay without the foam bunching and possibly tearing, which was an obstacle to its acceptance as carpet underlay. To overcome this difficulty Curtiss-Wright experimented with possible ways to eliminate the friction between the foam and the carpet, including dusting the foam with soapstone, coating the foam with wax, and attaching muslin to the foam by the use of starch adhesives. None of these remedies proved effective. Efforts to laminate polyurethane foam to cloth by adhesives or by sewing had been attempted in textile oriented uses but had not proved too successful commercially.

In March, 1956 Dickey, a chemical engineer, was employed by Curtiss-Wright as a trouble shooter. He had no previous experience with polyurethane foam, and his first major assignment was to help solve this carpet underlay problem by finding a commercially practical way to attach muslin cloth to the foam. Dickey's immediate suggestion was to fuse the surface of the foam and laminate the same to the cloth. This possibility was discussed with others in the research department of Curtiss-Wright who had more experience with polyurethane foam. Dickey was informed that the suggestion was impractical because the foam melted at 450 degrees F. and would decompose when heated to a temperature sufficient to fuse it and moreover such temperature upon lamination would cause damage to the fibers or filaments of the fabric which could not withstand heat above 300 degrees F. Dickey was not discouraged by this information but on March 21, 1956 passed a small piece of polyurethane foam through a Bunsen burner and discovered that the fused foam when pressed against a piece of fabric would adhere to it without damaging the fabric. 2

The problem then remained as to how Curtiss-Wright could commercially take advantage of this newly discovered process of foam lamination. In an effort to reach a solution Dickey designed and constructed a flat bed machine (illustrated in Fig. 1 of the First Patent) for the production of foam fabric flame laminates. This apparatus consisted of a flat bed conveyor which carried the foam underneath a burner causing it to become soft and tacky and thereafter conveyed the foam under a roller under which there was drawn at the same time fabric material which was consequently pressed against the soft and tacky foam thereby causing it to adhere to the fabric. However, the foam when exposed to heat or flame on this machine tended to wrinkle and accordingly produced imperfect laminates. While wrinkling did not significantly affect the strength of the bond nor affect the use of the laminate as carpet underlay, it was objectionable from a cosmetic viewpoint in the textile industry

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and particularly as garment linings. To obviate this difficulty Dickey in May, 1957 conceived and reduced to practice the idea of tensioning the foam on a roller or drum before and after lamination. This was accomplished by a machine (illustrated in Fig. 1 of the Second Patent) which operated a drum on the periphery of which the web of foam was tensioned before and after reaching the burner. The fabric material was carried simultaneously and tensioned longitudinally along a conveyor towards and against the drum after the foam passed the burner and was soft and tacky thereby causing a laminate which was further articuately tensioned around the drum after the contact of the two materials.

First Dickey Patent and File History

Dickey filed the application for his First Patent on September 28, 1956. In substance, it claims a method of laminating a sheet of foamed polyurethane plastic material of the polyester type by contacting the same with a gas flame to heat the surface layer to at least 450 degrees F. to fuse the surface layer and to render the same soft and tacky and pressing a sheet of fabric material upon this soft and tacky layer after the layer has cooled to a temperature below the fusion temperature of the foam, or after it has cooled to a temperature below that which would damage said sheet of porous material or after said surface layer has cooled to a temperature not injurious to said fabric sheet.

In view of the many defenses interposed to this patent, the file history of its application in the Patent Office is important. The original application contained seven method claims, and three article claims. Of the method claims, only Claim 2, which was later cancelled, and Claim 7, which became Claim 3 of the patent as finally issued, stated (pp. 10-11) that the second material was applied to the 'soft tacky surface while said surface is in a supercooled state' (retaining its liquid properties after being cooled below its melting point). All claims were rejected as unpatentable over the Matheson Patent (p. 14). The application was then amended to drop the article claims and to add 'supercooling' to all of the method claims, and the patentee stated that 'an essential feature of applicant's invention not disclosed in any of the prior art references, (is) viz., the application of the material which is to be bonded to the plastic material, to the surface of the plastic material while said surface is in a supercooled state', thereby allowing lamination to materials such as fabrics which would ordinarily be damaged by exposure during lamination to the 450 degrees F. or to temperature required to render polyurethane foam soft and tacky (p. 17). The claims were again rejected by the Patent Office (p. 20).

In response thereto, patentee argued that Matheson disclosed 'immediate pressing of the heated surface against the material to which it is to be bonded' and that there is no teaching that 'in order to avoid damage to the material to be bonded to the plastic, the apparatus and process be so arranged that when said material is brought into contact with the heated surface of the plastic the temperature of the latter has dropped below the normal melting point of the plastic and yet said surface is still adhesive, i.e., that such contact occurs while said surface is in a supercooled state' (p. 23). The claims were again rejected as unpatentable (pp. 26-27). Applicant then emphasized to the Patent Office that the fused foam surface is 'then allowed to cool to a supercooled state' and...

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