Minnesota Mining & Mfg. Co. v. Permacel-LePage's, Inc.

• Decision Date: 29 July 1964
• Docket Number: No. 14424.,14424.
• Citation: 334 F.2d 820
• Parties: MINNESOTA MINING AND MANUFACTURING COMPANY, Plaintiff-Appellant, v. PERMACEL-LePAGE'S INC., a dissolved corporation, Defendant-Appellee, and Johnson & Johnson, a corporation, Defendant-Intervenor, Appellee.
• Court: U.S. Court of Appeals — Seventh Circuit

334 F.2d 820 (1964)

MINNESOTA MINING AND MANUFACTURING COMPANY, Plaintiff-Appellant, v. PERMACEL-LePAGE'S INC., a dissolved corporation, Defendant-Appellee, and Johnson & Johnson, a corporation, Defendant-Intervenor, Appellee.

No. 14424.

United States Court of Appeals Seventh Circuit.

June 25, 1964.

Rehearing Denied July 29, 1964.

Edward A. Haight, Britton A. Davis, Chicago, Ill., Harold J. Kinney, Stanley G. De La Hunt, St. Paul, Minn., for appellant.

Sidney Neuman, Thorley Von Holst, Robert L. Austin, Charles A. Laff, Chicago, Ill., Harold Haidt, Alexander T. Kardos, New Brunswick, N. J., for appellee.

Before CASTLE, KILEY and SWYGERT, Circuit Judges.

CASTLE, Circuit Judge.

Minnesota Mining and Manufacturing Company, plaintiff-appellant, owner of Oace et al. Reissue Patent No. 23,843, covering an insulating tape,¹ brought suit in the District Court charging infringement of the patent. The original defendant, Permacel-Le Page's Inc., has been dissolved and its industrial tape business has been continued as the Permacel division of defendant-intervenor-appellee, Johnson & Johnson. Following a trial on the issues of validity and infringement the District Court made and entered detailed findings of fact and conclusions of law on the basis of which it entered judgment holding the claims in issue (Claims 1, 3, 4, 6, 7, 8 and 9) valid but not infringed by the accused tapes manufactured and sold by the defendants. The plaintiff appealed from the judgment entered for defendants and asserts the court erred in concluding that defendants' tapes do not infringe the patent.

The reissue patent in suit has been the subject of other litigation.² It was before this Court in Minnesota Mining and Manufacturing Company v. Technical Tape Corp., 7 Cir., 309 F.2d 55, where it was held valid and infringed. Typical claims 1 and 6 are set out in full in Sears, Roebuck and Company v. Minnesota Mining and Manufacturing Company, 4 Cir., 243 F.2d 136, footnote at pages 137-138, and the nature of the subject matter of the patent, the problems it overcame, and the novel features of the invention are described in some detail in Technical Tape, supra, 309 F. 2d at pages 56-57. They will not be repeated here.

Consideration of the claims of the patent in the light of the specifications (Sherbatskoy v. United States Steel Corp., 7 Cir., 287 F.2d 552, 556) reveals that Reissue Patent No. 23,843 is a combination patent and that the invention claimed is the use of a low molecular weight, liquid or migratory type plasticizer and a high molecular weight resinous or non-migratory type plasticizer, or a synthesis containing a requisite proportion of the two, with a polyvinyl chloride backing³ and a rubber-resin type adhesive coating to produce an adhesive vinyl plastic insulating tape possessing the qualities and characteristics described. The claims state the proportion of plasticizer materials to polyvinyl material, and to each other, as approximations but within defined limits.

The detailed factual findings of the District Court with respect to the nature of the plasticizers referred to in the patent claims and the nature of the plasticizer contained in the accused tapes are based largely on the testimony of expert witnesses. The scope of our review of such findings is therefore limited by Rule 52(a) of the Federal Rules of Civil Procedure (28 U.S.C.A.) to a determination of whether or not they are "clearly erroneous". Armour & Co. v. Wilson & Co., 7 Cir., 274 F.2d 143, 156; Minnesota Mining and Manufacturing Company v. Technical Tape Corp., 7 Cir., 309 F.2d 55, 57. If they find support in the evidence, albeit they involve the resolution of conflicting testimony, we are bound thereby and there remains but the question of whether or not the court applied the correct legal criteria in reaching the ultimate conclusion it did. Absent a definite or firm conviction that a mistake has been made we must affirm. Cf. United States v. United States Gypsum Co., 333 U.S. 364, 394-395, 68 S.Ct. 525, 541, 92 L.Ed. 746.

Except for conflict in the testimony with respect to the nature of the plasticizing material contained in the accused tapes it is clear from the record, and the District Court so found, that there is no question but what each of the accused tapes respond to the elements of the claims in suit.

The District Court found, among other things, that the "liquid" type low...