Johnson & Johnson v. Kendall Company

• Decision Date: 04 March 1963
• Docket Number: No. 55 C 336.,55 C 336.
• Citation: 215 F. Supp. 124,137 USPQ 505
• Parties: JOHNSON & JOHNSON, a corporation, Plaintiff, v. The KENDALL COMPANY, a corporation, Defendant.
• Court: U.S. District Court — Northern District of Illinois

215 F. Supp. 124

137 USPQ 505

JOHNSON & JOHNSON, a corporation, Plaintiff, v. The KENDALL COMPANY, a corporation, Defendant.

No. 55 C 336.

United States District Court N. D. Illinois, E. D.

March 4, 1963.

Pendleton, Neuman, Seibold & Williams, Thorley von Holst, Sidney Neuman, James R. Dowdall, Robert L. Austin, Chicago, Ill., Benton A. Bull, New Brunswick, N. J., for plaintiff.

Thomas W. Underhill, Boston, Mass., Anderson, Luedeka, Fitch, Even & Tabin and William E. Anderson, Chicago, Ill., for defendant.

ROBSON, District Judge.

By its complaint, filed March 1, 1955, plaintiff, assignee-owner of Patent No. 2,703,083, issued the same day, in application filed January 4, 1955,¹ to William J. Gross, for an "Adhesive Bandage,"² charges infringement by defendant. A counterclaim seeks a declaratory judgment of invalidity and noninfringement. Claims 1, 2, 4, 5, 8, 9, 11 and 12 are here involved.³

In a suit in the United States District Court for the Southern District of New York, the same patent in a suit involving Claims 1-3, 9, 11 and 12 was held valid and infringed. (Johnson & Johnson v. C. B. Stenvall, Inc., D.C., 193 F.Supp. 128 (1961)) After perfecting an appeal, there was a settlement of that litigation; licenses were taken and the appeal withdrawn.⁴

The Court concludes that the Gross patent is valid, and the claims in issue are valid and infringed. It further concludes that the declaratory relief defendant seeks by its counterclaim must be denied and the counterclaim dismissed.

Very generally stated, the patented adhesive bandage is composed of a (1) backing⁵ on which is placed (2) a tacky, pressure-sensitive adhesive mass. Centered thereon is (3) an absorbent pad, and finally, affixed thereto in intimate contact is (4) a smooth, continuous (imperforate) facing of organic film which is inert⁶ to and releasable⁷ from the adhesive mass. This facing is aimed at imparting its smooth surface to the adhesive, and excluding all occluded air. Thereby "craters" or air pockets are prevented from forming in the adhesive mass during the required process of sterilization.

An important aspect of the invention is deemed to reside in the fact that the smoothness of the surface of the adhesive mass upon removal of the continuous facing of a kind inert to the adhesive and releasable from the bandage results in instantaneous and complete adhesion of the bandage to the skin with little pressure, whereas prior to this discovery adhesive bandages were faced with crinoline.⁸ Upon removal of crinoline the adhesive surface was rough, and some of the crinoline ingredients and its imprint, remained imbedded on the adhesive, both of which conditions resulted in lessened adhesion of the bandage on application to the skin even with moderate pressure. The invention, in part, disclosed that a smooth, adhesive surface adheres far better to the skin than a rough adhesive surface.

The specifications of the patent state that crinoline had been used in the adhesive bandage field for a quarter of a century but there were consumer complaints of the usage because the bandages did not stick properly. The patentee states that:

"* * * Heretofore, the manufacturer * * * had only one means of coping with the problem, namely, to reformulate the composition of his adhesive mass in order to increase its total adhesive power. * * However, * * * mass formulations for such bandages basically represent precarious compromises between interrelated, often conflicting, and sometimes mutually exclusive requirements."⁹

Plaintiff selects Claim 2¹⁰ as typical.

It provides:

"An adhesive bandage of the type having a backing with an absorbent pad secured to one face thereof and which presents on said face a coating of normally tacky and pressure-sensitive adhesive extending beyond the edges of said pad to facilitate adhesion to the skin, said adhesive coating being covered by at least one protective facing member adapted to be removed from the bandage prior to its use, the surface of said facing member in contact with the underlying adhesive coating comprising a film of organic material that is substantially inert with respect to said adhesive, said film having a smooth, continuous, imperforate surface maintained in such intimate contact with the underlying adhesive coating over substantially the entire surface thereof as substantially to exclude air pockets and impart to the underlying adhesive coating, at its interface with said facing member, the smooth surface characteristics of said film, said film being releasable by said adhesive, when the facing member is removed, without separating said adhesive coating from said backing and without substantially impairing the smooth surface characteristics of the adhesive coating existing at the interface prior to such removal."

Thus, if the adhesive is too strong it "might hold the imbedded crinoline so tenaciously that the facing members could not be removed without pulling the adhesive mass off the backing." On the other hand, "a soft, highly tacky adhesive mass might adhere so tenaciously to the skin that removal of the bandage was painful" or there might be adherence to the manufacturer's machine, or exudation of the adhesive mass could occur especially during the high temperatures required by sterilization.

The specifications further state that:

"A more particular object is to provide a method and means by which the adhesive bandage manufacturer may achieve the maximum in the ability of his product quickly and reliably to stick to the user's skin."

Also, the patent is devised to permit the manufacturer a far greater latitude in choosing his "mass formulations."

The patentee notes that it is a requirement for an adhesive bandage in this country that it must be "sterile,"¹¹ and that temperatures required therefor can cause unwanted and detracting changes in the various elements in the bandage, so that another object of the invention is "to provide an adhesive bandage the components of which will undergo sterilizing conditions without impairing or destroying the acceptability or marketability of the product."

The specifications demonstrate the efficacy of the invention by stating that an adhesive bandage made as therein described will lift a can¹² "weighing * * * 55 gms." when "touched at room temperature with one half of the adhesive surface freshly exposed from a ¾" × 3" adhesive bandage," and "the adhesion will be sufficiently strong" to lift the can "when additional weights are placed inside"—the maximum liftable weight "being between 200 and 400 grams."¹³ This, patentee says, is in striking contrast with the bandage which has a crinoline facing as to which "there is little if any instantaneous adhesion between the adhesive mass and the metal, the box cannot usually be lifted even when the box is free of added weights."

Patentee admits that "continuous facing materials of various types, including organic films and metallic foils, have heretofore been suggested in the art," naming some of the patents now asserted by defendant as anticipating.

In detailing the methods of manufacture the patentee teaches pressing the facing sheet into uniformly intimate contact with the adhesive surface over the whole interface so as to exclude occluded air pockets and impart the smooth surface characteristics of the facing to the adhesive. The exclusion of air pockets is desired for two reasons, i. e., to provide the smooth surface on the adhesive for instantaneous adhesion, and to avoid undesirable effects during sterilization.¹⁴ Plaintiff points out that the Gross patent does not specify that the adhesive must be solvent spread or calendered and the patent covers both modes.

The patent specifications state further:

"Suitable facing materials are those which have at least one surface which is smooth and continuous, and constituted of organic material which is substantially inert with respect to the adhesive properties of the mass. In addition to being smooth, the facing surface is preferably glossy since it has been found that such glossy surface, when transferred to the adhesive mass, imparts to the latter superior properties in respect to instantaneous adhesion. * * * The facing should have sufficient * * * tear strength, * * * and preferably permeable to facilitate sterilization. * * *"

Where the bandage is to be steam sterilized it is preferable to have the facing formed by casting rather than calendering, which produces internal strains in the material. Patentee specifies that films made of vinyl chloride resins afford suitable facing sheets for purposes of invention, which may consist of copolymers, such as those of vinyl chloride with vinyl acetate, and vinylidene chloride. He states that cellulose acetate is another "particularly good facing material."¹⁵

Patentee notes that when the adhesive mass is solvent spread rather than calendered, the solvent content is a variable to be controlled since residual solvent in the mass may generate gas bubbles and produce "cratering" during sterilization of the bandage.

The defenses asserted are invalidity and noninfringement. Invalidity is predicated on the ground that the four elements of the patent are all old in the art, both individually and in combination, with a mere difference in relationship or change in degree, with no showing of "unusual or surprising consequences from the unification of the elements."¹⁶ (This assertion is in decided contrast to defendant's complimentary sales bulletin dated December 23, 1953).¹⁷ Defendant maintains plaintiff merely speaks of the improvement in result of its product over the crinoline prior art, neglecting the more pertinent continuous facing prior art, and prior public use.¹⁸ Defendant asserts that neither the Patent Office nor the Court in the Stenvall case, supra, was apprised of the prior commercial public use of smooth, continuous facings such as Holland cloth and polyethylene for adhesive products by both plaintiff a...