Minnesota Mining & Mfg. Co. v. Polychrome Corp.

• Decision Date: 11 June 1959
• Docket Number: No. 12585.,12585.
• Citation: 267 F.2d 772
• Parties: MINNESOTA MINING AND MANUFACTURING COMPANY, Plaintiff-Appellee, v. POLYCHROME CORPORATION et al., Defendant-Appellant.
• Court: U.S. Court of Appeals — Seventh Circuit

267 F.2d 772 (1959)

MINNESOTA MINING AND MANUFACTURING COMPANY, Plaintiff-Appellee, v. POLYCHROME CORPORATION et al., Defendant-Appellant.

No. 12585.

United States Court of Appeals Seventh Circuit.

June 11, 1959.

George N. Hibben, Chicago, Ill., Marvin C. Soffen, New York City, Davis, Lindsey, Hibben & Noyes, Chicago, Ill., Ostrolenk, Faber, Gerb & Soffen, New York City, of counsel, for appellant.

Edward A. Haight, Chicago, Ill., Harold J. Kinney, St. Paul, Minn., John W. Hofeldt, Chicago, Ill., Carpenter, Abbott, Coulter & Kinney, St. Paul, Minn., M. K. Hobbs, Winter Park, Fla., of counsel, for appellee.

Before HASTINGS, PARKINSON and KNOCH, Circuit Judges.

HASTINGS, Circuit Judge.

This appeal comes before us from an order of the district court denying a motion for an interlocutory injunction in a patent infringement action.

Plaintiff-appellee, Minnesota Mining and Manufacturing Company (Three M), brought suit in the district court against defendant-appellant, Polychrome Corporation (Polychrome) and three of its sales agents, for infringement of its Patent No. 2,714,066 covering presensitized metal lithographic plates. This complaint was filed August 1, 1958. Subsequently, Polychrome answered, alleging, inter alia, invalidity of the patent in suit, and filed its counterclaim charging various antitrust violations by Three M.

The subject patent was issued July 26, 1955, and Three M has commercially manufactured and sold its lithographic plates both prior to and following that date. Three M first brought an infringement action against A. B. Dick Company in the court below. Before that case came to trial, A. B. Dick Company admitted the validity of the patent by consent decree and was issued a license by Three M requiring the payment of royalties, in April, 1958.

On May 8, 1958, Three M filed another infringement action in the court below against Harris-Intertype Corporation and its subsidiary (Civil Action No. 58 C 815), with various defenses being raised by the answers and with a counterclaim being filed against Three M. This case is now pending in the district court and has been assigned to the same judge hearing the case at bar. Harris-Intertype Corporation and its co-defendant are complete strangers in law to Polychrome.

Shortly after filing the instant suit against Polychrome, Three M commenced two additional actions in other federal district courts against alleged infringers. One was filed on August 6, 1958 in the district court in Cleveland, Ohio, against Carpenter Printing Company, Inc., a user of lithographic plates manufactured by Polychrome, and the other on August 7, 1958, against Bewal, Inc., a distributor of Polychrome plates, in the district court in Wichita, Kansas. (These actions will be referred to as the "Cleveland case" and the "Wichita case.")

On August 4, 1958, Three M wrote a letter to Tempo Company, a Polychrome distributor in Kansas City, Missouri, stating that Three M considered Tempo's sale of Polychrome plates to be an infringement of Three M's patent, requesting advice by wire whether such sales would be continued and giving notice to Tempo of the pendency of the case at bar. This letter was sent on to Polychrome by Tempo.

On the same day that the Wichita case was filed, the Wichita Eagle, a newspaper in Wichita, Kansas, published as a news item a short article reporting the filing of that suit and the nature of the action. There is no evidence showing that Three M or its attorneys inspired or had anything to do with this publication. A copy of this news story was received by Polychrome on August 11, 1958. The next day Polychrome's president signed and mailed letters to its sales employees and members of the staff (about 70 persons) reporting the Three M infringement action, denying the infringement and stating that: "Unfortunately, 3 M, instead of pursuing this matter in the usual way so that a determination could be reached, is instead trying the case in the newspapers, attempting to use its financial power to bear down on our Company." (Emphasis added.) At the same time, a second letter of similar import from the president was sent by Polychrome to its distributors, dealers, customers and users.

The record further shows that Three M, both prior to and following the commencement of its several infringement actions, instructed its sales employees by letters not to discuss the patent in question or the suits based upon it and to refer any inquiries to its sales department.

On August 26, 1958, Polychrome served Three M with notice of its motion for interlocutory injunction, along with supporting documents, and the motion was filed two days later. Upon receipt of this notice, and on the same day, Three M prepared and mailed out a general press release to some 230 newspapers and trade journals, including the major wire services. This release was a short factual statement of the filing and nature of the three suits, naming the parties and stating that the first presensitized metal lithographic plates ever marketed were introduced commercially by Three M in 1950 and that they were covered by the patent in suit. The covering letter to the editors suggested...