Minnesota Mining & Mfg. Co. v. Technical Tape Corp.

Decision Date05 December 1961
Docket NumberNo. 54 C 1116.,54 C 1116.
CourtU.S. District Court — Northern District of Illinois
PartiesMINNESOTA MINING & MANUFACTURING COMPANY, a corporation of Delaware, Plaintiff, v. TECHNICAL TAPE CORP., a corporation of New York; Technical Tape of Illinois, Inc., a corporation of Illinois; Floyd R. Warner, and Levin Brothers Paper Company, a corporation of Illinois, Defendants.

George I. Haight, Edward A. Haight, John W. Hofeldt, Haight, Lockwood & Simmons, Chicago, Ill., Harold J. Kinney, St. Paul, Minn., M. K. Hobbs, Winter Park, Fla., of counsel, for plaintiff.

Samuel W. Kipnis, Lucas & Thomas, Antonow & Fink, Chicago, Ill., Robert D. Spille, John A. Mitchell, Curtis, Morris & Safford, New York City, of counsel, for defendant.

On Motions re Entering of Judgment and for Taking Depositions January 9, 1962.

ROBSON, District Judge.

Plaintiff charges defendants with infringement of its Reissue Patent No. 23,843 pertaining to insulating tape. The chronology1 of the patents and pleadings and the history of related litigation2 are outlined below.

The patent concerns a single strip3 of stable, pressure-sensitive, highly stretchable and retractable insulating tape used by electricians. It is in roll form and when unwound does not delaminate.4 The film backing5 has the advantage of being stretchable by simple hand pulling6 from 50 to 100% at room temperature, and then being retractable. This feature makes it invaluable in covering cable splices because it can be wrapped on easily and snugly in one operation. It is also safely and readily usable by workmen making splices while working on high poles. The rolls of tape do not deteriorate because the plasticizers in the vinyl backing do not migrate to the adhesive7 which, if they did, would cause it to become soft, pasty or lose tack. Patentees assert that they achieve this singular end by using in the vinyl backing of the tape a combination8 of plasticizers of both high and low molecular weights (a heterogeneity of molecular weights both over and below 1,000).9 The tape conforms to irregular surfaces. The backing is water and hydrocarbon-oil insoluble. This is highly usable in industry and mining because it is impervious to elements and rough surfaces causing deterioration or corrosion. It has high dielectric strength.

The issues are the validity and infringement of claims 1, 3, 4, 6, 7, 8 and 9.

The plaintiff is the owner of the patents and the defendants are the manufacturer, distributers and users of the alleged infringing tapes.

The novelty and virtues of the reissue patent are stated in example 5 thereof.10

The permanent equilibrium between backing and adhesive is said by the patent to be secured by employing with the vinyl chloride polymer a combination of modifiers including a substantial but minor amount (not to exceed 20 parts per 100 parts of the vinyl polymer) of a low molecular weight liquid plasticizer such as dioctyl phthalate, together with a substantially equal or somewhat greater amount of a high molecular weight resinous type plasticizer. The specifications cite as suitable resinous type plasticizer, Paraplex G-25, or polymerized ethyl acrylate, and polymerized vinyl butyl ether.

The parties (plaintiff and Technical Tape Corporation) have stipulated that Tuck Vinyl Plastic Insulating Tapes were made and sold prior to the commencement of this suit and subsequent to the date of the issuance of the original patent, and that those tapes are pressure-sensitive stretchable and retractable vinyl plastic insulating tapes in which the backing film has a thickness of 4 to 20 mils. Further it is agreed that the tapes utilized as the backing member primarily vinyl films produced by Bakelite Company,11 Ross & Roberts, and Monsanto Chemical Company.

Plaintiff stresses that no tape plasticized with Paraplex G-40 is involved in this suit (which tape was held in the Fourth Circuit suit not to be of an infringing nature) inasmuch as there was testimony that no G-40 film was furnished to Technical Tape after March, 1951.

Validity. The validity of this patent has been sustained12 in prior litigation, and a review of this record furnishes no basis for a difference of opinion. Plaintiff concedes that the elements of the patented combination were old in the art, but contends that no one perceived even after extensive experimentation that the peculiar combination of low and high molecular weight plasticizers could effect a permanent equilibrium in the vinyl backing so that it would not migrate to the adhesive, causing its deterioration.

Plaintiff cites the statutory presumption of validity (35 U.S.C. § 282) of a patent, buttressed as it is here by its issuance over the same patents cited in the file wrapper which are named in the court proceedings to defeat its validity (Williams Mfg. Co. v. United Shoe Mach. Corporation, 121 F.2d 273 (6th Cir. 1941), affirmed 316 U.S. 364, 62 S.Ct. 1179, 86 L.Ed. 1537 (1942)).

The problem of poisoning of the adhesive was known for many years and its solution was studied without success by Tierney, Hurd, Danovitch, and Schmidt, which fact plaintiff cites as indicative of invention (Expanded Metal Company v. Bradford, 214 U.S. 366, 29 S.Ct. 652, 53 L.Ed. 1034 (1909); Smith v. Snow, et al., 294 U.S. 1, 55 S.Ct. 279, 79 L.Ed. 721 (1935); Reiner, et al. v. I. Leon Co., Inc., 285 F.2d 501 (2nd Cir. 1960)).

The need for a pressure-sensitive stretchable and retractable tape was evident, but there was nothing available to fill the need. This factor, plaintiff points out, is indicative of invention in a product which fills the need (Inland Mfg. Co. v. American Wood Rim Co., 14 F.2d 657 (6th Cir. 1926); Reiner, et al. v. The I. Leon Co., Inc., 285 F.2d 501 (2nd Cir. 1960)) as is the imitation of the product by competitors (Kurtz v. Belle Hat Lining Co., Inc., 280 F. 277 (2nd Cir. 1922); Charles Peckat Mfg. Co., et al. v. Jacobs, 178 F.2d 794 (7th Cir. 1949)), especially where the elements to achieve the invention were long available (Reiner, et al. v. I. Leon Co., Inc., 286 F.2d 501 (2nd Cir. 1960); Minnesota Mining and Mfg. Co. v. International Plastic Corporation, et al., 159 F.2d 554 (7th Cir. 1947)), and even the inventor worked long to effect the invention (Graver Tank & Mfg. Co., Inc., et al. v. Linde Air Products Co., 336 U.S. 271, 273, 69 S.Ct. 535, 93 L.Ed. 672 (1949)). The warm reception of the product also bolsters the conclusion of invention (Wahl Clipper Corporation v. Andis Clipper Co., et al., 66 F.2d 162 (7th Cir. 1933); England v. Deere & Company, 284 F.2d 460 (7th Cir. 1960)). It was described as "revolutionary" by a supplier.

Consequential to the pioneer scope of this invention, plaintiff claims broad equivalence and interpretation of the patent (Continental Paper Bag Company v. Eastern Paper Bag Company, 210 U.S. 405, 28 S.Ct. 748, 52 L.Ed. 1122 (1908); Eibel Process Company v. Minnesota & Ontario Paper Company, 261 U.S. 45, 43 S.Ct. 322, 67 L.Ed. 523 (1923); Smith v. Snow, et al., 294 U.S. 1, 55 S.Ct. 279, 79 L.Ed. 721 (1935); Chicago Patent Corporation v. Genco, Inc., 124 F.2d 725 (7th Cir. 1941)).

None of the prior art citations reveal stretchable and retractable tape possessing permanent equilibrium. The most formidable citation, the Schmidt patent No. 2,332,265 (also a file wrapper citation), is differentiated by plaintiff as covering a much thinner — two mil — vinyl backing, with an adhesive that neither party to the instant suit uses. His tape is at least relatively non-stretchable. The evidence fails to disclose he ever marketed a stretchable retractable pressure-sensitive tape; he did not achieve permanent equilibrium.13 Similar and more serious deficiencies inhere in the allegedly anticipating patents of Kratz,14 Semon,15 Groff,16 Wright,17 Fikentscher,18 Nowak19, Hemperly,20 Eustis (two patents),21 Marshall,22 Endres,23 and Nollau.24

As the Court reads the Oace patent, including the italicized portions emphasizing the new material of the reissue, it is evident that the gist of the invention is the achieving of a permanent equilibrium in the vinyl backing of the stretchable tape so that the adhesive remains tacky for long periods of time although wound upon itself, and the tape is pliable for easy and efficacious application to an electrical splice or other wiring. The statements added by the reissue are more in the nature of a clarification of ideas theretofore disclosed than enlargement of the claimed invention.

There can be no serious quarrel with the legal principles stated by the defendants, such as the claims of a patent are the measure of the invention;25 merely selecting a known material to meet known requirements does not constitute invention;26 a patentee may not compel independent experimentation by others to ascertain the bounds of his claims;27 a patentee may not, by claiming a product or method in terms of a result, function or broad class, foreclose all means and ways of practically obtaining such results;28 clear lack of invention cannot be outweighed by commercial success;29 and the presumption of validity does not exist as against pertinent prior art which was not considered by the Patent Office.30

Similarly, as to defendants' further contentions that it is not the purpose of the patent laws to grant a monopoly for every trifling device;31 omission of an element of a patent claim avoids infringement;32 the doctrine of equivalence has no application where one of the elements of a patent claim is omitted;33 reissue claims must be for the same invention as originally disclosed, or they are void;34 and ambiguous, indefinite and vague patent claims are void.35 These are excellent legal cliches that under proper circumstances and with record that would support their application should be applied. Defendants, however, have neither the proper circumstances nor a record that make these statements appropriate to their cause.

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    ...of a patent, such infringement is not avoided where all elements are utilized in a combined form." (Minnesota Mining & Mfg. Co. v. Technical Tape Corp., 200 F.Supp. 753, 760 (1961), and authorities there cited. This is particularly applicable to commercial radio receivers where the use of d......
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    ...function or broad class, foreclose all means and ways of practically obtaining such result." Minnesota Mining & Mfg. Co. v. Technical Tape Corp., D.C.Ill., 200 F.Supp. 753, 758 (1961), affirmed, 7 Cir., 309 F.2d 55, cert. den. 372 U.S. 942, 83 S.Ct. 936, 9 L.Ed.2d 968; Allen v. Standard Cra......
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    ...on the merits. See Minnesota Mining and Manufacturing Co. v. Technical Tape Corp., 309 F.2d 55, 59 (7th Cir. 1962) affirming 200 F.Supp. 753 (N.D.Ill.1961).12 Our holding that Rule 27 relief is reviewable is compatible with traditional rules of finality as stated in Eisen v. Carlisle & Jacq......
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