Slayter & Co. v. Stebbins-Anderson Co.

• Decision Date: 23 January 1940
• Docket Number: No. 21.,21.
• Parties: SLAYTER & CO. v. STEBBINS-ANDERSON CO., Inc. (STANDARD LIME & STONE CO., Intervener).
• Court: U.S. District Court — District of Maryland

31 F. Supp. 96

SLAYTER & CO. v. STEBBINS-ANDERSON CO., Inc. (STANDARD LIME & STONE CO., Intervener).

No. 21.

District Court, D. Maryland.

January 23, 1940.

Bartlett, Poe & Claggett and J. Kemp Bartlett, Jr., all of Baltimore, Md., Lee J. Gary, of Chicago, Ill., and Gifford, Scull & Burgess, and Newton A. Burgess, all of New York City, for plaintiff.

Marbury, Gosnell & Williams and William L. Marbury, Jr., all of Baltimore, Md., and Kenyon & Kenyon, Frederick Bachman, and Theodore S. Kenyon, all of New York City, for defendant.

Cook & Markell, and Charles Markell, all of Baltimore, Md., for intervener.

WILLIAM C. COLEMAN, District Judge.

This is a suit for infringement of a patent relating to a method for heat insulation of buildings, issued to one Games Slayter and by him assigned to the present plaintiff, Slayter & Company. The patent is known as reissue patent No. 19,929, reissued April 14th, 1936, upon application for reissue made January 22nd, 1936. The original Slayter patent No. 1,728,837 was issued September 17th, 1929, on application filed September 30th, 1927, and was held invalid by the Circuit Court of Appeals for the Seventh Circuit in Therm-O-Proof Insulation Co. v. Slayter & Co., 80 F.2d 557. The reissue patent, however, was held valid and infringed by the District Court for the Southern District of New York in Slayter & Co. v. United States Insulation Corp., 20 F.Supp. 376. An appeal was taken but dismissed on appellant's motion, 2 Cir., 94 F.2d 41. There is no privity between the defendant in either of these cases and the defendant or the intervener in the present case. The present defendant, Stebbins-Anderson Co., Inc., is a Maryland corporation and is engaged in the installation of rock wool for insulating buildings, the wool which it uses being manufactured by the Philip Carey Manufacturing Company of Cincinnati, Ohio, and this company has assumed the defense of this action on behalf of the defendant. The intervener, the Standard Lime & Stone Company, also a Maryland corporation, is a manufacturer and seller of unpatented rock wool for insulation. Its petition for intervention was granted upon a showing that this company and the Philip Carey Manufacturing Company manufacture and sell substantially similar unpatented rock wool; that such is installed by it and its customers in Baltimore and various other places, and by defendant and other users of rock wool manufactured by the Philip Carey Manufacturing Co.; that there is now pending against it in the United States District Court for the Northern District of Illinois, Eastern Division, a suit instituted by the present plaintiff since the institution of the present suit, alleging infringement of this same reissue patent of plaintiff; that the complaint in that Illinois suit is, except for changes in names and allegations as to venue and the like, identical with the complaint in the present suit; and that the defenses and issues in both suits are the same.

The necessary jurisdictional requirements are satisfied. Both the defendant and the intervener, hereinafter spoken of collectively as the defendants, deny both validity and infringement of the patent. By way of further defense, defendants assert that plaintiff is barred because of suppression of facts in the case which it brought, and in which it was successful in New York, namely, Slayter & Co. v. United States Insulation Corporation, supra. Also, defendants have filed a counterclaim by which is sought, in addition to a declaratory judgment that the patent is invalid and not infringed, an injunction against; and damages for maintaining an alleged unlawful system of licenses by using the patent to maintain, for a limited number of licensees, a monopoly in the manufacture and sale of unpatented material.

The invention embraced in the patent in suit is stated in the specifications as relating to a "method for heat insulating buildings and the like, and refers more particularly to an improved process by means of which houses or other buildings already standing, can be conveniently, economically and efficiently heat insulated although the invention in certain of its broader aspects is not limited to the heat insulation of buildings already constructed." Another advantage claimed for the invention is "to provide a material which can be economically produced and applied in the walls of the building in the carrying out of the method and which in addition to its heat insulation qualities will be fire resisting." The single claim of the patent, however, is a method and not a product claim, and is as follows: "The method of building a wall whereby to increase the insulating and fire-resisting properties thereof without undue added weight, which method comprises utilizing spaced apart walls of a building previously constructed as a form for receiving heat insulating material, providing openings to afford access to the air spaces between said spaced apart walls, inserting the outlet end of a conduit through said openings, and pneumatically forcing through the said conduit a finely divided but not powdered heat insulating and fire-resisting material, said material being substantially free from dust and of low specific gravity and of a size to provide a large body for the amount of weight and substantially devoid of free moisture content whereby said wall is heat insulated and rendered fire resistant without bulging or damage to the surface thereof or to decorations thereon."

Analyzing the claim, it will be seen that it calls for a method of (1) pneumatically forcing through (2) openings made in the inner or outer walls of the building, to afford access to the air spaces between such walls, (3) certain heat insulating material into such spaces. The particular material specifically described in the specifications of the patent consists of "corn cobs and paper in a ratio of one-half cubic foot each or by weight 9 lbs. of corn cob to 2 lbs. of paper, this being mixed with 9 lbs. of plaster of Paris and 2 oz. zinc chloride, lime or other suitable fungicide. The finely comminuted corn cobs and paper are mixed with the plaster of Paris and the zinc chloride in a machine which is not described in detail but made the subject matter of a separate application, and sufficient moisture is added to permit the handling of the material without unnecessary dust. The moisture content, however, is limited with reference to the self-absorption quality of the plaster of Paris; that is, the plaster of Paris being dehydrated gypsum, it will absorb up to 15% of its weight, and the moisture content of the insulating material should not materially exceed such 15% of the weight of the plaster of Paris content."

The original Slayter application contained not only process claims, that is, claims for a "method of heat insulating buildings", but also product claims for "heat insulating material for buildings." However, the Patent Office rejected all product claims, and the original patent No. 1,728,837 was allowed with a single method claim, the text of which is identical with the single claim of the reissue patent which is now before us, except that instead of the last clause beginning with the words, "and pneumatically forcing through the said conduit", the original claim contained the following: "and forcing through the said conduit a comminuted heat insulating material, said material being of sufficiently light weight, and void of free moisture content of sufficient amount to cause bulging or other injurious effects upon the exposed surfaces of said walls." On December 21st, 1935, this claim was held invalid by the Circuit Court of Appeals for the Seventh Circuit in the case of Therm-O-Proof Insulation Co. v. Slayter & Co., supra, on the ground that it was too vague and indefinite in its wording, and also lacked invention. The New York suit, also previously referred to, brought by the present plaintiff, Slayter & Co. v. United States Insulation Corp., supra, had been instituted on May 31st, 1932, that is, prior to the decision in the Seventh Circuit. Following this decision, the plaintiff, as has already been explained, applied for and obtained on April 14th, 1936, the reissue patent, and the New York litigation proceeded with respect to this patent.

Attention should also be directed to the fact that the specifications of the reissue patent are identical with the specifications of the original patent, with the single exception that the following sentence has been added to the description of the insulating material: "A material so prepared will be found to weigh not more than approximately 20 pounds per cubic foot."

Taking up the question of infringement, the proof is clear that the present defendants do not infringe plaintiff's patent, because defendants use rock or mineral wool in their process, which is not, in our opinion, to be treated as the equivalent of the material specified in the Slayter patent. We find that the two materials are different in (1) character, both chemical and physical, and (2) method and immediate result of application.

Mineral wool is a common, generic term, often used synonymously with rock or glass wool which, more correctly speaking, are two types of mineral wool made in this country. The more common kind is glass wool, which is obtained by mixing certain kinds of stone with molten slag from blast furnaces, and converting the whole mass into a fibrous state. It is free from iron. The appearance of the finished product is very much like wool, being soft and fibrous. It appears in a variety of colors, but is more often white, although some times yellow and gray, and occasionally quite dark. The color, however, is no indication of its quality. The other kind, — rock wool, — is made from granite rock raised to 3000° F. and is free from sulphur. It is the only true manufactured "wool". It has the same general appearance as that made from slag and is white. Both of these materials consist...