Minnesota Mining & Mfg. Co. v. Pax Plastics Corp.

• Decision Date: 30 March 1946
• Docket Number: Civil Action No. 45C846.
• Citation: 65 F. Supp. 303
• Parties: MINNESOTA MINING & MFG. CO. v. PAX PLASTICS CORPORATION et al.
• Court: U.S. District Court — Northern District of Illinois

65 F. Supp. 303

MINNESOTA MINING & MFG. CO. v. PAX PLASTICS CORPORATION et al.

Civil Action No. 45C846.

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

March 30, 1946.

Haight, Goldstein & Hobbs, of Chicago, Ill., and Carpenter, Abbott, Coulter & Kinney, of St. Paul, Minn., for plaintiff.

The Firm of Charles W. Hills and Davis, Lindsey, Smith & Shonts, all of Chicago, Ill., for defendants.

BARNES, District Judge.

This suit came on for hearing on two complaints of Minnesota Mining & Manufacturing Company, a corporation of Delaware having its principal place of business at St. Paul, Minnesota, hereinafter sometimes called "Minnesota," charging infringement of the Drew patent 2,177,627 for adhesive sheeting granted to it on October 31, 1939. The application was filed by Richard Gurley Drew on February 18, 1938, as a division of a co-pending application filed June 10, 1933, and was in part a continuation of a co-pending application filed May 1, 1931. Both complaints were filed in May, 1945, and the two suits thereby commenced were later consolidated by order of court and ordered to proceed under the above title and number. Minnesota seeks an injunction and an accounting against each of the defendants.

The defendants named in one complaint are the Pax Tape Sales Company of Illinois (formerly Pax Plastics Corporation), a corporation of Illinois, hereinafter sometimes called "Pax"; Harve Ferrill & Co., a partnership, and the individual co-partners, hereinafter sometimes collectively called "Ferrill"; and Bulkley Dunton & Co., a partnership, and the individual co-partners, hereinafter sometimes collectively called "Bulkley." The Cofax Corporation (formerly named Pax Plastics, Inc.), a corporation of New York, which manufactured the adhesive sheeting in controversy, was named as a defendant, but Minnesota did not succeed in effecting service upon it. It will hereinafter sometimes be called "Cofax." The defendant named in the other complaint is Freydberg Bros.-Strauss, Inc., a corporation of New York, hereinafter sometimes called "Freydberg".

During the trial the claims in suit were restricted by Minnesota to claims 1, 2 and 3 (on what for convenience will be called the colored type of tape) and claims 4, 5, 6, 7, 8 and 15 (on what for convenience will be called the transparent type of tape). None of these claims recites the presence of a "primer" as do certain other claims of the patent. The defendants have contended that the accused tapes are "two-element" tapes consisting solely of a backing film and a pressure-sensitive adhesive coating, without any "primer" or its equivalent, and Minnesota conceded during the trial that it had not been able to secure evidence to present to the contrary.

The patent in suit was held by this court to be valid and infringed as to claims 4, 5, 6, 8, 10, 11, 15 and 16, in Minnesota's prior suit against International Plastic Corporation et al., Civil Action No. 44 C 202; decree entered June 25, 1945; now pending on appeal. The court's findings of fact and conclusions of law (dated May 28, 1945) have been published (Minnesota Min. & Mfg. Co. v. International Plastic Corp., D. C., 62 F.Supp. 34). For convenience that case will sometimes hereafter be called the "I. P. case." The I. P. case did not involve any of the claims of the patent on the colored type of tape; but it did involve certain claims on the transparent type of tape which are in suit in the present case, namely, claims 4, 5, 6, 8 and 15. The so-called "primer" claims (10, 11 and 16) in issue in the I. P. case are not involved in the present suit.

The trial was greatly shortened by the offering as joint exhibits of the plaintiff and defendants the transcript and relevant exhibits of the I. P. case, with the stipulation that the pertinent testimony of witnesses therein should be received as though actually given in the present trial. The I. P. trial lasted for four weeks and about half of it was devoted to the defense that Guth and not Drew was the inventor. This defense was withdrawn prior to trial in the present case by bill of particulars.

The defense that the Commissioner of Patents exceeded his legal authority in granting the Letters Patent in suit and that the same are therefore void and of no legal effect, and the defense that Minnesota has misused the Letters Patent in suit contrary to the public policy by using the said patent to control and prevent the sale of unpatented materials, were withdrawn by the defendants at the trial and the paragraphs of the answers specifying these defenses were ordered by the Court to be stricken. The defense of delay in the prosecution of Minnesota's claim against the defendants and of acquiescence in the defendants' acts, giving rise to laches and estoppel, was withdrawn prior to trial by bill of particulars.

The defendants deny infringement and allege invalidity of the claims in suit on the prior art; and they assert that the specification and claims are inadequate.

The following patents and publications were pleaded by the defendants:

U. S. Patents:

Thornton & Rothwell, 786,534 Kaber, 1,027,547 Knowles, 1,143,407 Brandenberger, 1,221,825 Segall, 1,259,787 Swift, 1,302,100 Hodgson, 1,467,108 Dewey, 1,506,415 Respess, 1,533,272 Brandenberger, 1,548,864 Hutchison, 1,614,924 Farrell, 1,683,453 Teague, 1,719,948 Charch & Prindle, 1,737,187 Brenne, 1,745,977 Teague, 1,746,875 Healy, 1,752,557 Drew, 1,760,820 Doty, 1,779,588 Drew, 1,814,132 Schnitzler, 1,837,680 Mantell, 1,850,760 Drew, 1,856,986 Zimmerli & Havenhill, 1,892,123 Humphner, 1,922,767 Osmun, 1,933,026 MacIver, 1,938,078 Kronstein, 1,944,562 Charch, Hyden & Finzel, 1,953,104 Ziegler, 1,953,901 Kallander, 1,956,579 Dow, 1,962,340

Foreign Patents:

British (Liesegang), 253,940 British (Kronstein), 293,293 British (I.G.F.), 302,588 British (Rado), 344,469 French (Rado), 697,145 Belgian (Gombault), 392,738 German (Grossmann), 372,925 Japanese (Nagao), 61,551

U. S. Publications:

Pearson's book on Crude Rubber, published in 1918.

Schatz's book on Commercial Art, copyrighted in 1922.

Instruction Sheet for Hutchison Artists Shading Medium (Bourges Service, Inc.).

Best-Test Paper Cement circular, copyrighted, May, 1930.

The following pleaded patents were withdrawn during the trial: U. S. patents 786,534 — 1,027,547 — 1,221,825 — 1,614,924. Belgian 392,738 and Japanese 61,551. An unpleaded publication was offered in evidence during the trial to show further the state of the art, namely, the Scientific American Encyclopedia of Formulas (1923), pages 284, 285.

Findings of Fact.

1. The jurisdiction of this Court is based on the fact that this is a suit in equity arising under the patent laws of the United States. No objection to the venue of the court, or to service of process, was made by any of the defendants except Cofax. Cofax's motion to quash service was granted prior to the trial.

2. Minnesota is the sole and exclusive owner of the entire right, title and interest in and to the Drew patent in suit, 2,177,627, granted to it on October 31, 1939.

3. The claims in suit are 1, 2 and 3 (on the colored type of tape) and 4, 5, 6, 7, 8 and 15 (on the transparent type of tape). These claims cover subject matter adequately described in the co-pending application of Drew, Ser. No. 534,386, filed May 1, 1931, and the patent in suit has an effective filing date of May 1, 1931, with respect thereto, both as to primed and nonprimed tapes. This subject matter was also described in the co-pending application Ser. No. 675,291, filed June 10, 1933, of which the application for the patent in suit was filed as a division on February 18, 1938. Patents on said prior applications did not issue until subsequent to the granting of the patent in suit. The obtaining of a patent on the products of the claims in suit was not unduly delayed.

4. The patent in suit gives a sufficiently full, clear, definite and exact written description of the products of each of the claims in suit, and of the manner of making them, to enable those skilled in the art to make and use the same. The patent particularly points out and distinctly claims the products of the claims in suit. Each of the claims in suit is sufficiently clear, definite and descriptive of the structure of the product claimed to apprise those skilled in the art and the public generally of the meaning and scope thereof.

5. The claims in suit do not require the presence of a primer or its equivalent; and they each embrace non-primed "two-element" adhesive sheeting consisting solely of a backing film and a pressure-sensitive adhesive coating. The specification clearly describes such "two-element" adhesive sheeting, and gives directions which are adequate to enable a person skilled in the art, who follows the directions, to make "two-element" adhesive tape in which the adhesive coating is firmly united to the backing and which can be unwound from rolls thereof, and can be removed from smooth non-fibrous surfaces to which temporarily applied, without delamination or offsetting of adhesive. A disclosure of "two-element" tape appeared likewise in Drew's original application, Ser. No. 534,386, filed in 1931. Such "two-element" tape has been commercially sold by Minnesota. Most of the tape made and sold by Minnesota under the patent in suit has employed a primer, as described in the patent, to obtain an added factor of safety at a trivial increase in cost, and a primer is not necessary for a commercially satisfactory tape. The public has purchased Minnesota's tape because of the uses to which it can be put. Commercial success of the tape was not dependent upon the primer.

6. The claims in suit are drawn to a new kind of adhesive sheet or tape having a field of utility not possessed by any prior adhesive tape of any kind. Whether transparent or colored, and whether involving a primer or not, this tape is stably and aggressively tacky and seals instantly on contact...