George P. Converse & Co. v. Polaroid Corporation

• Decision Date: 13 March 1957
• Docket Number: No. 5150.,5150.
• Parties: GEORGE P. CONVERSE & CO., Inc., et al., Plaintiffs, Appellants, v. POLAROID CORPORATION et al., Defendants, Appellees.
• Court: U.S. Court of Appeals — First Circuit

242 F.2d 116 (1957)

GEORGE P. CONVERSE & CO., Inc., et al., Plaintiffs, Appellants, v. POLAROID CORPORATION et al., Defendants, Appellees.

No. 5150.

United States Court of Appeals First Circuit.

March 13, 1957.

Arthur D. Thomson, Boston, Mass., John H. Glaccum, New York City, on the brief, for appellants.

Albert L. Ely, Jr., Cleveland, Ohio, Donald L. Brown and Brown & Mikulka, Cambridge, on the brief, for appellees.

Before MAGRUDER, Chief Judge, and WOODBURY and HARTIGAN, Circuit Judges.

HARTIGAN, Circuit Judge.

This is an appeal from a judgment of the United States District Court for the District of Massachusetts, entered on June 5, 1956, dismissing plaintiffs' complaint in an action for infringement of a patent upon defendants' motion for summary judgment.

By a complaint filed on June 24, 1955, and later amended, plaintiffs-appellants, George P. Converse & Co., Inc. and Harry F. Waters, brought suit against the defendants-appellees, Polaroid Corporation and the Dobeckmun Company,¹ alleging that defendants were infringing Letters Patent No. 2,278,502, issued to Waters on April 17, 1942. Converse's interest in the action arose from a written agreement with Waters whereby it was given exclusive right to grant licenses under said Letters Patent and to bring suit to enforce same. The plaintiffs sought: (1) a preliminary as well as a final injunction restraining defendants from infringing the Letters Patent; (2) damages for the use and sale of articles embodying the improvements claimed in the Letters Patent. It was agreed by stipulation of the parties that at the trial plaintiffs would rely on the first four of six claims in the aforementioned patent.²

The defendants in their answer alleged, on various grounds, that plaintiffs' Letters Patent No. 2,278,502 was invalid and void. Included in the answer was a list of prior patents, which, defendants alleged, contained plaintiffs' invention or a description thereof. Dobeckmun also filed a counter-claim alleging that plaintiffs had threatened it and its customers with suits charging infringement of the patent in issue and praying that plaintiffs be preliminarily and perpetually enjoined from making such threats and that it be allowed to recover damages for such unfair competition by plaintiffs.

Turning to the actual patent in issue, Waters on July 18, 1936 filed an application which on April 7, 1942 resulted in Patent No. 2,278,502 for a container and package, especially suitable for the packaging of liquids and normally damp or wet commodities such as sauerkraut and the like. A description of the container and package patented is contained in a typical claim which reads as follows:

"4. A plural ply open-mouthed bag comprising an inner ply of heat fusible material and an outer ply of other flexible material, said inner ply having an interior of integral nature with all of its seams formed by fusion, at least one of said fused seams extending longitudinally of the bag and formed by face to face fusion of marginal regions of the inner surface of said inner ply, and being faced on both sides by the outer ply secured thereto."

The alleged infringement generally stemmed from defendants' making, using and selling certain sheet material, and open envelopes made of the same sheeting, to package film. This sheeting, sold by Dobeckmun to Polaroid, was made up of foil laminated on one side to paper and coated on the other side with polyethylene, a thermoplastic waxy material which renders the coated surface heatsealable. The plaintiffs charged in their complaint that defendants' above articles embodied the invention set forth in plaintiffs' patent.

The defendants first moved to dismiss plaintiffs' complaint on the ground of lack of infringement, but the district court denied the motion finding that there was on that question a possible issue of fact. George P. Converse & Co. v. Polaroid Corporation, D.C.D.Mass. 1955, 136 F.Supp. 912. Next, the district court held a pre-trial conference, at which time the parties were informed that the court was prepared to consider the subject matter involved in the patent on a motion for summary judgment.

After the pre-trial, the defendants did file a motion for summary judgment. This motion, accompanied by copies of a number of prior and other roughly contemporaneous patents, was based on the contention that plaintiffs' patent was void for lack of invention.

The plaintiffs filed no affidavits, expert or otherwise, in opposition to defendants' showing of invalidity. Rather, plaintiffs confined their argument to the issues that a motion for summary judgment on the invalidity of a patent was improper and that expert testimony was essential. Moreover, the district court 141 F.Supp. 632 states, in its opinion, that at the hearing plaintiffs maintained "that there were genuine issues of fact, but when invited to disclose them, mentioned but one — that plaintiffs obtained liquid-proof seams by fusion rather than by sealing."

As to this latter issue of fact, the district court concluded:

"* * * I must say that the difference between sealing and fusion of coated or multiply materials seems to me only one of degree, and that I find it difficult to regard the progress from one to the other, in an essentially mechanical patent, as distinguished, possibly, from a chemical one, as invention at all. But if it were invention, comparable fusion, as defendants point out, is specifically referred to in Becker, No. 1,953,097, issued April 3, 1934. See also Conley, No. 1,433,800, issued October 31, 1922."

It further found that certain prior patents submitted by defendants, "at least collectively," covered substantially every element of plaintiffs' claims, and, accordingly, dismissed the complaint on June 5, 1956.

On June 28, 1956 plaintiffs filed a petition for rehearing of the motion for summary judgment, based on an affidavit of Waters wherein he attempted to distinguish the prior patents and to establish the validity of his own. The district court denied the petition for rehearing, stating that "it sets forth nothing that was not known to the plaintiff well prior to May 29." (The date of the hearing on the motion for summary judgment.)

Notice of appeal was filed by the plaintiffs on July 3, 1956. Subsequently, the defendants filed in this court a motion to remand the case to the district court for a certification under Fed.Rules Civ.Proc. 54(b), 28 U.S.C.³ This motion was denied on August 3, 1956.

Primarily, we note that this court has jurisdiction of appeals from "the district courts of the United States, * * * granting, continuing, modifying, refusing or dissolving injunctions, or refusing to dissolve or modify injunctions, except where a direct review may be held in the Supreme Court." 62 Stat. 929 (1948), as amended, 28 U.S.C. § 1292(1) (1952). And where the jurisdiction of this court is based on § 1292 (1) a certificate under Rule 54(b) is not required, notwithstanding that the district court only directs the entry of final judgment upon less than all of the claims presented by the action. Hook v. Hook & Ackerman, Inc., 3 Cir., 1956, 233 F.2d 180, certiorari denied 1957, 352 U.S. 960, 77 S.Ct. 350, 1 L.Ed.2d 325; Cutting Room Appliances Corp. v. Empire Cutting Machine Co., 2 Cir., 1951, 186 F.2d 997. Contra, Packard Motor Car Co. v. Gem Mfg. Co., 7 Cir., 1950, 187 F.2d 65, certiorari granted 1951, 341 U.S. 930, 71 S.Ct. 803, 95 L.Ed. 1360, dismissed per stipulation, 1951, 342 U.S. 802, 72 S.Ct. 92, 96 L.Ed. 607.

In the instant case plaintiffs in their complaint prayed for an injunction as well as other relief. The district court by dismissing the complaint, implicitly denied plaintiffs an injunction against defendants' alleged acts of infringement. Such denial of injunctive relief falls within the purview of § 1292(1) and, as discussed above, is appealable notwithstanding that the district court neither decided defendant Dobeckmun's counterclaim nor entered a Rule 54(b) certification. We read nothing to the contrary in either Sears, Roebuck & Co. v. Mackey, 1956, 351 U.S. 427, 76 S.Ct. 895, 100 L.Ed. 1297 or Cold Metal Process Co. v. United Engineering & Foundry Co., 1956, 351 U.S. 445, 76 S.Ct. 904, 100 L.Ed. 1311.

Directing our attention to the merits, it seems there are two questions presented on appeal: (1) did the district court, on the facts of this case, err in finding on a motion for summary judgment that plaintiffs' patent presented no invention over prior art; (2) did the district court err in refusing to entertain plaintiffs' petition for rehearing supported by an affidavit containing expert testimony.

We hold that a district court can use summary judgment procedure in determining the validity of a patent where, as here, the issue is the invention, if any, over the prior art and "the prior art and the patent claims are, without expert aid, easily understandable by anyone of the most modest intelligence." Vermont Structural Slate Co. v. Tatko Bros. Slate Co., 2 Cir., 1956, 233 F.2d 9, 10, certiorari denied 1956, 352 U.S. 917, 77 S.Ct. 216, 1 L.Ed.2d 123. See Brisk Waterproofing Co. v. A. Belanger & Sons, 1 Cir., 1954, 209 F.2d 169. Of course, as the Tatko case, 233 F.2d at page 10, points out, in doing so "a judge should exercise...