Minnesota Mining & Mfg. Co. v. Plymouth Rubber Co.

• Decision Date: 27 March 1959
• Docket Number: No. 54 C 1115.,54 C 1115.
• Citation: 178 F. Supp. 591
• Parties: MINNESOTA MINING AND MANUFACTURING COMPANY, a corporation of Delaware, Plaintiff, v. PLYMOUTH RUBBER COMPANY, Inc., a corporation of Massachusetts; Hawkins Electric Company, a corporation of Illinois; Jerome J. Levitt, James J. Driscoll and Melvin R. Hecker, co-partners d/b/a Complete Electrical Supply Company, and F. M. Shumway and R. C. Fresen, co-partners, d/b/a Shumway-Fresen Co., Defendants.
• Court: U.S. District Court — Northern District of Illinois

178 F. Supp. 591

MINNESOTA MINING AND MANUFACTURING COMPANY, a corporation of Delaware, Plaintiff, v.PLYMOUTH RUBBER COMPANY, Inc., a corporation of Massachusetts; Hawkins Electric Company, a corporation of Illinois; Jerome J. Levitt, James J. Driscoll and Melvin R. Hecker, co-partners d/b/a Complete Electrical Supply Company, and F. M. Shumway and R. C. Fresen, co-partners, d/b/a Shumway-Fresen Co., Defendants.

No. 54 C 1115.

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

March 27, 1959.

Haight, Lockwood & Simmons, Chicago, Ill., for plaintiff.

Hector M. Holmes, Fish, Richardson & Neave, Boston, Mass., Casper W. Ooms, Dugald S. McDougall, Chicago, Ill., of counsel, for defendant.

ROBSON, District Judge.

This is a patent infringement suit.Defendants have filed a motion for summary judgment on the ground that it has been judicially determined that the precise product here involved did not infringe, and since the only possible infringing change in the product occurred years subsequent to the filing of the instant suit that change could not serve to cure the fatal defect of the complaint of want of infringement prior to suit.

This suit was filed August 4, 1954, on patent No. 2,559,990, issued July 10, 1951, and ReissueNo. 23,843, dated June 29, 1954, to one Oace, for an insulating tape.Defendant, Plymouth Rubber Company, Inc., manufactures, and the other defendants distribute or sell the tape.

Plymouth claims protection from suit by virtue of the doctrine of res judicata, as announced in Cromwell v. County of Sac, 94 U.S. 351, 24 L.Ed. 195.The Court of Appeals for the Fourth Circuit in Sears, Roebuck & Co. v. Minnesota Mining and Manufacturing Co., 4 Cir., 1957, 243 F.2d 136(on rehearing, 4 Cir., 249 F.2d 66), found noninfringement of plaintiff's patent by Plymouth's product.This decision reversed the trial court's findings of validity and infringement.(D.C., 141 F.Supp. 686(No. 878G))The Fourth Circuit suit was filed a day before the instant suit.There was a companion case in the District Court of North Carolina, No. 879G, involving the same Plymouth product but against different sellers thereof, which also resulted in a finding of validity of the patent and infringement, but instant defendant Plymouth did not defend the suit, and no appeal was taken from that judgment.

The other instant defendants rely on the decision in Kessler v. Eldred, 206 U.S. 285, 27 S.Ct. 611, 51 L.Ed. 1065, which precludes harassment of customers of a manufacturer whose product has been judicially determined not to infringe where the product is identical.Plaintiff claims that Kessler v. Eldred, supra, is inapplicable because in that case there could be reliance by defendants upon a former judgment prior to acts of infringement and in the instant case the Fourth Circuit suit had not only not proceeded to a judgment upon which Plymouth's customers could rely but had just been instituted the day before this suit.Defendant, however, argues that the Kessler v. Eldred doctrine has been construed to prevent further prosecution of pending litigation (Vermont Structural Slate Co. v. Tatko Bros. Slate Co., 2 Cir., 1958, 253 F.2d 29).The affidavits of Fresen, Biggam and Levitt disclose the defendants other than Plymouth sell only tapes manufactured by Plymouth, or plaintiff, or a licensee of plaintiff.

Plaintiff further contends that the motion for summary judgment should be denied because their affidavits disclose that the product has been so changed that the Fourth Circuit decision of noninfringement is no longer res judicata as to the manufacturer-defendant on the issue of infringement and Kessler v. Eldred, supra, protective of customer-defendants, is inapplicable since the product is no longer identical with the one subject to the former adjudication.Plaintiff also contends that the subsequent change in the product is sufficient to sustain the instant complaint though there was a want of infringement at the time of the institution of the suit, inasmuch as this is a court of equity which has jurisdiction to grant complete relief and take cognizance of events occurring subsequent to the filing of the original complaint.Plaintiff also points out that the complaint charges a continuing infringement so it validly encompasses any subsequent infringement occurring by reason of change in the product.

The product involved is a pressure-sensitive adhesive tape used in the insulation and protection of electrical conductors, which tape is composed of backing and plasticizer components.The instant patent and controversy revolve around the plasticizer.The Fourth Circuit opinion construes the patent, in essence, to require two plasticizers, one liquid and one resinous.In brief, it held Plymouth's product not to infringe because it had but one plasticizer, the resinous one, and there could be no infringement of the patent where an essential element of a patent claim was absent in the allegedly infringing product.

The product of Plymouth utilizes the factors of G-25 or G-40 in its plasticizer, which substances are manufactured by the chemical company of Rohm and Haas of Philadelphia.Defendants contend that the G-25 and the G-40 involved in the Fourth Circuit suit, and that involved in the instant suit, are identical.Plaintiff says they are not and cites in support of its contention advertisements of Plymouth which tell of changes in the "power factor,""viscosity," and statements that there never "before was a plastic tape like this"; that it is "superior to any plastic tape ever known"; that it has "wider temperature working range," and that "ZF.90 makes the difference."

Defendants counter that these are "puffing" statements made by its advertising agency without their knowledge and with no factual support and that Plymouth withdrew the advertisements as soon as it saw them.

Defendants also claim that the change in the product was a change of its name only, and that it decided in January, 1958, to use its trade-name "Slipknot" on the tape.They further contend that the changes, if any, in G-25 and G-40 were subsequent to the institution of this suit and so the fact of change is immaterial and incapable of curing a fatally defective complaint.The change, if any, is limited to G-25, according to defendants, and was as to viscosity and power factor and not as to ingredients.Finally, defendants point out that the opinions of the Court of Appeals for the Fourth Circuit fully passed upon the alleged changes and concluded that such change as may have occurred in G-25 and G-40 did not constitute the product an infringing one because it still utilized but one plasticizer and the patent called for two.As to this, the plaintiff replies that the one plasticizer admittedly used has been so chemically changed that the resinous plasticizer is also the liquid plasticizer so that both plasticizers required by the claims of the patent are present and infringement follows.

Many affidavits, counteraffidavits, and reply affidavits have been filed by the respective parties in support and opposition of the instant motion, as is permitted by Rule 56, Fed.Rules Civ. Proc. 28 U.S.C.A.These affidavits may be considered "for the very limited purpose of determining whether an issue of fact exists, but cannot be used as a basis to decide a contested issue of fact."Lacy v. United States, 7 Cir., 1953, 207 F.2d 352, 354;Frederick Hart & Co., Inc. v. Recordgraph Corporation, 3 Cir., 1948, 169 F.2d 580;Mitchell v. McCarty, 7 Cir., 1957, 239 F.2d 721;Campana Corp. v. Harrison, 7 Cir., 1943, 135 F. 2d 334;Fishman v. Teter, 7 Cir., 1943, 133 F.2d 222.Similar holdings are Ford v. Luria Steel & Trading Corp., 8 Cir., 1951, 192 F.2d 880;Chappell v. Goltsman, 5 Cir., 1950, 186 F.2d 215;F.A.R. Liquidating Corp. v. Brownell, 3 Cir., 1954, 209 F.2d 375;Vale v. Bonnett, 89 U.S.App.D.C. 116, 191 F.2d 334;see alsoCyclopedia of Federal Procedure, sec. 35.21, par. 186.

The following is a brief résumé of the important aspects of the affidavits.The affidavits of Danovitch, Plymouth's chemist, disclose that he has been employed by Plymouth since July, 1924, and personally conducted all research on pressure-sensitive adhesive plastic electric tape and established the formulas of Plymouth's tapes since 1950; that up to 1952, G-40 was the sole plasticizer used, and since Spring of 1954, G-25 has been used as the sole plasticizer.Both G-25 and G-40 are manufactured by Rohm and Haas, a Philadelphia Company.He further states that Plymouth has made and sold no tapes except the two tapes using either G-25 or G-40 as the sole plasticizer.His affidavit of July, 1958, states that from "first production and sale of the G-40 tape up to present moment, no change whatever has ever been made in the formula of that tape by way of change of materials, addition of new materials, manufacturing procedures, or otherwise."He makes an identical statement as to G-25.He states further that "with the change of name there was no change whatever in the two plastic electric tapes made commercially by Plymouth —the G-40 and the G-25."

The affidavits of Harris, an employee of Plymouth since 1919, an officer and manager since 1948, state that he had knowledge of the materials, including the plasticizer, used in all Plymouth's tapes and that the sole plasticizer used in the vinyl backing at the beginning was Paraplex G-40, and after the Spring of 1954 Plymouth commenced using as the sole plasticizer Paraplex G-25, both products of Rohm and Haas, and the first sale for commercial use was to Sears, Roebuck and Company(defendant in the Fourth Circuit suit).The affidavits also state that tapes with G-40 and G-25 as the sole plasticizer were the only pressure-sensitive adhesive plastic electric tapes ever made and sold by Plymouth and were the two plastic electric tapes involved in the North Carolina case."No change whatever has ever been made by way of change of materials or...