American Anode v. Lee-Tex Rubber Products Corp.

• Decision Date: 04 August 1943
• Docket Number: No. 8194.,8194.
• Citation: 136 F.2d 581
• Parties: AMERICAN ANODE, Inc., v. LEE-TEX RUBBER PRODUCTS CORPORATION.
• Court: U.S. Court of Appeals — Seventh Circuit

136 F.2d 581 (1943)

AMERICAN ANODE, Inc., v. LEE-TEX RUBBER PRODUCTS CORPORATION.

No. 8194.

Circuit Court of Appeals, Seventh Circuit.

May 28, 1943.

Rehearing Denied August 4, 1943.

J. Ralph Barrow, of Akron, Ohio, Wm. Gates, Jr., of Boston, Mass., and Geo. I. Haight, of Chicago, Ill., for appellant.

Edgar H. Kent and Harrison F. Lyman, both of Boston, Mass., John V. Groner, of New York City, and Geo. A. Chritton, of Chicago, Ill., for appellee.

Before SPARKS, MAJOR, and MINTON, Circuit Judges.

SPARKS, Circuit Judge.

Plaintiff charged defendant with the infringement of United States patent No. 1,825,736 to Klein and Szegvari, and United States patent No. 1,996,051 to Twiss. The first patent was issued October 6, 1931, on an application filed May 29, 1926. The second patent was issued April 2, 1935, on an application filed February 19, 1931. Both patents are owned by the plaintiff. Claims 1, 16, 18 and 19 of the first patent, and claims 2, 4, 17, 18, 28 and 29 of the second patent were relied upon. The defenses were invalidity and non-infringement. The court found that all the claims relied upon in both patents were valid, and that all such claims, except claim 19 of the first patent, were infringed by the defendant's device, referred to as its "regular process"; and that all claims relied upon, except claim 4 of the second patent, were infringed by defendant's device referred to as its "developer process." The District Court made special findings of fact and rendered its conclusions of law thereon. A decree was accordingly entered in favor of the plaintiff, and from that decree this appeal is prosecuted.

The District Court filed its written opinion, 45 F.Supp. 750, in which it fully set forth the disclosures of the patents, the nature of the accused devices, and the prior art upon which defendant relies.

It is sufficient to say that both patents relate to a process for manufacturing rubber goods directly from latex by immersing in the latex, forms previously treated with a latex coagulant. Latex is obtained from the rubber tree. It is a white milky liquid which exudes from the tree and contains miscroscopic particles of suspended rubber moving about in a liquid which is essentially water. Each of the tiny particles of rubber naturally carries a negative electric charge, referred to as a negative ion. In its natural state each negative ion repels its neighbor and they never agglomerate until the water is eliminated from the latex or until the negative electric charge is neutralized so that the particles of rubber no longer repel each other but gather in groups and form clots like curds in sour milk. Such action is known as ionic coagulation and may be produced by adding any of some hundreds of substances, known as rubber coagulants, among which are acids and salts of bivalent metals.

It is conceded that the obtaining of rubber from latex by dehydration and by ionic coagulation is very old in the art. For generations it was known that rubber articles of the character here under discussion could be made by dipping in latex, molds or forms of such articles, withdrawing the forms, and then allowing the latex adhering to the forms to dry. One such immersion was known to produce a rubber film but it was too thin to be commercially valuable, and repeated operations of the same character were essential to produce a thickness of rubber which was commercially valuable. This was a very slow process and the disclosures of recent years have been along the line of expediting the production. For instance, Klein and Szegvari, hereafter referred to as Klein, disclosed that the thickness of a rubber deposit obtainable on a mold dipped in latex might be greatly increased by first dipping the mold in a coagulant for latex so that positive ions released by the coagulant would neutralize the negative electric charges in the rubber particles of the latex and cause them to coagulate in a film on the surface of the form. Klein specifically suggested the use of a hollow porous mold or form, within which mold was provided a store of liquid coagulant which migrated outwardly into the latex through the pores of the form.

The Twiss patent was an improvement on Klein. It disclosed that the result of increased thickness of deposit could be better obtained by using an impervious mold, instead of a porous one, and applying the liquid coagulant to the surface of the mold, which coagulant is reduced to a solid or semi-solid condition, by drying for a brief period before dipping into the latex. The processes of both patents are referred to as the "coagulant-dip" process, by means of which the rubber articles referred to are fabricated with but a single dip. The thickness of the article produced depends upon the length of time the form is left in the latex. Regardless of patentability, the disclosures of these patents have resulted in a great saving of time, labor, floor space, equipment and cost to the plaintiff and its licensees. Furthermore, the goods produced by these processes cover a wider range of articles of superior strength, uniformity and length of life than were produced by the former processes, which facts have resulted in a noteworthy commercial success which cannot be denied.

Defendant's processes which are here charged to infringe are referred to as its "regular" or "commercial" process, and its "M160," or "developer" process.

The District Court found that the defendant's "commercial" process is identical with plaintiff's commercial practice of the coagulant-dip method. In it an aluminum form is dipped in a liquid solution of calcium nitrate (a coagulant for latex), removed, and the coagulant dried, whereupon the coagulant-coated form is dipped in latex. It is kept in the latex for a period of time, depending upon the thickness desired in the finished article, whereupon the form, upon which a layer of coagulated rubber has been deposited, is removed; and the rubber article, after washing and drying, is stripped from the form.

In the "M160" or "developer" process the procedure is similar to that in the "commercial" process, except that a material known as M160 is used as a dip for the form instead of calcium nitrate. The content of M160 was specifically described in the stipulation, and the District Court found that it is a substance capable of coagulating and agglomerating rubber particles of latex, which when associated with the form, acts to increase, as desired, the thickness of the coherent rubber layer obtained on the form, and substantially to the same extent as such thickness is increased by the use of calcium nitrate in defendant's regular process, and this is the function and the purpose for which defendant used M160 in this process. The defendant argues that its accused process does not infringe the Klein patent because that patent should be limited to the use of a porous mold. It further contends that its M160 process does not infringe either of the patents because that process does not produce a layer of rubber by ionic coagulation while the form is in the latex, but rather by dehydration.

The defendant argues that the claims relied upon in the Klein patent were anticipated (1) by the practice of the early Brazilian natives in forming blocks of crude rubber for commercial purposes as described in Seeligmann's book; (2) by the description of an experimental variation of that practice in Morisse's book, and (3) by Swett patent No. 1,348,459, all of which are specifically referred to in the District Court's opinion. We think the ancient practice described by Seeligmann cannot be said to anticipate the Klein disclosures. It seems quite clear that these early natives had no knowledge of ionic coagulation, or that smoke of any kind contained...