Anchor Plastics Co., Inc. v. Dynex Indus. Plastics Corp.
| Decision Date | 25 June 1973 |
| Docket Number | Civ. No. 1495-69. |
| Citation | 363 F. Supp. 582 |
| Parties | ANCHOR PLASTICS COMPANY, INC., Plaintiff, v. DYNEX INDUSTRIAL PLASTICS CORP., Defendant. |
| Court | U.S. District Court — District of New Jersey |
Pitney, Hardin & Kipp, by William H. Hyatt, Jr., Newark, N. J., Morgan, Finnegan, Durham & Pine, by Jerome G. Lee, David H. Pfeffer, James P. Welch, New York City, for plaintiff.
Popper, Bain, Bobis, Gilfillan & Rhodes, by John G. Gilfillan, III, Newark, N. J., Wyatt, Gerber & Shoup by Douglas W. Wyatt, Eliot S. Gerber, New York City, for defendant.
This is an action for infringement by the assignee of United States Patent No. 3,136,676 (), issued on June 9, 1964, for "Metallized Plastic Extrusion Products and Method of Making Same," on an application filed in the United States Patent Office on February 20, 1957.1
Plaintiff Anchor Plastics Company, Inc. (Anchor) is a New York corporation, having its principal place of business in Long Island City, New York.
Defendant Dynex Industrial Plastics Corp. (Dynex) is a New Jersey corporation doing business within the District of New Jersey in Rutherford, New Jersey.
This action presents the primary issues of validity and infringement. Plaintiff seeks by way of relief an injunction against continuance of alleged infringement, damages, interest, and costs.
Defendant's answer denies infringement of the Fisch patent, denies its validity, and sets forth numerous affirmative defenses. Defendant asserts no counterclaim.
Subject matter jurisdiction is had over this action by virtue of 28 U.S.C. § 1338(a), and venue is proper under 28 U.S.C. § 1400(b).
Plaintiff is in the business of making and selling plastic extrusion products and, in such business, uses the process described and claimed in the Fisch patent in suit.
This matter was tried before me over seven trial days, following which the parties submitted post-trial briefs and proposed findings of fact and conclusions of law.
The opinion which follows embodies my own findings of fact and conclusions of law pursuant to Fed.R.Civ.P. 52(a).
The Fisch patent was issued on June 9, 1964, and relates to the production of metallized effects in extruded transparent thermoplastic products. It is a process patent. 35 U.S.C. §§ 100, 101.
The thermoplastic extrusion process of the invention produces a decorative trim or strip, having a metal foil, such as aluminum, encased in a transparent thermoplastic. The product is in widespread use as trim on automobiles, home appliances and the like, and as decorative trim on cabinets where, because of a bend in the trim around a particular radius, an all metal trim could not be used because of buckling.
In the thermoplastic extrusion process of the invention, a molten thermoplastic material and a metal foil, having been introduced into an extrusion apparatus, are forced through a die. The thermoplastic material is melted to a molten state at high temperature so that it is in a fluid condition capable of being forced through the die. The extrusion emerges from the die with the metal object encased in the plastic. Then it is cooled, which apparently solidifies, sets or hardens the thermoplastic material. The extrusion has the cross-sectional shape of the die opening. Insofar as these elements are concerned, plaintiff concedes anticipation and non-obviousness in view of the prior art (See PX-1, Col. 1 as to the extrusion process and Col 2 as to the extrusion apparatus).
Thus, prior to filing of the Fisch patent application, such extrusions of plastic strips with metal foil encased therein were being produced and sold. Plaintiff contends, however, that the resultant product had substantial defects, in that, with bending and outdoor exposure, there occurred wrinkling and distortion of the metal foil within the plastic; and I so find.
For a year and a half, plaintiff's employees tried without success to solve the problem, until, by the process of the Fisch patent, the wrinkling of the foil was eliminated. The foil used in the patented process is pre-coated on at least one of its surfaces with a thin, film-like coating of a transparent thermoplastic lacquer of the group consisting of cellulose nitrate, cellulose butyrate, ethyl cellulose and polyvinyl acetate-polyvinyl chloride lacquers. This lacquer coated foil is fed into a die in unison with the thermoplastic material and the transparent thermoplastic material is extruded about the lacquer coated foil. The surface of the foil containing the lacquer coating contacts the interior surface of the extruded material and the lacquer coating on the foil adhesively fixes the position of the foil with respect to the extruded transparent thermoplastic material.
Plaintiff's use of the process, to extrude and make products with a lacquer coated foil, resulted in the cessation of complaints from customers that the foil was wrinkling and the products were discoloring.
The Fisch patent contains 5 Claims; and Claims 1, 2 and 3 are charged to be infringed by defendant's process. They are as follows:
As can readily be seen, Claims 2 and 3 are actually dependent upon Claim 1. In addition to the recitations of Claim 1, Claim 2 recites that the foil is embossed. Claim 3, in addition to the recitations of Claim 1, recites that the foil is coated on both sides with the lacquer and that the thermoplastic material is extruded to contact both sides of the foil.
In summary, it can thus be said that involved herein are two technologies, both of which, plaintiff concedes, were known and used before its invention. These two technologies are combined by the Fisch patent to provide a process of preparing extruded thermoplastic products with at least one visible region thereof having a metallic appearance. The first of said technologies is the extrusion of thermoplastic materials. These materials, when heated, become plastic or soft, and can be molded or shaped into desired configurations; and, when cooled, are capable of hardening and being fixed in the desired molded configuration. These thermoplastic materials, when heated and soft, can be extruded or forced through an extrusion die and, when so extruded and then cooled, are capable of hardening and being fixed in the shape formed by the extrusion or extrusion die. The second of the technologies, brought together with the first, and combined to provide the process of the invention of the Fisch patent, is the coating of a surface with a lacquer. Plaintiff acknowledges that the technology of applying thin, film-like coatings of lacquers to surfaces, including metal surfaces, was known prior to the invention of the Fisch patent.
In combining the technology of the extrusion of thermoplastic materials with the technology of applying thin, film-like coatings of lacquers to surfaces, Fisch discovered that, to accomplish the purposes of the patent, including avoiding of wrinkling, particular lacquer coatings on one or more of the surfaces of the metal foil should be used. Thus, the patent prescribes that the lacquer should be a "thermoplastic adhesive" (Patent, Col. 1); "must be one which is capable of absorbing or overcoming the non-adhesive effects of the lubricant film" on the foil (Patent, Col. 2); (Patent, Col. 2); "The foil 21-5 is coated with a thin layer of adhesive lacquer 26-5 which may have a base of cellulose butyrate, cellulose nitrate, ethyl cellulose, polyvinyl acetate-polyvinyl chloride" (Patent, Col. 3).
For a better understanding of the issues, defendant's position, to be analyzed hereinafter in association with its proffered prior art, should be stated now. Defendant argues (Def.'s Post-Trial Brief, pp. 17-18):
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