Avery Products Corp. v. Morgan Adhesives Co.
| Decision Date | 30 April 1974 |
| Docket Number | No. 73-1699,73-1700.,73-1699 |
| Citation | 496 F.2d 254 |
| Parties | AVERY PRODUCTS CORPORATION, Plaintiff-Appellant and Cross-Appellee, v. MORGAN ADHESIVES COMPANY, Defendant-Appellee and Cross-Appellant. |
| Court | U.S. Court of Appeals — Sixth Circuit |
Charles B. Gordon, Cleveland, Ohio, for plaintiff-appellant ; McNenny, Farrington, Pearne & Gordon, Cleveland, Ohio, on brief ; Harry C. Donkers, San Marino, Cal., for Avery Products Corp.
Frederic M. Bosworth, Cleveland, Ohio, for defendant-appellee ; Bosworth, Sessions & McCoy, Cleveland, Ohio, on brief ; William S. Burton, Arter & Hadden, Cleveland, Ohio, for Morgan Adhesives Co.
Before WEICK and McCREE, Circuit Judges, and CECIL, Senior Circuit Judge.
Avery Products Corporation (Avery) appeals from a summary judgment of the District Court dismissing its complaint against Morgan Adhesives Company (Morgan), alleging infringement of its Engelbach U.S. Patent 3,343,978 covering an improvement in adhesive transfers. Morgan cross-appeals from an order of the District Court dismissing its three counterclaims.
Avery and Morgan are competitors, each engaged in the manufacture of various adhesive products. Avery is the assignee of the patent which was granted to Thomas J. Engelbach by the Patent Office on September 26, 1967, and which had been applied for on January 9, 1964 as a continuation-in-part of an earlier application filed on March 29, 1961.
The claims of the Engelbach patent are set forth in the footnote.1
Avery's original complaint charged Morgan with infringement of claims 1 through 7 of the patent, but a later statutory disclaimer of claims 1 through 5, and 7, left only an alleged infringement of claim 6.
Morgan filed three counterclaims against Avery, seeking a declaratory judgment of invalidity of the patent, and of noninfringement, and alleged that Avery had violated Section 2 of the Sherman Act by monopolistic practices. 15 U.S.C. § 2.
After extended discovery over a period of more than four years, which included interrogatories, requests for admissions, and numerous depositions and affidavits, Morgan moved for summary judgment on the issue of invalidity, which motion was considered by the Court on the briefs and the record. The grounds of invalidity alleged by Morgan were that Engelbach was anticipated by U.S. Patent 3,041,682 issued to Sterling Alderfer of Akron, Ohio, which was applied for on May 21, 1957 and issued on July 3, 1962. 35 U.S.C. § 102(e).
Second, Morgan further alleged that public sales or uses of structures embracing the patent claims were made by Avery to Alderfer and to Vitronic, Inc., more than one year prior to the date of the application for the Engelbach patent, making it invalid under 35 U.S.C. § 102(b).
Third, Morgan alleged that any differences between the prior art and the invention described in claim 6 would have been obvious at the time it was applied for, and thus the patent would have been invalid under 35 U.S.C. § 103.
While the motion for summary judgment was under consideration the District Court, sua sponte, appointed a patent attorney as Special Master "to complete the Judge's findings of fact and conclusions of law for the purpose of ruling on defendant's motion for summary judgment." The stated reason for the appointment was the complexity of the case and the hospital confinement of the District Judge.2
The District Court handed down an opinion and order in which it held that the Engelbach patent was invalid. It dismissed the plaintiff's complaint and also dismissed all three counterclaims of defendant, although the counterclaims were not involved in the motion for summary judgment.
The District Court was of the opinion that the Engelbach patent was anticipated by the prior U.S. Patent 3,041,682 issued to Sterling Alderfer. The Alderfer patent had not been considered by the Patent Office when the Engelbach application was before it. The District Court was of the view that Alderfer was more pertinent than the prior art which the Patent Office did consider.
The District Judge further found that there had been a commercial sale and uses of the structure disclosed in claim 6 of Engelbach more than a year prior to the filing of the application for the patent, and that the patent was therefore invalid under 35 U.S.C. § 102(b).
On appeal, the principal issue raised by Avery was that there were genuine issues of material facts and that the District Court erred in granting Morgan's motion for summary judgment. Bohn Aluminum & Brass Corp. v. Storm King Corp., 303 F.2d 425 (6th Cir. 1962). We disagree.
We have alluded heretofore to the extensive discovery which involved written interrogatories and written answers thereto, the requests for admissions and the answers, the patent in suit and the prior art patents, the depositions and exhibits. In addition, the parties made a joint response to a questionnaire submitted by the Court, entitled, "What Facts in the Matter are Not Actually in Dispute?" In the joint response it was agreed that Avery's Division, Fasson Products, had made and sold, prior to March 29, 1960, structures containing nontacky layers of vinyl film, and a pressure sensitive adhesive having one side in adhering contact with the release coating and the second side in adhering contact with the vinyl. Also, it had made and sold other similar structures where the nontacky layer was either cellophane, polyethylene, cellulose acetate, or cellophane and polyethylene, instead of vinyl.
The District Court was careful to base its decision on uncontroverted or admitted material facts and we find no error in the disposition of this case by summary judgment. Rule 56, Fed.R.Civ.P.; Bobertz v. General Motors Corp., 228 F. 2d 94 (6th Cir. 1955), cert. denied, 352 U.S. 824, 77 S.Ct. 32, 1 L.Ed.2d 47 (1956). See also Ashcroft v. Paper Mate Mfg. Co., 434 F.2d 910 (9th Cir. 1970).
The Engelbach patent is on a "structure" and not on a method or process. Claim 6, which is the only claim in issue, states :
An adhesive structure as set forth in claim 5 wherein said nontacky layer is a heat activated layer which is convertible to provide said tacky adhesive surface by the application of heat.
Both parties refer to the patented structure as a "sandwich" with a pressure sensitive adhesive in the middle, which is protected by a removable piece of paper on one side called "substrate", not firmly adhered thereto, and a layer of nontacky...
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