BB Chemical Co. v. Ellis

• Decision Date: 24 April 1940
• Docket Number: No. 4642.,4642.
• Citation: 32 F. Supp. 690
• Parties: B. B. CHEMICAL CO. v. ELLIS et al.
• Court: U.S. District Court — District of Massachusetts

32 F. Supp. 690

B. B. CHEMICAL CO. v. ELLIS et al.

No. 4642.

District Court, D. Massachusetts.

April 24, 1940.

A. D. Salinger, Fish, Richardson & Neave, and C. E. Hammett, Jr., all of Boston, Mass., for plaintiff.

William Gates, Jr., and Roberts, Cushman & Woodberry, all of Boston, Mass., for defendants.

James R. Hodder, of Boston, Mass., for defendants Elmer A. Ellis, and Magic Tape Co.

BREWSTER, District Judge.

This is an infringement suit, presenting only two issues, (1) the issue of infringement, and (2) the issue whether, as a result of plaintiff's manner of conducting its business, it and its licensees have, in fact, secured a virtual monopoly in the manufacture and sale of unpatented materials. The word "defendant", as herein used, means the corporate defendant Magic Tape Corporation unless otherwise indicated.

Statement of Facts.

1. The defendant is a Massachusetts corporation with an outstanding capital stock of twenty-five shares, of which the defendant Ellis and his wife own twenty-four. The defendant Ellis is treasurer and general manager of the defendant, which maintains its office in the house of the defendant Ellis. This defendant personally developed and first introduced the process alleged to be the infringing process.

2. On November 3, 1931, Letters Patent of the United States No. 1,830,428 were issued to the defendant Ellis, assignor to the plaintiff. For this assignment the plaintiff paid Ellis $8,000. Ellis admits in his answer "that said invention and the Letters Patent thereon were of great utility and of great value and has gone into extensive use."

3. The invention relates to the manufacture of insoles, with special reference to its application to the coating of the fabric and to use of the fabric in reinforcing insoles. It had long been the practice in the manufacture of shoes to reinforce insoles by cementing thereto a layer of duck or like textile fabric material shaped to the sewing lip, or rib, of the insole, to reinforce the lip, thereby forming a more secure anchorage for the inseam stitches. The usual practice had been to employ a strip of fabric of approximately the width of the insole, having coats of thermoplastic material which had to be heated just prior to its application to the insole in order to secure proper adhesion. The degree of heat required was relatively high, and considerable skill on the part of the operator was required in order to produce uniform results. Several disadvantages were found in this practice. It was commonly known as the "hot process". There was also, prior to Ellis's entry into the art with his patent, a process developed known as the "cold process", which had failed to meet with the general approval of shoe manufacturers. In view of the foregoing, Ellis provided, in his patent, a novel method of coating fabric and of using such fabric in reinforcing insoles. He used a suitable fabric, such as gem duck, coated in the web with a rubber composition. After heating and drying, the non-tacky web was then cut into strips and wound into rolls. The next step in the process was to apply a coating of rubber cement to the pre-coated material just before the strip was applied to the insole. This application is made by the shoe manufacturer. The fabric thus coated is then at once applied to the insole and "formed in" around the rib, or lip, usually with a hand tool.

4. The plaintiff, since 1929, has used a base coating composed of crude rubber with zinc oxide and resin, and has furnished its customers with a top coating material with practically the same ingredients, only in different proportions. Since 1932, however, it has used a base coating, and has provided manufacturers with a top coating, which included a certain percentage of 60 per cent. concentrated latex and other ingredients, the rubber content of each being about 35 per cent. of the whole. Neither the plaintiff nor its licensees use heat in the application of the top coat.

5. So far as we are concerned with the base coating, that of the defendants essentially follows the patent. The formula now used is rubber, R. P. A. No. 1 and naphtha. The controversy over infringement centers about the top coating. Defendant furnishes its customers for this purpose two kinds of coating, one containing a 60 per cent. concentrated latex, and the other a 52 per cent. concentrated latex. These coatings are not made by the defendant but are purchased from different concerns engaged in the manufacture of them. In each type an ingredient, a substitute for tragacath, is introduced. What that ingredient is, or what are its proportions, was not disclosed.

The question to be decided is whether this top coat, as it is used in defendants' process, is the equivalent of that of the patent and is within Claim 4 of the patent, which is the only claim in issue.

6. Claim 4 reads as follows:

"4. That improvement in methods of reinforcing insoles which comprises applying, at room temperature, to a strip of reinforcing material provided with a dry coating of a cement having a substantial rubber content, a coating of adhesive containing a relatively large amount of rubber and of such a character that it will be effective even when freshly applied to cause quick adhesion of the reinforcing material and the material of the insole, and applying to each other, still at room temperature, a portion of the coated strip and the insole to be reinforced."

All the claims of the patent are for a process but all except Claim 4 include specific reference to ingredients entering into either the base or the top coating, and in the latter always a resin, or rosin, is included in the description.

7. Defendants contend that their latex adhesives do not respond to the terms of Claim 4, if that claim is properly limited. This calls for a further consideration of the specifications of the patent, also of prior patents and the proceedings of the Patent Office relative to the patent in suit, in order to define the invention protected by Claim 4.

Plaintiff's assignor Ellis was not the first to discover a cold process, for he refers in his specification to unsuccessful attempts to develop such a process. He not only sought an improvement over the old cold process but, what is more important, a process which would eliminate the necessity of heating to a relatively high degree of heat a thermoplastic material as it was being applied. He did this by providing a pre-coated duck treated with a "cold rubber cement composition containing rubber, a resin and a solvent." Then, prior to the use of the strip as reinforcing material, a coating of rubber cement is applied at room temperature. The specifications gave preferred formulae for both the base and top coatings, both of which involve the use of appropriate quantities of rubber, zinc oxide, Burgundy pitch and naphtha. According to the specifications: "This (second) coating, while it may advantageously be made up in general of ingredients similar to those used in the first coating, preferably has the ingredients in different proportions, * * *. The proportion of solvent in this composition is relatively small so that a cement having a high viscosity is produced and having, because of the high resin content, the requisite tackiness. * * * The solvent employed in the second coating is preferably one that will quickly evaporate substantially completely at ordinary room temperature. * * *"

Ellis describes the function of the second coating as follows:

"The composition for the second coating is applied to the strip while cold, that is at normal room temperature, the coating being very thick compared with the thickness of the first coat. As soon as the highly viscous and heavy second coating is applied to the strip, the strip is exposed to the air and the highly volatile solvent begins to evaporate from the exposed surface. At the same time the first coating is absorbing the solvent from the second coating so that in a very short time, in fact in a few seconds, sufficient solvent has been removed from the second coating to render it tacky instead of slimy or slippery, and hence it is in suitable condition for the application to the insole. Since the two coatings are of a similar nature, the rubber solvent absorbed by the first coating from the second coating softens the first coating so that the two coatings cohere and firm adhesion between strip and the insole is assured."

Thus we see that the necessity of heat was obviated and delay incident to the operation of the old cold process was avoided by applying to a pre-coated fabric a rubber cement composition which was highly viscous and which contained among its ingredients a volatile solvent so that absorption and evaporation together with a tack-producing ingredient gave a fabric with sufficient adhesive qualities to permit its immediate use in reinforcing insoles.

8. While conceding that the results obtained by defendants' process are identical with those obtained by the process of the patent, the defendants argue that the results are attained by means so dissimilar that they cannot properly be held to be equivalent to the means of the patent.

The argument is that rubber cement is a colloidal dispersion in rubber solvent, while latex is a colloidal dispersion in water. Defendants agree that they are both adhesives, and their expert testified that they were certainly equivalents "but not for all purposes and at all times."

It is also conceded that both the latex and the rubber cement develop adhesion as the liquid vehicle evaporates, and that in both cases the liquid evaporates slowly. The defendants say, however, that Ellis, plaintiff's assignor, avoided slow evaporation of the solvent by the rapid evaporation and rapid absorption of a highly volatile cement in the pre-coat. This is undoubtedly true, but it has already appeared in these findings that the defendant uses a volatile solvent in its pre-coat. The defendants point to the...