Buckingham Products Co. v. McAleer Mfg. Co.

• Decision Date: 10 January 1940
• Docket Number: No. 7942.,7942.
• Parties: BUCKINGHAM PRODUCTS CO. v. McALEER MFG. CO.
• Court: U.S. Court of Appeals — Sixth Circuit

108 F.2d 192 (1939)

BUCKINGHAM PRODUCTS CO. v. McALEER MFG. CO.

No. 7942.

Circuit Court of Appeals, Sixth Circuit.

December 12, 1939.

Rehearing Denied January 10, 1940.

Stuart C. Barnes, of Detroit, Mich. (Barnes, Kisselle, Laughlin & Raisch, of Detroit, Mich., on the brief), for appellants.

Clarence B. Zewadski, of Detroit, Mich. (Whittemore, Hulbert & Belknap and Clarence B. Zewadski, all of Detroit, Mich., on the brief), for appellee.

Before HICKS, SIMONS, and ARANT, Circuit Judges.

SIMONS, Circuit Judge.

As in Westinghouse Electric & Manufacturing Company v. Formica Insulation Company, 266 U.S. 342, 45 S.Ct. 117, 69 L.Ed. 316, the question in this case is the operation of the principle of estoppel and the character of defense to which the assignor of a patented invention is limited in a suit for infringement by the assignee, although we are here concerned with a patent issued before the assignor left the employ of the assignee. Since the assignor was continuously consulted during the prosecution of the patent application and the claims as issued definitely derive from the claims in the application, we are relieved of the difficult question that confronted the court in the Westinghouse case and in our recent case of Baldwin Rubber Company v. Paine & Williams Company, 6 Cir., 107 F. 2d 350, decided November 15, 1939, bearing upon the limits of an estoppel in the case of an assignment of an application, and so of an inchoate right to a patent, as compared with the limits of estoppel in the case of assignment of a granted patent. Where the applicant, though assigning his application to his employer, retains his position, cooperates in the prosecution of the application, and so has opportunity to define precisely his invention and control claims finally allowed, there would seem to be no reasonable ground for differentiating between the limits of an estoppel growing out of an assigned application and those arising from a granted patent.

The court in Westinghouse Electric & Mfg. Company v. Formica Insulation Company, supra, upon a careful review of Circuit and District Court decisions in addition to those of the Circuit Courts of Appeals, announced the conclusion that an assignor of a patent right is estopped to attack the utility, novelty or validity of a patented invention which he has assigned, as against anyone claiming rights under his assignment or grant. As to the rest of the world, the patent may have no efficacy and create no right of monopoly; but the assignor cannot be heard to question the right of his assignee or to exclude him from its use. This conclusion is not challenged, but it is asserted that there are present in the instant controversy, circumstances which make it inequitable to apply the rule, though conceded that no case has been found which parallels the present situation. Reliance is placed upon the observation of this court in the Formica case, 6 Cir., 288 F. 330, 333, to the effect that since estoppels forbid one to speak the truth, technical estoppels are not favored. We are, in addition, urged to consider the rationale of the cases which emphasize the public interest present in every patent controversy, to the end that the facts pointing to the infirmity of the patent claims be considered, New Departure Bell Company v. Corbin, C.C., 88 F. 901; Standard Water Systems Company v. Griscom-Russell Company, 3 Cir., 278 F. 703, 705; Colorado Tent & Awning Company v. Parks, 8 Cir., 195 F. 275; Premier Machine Company v. Freeman, 1 Cir., 84 F.2d 425; Paramount Publix Corporation v. American Tri-Ergon Corporation, 294 U. S. 464, 55 S.Ct. 449, 79 L.Ed. 997.

In view of these contentions it becomes necessary to consider the character of the invention, the circumstances under which the patent issued, and the relation of the parties. The patent is No. 1,965,299, for an "Abrading and Polishing Composition," issued July 3, 1934, to the McAleer Company, upon the application of appellant Patterson. The invention, as defined by the claims, is expressed in formulae for wheel polishing compounds of which claim 1, printed in the margin,¹ is typical. The compound is a paste-like substance composed of a finely ground abrasive mixed in an emulsion which is made of so-called volatile and non-volatile immiscible liquids with an emulsifying agent present. It is used principally in polishing lacquer finishes on automobile bodies. The compound is spread on the newly painted surfaces which are then polished with a polishing wheel consisting of a power-rotated disc covered with sheepskin or other polishing pad. The compound serves to cut from the surface of the lacquered body, all irregularities, leaving it smooth and with high polish. A compounded paste will dry out and fly from the revolving wheel after the polishing is completed, so when power wheels were introduced the old hand polish was found unsatisfactory since it contained too much oil and "gummed up" the polishing pad, but with a proper wheel compound the non-volatile materials are completely absorbed by the abrasive, and when the volatile liquid, such as oil or water, evaporates due to the heat produced by friction, the abrasives will still carry the non-volatile liquids. If, however, the non-volatile matter is beyond the absorption capacity of the abrasives, the surface will be left smeared, and the pad gummed. Polishing compounds to be applied by power wheels, were first developed as early as 1928 or 1929, at the Du Pont de Nemours plant at Flint, Michigan, and successful combinations were usually arrived at by the cut and try method to determine the proper proportions of their constituent elements.

Patterson had been a chemist with the Du Pont de Nemours Company and entered the employ of the McAleer Company in 1929. At that time McAleer had no successful wheel polishing compound but had been conducting experiments. Patterson had assisted in developing a compound designated as K-38, and others of similar character, in cooperation with one Maurice German, likewise a former Du Pont chemist. These compounds were used at the Checker Cab Company plant in Kalamazoo in 1930, and later by the Fisher Body Company. They have been in use ever since. The K-38 formula appears in the patent in suit as one of the examples illustrating the invention. Compound to the extent of millions of pounds responding to K-38 has been sold by the McAleer Company, its manufacturer.

Apparently no effort was made to protect the German-Patterson formulae, until subsequent to the discharge of German in 1933 when he became associated with a competing company. In July of 1933 McAleer consulted a patent attorney in Detroit as to the possibilities of securing patent protection for his products. He was advised against making application because of the large quantities that had been sold over a...