Clopay Corp. v. Blessings Corp.
| Decision Date | 21 October 1976 |
| Docket Number | Civ. A. No. 4363. |
| Citation | 422 F. Supp. 1312 |
| Parties | CLOPAY CORPORATION, Plaintiff, v. BLESSINGS CORPORATION, and Blessings Products, Inc., Defendants. |
| Court | U.S. District Court — District of Delaware |
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William J. Wier, Murdock & Walsh, Wilmington, Del., for plaintiff; David J. Josephic, William G. Konold, Wood, Herron & Evans, Cincinnati, Ohio, of counsel.
Charles S. Crompton, Jr., Potter, Anderson & Corroon, Wilmington, Del., for defendants; John M. Calimafde, Charles W. Neill, Robert A. Schroeder, Hopgood, Calimafde, Kalil, Blaustein & Lieberman, New York City, of counsel.
In this action plaintiff, Clopay Corporation has charged defendants Blessings Corporation and Blessings Products, Incorporated, with infringement of Trounstine, et al., Patent No. 3,484,835, a patent for embossed plastic film. Plaintiff, the owner of the patent-in-suit, seeks a judgment that plaintiff's patent is valid and has been infringed, and asks that defendants be enjoined from further infringement, that an accounting be held to determine damages, and that plaintiff be awarded treble damages, attorneys' fees, interest, and costs. Defendants claim that the patent-in-suit is invalid and deny infringement. They further assert that plaintiff was guilty of fraud in the procurement of the patent and of bringing and maintaining this suit recklessly and for reasons of harassment.
Defendants are Delaware corporations. There is no dispute as to the Court's jurisdiction of this action under 28 U.S.C. § 1338(a), and venue is properly laid in this District under 28 U.S.C. §§ 1391(c) and 1400(b).
Both plaintiff and defendants manufacture embossed plastic film products. At issue in this suit is a thin film which has an embossed design simulating a taffeta woven cloth and which is used by the disposable products industry as a water-repellant backing for such items as hospital incontinent pads and baby's diapers. The particular film in issue has the claimed advantage that its free lengthwise edges resist curling when the film is fed through high speed machinery for the purpose of securing the film backing to the absorbent portion of the pad or diaper.
The plastic film industry manufactures films of varying thicknesses and designs to meet varying needs. The thin films plaintiff has manufactured include those which simulate woven cloth such as linen, box linen, shantung, boucle, and taffeta. The non-shiny appearance of these and other fabric-like designs is achieved by embossing the plastic film with a design having a certain minimum height above the surface of the film depending on that film's thickness. In polyethylene film of one mil thickness,1 for example, to avoid a shiny effect the design must have a height above the surface of at least 3 mils.
Simulation of the appearance of a particular woven fabric is accomplished by varying the planar dimensions, that is the dimensions of the design on the surface of the film. The taffeta-like appearance, for example, is produced by embossing the film with a series of raised bosses, separated by a network of continuous channels which intersect each other in a grid-like pattern. In addition, the channels must be spaced relatively close to each other to achieve the soft, taffeta-like effect.
Prior to the invention in question, plaintiff had manufactured a thin film with a taffeta-like appearance which was used as a water repellant backing for such items as diapers and incontinent pads. The planar dimensions of the film, that is the measurements of the spaces separating the channel-like areas, were the same as those of the film manufactured by plaintiff following the invention. The early films also had the same depth measurements as the post-invention film, that is, the films were about one mil in thickness and had boss heights of about 3-4 mils. The network of channels in this old taffeta-like film, however, ran diagonally to the free edges of the film, forming a diamond-like pattern of intersecting channels, enclosing raised bosses of the same shape.
The film claimed in the patent-in-suit and referred to by plaintiff as TAFF-A-FLEX differs from this old taffeta-like film in that the network of channels and bosses is reoriented so that they run perpendicular to the free edges of the film, rather than diagonal to the free edges as in the old so-called diagonal taffeta. The claimed advantage of this reorientation is that the new film, when fed through high speed machinery during the diaper or pad manufacturing process, does not funnel or curl at the edges, thus facilitating the glueing of the plastic film to the diaper or pad surface.2
In about 1960 or 1961 Clopay entered the disposable products market by supplying Diana Manufacturing Company with a taffeta embossed plastic film for use in the manufacture of incontinent pads. The incontinent pad industry had originally used paper backing which crackled and made noise under the patient and thereafter went to plain polyethylene films. It ultimately moved to taffeta embossed film because it helped prevent the pad from sliding under the patient and because it was aesthetically more appealing to view and to handle.
From the outset Diana encountered a problem with edge curl during the pad manufacturing process.3 Pads were made by joining the taffeta film backing to the pad wading and to a thick, heavy tissue which overlay the wading. The three plys were fed from supply rolls to a point where they were to be joined. The film backing extended out from the other plys creating a margin on which glue was to be placed. As the three plys were joined the glued margin was to be folded over and pressed firmly against the other layers securing the three plys together.
Edge curl occurred as the film backing was fed through the high speed machinery and subjected to stress along its lengthwise direction. As that stress was applied, the margin of the film to which the glue was to be applied curled, thereby preventing the film from coming into contact with the glue rollers. As a result no glue reached the film margin and the three plys of the pad could not be secured. The glue which did not reach the film margin instead built up on the belts of the machinery. Production often stopped while the machine belts were cleaned off and numerous pads were thrown out because they were not adequately glued.
The edge curl problem grew increasingly more serious as the pad manufacturing industry, for competitive reasons, demanded thinner films. While the 2 mil films which Clopay supplied at the outset edge curled, by about 1962, when Clopay began supplying 1 mil film, the problem became critical. Pad manufacturers needed even thinner films and Clopay, unable to supply thin films which did not edge curl, seriously considered closing down its taffeta film business.
From 1960 until 1966 when the co-patentees discovered the source of the edge curl problem, numerous unsuccessful efforts were made by Clopay, its customers, and other film manufacturers to solve the problem. In each instance, the approach taken was to attempt to reduce the tension applied to the film in the pad manufacturing process or to strengthen the film so as to increase its resistance to tension. Clopay, for example, experimented with the film manufacturing process itself, stiffening the film, changing the film's cooling rate during production and changing the speed of the production equipment. It also tried winding the film differently and decreasing the depth of the boss. Finally, Clopay encouraged its customers to alter the pad manufacturing process and even redesigned their customer's equipment, moving the film rollers closer to the glue rolls and otherwise attempting to reduce the film tension.4
None of these efforts proved fruitful. Then, sometime in 1966 Thomas McCauley, Plant Manager of the Augusta Division of Clopay, mentioned to Henry Trounstine, Manager of the Plastic Film Division of Clopay, his belief that the edge curl was related in some way to the diagonal orientation of the film's channels. He noticed that when he pulled on the taffeta film in a lengthwise direction, the diagonal channels imparted forces to the edge of the film which caused it to curl. Nothing was done in response to McCauley's idea, however, until about a month later when Trounstine accompanied McCauley to Diana in an attempt to solve the edge curl problem. While at Diana, McCauley again mentioned his belief that the problem was caused by the diagonal orientation. Acting upon McCauley's suggestion Trounstine took a piece of diagonal taffeta film and cut it so that the new free edge of the film was perpendicular to the channels, pulled along the lengthwise direction of that free edge and noted that the edge curl problem seemed to be alleviated. Neither Trounstine, McCauley nor John Ross, Clopay's contact at Diana who was also present at the demonstration, were sure at that point, however, that McCauley had actually hit upon the solution in a production context.
McCauley and Trounstine returned to Clopay where they consulted with Arthur Raffel, Clopay's Chief Engineer, about designing and ordering an engraving roll that would permit them to manufacture taffeta film with channels perpendicular to the free edge of the film. The taffeta film produced from that roll did not edge curl during the pad manufacturing process. During the year immediately following the introduction of the square taffeta Clopay's sales of taffeta film tripled and Clopay was able to reduce the film thickness in response to industry demand to ¾ mils.
Defendants argue that the patent-in-suit is invalid and unenforceable for obviousness over the prior art.5 Under 35 U.S.C. § 103, an invention is not patentable "if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have...
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