COFAX CORPORATION v. Minnesota Mining & Mfg. Co., Civ. 31-670.

• Decision Date: 25 July 1947
• Docket Number: Civ. 31-670.
• Parties: COFAX CORPORATION v. MINNESOTA MINING & MANUFACTURING CO.
• Court: U.S. District Court — Southern District of New York

79 F. Supp. 842

COFAX CORPORATION v. MINNESOTA MINING & MANUFACTURING CO.

Civ. 31-670.

United States District Court S. D. New York.

July 25, 1947.

Lackenbach & Hirschman, of New York City (Armand E. Lackenbach and Joseph Hirschman, both of New York City, of counsel), for plaintiff.

Burgess, Ryan & Hicks, of New York City (Newton A. Burgess, of New York City, George I. Haight, of Chicago, Ill., E. G. Carpenter and Harold J. Kinney, both of St. Paul, Minn., and M. K. Hobbs, of Chicago, Ill., of counsel), for defendant.

COXE, District Judge.

This is a motion by the defendant for summary judgment in its favor dismissing the complaint.

The suit is brought by the plaintiff, the Cofax Corporation, against the defendant, Minnesota Mining & Manufacturing Co., for a declaratory judgment decreeing that the Drew Patent No. 2,177,627 for adhesive sheeting, owned by the defendant, is invalid, and, if valid, not infringed by the adhesive sheeting and tape manufactured and sold by the plaintiff.

In prior suits instituted by the defendant in the District Court in Illinois against distributors of the plaintiff's adhesive tape for infringement of the patent, the patent was held valid and infringed by adhesive tape manufactured by the plaintiff. Minnesota Mining & Mfg. Co. v. Pax Plastics Corp., D. C., 65 F.Supp. 303. On appeal to the Circuit Court of Appeals for the Seventh Circuit the decree of the District Court was affirmed on January 9, 1947, (Minnesota Mining & Mfg. Co. v. International Plastic Corp., 159 F.2d 554) and final judgment on the mandate was thereafter entered.

The asserted ground of the motion is that the plaintiff, the Cofax Corporation, was in privity with the Cofax distributors in the Illinois litigation, and that the decree there is res judicata of the issues in the present suit.

There were originally two suits in the District Court in Illinois against distributors of Cofax tape, one commenced on May 29, 1945 and the other on May 31, 1945. The first suit named as defendants Pax Plastics Corporation, an Illinois corporation (later renamed Pax Tape Sales Company of Illinois); Harve Ferrill & Co., a Chicago partnership, and its individual members; the Cofax Corporation, a New York corporation; and Bulkley Dunton & Co., a New York partnership, and its individual members. The second suit named as sole defendant Freydberg Bros. — Strauss, Inc., a New York corporation. In the first suit, the Cofax Corporation, on motion, succeeded in having the attempted service of process upon it quashed on jurisdictional grounds, and thus took itself out of the case. The two suits were subsequently consolidated and determined as to the remaining defendants in one decree, in which Claims Nos. 1, 2, 3, 4, 5, 6, 7, 8 and 15 were adjudicated valid and infringed by the defendants respectively.

The present declaratory judgment suit was commenced on June 12, 1945 and the answer was filed on August 23, 1945. The complaint seeks a declaration with respect to Claims 4, 5, 6, 8, 10, 11, 15 and 16 of the patent. After the joinder of issue the defendant took the depositions of various officers and executives of the Cofax Corporation, Pax Tape Sales Company of Illinois, Harve Ferrill & Co., and Freydberg Bros. — Strauss, Inc., as adverse witnesses, for the purpose of showing the relation between Cofax and the various defendants in the Illinois suits. These depositions form part of the printed record on appeal in the Illinois suits, and are relied on by the defendant in support of the motion.

The issues in the present suit are the same as those adjudicated against the Cofax distributors in the Illinois litigation; the complaint, except for formal parts, is identical with the answers interposed by the distributors in Illinois; the critical claims in issue are the same; and the adhesive tape involved is the same tape held to infringe by the Illinois decree. There is, however, no evidence to support a finding that the plaintiff controlled or participated in the defense of the Illinois suits on behalf of the Cofax distributors. It refused to take part in the suits, although originally named as a party; the different distributors employed attorneys of their own choosing to represent them; and there is no evidence that the plaintiff defrayed or assumed any of the expense incurred by the distributors in the litigation. All that appears is that the New York attorneys for the plaintiff prepared answers for the distributors and sent the papers to Chicago for filing by the Chicago attorneys for the distributors, and, further, that Mr. Hirschman, one of the plaintiff's New York attorneys, and Mr. Shuman, production manager for the plaintiff, attended two days of a four-day trial of the suits, in Chicago, in February 1946, as observers. Clearly, these two detached incidents are not sufficient in themselves to raise an estoppel against the plaintiff in the present suit. See I. T. S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429, 47 S.Ct. 136, 71 L.Ed. 335; Bigelow v. Old Dominion Copper Min. & Smelting Co., 225 U.S. 111, 124, 126, 32 S.Ct. 641, 56 L.Ed. 1009, Ann.Cas.1913E, 875; Rumford Chemical Works v. Hygienic Chemical Co., 215 U.S. 156, 160, 30 S.Ct. 45, 54 L.Ed. 137.

The...