Congoleum Industries, Inc. v. Armstrong Cork Company

• Decision Date: 23 February 1972
• Docket Number: Civ. A. No. 41762.
• Citation: 339 F. Supp. 1036
• Parties: CONGOLEUM INDUSTRIES, INC. v. ARMSTRONG CORK COMPANY.
• Court: U.S. District Court — Eastern District of Pennsylvania

339 F. Supp. 1036

CONGOLEUM INDUSTRIES, INC. v. ARMSTRONG CORK COMPANY.

Civ. A. No. 41762.

United States District Court, E. D. Pennsylvania.

February 23, 1972.

COPYRIGHT MATERIAL OMITTED

Drinker, Biddle & Reach, by Lewis H. Van Dusen, Jr., Patrick T. Ryan, Philadelphia, Pa., Brumbaugh, Graves, Donohue & Raymond, by Eben M. Graves, Allan H. Bonnell, Joseph D. Garon, Bradley B. Geist, New York City, Sullivan & Cromwell, by Robert MacCrate, Michael M. Maney, New York City, G. Scott Romney, Ralph M. Jerskey, Richard T. Laughlin, for Congoleum Industries, Inc.

Howson & Howson, by Dexter N. Shaw, Gordon S. Rogers, Philadelphia, Pa., Theodore L. Thomas, Barry E. Haverstick, George L. Herr, Lancaster, Pa., Morton, Bernard, Brown, Roberts & Sutherland, by W. Brown Morton, Jr., Malcolm L. Sutherland, Washington, D. C., for Armstrong Cork Co.

FINDINGS OF FACT, DISCUSSION, CONCLUSIONS OF LAW AND ORDER

HANNUM, District Judge.

Presently before the Court is an action for infringement of United States Letters Patent 3,293,094 and 3,293,108 (hereinafter the "'094 patent" and the "'108 patent", respectively). The '094 patent is entitled "TEXTURED FOAM PROCESSES" and the '108 patent is entitled "TEXTURED FOAM PRODUCTS". Both patents were granted on December 20, 1966 and were issued to plaintiff's predecessor, Congoleum-Nairn, Inc., as an assignee of the applicants R. Frank Nairn, Joseph C. Harkins, Jr., Frank E. Ehrenfeld, Jr., and Hilton Tarlow. After extensive hearings, and after careful examination and consideration of the exhibits and records admitted at trial, the Court makes the following:

FINDINGS OF FACT

1. Plaintiff, Congoleum Industries, Inc., is a corporation organized and existing according to the laws of the State of Delaware. Plaintiff was substituted by stipulation of the parties for Congoleum-Nairn, Inc., the original plaintiff, its predecessor in interest in the patents in suit. Plaintiff is the owner, by assignment, of all the right, title and interest in and to the patents in suit.

2. Defendant, Armstrong Cork Company, is a corporation organized and existing under the laws of the State of Pennsylvania.

I History of Patented Process

3. The floor covering industry has traditionally been a design-style industry.

4. For at least the last fifty years, the register of colored design with embossed patterns (e. g., color design coinciding exactly with embossed design in repetitive fashion) has been of importance because of the visual accent provided thereby and the proven commercial demand for such products.

5. By the early part of the 1950's, techniques for producing cellular foam vinyl resin compositions by utilizing chemical blowing agents were developed. Congoleum and its competitors recognized the potential applicability of these techniques for surface coverings, particularly resilient floor coverings.

6. By at least the middle 1950's, techniques had been developed for producing foam vinyl resinous compositions by using chemical blowing agents, such as azodicarbonamide, and stabilizer-promoters for lowering the decomposition temperature of the azodicarbonamide relative to the temperature at which the azodicarbonamide would decompose by itself. Among such known stabilizer-promoters were zinc octoate and dibasic lead phosphite.

7. Because it was known that embossing would enhance sales appeal, research was directed to developing techniques for producing vinyl resinous composition having an embossed foam decorative layer. However, none of the embossing methods developed to accomplish such purposes were commercially successful.

8. In 1961, the management of plaintiff's predecessor desired to introduce new floor covering products to take advantage of the technology which had been developed in the foam vinyl field.

9. While it was recognized that embossed patterns in register with a colored design were desirable, the only practical methods recognized by the flooring industry as applicable to foam vinyl floor coverings for obtaining such patterns involved high costs and gave only limited effects. This caused Congoleum to introduce its early foam vinyl floor covering with a smooth unembossed surface.

10. In June 1962 and for several years thereafter, plaintiff manufactured and sold, as unembossed "Cushionflor", a decorative floor covering comprising a felt backing, a cellular foam layer, a printed decorative layer and a clear wear layer. The foam layer was formed from a plastisol including polyvinyl chloride resins, azodicarbonamide, and dibasic lead phosphite. In making the product, the felt base was coated with a plastisol and subjected to sufficient heat to gel the resin but insufficient to decompose the azodicarbonamide. Conventional printing inks comprising a mixture of a pigment and a resin binder blended with a vehicle were printed on the gelled plastisol by a rotogravure printing process in the form of a design, the inks were dried to remove the volatiles, and a clear coat in the form of an organosol was applied. Thereafter, the product was heated to fuse the resinous compositions and to decompose the azodicarbonamide to provide a structure with a cellular interlayer.

11. Following the introduction of flat Cushionflor in June 1962, research on embossing techniques applicable to foam vinyl floor coverings continued, with particular emphasis being given to mechanically embossing the "Cushionflor" product.

12. During a meeting on January 25, 1963, Frank Nairn suggested that a new approach to the problem of obtaining embossing would be to find a chemical which could be put in the ink which would cause embossing.

13. In January 1963, the chemical embossing proposal was referred to Congoleum's Research and Development Department for consideration. This approach was rejected by the Director of Research and Development after no one could conceive of how the chemical embossing could be accomplished.

14. Notwithstanding the rejection of chemical embossing by the Research and Development Department, members of the Manufacturing Department concluded that the idea merited investigation.

15. Joseph C. Harkins, Jr., plant manager of Congoleum's Marcus Hook plant, Hilton Tarlow, chief chemist at Marcus Hook, and Frank E. Ehrenfeld, a plant chemist assigned to Marcus Hook, acting in concert, planned a research program directed toward determining whether there were specific compounds and a method which could be employed to chemically emboss foam vinyl floor coverings.

16. This program led to the identification of several chemical compounds (subsequently termed inhibitors) which, when applied to the surface of a foamable vinyl resinous composition would retard the decomposition of the blowing agent during the heating operation.

17. The Congoleum Research and Development Department, after being advised of the fact that chemical embossing had been demonstrated to be workable, was requested to assist the Manufacturing Division in the identification of the best inhibitor for plant production. The subsequent testing program led to the discovery of additional chemical compounds which were suitable inhibiting agents for use in chemical embossing.

18. Congoleum conducted its first plant trial of chemical embossing on April 11, 1963. Hydroquinone was used as the inhibitor. It was included in one of the inks and printed on the surface of the gelled plastisol normally used to manufacture the flat Cushionflor product. Although the hydroquinone discolored the foam, embossed effects were produced in register with the printed design.

19. Thereafter, a series of plant trials were conducted, using different compounds as inhibitors, which trials ultimately led to the commercial production of plaintiff's chemically embossed products sold under the trademark of "New Dimension Cushionflor".

20. In these trials, a felt backing was coated with a plastisol including polyvinyl chloride resins, azodicarbonamide and dibasic lead phosphite. The coated backing was heated sufficiently to gel the plastisol but not to decompose the azodicarbonamide. Conventional printing inks comprising a mixture of a pigment and a resin binder blended with a vehicle were printed in selected areas on the gelled plastisol by a rotogravure process to provide a design. Additionally, at least one of the inks contained fumaric acid as an inhibitor. The inks were dried to remove the volatiles, and a clear coat in the form of an organosol was applied. Thereafter, the product was heated uniformly to fuse the resinous composition and to decompose the azodicarbonamide selectively to provide a structure with a cellular interlayer. The extent of heating was controlled as to time and temperature to produce depressed areas where the ink containing fumaric acid had been applied.

21. The manufacture for commercial sale of a product produced by the method described in the '094 patent was commenced on August 22, 1963, with the first sale of products which were so manufactured taking place in September of 1963.

22. The chemically embossed Cushionflor marketed by Congoleum enjoyed outstanding commercial success and had such a profound effect on the vinyl sheet floor covering market that the major producers were compelled to develop and market competitive chemically embossed products.

II The Patents in Suit

23. On September 18, 1963, application Serial No. 309,738 (the "'738 application") was filed in the United States Patent Office naming Messrs. Nairn, Harkins, Tarlow and Ehrenfeld as inventors of certain "Textured Foam Products" and the methods for producing them disclosed therein.

24. The '094 patent was granted on application Serial No. 522,006 filed December 20, 1965, which was a continuation-in-part of said application Serial No. 309,738 filed September 18, 1963, and application Serial No. 377,023 filed June 22, 1964.

25. Application Serial No. 377,023 filed June 22, 1964, was a continuation-in-part of application Serial No. 309,738 filed September 18,...