Eastman Kodak Company v. EI DuPONT de NEMOURS & COMPANY
| Decision Date | 19 January 1968 |
| Docket Number | Civ. A. No. 6038. |
| Citation | 284 F. Supp. 389 |
| Parties | EASTMAN KODAK COMPANY v. E. I. DuPONT de NEMOURS & COMPANY, Inc. |
| Court | U.S. District Court — Eastern District of Tennessee |
Francis T. Carr and Douglas G. Brace, New York City, Jackson C. Kramer, Knoxville, Tenn., George W. Petersen, Rochester, N. Y., for plaintiff.
Dexter N. Shaw, Gordon S. Rogers, Philadelphia, Pa., J. W. Baker, Knoxville, Tenn., C. Harold Herr, J. M. Castle, Jr., Wilmington, Del., for defendant.
Eastman Kodak Company is the assignee of the U. S. Patent Application S.N. 75,396 filed on December 12, 1960 by Dyer, as well as a predecessor patent application S.N. 400,544 of Dyer filed on December 28, 1953.
E. I. du Pont de Nemours & Company, Inc. is the assignee of U. S. Patent No. 2,985,995 granted on May 31, 1961 based upon application S.N. 68,130 filed on November 8, 1960 by Bunting and Nelson which claims the benefit of the filing date of an earlier application S.N. 752,451 filed on August 1, 1958.
This action stems from patent interference No. 93,581 conducted in the U. S. Patent Office. The claims involved in the proceeding are taken from defendant's Patent No. 2,985,995.1
The interference in the Patent Office was concluded and priority of invention was awarded defendant's predecessor, W. W. Bunting, Jr., et al.
Plaintiff filed this action under 35 U.S.C. § 146 to obtain a judicial review of the decision of the Board of Patent Interferences in Interference No. 93,581.
The pertinent part of the Act provides that the "record in the Patent Office shall be admitted on motion of either party * * * and the further cross-examination of the witnesses as the court imposes, without prejudice to the right of the parties to take further testimony." Plaintiff is thus entitled to a trial de novo of the issues involved in the interference.
In this proceeding, plaintiff seeks to have this Court award to it priority of invention with respect to the counts or claims involved, notwithstanding the adverse decision of the Patent Office. Plaintiff also seeks an order to the Commissioner of Patents directing him to issue to the plaintiff a patent containing as claims the counts at issue.
A statement of the subject matter involved in the Patent Office proceeding and the respective contentions of the parties will be helpful to an understanding of the problems presented by the motion.
The subject matter of the counts is a textile yarn product comprised of continuous multifilaments which are entangled with one another along the length of the yarn, the filaments being essentially free from ring-like or other filament loops, and the yarn having a so-called "coherency factor" of a given value. The coherency factor is measured in accordance with a test specially devised by Bunting and Nelson (hook-drop test) and described in the patent. In all but one of the counts, the yarn may be twisted. Count 4 requires that there be no twist. Count 6 affirmatively requires a twist.
It is the theory of plaintiff that in 1952 Richard Dyer, plaintiff's assignor, was requested to make a so-called novelty yarn which was intended to be used to weave a novelty fabric. Such fabrics are those having unusual surface effects of one kind or another. Dyer thereupon devised a method and apparatus for making such a yarn, which plaintiff calls an intermittently lofted yarn (ILY). A lofted yarn is one having a relatively large bulk. It is entangled but it has a multitude of filament loops along its surface which make it bulky. It was previously known to make such lofted yarn by introducing a bundle of continuous multifilaments of spun yarn to an air jet, the jet serving to entangle the multifilaments one with another, and withdrawing such yarn therefrom at a rate which was less than the rate of feed.
An intermittently lofted yarn (ILY) is one in which there are distinct segments of yarn which is both entangled and lofted alternating with distinct segments of entangled yarn which is not lofted and free of filament loops. The process Dyer employed in making ILY yarn was to utilize existing lofting equipment by which yarn was fed through an air jet at a greater rate than it was withdrawn therefrom, but Dyer modified this apparatus to alter the relative rates of in-put and take-up yarn speeds by periodically reducing the in-put yarn speed so as to equal the take-up yarn speed and concurrently applying tension on the yarn as it passed through the jet. This equalization of yarn speeds and application of tension produced the periodic entangled non-bulked loop-free segments of the yarn.
The yarn in question was shipped to and made into a novelty fabric by J. P. Stevens & Company, Inc. in Greensboro, North Carolina. No skeins or cones of such yarn are extant. But large samples, called head-ends, of this fabric were located, and individual pieces of the yarn removed for examination. Plaintiff says that the examination confirmed the fact that the novelty yarn made in 1952 by Dyer was intermittently lofted, and that the non-lofted segments of the yarn correspond fully to one or more of the counts at issue.
In 1953, Dyer filed a patent application, S.N. 400,544, describing the apparatus and method he had previously employed and the products made thereby, together with various modifications in the process to make other products, with or without bulk sections.
J. P. Stevens & Company, Inc. did not commercialize the novelty fabrics made with the Dyer 1952 yarns, but commercial interest was later generated in novelty fabrics in 1956. Dyer again prepared intermittently lofted yarns for use therein. In this instance and because a substantial market was anticipated, special equipment was purchased to enable these yarns to be made. In that operation, continuous multifilament yarn was again fed through an air jet and was removed from the air jet by means of a "twister", which is a device for winding the yarn on a cone and at the same time imparting some degree of twist to the yarn. In the particular apparatus employed by Dyer in 1956, bulking (that is, lofting) was deliberately imparted to the yarn by altering the rate of feed of the yarn to the jet in such a way as to overfeed the yarn when bulking was desired and to otherwise have the yarn in-put and out-put speeds approximately the same, while at the same time maintaining tension on the yarn.
Dyer made a great variety of intermittently lofted novelty yarns with this apparatus. Samples of these yarns and the fabrics made therefrom are available. Analysis of the unbulked segments of the yarns made by Dyer show that they fully respond to one or more of the counts of this interference.
Plaintiff says further that in 1958, Bunting and Nelson filed their patent application describing and claiming the loop-free entangled multifilament yarn of the counts in issue, as well as the methods by which it was made; that the Bunting and Nelson patent differs from the ILY yarn only by the absence of lofted segments.
In 1960, Bunting and Nelson filed a continuation in part application which resulted in Patent No. '995. The process claims were made the subject of a separate application which has since matured into patent No. 3,110,151.
A few weeks following the filing by Bunting and Nelson of their second application, Dyer filed Application S.N. 75,396, which is a continuation in part of S.N. 400,544.
Following the issuance of the Bunting and Nelson patent No. '995, Dyer copied certain of the claims thereof and provoked the interference, which is the subject matter of this suit.
After the period for taking proof had ended in the interference proceeding in the Patent Office, plaintiff discovered the head-end samples of novelty fabric made by J. P. Stevens in 1952. Upon obtaining the fabric samples, removing the yarn therefrom and testing the same, plaintiff claims to have determined that the ILY yarn made by Dyer in 1952 came within the scope of the counts. Plaintiff then petitioned the Board of Patent Interferences to reopen the period for taking testimony to enable it to take testimony with respect to Dyer's 1952 work. The Board denied the petition.
Plaintiff insists that its only recourse was to attempt to prevail upon the Board of Patent Interferences to accord it the priority benefit of Dyer's 1953 application of the invention of the counts, and that it was entitled to have the tangible (1952) evidence to support its claim to priority.
Plaintiff contends further that the very process and the very apparatus described in the 1953 application were used in the 1952 work. That the fact that the 1952 yarn actually made by the process with the apparatus described in the 1953 application had a coherency value as required by the counts can be proved, even though the tests therefor were not devised by the defendant until 1958 and hence Dyer could neither have known of it in 1952 nor described it in his 1953 application S.N. 400,544.
Plaintiff contends that the 1956 work of Dyer in again making ILY yarn is largely corroborative of the previous work done in 1952 by the same man, but evidence thereof was not presented to the Patent Office.
Plaintiff did not deem the 1956 work as an evidentiary matter standing alone to support Dyer's entitlement to his 1953 application.
The Board held that the 1953 Dyer application S.N. 400,544 did not disclose an embodiment of the invention represented by one or more of the counts (claims).
The first issue on the merits is who, as between Dyer and Bunting and Nelson, first possessed the invention of the yarn that is dealt with in the interference count.
Plaintiff claims that it is entitled to rely on either an actual reduction to practice or the benefit of Dyer's 1953 application, or both, as there is no requirement that plaintiff must make an election.
If it is decided that Dyer first possessed the invention, the second issue may be reached and that is whether plaintiff's...
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