Filmon Process Corporation v. Spell-Right Corporation

• Decision Date: 16 July 1968
• Docket Number: No. 21527.,21527.
• Citation: 404 F.2d 1351
• Parties: FILMON PROCESS CORPORATION, Appellant, v. SPELL-RIGHT CORPORATION et al., Appellees.
• Court: U.S. Court of Appeals — District of Columbia Circuit

404 F.2d 1351 (1968)

FILMON PROCESS CORPORATION, Appellant, v. SPELL-RIGHT CORPORATION et al., Appellees.

No. 21527.

United States Court of Appeals District of Columbia Circuit.

Argued April 18, 1968.

Decided July 16, 1968.

Mr. Edward C. Gonda, Philadelphia, Pa., with whom Mr. Irvin A. Lavine, Washington, D. C., was on the brief, for appellant.

Mr. William D. Hall, Washington, D. C., with whom Mr. Elliott I. Pollock, Washington, D. C., was on the brief, for appellees.

Before BASTIAN, Senior Circuit Judge, and LEVENTHAL and ROBINSON, Circuit Judges.

LEVENTHAL, Circuit Judge.

This is an appeal from a judgment entered for defendants, after trial without a jury. As appears from its opinion,¹ the District Court rejected the first count in the complaint of plaintiff-appellant for infringement of a patent on a "printing ribbon" on the ground that the invention was obvious in light of the prior art, and hence the patent was invalid. The District Court also held that defendants, now appellees, were not guilty of false marking, under 35 U.S.C. § 292, as alleged in the second count, and that there had been no breach of trade secrets as claimed in the third count. Appellant argues that the trial judge applied incorrect legal standards to clearly erroneous findings. We disagree and affirm.

A. Invalidity of Patent

1. Certain comments of the trial judge are cited as showing he did not accord proper weight to the statutory presumption that a patent is valid, 35 U.S.C. § 282. We think it plain, however, that the trial judge was merely alluding to the principle that the presumption of validity is weakened where the file wrapper references show that the examiner did not consider closely related prior art invoked by defendant to show obviousness.²

This is a strong case for invocation of that principle. Plaintiff's action is for infringement of a patent issued to Ploeger in 1961 for a printing ribbon, specifically a ribbon of two layers — a strip of flexible, pliable, ink-absorbent material fused along the extreme longitudinal edges to a shield of ink-impervious nylon film. The application encountered a citation by the examiner to the Francis patent 2,657,157. Francis's search for a printing ribbon with a backing that would keep the keys from striking the inked material, becoming dirty and requiring shut-down of the machine for periodic cleaning, led him to fuse a thermoplastic film (which includes nylon) across the entire width of ink-absorbent fabric, the two layers touching at all points. To differentiate from Francis,³ Ploeger stressed novelty in the feature of fusing the two layers solely along the extreme longitudinal edges.⁴ The patent examiner accepted this and the patent issued.

The patent examiner did not, however, make reference to the German Grundel patent issued in 1957, which also discloses an attempt to improve printing ribbons by affixing a thermoplastic ink impervious film to the edges of the ribbon.⁵ As Grundel says:

It has been found that these problems can be solved in a very simple way by using a thermoplastic film to cover one side of the ink ribbon, joining this film to the ink ribbon, or ink screen, respectively, by thermoplastic bonding on a very small strip along the longitudinal edges. The ink-carrying tissue on the entire surface of the ink ribbon, or ink screen, is thus covered by only a loosely touching film, yet, through thermoplastic bonding, this film is firmly joined at its borders to the tissue, thus preventing any shifting and assuring perfect originals or duplicates.

Grundel thus reveals the idea of bonding the film and the ribbon along the edges, which the patent examiner viewed as the non-obvious aspect of the Ploeger patent. The fact that the patent examiner did not refer to Grundel plainly undercuts the weight to be attributed to issuance of a patent to plaintiff's assignor.

2. Appellant claims signficant differences between Ploeger and Grundel, primarily relating to the method of bonding. Since Grundel only mentioned using silk as the ink-carrying part of the ribbon, and silk is non-fusible, the bond indicated in Grundel is formed by melting the thermoplastic film into the borders of the fabric, in other words using the thermoplastic itself as an adhesive. Ploeger argues that under one of his claims, the bond at the edges is a true weld, formed by heating both a fusible nylon ribbon and a fusible nylon film. Presumably this affords a significantly stronger bond, because of its chemical basis, than the adhesive method of fusing thermoplastic to fabric. Be that as it may, the difference in the type of bond is not so great as to render Ploeger's result non-obvious once Grundel's idea is considered as the background of prior art.

We note that Ploeger's application included claims for his invention where the ink bearing strip would be non-meltable fabric, such as silk or cotton, and he described the bond to be formed by melting on the nylon as a "fusing" of the thermoplastic to the fabric. His patent specification also states that when nylon is used as the ink-bearing material, that nylon may be "fused" with the nylon film by heating both. This phrasing indicates either that the difference in the types of bonding was not considered critical, or alternatively that the "weldable" quality of nylon was so obvious as to require no special mention. Both processes may be described as "fusing."

We note further that another claim in the Grundel patent clearly contemplated fusion by heat, calling for the addition of a third material, also thermoplastic. The two thermoplastics would thus be "welded" in the same sense as Ploeger. As nylon came increasingly to be used as the ink-carrying material in typewriter ribbons, it was an obvious ribbon material to substitute for silk. When applying the Grundel idea of sealing film and ribbon at the edges, it was also obvious to make the bond by using the known thermoplastic quality of nylon, and heating both ribbon and film rather than just the film.

We uphold the determination that the patent was invalid.

B. Rejection of False Marking Count

Appellant's second claim alleged a violation of the first paragraph of 35 U.S.C. § 292(a). The law provides:

§ 292. False marking

(a) Whoever, without the consent of the patentee, marks upon, or affixes to, or uses in advertising in connection with anything made, used, or sold by him, the name or any imitation of the name of the patentee, the patent number, or the words "patent," "patentee," or the like, with the intent of counterfeiting or imitating the mark of the patentee, or of deceiving the public and inducing them to believe that the thing was made or sold by or with the consent of the patentee; or

* * * * * *

Shall be fined not more than $500 for every such offense.

(b) Any person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States.

There was evidence that defendant Spell-Right Corp. had continued to send out advertising materials stating "Patented Construction Backing Keeps Type Clean" along with its product, a typewriter ribbon half inked and half a white substance for masking typing errors, after the firm had ceased to use ribbon processed by plaintiff in accordance with its patented idea. The trial judge held that there had not been the statutorily required intent to deceive the public or to counterfeit or imitate plaintiff's mark.

1. We first consider, and reject, defendants' contention that the judgment is not appealable. It is urged that 35 U.S.C. § 292(b) is a criminal statute, that the double jeopardy clause prohibits appellate review of a finding of not guilty in a criminal case where the United States is the prosecutor,⁶ and that the same rule bars an appeal challenging the correctness of a judgment against a private party bringing a qui tam action to enforce 35 U.S.C. § 292. We put aside the question whether the double jeopardy question is the same when the appeal is by a private person rather than the Government. In our view the double jeopardy clause does not apply where the nub of the action is civil qui tam enforcement of essentially remedial provisions.⁷ We are in agreement with the judicial pronouncements that 35 U.S.C. § 292(b), while penal, is not a criminal statute.⁸ In our view, that position is a sound basis for rejecting the double jeopardy claim in case of an action by an informer for misuse of his patent mark without his consent.⁹ That provision is designed to protect the exclusiveness of the use of the invention granted to the patentee. The patentee is given this remedy to protect his patent position, and as a practical matter, the patentee is the only likely enforcer of it, as recovery requires proof that the statements were made without...