General Plywood Corp. v. Georgia-Pacific Corp.

• Citation: 504 F.2d 515
• Decision Date: 21 November 1974
• Docket Number: GEORGIA-PACIFIC,No. 73-3701,73-3701
• Parties: GENERAL PLYWOOD CORPORATION, Plaintiff-Appellant, v.CORPORATION, Defendant-Appellee.
• Court: U.S. Court of Appeals — Fifth Circuit

Page 515

504 F.2d 515

184 U.S.P.Q. 131

GENERAL PLYWOOD CORPORATION, Plaintiff-Appellant, v. GEORGIA-PACIFIC CORPORATION, Defendant-Appellee.

No. 73-3701.

United States Court of Appeals, Fifth Circuit.

Nov. 21, 1974.

John A. Blair, Charles H. Blair, Harness, Dickey & Pierce, Birmingham, Mich., for plaintiff-appellant.

W. Philip Churchill, Ronald F. Ball, Fish & Neave, New York City, Thomas H. Gignilliat, Gignilliat & Abbott, Savannah, Ga., for defendant-appellee.

Before RIVES, GEWIN and GOLDBERG, Circuit Judges.

PER CURIAM:

This case had its genesis in 1959 when General Plywood Corporation (General Plywood) sued Georgia-Pacific Corporation (Georgia-Pacific) claiming infringement of its United States Patent No. 2,827,935. Since that time, related litigation in the United States District Court for the Western District of Kentucky has involved the validity of the same patent and a claim of infringement. United States Plywood Corp. v. General Plywood Corp., 230 F.Supp. 831 (W.D.Ky.1964). That court held the patent valid but not infringed. The Sixth Circuit affirmed the judgment of the district court in a well reasoned opinion. United States Plywood Corp. v. General Plywood Corp., 370 F.2d 500 (6th Cir. 1966), cert. denied, 389 U.S. 820, 88 S.Ct. 39, 19 L.Ed.2d 71 (1967). In the case sub judice the District Court for the Southern District of Georgia appointed a special master who held extensive hearings over a substantial period of time resulting in a record of more than 16,500 pages of typewritten and printed matter. Demonstrations of General Plywood's patented process and the process employed by Georgia-Pacific were conducted before the special master.

General Plywood has named its process 'Microseal.' It is a process of finishing wood in the white, that is, without the aid of fillers, top coats or finishing materials. It provides a method of treating flat wood surfaces so as to increase hardness, smoothness and reflectivity but reduce porosity and absorbency. In its complaint charging Georgia-Pacific with infringement, General Plywood sought injunctive relief, accounting for profits, treble damages and attorneys' fees.

The proceedings before the special master were stayed by agreement of the parties pending determination of the issues presented in the litigation in the District Court for the Western District of Kentucky. ¹ That litigation ended in 1967 and the proceedings in this case recommenced in 1968. Following the stay of proceedings, the special master took extensive evidence and made a report to the district court. The district court desired further findings and remanded the case to the master directing him to take further evidence and to make another report. General Plywood had urged such a course because of 'newly discovered evidence.' Again, additional evidence was taken by the special master. Upon final review the district court confirmed and adopted the findings of the special master that the patent had not been infringed. General Plywood Corp. v. Georgia-Pacific Corp., 362 F.Supp. 700 (S.D.Georgia 1973). ²

This case has been thoroughly litigated in all of its phases over an extended period of time. In addition to the proceedings here under review, the Kentucky district court conducted a trial lasting over 400 trial days. The district judge there referred to the massive amount of evidence which resulted in a 'voluminous record.' 230 F.Supp. at 833. In its opinion the Sixth Circuit described the litigation as 'a bitter controversy' and noted that the case involved a lengthy trial of complex pleadings and complex facts.

After the decisions of the Kentucky district court and the Sixth Circuit, General Plywood claimed that the issues in this case had not been resolved by that litigation and insisted upon a full trial of the infringement question. We have carefully considered the well prepared briefs of both parties and their contentions at oral argument and have reviewed the record. We are firmly convinced that the district court correctly decided the case and affirm on the basis of that court's decision. General Plywood Corp. v. Georgia-Pacific Corp., supra.

Both parties agree that the only issue before this court is the question of patent infringement. Although there was a motion for summary judgment before the special master, the district court made no reference to that motion because it evidently considered that the parties had received a full trial and that the evidence on the issue of infringement had been fully developed. ³ General Plywood concurs in that apparent conclusion. At oral argument both parties also assured the court that the principles set forth in Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788 are not applicable to the infringement issue, and that there is no claim of res judicata of collateral estoppel. Moreover, the district court was not asked to consider the teachings of the Blonder-Tongue decision. That decision more specifically dealt with the validity or nonvalidity of the patent involved rather than with the question of infringement.

In this court General Plywood takes the position that the controlling facts found by the special master and confirmed and adopted by the district court upon review are correct. It contends, however, that the facts found compel the legal conclusion that Georgia-Pacific has infringed its patent.

In amplification of its position, General Plywood urgently insists that the process used by Georgia-Pacific in its treatment of wood accomplishes substantially the same result by use of substantially the same process as that described in its patnet. Graver Tank Co. v. Linde Air Prod. Co., 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097 (1950). General Plywood's patent involves only a process. There is no claim of a patent on machinery or other equipment used in the process. Moreover, General Plywood vehemently asserts that the decisions of the Kentucky district court and the Sixth Circuit have no bearing on the issue of infringement which we must decide. It further asserts that even if those decisions were controlling, they are incorrect and should not be followed.

We agree with General Plywood that the decisions of the Kentucky district court and the Sixth Circuit are not binding on us, but we cannot agree that they should be totally ignored. Surely those decisions are informative as to the patented process here involved and instructive to some degree on the question of infringement; they will not be brushed aside as worthless. Moreover, it is strongly...