Georgia-Pacific Corp. v. United States Plywood Corp., 127

CourtUnited States Courts of Appeals. United States Court of Appeals (2nd Circuit)
Citation258 F.2d 124
Docket NumberNo. 127,Docket 24656.,127
Decision Date01 July 1958


John Vaughan Groner, New York City (Charles B. Smith and Fish, Richardson & Neave, New York City, on the brief), for plaintiff-appellee.

William O. Heilman, New York City (James M. Heilman, and Heilman & Heilman, Washington, D. C., on the brief), for defendant-appellant.

Before MEDINA, LUMBARD and WATERMAN, Circuit Judges.

Certiorari Denied November 10, 1958. See 79 S.Ct. 124.

LUMBARD, Circuit Judge.

Defendant, assignee of Deskey patent, No. 2,286,068, and Bailey patents Nos. 2,363,492 and 2,363,927, appeals from a judgment by Judge Herlands, Southern District of New York, entered in an action for a declaratory judgment of invalidity and non-infringement of the three patents. Two counterclaims, one for infringement of the Deskey patent and another for unfair competition, were interposed in the suit. The district court held that all three patents were before the court, that all claims were invalid for lack of invention, that the specifications of the Deskey patent were fatally vague and indefinite and its claims did not distinctly claim the subject matter of the alleged invention, that the accused product did not infringe any of the three patents, and that there was no proof of unfair competition. Accordingly, Judge Herlands dismissed the two counterclaims and entered a declaration of invalidity and non-infringement. 148 F.Supp. 846.

We cannot agree with the district judge in several respects. Claim 1 of the Deskey patent claims an invention which was properly described with sufficient definiteness, and the accused product infringes this claim. We thus reverse the judgment of the district court and direct that judgment be entered in favor of United States Plywood Corporation declaring claim 1 of the patent valid and infringed and granting an injunction and such further relief as is appropriate against Georgia-Pacific Corporation. Moreover, in our view the Bailey patents were never in issue in the district court.

The Deskey patent, issued on June 9, 1942, is central to this litigation. The general subject matter of the patent is plywood panels, which consist of an odd number of thin plies of wood veneer with the grain in the adjacent plies crossed at right angles to each other. Since veneer is weak along the grain but relatively strong across the grain, the cross plies in plywood result in a wood product of considerable strength in relation to its weight and dimensions. The more inexpensive woods, however, such as Douglas fir, present a flat, wide-grained appearance with limited appeal for use by the public when esthetic qualities are important. Further, the defendant claims that Douglas fir and like woods have two tendencies which militate against their use as decorative panels. The first is that the face ply has a tendency to expand and shrink under changing moisture conditions, resulting over a period of time in unsightly cracks between abutting panels. Also, defendant contends, because of the peculiar graining of these woods, changing moisture conditions will cause the face plies to check or open up surface cracks on the exposed panel. These contentions will be dealt with more fully when we discuss the issue of patentability. It is enough to say at this point that the Deskey patent is by its disclosures directed toward reducing edge effects and checking by grooving the face ply. The result is a striated panel with multiple and alternating ribs and grooves cut to a substantial depth in the face ply but not as deep as the glue line, across the entire panel and running the length of the face ply. By striating defendant contends that stresses created by the difference in moisture content on the surface and within the ply are localized within and across the ribs, thus reducing the incidence of checking and the tendency of abutting panels to draw away from each other.

The Bailey Patents

The Bailey patents, one for a product and the other for a process, are directed toward another problem. If only one face ply of a panel with face plies of equal thickness is striated by the cutting away of wood, the striated panel is somewhat thinner than the reverse face. The resulting imbalance causes the entire panel to warp. The Bailey patents purport to teach the art that balance may be achieved by using a heavier ply for the exposed face. The grooving of this heavier face brings the panel into balance and this eliminates the tendency to warp. Both the Deskey striation and the Bailey balancing patents are used in Weldtex, defendant's trademarked product.

The plaintiff, Georgia-Pacific Corporation, first manufactured its accused panels in February 1955 and in March delivered a sample to defendant's manager in Newark. Immediately thereafter Sol W. Antoville, defendant's president, wrote a brief letter to plaintiff threatening vigorous action to protect its patent rights. It is this letter which provides the basis for the action for a declaratory judgment:

"March 11, 1955

"Dear Owen:
"While imitation is supposed to be the sincerest form of flattery, I must confess to a different reaction when I learned that you are imitating Weldtex.
"As you know, Weldtex is covered by U. S. Patents which have been recognized by the industry for more than thirteen years. Under the circumstances, we will of course take vigorous action to protect our patent rights and are turning the matter over to our counsel for appropriate action.

"Sincerely "Tony"

The district judge held that this letter raised a justiciable controversy respecting not only the Deskey patent but both Bailey patents as well. We cannot agree. Only the Deskey patent had "been recognized by the industry for more than thirteen years." Of more importance is the nature of the accused product. Georgia-Pacific's competing product is a striated plywood. Its balance is achieved, however, not through the use of face plies of unequal thickness but through the cutting of wide channels at regular intervals in the reverse ply. Consequently, there could not have been even a colorable claim that the accused product infringed the Bailey patents. That there was no intention to charge infringement of the Bailey patents is supported by the express testimony to that effect by Antoville and the use in the letter of the phrase "imitating Weldtex." That phrase clearly indicates a preoccupation with the similar appearance caused by striation. Since defendant did not claim infringement of the Bailey patents, there was no controversy concerning them and they were not properly before the district court. Treemond Co. v. Schering Corp., 3 Cir., 1941, 122 F.2d 702.


We turn now to the issue of patentability, necessitating a discussion of the Deskey patent in the light of the prior art.

Patents cited against the Deskey application in the Patent Office or cited in this litigation fully disclose that striation of wood products is old in the art. During the decade and a half following the First World War several patents were issued which concerned imitation cedar shakes, i. e. sawed shingles grooved to resemble old-fashioned hand-split shingles, then becoming popular, particularly in the Northwest. Putman No. 1,577,150 (imitation shake shingles), Melby No. 1,634,789 (shingle grooving machine), Melby No. 1,764,412 (imitation shake shingles), Putman No. 1,780,097 (shingle grooving machine), Craft No. 1,820,445 (shingle grooving machine), Gilmer No. 1,910,895 (shingle grooving machine), Gilmer No. 1,943,597 (process for grooving shingles), and Putman (Canadian) No. 302,038 (grooved lumber) all disclosed to those skilled in the art at least the decorative effects of grooving solid wood products. Abbott No. 1,610,233 also dealt with shingles and specifically referred to coniferous woods. In the Abbott patent, however, the surface was abraded by wire brushing or sand-blasting rather than gouged by a cutting tool, the abrasion removing the softer wood in the grain.

Striating or grooving was also used at a prior time for decorative effect in the plywood field. For instance, Melby produced a plywood product (Moray), the panels being superficially grooved so as to simulate moire cloth. Defendant urges that this Moray plywood was an abandoned experiment and thus not part of the prior art. As the district judge found, however, Moray plywood was a finished article which required no further experimentation, was commercially exploited, and was used in at least three different buildings. Although further exploitation foundered on an ineffective public demand, due at least in large measure to the advent of the depression, the Moray plywood must be considered as part of the prior art. Picard v. United Aircraft Corp., 2 Cir., 1942, 128 F.2d 632, 634, certiorari denied 317 U.S. 651, 63 S.Ct. 46, 87 L.Ed. 524.

Other relevant patents are Hansen No. 1,433,077; Maurer Nos. 2,202,109, 2,202,110, and 2,244,426; Elmendorf Nos. 1,819,775 and 2,018,712; Morden No. 1,773,695 and Gram No. 2,090,529. Hansen No. 1,433,077 taught that the warping of veneer panels could be substantially reduced by incising the face of the veneer with a pattern of short slits. This was a cutting, rather than a gouging operation, and no wood was removed. Incising also was central to the three Maurer patents. The subject matter of Maurer No. 2,202,109 was no wood finishing process designed to simulate hardwood grains in the less expensive woods by incising the surface and then filling the perforations. Maurer No. 2,202,110 disclosed a machine for performing the incision process and Maurer No. 2,244,426 covered another incision machine, this one for use with laminated panels. The latter patent...

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