Ibis Enterprises, Limited v. Spray-Bilt, Inc.

• Decision Date: 24 May 1963
• Docket Number: Civ. No. 10648-M.
• Citation: 220 F. Supp. 65
• Parties: IBIS ENTERPRISES, LIMITED, and Rand Development Corporation, Plaintiffs, v. SPRAY-BILT, INC. and David H. Richman, Defendants.
• Court: U.S. District Court — Southern District of Florida

220 F. Supp. 65

IBIS ENTERPRISES, LIMITED, and Rand Development Corporation, Plaintiffs, v. SPRAY-BILT, INC. and David H. Richman, Defendants.

Civ. No. 10648-M.

United States District Court S. D. Florida, Miami Division.

May 24, 1963.

Fowler, White, Gillen, Humkey & Trenam, Miami, Fla., and Byerly, Townsend, Watson & Churchill, New York City, for plaintiffs.

John Cyril Malloy, Miami, Fla., for defendants.

McRAE, District Judge.

In accordance with the Findings of Fact and Conclusions of Law entered herein, it is

Ordered, adjudged and decreed that:

1. The said Findings of Fact and Conclusions of Law are hereby adopted and made a part of this Final Judgment.

2. Each of the Defendants is hereby enjoined from any further infringement of claims One (1) through Six (6) of patent No. 2,933,125 and claim Eleven (11) of patent No. 2,787,314.

3. The Plaintiffs recover from the Defendants damages to be determined after an accounting in a sum adequate to compensate the Plaintiffs for the infringement and contributory infringement by the Defendants of the Plaintiffs' patents in suit No. 2,933,125 and 2,787,314.

4. The Plaintiffs recover from the Defendants damages to be determined after an accounting in a sum adequate to compensate the Plaintiffs for all unfair competition and trade by the Defendants against the Plaintiffs.

5. The Plaintiffs herein recover from the Defendants cost and disbursements to be hereinafter taxed.

FINDINGS OF FACT

1. Parties

Plaintiff Ibis Enterprises, Limited, is a corporation of Bermuda. Plaintiff Rand Development Corporation is a corporation of Ohio and has a principal place of business at Cleveland, Ohio. Defendant Spray-Bilt Inc., is a corporation of Florida and has a principal place of business at Hialeah, Florida. Defendant David H. Richman is an individual residing in Miami, Florida. Plaintiff Ibis Enterprises, Limited, is the owner of the two patents in suit. Plaintiff Rand Development Corporation is the exclusive licensee of Ibis Enterprises, Limited, under the patents in suit and shares the profits derived from said patents with Canadian Ingersoll Rand Company, a subsidiary of Ingersoll Rand Company.

2. Civil Action

This is a civil action for infringement of United States Patent No. 2,933,125 filed on August 6, 1953 and granted on April 19, 1960 and United States Patent No. 2,787,314 filed on October 13, 1954 and issued April 2, 1957, and for unfair competition in trade. Patent No. 2,933,125 is the main or basic patent and relates to methods and apparatus for the simultaneous deposition of fiber reinforced plastic; patent No. 2,787,314 relates to improvement on the methods and apparatus of the main patent. This action was commenced on April 4, 1961.

3. Background of Patentee

David F. Anderson, the patentee of the patents in suit, is a man of attainments and undenied qualifications. He is a British educated graduate engineer, and he served as a group captain in the Royal Air Force during World War II and did experimental and test work because of his engineering background (Anderson Tr. pp. 9-12). Following his retirement from the Air Force, Anderson formed Fiberlast of Canada, a Canadian Corporation (Anderson Tr. pp. 9-12, 51-52) which acquired exclusive rights under the "Vidal" process for forming glass reinforced plastic articles. Anderson became familiar with the several other commercial processes then in use for forming such articles, each of which processes may be grouped in one of two types: "hand lay-up" and "matched die (or metal) mold" (Anderson Tr. 208-220; Tr. 163-166).

4. Prior Art Hand Lay-Up Method

The "Vidal" process involved, in part, the "hand lay-up" process of laboriously hand tailoring and fitting of fiberglass cloth or mat (Exhibit 8) on a mold, hand mixing small batches of a catalyst, promoter and liquid resin mixture which was poured on the tailored cloth. It was necessary to mix these components in small batches from time to time, as the liquid resin solidified within a short time once the setting components of catalyst and accelerator were added. In the "Vidal" process the resin and cloth were covered with a cellophane sheet, and pressure was then applied thereto to distribute the resin (Anderson Tr. p. 52). In the hand lay-up process the plastic was distributed and air bubbles were removed by hand brushing or rolling (Tr. pp. 87, 164, 165; Anderson Tr. pp. 214, 215).

5. Prior Art Matched Metal Mold Method

(a) Another process then in use for forming glass reinforced plastic articles was the so-called "matched metal mold" or "matched die" process. This process involved the use of a male mold and a complementary female mold. A preform, which comprised chopped strands of fiberglass held loosely in position by a binder of starch or resin and had a general conformation of the molds (Trial Exhibit 17.1), was then placed on one of the molds; resin, catalyst and promoter were then mixed and poured onto the preform; and finally, the other mold was pressed onto the first mold, squeezing the preform and thereby distributing the resin and forming the resultant plastic article (Tr. pp. 73, 114; Rand Tr. pp. 175, 176).

(b) The fabrication of a preform used in this process is a separate process in which glass roving, a rope-like material made up of several strands of glass loosely held together (Patent No. 2,933,125, Column 1, lines 21-29), is cut and blown onto a screen having the general conformation of one of the matched metal molds. A vacuum within the screen draws the glass fibers onto the screen. After or during deposit of the fibers on the screen, the fibers are lightly coated with either a powdered or liquid resin or starch merely to hold the fibers together to permit gentle handling of the preform (Tr. pp. 112-114).

6. Anderson Early Work and Invention

(a) Anderson was dissatisfied with the hand lay-up process because of the hand mixing of resins and setting components, the mess created by pouring and spreading the liquid plastic, and the tedious and time-consuming work required to tailor and drape the fiberglass mats to fit compound curves on the mold (Anderson Tr. pp. 54-56). He was further satisfied that he could devise a way to eliminate the expense of preform preparation and the high costs and the limited scope of application associated with the molding step required in the "matched metal mold" process (Anderson Tr. p. 59).

(b) Anderson struggled with this problem, experimenting with tailoring mat, blowing fibers into a stream of premixed plastic, and spraying admixed plastic on tailored mats (Anderson Tr. 53-59). He finally solved the problem associated with the then existing various methods of forming glass reinforced plastic articles by the invention of apparatus and process of simultaneous deposition of chopped fiberglass and liquid plastic. A full and written description of the invention and apparatus was sent to C. A. Adee in the United States in July, 1952, which serves as a basis for the application for patent 2,933,125 (Tr. pp. 201-203).

7. Patent in Suit No. 2,933,125

(a) The apparatus (claims numbered 1, 3 and 6) of the patents in suit is described by the following passages from the specification of patent No. 2,933,125:

"the depositor is shown as comprising a self-feeding cutter 10 mounted on and driven by a motor 11. Fiber rope, or roving, is guided by a feed pipe 12 into one side of the cutter 10 wherein the roving is cut into the desired lengths and ejected from the opposite side of the cutter 10. Mounted on the opposite ends of the cutter frame 13 are spray guns 14 arranged to direct a spray of atomized plastic on the fiber cuttings ejected from the cutter 10. The sizes and weights of the cutter 10, motor 11 and spray guns 14 are such that the depositor may be hand-held and readily manipulated by the operator to direct a continuous stream of plastic impregnated fiber against a form or mold to build up a lamina of the reinforced plastic article being fabricated." (Column 2, lines 39-52.)

The form of cutter described in the patent comprises a pair of cylindrical rollers parallel to and in frictional contact with each other. One of the rollers is driven by the motor and in turn drives the other roller by the frictional contact between them. One cutter roller has a cutting element like a razor blade imbedded in circumferential spaced relation so as to cut roving passing in between the rollers (Patent 2,933,125, column 2, lines 39-72, column 3, lines 1-19).

(b) The methods (claims numbered 2, 4 and 5) of patent No. 2,933,125 are described by the following passages from its specifications:

"The present invention includes the method of, and a hand-held device for cutting roving into desired lengths, ejecting the cut fiber into a spray of resin and then depositing the impregnated roving on a mold. By cutting the fiber, impregnating it and applying it all in one operation, the operator may readily deposit directly on to the mold only the appropriate quantities of fiber and activated resin thereby reducing to a minimum wastage of resin, fillers and pigment. Moreover, with this invention the resin and its setting components are mixed only at the point of actual use and hence only as needed." (Column 1, lines 55-65.)

When polyester resin is activated by being mixed with an accelerator and a catalyst, there is a change from a liquid to a solid within a few minutes. In the practice of the process of the patents in suit, the setting components of the accelerator and promoter are contained in separate sprays. The setting components of the liquid plastic are thus mixed only upon the meeting and commingling of the sprays of liquid plastic (Patent 2,933,125, Column 4, lines 19-27; Claim 6).

8. Anderson Inventions Filled Need of Industry

(a) Others recognized the need for new and better apparatus and processes in the field of glass-reinforced plastic. After observing a demonstration of the Anderson apparatus and process, ...