Kimberly-Clark Corp. v. Eastern Fine Paper, Inc.
| Decision Date | 28 October 1981 |
| Docket Number | Civ. No. 79-51-B. |
| Citation | 559 F. Supp. 815 |
| Parties | KIMBERLY-CLARK CORPORATION, BROWN-BRIDGE DIVISION, Plaintiff, v. EASTERN FINE PAPER, INC., Defendant. |
| Court | U.S. District Court — District of Maine |
COPYRIGHT MATERIAL OMITTED
Sumner T. Bernstein, Gregory A. Tselikis, Portland, Me., Nathanial R. French, Dayton, Ohio, Mitchell H. Kaplan, Kenneth Laurence, Boston, Mass., Richard A. Killworth, Dayton, Ohio, for plaintiff.
Paul M. Brown, Robert E. Kosinski, New York City, Arnold L. Veague, Bangor, Me., for defendant.
This is a patent action. The patent at issue is one involving the binder used in the manufacture of dry gummed paper. The claims of the parties are those which have come to be recognized as standard in a patent action.
After a five day bench trial on the merits at Portland in December 1980 before the undersigned, and the case having been fully briefed and argued by counsel, the Court renders the following opinion which constitutes the findings of fact and conclusions of law required by Fed.R.Civ.P. 52(a).
In these actions commenced by the former Brown-Bridge Mills, Inc. (Civ. No. 75-36-B) and its present corporate owner, Kimberly-Clark Corporation (Civ. No. 79-51-B),1 for enforcement of plaintiff's rights under a patent, the essential questions presented are whether defendant Eastern Fine Paper, Inc. is infringing plaintiff's patent and, if so, whether the patent is valid and enforceable.
Related claims of patent misuse and unfair trade practices, as well as claims under the antitrust laws, were severed for a separate trial to follow determination of the issues presented herein. (Mitchell, J.)2
This Court has subject matter jurisdiction over this patent action pursuant to 28 U.S.C. §§ 1338(a), 2201, and 2202 (1976). Venue is properly laid in this District pursuant to 28 U.S.C. §§ 1391(b) and 1391(c) (1976), and in the Northern Division of this District pursuant to 28 U.S.C. § 1400(b) (1976). Moreover, no objection has been made to venue or personal jurisdiction. Fed.R.Civ.P. 12(h).
The Brown-Bridge Mills, Inc. filed the original complaint in Civ. No. 75-36-B on May 2, 1975 alleging, inter alia, that plaintiff was the assignee of United States Patent No. 3,202,539 (the Holt patent)3 and that defendant had infringed and would continue to infringe the Holt patent by making, using and selling gummed paper within the scope of the patent. Plaintiff sought damages, injunctive relief, reasonable attorney's fees and costs.
Defendant's answer, inter alia, denied the material allegations of the complaint, alleged as an affirmative defense the invalidity of the Holt patent for "one or more" of several reasons and counterclaimed for a declaratory judgment as to the invalidity of the patent and noninfringement by defendant.
Discovery proceeded through the summer of 1976. On September 8, 1976 the Court (Gignoux, J.) granted defendant's motion to file a second counterclaim alleging the failure of the Holt applicants to disclose to the Patent Office material facts which, if disclosed, would have caused the Office to deny the Holt Patent application.
Following further discovery, plaintiff moved to dismiss the complaint and for partial summary judgment on defendant's counterclaims. Plaintiff sought this voluntary dismissal for the reason that it had learned, as a result of discovery, that the binder formulation then used by defendant in the manufacture of its gummed paper products did not infringe the Holt patent. Plaintiff asserted, however, its belief that formulations previously used by defendant had infringed the Holt patent. By an order dated May 10, 1978 and the judgment entered thereon on May 17, 1978 the Court (Gignoux, J.) dismissed plaintiff's complaint with prejudice to any claim that the Holt patent is infringed by any product having "solubility characteristics above those of a compound having a PVA:PVP ratio of 75:25"; with prejudice to any claim for past infringement by any other products of defendant; and with prejudice to any claim of past antitrust violations by defendant. Plaintiff's motion for partial summary judgment was denied.
A final pretrial conference was scheduled for December 31, 1978. On March 14, 1979, however, the Court extended the time for discovery until June 30, 1979.
On April 6, 1979 plaintiff filed its second complaint which, together with defendant's answer thereto and defendant's counterclaim to the first complaint, presented the issues tried to the Court and which are the subject of this opinion. The second complaint alleged, inter alia, that tests performed "within the past several months" on samples of defendant's finished paper product indicated that the binder then in use by defendant infringed the Holt patent. Accordingly, plaintiff sought injunctive relief, actual and punitive damages, reasonable attorney's fees and costs. Defendant denied the material allegations of the complaint and counterclaimed for a judgment of noninfringement and invalidity.
At a pretrial conference held on June 22, 1979 the Court (Gignoux, J.) ordered that the two actions be consolidated; that defendant's answer to the new complaint incorporate the counterclaims asserted by defendant in the earlier action; and that thereafter the consolidated action should proceed upon the basis of the complaint and answer in the new action, Civ. No. 79-51-B. The parties were ordered to complete discovery and to be ready for a final pretrial conference by December 31, 1979.
The next pretrial conference, however, was held on February 13, 1980, following which the Court (Mitchell, J.) granted plaintiff's motion for a separate trial of (1) the patent validity and infringement issues and, thereafter, of (2) the patent misuse, unfair trade practice and antitrust issues.
A final pretrial conference with respect to the patent validity and infringement issues was scheduled for September 18, 1980, with trial to follow on October 20, 1980. On September 8, 1980, however, the Court (Gignoux, J.) extended the time for discovery with respect to the patent validity and infringement issues to November 1, 1980. The final pretrial conference ultimately was held on November 18, 1980 at the New York chambers of the undersigned by agreement of counsel.
The case was tried to the Court at Portland on December 8-12, 1980 (Timbers, J.).
Both plaintiff and defendant are and have been engaged in the business of selling various paper products including dry gummed paper.4 Dry gummed paper is used for products such as labels and stamps which are printed on one side and on the other side have a dry adhesive coating capable of becoming sticky when moistened with water so that the product can be affixed to another surface.5
On August 24, 1965 United States Patent No. 3,202,539 (the Holt patent) was granted to The Brown-Bridge Mills, Inc.6 Plaintiff alleges, and defendant does not dispute, that on December 31, 1977 The Brown-Bridge Mills, Inc. was merged into Kimberly-Clark Corporation and that since that date Kimberly-Clark Corporation has been the owner of all right, title and interest in and to the Holt patent, including the right to recover for any infringement thereof.
As the result of the prior proceedings outlined above, there emerged the following issues which were tried to the Court and to which this opinion is addressed.
Plaintiff alleges, and defendant denies, that defendant knowingly, willfully and deliberately has infringed the Holt patent by manufacturing and selling dry gummed paper embodying the claims of the Holt patent.7 Specifically, plaintiff alleges that the binder used by defendant to affix the adhesive coating to the base paper falls within the claims of the Holt patent.8
Defendant, in addition to denying the material allegations of the complaint, alleges by way of affirmative defense that the Holt patent is invalid, void and unenforceable on the grounds of (a) prior use; (b) prior patent; (c) lack of invention of the subject matter claimed by the applicants for the Holt patent; (d) prior invention; (e) obviousness; (f) indefiniteness of the claims; and (g) fraud on the Patent Office by failure to disclose relevant information.
Defendant seeks, by way of counterclaim, a judgment dismissing the complaint and holding the Holt patent invalid, void and unenforceable; enjoining plaintiff from representing to any person that defendant has infringed or is infringing the Holt patent; and recovery of reasonable attorneys' fees and costs.
The first question for determination is whether the binder used by defendant since approximately July 1978 in the manufacture of dry gummed paper infringes the Holt patent.
The Holt patent is entitled "Non-Curling Gummed Paper". The invention disclosed therein is said to relate "to the production of gummed paper having thereon an adhesive coating of the remoistenable type."9 The binder material currently being used commercially by defendant is a substance known as "3RB-50". It is composed of 90 parts of polyvinyl acetate ("PVA") and 10 parts of polyvinyl pyrollidone ("PVA").10
It is plaintiff's position that the Holt patent provides specific coverage on dry gummed paper11 incorporating any binder which is "insoluble in water" and having the other characteristics called for by the Holt patent claims. Plaintiff further asserts that 3RB-50 is such a binder.
It is defendant's position that the invention described in the Holt patent is a "method of forming the adhesive coating of glue particles and resin binder on the paper base" by an electrostatic process, and that plaintiff's only purpose in specifying the use of an insoluble binder was to distinguish its invention from that of United States Patent No. 2,793,966 (the "Davis" patent)12 which used a water...
To continue reading
Request your trial
-
North Dakota Fair Housing Council, Inc. v. Allen, No. A1-03-119.
...the appellate court will not have to consider the same issues again if a second appeal is brought"); Kimberly-Clark Corp. v. Eastern Fine Paper, Inc., 559 F.Supp. 815, 836 (D.Maine 1981) ("If the judgment entered today were to be treated as final, thus providing the basis for a piecemeal ap......
-
Sea Salt LLC v. Bellerose, 2:18-cv-00413-JAW
...706 (1st Cir. 1996)). A court may properly make a Rule 54(b) certification sua sponte. See Kimberly-Clark Corp., Brown-Bridge Div. v. E. Fine Paper, Inc., 559 F. Supp. 815, 836 n.3 (D. Me. 1981).1III. DISCUSSION A. Entry of Default Judgment Following the Court's factual determinations at th......