Laminex, Inc. v. Fritz
| Decision Date | 13 August 1974 |
| Docket Number | No. 73 C 1554.,73 C 1554. |
| Citation | 389 F. Supp. 369,183 USPQ 215 |
| Parties | LAMINEX, INC., Plaintiff and Counter-Defendant, v. Ronald C. FRITZ and Identatronics, Inc., Defendants and Counter-Plaintiffs. |
| Court | U.S. District Court — Northern District of Illinois |
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Philip H. Mayer, Wolfe, Hubbard, Leydig, Voit & Osann, Chicago, Ill., Dalbert U. Shefte, Richards, Shefte & Pinckney, Charlotte, N. C., Fritz L. Schweitzer, Mandeville & Schweitzer, New York City, for plaintiffs.
Thomas E. Dorn, Kinzer & Dorn, Chicago, Ill., for defendants.
This is presently an action for patent infringement in which the defendants counterclaim for declaratory judgments of noninfringement, patent invalidity and unenforceability.
Previously the suit was more complex: plaintiff asserted claims of trademark infringement, unfair competition and deceptive trade practices; defendants counterclaimed for alleged violations of the antitrust laws. These issues, however, have been resolved.1
By way of assignment, Laminex, Inc. is the owner of all right, title, and interest in and to the two patents in suit. United States Letters Patent No. 3,417,497, issuing December 24, 1968 on an application of Donald F. Hannon, is directed to a laminated plastic identification card. United States Letters Patent No. 3,413,171, issuing November 26, 1968, likewise on an application of Donald F. Hannon, is directed to a process of manufacturing that card.
The Court has jurisdiction over the parties and over the subject matter of both the complaint and counterclaim. 28 U.S.C. §§ 1338(a), 2201. Venue is properly laid in this district. 28 U.S.C. §§ 1391(c), 1400(b).
Plaintiff accuses the defendants of direct, contributory, and inducement of infringement of claims of both the Hannon "manufacture and sale of identification cards to Arnold Engineering Co. of Marengo, Illinois, and the solicitation and acceptance of orders for identification cards from Rich Township High Schools, Richton Park, Illinois and Kankakee School District of Kankakee, Illinois."2 Although the defendants admit having sold identification card materials to Arnold Engineering Co. and having sold identification cards to the Rich Township High Schools and the Kankakee School District, they deny that any of their acts, including "the sale and the assembly of identification cards and the sale of materials for identification cards" have infringed claims of either the '171 or the '497 patent.3
Patent infringement is a fact issue on which the plaintiff has the burden of proof by a preponderance of the evidence. Becker v. Webcor, Inc., 289 F.2d 357, 360 (7th Cir. 1961), cert. denied, 368 U.S. 970, 82 S.Ct. 445, 7 L.Ed. 2d 398 (1962); Gyromat Corp. v. H. G. Fischer & Co., 167 USPQ 326, 342 (N.D. Ill.1970).
The plaintiff manufactures and sells both completed identification cards and partially assembled card packs for which final lamination is effected by the customer under notice of the Hannon '171 and '497 patents. Plaintiff's patent notice is also used on its PIP core material, but is not used on its overlaminate film when the overlaminate is sold separately. The plaintiff sells three different core materials. Each possesses a central sheet of vinyl plastic that is covered on each side with a layer of thermoplastic bonding resin, the resins being either polyethylene with melt index of 3.7, polyethylene with melt index of 7.0, or acrylic acid copolymer of polyethylene with melt index of 3.5. The plaintiff also sells three different overlaminate materials, each having a layer of polyester material coated on one surface with one of the three bonding resins just identified. Plaintiff does not segregate its card materials by melt index, but sells the core-overlaminate materials in any of the following melt index combinations:
3.7-3.7 3.5-3.5 3.7-3.5
3.7-7.0 7.0-7.0 3.5-7.0
All of these combinations afford essentially equal bonding characteristics and are essentially equal in their tamper-resistant qualities as finished identification cards.
The identification card core sheet sold by the defendants is composed of a central layer of white pigmented polyester resin coated on both surfaces with a bonding layer consisting of a blend of approximately 67.8% polyethylene, 22.6% copolymer of ethylene and acrylic acid, and 9.6% titanium dioxide white pigment. Before addition of the titanium dioxide pigment, the blend consists of 75% polyethylene and 25% ethylene copolymer and has a melt index of approximately 9.9. Addition of the pigment lowers the melt index. The bonding layer of the defendants' core material is heat-softenable thermoplastic containing less than 3% acrylic acid. The defendants also sold an overlaminate material composed of an outer layer of clear polyester coated with a blend of 75% polyethylene and 25% copolymer of ethylene and acrylic acid, the acrylic acid content being less than 3%. Additionally, defendants sold a completed laminated plastic identification card, made from the materials just described. Roll (rotary) lamination was utilized in the final step of fabrication of that card. The defendants also sold card packs, made from these same materials. These card packs were laminated by the customer, usually by a roll lamination procedure. In some of the defendants' completed cards as in some of their card packs, there was no individual identifying indicia or photo.
Direct infringement of a method or process patent requires, at least, that the infringer have performed the principal steps of the process claims. See Plastering Development Center v. Perma Glas-Mesh Corp., 371 F.Supp. 939, 949 (N.D.Ohio 1973); Engelhard Industries, Inc. v. Research Instrumental Corp., 324 F.2d 347, 351 (9th Cir. 1963), cert. denied, 377 U.S. 923, 84 S.Ct. 1220, 12 L. Ed.2d 215 (1964).
Step (a) of each independent claim of the Hannon '171 patent is directed to "forming a core." In Claims 1 and 7, this step is recited as:
"(a) forming a core including a heat-softenable plastic material defining at least one bonding surface,"
whereas in Claim 5, the same step is recited as:
"(a) forming a core having a core sheet coated on both faces with a heat-softenable plastic bonding material."
Here, defendants did not perform step (a), in either form, but merely purchased core material developed independently by others. Furthermore, since Claims 2-4 are dependent upon Claim 1, and Claim 6 is dependent upon Claim 5, the same conclusion must be reached as to these claims.
Step (b) of Claim 1, Hannon '171, requires provision for protective coverings, each comprising an outer protective layer and a bonding layer of thermoplastic material "having the same melt index" as the bonding layer on the core. In a similar fashion, step (c) of Claim 5 requires the application of outer overlaminate sheets composed of layers of thermoplastic material "having substantially the same melt index" as the bonding material on the core. The bonding layer melt index of the protective overlaminate sheets used by the defendants, on the other hand, is different from that of the bonding layers on the core, since, as discussed earlier, the melt index of the core bonding layers is lowered by the presence of pigment. There was no evidence that the melt index of the complete core bonding layers used by the defendants was the same or substantially the same as that of the bonding layers of the overlaminate sheets they used. This differentiation applies equally to Claims 2-4 and 6, 2-4 being dependent upon Claim 1, 6 upon Claim 5.
All claims of the Hannon '171 patent are limited to a construction in which the core is covered by "a protective envelope," this expression being a part of each of the independent claims, 1, 5, and 7. Each of the accused products of the defendants, however, includes a core sheet that is coextensive in area with the covering overlaminate sheets. Hence, the edges of the core sheets in the defendants' products are exposed, and thus, no "protective envelope" is formed.
Contrary to the requirements in Claim 2 of Hannon '171, the defendants have never used a protective covering in which "grid work" was printed on at least one of the bonding surfaces. There was also no showing that the clear polyester used by the defendants in their overlaminate materials was the "polyethylene glycol ester of terephthalic acid," as expressly required by step (c) of Claim 5, Hannon '171. Finally, as established by the stipulated evidence on the composition of the overlaminate bonding layers used by the defendants, those bonding layers are not the specified copolymer of polyethylene and acrylic acid, and have an acrylic acid content of less than the 3% required by step (b), Claim 7, of Hannon '171.
Direct infringement, therefore has clearly not been established.
The fundamental basis of the patent law requires that a patent holder establish acts of direct infringement before liability for inducement or contributory infringement can be found. See Aro Mfg. Co., Inc. v. Convertible Top Replacement Co., Inc., 365 U.S. 336, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961), and Aro Mfg. Co., Inc. v. Convertible Top Replacement Co., Inc., 377 U.S. 476, 84 S.Ct. 1526, 12 L.Ed.2d 457 (1964). In any event, the record here is utterly devoid of evidence that could be used to establish inducement of or contributory infringement. The evidence of record does not indicate that the defendants induced any party to perform the step of "forming a core," a principal step in each and every claim of the Hannon '171 patent. Rather, the evidence indicates that the defendants merely purchased core materials, independently developed by others, which materials utilized standard "off-the-shelf" heat-seal coatings employed in the packaging industry for a variety of end uses. An arms-length purchase of...
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