Libbey-Owens-Ford Glass Co. v. Sylvania Industrial Corp.

• Decision Date: 14 August 1945
• Citation: 64 F. Supp. 516
• Parties: LIBBEY-OWENS-FORD GLASS CO. v. SYLVANIA INDUSTRIAL CORPORATION et al.
• Court: U.S. District Court — Southern District of New York

64 F. Supp. 516

LIBBEY-OWENS-FORD GLASS CO. v. SYLVANIA INDUSTRIAL CORPORATION et al.

District Court, S. D. New York.

August 14, 1945.

Alan N. Mann and William D. Burrows, both of New York City, for plaintiff.

Howson & Howson, of New York City (Dexter N. Shaw, of Philadelphia, Pa., and Charles H. Howson and Leslie D. Taggart, both of New York City, of counsel), for defendants.

BRIGHT, District Judge.

Plaintiff brings this action to restrain alleged direct and contributory infringements by defendants of U. S. Letters Patent No. 2,056,462, by making, using and selling molding compositions and carrying out the processes embodying the patent invention, and by aiding others to carry out such processes by making and selling products intended to be used and used in carrying them out, and by acting together and conspiring to infringe said Letters Patent by carrying out part of the process covered by the patent after which the materials so partly processed were transmitted to others who performed the balance of such process.

The patent, issued on October 6, 1936, relates to the manufacture of hard infusible molded articles from ureaformaldehyde. It contains fourteen claims. Four of them relate to the preparation of a molding composition or powder containing an inert compound which, upon the application of heat and pressure, is capable of causing the composition to flow, shape and harden into the shaped article. The other claims relate to an improvement in the method of manufacturing hardened, shaped, molded articles by heat and pressure by the use of the product claimed in the other four.

Defendants answer by denying that the patents were duly and legally issued, or that they were issued for an invention, or that they have in any way infringed. As a third defense, they allege:

"Defendants aver that plaintiff is not entitled to maintain this action or to the relief sought, because plaintiff is using said Letters Patent No. 2,056,462 unlawfully to extend the alleged monopoly purporting to be granted by the method claims thereof by selling, and licensing others to sell, molding compositions with an implied license to the purchasers thereof to practice the methods purporting to be claimed by the said method claims and by confining the grant of licenses under the "method claims to those persons who purchase from the plaintiff, or its licensees, the products to be utilized in carrying out the method purporting to be patented, and further because plaintiff in this action against these defendants for alleged infringement of said method claims is using said Letters Patent No, 2,056,462 unlawfully in an attempt to extend the alleged monopoly purporting to be granted by the said method claims in an effort to interfere with the sale of products not patented thereby."

Plaintiff now moves under Federal Rules of Civil Procedure, rule 12(b) (6), 28 U.S. C.A. following section 723c, to dismiss this defense as failing to state a claim upon which relief can be granted for the reasons, (1) that every product sold by plaintiff which is intended to carry out the patented method is patented by the product claims of the same patent, and the constructive license given to use the patented product by its sale and the method of its use does not tend unlawfully to extend the monopoly of the method claims; and (2) plaintiff has the right to an adjudication of the validity of its patent and whether defendants have infringed, directly or contributorily, which it is now doing in good faith, and its effort in that direction in no way constitutes an attempt to extend its method claims.

Defendants counter by a motion under Rule 56 for summary judgment, dismissing the complaint on the ground that there is no genuine issue as to any material fact under the defense quoted.

Both parties contend that the facts material to the defense are not in dispute. It is shown that every product, made by plaintiff and its predecessor in title to the patent and sold on a commercial basis, which is or can be used in carrying out the method claims, has been covered and patented by one or more of the product claims. The product has been sold to molders who, in carrying out the molding operation, use the patented molding composition for the purpose intended and perform the steps set forth in the method claims. No restrictions are attached to the patented product when sold, and it may be used or sold under any conditions which are legal and proper outside of any control by plaintiff. There are two licenses under the patent now outstanding, one to the American Cyanamid Company and the other to the Bakelite Corporation, which grant to them the right to manufacture and sell the molding compositions with the right to grant to purchasers of the composition a license under the...