Marks v. Polaroid Corporation, Civ. A. No. 53-168.

CourtUnited States District Courts. 1st Circuit. United States District Courts. 1st Circuit. District of Massachusetts
Citation129 F. Supp. 243
Docket NumberCiv. A. No. 53-168.
PartiesAlvin M. MARKS and Depix Corporation. v. POLAROID CORPORATION.
Decision Date28 February 1955


Cedric W. Porter, Timothy H. Donohue, Boston, Mass., for plaintiff.

Donald L. Brown, Cambridge, Mass., Rowland Patrick Fish, Richardson & Neave, Boston, Mass., of counsel and Charles Mikulka, Cambridge, Mass., for defendant.

SWEENEY, Chief Judge.

This is an action for infringement of U. S. Patents No. 2,104,949 (hereinafter referred to as '949) and No. 2,199,227 (hereinafter referred to as '227) brought by the plaintiff Alvin M. Marks as owner, and the plaintiff Depix Corporation as exclusive assignee of said patents. By counterclaim the defendant Polaroid Corporation charges the plaintiffs with infringement of three patents owned by it, and with infringement of its registered trademark "Polaroid". A further charge of infringement of Reissue Patent No. 23,297 has been waived by the defendant during the trial, but this patent remains before this Court on the question of validity as requested in a prayer for declaratory relief filed by the plaintiffs.

In answer to the charges of patent infringement the parties have advanced the usual defenses of invalidity and noninfringement together with certain other defenses to be passed upon later in this opinion. The plaintiffs' reply further denies infringement of the defendant's trademark "Polaroid" and asserts that this trademark is invalid because it is a descriptive and generic word which indicates the type of product and not its source or origin.

Subject Matter and History

The subject matter of all of the patents in suit relates to synthetic light polarizers and the process for their manufacture.

Polarization is a common phenomenon which occurs in the world of nature through certain natural media, e. g., the sunlight reflected from a lake or ocean is, to a great extent, polarized due to the absorption by the water of certain light vibrations of an incident beam of light and its transmission of certain other vibrations of the same beam. This same phenomenon may be simulated by man through the use of artificial devices of the type which concern us here. Polarization is in essence the act or process of affecting light so as to cause the light vibrations to assume a definite form. When the human eye looks at an object transverse to the line of sight there are set up light vibrations in every direction. When the light is polarized the vibrations in all directions except one are eliminated by the absorption component of the polarizer. The remaining light vibrations are transmitted along the transmission axis of the polarizer and come through clear and unobscured to the eye of the viewer.

The phenomenon of Polarization has been known for more than one hundred and fifty years. However, until the development in the early part of this century of inexpensive synthetic polarizers, science has been limited to certain natural polarizers such as the Nicols prism, which costs approximately $1,000 a square inch and tourmaline, which costs $10 for two pieces, each 1/64th of an inch in size.

Attempts to manufacture synthetic polarizing crystals were made in 1853 by an English scientist named Herapath. He made minute fragile crystals of iodoquinine sulfate, which have come to be known as herapathites after their discoverer. Despite optimistic appraisals by Professor Herapath for the future of his discovery in the field of synthetic light polarizers, it does not appear that crystals made in accordance with his teachings ever became commercially successful.

In the late 1920's two precocious young scientists, Marks, a plaintiff in this action, and Dr. Land, President of Polaroid Corporation and patentee of three of the patents in suit, entered almost simultaneously into the field of synthetic light polarizers due to an interest each had in television. Independently and unknown to each other they consulted the same authority, Dr. Herapath, and attempted to develop large area synthetic polarizers in accordance with his teachings. Both experienced failure and struck out on new paths of their own. Marks, however, continued to follow the broad outlines of Herapath's teachings in the sense that his conception of the ideal polarizer was one consisting essentially of a single continuous crystal grown out of solution. After much experimentation he finally achieved the result desired by a process which consisted of suspending glass plates in a solution of the crystalline material over a relatively long period of time during which the solvent gradually evaporated, lowering the liquid level of the tank and causing the crystalline material to be thrown out of the solution and deposited on the surface of the glass supports. The relative motion between the liquid and the surface of the supports produced a surface tension which caused a specific alignment of the crystalline material. As we shall see later, alignment or orientation of the molecules of the substance is essential to procure a crystal effect. This process eventually ripened into the first Marks patent in issue in this suit.

Dr. Land, on the other hand, became convinced from his duplications of Herapath's work that no process involving the growth of large crystals would be satisfactory since any such process would be too time consuming. At about this time it occurred to him that a large synthetic polarizer sufficiently inexpensive in price ought ideally to be a plastic; a large plastic sheet like celluloid in great rolls. Instead of growing large crystals of herapathite and depositing them on a glass support, he conceived of the idea of making extremely small herapathites and embedding them in a plastic carrier. These submicroscopic needles or crystals were oriented to substantial parallelism by extruding the plastic containing the needles through small apertures. The mechanical stress thus produced causes the needles to orient themselves just as logs going downstream travel along butt end first. Patent applications covering this Land process and product were filed in 1929. Subsequently, Land demonstrated his "J sheet", as the invention is called, to a Physics Colloquium at Harvard University in 1932, and in 1933 used it as a polarizer in connection with a stereoscopic system which he brought to Hollywood to demonstrate three-dimensional movies to Warner Brothers Laboratories. The basic patent on the J sheet is not in issue in this case. However, it is of interest in tracing the development of the art. Also it serves to cast doubt upon the plaintiff's contention that Marks was the first person ever to make and sell a synthetic polarizer.

It appears that after Marks had sufficiently developed his polarizer, his brother organized a company, known as Polarized Products Company, to exploit his product commercially. The Marks polarizing plates were first sold on the market in November of 1934 at prices of $16 per square inch and $1 for a plate ž" U ž" in size. These prices were later sharply reduced with the development by Marks in 1935 of the second patent in suit, called the intensification process. This patent discloses a method for speeding up the process of Marks' previous patent, then taking the crystalline deposit, which due to the increased speed is discontinuous or punctuated with holes or voids, and intensifying it by subjecting the crystalline field to a supersaturated solution of the crystalline material. In this manner an additional crystal deposit is thrown out of solution which fills up the voids and evens off the pre-existing crystalline deposit. By this method production was speeded up about 90 times and the cost reduced by 99%. Patent applications covering the intensification process were filed in 1937.

In the meantime, the first Polaroid Corporation had been organized in 1935 with Dr. Land as its president, and production of the J sheet was carried on. Two years later the present corporate defendant was organized with Land continuing as president and director of research. Subsequently Land began experimenting on a different type of polarizer employing cellophane and a direct dye or stain. Rolls of cellophane were swelled, stretched, and run through an iodine bath. Difficulty was encountered, however, with this process because the iodine was fugitive and would not stay in the cellophane sheet. Land experimented with different kinds of plastics and finally hit upon the complex of iodine with polyvinyl butyral. Immediately he shifted from polyvinyl butyral to polyvinyl alcohol and developed his "H sheet" which is made by taking a large roll of polyvinyl alcohol, heating and stretching it to orient the molecules, then affixing it to an unstretched backing of cellulose acetate, and floating the supported film of polyvinyl alcohol upon the surface of a bath containing a solution of iodine. A fourth step is employed in which the sheet is run through a bath of boric acid, which stabilizes the film and drives out excess iodine.

The Polaroid Corporation first began to sell its "H sheet" in 1940 and since that time it has effectively supplanted the "J sheet" type of polarizer.

Patent applications embodying the new Land products and processes were filed in October 1938 and May 1939, and eventually resulted in issuance of the three patents alleged in the defendant's counterclaim to have been infringed by the plaintiffs here.

Throughout the years Marks continued to manufacture and sell synthetic polarizers and to this end in conjunction with his brother and others caused several different business entities to be organized, including Polarized Products Company, Polarized Products Corporation, Pola-lite Company, Polalite Corporation, Depix Corporation, and Marks Polarized Corporation. The defendant here had previous litigation with at least one of these companies and its licensee. One action in Delaware against Polarized Products...

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