Marston v. JC Penney Company

• Decision Date: 08 March 1971
• Docket Number: Civ. A. No. 3540.
• Citation: 324 F. Supp. 889
• Court: U.S. District Court — Eastern District of Virginia
• Parties: Oliver F. MARSTON v. J. C. PENNEY COMPANY, Inc.

324 F. Supp. 889

Oliver F. MARSTON v. J. C. PENNEY COMPANY, Inc.

Civ. A. No. 3540.

United States District Court, E. D. Virginia, Richmond Division.

March 8, 1971.

Herndon P. Jeffreys, Jr., Richmond, Va., J. Hanson Boyden, Washington, D. C., Alfred P. Ewrt, New York City, for plaintiff.

Edward A. Marks, Jr., Richmond, Va., W. Brown Morton, Jr., James N. Dresser, Washington, D. C., for respondent.

MEMORANDUM

MERHIGE, District Judge.

This patent case is before the Court for the second time, currently on plaintiff's motion to punish for contempt. Prior proceedings are summarized in the opinion of the Court of Appeals, Marston v. J. C. Penney Co., 353 F.2d 976 (4th Cir. 1965), cert. den., 385 U.S. 974, 87 S.Ct. 515, 17 L.Ed.2d 437 (1966). The Fourth Circuit affirmed therein this Court's ruling that claims 1 and 2 of the Marston patent, No. 2,715,231, were valid, and determined, contrary to the district court, that certain articles sold by Penney infringed. On remand damages were determined after trial, and an injunction was entered. That order does not in terms forbid all future infringement; it does, however, recite the appellate ruling that the defendant's articles were covered by Marston's patent and forbids the manufacture, use, or sale, of further units of the accused structure "or other articles which embody the buoyant filler pad structure of certain exhibits or any * * * other articles embodying a buoyant filler pad structure * * * that is a merely colorable or patently insubstantial variation of the buoyant filler pad structure of said exhibits * * *."

Claim 1 of the patent in issue reads as follows:

1. A buoyant, flexible, filler pad comprising a plurality of strip portions arranged in laterally disposed relation, each said strip portion comprising a tube of flexible thermoplastic resinous material having opposed parts of the tube wall completely united together in fluid sealing relation at spaced intervals to form an individually sealed link section between each adjacent pair of sealed parts, each said sealed part of one strip portion being arranged in laterally aligned relation to a sealed part of an adjacent strip portion to form a plurality of laterally disposed rows of aligned sealed parts in said pad, and a connecting strip overlying each said row of sealed parts and united to each sealed part in said row, each said link section being in spaced relation to adjacent link sections of laterally disposed strip portions to provide fluid circulating openings therebetween extending perpendicularly through said pad.

Claim 2 differs in that in place of a "tube" it embraces a "hollow, elongated body * * * the wall of said body being continuous in cross-section," the walls of which are "completely heat-sealed" at intervals, and the strip portions are "parallel."

A hearing has been held on the contempt motion. Numerous exhibits were introduced, some of which were products alleged to have been marketed by Penney in violation of the outstanding order. The plaintiff testified in person and by deposition. In his deposition he identified certain of the articles; the source of some has been stipulated too. The accused articles are all pieces of outdoor furniture, constructed of plastic webbing on a rigid frame.

Defendant's exhibits DXC1, DXC2, and DXC3 are typical of those sold by Penney during the 1969 season.¹

Plaintiff's exhibit 2 is the article referred to in the decree as exhibit K. Plaintiff's exhibit 5 was purchased from a store not affiliated with Penney on August 28, 1969. Defendant's exhibit D is a chaise which was marked as exhibit 5 in the 1968 damage trial; this should be distinguished from exhibit 5 referred to in the decree.

Penney contends that its currently accused products neither infringe the patent nor violate the decree because they embody significant departures from the items which have been found to infringe. The walls of the laterally aligned tube sections in the structures now attacked allegedly are heat-sealed to each other and to the connecting strips in such a way that individual airtight tubular cells do not result. The seals are now made, allegedly, not in continuous fashion across the tubes, but at intervals so that fluid may flow around and past them.

At the hearing Arthur B. Miller, a former patent examiner, testified to comparative studies which he made of the patent claim, of plaintiff's exhibit 2, which infringes, and of defendant's exhibit A, which it is stipulated is typical of Penney's products marketed in 1969. The parties also agree that if the tube heat-seals in defendant's exhibit A are complete, the decree has been violated. Mr. Miller could only say that an external examination of Penney's 1969 model did not reveal to him whether or not the seals were complete.

A second witness, Julian M. Weaver, a chemist, examined plaintiff's exhibit 14, which was bought from Penney in 1969. He cut away sections of tubing containing heat seals and testified that some joints would pass no air when he tried to blow through with mouth pressure. "Possibly 80 per cent" or "80 per cent or more" of the joints, he said, were sealed so as to form fluid tight chambers. Moreover, he said, a portion of Penney's structure would float, although the plastic of which it is made is heavier than water.

The defense offered evidence in the form of autoptic profference; a courtroom experiment was conducted. Sections of tubing were cut from defendant's exhibit DXC2, marketed subsequently to the decree; these segments are defendant's exhibit DXE1 through DXE5. Counsel for Penney blew a fluid —cigarette smoke—past the seals in the tubes. Of thirteen seals tested, only one would not pass smoke. Some might regard this as proof only of a litigator's lung power, but to the Court it was persuasive. Accordingly the Court finds on the evidence now before it that the plastic tubes in DXC2 are not separated into fluid tight compartments. Closed cells could be created only if two adjoining seals on the same tube are complete. Statistically this is quite improbable. On this showing the plaintiff has failed on this point to carry the substantial burden of proof which is his in a contempt proceeding.

Penney also submitted in evidence a patent allowed subsequently to Marston's, that of Militano, No. 3,476,169. The Court does not see the relevance of this patent or its issue and gives it no weight.

Each claim submitted in the course of patent office proceedings which resulted in the allowance of the claims of patent No. 2,715,231, contained the element of a tube divided by seal portions into fluid tight compartments. Marston described tube walls as "completely united together in fluid sealing relation" (original claims 1, 2, 4-14, 17, 19), or claimed "individually sealed link sections" formed to enclose gas under slight pressure (original claim 3), or included tube walls "completely united together to form an individually sealed link section between each adjacent pair of sealed portions" (original claims 15, 16, and 20), or claimed walls "completely heat-sealed together * * * to form an individually fluid sealed cell" (original claim 18).

Penney argues that under the facts shown it would be improper for Marston to proceed against the current products by means of a motion to hold Penney in contempt; rather an original or supplemental complaint should be filed. The issue, of course, on a contempt motion is a violation vel non of the decree, not patent infringement, Artvale, Inc. v. Rugby Fabrics Corp., 303 F.2d 283 (2d Cir. 1962). However, the proceedings on a contempt motion need not be summary, and they have not been in this case. If the plaintiff's decree is to have effect, it must be enforceable by the contempt power in some cases. The general rule is that a party may seek such relief if substantial collateral issues are not raised, Great Lakes Carbon Corp. v. Eagle Lumber Dealers Supply Co., 402 F.2d 106 (7th Cir. 1968), and the claim is that an infringing device varies only colorably from that found to violate the patent, McCullough Tool Co. v. Well Surveys, Inc., 395 F.2d 230 (10th Cir.), cert. den. 393 U.S. 925, 89 S.Ct. 257, 21 L.Ed.2d 261 (1968). Other courts have treated a contempt motion as the proper context wherein to litigate complex questions of infringement, including the doctrines of equivalents and file wrapper estoppel, Ransburg Electro-Coating Corp. v. Ionic Electrostatic Corp., 395 F.2d 92 (4th Cir. 1968); cert. den., 393 U.S. 1018, 89 S.Ct. 623, 21 L.Ed.2d 562 (1969); Chemical Cleaning, Inc. v. Dow Chemical Co., 379 F.2d 294 (5th Cir. 1967), cert. den. 389 U.S. 1040, 88 S.Ct. 777, 19 L. Ed.2d 829 (1968); Siebring v. Hansen, 346 F.2d 474 (8th Cir.), cert. den., 382 U.S. 943, 86 S.Ct. 400, 15 L.Ed.2d 352 (1965); Baltz v. The Fair, 279 F.2d 899 (7th Cir. 1960); Carter Products, Inc. v. Colgate-Palmolive Co., 269 F.2d 299 (4th Cir. 1959); Kiwi Coders Corp. v. Acro Tool & Die Works, 250 F.2d 562 (7th Cir. 1957); Baltz v. Walgreen Corp., 198 F.Supp. 22 (W.D.Tenn.1961). Marston's contentions may properly be considered in a proceeding of this nature.

The injunction, like the patent itself, is read in terms of prior art and file history, for it is not to be construed to grant the patentee greater rights than were his on the issue of the patent. Ransburg Electro-Coating Corp. v. Ionic Electrostatic Corp., supra, 395 F.2d 96. Moreover, it is read in terms of the preceding litigation which gave rise to the decree, at least to the extent that the plaintiff will not be permitted to maintain, in seeking enforcement, a position inconsistent with that he took in defending the patent's validity. In Ransburg certain patents were distinguished from prior art in earlier proceedings establishing validity on the same basis which distinguished them from the defendant's products, attacked in the contempt proceeding. The plaintiff was held not to be entitled to protection from a practice which it had...