Matherson-Selig Co. v. Carl Gorr Color Card, Inc.

Decision Date29 June 1967
Docket NumberNo. 64 C 1394.,64 C 1394.
Citation301 F. Supp. 336,154 USPQ 265
PartiesMATHERSON-SELIG CO., an Illinois corporation, Plaintiff, v. CARL GORR COLOR CARD, INC., an Illinois corporation, Defendant.
CourtU.S. District Court — Northern District of Illinois


Irwin C. Alter, Chicago, Ill., for plaintiff.

Thomas F. McWilliams, John M. Mann, Mann, Brown & McWilliams, Chicago, Ill., for defendant.

WILL, District Judge.

Decision on the Merits

This is a patent suit brought by Matherson-Selig Co., an Illinois corporation, against Carl Gorr Color Card, Inc., an Illinois corporation, for infringement of United States Letters Patent 2,797,010, issued June 25, 1957. Plaintiff is the assignee and legal owner of said patent and seeks a declaration of the validity of the patent along with injunctive relief and damages. Jurisdiction is acquired under Title 28 U.S.C. § 1338. In lieu of oral testimony, certain depositions and exhibits filed by both parties have been received into evidence and will constitute the factual record in the case; in addition, the parties have submitted extensive trial briefs.

Defendant raises the defenses of invalidity and noninfringement. It contends that the patent is invalid because there was a prior public use within the meaning of Title 35 U.S.C. § 102 and because the subject matter of the patent was obvious at the time the invention was made within the meaning of Title 35 U.S.C. § 103. It further contends that even if the patent is valid, there has been no infringement because its process differs substantially from plaintiff's process and because plaintiff's claim is limited by application of the doctrine of file wrapper estoppel so that its patent does not read upon plaintiff's patent.

The parties have stipulated that the graphic chart, identified as defendant's Exhibit F, is a comparison of the steps of the patented process with that of the alleged infringing process. They have also stipulated that defendant received actual notice from plaintiff regarding alleged infringement of the patent on May 12, 1964, and that defendant manufactured three million fabric sample charts. Further, it is undisputed and the evidence so shows that these three million sample charts were manufactured in accordance with the alleged infringing process depicted in the graphic chart just referred to.


The court, after careful consideration of the patent, the prior art, the file wrapper history, the depositions, and the trial briefs, holds that the patent is valid and has been infringed.

The Patent

Essentially, plaintiff's patent covers a method of fabricating a sample chart, whereby air permeable fabrics are adhesively secured to air impermeable backings, then cut into tabs and placed into hoppers, withdrawn from the hoppers by means of a vacuum, covered on their back sides with adhesive, and finally applied to a card. More specifically, and in the words of the single claim of the patent, the patent describes:

A method of fabricating a sample chart having a backing to which are adhesively secured a plurality of air permeable tabs of various physical characteristics, said method comprising applying air impermeable layers to the back sides of a plurality of segments of air permeable material having respectively, different physical characteristics, then cutting said segments into tabs and loading the tabs of respective segments into separate hoppers with the back sides of said tabs facing inwardly of the hoppers, contacting the outer sides of the tabs in said hoppers with parts of a suction head to lift one tab from each hopper, applying adhesive to the back sides of the tabs carried by the head and then clamping the back sides of the tabs carried by said head against the backing sheet to adhesively secure the last-mentioned tabs thereto.
History of the Patented Process

Prior to the invention of this process, hereinafter referred to as the Neer process, fabric sample charts were manufactured manually. The finished product could be turned out only at a slow rate, which resulted in an expensive item. The process was not only slow and expensive but difficult as well and even then, the sample chart was often unsightly. Large bolts of material had to be unrolled and cut into squares. The fabric, which was very often soft and flexible, was difficult to handle after it had been unrolled and was about to be cut. Also, the edges of the fabric had to be pinked in order to keep the fabric edges from unravelling. The pieces of fabric, or swatches as they are called, then had to be glued and placed by hand onto a chart. Unless this was precisely done by skilled swatchers, of which there was a shortage, the swatch was crooked or the glue became visible.

Because of the great demand for fabric sample charts, an improved process was necessary. Adolph Neer, president of Matherson-Selig Co. and inventor of the Neer process, experimented with many methods that proved unsuccessful. He tried using a vacuum to place the fabrics on the sample chart. This process had worked with success when paint chips were picked up and applied to sample cards, but fabrics presented a different problem because they were porous. As a result, the suction head was not able to maintain a firm contact with the swatch. In addition, the swatches were difficult to stack, one upon the other, because they tended to coalesce.

Neer approached the New Jersey Machine Corporation for help in solving this problem. The company, which manufactured the Pony Labelrite Machines that were used in applying paint chips to sample cards by suction, had no experience with fabric sampling and their only suggestion was to use more vacuum. However, this did not solve the problem because the vacuum head, although making a firmer contact with the swatch, tended to pick up more than one swatch at a time. Determining the proper amount of suction that should be used was further complicated by the existence of fabrics with different textures and thicknesses.

It was soon realized that the fabrics would have to be air-proofed. Coating the fabric with lacquers and glue-sizing were tried, but they either discolored or damaged the fabric or made it unworkable. Slipsheeting or alternating layers of fabric and material was also tried but the vacuum head tended to pick up both the fabric and the interleafed sheet and the latter then would become entangled in the glue rollers or fall off into the glue.

Finally, Neer adhered a nonporous, air impermeable paper backing to the material. In addition to solving the suction problems (one swatch could now be picked up at a time), the fabric became easier to handle and could be placed simply and neatly in the hoppers from which it was removed by the suction head. Automatic cutters could be used and the edges of the fabric no longer had to be pinked because unravelling was no longer a problem. Also, fabrics of different textures and thicknesses could be used without any further complication.

Prior Art

The most pertinent prior art consists of a number of patents cited in the file of the Neer patent. As against these references, which are admitted by defendant to be the most pertinent,1 the patent is presumed valid and the party asserting invalidity has the burden of establishing invalidity by clear and convincing evidence. Title 35 U.S.C. § 282; King-Seeley Thermos Co. v. Tastee Freez Industries, Inc., 357 F.2d 875 (7th Cir. 1966); Schnell v. Allbright-Nell Co., 348 F.2d 444 (7th Cir. 1965); Briggs v. M & J Diesel Locomotive Filter Corp., 342 F.2d 573 (7th Cir. 1965).

The Von Hofe patent was one of the three principal patents relied upon by the patent examiner throughout the prosecution of the Neer patent application. This patent, owned by the New Jersey Machine Corporation, relates to a labeling machine which takes a label by suction from a hopper, moves it onto a bottle and presses it thereon. It does not deal with air permeable materials but rather air impermeable materials such as paper labels; neither does it concern itself with materials of different physical characteristics. The patent does involve the use of suction, but it clearly does not anticipate or solve the problems that arise when it is desired to attach an air permeable material to a sample card.

The McKay patent, which is another of the three principal patents relied upon by the patent examiner, deals with a machine for forming sample cards by which small portions of air impermeable materials, such as color chips, are withdrawn from a plurality of hoppers and applied by means of suction to a sample card to which adhesive has already been applied. The patent does not deal with the problem of, or suggest the solution to, adhering air permeable materials to a sample card; neither does it deal with materials having different physical characteristics. Both this patent and the Von Hofe patent were mentioned by Neer in his patent application as earlier processes using suction to form sample charts which proved ineffective when used in conjunction with samples of fabric and other air permeable materials.

It may be pointed out that the machine disclosed in the McKay patent for applying paint chips to sample cards was manufactured by the New Jersey Machine Corporation and that the same basic machine, the Pony Labelrite, was used by Matherson-Selig Company to manufacture fabric sample charts. Defendant in its brief seems to attribute some significance to this fact in determining the presence of anticipation. But the law is clear that the existence of a machine does not affect the validity of a process using that machine, as product patents are distinct from process patents and may exist and be sustained independently of them. Leeds & Catlin Co. v. Victor Talking Machine Co., 213 U.S. 301, 29 S.Ct. 495, 53 L. Ed. 805 (1909); Philip Sitton Septic Tank Co. v. Honer, 274 F.2d 811 (10th Cir. 1959); McDaniel v. Friedman, 98 F.2d 745 (7th Cir. 1938). The term "pro...

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