Metal Film Company v. Metlon Corporation
| Decision Date | 27 July 1970 |
| Docket Number | No. 64-Civ. 508.,64-Civ. 508. |
| Citation | 316 F. Supp. 96 |
| Parties | METAL FILM COMPANY, Inc., Plaintiff, v. METLON CORPORATION and Acme Backing Corporation, Defendants. METLON CORPORATION and Acme Backing Corporation, Counter-claimants, v. METAL FILM COMPANY, Inc., the Dow Chemical Company and Dow-Badische Company, Counter-defendants. |
| Court | U.S. District Court — Southern District of New York |
Charles B. Smith, Fish & Neave, New York City, for plaintiff, Metal Film Co., Inc., by Lars I. Kulleseid, New York City, of counsel.
Leon, Weill & Mahony, New York City, for defendants, by Frank H. Gordon, Stephen H. Kaprelian, Abe Siegel, New York City, of counsel.
Walter George Scharf went to work in 1916 at the age of seventeen as a gold beater upon the death of his father. Despite the lack of a formal education, he developed exceptional sales, management and technical expertise and was able to make major improvements in gold leafing processing equipment. He remained in this business for over forty years. In 1950 he became interested in metallizing. He started a company called the High Vacuum Metal Company, through which he marketed a yarn composed of metallized Mylar laminated to butyrate. The resultant yarn was used for such products as upholstery in automotive and plane interiors. Perceiving the need for a softer material, however, Scharf developed a new laminated metallized Mylar yarn, and formed a company, Metal Film Company, the plaintiff herein, to develop, manufacture and market this yarn. The resultant yarn was a commercial success in its field, but it was still not soft enough a material for use in fabrics that would come in contact with a wearer's skin.
Scharf recognized the need for a yarn which would have a good "hand" but also a yarn which would stand up under the variety of processing and use conditions to which yarns are subjected. Metallized yarns are woven or knitted into fabrics, normally in combination with ordinary non-metallic yarns. Considerable mechanical stress is placed on the individual metallized yarns in the weaving or knitting operation. Additional mechnical stress and considerable chemical stress are placed on the metallized yarns in the various wet processing steps to which woven or knitted fabrics are commonly subjected before the fabrics are cut and sewn into garments or other products. Metallized yarns are subjected to still further mechanical and chemical stresses during the lifetimes of the garments or other products, for example, the stresses arising during wearing and during dry cleaning or laundering operations (Tr. pp. 72,256). For a metallized yarn to be useful it must be able to withstand the various chemical and mechanical attacks to which it will be subjected over the life of the product.
Scharf turned to the task of developing such a softer yarn, and came up with a non-laminated metallized yarn, and on June 18, 1956 filed a patent application based on this product. A patent was granted, after modification of the application, on March 7, 1961, under the number 2,974,055. That patent is the subject of the instant patent infringement suit by Metal Film Company, Inc., plaintiff, against Metlon Corporation and Acme Backing Corporation, defendants. The principal issues herein are the customary ones in patent infringement litigation, namely, the validity of plaintiff's patent and defendants' infringement of it. Judge Palmieri of this court has previously ordered a separate trial of the antitrust and patent misuse issues raised by defendants' answer and counterclaims; 272 F.Supp. 64 hence, those issues are not before the Court at this time and counter-defendants, the Dow Chemical Company and Dow-Badische Company were not formal participants in the trial.
A civil non-jury trial of this patent infringement action was held before the undersigned and decision was reserved.
By way of introduction to the technical background of the Scharf patent involved here, we note that modern metallic yarns were introduced commercially in about 1946 and represented a considerable improvement over the previously available yarns, e. g., the so-called Lame yarns that had been used for many years (Tr. pp. 64-65). The first important development among the modern yarns was a three-ply structure in which a central layer of aluminum foil was sandwiched between two layers of clear plastic film. The layers were glued together with an adhesive. The three-ply foil yarn is shown in U. S. patent No. 2,129,504 to Karl E. Prindle, which issued in 1938 to Dow's predecessor, The Dobeckmun Company (Tr. pp. 248-250).
The use of three-ply aluminum foil yarn was limited because fabrics woven or knitted from it were rough (Tr. p. 249; Pl.Exs. 36, 40). Nevertheless, substantial quantities of three-ply aluminum foil yarns were sold and it is only within the last few years (since about 1963) that this type of yarn has declined to an insignificant factor in the metallic yarn market (Tr. p. 249; Pl. Exs. 29, 30A and 30B).
The second important modern development in metallic yarns was the introduction of "laminated" metallized yarn in about 1955. Laminated metallized yarn is made by vacuum metallizing the surface of a polyester plastic film and then adhesively bonding another layer of polyester film to the metallized surface to protect that surface.
The use of a metallized aluminum in place of the aluminum foil resulted in an increased yield in terms of yards per pound, and a yarn of greater flexibility and an improved softness. Laminated metallized yarn is shown in a second Prindle patent, No. 2,714,569, which also issued to The Dobeckmun Company (Tr. pp. 96, 253-256).
The invention of non-laminated metallized yarn, which is the subject of this suit, was the third important development in metallic yarns. The term "nonlaminated" is used because this yarn has only one thickness of Mylar1 (or other substrate), rather than the three thicknesses of the foil yarns2 and the two (or more) thicknesses of the laminated metallized yarns, and because it does not need the laminating adhesive required by these two earlier types of yarn.
Non-laminated metallized yarns were introduced to the market on a significant commercial basis in 1958 and rapidly became and still are the dominant product in the metallic yarn field, having eclipsed both the foil yarns and the laminated metallized yarns (Pl. Exs. 18, 18A, 18B, 29, 30A, 30B.)3
Let us examine the relevant provisions of the patent in suit. The claims allegedly infringed are 1, 3, 4, 9 and 11.
Claim 1 is the principal method claim and sets forth the asserted new combination of method steps characterizing the method of the Scharf invention. The principal product claims are Nos. 4 and 9 and these set forth the product in terms of the new combination of elements which characterize the product of the Scharf invention.
The remaining claims here charged to be infringed are dependent claims. Thus claim 3 "depends from" (i. e., incorporates by reference) claim 1 and must be read as including all of the steps of claim 1 plus the added definition of claim 3 that the plastic coating is applied by the rotogravure process. Claim 11 "depends from" claim 9 and adds to the product elements of claim 9 the further requirement that the plastic coating contain a pigment.
These patent claims read as follows:
The method of the Scharf invention is described in particular in the patent specification, with reference to Fig. 1 of the patent drawing, as follows (col. 2, lines 45 et seq. of the patent):
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