Minnesota Mining and Mfg. Co. v. Technical Tape Corp.

• Decision Date: 17 October 1962
• Docket Number: No. 13735.,13735.
• Citation: 309 F.2d 55
• Parties: MINNESOTA MINING AND MANUFACTURING COMPANY, a corporation of Delaware, Plaintiff-Appellee, v. TECHNICAL TAPE CORP., a corporation of New York; Technical Tape of Illinois, Inc., a corporation of Illinois; and Levin Brothers Paper Company, a corporation of Illinois, Defendants-Appellants.
• Court: U.S. Court of Appeals — Seventh Circuit

309 F.2d 55 (1962)

MINNESOTA MINING AND MANUFACTURING COMPANY, a corporation of Delaware, Plaintiff-Appellee, v. TECHNICAL TAPE CORP., a corporation of New York; Technical Tape of Illinois, Inc., a corporation of Illinois; and Levin Brothers Paper Company, a corporation of Illinois, Defendants-Appellants.

No. 13735.

United States Court of Appeals Seventh Circuit.

October 17, 1962.

Arlie O. Boswell, Jr., Chicago, Ill., Robert D. Spille, John A. Mitchell, New York City, George N. Hibben, Chicago, Ill., for defendants-appellants.

Edward A. Haight, Chicago, Ill., Harold J. Kinney, St. Paul, Minn., S. G. DeLaHunt, St. Paul, Minn., of counsel, for plaintiff-appellee.

Before SCHNACKENBERG, CASTLE and SWYGERT, Circuit Judges.

CASTLE, Circuit Judge.

Minnesota Mining and Manufacturing Company, plaintiff-appellee, owner of Oace et al. Reissue Patent No. 23,843, covering an insulating tape, brought suit in the District Court charging the defendants-appellants with infringement of the patent. The defendants-appellants are Technical Tape Corporation, manufacturer of the accused tapes; Technical Tape of Illinois, Inc., a dealer in and distributor of the accused tapes; and Levin Brothers Paper Company, a purchaser and reseller of some of the accused tapes.

Reissue Patent No. 23,843 is a combination patent relating to a stretchable and retractable, pressure-sensitive adhesive vinyl plastic insulating tape. Each of the accused products is such a tape.

The defendants denied infringement and asserted invalidity of the patent. The District Court held the patent to be valid and that Claims 1, 3, 4, 6, 7, 8 and 9 had been infringed. The defendants appealed and contend, in substance, (1) that the accused tapes do not fall within the scope of the patent claims and that the District Court by its holding of infringement erroneously ignored the limitations of the claims; (2) that on the issue of validity the court misinterpreted the prior art relied upon and erred in its finding and conclusion that each of the claims particularly points out and distinctly claims the invention; and (3) that the court erred in denying the defendants' post-trial motion to suspend entry of judgment so that defendants could take depositions to establish an "unclean hands" defense based on alleged anti-trust law violations constituting abuse of patent rights.

The reissue patent here involved has been the subject of other litigation.¹ Typical claims 1 and 6 are set out in full in Sears, Roebuck & Co. v. Minnesota Mining & Mfg. Co., 4 Cir., 243 F.2d 136, footnote at pages 137-138 and will not be repeated here.

The novelty and value claimed for plaintiff's invention is that it permits of the use of polyvinyl chloride, which is normally too stiff and inflexible, in the production of a highly stretchable and retractable insulating tape, especially effective and useful in the splicing of electrical wires and cables and for the insulation and protection of electrical conductors, and at the same time eliminates the deterioration of the pressure-sensitive adhesive applied to the vinyl chloride backing, an effect normally caused by the plasticizers used as the agents to soften the backing. The problem in making a flexible tape with a polyvinyl backing and a pressure-sensitive adhesive had been that when enough plasticizer was added to the polyvinyl chloride to make it sufficiently flexible the plasticizer had a deteriorating effect on the adhesive causing it to soften and become "pasty" or to lose tackiness and become non-adherent. The patent states that it obtains the unique and valuable result of a plasticized vinyl backing which is in permanent equilibrium with the adhesive. The patent defines this "permanent equilibrium" to mean:

"* * * That the pressure-sensitive adhesive layer neither softens (becomes `pasty\') nor loses tackiness (becomes non-adherent) or prolonged contact with the backing or film layer. The adhesive remains aggressively tacky, and also remains `eucohesive\' (by which it is meant that it is more cohesive than adhesive such that offsetting or transfer of adhesive material does not result when the tape is unwound from rolls or removed from surfaces to which temporarily applied and can be handled without transfer of adhesive material to the fingers)."

The claims when read in the light of the specifications teach that in order to obtain the novel and valuable features of the invention it is necessary to use a combination of plasticizer of low molecular weight and plasticizer of high molecular weight. The low molecular weight plasticizers are identifiable with plasticizers described in some of the examples given in the specifications, and plasticizers referred to in some of the claims, as being of the "liquid" type. The high molecular weight plasticizers are identifiable with those described or referred to as the "resinous", "non-migratory" or "permanent" type. The claims state the proportion of plasticizer materials to polyvinyl material, and to each other, as approximations but within defined limits.² And, the specifications point out:

"It will be understood that, where specific ratios of specific polymers, low molecular weight plasticizers, and high molecular weight plasticizers are described in the examples, substitution of equivalent but somewhat different materials may require alteration of these ratios in order to obtain equivalent results, all in conformity with well-recognized principles."

The materials which are described as constituting the novel and useful combination were all well known but the invention is claimed to lie in the peculiar combination of plasticizers of low molecular weight and of high molecular weight to achieve the results stated.

The cause was heard on the pleadings, stipulations, answers to interrogatories, depositions, exhibits, and the testimony of witnesses for the parties, including expert testimony. Consequently, insofar as the sixty-one detailed findings of the District Court concern factual issues such as the use made of prior art, the nature of the improvement made over prior art, and the characteristics, qualities and types of plasticizer ingredients used in the manufacture of defendants' tapes, Rule 52(a) of the Federal Rules of Civil Procedure (28 U.S. C.A.) applies. The scope of our review of such findings is limited to a determination of whether or not they are "clearly erroneous". Armour & Co. v. Wilson & Co., 7 Cir., 274 F.2d 143, 156. If they find support in the evidence we are bound thereby.

The District Court found, among other things, that it was not for want of materials, nor for want of a market, that the appearance of the tape product of the patent in suit was delayed, and that earlier attempts by others to produce such a vinyl backed tape had failed. The record amply supports those findings.

In their brief in this Court the defendants rely upon two prior art patents, Schmidt patent No. 2,332,265 and Nollau patent No. 2,118,101. The District Court did not err in concluding that these patents did not anticipate plaintiff's invention.

The Nollau patent is directed to a cloth surgical tape waterproofed with plasticized cellulose nitrate. An adhesive is applied to the waterproofed woven cloth fabric backing. The patent teaches the use of a rubber adhesive-innocuous plasticizer to avoid deleterious action of the plasticized cellulose nitrate composition on the pressure-sensitive adhesive which would cause the adhesive to become excessively sticky and destroy the properties necessary for a satisfactory adhesive. But Nollau does not mention nor disclose, much less teach the solution of, the problem of imparting high stretchability and retractability to a polyvinyl chloride backing and at the same time maintaining it in permanent equilibrium with the adhesive. Nor is Nollau concerned with electrical insulation properties.

The Schmidt patent was a file wrapper reference. It relates to a pressure-sensitive adhesive sheet or tape consisting of a plasticized polyvinyl chloride backing and an adhesive containing polyiso-butylene. It recognizes the difficulty of using plasticized polyvinyl chloride backing with pressure-sensitive adhesives but does not teach a solution which would make it possible to obtain a highly stretchable and retractable tape. The District Court's findings that the Schmidt tape was relatively non-stretchy, and that there is no evidence that it was ever commercially sold or marketed for any...