Moore Business Forms, Inc. v. Minnesota Min. & Mfg. Co.

• Decision Date: 04 August 1975
• Docket Number: No. 738,D,738
• Citation: 187 USPQ 8,521 F.2d 1178
• Parties: MOORE BUSINESS FORMS, INC., Plaintiff-Appellant, v. MINNESOTA MINING AND MANUFACTURING COMPANY, Defendant-Appellee. ocket 74-2413.
• Court: U.S. Court of Appeals — Second Circuit

Page 1178

521 F.2d 1178

187 U.S.P.Q. 8

MOORE BUSINESS FORMS, INC., Plaintiff-Appellant, v. MINNESOTA MINING AND MANUFACTURING COMPANY, Defendant-Appellee.

No. 738, Docket 74-2413.

United States Court of Appeals Second Circuit.

Argued April 24, 1975.

Decided Aug. 4, 1975.

Walter D. Ames, Washington, D. C. (James H. Marsh, Jr., Gary M. Hoffman, Washington, D. C., Thomas J. Hanifin, Jr., David T. M. Murphy, Niagara Falls, N. Y., and John E. Howells, Washington, D. C.), for plaintiff-appellant.

Edward A. Haight, Chicago, Ill. (Haight, Hofeldt, Davis & Jambor, Chicago, Ill., Raichle, Banning, Weiss & Halpern, Frank G. Raichle, and Ralph L. Halpern, Buffalo, N. Y., Alexander, Sell, Steldt & DeLaHunt, Stanley G. DeLaHunt, Gary L. Griswold, and G. Brian Pingel, St. Paul, Minn., on the brief), for defendant-appellee.

Before LUMBARD, HAYS and MULLIGAN, Circuit Judges.

LUMBARD, Circuit Judge:

Plaintiff, Moore Business Forms, Inc. (Moore) appeals from an order of the district court for the Western District, John T. Curtin, Chief Judge, granting summary judgment in favor of defendant Minnesota Mining and Manufacturing Company (3M) in this action for patent infringement. We reverse and remand for further proceedings.

I. Background.

Moore is the assignee of United States Patent No. 3,016,308 (the Macaulay patent), issued January 9, 1962. The patent relates primarily to processes for producing discrete, rupturable microscopic capsules containing droplets of marking fluid and to a pressure-sensitive copying paper produced by applying a coating of such capsules to part or all of one side of a sheet of paper. Such paper is used by placing the coated side face-down, in contact with the sheet of paper on which a copy is to be made. The pressure from a writing instrument marking the top sheet ruptures a number of the capsules affixed to the back of the original. Marking fluid is released onto the second sheet, and this results in a mark being made on the copy corresponding to that on the original. The marking fluid may be colored, or it may be a colorless chemical which will react with a chemical coated on the face of the copy sheet to produce a colored mark. In either case, this specially treated paper enables one to make copies without using a separate sheet of carbon paper. In addition, the paper is allegedly not as messy as carbon paper, because the marking fluid may be colorless and may be applied in capsules, rather than as a film which may rub off and dry out more easily.

Moore alleged in its complaint that fourteen of the twenty-nine claims in the Macaulay patent are infringed by defendant 3M's "Type 200"-brand carbonless copying paper and the process by which 3M produces it. Of the ten process claims (claims 1-10) in the Macaulay patent, only one is asserted here, claim 8. This claim, set forth in the margin, ¹ describes a process for producing a free-flowing powder of discrete, rupturable microcapsules containing marking fluid, by means of a chemical condensation reaction. As we understand it, the process (in one variation) involves adding hydrochloric acid to an emulsion, wherein the discontinuous phase consists of microscopic droplets of marking fluid and the continuous phase is an aqueous solution in which several chemicals are dissolved. Upon agitation, the hydrochloric acid reacts with the previously dissolved chemicals to form ureaformaldehyde polymers. These polymers are insoluble in water and they condense around the droplets of marking fluid suspended in the emulsion, forming microcapsules in which the polymers comprise the shell wall. The mixture is then filtered and dried, leaving a free-flowing powder of microcapsules.

The remaining claims of the Macaulay patent alleged to be infringed (claims 11-13, 16, 17, and 22-29) are "product" claims. Claims 11 through 22 are directed towards free-flowing powders of rupturable microcapsules. Of this latter group, claim 11 is representative and set forth in the margin. ² It should be noted that claim 11, to which all the other product claims make reference, either directly or indirectly, covers a "free-flowing powder of microscopic discrete rupturable capsules" with various specifications, including one that the shell wall be made of a material which is either non-ionizable and water-soluble, or hydrophobic and water-insoluble. The remaining free-flowing powder claims are variations on claim 11. Claim 16, for example, relates to capsules "as defined by claim 11 wherein the shell material is a hydrophobic water-insoluble film-former comprising a chemical condensation polymer."

Finally, claims 23 to 29 of the Macaulay patent are directed toward recording sheets or paper with a coating of microcapsules. Claim 24 is representative here and set forth below. ³ It should be noted that under claim 24 the microcapsules applied to the paper are described as "being those defined by claim 11."

In its answer to Moore's complaint, 3M denied infringement and asserted as affirmative defenses that the Macaulay patent is invalid and that Moore is barred by laches from enforcing the Macaulay patent against 3M's Type 200 carbonless copying paper. In July 1973 3M moved for summary judgment solely on the ground of noninfringement. It based its argument on affidavits showing that 3M's capsules are formed in an aqueous solution, are maintained as a slurry in such aqueous solution, and are still in an aqueous solution when finally applied to paper. At no time do the capsules take the form of a free-flowing Powder. On the other hand, 3M argued that claims 1 to 10 of the Macaulay patent by their terms describe a process for producing a free-flowing Powder of microcapsules. Claims 11 through 22 are product claims directed toward a "free-flowing Powder of microscopic discrete rupturable capsules . . .." (Emphasis added.) And claims 23-29 relate to copying paper coated with microcapsules, said capsules "being those defined by claim 11." 3M argued that claims 24 to 29, although not containing the words "free-flowing powder," ⁴ are dependent on claim 11, and thus not only include the restrictions contained in claim 11 as to the chemicals from which the capsules' shell walls could be made, but also incorporate the reference in claim 11 to "free-flowing powder."

3M argued not only that its paper and processes do not come within the express language of the patent, but that file wrapper estoppel precluded Moore from arguing that there was still an issue of fact as to whether the Macaulay process and product claims were being infringed by 3M's Type 200 paper and the process for producing it. Absent such an estoppel, Moore could argue that 3M's processes, capsules, and copying paper were "equivalents" to those claimed in the Macaulay patent, and therefore infringing, even if 3M's capsules were never in the form of a free-flowing Powder as allegedly required by the express language of the Macaulay patent claims. See, e. g., Graver Tank Co. v. Linde Air Products Co., 339 U.S. 605, 608-09, 70 S.Ct. 854, 94 L.Ed. 1097 (1950).

On July 2, 1974, the district court granted summary judgment in favor of 3M. 384 F.Supp. 533 (W.D.N.Y.1974). The court, focusing on the specifications preceding the claims in the Macaulay patent, stated initially:

"The obvious thrust of the description of the Macaulay patent is to distinguish the process described in the Macaulay patent from the prior art as described in the Green patent ⁵. . . .

While in the Green patent the walls of the capsule are produced in the aqueous solution, in the Macaulay patent the walls are produced when the component chemical materials are spray-dried. . . . By looking at the claims of the Macaulay patent, there can be no doubt that it is essential to the Macaulay process of producing microscopic capsules that they be produced by drying the component materials into a free-flowing powder. Each of the claims of the Macaulay patent calls for or depends upon a free-flowing powder of microscopic capsules. . . . No claim of the Macaulay patent includes microscopic capsules formed in an aqueous solution."

Id. at 537 (emphasis added).

The court then noted that under the doctrine of file wrapper estoppel, if a patent applicant, after being refused a patent, amends his application to narrow the scope of his claims in order to obtain a patent, he cannot later charge infringement against a device which falls within the scope of the disclaimed or abandoned subject matter. Id. at 538, Citing Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 136-37, 62 S.Ct. 513, 86 L.Ed. 736 (1942). The court very generally traced part of the history of the Macaulay application, which was twice amended before being finally allowed. The court concluded, largely on the basis of arguments made by Moore's counsel to the patent examiner, that

"the entire thrust of the patent applicant's two revisions was to distinguish his process of producing microcapsules as a free-flowing powder from the process of producing microcapsules in aqueous dispersions. The conclusion seems inescapable that the patent office granted the Macaulay patent with the limitation that the process patented was the process of producing microcapsules by spray-drying. It is clear from the proceedings before the patent examiner that the applicant intended to distinguish the process by which the shell wall is produced by drying from the process of producing the shell wall in aqueous dispersion."

384 F.Supp. at 540. The district court concluded that plaintiff was precluded from attempting to show that producing microcapsules in aqueous dispersions is equivalent to producing microcapsules as a free-flowing powder. It also found that the affidavits submitted by 3M raised no genuine issue of fact on the question of defendant's Type 200 paper infringing the Macaulay patent.

II. Process Claim 8.

Moore argues on appeal that there is a disputed issue of fact as to whether 3M's process for producing...