New Wrinkle v. Fritz
| Decision Date | 26 March 1942 |
| Citation | 45 F. Supp. 108 |
| Parties | NEW WRINKLE, Inc., v. FRITZ. |
| Court | U.S. District Court — Western District of New York |
John S. Powers, of Buffalo, N. Y., and Toulmin & Toulmin, of Dayton, Ohio, (Frederick S. Duncan, of New York City, H. A. Toulmin, H. A. Toulmin, Jr., and Rowan A. Greer, all of Dayton, Ohio, and John S. Powers, of Buffalo, N. Y., of counsel), for plaintiff.
Albert Henry, of Buffalo, N. Y., Gray & Smith, of Detroit, Mich., (Elmer Jamison Gray and Arthur M. Smith, both of Detroit, Mich., and Harold E. Howlett, of Pontiac, Mich., of counsel), for defendant.
This is a suit for infringement of certain claims of Root Patent No. 1,732,661, application filed May 25, 1927, granted October 22, 1929, and of Root Patent No. 1,896,594, application filed March 7, 1929, granted February 7, 1933. Admittedly the plaintiff is the owner of these patents. Suit was originally brought against the Pontiac Varnish Company, a Michigan Corporation (hereinafter called Pontiac). The complaint against the corporate defendant was dismissed for lack of jurisdiction. D.C., 30 F.Supp. 89.
Pontiac has assumed the direction of the defense herein and is bearing the expense thereof.
The patents relate to varnishes and enamels for the production of so-called wrinkle finishes and to articles carrying such finishes. The manufacturer supplies the liquid to the manufacturer of the article who applies it by brush or spray. The article when covered is subjected to a baking temperature accurately controlled. The Claims of Patent No. 1,732,661 in issue are article claims. The Claims of Patent No. 1,896,594 in issue include article, composition and method or process claims.
A "wrinkle finish" is described as one which has over the surface a series of parallel ridges running in irregular directions, of substantially the same height, closely adjacent to one another, and following a substantially duplicate pattern and designated as regularly irregular. It is aptly described as "smooth like the ripples in sand blown in parallel ridges by the wind." In recent years this particular type of wrinkle finish has obtained wide use as a covering of metals, glass, stone, cardboard and numerous other surfaces. Below are shown drawings of the Root patents and also a sample of an article of manufacture with the so-called "wrinkle finish."
The defenses are non-infringement, invalidity and non-liability of defendant Fritz.
The Claims in dispute, as set forth in the complaint and included in the stipulation of the parties, are 1 and 2 of Patent No. 1,732,661, and 1, 2, 4, 5, 6, 7, 9, 10, 13, 14, 19, 22, 23, 25, 26, 27 and 28 of Patent No. 1,896,594.
Claim 1 of Patent No. 1,732,661 is typical of the claims of that patent in issue and reads: "An article of manufacture carrying a wrinkle baked coating of a drying oil and a resin." These claims are 1 and 2 of the first patent and 5, 6, 7, 9, 10 and 19 of the second Root patent.
Claims 1, 2, 4 and 22 of the second Root patent are drawn to a wrinkle finish. Claim 1 is typical and reads: "A wrinkle finish composition comprising raw China-wood oil, a wrinkle finish resin, drier and thinner in proportions to yield a wrinkle finish when dried." Claims 13, 14, 23, 24, 25, 26, 27 and 28 of the second Root patent are method claims. These are typified by Claim 26 which reads: "The process of producing coatings on articles of manufacture which comprises applying to the surface of such articles a composition containing oxidized China-wood oil adapted upon baking to yield a wrinkled finish coating, and then baking the coated article to produce a wrinkled finish coating."
I. In view of the conclusions hereinafter made, it will be advantageous to consider whether the defendant Fritz has manufactured or sold or used any article of manufacture carrying a wrinkle baked coating of a drying oil and resin, or any composition of such wrinkled finish or practiced any process claimed to be covered by any of the claims of the patents in suit. Fritz was a salesman for Pontiac. He solicited orders from the Harrison Radiator Company for sales to it of wrinkle varnish finishes to be applied as a coating to a metal article of manufacture. Fritz was paid a commission on the sales. In addition he received an annual salary as salesman and re-payment of his expenses. Harrison through previous negotiations with the Pontiac Company had agreed upon the type of wrinkle finish to be used. The sufficiency of the finish as such after application is dependent upon not only the materials of the composition but the method of application to the metal and the degree of heat and the time of baking on the metal. Fritz brought Leonard, a chemist for Pontiac, who had helped make the Pontiac formula, to go with him on different occasions to help to formulate the material at the Harrison plant and applied it on the shells going through the ovens. During negotiations for the sale of this product, Pontiac submitted through Fritz 55 samples, wet and dry. The problem was to meet the peculiar requirements of Harrison as to temperature of its oven, the rate of the bake, and consider other factors. Fritz testified: "the chemist just came down to formulate the material in their plant and to apply it on some of the shells going through the oven." Fritz was present at Harrison's. He knew the purpose for which these tests were to be made, and he knew that he was employed to sell the finished article.
The decision of this Court in 30 F.Supp. 89, is re-affirmed. Art Metal Works v. Henry Lederer & Bro. Inc., D.C., 36 F. 2d 267; and Davis v. Motive Parts Corp., D.C., 16 F.2d 148, cited by the defendant upon the question of the jurisdiction over Fritz, each involves the liability of an officer of the corporation which acted as a salesman for another corporation. That question is not presented here. Assuming that Claims 1 and 2 of the first Root patent and 5, 6, 7, 10 and 19 of the second Root patent are valid, Fritz was an infringer of these Claims.
II. Assuming validity, Fritz infringed Claims 1, 2, 4, and 22 of the second Root patent. He sold the composition covered by these Claims to Harrison on various occasions and made total sales of 5,000 gallons. He also solicited an order for the same composition from the Potter Refrigerator Company.
III. There is nothing in the record to show that Fritz ever engaged in the process of producing wrinkle finishes on articles of manufacture. He took none of the steps in the processes comprised in the method or process claims. He neither applied nor assisted in the applying any wrinkle coating; neither did he bake nor assist in the baking of any coating upon any article of manufacture. His only connection in this respect was in bringing the chemist Leonard to Harrison. It is, therefore, unnecessary to consider Claims 13, 14, 23, 25, 26 and 27 of the second Root patent. Fritz did not infringe these claims.
This formula shows a composition of resin and oil with driers and volatile solvents. These are combined in a proper ratio to make a wrinkle finish which is the same in pattern and result as that of the patents in suit.
Typical Claim 1 of the second Root patent reads: "A composition comprising raw China-wood oil, a wrinkle finish resin, drier and thinner in proportions to yield a wrinkle finish when dried," and Claim 4 is for a composition "set forth in Claim 1 in which the ratio of oil to resin is from 8 to 25 gallons of oil to 100 lbs. of resin." Defendant uses 100 pounds of resin to 19.6 gallons of oil. The defendant uses a 6% cobalt drier. This drier is "cobalt naphthanate." All cobalt naphthanate driers are sold with a 6% metal content. Patent No. 1,896,594, specifies a drier "cobalt acetate, red lead, manganese borate, lead linoleate etc., used alone or in admixture with each other or with other driers and materials." This formula of the defendant includes high volatile solvent.
The patent teaches the use of low boiling and highly volatile thinners and states its illustrative thinners and solvents as "light naphthanate, toluol oil, benzol, petroleum." The Root Patent specifies a range of temperatures in baking. This is made necessary by reason of the fact that each manufacturer might have a different kind of furnace, air circulation and time of baking. The range specified is for metal and related surfaces; the temperatures may range from 150 to 450° F., while for wood and related materials, the temperature range may be from 120 to 140° F. Harrison baked at 285 F. temperature for 14 min. It had a forced draft system. This increased the oxidation and permitted high temperatures for short periods. Substantially the same ingredients in substantially the same proportions are shown in the above formula as are taught by Patent No. 1,896,594, and they effect like results. There is little dispute as to this. The defendant seeks to find a difference in the compositions in that certain claims of this patent include "raw China-wood oil" and Pontiac's composition uses oxidized China-wood oil. No distinction is seen in this respect because, after the varnish was cooked, the oil was no longer raw. It is further to be said that Claim...
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