Reeves Brothers, Inc. v. US Laminating Corp.

• Decision Date: 05 November 1969
• Docket Number: 32442.,No. 1,Dockets 32440,2,3,32441,1
• Parties: REEVES BROTHERS, INC., Plaintiff-Appellant and Cross-Appellee, v. U. S. LAMINATING CORP. and Travis Rauch, Defendants-Appellees and Cross-Appellants.
• Court: U.S. Court of Appeals — Second Circuit

417 F.2d 869 (1969)

REEVES BROTHERS, INC., Plaintiff-Appellant and Cross-Appellee, v. U. S. LAMINATING CORP. and Travis Rauch, Defendants-Appellees and Cross-Appellants.

Nos. 1, 2, 3, Dockets 32440, 32441, 32442.

United States Court of Appeals Second Circuit.

Argued September 18, 1969.

Decided November 5, 1969.

S. Leslie Misrock, New York City (Pennie, Edmonds, Morton, Taylor & Adams, New York City, Jonathan A. Marshall, New York City, on the brief), for plaintiff-appellant and cross-appellee.

Stanley H. Cohen (Caesar, Rivise, Bernstein & Cohen, Philadelphia, Pa., A. D. Caesar, Philadelphia, Pa., on the brief, Irving Moldauer, New York City), for defendants-appellees and cross-appellants.

Before LUMBARD, Chief Judge, WATERMAN and KAUFMAN, Circuit Judges.

IRVING R. KAUFMAN, Circuit Judge:

While this suit for infringement raises the usual host of issues and sub-issues common to all patent cases, the basic controversy is over the obviousness, and thus the validity, of the underlying patent. Since Judge Bartels' careful and extensive opinion¹ deals at some length with the factual underpinnings, we shall try to avoid repetition, except where ncessary to clarify our reasons for agreeing with his holding that the patent was invalid for obviousness under 35 U.S.C. § 103 (1964.)

Reeves Brothers, Inc. ("Reeves"), assignee of the original patentee, sued U. S. Laminating and its owner, Travis Rauch ("U. S. Laminating") for infringement. At issue was a patent on a process for attaching polyurethane foam to fabric by use of heat (No. 2,957,793), a second patent improving the laminating apparatus (No. 3,057,766), and a reissue of the second patent correcting some errors in description (No. Re. 25,493). U. S. Laminating interposed a variety of defenses in a fashion the District Court characterized as "shotgun." Because of the conclusions we have reached, we need pass only on the question of obviousness.

In March, 1956, Curtiss-Wright Corporation employed John W. Dickey, a chemical engineer, to find some way to attach polyurethane foam to carpeting, so that it might be used as an underlay. Although he was advised that heating the foam was impractical and would decompose when heated to a temperature sufficient to fuse, towards the end of March he passed a piece of polyurethane foam through a Bunsen burner, and then pressed it to a piece of fabric. He discovered that the foam would adhere without damaging the fabric, or decomposing the polyurethane. The first patent involved little more than an arrangement of rollers and a burner on a flat bed conveyer, that heated the foam and pressed it to the fabric while it was still tacky. Dickey applied for a patent on September 28, 1956. After five rejections by the patent office, Dickey obtained a patent on August 16, 1960, on a process, which in substance claimed that the polyurethane, after being heated to at least 450° F., and cooled below its normal freezing point while still remaining tacky, could be pressed against the fabric (laminated) without damaging it.

While the original apparatus was satisfactory for laminating polyurethane to carpets, it tended to wrinkle when applied to fabrics suitable for use in garments. Accordingly, Dickey devised an arrangement of rollers that would tension the foam before lamination, ending the problem of wrinkles. In addition, the second patent indicated that the material to which the foam was to be bonded could be pre-heated, thus increasing its adhesion to the foam. He applied for a patent in September, 1957, and after four rejections succeeded in having an amended application accepted on January 11, 1962. In January, 1963 Dickey applied for a Reissue of the second patent, primarily directed at correcting inartful language in the original. This was granted on December 10, 1963.

The tests for obviousness were described in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966):

"Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined." 383 U.S. at 17, 86 S. Ct. at 694.

The District Court relied both on preexisting patents and expert testimony to conclude that flame lamination of polyurethane foam was amply foreshadowed in the prior art.² Relying heavily on expert testimony introduced by both Reeves and U. S. Laminating, Judge Bartels determined that it was well known to those skilled in the art that thermoplastic materials would assume a supercooled state (remain fluid below their normal freezing point) if cooled rapidly. Furthermore, while plaintiff's expert preferred to describe polyurethane foam as "thermosetting" (taking a different chemical form after fusing), testimony established that it was thought in 1956 to have thermoplastic properties, and was indeed described as such in the Dickey patent application. Thus a person skilled in the art³ would have expected polyurethane foam to have acted in a manner at least somewhat similar to other thermoplastics, and the content of the prior art with respect to bonding thermoplastic materials generally, as well as polyurethane foam specifically, would have to be considered in evaluating the obviousness of the first Dickey patent.

Prior patents pointed the way to the Dickey flame lamination process. In particular, the Abbott patent, No. 2,398,398 (April 16, 1946) and the Snyder patent, No. 2,293,568 (August 18, 1942), discussed the use of flame heating to laminate thermoplastic films to cloth and other substances. Films and foams may not be identical, as Reeves suggests, but they can hardly be thought to be so different that one working with foam would feel compelled to ignore what had been done with film. More to the point, the Hacklander patent, No. 2,878,153 (March 17, 1959, but pending at the time of Dickey's application⁴), involved a process for spot welding one piece of polyurethane foam to another by use of heat. A German gebrauchsmuster patent⁵ of January, 1955, discussed direct bonding of polyurethane foam material to fabric or another piece of foam. Dr. Christopher Wilson, who testified as U. S. Laminating's expert, also received patent No. 3,170,832 (February 23, 1965, filed July 8, 1954), which involved heat and adhesive lamination of thermoplastic film to polyurethane foam.

We are mindful of the dangers of indiscriminate random selection from prior art to support a finding of obviousness. See C-Thru Products, Inc. v. Uniflex, Inc., 262 F.Supp. 213, 219 (S.D.N.Y. 1966). However, here the patents considered were directed to laminating thermoplastic materials, the area with which Judge Bartels found a man skilled in the pertinent art would be familiar. In addition, there was competent testimony by defendant's expert, Wilson, that the thermoplastic properties of polyurethane foam were known as early as 1954, as well as the introduction of specific patents (Snyder and Abbott) involving flame lamination of thermoplastics. Having thus determined the scope and content of the prior art, as well as the level of ordinary skill (see note 3, supra), the District Court was justified in concluding that the difference between the Dickey patent and the prior art was insufficient to support a finding of nonobviousness. While there is a presumption of patent validity, 35 U.S.C. § 282, that presumption means no more than that reasonable doubts will be resolved in favor of the...