Solex Laboratories, Inc. v. Plastic Contact Lens Co.

• Decision Date: 24 June 1959
• Docket Number: No. 12530.,12530.
• Parties: SOLEX LABORATORIES, INC., Plaintiff-Appellant, v. PLASTIC CONTACT LENS COMPANY et al., Defendants-Appellees.
• Court: U.S. Court of Appeals — Seventh Circuit

268 F.2d 637 (1959)

SOLEX LABORATORIES, INC., Plaintiff-Appellant, v. PLASTIC CONTACT LENS COMPANY et al., Defendants-Appellees.

No. 12530.

United States Court of Appeals Seventh Circuit.

June 24, 1959.

Allan D. Mockabee, Fred H. Miller, Los Angeles, Cal., Bertram Wm. Coltman, Chicago, Ill., Hazard & Miller, Los Angeles, Cal., of counsel, for appellant.

A. W. Molinare, Albert E. Jenner, Jr., Chicago, Ill., Philip W. Tone, Will Freeman, W. M. Van Sciver, Chicago, Ill., Bair, Freeman & Molinare, Chicago, Ill., Thompson, Raymond, Mayer, Jenner & Bloomstein, Chicago, Ill., of counsel, for appellees.

Before SCHNACKENBERG, PARKINSON and CASTLE, Circuit Judges.

CASTLE, Circuit Judge.

This is an interlocutory appeal from a preliminary injunction issued against the plaintiff in a patent infringement suit. Appellant, Solex Laboratories, Inc., (Solex) the owner of a patent on a corneal type contact lens (the Tuohy patent) sued defendants-appellees, The Plastic Contact Lens Company (Plastic) and two of its officers for infringement. The complaint was filed March 15, 1957, and subsequent to the filing of an answer and counterclaim (March 27, 1957) and a supplemental counterclaim and answer (October 17, 1958) raising issues of validity, infringement and misuse, the preliminary injunction was issued October 17, 1958¹ on the motion of Plastic after notice and hearing.

The issues for determination on this appeal are (1) whether the district court abused its discretion in granting the preliminary injunction, and (2) abused its discretion in setting the amount of the injunction bond.

The rule governing the scope of our review in such matters is succinctly stated in Westinghouse Electric Corporation v. Free Sewing Machine Co., 7 Cir., 256 F.2d 806, 808 where it was said:

"Upon an appeal from the granting or denial of a preliminary injunction, this Court has a very limited scope of review. Mytinger & Casselberry, Inc. v. Numanna Laboratories Corp., 7 Cir., 215 F.2d 382, 384. The sole issue here is whether the District Court abused is discretion. Weiner v. National Tinsel Mfg. Co., 7 Cir., 123 F.2d 96, 97; Doeskin Products, Inc. v. United Paper Co., 7 Cir., 195 F.2d 356, 360-361."

Plastic's motion was supported by affidavits and exhibits and Solex filed an affidavit and exhibit. The pertinent facts insofar as this appeal is concerned are as follows:

Solex and Plastic are both manufacturers of contact lenses. During the pendency of the instant case proceedings were also pending in the United States District Court of the Southern District of California between Solex and six fitters and dispensers of contact lenses in which Solex claimed patent infringement. None of the defendants in the case at bar was a party to the California litigation. On August 6, 1958 the California District judge filed an opinion, Solex Laboratories, Inc. v. Graham, 165 F.Supp. 428, that the patent was valid and infringed, but at the time of the hearing and issuance of the temporary injunction in the instant case the California court had not entered findings of facts or conclusions of law or a decree or other appealable order. Concurrently with the filing of his opinion the California district judge released a document entitled "Statistical Facts and Summary in the Contact Eye Glass Cases, decided by me, August 6, 1958" in which after identifying the parties to the litigation, setting forth pertinent dates and mentioning the time consumed in the trial, the Judge stated,

"* * * This is the second time that this particular patent has been before this Court. Judge Ben Harrison had a case which was filed by Solex against Pacific Contact Laboratories, Inc., on November 17, 1950. Judge Harrison held the patent to be valid and infringed. On appeal, the Court of Appeals for this Circuit upheld Judge Harrison. The defendants in my case are entirely different defendants and they were therefore entitled to a distinct trial and offered a much more elaborate defense than was done in the case before Judge Harrison. That case was Solex Laboratories v. Pacific Contact Laboratories 9 Cir., 209 F.2d 529.

"The original contact eye glass was quite large and the contact was made on the eye over the white portion. This contact was uncomfortable because it interfered with normal blood circulation and the wearer could only keep the lens in place for a short period. In addition, this early lens resulted in clouded vision because an artificial fluid had to be used between the lens and the eye and this fluid rapidly deteriorated and caused clouding. The Tuohy invention reduced the size of the lens to a very small structure made out of plastic. It covered a little less than the colored portion of the eye and it touched the eye directly only at the highest point in the eyeball. Outwardly from that point there was a slight flaring so that natural tear fluid would move into the area and the use of artificial fluid was eliminated. This was new and was held to be invention.

"The case has now been referred to Theodore C. Hocke a Special Master to determine how many infringing lenses the various defendants have made or sold. When Hocke determines the number of the infringements, he will report back to the Court which will then fix a royalty which the defendants will have to pay to Solex Laboratories, Inc., and the defendants will then be enjoined from further infringements unless they obtain licenses from Solex. * * *"

Solex circularized the trade, including approximately 7,000 of Plastic's customers, with a copy of the document above mentioned. It was accompanied by a letter in which Solex quoted portions of the Court's opinion and added in part:

"It is our belief that if you are using Contact Lenses, of the corneal variety that such lenses fall within the claims of our patent; therefore, you are illegally usurping rights and privileges which belong wholly to us, and it is required that you have our permission to use, sell or manufacture such lenses. The purpose in writing this general letter is to assure you that we shall continue relentlessly to prosecute any and all individuals whom we believe are infringing on rights which the Federal Courts and the Patent Office, and indeed our Constitution says belongs to us.

"To make it clear, we quote Judge Tolin from page 22 line 8 165 F. Supp. 436:

"`* * * IT APPEARS BY SUBSTANTIAL EVIDENCE, AND THE COURT FINDS IT TO BE TRUE, THAT THE CONTACT LENSES SOLD BY DEFENDANTS ROBERT GRAHAM AND JOHN L. ROBERTS, d. b. a. JOHN L. ROBERTS OPTICAL CO., WERE PRODUCED BY THE PLASTIC CONTACT LENS COMPANY OF CHICAGO, ILLINOIS.\'

* * * * * *

"If you are a doctor, or dispensing optician, please find out from an attorney what the facts of patent life are, rather than listening to some representative of a house who tells you that their lens is different from the Tuohy Lens. You are the responsible party. You must defend yourself. While a copy of the full and complete decision is available on request, these verbatim quotations from the actual decision should guide you in the action you will take.

* * * * * *

"Remember that if you sell, make or use a contact lens that falls within the court determined rights of the Solex Patent you may not do so without receiving permission from us. Licenses are available and we welcome your inquiry concerning licensing. There are serious consequences to patent infringement. If you are not fully aware of them it would be my suggestion that you seek counsel before it is necessary that we bring you to court should you plan to continue the use of infringing lenses."

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