United States Plywood Corp. v. General Plywood Corp.

• Decision Date: 28 December 1966
• Docket Number: 16195.,No. 16194,16194
• Citation: 370 F.2d 500
• Parties: UNITED STATES PLYWOOD CORPORATION, Plaintiff-Appellee, v. GENERAL PLYWOOD CORPORATION, Defendant-Appellant. UNITED STATES PLYWOOD CORPORATION, Plaintiff-Cross-Appellant, v. GENERAL PLYWOOD CORPORATION, Defendant-Cross-Appellee.
• Court: U.S. Court of Appeals — Sixth Circuit

370 F.2d 500 (1966)

UNITED STATES PLYWOOD CORPORATION, Plaintiff-Appellee, v. GENERAL PLYWOOD CORPORATION, Defendant-Appellant.

UNITED STATES PLYWOOD CORPORATION, Plaintiff-Cross-Appellant, v. GENERAL PLYWOOD CORPORATION, Defendant-Cross-Appellee.

Nos. 16194, 16195.

United States Court of Appeals Sixth Circuit.

December 28, 1966.

Morris Relson, New York City, for United States Plywood Corp., Heilman & Heilman, James M. Heilman, Darby & Darby, William F. Dudine, Jr., New York City, of counsel.

John A. Blair, Detroit, Mich., for General Plywood Corp., Everett R. Casey, Harness, Dickey & Pierce, Detroit, Mich., Arthur F. Robert, Louisville, Ky., on brief.

Before PHILLIPS, EDWARDS and CELEBREZZE, Circuit Judges.

EDWARDS, Circuit Judge.

These appeals represent the culmination of a bitter controversy between a giant member of the plywood industry and a somewhat smaller competitor.

United States Plywood is the biggest of American plywood manufacturers. General Plywood is a substantial manufacturer of plywood doors based in Louisville, Kentucky. At the relevant times in this record the whole industry was adversely affected by the entrance into the United States market of Japanese plywood imports. And at the time also more and more plywood panels were being sold in factory finished form for interior use in housing and office building.

The industry prepared such panels for factory finishing (or for sale to the construction industry unfinished) by running the panels through a series of machine sanders (usually three). The first such machine employed a rough sandpaper of 1/0 grit; the next two were progressively finer. It appears that the finest in general use by the industry at this stage, prior to the event we deal with, was 4/0 grit.

This sanding produced plywood panels ready for finishing and termed in the industry "wood in the white." The surface while relatively smooth was porous, somewhat fibrous, absorptive and without gloss or sheen.

Subsequently, to change all these surface characteristics, finishing required filler, stain, lacquer and polishing. Each of these processes when done at the factory required one or more machine passes with consequent production costs.

In 1954, George E. Alexander, Production Manager of General Plywood, conceived the idea of "buffing," "polishing," or "burnishing" the "wood in the white" panel at this stage before the finishing process. He first tried a cloth buffing wheel which produced some of the effect he was seeking, but with irregularities, including scorch marks, which made the result unsatisfactory. Pursuing the effort, Alexander experimented with a patented "Timesaver" machine, which was capable of production processing of plywood sheets. This machine had adjustable feed and roll speeds and roll pressures. Ultimately Alexander ordered a specially constructed Timesaver with a 38-inch roll. The only individual feature added to this machine (other than width) was a special "soft contact roll."

Alexander discussed his proposed process with one Oliver S. Judd, of Minnesota Mining & Manufacturing Company (a leading abrasive manufacturer) and inquired as to what was "used to polish hammer handles." Judd answered, "cork belts," and Alexander thereupon ordered a specially fabricated 38-inch wide cork belt for the Timesaver machine. Both the Timesaver machine and the 3M cork belt were the subject of pre-existing patents. But it does not appear that the two had previously been employed in combination to "buff," "polish," or "burnish" wood in the white plywood panels. When feed speed and roll speed and pressure were adjusted so that panels were fed through the machine at approximately 90 feet per minute, with a one inch (or less) band of contact where surface heat of upward of 400 degrees was generated, the effect which Alexander was looking for was produced. The surface was smoother, glossier, less absorptive, and (as Alexander termed it) "densified." Alexander called the new process "microsealing."

In these stages Alexander worked closely with Judd of 3M and with Pendergast of Timesavers. When Alexander became convinced that he had a commercially valuable process (he terms it "revolutionary"), he (and General Plywood) set out to patent it. At that point General Plywood discovered that Judd, on behalf of 3M, had also applied for a patent without notice to Alexander or General Plywood.

Judd's patent application was dated March 27, 1956, and on October 9, 1956, the patent was granted to him. Alexander's patent application was dated October 10, 1956¹ and the examiner denied the patent.

Subsequently, the Board of Patent Appeals reversed the examiner and granted the Alexander patent, after finding it not anticipated by prior-art (apparently including the Judd patent). Litigation between General Plywood, assignee of Alexander's patent, and 3M, assignee of the Judd patent, resulted in dedication to the public of the Judd patent and an agreement by 3M not to contest validity of the Alexander patent.

The Alexander patent is best described briefly, we think, by quoting Claim 11:

"The method of providing a substantially flat wood surface with a glossy and relatively non-porous finish comprising; non-abrasively buffing the surface with a buffing medium having a flexible yielding relatively non-abrasive frictional heat insulating rubbing surface moving at a predetermined buffing speed, compressing the buffing medium between a backing member and said wood surface to press the buffing medium into firm and intimate contact with said surface; and correlatively controlling the buffing speed, pressure and time to compress, pressure smooth and densify the surface wood without scorching."

For further consideration, particularly of the problems of validity and infringement, other paragraphs elaborating the process described in the Alexander patent application are relevant:

"The principal object of this invention is to provide a novel wood surface treating process which can be simply and inexpensively carried out and which results in the substantial improvement of that surface in one or more respects such as increased hardness, smoothness and reflectivity and reduced porosity and absorbency.

"Another important object is to provide a wood glossifying process which can be performed at high speed on a straight through production line conveyor.

"Another important object of this invention is to provide a novel and inexpensive frictional method for changing the structure of the wood along the surface without changing the underlying structure and, through such change, to effect a substantial increase in surface smoothness and a substantial decrease in its ability to absorb finishing or other materials.

"Another object of this invention is to provide a new and novel process for producing a wood product having its surface wood structure of relatively greater density and finer texture than the density and texture of the underlying natural wood structure."

* * * * * *

"It should be noted that I preferably employ a surface treating belt of the type having a cork surface, e. g., as exemplified by the belts presently made under U. S. Patent No. 2,542,058, except that the very mild abrasive sometimes employed in such cork belts is unnecessary and may be omitted. Any other flexible, yielding, relatively nonabrasive frictional rubbing medium or frictional belt material, such as canvas, or other cloth made of natural or synthetic fibers, may be employed so long as it is capable of frictionally developing the requisite temperature when the requisite operating conditions are employed, and of withstanding both the operating temperatures and pressures. It will be observed that these belts provide a flexible, frictional, relatively nonabrasive buffing or rubbing and somewhat yielding surface composed of nonmetallic material. Since this material, in comparison with metal, is a relatively poor conductor of heat or a good heat insulator, it may be aptly described as a heat insulating material."

* * * * * *

"The process, however, is essentially a nonabrasive process, as is clear from the fact that even a very light pencil mark made on a piece of wood before treatment is not removed therefrom during the surface treatment."

* * * * * *

"Superior results are achieved by the apparatus illustrated in the drawing wherein the surface of the wood is heated directly by friction and it is a simple matter to obtain relatively uniform pressure between the friction member and all portions of the wood surface and hence uniform heating and densification even though the wood surface is not perfectly flat. In that connection, the use of a rubber or other yielding sleeve on drum 10 helps to distribute the pressure uniformly over the surface even though the surface is not perfectly flat and the sheet of wood is relatively rigid. * * *"

"It is extremely difficult to determine the precise temperatures and pressures which obtain in the practice of this invention with the apparatus of the drawing. I am well satisfied that the minimum temperatures employed should fall within the softening-melting range (400° F. to 525° F.) of the heat plasticizable content of the wood. I am equally well satisfied that the momentary operating temperatures employed may and preferably do greatly exceed that range so long as the contact time is reduced sufficiently to prevent charring of the surface wood in all instances and scorching in those instances where it is objectionable.

* * * * * *

"Since the desired results are achieved when the temperatures developed are high and only surface wood is heated it is desirable to complete the treatment with the apparatus of the drawing within a time period of no more than 1/5 of a second, and preferably within a period not exceeding 1/18 of a second. The period of treatment is determined by the width of the wood surface contacted under pressure by the friction member and the rate of feed of the work. With a 16-inch

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