United States Plywood Corp. v. General Plywood Corp.

• Decision Date: 10 March 1964
• Docket Number: Civ. A. No. 3908.
• Citation: 230 F. Supp. 831
• Parties: UNITED STATES PLYWOOD CORPORATION, Plaintiff, v. GENERAL PLYWOOD CORPORATION, Defendant.
• Court: U.S. District Court — Western District of Kentucky

230 F. Supp. 831

UNITED STATES PLYWOOD CORPORATION, Plaintiff, v. GENERAL PLYWOOD CORPORATION, Defendant.

Civ. A. No. 3908.

United States District Court W. D. Kentucky, at Louisville.

March 10, 1964.

Floyd H. Crews, William F. Dudine, Jr., Darby & Darby, Heilman & Heilman, James N. Heilman, New York City, Arthur W. Grafton, Wyatt, Grafton & Sloss, Louisville, Ky., for plaintiff.

John A. Blair, Everett R. Casey, Harness, Dickey & Pierce, Detroit, Mich., Arthur F. Robert, Louisville, Ky., for defendant.

SHELBOURNE, District Judge.

This suit was filed January 12, 1960 by the plaintiff, United States Plywood Corporation, a corporation created under the laws of the State of New York and hereinafter referred to as USP, against the defendant, General Plywood Corporation, a Kentucky corporation hereinafter referred to as GPC. The suit seeks a declaratory judgment as to the validity of United States Letters Patent No. 2,827,935 issued to George E. Alexander on March 25, 1958 and now owned by defendant GPC under an assignment from the patentee.

The application for the patent in suit was filed on October 10, 1956 and was given Serial No. 615,127. GPC urges that, in effect, the application on which the patent was granted was a continuation in part of a copending earlier application, Serial No. 566,690 filed February 20, 1956.

GPC filed a traverse of the complaint assailing the validity of the Alexander patent and filed two counterclaims. The first counterclaim alleged that USP had infringed the patent and seeks a recovery of damages and an injunction against further infringement. The second counterclaim seeks damages for the use of a wood finishing process by USP, which it obtained in confidence and used in violation thereof, and an injunction against further use of the process.

In amendments to the complaint and to its answer to the counterclaim, USP has charged fraud and misuse of the patent as an additional defense to the charge of patent infringement. USP's principal assault upon the patent in suit is that the process of the patent was discovered and used more than one year prior to patentee's application; that the patent discloses no patentable invention over prior art, and that the patentee Alexander was not the first and original inventor of the process described in the patent. It is also alleged that GPC is estopped from asserting an infringement of its patent by the doctrine of "File Wrapper Estoppel."

The case was tried to the Court beginning December 7, 1962 and concluded February 20, 1963. Oral argument of counsel was heard over a period of five days in August and the case was briefed extensively until the latter part of September, 1963. Counsel for both parties have gone to great pains, trouble, and expense to assist the Court.

In considering the voluminous record in this case the Court is reminded of Judge Wyzanski's statement in his memorandum in Nyyssonen v. Bendix Corp., 137 U.S.P.Q. 853: "This case presents great difficulties to a judge who, like myself, has only the most elementary training in science and mathematics, and has little experience with modern technological developments." It has been necessary to condense a large mass of facts in order to determine the principal questions of validity of the Alexander patent and whether that patent, if valid, has been infringed by USP. The proposed findings of fact and conclusions of law tendered by counsel for the parties, consisting of 187 pages for plaintiff USP and 213 pages for defendant GPC, will be considered as having been offered and rejected by the Court, except where adopted by the Court or where in accord with the Court's findings and conclusions.

FINDINGS OF FACTS

1. The patent in suit employs the "microseal" process of finishing wood in the white, that is, without the aid of fillers or top coats. The process is for treating a flat wood surface in a straight-through production line operation whereby the treated surface acquires certain desirable properties such as increased hardness, smoothness, and reflectivity and reduced porosity and absorbency. In the broadest sense, the process produces the desired effect by a momentary application of frictionally induced heat coupled with sufficient pressure to compress, pressure smooth, and densify the surface wood without scorching.

According to the patent in suit, the essential frictional heat is generated by non-abrasively buffing the wood surface with a buffing medium having a flexible, yielding, relatively non-abrasive, frictional, heat insulating rubbing surface. The requisite pressure is developed by compressing the buffing medium between a backing member and the wood surface so as to press the buffing medium into a firm and intimate contact with the wood surface. Finally, the buffing speed, pressure, and time of contact are correlatively controlled to produce momentarily a combination of heat and pressure at the point of contact to soften a thin layer of the wood surface while simultaneously compressing that layer.

The apparatus illustrated and described in the patent is a machine similar to a wide belt sander but uses a belt which operates as an "unabrasive" or relatively "non-abrasive" rubbing medium. The belt speed and pressure, as well as the rate of travel of the wood through the point of contact, generates the heat, and the temperature at the surface of the wood approaches but does not attain scorching temperature. The total time of rubbing contact on each point of the wood surface at a feed speed of 90 feet per minute is 1/25th of a second for a ¾ inch band of contact. By limiting the treatment time to a fraction of a second, the process heats and compresses a very thin layer of the wood surface without affecting the underlying wood structure and without scorching the treated surface area. Since the heated layer is very thin, the heat dissipates quickly after contact with the buffing medium thereby permitting the treated surface of the wood to harden and stabilize in its compressed state.

The process was named "microseal" by GPC and microsealed products have been sold by GPC under the trademark "Satin Surface" or "SS." It was recognized that the microseal process increased the gloss of the wood, decreased and made uniform the porosity of the wood, and embedded in the wood the hairs or fibers called "nibs" which existed where abrasives were employed in sanding operations.

Much of the controversy in this case has developed over the sharp issue as to whether there is any densification of the surface of the wood as claimed in the patent in suit. The process claims that the wood contains a material known as lignin, a natural resinous cementing material which when softened by heat causes the heated structure to be easily compressed, and, since the treatment time of heat and pressure is very short, the frictionally generated heat is confined to a very thin surface that is easily compressed by rubbing pressure. The layer of densification is small because wood is a poor conductor of heat.

The patent is specific that the belt to be used in the process should be flexible, yielding, and relatively non-abrasive, such as canvas or other cloth made of natural or synthetic fibers, providing a flexible, frictional, relatively non-abrasive buffing or rubbing surface composed of nonmetallic material. In recommending temperatures, pressures, work feed rate, and other factors to be correlated so as to produce the desired densification without scorching the wood, the patent says: "It is extremely difficult to determine the precise temperatures and pressures which obtain in the practice of this invention with the apparatus in the drawing."

2. George E. Alexander, inventor of the microseal process, is a mechanical engineer and was employed by GPC in 1947. After serving in various capacities at GPC plants in other states, he was transferred to Louisville in March, 1954 as production manager and later became vice president in charge of production. At that time, GPC was primarily interested in producing and marketing plywood doors and door skins then in great demand by the building trade. A door skin is the thin outer coat of a door applied to the unfinished solid center or core commercially called a "hollow core."

When Alexander was placed in charge of all production by GPC's president, Henry M. Reed, Jr., he was given the special assignments of developing a method to sand doors on a continuous production line basis and to improve the finish of the doors. Through experiments in sanding and buffing operations conducted in 1954, Alexander conceived the idea which resulted in the process later named "microseal" by GPC. During his studies and experiments, he confided his ideas only to Mr. Reed; Francis A. Bade, Jr., then chief engineer, and Lloyd E. Dimond, a chemist and glue expert, at GPC.

In 1955, Alexander contacted Oliver Judd, who as a representative of Minnesota Mining and Manufacturing Company (hereinafter referred to as 3M) was a frequent caller at the GPC plant because of the latter's purchase of 3M's abrasives. His first inquires to Judd concerned the method of developing the smoothness and finish or burnish of hammer handles. From Judd, Alexander learned that cork belts were obtainable for wide belt sander machines. In its efforts to obtain a wide belt sander that could be used to sand and finish its doors in accordance with Alexander's ideas, GPC conducted experiments at Mattison Machine Company's plant in Wisconsin in September, 1954 with unsatisfactory results. In December, 1954, GPC permitted Timesavers, Inc., to give a public demonstration of its wide belt machine, which was also unsuccessful because the contact roll, like that on...