Westinghouse Electric & Manufacturing Co. v. Formica Insulation Co.

• Decision Date: 03 April 1923
• Docket Number: 3717.
• Citation: 288 F. 330
• Parties: WESTINGHOUSE ELECTRIC & MFG. CO. v. FORMICA INSULATION CO.
• Court: U.S. Court of Appeals — Sixth Circuit

288 F. 330

WESTINGHOUSE ELECTRIC & MFG. CO. v. FORMICA INSULATION CO.

No. 3717.

United States Court of Appeals, Sixth Circuit.

April 3, 1923

A. M Allen, of Cincinnati, Ohio (John C. Kerr, of New York City on the brief), for appellant.

J Edgar Bull, of New York City and John H. Lee, of Chicago Ill. (Dyrenforth, Lee, Chritton & Wiles, of Chicago, Ill., and Wood & Wood, of Cincinnati, Ohio, on the brief), for appellee.

Before KNAPPEN, DENISON, and DONAHUE, Circuit Judges.

DENISON Circuit Judge.

The appellant brought in the District Court the usual infringement suit upon claims 11 and 12 of patent No. 1,284,432, issued November 12, 1918, to O'Connor, on an application filed February 1, 1913, covering a process for making composite materials. The two claims are alike, save that claim 12 calls for 'a phenolic condensation product,' while claim 11 more broadly reaches in the same association any suitable adhesive substance. Claim 12 is given in the margin. ^[1]

In the court below the defenses were that these claims were invalid, or that, if valid, they must be so narrowly construed that there was no infringement, and that there had been laches sufficient to bar the maintenance of the suit. In reply plaintiff urged that the broad construction indicating infringement was the right one, and that the defendant was estopped to dispute validity. The District Court sustained the defense of laches, and the other questions were not passed upon.

We cannot uphold this defense. The suit was commenced within two years after the patent issued, when, if ever, plaintiff first acquired any right or cause of action, and there is no suggestion that defendant changed its position during that period. Even that delay is explained by the pendency of another suit between the same parties, directed against the same product, and which, if successful, would have made this suit probably unnecessary. Defendant's real complaint goes further back. It or its predecessors began the infringing business in 1913, and continued it, with the knowledge of the plaintiff and without express notice to desist, from that time until this suit was brought in 1920. During this period defendant built up a large business and doubtless made large investments, based in a substantial degree upon the manufacture of the infringing articles and the expectation of continuing that manufacture. The application, as filed in 1913, was repeatedly rejected and amended, and was prosecuted with reasonable diligence during the last two years, but for the first three years of the application period the plaintiff was only as diligent as the law required, and delayed its successive actions for the full period. It is hence probably true that the application was pending two or three years longer than it would have been if plaintiff had, in every instance, acted as promptly as possible.

Even if, under such circumstances, a defendant who had had no knowledge of the pending application could escape an injunction on final hearing (and, as to this, we intimate no opinion), this defendant can claim no such standing. The inventor himself had been active from the beginning in the infringement, either as one of the partnership associates at the outset, or as an active and important officer of the later organized corporate defendant. The defendant and its predecessors were clearly chargeable with his knowlege. He knew that, when the infringement began, this application had been filed and assigned to plaintiff, with claims broad enough to reach defendant's article, and he never had reason to suppose that the application had been finally rejected. We cannot see that defendant has any right to say it was misled either by action or by silence. To predicate fatal laches upon silence before the patent issued would be to stand on an unsafe basis. The situation is not, we think, fairly analogous to that in Lane Co. v. Locke, 150 U.S. 193, 200, 14 Sup.Ct. 78, 37 L.Ed. 1049.

As to the breadth of the claims: Other claims of the patent refer to what is called the two-step process and require that the sheets or layers should be first heated and pressed to secure unity of composition, then subjected to a further and different heat or pressure, or both, to make permanent the desired shape of the article. The utter omission of any reference to or implication of the two-step process in claims 11 and 12, and their entire dependence upon the single step recited, is convincing evidence that there was no intent to have these claims limited to the two-step process, and this conclusion is compelled, even though it is true that their difference in this respect from the other claims is not the sole manner in which they are distinguished therefrom. In many cases, perhaps usually, claim differentiation is not sufficient to compel the broader construction of one of the claims if there are differences in other respects; but in this case the omission of the two-step limitation is so plainly intentional that we cannot neutralize it by a counter inference which is at best uncertain. These two claims are within the rule that an unambiguous claim cannot prevail over an apparent anticipation by reading a limitation into it. If these claims are not thus limited, infringement is conceded and the issue of validity must therefore be decided; but plaintiff would escape that issue by reliance on O'Connor's estoppel. We think he was not estopped. This question justifies an inquiry into the basis of the estoppel enforced against the patentee...