Westwood Chemical, Inc. v. Molded Fiber Glass Body Co.

• Decision Date: 25 October 1973
• Docket Number: Civ. A. No. C 63-208.
• Citation: 380 F. Supp. 517
• Parties: WESTWOOD CHEMICAL, INC., Plaintiff, v. MOLDED FIBER GLASS BODY COMPANY, Defendant.
• Court: U.S. District Court — Northern District of Ohio

380 F. Supp. 517

WESTWOOD CHEMICAL, INC., Plaintiff, v. MOLDED FIBER GLASS BODY COMPANY, Defendant.

Civ. A. No. C 63-208.

United States District Court, N. D. Ohio, E. D.

October 25, 1973.

COPYRIGHT MATERIAL OMITTED

T. A. TeGrotenhuis, Olmsted Falls, Ohio, Marshall I. Nurenberg, Cleveland, Ohio, for plaintiff.

William H. Webb, Webb, Burden, Robinson & Webb, Pittsburgh, Pa., Warren Daane, Baker, Hostetler & Patterson, Cleveland, Ohio, for defendant.

MEMORANDUM AND ORDER

WILLIAM K. THOMAS, District Judge.

Westwood Chemical, Inc. is the owner of United States Patents No. 2,742,378 (hereafter '378) entitled "Fillers Having Vinyl Siloxane Groups Bonded to the Surface Thereof and Copolymers with Ethylenically Unsaturated Polymerizable Monomers," and No. 2,841,566 (hereafter '566) entitled "High Polymers with Chemically Bonded Reinforcing and Method of Making Same." Theodore A. TeGrotenhuis is inventor and assignor to Westwood.

Charging infringement of these patents, Westwood Chemical, Inc. (hereafter Westwood) filed seven actions in this court. It sued Ferro Corporation in 1962 and Molded Fiber Glass Body Company (hereafter Molded Fiber Glass) in 1963. It is this latter action that is before the court. A joint infringement action was brought against Owens-Corning Fiberglas Corporation and Johns-Manville Fiber Glass, Inc. in 1963 (later severed into separate actions against each corporation). In 1967 three more infringement actions were filed against Certain-Teed Products Corporation, Union Carbide Corporation, and Dow-Corning Corporation.

Owens-Corning, Johns-Manville, Ferro, and Certain-Teed Products supply Molded Fiber Glass with fiber glass treated with hydrolyzable silanes, principally vinyl silanes (herein called coupling agents). The treated fiber glass is chemically bonded to polyester resins through in situ copolymerization of the coupling agents with unsaturated monomers in the polyester resins. Composite articles of reinforced polyester, e. g. auto bodies or boat hulls are thus formed. Union Carbide and Dow-Corning manufacture the silane coupling agents used by Owens-Corning, Johns-Manville, Ferro, and Certain-Teed.

The present proceeding, stemming from Molded Fiber Glass's motion for summary judgment, raises the affirmative defenses of res judicata and collateral estoppel, based on adjudication of the Owens-Corning case adverse to the plaintiff.

Initially the action against Molded Fiber Glass was stayed pending disposition of the Ferro case. Subsequently, plaintiff moved to vacate that stay order and to consolidate all of its seven infringement actions for trial. Thereafter, upon entering a stipulation with Owens-Corning, Ferro, and Johns-Manville, and later Certain-Teed, plaintiff Westwood withdrew its motion for consolidation. Under the stipulation the Owens-Corning case was to be tried first and its "final decision (including appeals) . . . shall be final and binding upon all parties hereto, the same as if each defendant were a party to said case."

Following a trial in June and early July of 1969, Judge James C. Connell of this court found both patents invalid for obviousness under 35 U.S.C. § 103 and further under 35 U.S.C. § 102(a)(g) and (f). His findings of fact and conclusions of law are reported at 317 F.Supp. 201 (N.D.Ohio 1970). On appeal the Court of Appeals upheld Judge Connell's finding and conclusion of invalidity based on obviousness under Section 103. The Court found it unnecessary to consider the other grounds of invalidity or Judge Connell's judgment of infringement, see 445 F.2d 911 (6 Cir. 1971).

In affirming Judge Connell's judgment, the Court of Appeals for the Sixth Circuit restricted the determination of the invalidity of the two patents to claims "directly in issue" at trial; namely, claims 1, 3, 4, 6-8, 11, 14-19, 21, 23-26, and 28 of the '378 patent and claim 8 of the '566 patent. Thereafter, the Court of Appeals denied plaintiff's petition for rehearing. On February 22, 1972, petition to the Supreme Court for a writ of certiorari was also denied. The Court of Appeals thereupon issued its mandate which was filed in this court on March 3, 1972.

Upon the final decision in the Owens-Corning case judgments were entered in favor of Ferro, Certain-Teed, and Johns-Manville, dismissing these actions in accordance with the foregoing stipulations. The plaintiff appealed these judgments. On May 4, 1973, the Court of Appeals affirmed these judgments of dismissal; its opinion concludes with this language:

If it was Westwood's intent to reserve certain patent claims to assert against the remaining defendants, it should have said so. Clearly, none of the parties contemplated having the issue of validity tried piecemeal, which is the interpretation urged by Westwood. 477 F.2d 1160, 1164.

I.

The nature of the invention is thus described by the Court of Customs and Patent Appeals (CCPA) in a patent interference proceeding involving patent-in-suit '378, TeGrotenhuis v. Yaeger, 290 F.2d 951, 48 CCPA 1058 (1961).

The invention defined in the counts relates to certain solid "composite articles" comprising textile fibers and a polymeric resin, and to a method of making the articles. The articles are said to possess superior cohesive properties because an organosilicon compound is used as a sort of "molecular cement" between fibers and resin. In other words, each silicon compound molecule is attached by chemical bonds both to a fiber and to the resin which surrounds it.

The opinion then explains how the coupling agent is bonded to the fibers by hydrolysis.

In making the articles, it is recognized that a plurality of hydroxyl groups is normally present on the surface of a textile fiber. Certain "hydroxyl-reactive" organosilicon compounds with one or more carbon-to-carbon double bonds, for example, vinyl silicon tri-chloride, are allowed to react with the fibers whereby the fiber hydroxyl groups, fiber-OH, are transformed to fiber siloxane groups, fiber-O--, in which at least one free bond to each silicon atom is connected to an organic group with carbon-to-carbon unsaturation.

This carbon-to-carbon unsaturation of the chemically bonded fibers permits interpolymerization.

These modified fibers are then contacted with an olefinically unsaturated liquid, for example, styrene, and the liquid is polymerized to the solid state. The unsaturated groups attached to the modified fibers interpolymerize with the liquid. Thus a plurality of chains comprising a silicon atom and two or more carbon atoms bind fibers and surrounding resin together in the finished composite article.

More briefly but accurately, Judge Connell and the Court of Appeals defined the subject matter of the invention. Judge Connell found:

The substance of this action relates to glass fibers treated with unsaturated organo-silanes for use in reinforcing polyester resins and the resulting polyester resin bodies. 317 F.Supp. at 202.

The Court of Appeals stated:

The substance of the invention claimed by its inventor, T. A. TeGrotenhuis, relates to treating fillers, pigments and fibers with unsaturated organo-silanes for use in reinforcing polyester resins and the resulting polyester resin bodies. The invention claimed by patent '378 is the use of certain hydrolyzable silane chemicals having vinyl groups as coupling agents to reinforce the polyester resins. Patent '566 makes the claim of using hydrolyzable silane chemicals having alkenyl groups other than vinyl, specifically allyl silanes, as the coupling agent. Generally, the claimed objective of both inventions was to provide a resin, such as plastic or glass fibers, with greater strength and water resistance by treatment with the hydrolyzable silane chemicals. 445 F.2d at 912.

The present action charging infringement of the invention of patent-in-suit '378 was stayed pending final adjudication of Westwood Chemical, Inc. v. Owens-Corning Fiberglas Corp. On May 17, 1972, defendant Molded Fiber Glass moved to amend its answer by adding the affirmative defenses of res judicata and collateral estoppel. Leave was later granted. Five days later, on May 23, 1972, defendant Molded Fiber Glass filed its motion for summary judgment. It predicates its motion upon:

(A) Collateral estoppel arising out of "the decisions and judgments rendered by this court and the Court of Appeals in Westwood Chemical, Inc. v. Owens-Corning Fiberglas Corp., 317 F.Supp. 201, mod. and aff'd, 445 F.2d 911," in which the TeGrotenhuis patent No. 2,742,378, which is involved here, was "held invalid and not infringed as to all claims there in issue," and (B) res judicata arising out of the judgments in the Owens-Corning case, the Ferro case, the Certain-Teed Products case and the Johns-Manville case and "privity which exists in this defendant and the defendants in said action."

With respect to the defense of collateral estoppel the defendant relies on Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971). In Triplett v. Lowell, 297 U.S. 638, 56 S.Ct. 645, 80 L.Ed. 949 (1936) the Supreme Court had held that a determination of patent invalidity is not res judicata against the patentee in subsequent litigation against a different defendant. Blonder-Tongue overruled Triplett "to the extent that it forecloses an estoppel plea by one facing a charge of infringement of a patent that has once been declared invalid."

Blonder-Tongue does not suggest

that a plea of estoppel by an infringement or royalty suit defendant must automatically be accepted once the defendant in support of its plea identifies the issue in suit as the identical question finally decided against the patentee or one of his privies in previous litigation. Rather, the patentee-plaintiff must be permitted to demonstrate, if he can, that he did not have "a fair opportunity procedurally, substantively and evidentially to pursue his claim the first time." Eisel v. Columbia Packing Co.,

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