Wilson Research Corp. v. Piolite Plastics Corp., 6128.

• Citation: 327 F.2d 139
• Decision Date: 24 January 1964
• Docket Number: No. 6128.,6128.
• Parties: WILSON RESEARCH CORPORATION, Plaintiff, Appellant, v. PIOLITE PLASTICS CORPORATION, Defendant, Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals (1st Circuit)

327 F.2d 139 (1963)

WILSON RESEARCH CORPORATION, Plaintiff, Appellant, v. PIOLITE PLASTICS CORPORATION, Defendant, Appellee.

No. 6128.

United States Court of Appeals First Circuit.

December 26, 1963.

Rehearing Denied January 24, 1964.

Robert B. Russell, Boston, Mass., with whom I. Stephen Samuels and Russell, Chittick & Pfund, Boston, Mass., were on brief, for appellant.

George W. Crowley, Boston, Mass., with whom Herbert P. Kenway and Kenway, Jenney & Hildreth, Boston, Mass., were on brief, for appellee.

Before WOODBURY, Chief Judge, and HARTIGAN and ALDRICH, Circuit Judges.

ALDRICH, Circuit Judge.

In this action for patent infringement the district court found validity but not infringement. We first recite the facts. On July 7, 1958 appellant's assignor, Wilson, filed an application which on August 15, 1961 ripened into patent #2,996,609. As finally allowed¹ the invention was described as a translucent plastic panel for light diffusing ceilings. In its "preferred form" (claims 1-3) the panel, which had "a supporting frame and a panel edge supported by said frame."² was composed of two plastic sheets having a "plurality of dimples," the dimples on each sheet "extending toward and abutting each other, and said sheets being united at the abutting portions of the side walls and at the bottoms of the dimples." Alternatively, the dimples were described as "registering with each other and being united. * * *" The specifications made clear that the word "united" meant "completely sealed," which not only gave the panel strength to prevent sagging, but permitted washing. No method of uniting was given, the specifications merely reciting that the sheets "may easily be united, for example, by heat sealing."

Appellant's commercial structure, and appellee's similar accused structure, directly followed the patent except that there was inserted between the upper and lower sheet during assembly a third sheet, described as a membrane, of thin, pliable material having a lower melting point. The combined sheets were submitted to electrical heat under pressure, which caused the membrane to become semifluid and, upon cooling, to adhere to, and hence seal, the top and bottom sheets at the edges and across the faces of the registering dimples. This process did not destroy the membrane, which remained to give added strength. Appellee took the position in the court below, and before us, that it was not infringing because within the meaning of the patent no substance could be inserted between the sheets for the purpose of causing adhesion, both by reason of the word "united,"³ and because the patent stated that "the dimples of the upper and lower sheets were `in face to face contact'" and "register with each other" and were "abutting." The district court adopted appellee's view and found that this language precluded "the interposition of a membrane, cement or other substance." In the light of this finding, although the court resolved the conflicting testimony upon which validity depended in favor of appellant, a matter we need no longer consider,⁴ it concluded there was no infringement.

We disagree. The words "abutting" and "registering" are clearly positional in a broad sense. Nor does the word "united" deny the interposition of an adhesive.⁵ We believe that "face to face contact" is to be read similarly. To do otherwise would be to disregard the necessary implication of other language of the patent. The previously quoted reference in the specifications to "heat sealing" "for example" necessarily indicated that methods in addition to heat sealing were contemplated. We asked appellee if it knew of any method other than heat sealing which would not employ an interposed adhesive and it could think of none. Neither can we. Accordingly, since all other "examples" would include an adhesive, the court's excluding its use read the patent as calling for heat sealing "only," not heat sealing "for example."⁶ Cf. Grant Paper Box Co. v. Russell Box Co., 1 Cir., 1946, 154 F.2d 729, 731, cert. den. 329 U.S. 741, 67 S.Ct. 79, 91 L.Ed. 639. Although we recognize that a trial court's interpretation of the language of a patent may in some cases constitute a finding of fact not to be reversed unless plainly wrong, the court's limitation of this patent to exclude adhesives warrants that description.

Appellant's difficulties, however, are not over. On June 1, 1960 Wilson filed an application for a "light transmitting ceiling panel" substantially identical with its, and appellee's, present commercial structures, in other words, having an interposed membrane.⁷ This ripened into patent #2,996,417 on August 15, 1961, the same date as the '609 patent. Accompanying the original application was the usual justifying oath. However, passing a still further matter we need not deal with, more than a year earlier appellant had advertised in two trade publications the structure which it admits (fn. 7, supra) to be in accordance with this disclosure, and had made one commercial installation thereof. Shortly before trial Wilson filed a disclaimer of this entire second, or '417, patent. At the trial he stated that his oath had not been intentionally false, because he was not sure what was an invention and because his attorney had told him that the early installation had been "experimental," and he had forgotten the two advertisements. On this showing appellee makes a number of contentions, one of which is "unclean hands." The court, stated, "I do not find any evidence of unclean hands with respect to the application of the patent in suit." While this language is possibly not too exact, we assume it to mean that the court accepted Wilson's testimony that he did not perpetrate an intentional fraud in applying for the '417 patent which might have laid a foundation for a claim of unclean hands. This was a question of fact, and appellee has failed to meet its burden.

Appellee makes the further point that even if the '609 patent encompasses adhesives, the membrane is more than an adhesive, as was admitted by the '417 application in speaking of the third sheet's strengthening qualities, and that filing a disclaimer of this patent dedicated the invention to the public.⁸ This argument does not go far enough. Once it is held that adhesives are within the patent, and accepting the...