SEARS, ROEBUCK & CO. v. MINNESOTA MINING & MFG. CO.

SOPER, Circuit Judge.

The complaint in this suit charges infringement of United States Reissue Patent No. 23,843 granted on June 29, 1954, to Ralph J. Oace, Robert Burns Snell, and Esther E. Le Page, assignors to Minnesota Mining and Manufacturing Company, the plaintiff in the District Court. The original patent No. 2,559,990 was dated July 10, 1951, and the application for reissue was filed July 9, 1952.

The invention relates to the insulation and protection of electrical conductors. For this purpose the patent specifies an adhesive insulating tape, composed of a film backing mixed with a non-volatile liquid plasticizer, a soft and viscous resinous plasticizer, and an adhesive coating united to the inner surface of the film backing. The claims of the reissued patent in issue in the pending case are claims 1, 3 and 4, which are identical with like numbered claims of the original patent, and claims 6, 7, 8 and 9, which are new in the reissued patent. Typical claims 1 and 6 are set out in full below.1

The defendants are Sears, Roebuck and Company and Plymouth Rubber Company, Inc. Sears sold a stretchable and retractable pressure-sensitive tape under the brand name of "Homart", which was manufactured by Plymouth and is alleged to have infringed the patent. The main defenses are (1) that the accused article does not infringe the claims of the patent because there was omitted from its composition one of the ingredients specified in the claims, and (2) that claims 6 to 9, which first appeared in the reissue, are invalid if construed to omit that element from the patented structure. The District Judge held all the claims valid and infringed.

The insulating tape manufactured by the plaintiff under the patent was a great improvement over prior insulating devices and met with much commercial success. The materials which entered into the composition of the new tape were well known. Vinyl resin, plasticizers and pressure-sensitive adhesives were all old. The problem was to plasticize the vinyl resin in the backing member so that the plasticizer would not migrate into the adhesive and impair its cohesive function, and so that portions of the plasticizer would not exude from the surface of the film upon the underlying adhesive layer when the tape was wound in a roll and cause a loss of tack. The inventors overcame these difficulties and produced a strong, stretchable and retractable article that furnished effective insulation in the splicing of electric wires and cables.

This result was accomplished by securing a permanent equilibrium between the vinyl backing and the adhesive by combining the ingredients in the manner described in the following excerpt from the specification of the patent:

Based on this disclosure, typical claim 1 of the patent declares that the patented tape is comprised of an elastic film backing formed of a homogeneous mixture consisting of a blend of (1) a major proportion of vinyl chloride, (2) a substantially non-volatile liquid phytalyl ester plasticizer, (3) a soft and viscous low-acid-number alkyd plasticizer resin in amount at least equal to the amount of the liquid plasticizer, and (4) a pressure-sensitive rubber resin type adhesive coating united to the inner surface of the film backing.

Testimony bearing on the investigation and experiments which lead to the invention confirms the foregoing statement in the specification as to the ingredients of the product listed in claim 1. In 1938 or 1939, the plaintiff commenced its efforts to make a suitable adhesive plastic tape, using commercial vinyl (VYNS) with 25% to 40% of liquid tricresyl phosphate plasticizer, and a standard pressure-sensitive adhesive; but the experiment was unsuccessful, because the plasticizer migrated and made the adhesive very soft and pasty. In 1942 or 1943, Rohm and Haas, a widely known chemical company of Philadelphia, produced a new type of high-molecular-weight resinous plasticizer known as "Paraplex G-25", which could be combined satisfactorily with vinyl without causing migration. Early in 1944 plaintiff's research workers, to whom the patent in suit was subsequently issued, began to experiment with G-25 in combination with standard vinyl and standard adhesives from stock in an effort to make a satisfactory insulating tape. They found that G-25 did not migrate to the adhesive or soften it as the liquid plasticizer had done, but it did cause a loss of tack in the adhesive. Thus finding that neither the liquid nor resinous plasticizer when used alone gave satisfactory results, they tried a mixture of the two using a combination of dioctyl phthalate (DOP), a low-molecular-weight plasticizer, and G-25, a high-molecular-weight resinous plasticizer. This combination solved the difficulty and subsequently lead to the production and sale of the plaintiff's commercial article in 1945 and to the application for the original patent in 1946. The product speedily came into wide use and sales advanced from a little over $8000 during the year 1945 to more than $8,000,000 in 1953.2

The defendant, Plymouth Rubber Company, entered the field subsequently and began to experiment with adhesive vinyl plastic tape in 1948. It also had migration difficulties when it used the standard liquid plasticizer DOP and also found that G-25 was hard to disperse. Thereupon it experimented with G-40 as the sole plasticizer and found that it gave satisfactory results. Using it as the sole plasticizer the defendant produced a commercial article, which it put on the market in 1950 before the original patent was issued on July 10, 1951. The plasticizer G-40 was also manufactured by Rohm and Haas in 1945. It is a high-molecular-weight resinous plasticizer similar to G-25 but less expensive. It had also been used experimentally as the sole plasticizer by plaintiff's researchers, who reported that it was substantially equivalent to G-25 and caused a loss of tack but less loss than G-25. In 1946 or 1947, the plaintiff substituted G-40 for G-25 in the mixture with DOP in its commercial operations and this mixture became its standard commercial product.

In 1954, Plymouth found that by using a certain wax G-25 could be used successfully with vinyl as the sole plasticizer and prior to the institution of the pending suit made and sold such a product to the United States and, to some extent, to the general trade. In the complaint filed in the pending case plaintiff charges infringment by the defendant by the use of both G-25 and G-40 as the sole plasticizer.

The facts so far related give substance to the main defense to the suit that the defendants did not infringe the patent because they omit from their production one element or ingredient, to wit, the liquid plasticizer, which is specified in the claims of the patent. It is well established that there is no infringement when this occurs even though the same result is obtained because the accused article is not covered by the claims of the patent. See Vance v. Campbell, 1 Black 427, 429, 66 U.S. 427, 17 L.Ed. 168; Acme Steel Co. v. Eastern Venetian Blind Co., 4 Cir., 227 F.2d 914; Anthony v. Sherman, 4 Cir., 159 F.2d 995; Kaumagraph Co. v. Superior Trade-Mark Mfg. Co., 2 Cir., 72 F.2d 417; Wichita Visible Gasoline Pump Co. v. Clear Vision Pump Co., 8 Cir., 19 F.2d 435. This defense is not avoided by securing a reissue of a patent and omitting the disputed element from the claims unless the invention disclosed in the reissued is the very invention intended to be secured by the original patent. In United States Industrial Chemicals, Inc., v. Carbide & Carbon Chemicals Corps., 315 U.S. 668, 62 S.Ct. 839, 86 L.Ed. 1105, the patent before the Court related to the production of ethylene oxide by bringing ethylene and oxygen in the reaction chamber in the presence of a catalyzer and of water as an essential. The Court held that a reissue of the patent, which treated the introduction of water as permissive but not mandatory, was void since it was not for the same invention described and intended to be secured by the original patent. The Court said, 315 U.S. at page 675-676, 62 S.Ct. at page 843:

The plaintiff in its reply does not challenge the established doctrine that a product patent is not infringed by an article which omits one of the elements of the patented structure, but advances the counter-contention that the defendants have misinterpreted the teaching of the patent. It is now said that the patent discloses that the insulating tape, in addition to the vinyl and the adhesive, may be made either with a blend of liquid and resinous plasticizers or simply with a resinous plasticizer alone which combines within itself both light and heavy molecules; and that claims 1 to 5 of the patent cover a tape of the first sort while claims 6 to 9 cover a tape in which only a resinous plasticizer is used. This view is based largely upon certain statements in the specification that polymerized ethyl acrylate "has been found useful in providing suitable, stretchable and elastic vinyl polymer films." The evidence shows that this substance described in the specification as "another high-molecular-weight plasticizer material" also contains molecules of relatively low weight; and the Judge found that "the patent in suit teaches persons skilled in the art that ethyl acrylate polymer may be used as the plasticizer for the film backing of the tape of the patent." The plaintiff's expert, Tierney3, produced at the trial below a sample of tape made under his direction in which ethyl acrylate polymer was the sole plasticizer, and according to his testimony gave satisfactory results.

These references, however, do not support the plaintiff's contention or the Judge's finding. The specification does not show that ethyl acrylate polymer may be used as the sole plasticizer but, to the contrary, clearly teaches that it is to be used in place of the resinous plasticizer called for by the patent. The specification expressly states that "Paraplex G-25 is a preferred example of a suitable resinous type plasticizer" and then declares in the phrase above quoted that ethyl acrylate polymer is another high-molecular-weight plasticizer which has been found useful. Later in the specification ethyl acrylate polymer is again referred to as a high-molecular-weight plasticizer which "may be substituted in whole or in part for the specific alkyd resin hereinbefore mentioned"; and G-25 is described in the specification "as a soft viscous alkyd resin." Reading only these portions of the specification referring to ethyl acrylate polymer demonstrates the frailty of the plaintiff's contention and combining them with the emphatic assertion above quoted that both types of plasticizers must be used to give good results shows beyond question that the finding was clearly erroneous4.

If Tierney during the experimental period had succeeded in making an insulating tape with a single plasticizer, the product doubtless would have been the basis for a patent claim, but it was "surprisingly found" that this could not be done. It is not sufficient for a patent to suggest a field for further experimentation; to be valid it must itself disclose the essential elements of the discovery so that persons skilled in the art may practice it. See 35 U.S.C. § 112; Consolidated Electric Light Co. v. McKeesport Light Co., 159 U.S. 465, 16 S.Ct. 75, 40 L.Ed. 221; Standard Brands v. National Grain Yeast Corp., 3 Cir., 101 F.2d 814, affirmed, 308 U.S. 34, 60 S.Ct. 27, 84 L.Ed. 17. It follows that the scope of the patent in suit is limited by its disclosure and may not be extended to cover what other investigators subsequently discovered.

In addition to the references to ethyl acrylate polymer in the specification, the fact is stressed that a resinous plasticizer is comprised of light as well as heavy molecules; and the plaintiff strongly contends that these components may be so put together that the finished product will contain a liquid as well as a resinous element and thus constitute an equivalent of the blend of two kinds of plasticizers prescribed by the patent; and it is asserted that G-25 and G-40 are plasticizers of this sort and hence their use by the defendants constitutes infringement. The defendants concede that the use of a pre-blended mixture would be equivalent to mixing the two plasticizers during the process of production. Hence the crucial inquiry is whether G-25 and G-40 actually contain a liquid as well as a resinous element.

It will be noticed that during the experimental period the patentees tried both G-25 and G-40 as a sole plasicizer and failed, but that later the defendants found that either could successfully be used alone. The plaintiff claims, however, that after 1944 the composition of G-25 was changed and that it now contains both liquid and resinous portions. In this respect the Judge made the specific finding that "Paraplex G-25, when the applicants for the patent worked with it in 1944 and 1945, was substantially different than it is today," and he added that in this earlier period the substance was in the process of development of manufacture, and that today G-25 and other polymerized plasticizers can be "tailored" to get the results which users desire. This change, the Judge suggested, explains the failure of the inventors in 1944 and the failure of Plymouth in 1948-50 to make the tape with G-25 as the sole plasticizer.

The Judge made the additional finding that by certain processes resinous plasticizers may be "fractionated" into the more viscous high-molecular-weight portions and the more liquid low-molecular-weight portions of the original materials.5 Hence, the plaintiff contends that infringement has been established by the use of a resinous plasticizer alone, notwithstanding the seeming teaching of the patent to the contrary.

Our examination of the record convinces us that the findings on which this conclusion is largely based are not in accord with the great weight of the evidence. It is argued that there must have been a great change in the composition of G-25 as manufactured by Rohm and Haas because the plaintiff could not use it successfully as the sole plasticizer in 1944 and 1945, but can do so today. No comparison was offered by the plaintiff of the ingredients of the substance in the respective periods, with one exception: that, in 1944 and 1945, G-25 had a film of oil on the surface of the containers whereas no oil is observable in the plasticizer supplied by Rohm and Haas to the plaintiff today. There was however no direct testimony that the film of oil affected the manufactured article adversely — the only evidence on the point being that of the defendants' expert, that the oil would be more helpful than otherwise. Moreover, the plaintiff was unable to make the tape in 1944-45 with G-25 of its own manufacture which bore no oil film on the surface, or with G-40, as to which there is no evidence or finding of change. It is of far greater importance to note that there is positive and direct testimony on the part of Rohm and Haas, who supplied G-25 and G-40 to both parties in the pending case, that there has been no significant change in G-25 since it was first put on the market6.

We reject also the contention that the patent teaches that the more liquid low-molecular-weight portions of a resinous plasticizer are the equivalent of a liquid plasticizer, such as DOP which, according to the patent, must be used to secure a satisfactory insulating adhesive tape. The record does not support this thesis. The evidence clearly shows that there are two well defined and distinctive types of plasticizers, as the language of the specification indicates, which are not only well recognized by the trade but are characterized by substantial differences in chemical composition. The liquid plasticizers are all monomeric, that is, they are simple, precise and well defined chemical compounds of low-molecular-weight ranging from 250 to 600. In them every molecule is like every other molecule so that the material cannot be fractioned. It is thinly fluid. DOP for example has a molecular weight of 390 and a viscosity of less than one poise, which is the unit by which viscosities are measured. Resinous plasticizers on the other hand are polymeric. They are synthetic compositions made by combining chemicals of high-molecular-weight and are extremely viscous. G-25, for example, has a viscosity of 1000 poises. The molecules of these resins are combinations of varying numbers of so-called building units and accordingly vary in weight, ranging in the case of G-25 from 1000 to 50,000. Its average molecular weight is 8000. It is substantially correct to say that no part of G-25 is liquid and no part of DOP is resinous, as these terms are known to the art. Tierney himself used the terms "liquid" and "resinous" as indicative of distinct classes of plasticizers and testified that all portions of G-25 are resinous.

It may be that the lower weight molecules in the resinous plasticizers perform the function which the patent attributes to the liquid plasticizers in making the finished product with the result that both parties in the pending case now find that G-25 or G-40 may be used as the only plasticizer; but it is certain that the inventors were unaware of this fact and maintained the contrary position. On this account the patent does not cover the defendants' product and infringement is not proved. Even if it be supposed that the composition of G-25 has been so changed as to contain a larger number of molecules of relatively low weight than the G-25 produced during the experimental period, and that by reason of this change it is now possible to use resinous material as a sole plasticizer, its use in making an insulating tape would not constitute infringement, because the plasticizer would still be completely resinous whereas the patent teaches that a liquid as well as a resinous plasticizer must be used.

Little need be said about claim 6 of the reissued patent. It provides for the use of a plasticizer "comprising at least a major proportion of non-migrating viscous plasticizer resin". If this dubious phrase means that only a resinous plasticizer need be used, the claim is invalid because it goes beyond the disclosure of the original patent; if, on the other hand, the phrase means that both liquid and resinous plasticizers are to be used, the claim is not infringed by the defendants.

Reversed and remanded.