original condition for a longer period of time. It surprised users. Although the laminated product of claim 3 sold for about double the price of ordinary cardboard boxes it met with immediate success, and such companies as the Heinz Company and Loose-Wiles Company placed orders for one million cartons. In a relatively short time Grant shipped to widely separated parts of the country, whereas the normal market for a box maker is about a 150 mile radius.
52. The amorphous wax barrier between the two sheets of paper is highly flexible and allows the box to be folded without the film being ruptured.
53. It is essential that the sheets of box board and paper be strongly united, and that they cannot be peeled apart. The patent teaches that this adhesiveness may be secured by the use of wax carrying a colloid in suspension.
54. Amorphous petroleum wax carrying a colloid in suspension can be spread on one sheet of paper in a liquid, waterlike state to form a thin film free of pin holes, and instead of being soaked into the paper like ink into a blotter, or immediately solidifying like candle wax, forms a tacky gel upon contact with the cold paper, and by reason of such delayed solidification will stick and bind the second sheet of paper that is subsequently brought into contact with it.
55. Sutherland accepted a license on August 2, 1940.
56. Grant filed suit against Russell Box Company in Massachusetts on February 7, 1941.
57. Sutherland served notice of intention to discontinue the oral agreement February 24, 1943.
58. Sutherland, with the notice of February 24, 1943, did not release to Grant the royalties already paid under the oral agreement, but made their ownership subject to the outcome of the suit.
59. Sutherland has used no. 2305 wax since 1947.
60. At the time of trial, Sutherland was using only Ceretak and Adhese M, and has used these since the beginning of 1948.
61. Ceretak is an amorphous wax preparation produced by the Bareco Oil Company. It is substantially the same as a previous product made by that company and used by Sutherland and sold as Victory wax.
62. Ceretak is a product specially prepared for laminating by blending wax and petrolatum and from selected petrolatums and tank bottoms.
63. Ceretak wax contains about 10 per cent of viscous oil. (Pl. Ex. 73.)
64. At the time Dreymann made his invention, amorphous wax contained only 4 or 5 per cent of such insoluble materials.
65. The specially produced Ceretak wax provides in the laminated product a film of amorphous petroleum wax carrying a colloid in suspension. It has a melting point of 155 and is therefore within the range of 120 degrees to 170 degrees as defined by claim 3. It is intercalated between two sheets of paper and firmly bonds them together.
66. Compound 2305 of Socony Vacuum Oil Company is not an amorphous petroleum wax, but is a blend, and is designated 'Product 2305'. (Def. Ex. J.J.J.)
67. All of the important prior art patents except Fiske, No. 1,033,756, were set up in the Boston case. (Ex. A, p. 5 and 7 and 456.)
68. Fiske No. 1,033,756, relates to the use of pitch for laminating and says that pitch is an 'ideal material'. Amorphous petroleum wax is not similar to pitch.
69. There is no evidence that any of the prior art materials were ever successfully used.
70. The caps for ice cream cups produced at Lowe Paper Company were of cardboard with a layer of grease-proof paper carried thereon by a material which permitted the paper to be readily peeled off. At least 50 per cent of paraffin was used in this mixture. The product was entirely different from Dreymann's and was for use in an entirely different field.
71. The Lowe prior use is not an anticipation of Dreymann.
72. The conditional nature of the assignment from Dreymann to Grant does not impose any restraint on trade. The conditional assignment with the collateral agreement by which Grant acquired title to the Dreymann invention was for the purpose of protecting Dreymann and securing to him the benefits of his invention.
73. The conditional agreement and assignment between Dreymann and Grant did not act to restrict commerce in any patented or unpatented commodities.
74. The conditional nature of the assignment from Dreymann to Grant is a normal and proper restriction for the protection of Dreymann who sold his invention for a contingent benefit.
Conclusions of Law.
I. The Court has jurisdiction of the parties and the cause of action presented by the pleadings.
II. The patent in suit, No. 2,031,036, is not infringed by plaintiff.
III. Plaintiff is not estopped to maintain its action by reason of the oral agreement of June, 1941.
IV. Claim 3 of the Dreymann patent is good and valid to the extent of the specification.
V. Defendants are not guilty of unclean hands.
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