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SUTHERLAND PAPER CO. v. GRANT PAPER BOX CO.

January 25, 1949

SUTHERLAND PAPER CO.
v.
GRANT PAPER BOX CO. et al.



The opinion of the court was delivered by: GIBSON

This is an action for a declaratory judgment on validity and infringement of Patent No. 2,031,036, on an application of Carl G. Dreymann. The application was filed on May 17, 1934, and the patent was issued to the Grant Paper Box Company on February 18, 1936. The title to the patent is in the Grant Paper Box Company, but the assignment from Dreymann reserves to him the right to veto any sale or license of the patent.

By the patentee's recitation he presents one phase of an effort to create a moisture proof package for the packing of foods which require moisture exclusion for their temporary preservation. The invention is of a sheeted form of a composition which has adhesive ability to unite plies of paper and constitutes part of a container wall for food to be preserved.

 The recital asserts that moisture-proof paper, as a rule, is made by coating the paper with paraffin, but states that paraffin, although sometimes used as an adhesive to unite two sheets or plies of paper, is not sufficiently strong for the purpose. Reference is then made to 'amorphous, substantially saturated compounds formed from high-boiling-point, nonsaturated petroleum derivatives by polymerization and possibly by condensation, and which are known as 'petrolatum', having properties that, modified by certain additions, render them adequate, when extended to the form of sheet or film, not only to withstand penetration by moisture, but also to adhere to sheets of fibrous material upon which they may be extended, and to unite sheets of such material between which they may be spread and incorporated. Lately, higher melting substances have been separated from petrolatum and mineral oil and are sold as 'wax', to distinguish them from other crystalline, saturated hydrocarbons, sold as 'paraffin.' The melting-points of these substances vary from 120 degrees to 170 degrees, F.'

 After reciting a procedure in consequence of which the adhesive and plasticity of the amorphous compounds is increased, the patentee, in his description of the patent, stated: 'Such procedure consists in dissolving a lesser or greater amount of a substance that, on colling to about the temperature at which the coating is applied, or just before solidification, forms in the compound a colloidal suspension or gel. I shall use the term colloidal suspension as inclusive of a gel.'

 The following is quoted from line 40, second column, of first page of the specification:

 'These colloidal suspensions or gels may be produced by adding to the base material certain substances, which at low temperature are not at all or only partly soluble in the base material, but which can be rendered soluble either by increasing the temperature, or by adding also an intermediary substance in which both the base material and the gel-forming substances are soluble.

 'As substances which will form colloidal suspensions or gels I may mention: metal stearates, natural and artificial resins (such as coumarone resin), modified phenol-formaldehyde resins, glycol-phthalic acid resins, and other condensation and polymerization products on the market, as also copal and other gums, and so on. Among these coumarone resin, phenol-formaldehyde resin and copal gum are best; and of these three I have found coumarone resin very satisfactory. In using coumarone resin a solvent should also be employed and a suitable (and non-volatile) solvent is ester gum.'

 The specification describes what is known commercially as petrolatum, and specifically those higher melting substances separated from it and sold as petrolatum wax, to which has been added an unstated amount of a substance which at a particular temperature forms in the composition a colloid suspension or gel. One cannot read the specification without coming to the conclusion that the patentee declared, and felt it to be a part of his invention, that a foreign non-wax colloid material must be added to the base material. Such possible materials were specified as capable of forming such colloidal suspensions or gels: 'metal stearates, natural and artificial resins (such as coumarone resin), modified phenol-formaldehyde resins, glycol-phthalia acid resins, and other condensation and polymerization products on the market, as also copal and other gums, and so on. Among these coumarone resin, phenol-formaldehyde resin and copal gum are best; and of these three I have found coumarone resin very satisfactory.'

 In his description the patentee set forth a discovery of an adhesive which required the addition of a foreign non-wax colloid to the petrolatum base. That is what he sought to give the world, and that is what must limit his patent.

 The validity of the patent is the first inquiry which faces the Court in its present duty.

 The specification accentuates the adhesive feature of the patent claim, by alleging that 'This invention consists in a composition of matter having adhesive and water-proofing properties, and the method of its production.' The patent, however, contemplates several features which have been made main features in other claimed inventions. The patentee was interested in the preparation of a laminated paper package for the preservation of foods. Whether he was interested in the paper package, the lamination of it, or the use of a proper adhesive composition to bind it together, he was quite certain to come into elbow touch with other inventions claimed along the same line. Laminant requirements were known. Fiske Patent, issued in 1912, and Fietech Patent, issued in 1918, were laminant patents for the preservation of foods. The use of paraffin as a laminant was known. And MadLaren Patent, No. 1,905,923, issued in 1933 upon an application filed in 1929, was for an improved wax composition which could have been used to secure the same adhesive result as that claimed for the patent in suit. That patent was only for a wax composition and no specific use of it, other than as a wax, was claimed for it. Other patents indicate the need of the subject-matter of Dreymann's patents, but those patents did not meet the need. That remained for Dreymann to meet, and he attained commercial success with his inventions. True, his success is limited by the extent of his discovery, and then, only in case of infringement.

 The present action is not the first that brought the Dreymann Patent into litigation. In 1941 the Grant Paper Box Company brought suit against Russell Box Company in the District Court of the United States for the District of Massachusetts, wherein it charged the defendant with infringement of the patent. The facts of that case were essentially the same as those appearing in the present action. The plaintiff in the instant action, Sutherland Paper Company, and the defendant in the Massachusetts case, Russell Box Company, each have relied upon a composition free from any added non-wax materials.

 In Grant Paper Box Co. v. Russell Box Co., in the District Court of Massachusetts, judgment was that the patent was valid but that defendant had not infringed. From this judgment an appeal was filed in the United States Circuit Court of Appeals for the First Circuit. 154 F.2d 729. The Court reversed the judgment of the District Court, holding that the patent was invalid. This judgment was based upon Sinclair & Carroll Co., Inc. v. Interchemical Corp., 325 U.S. 327, 65 S. Ct. 1143, 89 L. Ed. 1644. The plaintiff then moved for a rehearing, which was granted, and the Circuit Court of Appeals, feeling that it had been in error in its interpretation of Sinclair & Carroll Co., Inc. v. Interchemical Corp. after rehearing, vacated its judgment reversing the District Court's decree and entered judgment for the plaintiff, by which it held that the Dreymann patent was valid and had been infringed.

 In its finding of validity the Circuit Court of Appeals pointed to the fact that Dreymann was a chemist of long experience; that by his own investigations he had made certain discoveries as to the nature of petrolatum waxes which enabled him to obtain the patent in suit and to put upon the market an invention which obtained commercial success. He had not, as had the patentee in the Sinclair & Carroll Co., Inc. case, supra, claimed a patent by merely adding another person's discovery to an article having well known characteristics, but had used his own discovery.

 But while this Court is of opinion that the patent was valid, it does not wish to be understood as holding that it was valid without any qualification, because it was subject to the same rules which limit the scope of all patents.

 It will be remembered that the First Circuit Court of Appeals, in its opinion following the rehearing in Grant Paper Box Co. v. Russell Box Co., supra, held that the patent was valid and infringed. Its finding upon the issue of infringement cannot be followed. It quoted the third claim of the patent, as follows:

 '3. A container wall for the packaging of material including a sheet or film composed substantially of an amorphous petroleum wax of an apparent melting-point of 120 degrees-170 degrees F., carrying a suspended colloid, and two sheets of fibrous material, the sheet or film of said wax intercalated between the sheets of fibrous material and constituting a film of adhesive uniting the whole.' 151 F.2d 886.

 The opinion stated that the question of infringement hinges on the interpretation of Dreymann's patent. 'If he taught only the addition of some foreign colloid to relatively pure amorphous petroleum wax, as the defendant contends, the defendant does not infringe for the reason that it adds nothing foreign to petroleum to the amorphous wax it uses. If, on the other hand, the plaintiff's patent covers amorphous petroleum wax carrying a suspended colloid, regardless of the source of the colloid, as a bonding agent for paper for the purposes specified, then upon the finding made below to the effect that both the plaintiff's and the defendant's waxes have approximately the same colloidal content, infringement is indicated.' (154 F.2d 731) Upon the basis thus stated, the opinion proceeds to an interpretation of the third claim of the patent which is so wide of the knowledge and intent of the patentee at the time the claim was made, and so contrary to the rules which should govern this Court in its interpretation, that this Court cannot accept it. It seems to ignore the duty of the patentee to clarify his claims by means of his specifications. See Standard Oil Development Co. v. James B. Berry Sons' Co., Inc., 3 Cir., 92 F.2d 386.

 The claim is for a container wall 'including a sheet or film composed substantially of an amorphous petroleum wax * * * carrying a suspended colloid.' This does not in itself limit the patentee to amorphous petroleum wax to which a foreign colloid has been added. That which does so limit it is the prior finding of facts and the teaching of the specifications.

 Such interpretation placed upon the claim would mean that the unsworn matter, inserted in the specification after the original claim was filed, had the effect of amending it, and would invalidate the patent. The proof is that the patentee had no such knowledge of the possibilities of the petrolatum waxes when the specification was filed, and cannot now assert an accidental use of words to establish a patent claim which was not even within his imagination when the language was used.

 When this claim was filed the patentee had in mind a composition which included a colloid foreign to petroleum and which was a valuable and patentable step in the art of providing moisture-proof boxes for the preservation of food. True, investigation and continued reduction of the oil content in waxes have at least reduced the value of the discovery, but it seems plain that the patent, in providing an adhesive with an added colloid, is still valid; but valid only to the extent of its specification.

 In view of the plain proof that the Sutherland Paper Company, the plaintiff, has not used an added colloid, the Court must find that it has not infringed the defendant's patent.

 The Court has not discussed contentions which have been advanced by each party in opposition to its opponent's claim.

 The defendants have asserted that the Sutherland Paper Box Company was estopped from proceeding with its case by reason of a contract it made with defendant. After Sutherland had given notice of an intent to withdraw from the license contract, it was induced to withhold that action and agreed to await the result of a case brought against the Russell Box Company by the Grant Paper Box Company. If the plaintiff succeeded in that case, the Sutherland Paper Company was to continue with the payment of the license; but if it lost, the amounts so paid were to be returned to the Sutherland Company. After the Grant Paper Company had obtained a judgment in that case, the Sutherland Company renewed its notice of cancellation, but agreed that the amounts withheld belonged to the Grant Paper Box Company.

 The testimony shows some possibility of misunderstanding of the agreement between the parties, but does not establish unclean hands and estoppel of the Sutherland Paper Company to proceed with the instant case. An order to that effect will be made.

 The Sutherland Paper Company has charged unclean hands on the part of the Grant Paper Box Company which will preclude it from proceeding with its counterclaim. The charge is an alleged violation of the Clayton and Sherman Acts, 15 U.S.C.A. §§ 1-7, 15 note, 12-27, by an agreement which precludes the counterclaimant from granting proper rights under the patent. The Court is of opinion that the matter is without merit.

 Decree.

 And now, to wit, January 25, 1949, the Complaint of Sutherland Paper Company and the Answer and Counterclaim of Grant Paper Box Company and Answer of Carl G. Dreymann having come on to be heard, upon consideration thereof, it is ordered, adjudged and decreed:

 (1) That a declaratory judgment in favor of Sutherland Paper Company and against Grant Paper Box Company and Carl G. Dreymann be entered, declaring that United States Letters Patent No. 2,031,036 is not infringed by said Sutherland Paper Company.

 (2) That an injunction restraining said Grant Paper Box Company and Carl G. Dreymann, their officers, agents, servants and employees, and all those in privity with defendants from asserting or charging that the laminated paper or any other product now made and sold by said Sutherland Paper Company infringes said United States Letters Patent No. 2,031,036.

 (3) That judgment be awarded plaintiff upon the counterclaim of Grant Paper Box Company against it.

 (4) That judgment for costs be awarded plaintiff.

 (5) That United States Letters Patent No. 2,031,036 is valid to the extent that it claims an adhesive composition with a colloid added which is not a part of the petroleum compound.

 The Court, after hearing and consideration, makes the following Findings of Fact ...


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