Appendix — Minnesota Mining & Manufacturing Co. v. Plymouth Rubber Co.

_ on

APPENDIX A”

- Uwrrep’ States District Court

- District of Mapsachnectts

Civil Action ie. | - ,

No. 58-1222-C - , | |

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PLYMOUTH RUBBER COMPANY, INC.,”

ne

vz

MINNESOTA MINING and MANUFACTURING

ro + COMPANY,

Defendant

OPINION.

March 23, 1962

ms - >

CaFFREY, Bd. weary |

This _ an-action ‘brought eodek 3 98 U. S.C.A. 2 2201, 2202,

in which Plymouth Rubber Company, Inc. inthe declara- -

tory relief against Minnesota Mining and Manufacturing

Company. Plaintiff seeks a determination that Minne-

sota’s Oace Reissue Patent, No, 23,843, is not infringed

by “Slipknot, ” plastié electrical insulating tape manu-

factured and sold by Plymouth, and, also, requests’ an -

injunction against Minnesota's bringing or threatening

to bring any additional suits against Plymouth or any

of its customers based on the manufacture, use, or sale

of Slipknot tape by Plymouth or by any of its customers.

In its answer Minnesota asserts that its. Oace patent

was duly and lawfully issued, is valid, and that Piymouth

_has infringed and is continuing to infringe same. Minne- °

—2a— a

_.80ta—also says that the tape in issue here is- different |

from a tape previously determined to be ngn-infringing

in earlier litigation between the same parties which

resulted in the entry of a judgment in Plymouth’s favor.

with ‘respect to the tape ela, issue. pee

- ¢ Minnesota’s answer also includes a counterclaim acainst |

Plymouth, a prayer for an accounting to establish Minne- ,

sota’s damages .resulting from the alleged infringement,

und a prayer for a permanent injunction. restraining

_ Plymouth from further infringement.

Plymouth filed a reply. to Minnesota’s counterclaim in

which it challenges the: validity ‘of the reissue patént.

Thereafter, Judge McCarthy .allowed Minnesota’s motion

to strike so much of .Plymouth’s. reply to the*countey-

claim as ppt. in issue the validity of the Oace reissue

patent. on the ground that the patent fiad heen held to.

be valid in an earlier ‘case. (See. 185 F.Supp. 716.) At

“the trial of this case I declined to review Judge Me-

‘Carthy’s allowance of the motion to strike, despite urgings

of Plymouth’s counsel that I do so, ‘since I am. persuaded

that it is not the proper function of one district judge

to review rulings made by another member of the same

Court at an earlier ‘stage of: a pending case. Any rights

that Plymouth may- have by reason of my declining, te

+ reconsider this matter are expressly saved for purposes

of appeal. ae

- At, the trial each party produced several chemical * ‘

experts, all duly qualified to~ express opinions on the

various chemical problems presented by this case. Be-

-eause of the extensive litigation which has elready taken

place between. these two parties with ‘respect to this

° particular: patent, I do not find it necessary, to analyze

- this expert testimonyiin fine detail or at length...

For present purposes the most important case in this

litany of ‘litigation’ is the so-called “Sears” case;- Which -

>

‘In addition to the “Sears case, the following cases are ~

‘among those which -have-been reported:

Minnesota V. Plymouth (and: Hawkins Electrie Con ny,

Complete Electrical Supply Co., and Shumway-Fresen Co.),

wae

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at ee ‘ . 2 | .

"was filed. on pear 1954, by Minnesota against Sears.. -

Roebuck & Company, in we Middle District of North ;

f

Carolina

Roebuck. The District Court ruled that Minnesota’s ‘Oace

patent was valid-and was infringed -by, the tape which

Pjymouth ‘was making “at that time. Its opinion is re-

ported in 141 F.Supp. 686. On appeal the Court of Appeals

for the Fourth Circuit, m an opinion dated April .1. .

1957 (243 F.2d 136), reversed and vacated the judgment

of the "District Court. Thereafter, on October 18, 1957. ,

Minnesota’s petition for reopening and rehearing was

deniéd (249 F.2a°66), certiorari was denied (355 U.S.

- 932), and.a motion for ‘rehearing the petition for certio-.

rari was denied-on March 17, 1958 (356-U.S. 915). Fina]

judgment was entéred by the District. Court on May 22

1958, dismissing Minnesota’s complaint. — :

The Court of Appeals for the Fourth Cireuit found the

Oace patent teaches that a liquid. plasticizer muxt: be used © -

*. for sum

o

i (Continued) : : :

178°F.Supp. 591 (N.D. IIL, March 27, 1959); (complaint,

- - filed Aug. 4,.1954, dismissed on Plymouth’s motion for sum-

mary judgment, and Minriesota’s motion for leave to file a ©

supplementary. complaint denied) ; le : k

Minnesota v. Superior Insulating Tape Co., 124 P.Q. 31

(E.D. Mo.),' 4° 284.F.2d 478 (8 Cir., Dec. 1, 1960), {com-

plaint, filed g. 4,.1954, dismissed on defendant’s motion

; judgment, and Minnesota’s motion -for. leave

to file supplementary complaint denied) ; 3

innesota V. U.S. Rubber Co. (and Lowder Hardware Co.

nd Rockingham Hardware Co.), and v. Goodyear: Tire &

Rubber Co. (and Carolina Tire Co. of Thomasville, N.C.),

178 F. Supp. 385 (M.D.N.C.). aff’d.-279 F. 24.409 (4 Cir..

May 16, 1960), (complaints, filed June 15 and July. 5, 1956,

dismissed on Plymouth’s motions for summary judgment, and

Minnesota’s motion for leave to file a ‘supplementary com-

plaint. denied). ye ars

Minnesota also secured default judgment against Pine State . -

Electric Supply Co. on complaint filed-in M.D.N.C. August

8, 1954. Plymouth was not a party to this case, which in-

volved two tapes, only one of which was made by Plymouth. *

eG.

° Plymouth intervened in that’ case and openly ; * ;

and actively defended on behalf of its: customer, Sears. _

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together with a resinous plasticizer, such as G-25 or

G-40, in order to obtain good results in the manufacture

of insulating adhesive tape. The Court specifically re-

jected the contention made by Minnesota that this patent

coteashes that the low molecular-weight portions of .a

“resinous plasticizer are equivalent to those of a liquid

plasticizer, and ruled that siace Plymouth omitted from

the production of its tapes the liquid plasticizer’ clement, °

as specified in the claims of the patent, there could be no

infringement of the patept even though the same results

were obtained, The Court: refused to apply the doctrine

of equivalents because it was satisfied that ‘one element -

required by the Oace patent, namely the liquid plasticizer, —

was not included in Plymouth’s product.

In still another phase of this apparently interminable -

_ multi.facet litigation, the Court of Appeals for the Eighth

~* Cireuit’ construed the Sears decision as holding that .

“nlaintiff’s patent teaches that the plasticizer of the tape

- must consist of two elements, one liquid and one resinous,

ani that the Piymouth product did “not infriffge because

its plasticizer contained only the resinous element and ‘

not the liquid element.” _

Minnesota contends herein that Slipknot is a different |

tape from that involved in the Sears case and that Slip- .

knot infringes the Oace reissue ‘patent hecause of an

alleged change in the composition of G-25 and G-40.

Minnesota says that subsequent to August 3, 1954, G-25:

and. G-40 have been materially changed so that they now

contain, in effect, the elements of a liquid plasticizer as.

that term. is used in the Oace patent. Minnesota does not

attempt to prove this by any -direct evidence tending to

establigh a change-in the raw materials from which G-25

and G-40°are rnanufactured;nor by any. direct evidence

of a change in the process’ used-to manufacture G-25 and

G-40.° Minnesota seeks to prove: that a change oceurred

-. by offering in‘evidence the results of.certain fractionation

tests made by its experts upon substances extracted by

these experts from samp] $ of Slipknot tape.

ee

time.’

7 he — 5a—

I am persuaded -and accordingly I find that Plymouth’s |

~ Slipknot tape. brought onto the market under that trade

name in December 195% is made in the same way and

- from the same materials as the Plymouth tape ruled to ve

non-infringing by the Court of Appeals for the Fourth

Cireuit in the Sears “case. T base this finding - primarily,

but by no ineans exclusively; on the testimony of ° Dr.

Ellington M. Beavers, Assistant Director of Research

for Rohm & Haas Company, the chemical concern. which

manufactures Paraplex G-25 -end Paraplex -G-40.~ Dr.

Beavers took part in the development of G-25 and G-40.

He testified that prior to the commercial marketing of

either of these resinous polymeric plasticizers, definite

_ specifications were deyeloped for the manufacture of

each, and he-testified explicitly that there has been no

change in the specifications of @-25 since August 3,°1954,

and that ihere have been no significant changes in the

manufacturing processes of either plasticizer since that

.

He further testified that the acid number specification

has remained-a maximum of 2 for each product; that the

raw materials used for each have remained the same;

-that the production control methods have remained the

same: that the products have continued to be as uniform

as is possible; and that Rohm & Haas Company is selling

today’ the same products as G-25 and G-40 as it did on

or before August 3, 1954. -

- Dr. Beavers’ testimony was followed by testimony from

Morris M. Danovitch, Chief Chemist for Plymouth’s tape

and cable division, to the effect that he: was responsible

for the formulation of ‘Plymouth’s plastic electrical tape.

He stated, in substance, that there had been -no change in

Plymouth’s method of manufacture since prior to August

3, 1954. He further testified that all formulas specify

2 This testimony is corroborated in part by Defendant's Ex-

‘hibit A, a letter written on December 29, 1954 on behalf of

Rohm & Haas Company, in, which it was stated that there has

f

_been no significant change in these resinous plasticizers. —

? March 10, 1961 was the date of this testimony.

6

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that G-40 or G-25 be used as the sole plasticizer in the:

manufacture of Slipknot tape. This witness was followed

by Solomon C. DeJong, foreman of Plymouth’s calender |

room, who testified that the materials used in the actual

making of Slipknot were mixed in strict accordance with

Danovitch’s formulas.

Tite testimony of these three witnesses, which dealt

directly with-the manufacturing and supplying of G-25 —

and G-40 by Rohm & Haas Company, and the manufactur- . .

ing of Slipknot tape by Plymouth, was corroborated by

evidence from the experimental field. Plymouth: produced

as its expert Mr. John M. DeBell, who has an impressive

background and vast experience in the field of synthetic

resins and plastics (indeed, this statement might fairly

be made with reference to all the chemical experts who

testified at the trial). Mr. DeBell, a former director of

research at the Massachusetts Institate of Technology, now

‘is the head of his own consulting la aratory, DeBell &

Richardson, which employs over one hundred people and

which does extensive consultation and testing. work for .

‘the major companies in the chemical ‘industry™in’ the

United. States. He tested both the tape involved inthe.

Sears case and the tape involved in this case, and he

previously testified as Plymouth’s expert during the trial ©

_of the Sears case. Mr. DeBell stated that his laboratory

tests indicated no change in the plasticizer used by Plym-.

outh in the two tapes tested. -His tests showed the absence

of a liquid plasticizer. :

6 °

I believe these witnesses, both because they impressed

me as credible ‘and truthful witnesses and ‘because there

-was no direct challenge to their testimony as to con-

~ tinned identity of raw materials and manufacturing proc-

~ asses, ‘Minriesota’s evidence consisted mostly of the results

of certain experimental tests conducted by its chemical

experts. I do not believe these tests go far enough to

require the disbelief of any of the foregoing testimony.

The so-called fractionation tests are similar to those upon

which Minnesota relied in its motion for rehearing in. the

Sears case and in its motions for leave: to file .supple-

a —Ta\—

° - % . :

' mentary complaints. in ‘other cited. in footnote

No. 1, supra. ry * .

Minnesota claims the tests show that the low molecular

weight fractions of the plasticizer extracted from the

* backing of Slipknot tape is ‘such ‘as to be either a liquid:

plasticizer similar to that called for by its Oace patent

cr sufficiently similar to be an equivalent to it. This is_

essentially the samp argument which Minnesota presented

‘to the Court of Appeals for the Fourth Circuit when it

sought reopening’ of the Sears case. That Court specifi- .

cally rejected this argument by saying:

«even if the new evidence should demonstrate the

alleged change in the composition of G-25, the deci- _

sion of the Court would necessarily be retained. This -

is so because G-25, although changed to contain a

larger quantity of low molecular weights, would never- -

“theless be a resinous plasticizer and would not be

composed partly of a resinous and partly of a liquid

_ plasticizer in accordance with the teaching of the

patent.” (249 F.2d 66, 67.)

I, likewise, do not find sufficient merit in the argument

presented by Minnesota here to overcome. the plaintiff’s

evidence. : r hate

I think. it-signifieant ‘that all of Minnesota’s experts

avoided the- use of a distillation test which Mr. DeBell-

‘testified was a simple, reliable and objective test for

determining the. presence; of liquid plasticizer, the. ingre-

dient which the Court of Appeals, for the Fourth Circuit

2 held to be an indispensable element under the teachings .

_ of the Oace patent. — |

Minnesota makes the further contention ‘that when

Plymouth brought Slipknot on to the market in 1957 it

launched an extensive nationwide advertising campaign

heralding Slipknot as its “new’’ tape. Minnesota says |

that this advertising should be treated by this Court

as an admission that Slipknot was a “different” tape from

that sold by Plymouth prior to 1957, and on the basis

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of the chemical evidence in the case, Minnesota argues . |

-that this “different” tape should be found to be an in-_

« fringing tape. Plymouth, on the other hand, says that

the tape was ‘‘new” in the ‘sense that the nationwide

advertising program would introduce ‘it to a group of

customers 95% of whom were-previously unaware that

Plymouth manufactured and marketed a plastic electrical

insulating tape, that for this: reason it was “new” to this.

' 95% of the trade, and that it was also “new” in that the

‘thickness of the particular tape involved had been reduced

from 8 to 7 mil.

_ The evidence shows that Plymouth conducted an elabo-

rate advertising campaign as alleged, and also used the

catch line “ZF-90 for total adhesion.” This may welt

have been over-promotion with regard to the degree of

’ newness, and could well be criticized as rather shabby

hucksterism on the part of. Plymouth’s sales promotion

personnel. Nevertheless, the use of mysterious and tech-

nical-sounding letter-number combinations for supposedly

potent ingredients in a wide diversity of products is a

matter. of everyday experience.t This use of over-exub-

erant advertising fails to overcome the evidence reviewed

in earlicr portions of this opinien which satisfies me that

the tape involved herein is: nile not different from

the tape involved in the Sears case. é

I find that Plymouth’s Slipknot tape is made from the

same materia!s and in the same manner as the tape held

to be non-infringing by the Court’of Appeals for the

Fourth Cireuit in the Sears case, and I rule that Slip-,

knot does not infringe Oace Reissue Patent, No. 23,843.

There remain two questions, the first of which is

‘whether Plymouth should be granted the injunctive relief |

* A casual reading of the advertising material in the daily

papers in any metropolitan area or in any of our national

magazines will show that the admen of Madison Avenue are

saturating advertising copy with such items as GL-70 and .

BR-85 in toothpaste, TCP in motor oil, V-7 and VO-5 in hair

tonic, AT-7 in soap etc., etc. a

*

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it seeks. In the leading case in this area of the law, -

_ Kessler v. Eldred, 206 U.S.. 285: (1907), wherein the Su-

préeme Court upheld the granting of an injunction against .

further suits sought by a-party who previously had suc-

- eessfully resisted a charge:'of patent infringement, the——

, Court said, (at page 289): ~ pie oe

5". . . the question here is whether by bringing a suit

against one of Kessler’s customers, Eldred has ‘vio-

lated the right of Kessler. The effect which may

reasonably be anticipated of harassing the purchasers

of Kessler’s manufactures by ‘claims for damages

on account of the use of them, would be to diminish .

. Kessler’s oppevtunities for sale. No one wishes to

buy anything, if with it he must buy a lawsuit... .

If rights between litigants are once established by

the final judgment of a court of competent jurisdic-

tion, those rights must be recognized in every way,

and wherever the judgment is entitled to respect by

those who are bound by it.” (Kmphasis added.)

The language in plainti brief (page 12) aptly <le-.

scribes the instant litigation:

“The customer cases constitute a story of prolifera-

tion of litigafion on a singlé issue, abuse of judicial

process, persistent trying of \dentical issues in dif-

ferent courts, and oppression\.and harassment un-

equalled in our experience. We know of nothing

” : .

quite like it in the reported cases\”

Apart from the instant case, whith was begun Iry

Plymouth, Minnesota has thus far in stigated litigation

against Plymouth and 13 of its custqmers in United

States District Courts located in the Fourth, Seventh, and

‘Eighth Circuits. Minnesota has been Ynsuccessful in

every one of these cases in which Plymouth has. appeared

and defended. Its conduct in connection with this litiga-

tion has alréady been criticized by tne Courts of Appeal

for the Fourth and Eighth Circuits. The Fourth Circuit

criticized the conduct of one Harold J. Kinney, an at-

torney for Minnesota, who has appeared in substantially

-

‘ \

,

: ae amy

ile So sac all-of these-cases; observing; with reference-to-an-affidavit.

filed by Mr. Kinney in connection with the U. 8. Rubber .

case: ae Not -

“The Kinney affidavit adds no weight to plaintiff's

‘position. Aside from its impropriety as an effort on.

the part of an attorney to- bolster his client’s case by

giving factual testirrony on his client's behalf, the

affidavit is obviously based only on information and

belief, dérived from Rathmann, and does not repre-

sent the testimony of one who has personal know!l-

edgé of the essential facts.” -(279 F.2d 409, 415.) —

The Court of Appeals for the Eighth Circuit expressed

its impatience with Minnesota’s behavior in the Superjor

Insulating Tape case, saying: — ate ce eee

«

“The record here also shows that the.trial of this

case was stayed for some four years upon plaintiff's ~

(Minnesota) mttion representing that the pending

North. Carolina cases would dispose of the contro-

versy without. the necessity. of a trial... . There is

reason te, believe that there-should be some limit to

os the number of times the Courts should be required

“to @itsider-claims involving identical issues.” (254

_ F.2d 478, 482.) ;

‘Needless to say, Minnesota has not abided by the out-

- come of the .North Carolina litigation. The-conduct of

Minnesota with reference to the multitudinous actions it

has -filed in connection with its Oaee patent can be accu-

rately characterized by the language of Judge Kaufman

in Helene Curtis Indystries v. Sales Affiltates, 109 F.Supp.

886, 902, aff'd. 199 F.2d 732 (2. Cir. 1952) :.

“Defendant is forum shopping with a vengeance. I

discern no other rationale which can adequately ex-

plain the stratagems which it has employed through- -

out this controversy. Our courts are not meant for

such wse.”’ (Emphasis added.) ,

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While a final judgment completely disposing of -this

~ case wil-not.be entered simultaneously with the filing of

"this opinion, for reasons sét-forth-in the succeeding para-

graph, a’‘temporary injunction pending entry of final

judgment will be filed herewith enjoining Minnesota, its

of its distributors or customers based on alleged infringe-

ment of Oace Reissue Patent, No. 23.843, by Plymouth’s

Slipknot tape.

The final question raised by the pleadings is. whether

or not an attorney's fee should be awarded to Plymouth.

It is clear, under 35 v.S.C.A. 285, that an attorney's fee

is to be awarded only in the exceptional case. excep-

tional cases, for purposes of, Sécfi#n 285, are those in

which the conduct of the patty against whom attorney

fees are awarded may be ¢ it

tious or involving bad faith or some other equitable

consideration -which makes/it unjust that the ‘prevailing

party be left to bear the burden of his own caunsel ters,

which prevailing litigants/ normally do bear. Seismograph

Service Corp. v. Offshote Raydist, Inc., 263 F.2d 9, 24

(> Cir. 1958); Kemart/ Corp. vy. Printing’ Arts Research

Laboratories, 269 F.2d 375, 394 (9 Cir, 1959). Cf. Grant

Paper Box Company v. Russell Box Company, 106 F.

Supp. 616 (D. Mass. 1952), aff'd. 203 F.2d 177, cert. denied

346 U.S. 821, rehearing denied 346 U.S. 905.

I find and rule that the conduct of Minnesota in this

ease, in which it again is unsuccessfully asserting conten- _

tions rejected many times previously by other Federal

courts, is, both vexatieus and unfair, and | award attorney

fees to Plymouth. I will hear the parties on the question

“attorneys, agents, and employees, from instituting any”

further or additional litigation against Plymouth or any —

acterized as unfair or Vexa--

of the amount of attorney fees to be awarded to counsel

for Plymouth.

Minnesota’s counterclaim is dismissed and E¥ymout!

will be granted relief in accordance with this opinion.

/s/ Andrew A. Caffrey,

US.DJ. ©

~~,

— 12a3—

Unsrrep States District Court

District of Massachusetts

Civil Action

No. 58-1222-C

- : : :

PLYMOUTH RUBBER COMPANY, INC,

: e Plaintiff 7

ie a

MINNESOTA MINING AND MANUFACTURING

“e _ COMPANY, Pao

Defendant

TEMPORARY INJUNCTION |

- March 23, 1962 woe

Effective upon the fil.ag hereof in the office of the Clerk

‘of this Conrt and pending entry of final: judgment herein,

Minnesota Mining and Manufacturing Company, its of-

- ficers, atturnevs, agents, employees, servants, and work-

men are enjoined hereby from representing that the manu-

facture, use, or sale of Slipknot plastic electrical tape

made by Plymouth Rubber Company, Inc. is an infringe-

ment of Gace Reissue Patent, No. 23.843, and from bring-

‘ing or threatening to bring, or continuing the prosecution

of, any action at law or in equity, against Plymouth

Rubber Company, Inc., or any of its customers, based

upon: the manufacture, use, or sale of said: Slipknot tape

by Plymouth Rubber Company,’ Inc. or any f its custo-

mers. < Lee

By the. Court, ak

/s/ Dorothy C. Clark \

Deputy Clerk —s_—\,

Enter: , ; : yt : \

/s/ Andrew A. Caffrey rn \

Andrew A. Caffrey et

U. S. District Judge

enue =

—18a—

APPENDIX B.

Unsitep States Covert or ApPEeALs

For the First Circuit

No. 6040. : :

THE PLYMOUTH RUBBER COMPANY, INC.

, PLAINTIFF, APPELLANT,

eae ,

. MINNESOTA MINING AND

MANUFACTURING COMPANY,

DEFENDANT, APPEBLEE.

No. 6042. aoe

MINNESOTA MINING AND . @

MANUFACTURING COMPANY, ; ;

DEFENDANT, APPELLANT,

Vv. é

THE PLYMOUTH RUBBER COMP. ANY, ENC.,

PLAINTIFF, APPELLEE. .

APPEAL FROM THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT GF MASSACHUSETTS. *

{203 F. Supp. 595] .

Before Woopsvry; Chief Judac, and Hartican

and Aupricu, Circuit Judges.

H. L. Kirkpatrick, with whom WV liam W. Rumer was

on brief, for The Plymouth Rubber Company, Ine.

Edward A.” Haight, with whom John M.° ‘ Harrington,

Jr., Harold J. Kinney, Stanley G. De La Hunt and Ropes’

and Gray were on brief, for Minnesota Mining and

Manufacturing Coinpany. .

— 14a —

OPINION OF THE COURT.

July 16, 1963. |

Woopsury, Chief Judge. This is another chapter in

what the court below aptly called a “litany of litigation”

over Reissue Patent No. 23,843 dated June 29,, 1954,

of original Patent No. 2,559,990 for “Insulating Tape”

issued on July 10, 1951, to Oace aud others arid “by them

assigned to Minnesota Mining and Manufacturing Com-

pany, a Delaware corporation of St. Paul, Minnesota.

Once ferreted out the determinative issue on ‘these ap-

peals becomes relatively simple., But to drive;the quarry

out of its burrow we must analyse the patent and review

this and other litigation between the ‘parties over it.

On: August %, 1954, Minnesota broyght suit against

Sears, Roebuck and Company in the Niddle District of

North Carolina for infripge of itk reissue patent

‘by selling insulating tape manufact\re by the plaintiff-

-. appellee hereing The Plymouth Rybber Company, . Ine.,

a Massachusetts corporation with, its principal place of

. business in Canton in that-. Commonwealth. Plymouth

intervened in that. suit as a party defendant and ¢on-

_dueted the defense of its customer.’ On the next day;

August 4, 1954, Minnesota filed two similar ‘suits, one in

the. Eastern District of Missouri against another

Piymouth customer, which Plymouth actively -defended

but in which it did not fofmally intervene, and another

in the: Northern District of Illinois against Plymouth

and six of its customers. Both of these suits weye staved

on representations by Minnesota that the North Carolina

cases would dispose -of the respective controversies with.

out the necessity for trial, and the North Carolina -cases

in due course went to trial. In that litigation the district

court, finding the facts and making the conclusions. of

law tendered by Minnesota, entered a deeree on June

: On the same day Minnesota brought another like suit in .

the same court against four other Plymouth customers which_

was consolidated for trial with the suit agairist Sears in

_which Plymouth inter venied as a defendant. ;

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‘ $

12, 1956; that its patent was valid and infringed, enjoined

Sears and Plymouth from further infringement and re-

ferred the question of Minnesota’s damages to a master.’ -.

On Plymouth’s appeal the United States Court of Appeals

for the Fourth Cireuit reversed and remanded. Scars, -

Roebuck and Company v. Minnesota Mining: and Manu-

facturing Company, 245 F.2d 136 (C.A. 4, 1957), petition

for rehearing. and motion to reopen . nied,. 249 F.2d 66

(C.A. 4, 1957), cert..denied, 355 U.S. 952 (1998).

The decisions. of the court of ‘cans in the above case

define the issue in the one before.us. To understand those”

decisions, however, we must first turn to the patent itself.

The patented produtt is a stretehable adhesive plastic

tape designed primarily for use by elgetricians for cover-

ing splices in electrical ‘conductors... The problem which

Oace and his assistihts set out to solve, ‘and apparently

' solved, was to plasticize a tape backing of polyvinyl

chloride in order to make is stretchable and retractable

(elastic) in such a way that it would remain. in “per- -.

manent equilibrium” with “a “pressare-sensitive -adhesive

coating. The patefitees say in their specification that they

obtained their unique and valuable results by “utilizing

an insulating tape in the form of a relative ly thick but

easily stretcliable and highly elastic pressure-sensitive

adhesive~ tape comprising a well-bonded, water-insoluble,

non-corrosive, normally tacky and pressure-sensitive ad-

hesive edating - on 4a plastic ‘ized vinyl chloride polymer

film which is in permanent ‘equilibrium with the adhesive.’

They say that by “permanent equifiiriumn” they mean

2 At this juncture Minnesota brought two more similar suits

in the same court against two other Plymouth customers. »

These suits stayed pending appeal in the case against Sears.

Upon reversal in that case, the suits were dismissed on Plym- -

outh’s motion for summary judgment: (Plymouth was, as _

. the district court notes, ‘the real party conducting this de-

fense.”) Minnesota Mining & Manifacturing Company V.

United States Rubber. Company and Same v. Gopdyear Tire’

‘and Rubber Company, Inc., 178 F.Supp. 385 (M.D.N.C. 1959),

modified and affirmed 279 F.2d 409 (C.A. 4, 1960).. .

g

ss, ,

a ee | | »

“that ‘the pressure-sensitive adhesive layer neither ‘softens

(becomes ‘pasty’) nor loses tackiness (becomes non-ad- .

herent) on prolonged contact with the backing or film

‘layer.”” Then the patentees go on-to say:’

“In order to secure permanent, equilibriun) between

or ; backing and adhesive, we employ with the vinyl

chloride polymer a combination of modifiers including

‘a substantial but minor amount (not to exceed about ~

20 parts.per. 100 parts of, the vinyl polymer) of a

low molecular weight liguid plasticizer such as dioctyl

phthalate [or DOP] together with a substantially

equal or somewhat greater amount of a high molecu- .

lar weight resinous type plasticizer, the amount of fhe.

latter in any eveht being sufficient, together, with the .

Jiquid plastitizer, to provide the desired degree of

stretch in the final. film.’ (Italies supplied.)

The patentees describe a material known to the trade

as “Paraplex G-25" as “a preferred exainple of a suitable

resinous type plasticizer.” But they say: .

“While resinous or high molecular weight modifiers

Se such as ‘Paraphex G-25’ are themselves capable of

producing the desired degree of strength, streteh and

elasticity: in vinyl chloride polymer filgis, and further- -

_more are generally classed as ‘non-migrating’ or,

‘permanent’ type modifiers or plasticizers, it is sur-

_ prisingly found that these materials do not provide

for permanent, equilibrium of adhesive and backing.

as. herein defined. Anstead, it has ‘heen shown that

-pressure-sensitive adhesives -in prolonged contact

with highly stretchable and_ elastic films consisting

solely of vinyl polymer and resinous modifier lose

a great deal, if not all, of: their initial tackiness or

‘ pressure-sensitivity.”” Ponce

as ‘

Further emphasizing the necessity for the use of the

two types of ‘plasticizers, the patentees say that while

\ _.the adhesive coating on a tape made from a film of the’

vinyl chloride polymer plus a resinous plasticizer and

‘a liquid plasticizer in the relative proportions of

er

e’

4

*—17a—

100 :29.5:17.6 proved to be. in “permanent equilibrium”

“with the backing: “On the other hand, adhesives goated

on films plasticized with from 40 to, 70 parts of ‘Paraplex

. G-23’ and in the absencé of the “dioctyl phthalate [or\.

DOP, the jfow-molecular-weight liquid plasticizer_myen- \

tioned. above] ‘were soon found to become deficient in

tackiness.”" -.- | j _? :

The United States Court of Appeals for the Fourth

- Cireuit in the ease cited above construed the claims whieh

it said were typical, that is, claim 1 of the original patent

and claim 6 for its reissue, in the light of the specificatien

as covering the use of two separate and distinct kinds ef”

plasticizers, one liquid and the, other: resinotis, which, the

court said: “... are two well defined and distinctive types

_( of pigeticizers, ax the language of the specification ind?”

tes, which are not only well recognized by thuyfude

but are characterized by substantial. différenceyJ# chenii-_.

‘eal composition.”’ Then, finding that Plymouti? was using

_ only Paraplex G-40, which it said was a resinous plasti-

cizer similar to Paraplex G-25 but less expensivé, as the

plasticizer for its polyvinyl cliloride film, the court held

that Plymouth had not infringed for the reason that

-even though it obtained thé pagentees’ result, it did so.

‘ by omitting one element covered by the Claims of the

patent. Wherefore it reversed and remanded.

On Minnesota’s ‘petition for rehearing and motion to:

reopen on the ground of newly: discovered evidence, thre

court of appeals wrote the second: opinion cited abgve

reiterating its previous decision that the patent tauzht

‘that to manufacture the ages elastic, adjiesive; in-

sulating tape. it was necessary to use both a resinous

type and a liquid type plasticizer. And it rejected Minne-.

sota’s motion to reopen for the reception: of evidence

. that the composition of Paraplex G-25 had been changed

to include a larger proportion of low*molecular-weight

plasticizer saying: “. ... the motion to reopen the pase

for the taking of additional evidence must be overruled, :

because even if the new evidenée: should demonstrate,

the alleged change in the composition, of G-25, the de-

7

¢

“Ss te perme.

. : e id : nn

e .

=

cision of the Coart. would necessarily be retained. This

is so because G-25, although changed to contain’ a larger

quantity of low molecular weiglits, would nevertheless

be a-resinous plasticizer and’ would not be composed

partly of a resinous and partly of a. liquid plasticizer —

in accordance with the teaching of the: patent.”

Upon remand the distriet court’ on May 20, 1958, issued

a decree on the mandate of the court of appeals reversing

and setting aside.its previous decree and, with casts to

the - defendants, dismissed. Minnesotg’s complaint with

prejudice “for: the” reasons stated in ihe opinions ahd

mandate and-for no-other reason.’’ Elaborating, the “dis-

trict court. said that it interpreted .the opinions ‘and

mandate of. the court of appeals as holding no infringe-

ment, which the court said was enough in itself to warrant

dismissal! ‘of the plaintiffs complaint. ‘Then, while com-

menting that it did not interpret those Opinions as hald-

ing the paterit invalid, the. court said tliat interpretation

~. and months of testing” Plymouth .had “at last broken °

. the viny! tape barrier”. with its’ “New Slipknot Plastic .

_ “is a matter.that can be Jeit to any other court.”

in the meantime, in December- 195% (or perhaps in

January 1955), Plymouth: changed the tradename of its

tape:from either “Homart” ar “Phymoyth” to “Slipknot”

and embarked onan extensive national- advertising cam-

phign wherein it proclaimed that “After years of research

Tape,” feats which Plymouth attributed to theaddition

of “ZF-90,” which admittedly was purely an advertising

“gimmick,’’ but whith it at first described as: Plymouth’s

new polymeric additive for total adhesion.” And at about

the same time Plymouth moved for summary judgment

in Minnesota’s action pending in the Northern District

Pei: The court below brushed aside -Plymouth’s advertising .

99 = 66

campaign characterizing it as. “‘over-exuberant,” “over-

motion” and “rather shabby huckterism.” We do the-Same,

for it affords no. excuse for Minnesota’s attempt t relitigate

‘g matter already judicidlly, determined’ as between it and |

Plymouth, as will appear hereinafter. ae

a $3 g ‘

4 °

7?

coon MN hocks .

of Illinois mentioned earlier in this opinion. Minnesota

vigorously but unsuccessfully ‘resisted this motion and

a like motion inthe Missouri litigation. Minn sota Mining

and Manufacturing Company v. Plymouth Rubber ¢ ‘om-

pany, Inc., 178 F.Supp. 59t (N.D.LIL, 1959); Minnesota

~ Mining and Manufacturing Company v. Superior Insu-

‘lating Tape Company, 124 US. P.Q. 31 (ELD. Mo.),

affirmed 284 F.2d 478 (C.A. 8, 1960). ;

While its petition for summary judgment was pending

in Illinois, Plymouth on December 30, 1958, brought the

present suit against Minnesota in the United: States’

District Court for the District of Massachusetts for a

declaratory judgment and ‘injunctive relief.’ Pivmouth

alleged in its complaint that litigation in the Fourth

Circuit had cuhuinated on May 22, 195%, in.a final deéree

that it had not infririged Minnesota’s reissue patent,

that at the time of the entry of that decree an action

‘by Minnesota for infringement of ‘its patent Was pending

in the Northern District of Illinois, that although

Plymouth had changed the name of its tape to “Slipknot”

it had’ not changed the composition of its tape “in. any

. substantial or material respect” at any time subsequent

_ to the” filing of the Illinoix and North Carolina suits,

but that nevertheless Minnesota “...-. has now asserted

in said I!inois suit, in an effort to keep that suit alive,

that Plymouth has made and sold, and that its customers

named in the Illinois suit have sold, subsequent. to the

filing of the Illinois suit, ‘Slipknot’ plastie electrical tape

of alleged modified construction infringing said . Oace

patent and not adjudicated by said North Carolina de-

cree.” Wherefore Plymouth asked for- # decree that its

“Slipknot’’? tape did not infringe Minr'sota’s reissue

patent, for- an ‘injunction. forbidding Minnesota from _

bringing or further prosecuting any ‘suits against

Plymouth or its custqmers based on the. manufacture,

*Federa] jurisdiction is predicated alternatively upon in-

volvement of the patent laws of the United States, Title 28

U.S.C. § 1338(ay or upon diversity .of citizenship and amount

in controversy, Tit'e 28 U.S.C. § 13832(a) (1).

hed

use or sale of plastic electrical tape made by Plymouth —

- and for costs and a reasonable counsel fee.

Minnesota answered denying Plymouth’s assertion that

it. had not changed the composition of its tape and

counterclained for infringement, to which Plymouth re-

plied with a denial and the assertion, inter alia, that

Minnesota’s reissue patent was invalid. Minnesota Anoved

to strike that portion. of Plymouth’s reply which alleged

invalidity on the ground that Plymouth was bound by

a prior judicial determination tliat the reissue patent

was valid, that is, by the adjudication of the district -

court in the. Sears case, and a judge of the court below

other than the judge who’ presided at the trial granted

Minnesota’s motion. Plymouth, as appellant in No. 6040,

‘challenges the correctness of this raling in order’ to

protect its right to assert the defense of invalidity in

the event that we should reverse the finding of. non-

infringement made by the court below and thereby render

the question of the reissue patent’s validity no longer

moot. ~ : : 7 } :

The decisions of the Court of Appeals for the Fourth

-Cireuit in the Sears case determine certain issues as

between the parties once and for all. Those decisions

construe the patent in issue as calling for the use of two

well defined and distinct types of plasticizers, one: liquid

and the other resinous, which the court said were not

only well known and_ recognized jin the art but were

‘characterized by substantial differences in chemical ‘com-

position.’ It said:

“The liquid plasticizers are all monomeric, that is,

they are simple, precise and well defined chemical

- 8“To hold’a patent valid if it is not infringed is to decide

a hypothetical ease.” Altvater Vv. Freeman, 319 U.S. 359, 363

(1943). a ; : ;

‘6 On rehearing the court disposed of Minnesota’s argument

that the claims of the reissue patent do-not call for the use of

a liquid plasticizer by saying: “If these claims were taken to

mean that a liquid plasticizer is not used, they~are void be-

cause not supported by the teachings of the original patent.”

— 2la —

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 fractionated. -

It is thinly fluid. DOP for example has a molecular

weight of 390 and a viscosity of less than: one poise,

- + which isthe unit by which viscosities are nieasured.

Resinous plasticizers on the other hand are polymeric.

They are synthetic compositions made by combining

chémicals of high-molecular weight and are extremely

viscous. G-25, for example, has a viscosity of 1000

poises. The molecules of these resins are combina-

tions: of varying numbers of so-called. building units

and accordingly vary in weight, ranging in.the case

of G-25 from 1000 te_50,000. Its average moleenlar

_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.”

Then, finding on the record before it that Plymouth

was using only ‘a resinous type plasticizer in the fabrica-

tion of the tapes alleged to infringe, the court reached

the conclusion,’ noted previously, that the defendants

therein, Plymouth and Sears, had not infringed: since

one of the elements of the patented structure had been

omitted’ in the manufacture of the acensed product.

Moreover,.on rehearing the court also held that even

if G-25 had been changed since: it first came on the market

in 1944 so as to contain a larger quantity of low-moleenlar-

weight material it would nevertheless remain “a resinous

plasticizer and would not be composed partly of a resinous ,

and partly of a liquid plasticizer in accordahee with the

teaching of the patent.” pe

We presume that the. basis for the court’s rejection of

this evidence was its conclusion that even if a resinous,

plasticizer contained a significant fraction of. Jow-molecu-

lar-weight material, such fraction still would not ¢on-

stitute the “liquid” plasticizer of the Oace patent in the

“monomeric” s¢nse in which it had defined a “liquid”

plasticizer, that is, as “simple, precise” and well defined

ar

*.

—- 22a —

chemica] compounds’? in which “every molecule is like

every other molecule.” This presumption is: borne out

by’ the Fourth Cireuit’s repeated rejection of the same

type of evidence not only in its opinion denying a re-

hearing in the Sears case but also in its opinion in the

United States Rubber and Goodyear cases cited in foot-

note 2 above, in which the court said (279 F.2d at 414-15):

“The molecular weights vary in both k*.ds of

plasticizers but each has its own distinctive. form,

the liquid plasticizer being monomeric am the resin: ;

ous »lasticiz:r polymeric in its molecular structure,

and it follows that Plymouth’s tape did not .violate

‘the patent even if it be true. . . that ‘Plymouth has

found a way to make a satisfactory tape by using

a resinous plasticizer containing a substantial amount

of low-molecular-weight material.” :

In short, it has been held in prior litigation between

_ the parties that Minnesota’s reissue patent calls for the

use of two types of plasticizers, a low-molecular-weight

“monomeric” liquid plasticizer and° a_high-molecular-

weight “polymeric” resinous plasticizer, and that

Plymouth did not infringe by using only a resinous type

plasticizer even though it might contain a substantial

amount of low-molecular-weight material. Basie principles

of res judicata and estoppel by judgment bar relitigation

of these matters. As between the- parties, they are settled

once and for all.

This was clearly recognized by the court helow which —

rejected the fractionation tests of Minnesota’s expert

witnesses by which it undertook to prove that the G-2

and G-40 in the “Slipknot” tape differed from the same

compounds “in Plymouth’s earlier tapgs in’ that those

plasticizers had been changed to contain a substantia

amount of low-molecular-weight material. It said that

it did so partly because it believed Plymouth’s witness

who’ testified that the. formulae for,G-25 and G-40 had

poten hans over the vears, partly because it be-

lieve that the fractionation tests of Minnesota’s wit-

nesses did not go far enough to establish the presence

a ee ;

of “monoméric” material in the ‘Slipknot’? tape’ and

partly because even if Minnesota’s evidence were believed

it would constitute the same sort. of proof rejected by

the court on petition to reopen in the Sears case, wherein

the court said that proof of a “larger quanttty. of low-

molecular-weights” in Plymouth’s resinous plasticizers

still would rot make it a “liquid plasticizer’’ as called

_for by the Oace patent. Wherefore the court ruled that

“Slipknot does not infringe Oace Reissue Patent, No.

23,843” and entered judgment giving Plymouth the relief

it requested. Minnesota’s appeal from this judgment is

No. 6042. | : ,

On its appeal Minnesota contends that the court below

erred because it ‘“‘treated as-binding on the issue of in-

. fringement an earlier decision between the same parties

in the Fourth Circuit, although the article here accused

was not and could not ‘there have been involved, and ts

shown by the evidence herein to be different in the very

respect which was .pertinently involved vin the Fourth

Cireuit’s reversal of its District Court in that earlier

case.” Minnesota says that this is so because admissions

‘of fact in evidence. in this case “showed that there was

no low moleular weight (helow 1000) plasticizer in’ the

tapes adjudicated non-infringing in the Scars case. On

the other hand, undisputed evidence. in the record here.

- ™The court said it credited the testimony of Plymouth’s in-

dependent chemical expert, who said that the distillation test

is a simple, reliable and objective test for the presence of

liquid plasticizers in the sense of the “monomeric” materials

which the court in the Sears case had held to be an.indispens-

able element under the teaching of the Qace patent, and who

further testified that such tests conducted by him indicated

the absence of any. appreciable amount of .such material in

Plymouth’s tapes.

We have laboriously waded through Minnesota’s evidence in

- the record, which for us as non-chemist laymen proved an

odyssey’ fraught with obscurity, confusion and frustration.

The raost we can make of it is that it shows the presence of

low-molecular-weight material in the plasticizer used in Plym-

outh’s “Slipknot” tape. Indeed, this ts all that Minnesota

claims for its evidence in the court below or claims for it on

this appeal.

-_ oe —

’ shows that the tape here accused has a substantial con- |

tent. of liquid, low molecular weight (below 1000) plasti--

cizer in it.” - | . ‘

Minnesota's contention rests upon the proposition that

there ‘was no low-molecular-weight’ material in the

Plymouth tapies held in the Sears case not to infringe.

The fact, however, is, as we have already been at pains -

to point ont, that the court in the Scars case held on

Minnesota’s motion to reopen, that even though G-25 had

been changed since it first came on the market to,contain

‘@ larger quantity of low-molecular-weighits © it would

nevertheless still be a resinous plasticizer as defined in

the patent and not a combination of resinous and tiquid

plasticizers within the patent's teaching. That is to. say,

the court held that the presence of low-molecular-weight

material in G-25 and similar compounds would not render

them any the less resinous plasticizers as defined in the

patent. RO

Minnesota, in trying to show. the presence of low-

molecular-weight material in Plymouth's “Slipknot” tape,

is simply tryng to relitigate a matter already judicially

“determined in prior litigation with Plymouth. Its argu-

ment, therefore, overlooks, or seeks to evade, the holding

of the Coart of Appeals for the Fourth Cireuit in’ the

Sears case. The true issue here, as the court below

recognized,-is not whether Plymeuth is using a. resinous

plasticizer .with low-molecular-weight material “in it. In

prior litigation between the parties it has been judicially

determined that it can. The issue here is whether the -

plasticizer Plymouth is now using is a_ pre-blend ‘or

synthesis of liquid and resinous plasticizers as the Court

‘of Appeals for the Fourth Cireuit defined these ma-

terials." | 4

We cannot escape the impression that Minnesota has

- madé no attempt. to prove the. issue in this case but

instead is trying either to further litigate the validity

* The court in its first opinion in the Sears case said that

the defendants herein concede that the use of a pre-blended

mixture of the two types of plasticizers would be the equiv-

. alent of mixing them during the process of production.

-

; —. 25a -—-

of the Fourth Circuit’s défirfion of liquid and resinous .

plasticizers as those terms are used. in the patent or-

else to ignore that definition on: the spurious ground that

the méanirfy of the terms used in the patent was either

not directly in issue or else Was not the real basis for

decision in the Sears ease. Uf there is one. thing, however,

that the Sears case ought to have taught Minnesota if

is that the term, “iiquid plasticizer” as used in the patent

was directly in issue and was held not to mean w resinous

type . plasticizer’ even though such a plasticizer might

‘have low-molecular-weight material in it. There is no

excuse for further hitigating those issues with Plymouth.

There is no doubt in our minds that Plymouth has

made out a case for an injwaction in the discretion of |

the court below. We think it clear that) Plymouth ts -

entitled to protect its business from the adver-« effects

to be anticipated fron, the hyratasing of its customers

with claims for damages arisimg out of the use of its

products. “No one wishes to buy anyt cag, if with it he

must buy a law suit.” Hessler v. Eldred, 206 US. 289,

289 (107). But we think the injunefien too broadly

drawn in that it enjoins Minnesita from represe nine

that Plymouth’s ‘Slipknot plasti® eleetrical. tape” is an

infringeme nt of the Oace patent amd from by ming any

action at law or in ecfuity based upon the manufacture,

use or sale of “said Slipknot tape.” Identification merely

by trade name leaves Minnesota handcuffed in the event

Plymouth shoala apply “Slipknot” to an infringing tape

The injunction should be limited to Plymouth tapes made

in substantially the same way from substantially the

same waterials as those ‘ad judic ated non-infringing beth

by the Court of Appeals for the Fourth Circuit in the

Sears ease and by this court in the ease at bar.

’ From what we’ have said in this opinion it: must be

‘cle ar that we find no abuse of discretion in) awarding

Plymouth a counsel fee.

Judgment will he entered dismissing Plymouth's appeal,

No. 6040. é' ,

In Minnesota's appeal, No: 6042, judgment’ will” be

entered afirming the judgment of the District Court as

modified in accordance with this opinion.

— 2%a—

APPENDIX C._

Unirep States Court or APPEALS

For The First Circuit

No. 6042. | ,

MINNESOTA MINING AND

MANUFACTURING COMPANY,

Defendant, Appellant,

vy. aes

THE PLYMOUTH RUBBER COMPANY, INC.,

oo Plaintiff, Appellee. —

=

JUDGMENT

July 15, 1963.

‘This cause came on to be heard on appeal from the

United States District Court for the District .of Massa-

chusetts, and was argued by counsel.

Upon consideration whereof, It is now here ordered,

adjudged and decreed: as follows: The judgment of the

District Court, as modified in accordance with the opinion

filed today, is affirmed, and the case is remanded for

such modification. ears Gas

2 . By the Court:

/s/ Roger A. Stinchfield,

Clerk

(ee: Messrs. Haight and Kirkpatrick. }

—%a—

s

APPENDIX D.

Unirep States Court or APPEALS

For The First Cirenit

. No. 6040.

THE PLYMOUTH RUBBER COMPANY, INC,

Plaintiff, —

v.

MINNESOTA MINING AND.

YVANUFACTURING COMPANY,

Deféndant, Appellee.

JUDGMENT —

“pe / + July 15, 1963.

This cause came on to be heard on appeal. from the -

‘United States District Court for the: District of Massa-

chusetts, and was argued by counsel.

* Upon conside ‘ration whereof, Lt is now “be re orde red,

adjudged and. decreed as follows: The appeal herein | is

dismissed. No costs. na

' , By the Court:

" /s/ Roger A. Stinchfield,

Clerk Gy

lee: Messrs. Kirkpatrick and Haight.) .

7

- —2a—

APPENDIX E.

Unirep States Court or APPEALS

For The First Circuit

No. 6042.

MINNESOTA ‘MINING AND

MANUFACTURING COMPANY,

Defendant, Appellant, |

v.

THE PLYMOUTH RUBBER COMPANY, Ixc, °

| Plaintiff, Appellee.

ORDER OF COURT ..

August 5, 1963.

It is ordered that the petition for rehearing filed on

July 29, 1963, be, and the same hereby is, denied.

By "the Court:

.. Roger A: Stinchfieid, Clerk.

ft By: /s/ Dana H. Gallup,’

' . Chief. Deputy Clerk.

fee: Messrs.’ “Haight and Kirkpatrick. J).