The opinion of the court was delivered by: BICKS
Technical Tape Corporation, hereinafter referred to as 'Tech Tape', seeks a judgment declaring that United States Patent 2,177,627 is invalid and not infringed by the product it manufactures and markets under the trade name 'Tuck'. Minnesota Mining & Manufacturing Company, the defendant, which will be referred to as '3 M', has counterclaimed for an injunction against further infringement and damages.
The patent has been subjected to judicial scrutiny by the Courts in the Seventh Circuit and consistently upheld. Minnesota Min. & Mfg. Co. v. International Plastic Corp., D.C.N.D.Ill.1945, 62 F.Supp. 34, affirmed 7 Cir., 1947, 159 F.2d 554; Minnesota Min. & Mfg. Co. v. Pax Plastics Corp., D.C.N.D.Ill.1946, 65 F.Supp. 303, affirmed 7 Cir., 1947, 159 F.2d 554; Minnesota Min. & Mfg. Co. v. Neisner Bros., Inc., D.C.N.D.Ill.1951, 101 F.Supp. 926, and D.C.N.D.Ill.1954, 122 F.Supp. 752. Plaintiff's procedural agility (see Minnesota Min. & Mfg. Co. v. Technical Tape Corp., D.C.N.D.Ill.1954, 123 F.Supp. 497; Technical Tape Corp. v. Minnesota Min. & Mfg. Co., 2 Cir., 1952, 200 F.2d 876) has been rewarded with an opportunity to litigate its claims before a tribunal unfettered by its own prior determinations.
The patent was issued on October 31, 1939 to 3 M as assignee of Richard Gurley Drew, one of its employees, and will be referred to as the 'Drew Patent'. The application was filed February 18, 1938 as a division of a co-pending application filed June 10, 1933 and was in part a continuation of a co-pending application filed May 1, 1931. The invention relates to 'adhesive sheets having a backing with a non-fibrous surface (such as normal or waterproofed films of regenerated cellulose) and a coating of normally tacky and pressure-sensitive adhesive united thereto. While not limited thereto, the invention relates especially to transparent adhesive sheets, to adhesive sheets in the form of adhesive tapes which may be sold in stacked or coiled form, and to adhesive sheets or tapes which are well adapted to the sealing or securing of wrappers composed of non-fibrous lustrous cellulosic films and the like'. The specification recites that 'An object of the invention is to provide a unified adhesive coating possessed of such coherence in relation to adhesiveness and so firmly united to its backing that the adhesive sheet may be stripped from smooth non-fibrous surfaces (not possessing special chemical affinity for the adhesive), to which it may have been temporarily applied, without offsetting of adhesive material. Hence the adhesive coating may be termed 'non-offsetting', and this expression designates an important physical or physico-chemical property or characteristic of the adhesive coating, namely, that its coherency is greater than its adhesiveness.'
3 M markets the invented article under the well-known mark 'Scotch Brand Cellophane Tape'.
Succinctly, the issues in this case are: (1) Is the Drew Patent valid; (2) If valid, has it been infringed by Tech Tape; and (3) Assuming validity and infringement, has the conduct of 3 M been such as to disentitle it to relief against Tech Tape.
Plaintiff founds its claim of invalidity principally on the grounds that: (i) the alleged invention is not a patentable advance over the art because it required no special skill nor any 'inventiveness'.
(ii) the product claimed in the patent was patented and described by others in printed publications in this and foreign countries before the claimed invention thereof by Drew.
(iii) the alleged invention of the patent was (a) patented or described in a printed publication in a foreign country and (b) in public use more than two years prior to its filing date;
(iv) what the patent discloses as invention was developed by others;
(v) claim 9 of the patent defines an inoperative and useless product and was deliberately included, wherefore acceptance of the patent with such claim was not without deceptive intention;
(vi) what the patent discloses as invention is the same as is covered by the Drew Masking Tape Patent 1,760,820; and
(vii) the specification of the patent lacks the fully, clear and concise description required by 35 U.S.C.A. 112. These contentions will be treated seriatim.
The first ground of alleged invalidity is the not uncommon one urged against an article which is a plurality of well-known elements. It is a mere 'aggregation', plaintiff argues, of cellophane and adhesive -- neither of which Drew claims to have invented -- in which the two elements retain their original characteristics and perform exactly the same functions they possessed and performed before being brought together in the assembly. 3 M, on the other hand, contends that the amalgamation produces a new article, not then previously in existence, possessing qualities and utility different than the components standing alone. Novelty for the adhesive or of any ingredient thereof per se or of the film backing per se is not claimed, but rather in the combination whereby a new article is produced. To discuss this issue in terms of 'aggregation' or 'combination' can lead to nothing but confusion. See, Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 1950, 340 U.S. 147, 151, 71 S. Ct. 127, 95 L. Ed. 162. The efforts of the industry to find an article of the utility possessed by the one described in the Drew Patent, the general need and extensive market for such article and the availability of materials to produce it furnish a more helpful guide.
As Judge Learned Hand observed in Safety Car Heating & Lighting Co. v. General Electric Co., 2 Cir., 1946, 155 F.2d 937, 939: 'In appraising an inventor's contribution to the art, * * * the most reliable test is to look at the situation before and after it appears. * * * Courts, made up of laymen as they must be, are likely either to underrate, or to overrate, the difficulties in making new and profitable discoveries in fields with which they cannot be familiar; and, so far as it is available, they had best appraise the originality involved by the circumstances which preceded, attended and succeeded the appearance of the invention. * * * This approach is more reliable than a priori conclusions drawn from vaporous, and almost inevitably self-dependent, general propositions.'
DuPont commenced marketing normal cellophane in 1924 and moisture-proof cellophane in 1927. The latter type was especially adapted to the packaging of food products where protection against moisture loss or absorption was desired. That purpose, to be accomplished effectively, required a satisfactory seal for the cellophane wrapping. None was available. Instead, a confectioner's fold with a paper or rubber band was employed. Its search for such a seal led DuPont in 1926 to send samples of moisture-proof cellophane to various adhesive manufacturers. It tried itself to develop such a seal but met with two obstacles which it could not surmount -- bad odor of the adhesive and excessive dwell time for the adhesive to take hold. DuPont's adhesives chemist worked on the problem but the possibility that the solution lie in development of a pressure-sensitive cellophane-backed adhesive tape didn't occur to him. Self-deprecatingly he testified, 'Somebody asked me why didn't it and I said I was too dumb'.
Then came Drew who, although he refers to himself as a 'tinkering fool' and 'more of a cook than a chemist', had already invented paper-backed masking tape. In June or July 1929 a paper jobber faced with the problem of producing a wrapper sufficiently waterproof to withstand submersion in water for a given time sought Drew's aid. About the same time Drew's superior, in quest for a wrapping which would keep moisture from rolls of masking tape obtained a quantity of waterproof cellophane from DuPont. This was Drew's first introduction to cellophane and he promptly related moisture-proof cellophane to the problem which the paper jobber had presented to him. He 'smeared' some adhesive on a strip of the cellophane and through trial and error ultimately evolved a theretofore unknown article -- cellophane-backed pressure-sensitive adhesive tape, aggressively and permanently tacky when fully dried, with an adhesive layer more highly cohesive than adhesive which could be wound and unwound and removed from surfaces without delamination or offsetting of adhesive. It filled the need for the satisfactory seal DuPont was looking for and introduced a new kind of tape of such inherent merit and versatility as to become commonplace in the home and office.
DuPont had every incentive to come upon the article disclosed in the Drew patent. Notwithstanding that it had available to it the materials, the scientific personnel and the consultation of Brandenberger, one of the earliest producers of cellophane and the patentee of the patent strenously urged here as anticipation of the Drew invention, it failed to make Drew's discovery.
It cannot successfully be controverted that prior to the advent of the article disclosed in the patent, cellophane had not been used as a backing in combination with an aggressively tacky and strongly cohesive rubber-resin type adhesive. The prior self-adhering normally tacky adhesive tapes had a cloth or paper backing. The tacky adhesive penetrated the surface of the backing and obtained a mechanical anchorage due to the porosity and fibrous nature of the backing. The non-adhesive surface was not flat and consequently when the tape was wound in a roll there were only points, of, rather than total, contact with the pressure-sensitive adhesive. Because there was a mechanical differential and an area differential between the two sides of the tape the roll could be unwound without delamination of the adhesive. Persons skilled in the adhesive tape art were committed to the thinking that mechanical anchorage was a sine qua non of an acceptable non-delaminating and non-offsetting adhesive sheet or tape. Drew also was of that mind on May 28, 1928 as evidenced by the caveat contained in the application he filed on that date for his masking tape patent, viz., 'An over-sufficient saturation of the paper will render the surface unfit for subsequent coating * * *' U.S. Patent 1,760,820, p. 5, lines 124-126.
It may be that Drew employed a backing with a non-fibrous surface contrary to the precepts of the art precisely because he was 'more of a cook than a chemist'. That a person having ordinary skill in the art would 'know better' than to attempt it does not negative patentability.
In retrospect, it would seem that what Drew did was simple and no more than the obvious. 'Its simplicity should not blind us as to its character. Many things, and the patent law abounds in illustrations, seem obvious after they have been done * * *. Knowledge after the event is always easy, and problems once solved present no difficulties, indeed, may be represented as never having had any, and expert witnesses may be brought forward to show that the new thing which seemed to have eluded the search of the world was always ready at hand and easy to be seen by a merely skilful attention.' Diamond Rubber Co. of New York v. Consolidated Rubber Tire Co., 1911, 220 U.S. 428, 434-435, 31 S. Ct. 444, 447, 55 L. Ed. 527. See also Goodyear Tire & Rubber Co. v. Ray-O-Vac Co., 1944, 321 U.S. 275, 279, 64 S. Ct. 593, 88 L. Ed. 721.
The claims in the Drew patent meet the 'rather severe test' and conform to the standard of invention for combination patents enunciated in Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., supra (340 U.S. 147, 71 S. Ct. 130). Whether 35 U.S.C.A. § 103 lowered the standard of invention is an inquiry, therefore, which need not be pursued in this case. Vermont Structural Slate Co., Inc., v. Tatko Bros. Slate Co., Inc., 2 Cir., 1956, 233 F.2d 9. Compare Welsh Mfg. Co. v. Sunware Products Co., 2 Cir., 1956, 236 F.2d 225; Lyon v. Bausch & Lomb Optical Co., 2 Cir., 1955, 224 F.2d 530, 535, 536, certiorari denied 1955, 350 U.S. 911, 76 S. Ct. 193, and L-O-F Glass Fibers Co. v. Watson, 1955, 97 U.S.App.D.C. 69, 228 F.2d 40, with Wasserman v. Burgess & Blacher Co., 1 Cir., 1954, 217 F.2d 402; Interstate Rubber ...