A. S. Boyle Co. v. Siegel Hardware & Paint Co. (26 F. Supp. 217, 1938)

FORD, District Judge.

The instant case is a suit which charges infringement of claims 5, 6, 7, 14, 17, and 18 of a patent issued to one Griffiths No. 1,838,618. The patent was issued December 29, 1931, as the result of an application filed November 17, 1923.

The plaintiff is The A. S. Boyle Company, the present owner of the patent. The defendant named in the suit is the Siegel Hardware and Paint Compány (hereinafter referred to as the Siegel Company). It is a Massachusetts corporation located at Boston, and it is charged with infringement of the patent in suit by selling an artificial wood composition known by the trade name of “Wood Fix” and manufactured by The Sheffield Bronze Powder and Stencil Co., Inc. (hereinafter referred' to in this opinion as the Sheffield Company of 1934). This latter company is an Ohio’corporation located at Cleveland, and it entered a general appearance in this case, becoming a party defendant, and defended the present suit.

Statements of fact and conclusions of law appearing herein are intended to meet the requirements of Rule 52 of the new Federal Rules of Civil Procedure, 28 U.S. C.A. following section 723c.

The defenses relied on by the defendants are: (1) Invalidity in view of the prior art; (2) non-infringement; (3) that the claims in suit are broader than those described in the original application; (4) that the specification of the patent is not in full, clear, concise and exact terms; (5) that the patent is invalid for failure to file a seasonable disclaimer; and (6) that the claims of the patent cannot be construed broadly enough to cover a composition of matter not including nitrocellulose, because during the prosecution of the application, the patentee cancelled certain claims in the file wrapper.

The patentee in his application states:

“This invention relates to plastic composition and has for its object to provide a’plastic mass which may be used for many purposes, for example, for filling, coating or moulding * * *.”

It is described as a doughy, putty-like plastic composition which, when exposed to air, hardens and becomes a wood-like substance, adheres firmly to any clean, dry foundation, does not blister or powder when exposed to moderate heat, and is not affected by water, gasolene, or other commonly available liquids. It may be used for filleting by pattern makers, and filling screw and nail holes by joiners and cabinet makers and repairing mouldings and carvings, and building up or repairing lasts by shoe makers. The composition is known by the trade name of “Plastic Wood.”

Ingredients suggested in the specification are celluloid scrap (nitrocellulose), ester gum, and castor oil, to be dissolved in solvents to which a filler of wood flour is added. There are various formulae in the specification for the combination of these ingredients, and the limits within which the proportions may be used.

It is suggested that in place of celluloid scrap other forms of nitrocellulose may be used, such as celluloid in the form of sheet or the like.

The claims in issue are as‘follows:

5. A doughy putty-like plastic composition comprising nitrocellulose in a solution containing a volatile liquid, and a finely divided cellulose filler in such proportions as to harden upon mere exposure to air to substantially the rigidity and solidity of wood.

6. A doughy putty-like plastic composition comprising nitrocellulose in a solution containing a volatile liquid and a finely divided cellulose filler in such proportions as to harden upon mere exposure to air to substantially the rigidity and solidity of wood, said filler being present in not less than fifteen parts by weight.

7. A doughy putty-like plastic composition comprising nitrocellulose in a solution containing a volatile liquid, and a filler of finely divided wood flour in such proportions as to harden upon mere exposure to air to substantially the rigidity and solidity of wood, said filler being present in not less than fifteen parts by weight.

14. A doughy putty-like plastic composition comprising nitrocellulose in a solution containing a volatile liquid and a finely divided wood filler in-such proportions as to harden upon mere exposure to air to substantially the rigidity and solidity of wood.

17. A composition of matter for hole filling and filleting, which before exposure to the air is dough-like and putty-like, and contains finely divided wood, nitrocellulose and a volatile liquid, and after exposure to the air has a wood-like rigidity and solidity and is essentially finely divided wood held together by the nitrocellulose.

18. A composition of matter for hole filling and filleting, which before exposure to the air is dough-like and putty-like and contains a volatile liquid, nitrocellulose, and about 15 to about 30 percent by weight of finely divided wood, and which after exposure to the air has a wood-like solidity and rigidity and is essentially the finely divided wood held together by the nitrocellulose.

Claims 1 to 4, inclusive, and 12, 13, 15, and 16 in the patent, define five-ingredient compositions, and claims 8 to 11, inclusive, define four-ingredient compositions, omitr ting resinous matter. Claims 5, 6, 7, 14, 17, and 18, the claims in suit, define three-ingredient compositions, omitting non-drying oil and resinous matter.

As has been noted above, the application for the patent in suit was filed November 17, 1923, and was issued December 29, 1931. The time between these dates was occupied in prosecuting the case for the patent in the Patent Office, the Board of Patent Appeals, and the Supreme Court of the District of Columbia. Claims 1 to 4, inclusive, in the patent, and not involved in the present suit, were originally allowed by the patent examiner; and the Supreme Court of the District of Columbia directed the Commissioner of Patents to add to the patent the claims numbered 5 to 18, inclusive, six of which are in issue in the present suit.

There was no dispute between the parties that the plaintiff is the owner of the patent and the Siegel Company, who are retailers of paints, sold the goods charged to infringe, at Boston, and that the manufacturer of those goods is the Sheffield Company of 1934.

In the case of The A. S. Boyle Co. v. Harris-Thomas Co. et al., 18 F.Supp. 177, this Court in a suit for infringement of the patent in suit here sustained the validity of claims 5, 6, 8, 11, 13, 15, 16, 17, and 18.

In an unreported decision filed September 25, 1937, in the United States District Court, Western District of Washington, Northern Division, in a suit between The A. S. Boyle Company, the present plaintiff and The Pacific Marine Supply Company, and Webb Products Co., Inc., intervener, for infringement of the patent here in suit, the Court held claims 5, 8, 13, 16, and 17 valid and infringed.

In the case of The A. S. Boyle Co. v. Harris-Thomas Co., supra, the defendant put in evidence 85 different patents and several excerpts from text-books and publications. After review of the prior art, this Court said in that case, page 180:

“The significant thing that emerges from an examinaton of the prior art and the evidence of widespread knowledge of the properties of nitrocellulose which it affords, is that nobody thought of making it [plastic wood] available in the workshop and in the home in the form of a convenient putty for repairs to articles made of wood.”

In the case of The A. S. Boyle Co. v. The Pacific Marine Supply Co., supra, there was also a review of the prior state of the art.

The only claims in issue in the present suit not involved in these adjudicated cases are claims 7 and 14.

It will be seen that claim 6 differs from claim 5 merely by specifying that the cellulose filler is present in not less than fifteen parts by weight; claim 7 differs from claim 6 only in specifying that the finely divided cellulose filler is wood flour; and claim 14 is the same as claim 5 except that it specifies a finely divided wood filler instead of a finely divided cellulose filler.

In order to establish that the claims in suit were anticipated by the prior art the defendant relied, in addition to the patents and publications considered in the cases of The A. S. Boyle Co. v. Harris-Thomas Co., supra, and The A. S. Boyle Co. v. The Pacific Marine Supply Co., supra, on the British patents to Tas and David No. 22,528 (1907) and Feldmann, No. 148,117, and an article published in the “Scientific American Encyclopedia of Formulas,” pp. 779-782.

The Tas and David patent, No. 22,528, is described as “ * * * a plastic composition suitable for waterproofing, for the repair of articles or goods of leather, rubber or the like * * and when

put together it had the appearance of black-tar and contained about 40% asphaltum.

The Feldmann patent, No. 148,117, relates to the preparation of a plastic character used as filling- or coating materials, and applied to irregular surfaces preparatory to painting. When put together it is a white substance and when dry is hard, stiff, and brittle.

The publication in the “Scientific American Encyclopedia of Formulas”, pp. 770-782, concerns itself with the properties of celluloid and its uses. It taught nothing in relation to the composition- of the patentee.

This Court in the case of The A. S. Boyle Company v. Harris-Thomas Co., supra, stated that although “ * * * inventors have mixed nitrocellulose with sawdust to make artificial wood” (18 F. Supp. page 180), it found nothing therein that anticipated the invention of Griffiths. A useful function hitherto unknown was supplied to the art. A complete review of the Pierson patent No. 65267, May 28, 1867, upon which the plaintiff greatly relied in this case to prove the prior art was made in the case just cited and a finding made that the Griffiths’ invention was not anticipated by it. In view of this finding and after an examination of the patents and publications introduced in evidence by the defendants, I arrive at a similar conclusion.

The facts show that the commercial product of the plaintiff “Plastic Wood” was first manufactured for commercial use in 1925 and it had a wide variety of uses in repairing and restoring wood products. It met with marked commercial success and imitators immediately appeared on the market in 1926. These imitating compositions were called “Wood Fix,” “Wonder Wood,” “Fix It,” “Magic Wood,” “Dandee Wood Putty,” “Patch Wood,” “Wood Dough,” and many others. On December 24, 1928, Sheffield Bronze Powder and Stencil Company (hereinafter referred to in this opinion as the Sheffield Company of 1928), was incorporated in Ohio, and that between December 24, 1928 and January 5, 1933, the business of the company included the sale of several products including an artificial wood composition known as “Patching Wood” and the business in connection with this product amounted to about 25% of the company’s business; that on February 29, 1932, suit was filed by the plaintiff in this case against this company (Sheffield Company of 1928) in the United States District Court for the Northern District of Ohio, Eastern Division, charging infringement of the patent here in' suit, and a consent decree was entered into to the effect that the letters patent issued to Griffiths, .No. 1,838,618, were valid and the Sheffield Company of 1928 had infringed the patent and an injunction was ordered restraining the defendant, its directors, officers, and others from manufacturing or selling plastic compositions made in accordance with the invention in the Griffiths patent or from in any wise infringing the letters patent. The stock in that company was held as follows: Leon W. Diamond, president, 1 share; Mrs. Leon W. Diamond, 49 shares; Abraham Gross, secretary and treasurer, 48 shares; Mrs. Abraham Gross, 1 share; Morris Goldstein, 1 share.

On January 15, 1934, the Sheffield Company of 1928 was petitioned into bankruptcy and assent to the adjudication was signed by the said Abraham Gross, secretary and treasurer, and on February 17, 1934, the company was adjudicated a bankrupt. It was agreed that the officers of the company had done all they could to prevent this action being taken. On March 24, 1934, all the assets of the Sheffield Company of 1928, including accounts receivable were purchased by the said Abraham Gross for $45,000, and on March 29, 1934, The Sheffield Bronze Powder and Stencil Company, Inc. (the Sheffield Company of 1934), and now a defendant in this suit was incorporated and all the assets of the Sheffield Company of 1928 purchased by Abraham Gross became the property of the Sheffield Company of 1934. The entire capital stock of the Sheffield Company of 1934 is owned by Abraham Gross, his wife, and daughters.

In 1932 Pius J. Zuris, a chemical expert who testified at the trial for the defendants, testified and I find it to be the fact that he began to do some work for the Sheffield Company of 1928 on polishes. It does not appear how much work he performed. In 1934 he informed the Sheffield company of 1934, it now being in existence, that he could give them a composition that could be sold in competition with “Plastic Wood,” the product of the plaintiff, after he had been asked to work in this connection by this company. He testified that he had looked up the patents connected with this product after he had begun his work and that he did not use cellulose nitrate in his composition because it was covered by the patent, and he “wanted to make something different that would serve the purpose,” and that he started with casein and it finally simmered down to cellulose acetate.

The plaintiff maintained that the defendants were estopped from contesting the validity of the patent in suit since that matter was made res judicata as to them by the decree in the case of The A. S. Boyle Co. v. Sheffield Bronze Powder and Stencil Co. (Sheffield Company of 1928), above referred to. The adjudication in that case constitutes an estoppel by judgment binding upon the parties or their privies and all questions of law and fact distinctly put in issue and determined by the decree cannot be disputed in a subsequent suit between such parties or their privies. Warner v. Tennessee Products Corp. 6 Cir., 57 F.2d 642.

The facts show that the Siegel Company took no part and had no interest whatsoever in the suit in question. It was a stranger to those proceedings and the Court in that suit never had any jurisdiction over it. Its interests were not legally represented at the time and it could take no advantage of the decree entered. It- is well established that the estoppel to be good must be mutual. Bigelow v. Old Dominion Mining & Smelting Co., 225 U.S. Ill, 32 S.Ct. 641, 56 L.Ed. 1009, Ann.Cas. 1913E, 875. The Siegel Company has been represented by counsel in the present suit and has conducted all the proceedings in connection with it up to the time of actual trial. I cannot agree with the contention of the plaintiff in this regard. The Siegel Company has its right to a day in Court. The rule of law invoked has no application to this defendant.

As far as the Sheffield Company of 1934 is concerned there is no evidence that it is an agent, servant, or confederate of the Sheffield Company of 1928 in any way. It was not a party to the original suit and was not represented in any way. This is not a case by any means where the formation of the Sheffield Company of 1934 was “part of a fraudulent and collusive attempt by the parties in an infringement suit to avoid the injunction and to escape the result of that litigation.” It is agreed in this case that the officers of the Sheffield Company of 1928 made every effort to prevent the institution