AVANT INCORPORATED
v.
POLAROID CORPORATION.
Civ. A. No. 72-3892-F.
United States District Court, D. Massachusetts.
June 8, 1977.*899 George E. Kersey, Annandale, N. J., for plaintiff.
Frederick L. McKnight, David L. Foster, Wilkie, Farr & Gallagher, New York City, for defendant.
OPINION
FREEDMAN, District Judge.
Pursuant to an Order of this Court dated March 29, 1976, this matter was tried without a jury on June 7 and 8, 1976, on the limited issue of validity of the patent involved herein. The parties thereafter filed extensive briefs and proposed findings of fact and conclusions of law. After careful consideration of the evidence and pertinent authorities, the Court hereinafter sets forth its findings in accordance with Rule 52(a) of the Federal Rules of Civil Procedure.
This is an action brought under 28 U.S.C. § 1338 by Avant Incorporated (Avant) against Polaroid Corporation (Polaroid) alleging infringement of United States Letters Patent No. 3,679,512 (the '512 patent),[1] issued July 25, 1972 to plaintiff as the assignee of the patentee Frederick W. Macone.
Avant is a corporation existing under the laws of the Commonwealth of Massachusetts. Defendant Polaroid is a Delaware corporation having its principal corporate offices and a regular and established place of business in the Commonwealth of Massachusetts.
Polaroid denies that it has infringed the '512 patent and counterclaims, inter alia, for a declaratory judgment that the '512 patent is invalid, under 35 U.S.C. § 102, because of anticipation of prior use, knowledge, patenting, and sale; under 35 U.S.C. § 103, because of the obviousness of the '512 invention to a skilled mechanic presumed to know the prior art; and, under 35 U.S.C. § 112, for failing distinctly to claim and adequately to describe the subject matter of the '512 patent.
The patent in suit describes a method for fabricating a laminated data card. Essentially, the method involves two outer plastic sheets which are joined by elongated spot welds. These "welds or seals couple and maintain the outer sheets in a congruent relationship," and at the same time "act as nests to receive and properly orient the *900 inner data card which may be inserted in a second or so." The essence of the claimed invention, therefore, is found in the features of the envelope which is created by the joining together of the two plastic sheets, and which is to be used in a manner to take advantage of its features. More specifically, as enumerated in Claim 1 of the '512 patent, the "coupling means" of the envelope maintain the outer sheets in a congruent face-to-face relationship with each other, permit wide separation of the coupled sheets, and are positioned with respect to the edges of the coupled sheets so as to permit proper location of an edge of a data-bearing sheet which has been inserted between the coupled sheets and abutted against the coupling means. Claim 1 further specifies that the method enables a data-bearing card to be inserted easily and rapidly between the outer sheets and, once inserted, to be gripped thereby, before the sheets and the data-bearing sheet are laminated together by the application of heat. Claim 2 of the patent in suit specifies that the coupling means is formed by heat sealing the outer plastic sheets together at widely separable portions so as to provide for accurate alignment of the edges of a data-bearing sheet in relation to the coupled outer sheets.
It is evident from a reading of the '512 patent that it does not claim or teach the use of the claimed method described above in relation to particular bonding machines, laminating materials, or variables of temperature, period of heat application, or pressure. Thus, in its determination of the validity of the patent, this Court is restricted to a consideration of the character of the envelope and the method of fabricating the laminated data card as described in the patent itself.
In order to save time at trial, the Court ordered that, following trial, the parties submit (1) any objections they might have to placing in evidence exhibits that had not been so admitted during trial, and (2) designations and counter-designations of deposition testimony to be included in the record of the case. In their efforts to comply with the Court's wishes, the parties filed, among other things, such objections and designations as were requested and, in doing so, also partook in a protracted written argument as to the propriety of each other's submissions. Because these objections and designations go directly to what the Court is to consider in its determination of the issues in this case, it is appropriate to deal with them now.
The Court admits as part of the record all the portions of deposition testimony that both plaintiff and defendant designated to the Court following trial. This includes all portions designated by Avant in its filing with this Court dated July 7, 1976, and all those designated by Polaroid in its filings dated June 17, 1976, and July 23, 1976.
The Court has considered all the exhibits presented at the time of trial, and the objections, if any, to their being admitted into evidence. The determination as to each of them is expressed in Appendix A to this opinion.
In addition to filing the above-mentioned objections and designations, Avant submitted to the Court designations for the record of various stipulations it claimed had been entered into with Polaroid prior to trial and designations of Rule 36 admissions that it claimed have been made by defendant. It is the Court's feeling that at the conclusion of the trial concerned herein, both sides rested their case, subject only to the submission of the objections, designations, and counter-designations already discussed. Had Avant wished to place into evidence such stipulations and admissions, it should have done so during the presentation of its case before it rested. Those designations are therefore disallowed.[2]
*901 The Patent Act of 1952 specifically sets forth the conditions of patentability in three sections. Codified as sections 101, 102, and 103 of Title 35, they make it clear that patentability is dependent upon three conditions: novelty, utility, and non-obviousness. Because by the nature of the language of sections 102 and 103, both involved in the instant case, a defense based upon section 103 is broader than one which relies upon section 102, it would seem appropriate to begin with a discussion of section 103.
35 U.S.C. § 103 provides:
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
As stated by the Supreme Court in Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966),
[w]hile the ultimate question of patent validity is one of law, A. & P. Tea Co. v. Supermarket Corp. [340 U.S. 147, 71 S.Ct. 127, 95 L.Ed. 162] at 155 [71 S.Ct. [127] at 131], the § 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined.
Id. at 17, 86 S.Ct. at 694. Thus, as made clear by the above language, in a determination of patentability of the invention involved in the present case, as regards section 103, the background of that invention and the prior art in the field of data card lamination must be considered.
In the field of data card lamination, three general types of devices have served as providers of heat in the bonding process: the platen press, the roll laminator, and the chip bonder. Although the '512 patent does not concern or specifically refer to any particular type of laminator, an overview of the above devices is helpful in understanding a discussion of the types of bonding systems and envelopes that were used in the laminating field prior to the issuance of that patent. The platen press, as described at trial by Roger J. Kuhns, president of Avant, came into being around 1930. It consisted of two parallel plates which were heated and which laminated a sandwich of two sheets of thermal setting plastic and an insert by a process of heat, fusion, and cooling while under pressure. The roll laminator was apparently introduced into the trade in the mid-1950's and, according to Kuhns, proved to be more successful than the platen press because of its relative speed in laminating. This newer type of laminator also employed heat in its laminating process, but, unlike the platen press, made use of continuous rolls of plastic that were fed through the device and could at appropriate times have inserts placed between them so that, following the heating process, the type of sandwich already discussed was produced. The chip bonder, the most recent device of the three, came into use in the mid-1960's. This type of laminator was designed to receive an insert and an envelope of predetermined size (a "chip"). It achieved commercial success, due primarily to its speed in bonding relative to the earlier types of machines.
As briefly described above, in platen lamination, a data card is inserted between oversized sheets of plastic and heated in the press. Early platen laminations were produced by the use of separate sheets of plastic. The platen method was effective in producing laminated cards, but was not without its problems. Besides being slow and cumbersome, the original method of *902 using separate outer sheets could lead to operator error, since opposite faces of those sheets were heat sensitive adhesive and non-adhesive. If placed into the press so that the adhesive face was improperly facing away from instead of toward the insert being laminated, the finished product was not successfully laminated and the press was subjected to the messy excess flow of adhesive material. To avoid this type of error, the outer plastic sheets were eventually tacked together so that the sides with the heat sensitive adhesives always faced the proper direction. The result was a bag-like pouch into which an insert was placed prior to lamination.[3] Although these bag pouches apparently eliminated the operator error associated with the use of separate outer sheets, the platen method remained slow and the cards laminated in the platen press, depending upon their desired size and intended use, often needed to be trimmed of excess plastic.
Because the roll lamination method proved to be faster, the platen press became for the most part obsolete and was largely superseded by the roll laminator around 1960. Nevertheless, the latter type of machine, while faster than the platen press, had disadvantages common to the platen method waste of plastic material and the frequent need for post-lamination trimming.
Another approach to data card lamination was taken in a 1964 patent application filed by Donald N. Decof. As taught by the Decof patent, U.S. Patent No. 3,388,661, a pouch of predetermined size was made with three sides closed and one side (the minor dimension edge) open. Face-to-face heat lamination was not employed. Rather, after a data card had been inserted, the fourth side of the pouch was sealed and embossed with a distinctive raised pattern which would usually identify the organization using the identification card. Thus the card, not bonded to the pouch itself, "floated" within. Briefly, the Decof patent claimed a card receptacle as described above in which the sealed area defined a pocket utilized to position an identification sheet and which served as a tamperproof, counterfeit deterrent identification device.
It was in the mid-1960's that the patent in suit was conceived and eventually reduced to practice. According to Avant, the '512 patent was the result of its efforts to create a method for producing laminated data cards that would provide security, minimize waste of plastic, reduce labor time, and eliminate costs of post lamination trimming devices.
About the same time that Avant conceived and put into practice the envelope which was the subject of the '512 patent, Polaroid began to produce an envelope named the Polapouch. That pouch had a construction similar to that of the Decof pouch. As in the method taught by the Decof pouch, a data card was placed in the Polapouch, and then a fourth edge was sealed, leaving the insert to float within. Several years later, about 1969, Polaroid produced another type of laminate envelope referred to as a dual bond. The dual bond laminate made use of pressure sensitive adhesive and was the subject of a patent filed by Robert A. McVoy and Ronald R. O'Connor in 1972 (U.S. Patent No. 3,827,726) and apparently fashioned after the teachings of a patent filed by Lyman D. Dunn in 1966 (U.S. Patent No. 3,505,140). The significance of the Dunn patent to this case will be discussed later.[4]
It was in the early 1970's that Polaroid began to produce the types of laminate envelopes that are the two accused structures in this case: the Polaseal envelope, introduced about 1971, and the Polapress envelope. The latter was the subject of U.S. Patent No. 3,495,501 filed in 1973 by *903 Paul A. Andrews and Richard M. Raia and assigned by them to Polaroid.
The starting point in consideration of any challenge to the validity of a patent is the language found in 35 U.S.C. § 282. That section, at the time of commencement of this suit, provided that "[a] patent shall be presumed valid. The burden of establishing invalidity of a patent shall rest on a party asserting it." Although the above presumption does exist it is clear from the case law that it is by no means conclusive and can be overcome by the party asserting the invalidity. See, e. g., Westinghouse Electric & Manufacturing Co. v. Formica Insulation Co., 266 U.S. 342, 348, 45 S.Ct. 117, 69 L.Ed. 316 (1924). To go one step further, it has been settled in this circuit that "[t]he presumption, at least where a combination patent claim is involved, is not a heavy one to begin with." Futorian Manufacturing Corp. v. Dual Manufacturing & Engineering, Inc., 528 F.2d 941, 943 (1st Cir. 1976); Lawrence Rigging, Inc. v. Airtek Corp., 182 USPQ 375 (D.Mass.1974). I believe that the patent alleged in this case to have been infringed is such a combination patent. Based on the reasoning set forth in the pertinent cases, and from a review of the evidence in this case, I find that the presumption of validity of the '512 patent is dissipated.
Looking specifically to the patent in suit, it is apparent from the record that Avant contends that that patent was not anticipated in the prior art by virtue of the fact that it claims certain distinctive elements. Those elements essentially are as follows:
(1) congruent outer plastic sheets;
(2) maintenance of congruency, which is attained by accurately positioned heat seals (coupling means);
(3) ability of the outer sheets to be widely separate ("butterflying");
(4) accurate initial registration (alignment) of an insert by positioning it against the coupling means;
(5) snapping back of outer sheets after insertion to grip the insert and prevent slipping (maintain alignment) prior to lamination;
(6) heat activated face-to-face lamination; and
(7) elimination of post-lamination trimming.
I find that the '512 patent is invalid under 35 U.S.C. § 103 because the subject matter of that patent when taken as a whole was obvious at the time the invention was made to a person having ordinary skill in the art to which that subject matter pertains. As I will elaborate below, I feel that the subject of the '512 patent is but a combination of elements found in the prior art. Although a patent which brings together such elements may be valid, to be so it must represent a synergy, resulting from their union. Thus, as the established test for combination patents states, "[t]he conjunction or concert of known elements must contribute something; only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable." Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 130, 95 L.Ed. 162 (1950). See Forbro Design Corp. v. Raytheon Co., 390 F.Supp. 794, 801 (D.Mass.1975), aff'd, 532 F.2d 758 (1st Cir. 1976). A review of the '512 patent, the prior art, and the evidence before this Court leads me to conclude that each of the elements claimed in the patent in suit was present in the prior art either independently or in combination and that their use in that patent have created nothing so new or unusual that it could be patentable. To avoid uncertainty as to how this conclusion is reached, each of those elements should be dealt with individually.
It is plain from a reading of the '512 patent that it claims the use of congruent outer plastic sheets, those sheets being held together by the coupling means (heat seals or welds). The use of the phrase "congruent face-to-face relationship" in Claim 1 of the patent is taken by this Court to mean that the outer edges of the plastic sheets coincide. The patent does not, however, place any significance on congruency. From testimony presented at trial, it appears as if Avant's assertion is that congruence *904 of the plastic sheets relates to the advantage of avoiding post-lamination trimming or die cutting. Such a relationship is nonetheless not expressed in the '512 patent. In addition, I would agree with Polaroid in its argument that avoidance of post-lamination die cutting is not the necessary and inevitable result of congruency. The significance of the congruent relationship is also left unclear when it is realized that the patent in suit does not specify tolerances relating to congruency that would be allowable in the practicing of the patent. It would seem that such tolerances would be necessary in production of the types of envelopes that are the subject of the patent in suit. In any event, the Court can find in the '512 patent no significance attached to congruency other than its possible relationship to elimination of post-lamination die cutting, which will be dealt with in more detail later in the Court's findings. Furthermore, I do not find that congruency, in and of itself, is an element unique to the method taught in the '512 patent. An examination of envelopes or pouches used with the platen press, as well as other types of envelopes in the prior art which have been presented as exhibits in this case, reveals outer sheets held together in relationships that, taking reasonable tolerances into account, can be considered congruent.
The use of heat seals or welds as a coupling means for holding together plastic sheets prior to lamination is certainly nothing new in the prior art. Indeed, there is no question that this type of coupling means was employed in the fabrication of the early platen pouches. Avant, however, argues not only that the positioning of the coupling means in the prior art was not as precise as in the envelope which is the subject of the '512 patent, but also that a significant use of these welds as taught in the '512 patent was previously unanticipated. What Avant alludes to is the use of the seals as an abutment against which an insert can be placed so as to achieve accurate initial registration prior to lamination. A reading of the Dunn prior art patent, however, indicates that the above elements of the '512 patent were indeed already present in the prior art.[5] Dunn teaches use of . . adhesive sheets that "may have a small portion which adheres to each other . . to provide a hinge means or a means normally holding the two sheets . . . directly together." That patent goes on to specify that "the line of adhesion provides an edge . . . against which the card or sheet-like article to be laminated may be initially abutted, if desired, to facilitate initial registration thereof." It could be argued that the envelope in Dunn differs from that taught by the '512 patent in that the coupling means used in Dunn is an adhesive rather than heat seals or welds, and is a continuous edge rather than a number of tackings. Nevertheless, the important fact is that Dunn teaches the use of a hinge or coupling means along one of the four edges of an envelope against which an insert can be accurately aligned.[6]
Many of the elements which Avant asserts are unique to the '512 patent are in fact present in the types of envelopes, or half pouches, used with platen presses prior to the filing of the patent in suit. Such a half pouch, as exemplified by exhibit P2N, is an envelope of essentially congruent plastic sheets which have been joined along one of four edges by heat seals. These outer sheets may, as in the case of the type of envelope taught by the '512 patent, be widely opened ("butterflied") so that an insert may be placed between them. Such an insert can be abutted against the seals for initial registration prior to lamination. That such a practice was done on occasion in the past is reflected by the record in this case. Avant points out that the operating instructions for a platen press placed in *905 evidence at trial as exhibit P2 instruct the user to locate centrally any insert within the plastic sheets, thus implying that such an insert should be kept away from the seals. However, although the seals in the platen pouches may not always have been as precisely produced as those found in the '512 patent envelopes are asserted to be, and may not have been originally intended as something against which to abut an insert, one cannot ignore the fact that the practice of using the seals as an abutment was not unknown or unpracticed. In addition, as inspection of platen pouches introduced as exhibits at trial will reveal, once an insert has been placed against the seals, the outer sheets close in a manner sufficient to grip the insert. A final characteristic of the platen envelope is that, following lamination, it can be left untrimmed, depending upon its intended use. Granted, such pouches were in the past often trimmed or die cut. But the avoidance of this post-lamination process is something not unknown to users of the platen press. The record reveals not only that there were situations in which a post-lamination platen pouch would go untrimmed, but also that it was not an uncommon practice for pouches to be pre-cut in halves or quarters to facilitate the lamination of cards of varying dimensions.
Nowhere does the '512 patent either claim or refer to the elimination of post-lamination trimming or die cutting. Although Avant apparently is arguing that the elimination of such procedures is inherent in the '512 patent, I do not find that that is the result that necessarily would follow from practicing the patent's method. In any event, this Court does not feel that the avoidance of post-lamination cutting or trimming was unknown in the prior art. As has already been mentioned, envelopes used with the platen press were at times left untrimmed or die cut after lamination, depending upon intended use or the whim of the individual for whom the laminate was produced.
Regarding the avoidance of post-lamination trimming or cutting in the prior art, I would also refer once again to the Dunn patent. The drawings found in that patent clearly depict an envelope of predetermined dimensions. A reading of Dunn reveals passages which certainly suggest the fabrication of an envelope which avoids post-lamination trimming or cutting. At one point Dunn states that "[p]eripheral positions of the finished lamination assembly may be trimmed by individual user," suggesting that the finished product need only be cut or trimmed to make it more suitable to the user's liking. More specifically, it can be argued that Dunn teaches pre-lamination cutting by the fact that it provides the following:
The lamination unit of this invention may be made in several sizes so as to fit small card-like articles, large stationery-size articles, or several other sheet sizes. Therefore, unlike the case with laminating mechanisms, the size of the sheet which may be laminated is relatively unlimited, merely based upon the sizes in which the units are made.
Thus, as reflected in the above discussion, this Court is of the opinion that the elements asserted to be unique to the '512 patent can be found in the prior art, merely by examining the Dunn patent and the pouches used with the platen press. I cannot say after consideration of the entire record that those elements have been used in the '512 patent in a new or unusual manner. I find that because the subject matter of the '512 patent was obvious to those skilled in the art when the patent was originally filed, the patent in suit herein is invalid under 35 U.S.C. § 103.
Polaroid also argues that the patent in suit is invalid under subsections (a), (b), (e), and (g) of section 102. Thus, that section reads in pertinent part:
A person shall be entitled to a patent unless
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on *906 sale in this country, more than one year prior to the date of the application for patent in the United States, or
* * * * * *
(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or
* * * * * *
(g) before the applicant's invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
I cannot agree with Polaroid in its argument as to section 102. While the elements of the '512 patent were already present in the art, I do not feel they are all sufficiently embodied by any single prior patent or structure, including the Dunn patent and the platen pouches. The '512 patent cannot therefore be invalidated under section 102.
Finally, Polaroid argues that the '512 patent is invalid under 35 U.S.C. § 112 in that it fails distinctly to claim and adequately to describe its subject matter. I find no merit in this assertion. The '512 patent sufficiently meets the requirements set forth in section 112.
In view of the foregoing opinion that the patent in suit is invalid under 35 U.S.C. § 103, judgment is to be entered for the defendant on the claim of infringement.
APPENDIX A
PLAINTIFF'S EXHIBITS
P1 Series of Exhibits (P1A through P1F)
Excluded at time of trialP2 Series of Exhibits
P2 admitted into evidence P2A received in evidence at time of trial P2B through P2L admitted in evidence P2M and P2N received in evidence at time of trial P2O and P2P admitted into evidenceP3 Series of Exhibits (P3A through P3E)
Admitted into evidenceP4 Admitted into evidence
P5 Series of Exhibits
P5, P5A through P5C admitted into evidence P5D and P5E admitted into evidence. The documents which comprise these two exhibits are to be considered individually.P6 Admitted into evidence
P7 Series of Exhibits (P7A through P7C)
Admitted into evidence*907 P8 Series of Exhibits (P8, P8A through P8K)
Admitted into evidenceP9 Series of Exhibits (P9A through P9C)
P9A and P9B received in evidence at time of trial P9C admitted into evidenceP10 Series of Exhibits (P10A through P10E)
P10A through P10C received in evidence at time of trial P10D admitted into evidence. The documents which comprise this exhibit are to be considered individually. P10E received in evidence at time of trial for limited purpose of showing that it is a patent on improvement on the Macone invention.P11 Series of Exhibits (P11A through P11C)
Received in evidence at time of trialP12 Series of Exhibits (P12, P12A through P12E)
P12, P12A through P12D received in evidence at time of trial P12E admitted into evidence. This exhibit is a marked-up copy of the patent in suit. The notations and underscoring found thereon will be ignored by the Court and the exhibit is being admitted only for examination of the patent's content.P13 Admitted into evidence
P14 Admitted into evidence
P15 Excluded
P15A Excluded
DEFENDANT'S EXHIBITS
D101 through D103 Received in evidence at time of trial.
D104 For identification only. Not offered into evidence.
D105 Admitted into evidence.
D38 Admitted into evidence. D39A " " " D57A (p. 155) " " " D57A (p. 167) " " " D57C " " " D63 " " " D59 " " " D65 " " " D15 " " " D30 " " " D69A " " "
Appendix B to follow.
*908 APPENDIX B
*909
*910
*911
*912
*913
*914
NOTES
[1] The '512 patent has been reproduced in Appendix B to this opinion.
[2] Because the stipulations and Rule 36 Admissions which Avant submitted have been excluded from the record, the Court does not reach a decision as to their validity. I would comment, however, that Polaroid raises serious question as to whether the pretrial stipulations Avant wished to designate were actually agreed upon and whether all the requests for admissions could be deemed admitted under the given circumstances.
[3] Whether there was any significance to such tack welds other than to prevent such operator error in placement of the sheets is a matter with which the parties are in disagreement. That issue will be discussed later.
[4] Because the Dunn patent is referred to a number of times in this opinion, it has been reproduced in Appendix B following a reproduction of the patent in suit.
[5] The Dunn patent application was filed April 20, 1966, and is dated April 7, 1970. The '512 patent application was filed April 19, 1967, and is dated July 25, 1972.
[6] An examination of the diagrams found in the Dunn patent also appears to indicate a congruent relationship between the outer sheets, as well as the ability of those sheets to be widely separated to receive an insert.