Westinghouse Elec. & Mfg. Co. v. Formica Ins. Co.
266 U.S. 342 (1924)

Annotate this Case

U.S. Supreme Court

Westinghouse Elec. & Mfg. Co. v. Formica Ins. Co., 266 U.S. 342 (1924)

Westinghouse Electric & Manufacturing Company v.

Formica Insulating Company

No. 102

Argued October 22, 23, 1924.

Decided December 8, 1924

266 U.S. 342

Syllabus

1. An assignment of a patent, or of the invention upon which a patent is subsequently granted to the assignee, though not required to be under seal, works an estoppel as by deed, preventing the assignor from denying the novelty and utility of the patented invention when sued by the assignee for infringement. P. 266 U. S. 348.

2. This estoppel, however, distinct from any that might arise in pais from special representation, while it estops the assignor from denying the validity of the claims, does not prevent him from narrowing or qualifying their construction by showing the state of the art. Pp. 266 U. S. 350-352.

3. The estoppel is applicable to claims added by an assignee and allowed by the Patent Office after the assignment which were foreshadowed by the specifications sworn to by the assignor and accompanying his application. P. 266 U. S. 353.

4. But it will not be enlarged by a claim originally made by the assignor but so manifestly invalid that it was promptly rejected by the Patent Office as embracing the prior art. P. 266 U. S. 354.

5. Patent No. 1,284,432, issued to the plaintiff as assignee of O'Conor, covering a process of making composite electric insulation materials by coating sheets of fibrous material, such as cardboard, with adhesive binders and subjecting them to heat and pressure, applies, as between assignor and assignee, to non-planiform articles (Claims 11 and 12, added after assignment), but only where the "two-step" procedure -- viz., application of heat and high pressure to the superposed sheets and cooling them, and then the baking of them under lower pressure -- is employed in the manufacture. P. 266 U. S. 353.

288 F. 330 affirmed.

This is a writ of certiorari to the Circuit Court of Appeals for the Sixth Circuit in a patent suit. The Westinghouse Electric Company sued the Formica Company

Page 266 U. S. 343

charging it with infringement of Claims 11 and 12 of Patent No. 1,284,432, issued November 12, 1918, to the complainant as assignee, on an application of O'Conor filed February 1, 1913. The patent covered a process for making composite electric insulation materials using paper, muslin, or other fibrous material. The fabric was to be coated on one side with an adhesive liquid, such as bakelite, a condensation product of phenol and formaldehyde. It was then dried by passing it over a series of rollers in a steam-heated oven. The thickness of the coating retained by the paper was regulated by varying the distance between the two rollers and by altering the viscosity of the liquid. The prepared paper was cut into sheets of any desired size, and a plate built up to the required thickness by placing the sheets together, with the untreated side of each sheet next to the treated side of the adjacent sheet. The built-up plate was then placed between thin sheet steel plates on which had been rubbed a small amount of machine oil. Any desired number of the steel plates carrying the sheets of paper were placed between the platens of a hydraulic press which had been previously heated by steam. The press was closed, and pressure applied to as much as 800 pounds per square inch. Steam heat was first applied, and then a cooling period followed. The period of pressure and heat was varied in proportion to the thickness of the plate according to a table set forth. The effect was firmly to cement together the sheets of paper, and further to impregnate the paper with the bakelite. Thus, the plate was transformed into a hard and compact mass. After cooling, the plates of insulation were removed from the press and clamped between steel plates to prevent warping during the baking. The plates were then placed in ovens, with an air pressure of 140 pounds per square inch and the temperature regulated between 100 and 140 degrees centigrade. These conditions were maintained

Page 266 U. S. 344

for approximately eight hours, when the plates were removed from the oven and the finished product allowed to cool. The specifications further said that, while the process was used for plates, the material could be similarly produced in the form of channel pieces or tubes that were cylindrical or rectangular in cross-section or of other shape, as desired, by pressing in forms of the proper shape. The resultant material had a specific gravity of approximately 1.25, was practically nonabsorbent, even when soaked in hot water, and was insoluble.

The first ten claims subsequently allowed in the patent referred to the so-called "two-step" process -- namely, first, the application of heat and pressure to the superposed sheets and cooling them, and, second the baking of them under a lower pressure.

The 11th and 12th claims, however, were as follows:

"11. The process of manufacturing a nonplaniform article which consists in superposing a plurality of layers of fibrous material associated with an adhesive substance that is adapted to harden under the influence of heat and pressure into a substantially infusible and insoluble condition, and molding the superposed layers by means of a form of the proper shape while applying pressure and heat to compact and harden the materials."

"12. The process of manufacturing a nonplaniform article which consists in superposing a plurality of layers of fibrous material associated with a phenolic condensation product and molding the superposed layers by means of a form of the proper shape while applying pressure and heat to compact and harden the materials."

It will be observed that there is no express provision or requirement in the 11th and 12th claims for the "two-step" process as an element. The defendants do not use the two-step process, but do make nonplaniform articles.

The defenses were that the two claims were invalid for want of novelty, or, if valid, must be limited to the

Page 266 U. S. 345

two-step process. A second defense was that complainant had been guilty of laches estopping it from prosecuting the action, in that it had known of the defendant's manufacture of its composition and its large investment in the business without objection for four years before the claims Nos. 11 and 12 were secured by the defendant as assignee from the Patent Office, and did not sue for three years thereafter.

In reply, the plaintiff urged that the defendant, being in privity with O'Conor in the assignment and the infringement, was estopped to dispute the validity of the 11th and 12th claims construed according to the ordinary meaning of their language, which, as it contended, did not require the two-step process.

The district court sustained the defense based on complainant's laches, and dismissed the bill.

On appeal, the circuit court of appeals held that the defense of laches could not be sustained. Coming to consider the defense of estoppel, the court held that, on the facts, no estoppel arose as to the claims sued on, and proceeding then to the merits found that Claims 11 and 12 were invalid for lack of invention.

O'Conor was a mechanical engineer, and, after graduation from college, entered the employ of the Westinghouse Company at a small salary, with the understanding that he was to be allowed to work in association with experienced engineers and gain experience in the line of his profession, and that inventions made by him when in the company's employ were to become the property of the company and to be assigned by him to it. O'Conor made this invention and disclosed it by written description to the company, which, through its legal department, prepared his application for a patent and an assignment, both of which he executed, receiving the nominal consideration of one dollar. Thereafter, pending the application

Page 266 U. S. 346

for the patent, O'Conor left the company's employ and associated himself in business with two others in the manufacture of electric insulating material in a partnership, which was thereafter organized into a corporation known as the Formica Company, and its stock divided between the partners. From 1913, the partnership and succeeding company have been engaged in the manufacture and sale of laminated products having a phenolic condensation binder. They have made nonplaniform articles, as well as flat plates, openly and with the knowledge and acquiescence of the Westinghouse Company from the beginning in 1913 down to the time this suit was brought, July 6, 1920.

When the application for the patent here in suit was filed and was assigned to the company, there were no claims based on a distinction between flat plates and nonplaniform articles. But the specifications signed by O'Conor contained the following:

"While the process above described is that used for making plates, the insulating material may be produced in the form of channel pieces or tubes that are cylindrical or rectangular in cross-section, or of other shape as desired, by pressing in forms of proper shape."

The art of making insulating material was well advanced when O'Conor entered it. A Haefely patent, owned by the Westinghouse Company when O'Conor began his experiments, was for a process for making a hard material offering resistance to the electric current out of paper covered with varnish, wound around a mandrel and subjected to pressure and heat. The art also showed a forming press by Haefely for pressure of flat articles for such a purpose. There was a process patent to Thomson for making insulating material by applying to paper sheets an earthy or mineral substance with binding material, piling such sheets together and drying and heating the resulting mass. Baekeland had

Page 266 U. S. 347

invented much in this art, and all before O'Conor. One of his discoveries was that of the "bakelite" which O'Conor suggests using in his process -- a combination of phenol and formaldehyde, a viscous fluid resisting the electric current and attaining great hardness under heat and pressure -- for use as a binder. Another patent of Baekeland was for

"a composite cardboard consisting of superposed layers of paper or the like combined with intermediate layers of an insoluble, infusible condensation product of phenols and formaldehyde,"

in which he described his process as follows:

"I apply to the surface of any of the ordinary grades of paper, or to asbestos paper, or the like a coating of a liquid condensation product of phenols and formaldehyde of such character that it is capable of transformation under the action of heat into an insoluble and infusible body. For this purpose, I may use either a liquid condensation product of the character described or a solution of the same in alcohol or other appropriate solvent. This layer is permitted to dry somewhat, when a second sheet of paper is superposed upon the first and similarly treated, or the several layers may be coated and preferably dried before being superposed. The condensation product may be applied to one or both sides of the sheets. The desired number of sheets having been assembled, the composite article is compacted by pressure, with or without the aid of heat. Heat is now applied in order to effect the transformation of the condensation product into an insoluble and infusible body. "

Page 266 U. S. 348

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