U. S. Chemical Corporation and U. S. Plastic Products Corporation, Appellants, v. Plastic Glass Corporation, 243 F.2d 892 (3d Cir. 1957)

U. S. Chemical Corporation, the owner of United States Patent No. 2,668,328, and U. S. Plastic Products Corporation, the exclusive licensee under the patent, sued Plastic Glass Corporation alleging infringement.¹  Plastic Glass Corporation filed an answer and counterclaims alleging among other defenses that the patent was invalid because of prior public use and sale. The court below held the patent invalid basing its ruling solely on a finding of public use and sale for more than one year prior to the date of the application for the patent. 35 U.S.C. § 102(b). See 1956, 142 F. Supp. 840.² 

The patent claims a process for casting patterned plastic sheets. It is described fully in the findings of fact of the court below, 142 F. Supp. at pages 840-841, and need not be more particularly set out here. It was conceded at the trial that on 52 different occasions, beginning November 2, 1951 and ending on April 7, 1952, the application for the patent having been filed on April 8, 1953, U. S. Plastic Products Corporation, employing the inventor, Porter, sold and delivered to three manufacturing concerns, Handbag Metal Specialties, Inc., Jewel Plastic Company and Rialto Button & Wood Products, all of New York City, 665 patterned plastic sheets made in accordance with the teaching of the patent at a price in excess of $15,000. The plaintiffs maintain this use of the patent and sale of the product created by its process was merely experimental to determine the "production controls" necessary for the successful commercial exploitation of the patent and was within the rule laid down by the Supreme Court in Elizabeth v. Pavement Company, 1877, 97 U.S. 126, 134-135, 24 L. Ed. 1000. The defendant contends that the use of the process and the sale of the product was a public use and sale, relying on the decision of the Circuit Court of Appeals for the Second Circuit in Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co., 1946, 153 F.2d 516, certiorari denied 328 U.S. 840, 66 S. Ct. 1016, 90 L. Ed. 1615, overruling Peerless Roll Leaf Co. v. H. Griffin & Sons, 2 Cir., 1926, 29 F.2d 646.

The issue is what is a public use or sale within the purview of the statute. This question was cogently discussed by Judge Learned Hand in the Metallizing Engineering Co. case, supra. We can add little of value to what Judge Hand said in the cited decision. We are in accord with what he stated. We sum up the application of the principle to the case at bar by saying that where, as here a patentee has used the process of a patent to create a product which has been sold on the market more than one year prior to the patent application, such use of the process and sales constitute "prior use" within the meaning of Section 102(b), 35 U.S.C. We are of the opinion that the patentee cannot avoid the impact of the statute by asserting that the sales were experimental to determine "production controls", at least under the circumstances at bar. We cannot but conclude that the application of such a theory here would lead to an unwarranted extension of the patent monopoly.

Other points raised by the parties do not require consideration in view of our decision.

The judgment of the court below will be affirmed.