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 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 main tained 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 10 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 eleventh and twelfth 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 eleventh and twelfth 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 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.