Cataphote Corporation v. Desoto Chemical Coatings, Inc.

Cataphote Corporation (Cataphote), DeSoto Chemical Coatings, Inc. (DeSoto), and Perma-Line Manufacturing Corporation of America (Perma-Line) manufacture and sell thermoplastic pavement-marking compositions used principally for highway traffic lane markings. In 1962, Cataphote sued DeSoto, alleging infringement of Cataphote’s patent for a thermoplastic composition (the Poole patent). DeSoto counterclaimed, alleging that Cataphote unilaterally and in concert with Perma-Line, a licensee under the Poole patent, violated Sherman Act §§ 1 and 2, 15 U.S.C. §§ 1 and 2.

The District Court separated the issues, stayed the counterclaim, and without a jury tried the patent infringement claim, holding for DeSoto on the ground that the Poole patent was invalid because it had been placed in public use and sale more than one year prior to the patent application, 235 F.Supp. 936 (N.D.Cal. 1964). We affirmed. 356 F.2d 24 (9th Cir. 1966) (Cataphote I).

After trial, again without a jury, on the antitrust counterclaim, the District Court entered judgment for Cataphote and Perma-Line, holding that (1) Cata-phote did not knowingly and willfully misrepresent to the Patent Office that the invention…