Full opinion text
MEMORANDUM GRAVEN, Senior District Judge. 1. The plaintiffs, Old Dominion Box Company, Inc., and Dacam Corporation, are corporations organized and existing under the laws of the State of Virginia. The principal place of business of each is Lynchburg, Virginia. The defendant, Continental Can Company, Inc., is a corporation organized and existing under the laws of the State of New York. Its principal place of business is New York City, New York. The defendant, as assignee, is the owner of United States Letters Patent No. 2,986,857 issued on June 6, 1961, to H. Ganz, which patent is entitled, “MACHINE AND METHOD FOR PACKAGING ARTICLES,” and United States Letters Patent No. 2,990,997 issued on July 4, 1961, to A. J. Weiss, which patent is entitled, “PAPERBOARD CARRIER.” Those patents are referred to as the defendant’s patents. The plaintiffs brought this action under the provisions of Sections 2201 and 2202, Title 28 U.S.C.A. They seek declaratory relief with respect to the two patents referred to owned by the defendant. An actual controversy exists between the parties. There is diversity of citizenship between the plaintiffs and the defendant. The amount in controversy is in excess of $10,000.00. 2. The plaintiff, Old Dominion Box Company, Inc., is now, and for a number of years has been, engaged in the business of manufacturing and selling cartons of various types, including paperboard cartons. The plaintiff, Dacam Corporation, is now, and for a number of years has been, engaged in the business of designing packaging machinery and equipment. It has been licensing its co-plaintiff to use the packaging machines designed and patented by it. The defendant, Continental Can Company, Inc., is now, and for a number of years has been, a competitor of the plaintiff, Old Dominion Box Company, Inc., in the packaging. field. The plaintiffs allege that for some time the defendant has been asserting and claiming that the plaintiffs have been infringing its patents. The plaintiffs brought this action so that they might secure a judicial determination with respect to the validity, infringement and enforceability of those patents. The defendant filed a counterclaim. In its counterclaim it asked that its patents be held to be valid and that the plaintiffs be held to have infringed them. Because of this feature, the case was tried as a conventional patent case. 3. The issues between the parties as defined in the governing- pretrial order are as follows: (a) Are the defendant’s patents valid or invalid ? (b) If valid, have the plaintiffs infringed them? (c) Whether the defendant has been guilty of such conduct as to make its rights under the patents, or either of them, unenforceable. (d) Whether an award of attorneys’ fees should be made to either the plaintiffs or the defendant. 4. Since around 1940 there have been two developments in the packaging field relating to products merchandised in cans, bottles, and other containers which furnish the background for this litigation. During that period there was in that field an increasing demand for packages which would securely hold multiple containers and which could be easily handled and readily unpacked. The other development was that of automation. There was an increasing use of cartons and packaging machines by means of which multiple containers were rapidly and automatically packaged for distribution purposes. The patents involved in this case relate to the.cartons and packaging machines used for what is referred to as wraparound packaging. While cartons used in connection with wrap-around packaging are encompassed in the generic term of folding cartons, yet by common usage in the trade a distinction is made between wrap-around cartons a,nd folding cartons. Folding cartons are known as cartons which are fed into a machine in flat form and made into a box-like shape and then filled with containers. Wraparound cartons are known as cartons which are used in packaging operations in which the package comes into existence as it is being wrapped around the .containers. It is a one-step operation rather than a two-step operation. The wraparound system is used exclusively for the packaging of multiple containers. 5. Cartons used in connection with wrap-around packaging are, in general, made of paperboard. They are furnished in knockdown, flat form by the supplier to the packager. The carton blanks are precut to suit the particular containers to be packaged. Fold, or score, lines have been made in them where the blanks are to be folded as they are wrapped around the containers. When being wrapped, the carton is rectangular in form; has two side panels or walls; a top and a bottom wall; two overlapping enclosure panels forming either the top or bottom wall. Wrap-around cartons may have either open or closed ends. In wraparound packaging, blank cartons in flat form are fed into a packaging machine. The carton blanks are then brought into connection with the containers which are to be packaged. The machine folds the side panels of the carton around the containers and then folds the closure panels into an overlapping relationship. Finally the overlapping panels are locked into position and completely wrapped packages emerge from the machine. It is a high speed operation and from 120 up to 200 packages a minute are made. 6. Prior to 1956 a corporation known as the Robert Gair Company was active in the packaging field. In that year it merged with the defendant, Continental Can Company, Inc., and the business formerly carried on by it since has been carried on by a division of the defendant, Continental Can Company, Inc. The defendant, Continental Can Company, Inc., has been and is engaged in, among other activities, the manufacture and sale of cartons for wrap-around packaging and the leasing out of machines designed for such packaging. The Robert Gair Company, during the period of its existence, and later the defendant, Continental Can Company, Inc., used or were attempting to use a number of different wraparound systems. In some of those systems the cartons were made secure by gluing the overlapping closure panels together. In one of those systems the cartons were made secure by stapling. In another system the cartons were locked into place by so-called punch locking. In that system synchronized moving machine parts punched small tabs into matching slots in other panels. The Robert Gair Company and the Continental Can Company, Inc., used the different systems referred to. They found unsatisfactory features in connection with all of them. The system making use of glue involved messy glue pots. The glued containers required time and space for drying, which features necessitated the availability of a substantial amount of floor space. The system using stapling met with poor customer response. The successful operation of punch locking required a high degree of synchronization of numerous moving parts which gave rise to difficulties when operated at high speeds. In the wrap-around packaging field, the páekagers desire a system which is rapid in operation, which . functions without breaking or tearing the cartons, and in which there is a minimum of interruptions for repairs and realignments. The packagers and the consumers also desire a package which holds the containers securely in the carton. This feature is of special importance in the case of open end cartons. The consumers desire a package which is easy to carry. They also desire a package which can be readily opened and closed. This latter feature is of importance in the case of multiple containers because it is the frequent practice of consumers to remove only part of the containers at a time and then close the carton. 7. Arthur J. Weiss, also known as A. J. Weiss, for many years prior to its merger with the defendant, Continental Can Company, Inc., had to do with designing cartons for the Robert Gair Company. After the merger he had to do with the designing of cartons for the merged company. Starting prior to 1958, he commenced work for the merged company (hereinafter referred to as the defendant) on a design for a wraparound paperboard carton. On July 15, 1958, he filed an application for a patent on what is entitled, “PAPERBOARD CARRIER.” The application was No. 7,248,728. On July 4, 1961, United States Letters Patent No. 2,990,997 was issued to him pursuant to his application. The defendant has at all times since the issuance of that patent been the owner thereof. It is the claim of the defendant and the plaintiffs have been and are infringing Claims 1, 2 and 4 of that patent. 8. The Ganz Brothers Machine Company is a corporation which was and is engaged in the building of special machinery. Henry Ganz, also known as H. Ganz, was and is the president of that corporation. In 1956, under arrangements with the Robert Gair Company, the Ganz Brothers Machine Company commenced work on the design of a machine for wrap-around packaging. That work was continued under arrangements with the defendant after its merger with the Robert Gair Company. Pursuant to those arrangements, the Ganz Brothers Machine Company designed and built wraparound packaging machines of the punch-lock type. Difficulties were encountered in the locking of the cartons when those machines were operated at a high speed. It was then sought to design and build a packaging machine that had a locking mechanism which operated more satisfactorily than the punch-lock mechanism. A machine was then designed and built which made use of the carton of Weiss Patent No. 2,990,997 and what is referred to as a slide-lock mechanism, which was designed to effectuate the carton lock in the Weiss carton. On June 26, 1958, H. Ganz filed an application for a patent for what was entitled, “MACHINE AND METHOD FOR PACKAGING ARTICLES.” On June 6, 1961, United States Letters Patent No. 2,986,857 was issued to him. The defendant, Continental Can Company, Inc., has at all times since the issuance of that patent been the owner thereof. 9. The plaintiff, Dacam Corporation, is engaged in the business of developing machinery for the automatic packaging of cartons. It has designed and patented various machines intended for that purpose. It designed and patented, among other machines, a machine known as D-300. It licensed the plaintiff, Old Dominion Box Company, Inc., to use those machines. That latter company, in turn, sublicensed the machines. It is the claim of the defendant that the use of those machines infringes Claim 4 of its Patent No. 2,986,857 issued to H. Ganz, heretofore referred to. 10. The defendant’s wrap-around packaging system making use of the Weiss carton and the Ganz machine is known as the JAK-ET-PAK system. That system has proved to be a very good system and has had substantial commercial success. That system has not dominated the field. Wrap-around cartons with punch locks were in commercial use before the JAK-ET-PAK system and are still in such use. What is referred to as the Mead-Atlanta “Cluster-Pak”, making use of a type of punch lock, as an important factor in the industry, particularly where containers are packaged at low speeds. What is referred to as the Container Corporation’s “Bikini” system, utilizing two different kinds of glue, is also an important factor in the industry, particularly in the packaging of beer. However, it is clear that the JAK-ET-PAK system does excellent wrap-around packaging at very high speeds. In the JAK-ET-PAK system the carton is folded around the containers and then closed by locking. The parties are in agreement that the defendant’s patents for that carton and machine are based on a combination of old elements. It is the contention of the defendant that the patentable invention claimed meets the tests and requirements for a valid combination patent and that such invention is disclosed by the patents. The patentable invention claimed by the defendant is the claimed tightening of the package allegedly occurring during the locking process when a Weiss carton is used in connection with the Ganz machine. 11. In the Weiss carton there is what is described by the defendant as the primary lock. That lock consists of an opening in one of the overlapping closure panels and a latching flap or catch as a part of the other overlapping closure panel. The latching flap is made integrally with a series of catches. After the overlapping panel is moved against the top or bottom of the container, the latching flap is bent back and the catches are inserted in the matching slots. Then by rotary action the latching flap rotates or pivots. A. J. Weiss, to whom the carton patent was issued, testified at the trial. The defendant in its brief stated: “ * * * Weiss pointed out * * * that tightening of the package occurs as a result of rotary action when the latching catch of the primary lock hooks around the edge of the latch opening, creating lateral movement of the closure flaps to draw them to their position of greatest overlap. * * * ” In that connection, counsel for the defendant in his opening statement stated: “ * * * That tightening effect is the result of what we call a camming action between these catches and the slots in which they are engaged. That camming action converts the rotary motion of the flap to a lateral motion so that the overlapping panels are drawn together to their maximum position of overlap. This is what provides the tight pack, which is so essential in open end wrap-around cartons.” 12. In the Ganz machine patent, it is stated that the invention had special application to use with cartons of the type disclosed by the Weiss patent. In the matter of invention claimed by the defendant, those patents are closely intertwined. In a packaging operation making use of the JAK-ET-PAK system, the machine first folds the side panels of the carton downwardly. Then in a series of operations by means of stationary guiding bars or blades, the machine continues to fold the carton until it is rectangular in form. The machine then performs the locking of the carton. The locking operations as to the carton are performed by the locking mechanism of the machine. Those operations are performed by an arrangement of folding swords which are properly shaped and positioned for that purpose. There are no moving parts in the locking mechanism of the machine. The locking mechanism of the machine is the particular part of the machine here in issue. By means of the locking mechanism, the primary lock of the carton is locked. That lock, as heretofore noted, consisted of a latching flap and its integral catch. In the locking operation, the latching flap is positioned with its integral catch. Then by means of rotary or pivotal action, the flap is locked into its integral catch. It is the contention of the defendant that such pivotal action “provides the essential tight pack.” 13. In the Weiss carton Patent No. 2,990,997, the prior patents referred to are: 1,669,454 Close ................................ May 15, 1928 1,996,997 Inman...............................Apr. 21, 1935 2,025,201 Graham..............................Dec. 24, 1935 2,102,497 Trogman.............................Dec. 14, 1937 2,140,932 Avery ............................... Dec. 20, 1938 2,304,362 Huye ................................ Dec. 8, 1942 2,572,159 Kells.................................Oct. 23, 1951 2,786,572 Gentry .............................. Mar. 26, 1957 2,798,603 Grinspoon............................July 9, 1957 2,857,048 Johnson.............................. Oct. 21, 1958 The plaintiffs introduced into evidence on the matter of the anticipation of the Weiss patent the following in connection with the matter of prior art: Calahan 575,775 of Jan. 26, 1897 Morrison 1,104,821 of July 28, 1914 Close 1,669,454 of May 15, 1928 Graham 2,025,201 of Dec. 24, 1935 Pergande 2,060,240 of Nov. 10, 1936 Trogman 2,102,497 of Dec. 14, 1937 Avery 2,140,932 of Dec. 20, 1938 Poe 2,316,362 of April 13, 1943 Lighter 2,395,558 of Feb. 26, 1946 Crary 2,419,391 of April 22, 1947 Kells 2,572,159 of Oct. 23, 1951 Tyrseck 2,586,886 of Feb. 26, 1952 Tyrseck 2,660,361 of Nov. 24, 1953 Gentry 2,786,572 of Mar. 26, 1957 Grinspoon 2,798,603 of July 9, 1957 Gentry 2,827,165 of Mar. 18, 1958 Andre 2,911,096 of Nov. 3, 1959 Currivan 2,922,561 of Jan. 26, 1960 Stone 2,975,891 of Mar. 21, 1961 French 1,063,058 of April 29, 1954 Those included the following patents referred to in the patent: Close, No. 1,669,-454; Graham, No. 2,025,201; Trogman, No. 2,102,497; Avery, No. 2,140,932; Kells, No. 2,572,159; Gentry, No. 2,786,-572; Grinspoon, No. 2,798,603. 14. In connection with the matter of anticipation of the Weiss patent and in connection with another issue related to that patent, reference will be made to some other matters relating to that patent. The Federal Paper Board Company was and is engaged in the making of paper cartons and the packaging of those cartons. It was previously known as the Morris Paper Mills. It had in its employ Edwin L. Arneson whose position with the corporation was that of a structural design engineer. He is also referred to as E. L. Arneson. The plaintiffs contend that apart from the anticipation shown by the cartons covered by the prior art patents referred to there was direct anticipation of the Weiss carton by E. L. Arneson. On April 5, 1960, Patent No. 2,931,152 was issued to E. L. Arneson, a patent for a can packaging machine. The application for the patent was filed June 30, 1958. The machine which was the subject matter of the patent was designed by him. It was designed to be used for the packaging of paper cartons. In the patent are drawings, Figures 10 and 11, depicting what is described as a typical wrapper member which was adapted to be employed with the machine. It is the contention of the plaintiffs that the cartons depicted directly anticipate the carton which is the subject matter of the Weiss patent. Arneson first conceived the carton between May 7,1957, and June 6, 1957. The earliest date claimed by Weiss for the conception of Weiss Patent No. 2,980,997 here in suit was October 8, 1957. It is the contention of the plaintiffs that the Arneson carton embodies and portrays a carton similar to and practically identical with the carton which is the subject matter of the Weiss patent and hence directly and completely anticipated that carton. It is the contention of the defendant that Arneson, at the time of the conception of his carton and at the time of his application for and the securing of his machine Patent No. 2,931,152, had no concept of a carton blank which might produce an automatic tightening of the blanks around its contents. 15. It was heretofore noted that the application for the Weiss patent was filed on July 15, 1958. On December 24, 1959, Arneson filed an application for a patent on an improvement on a carton for cylindrical articles. On October 24, 1961, he made an amendment to his application. In the amendment he set forth claims which incorporated Claims 1, 2 and 4 of Weiss Patent No. 2,990,997 here in suit. On May 15, 1962, the Patent Office declared an interference to exist between Arneson’s application and the Weiss Patent No. 2,990,997. On October 17, 1962, Arneson filed with the Patent Office a concession of priority in favor of the Weiss patent. On October 31, 1962, the Patent Office sent the following communication to the inventor: “As required by Public Law No. 87-831, (76 Stat. 958) approved October 15, 1962, notice is hereby given the parties of the requirement of that law for filing in the Patent Office a copy of any agreement ‘in connection with or in contemplation of the termination of the interference.’ ” The statute referred to appears as subsection (c) of Section 135, Title 35 U.S. C.A., which provides that failure to file a copy of such agreement shall render permanently unenforceable any patent involved. On December 7, 1962, there was filed with the Patent Office a letter from counsel for Weiss stating that the concession of priority previously filed with the Patent Office set forth the only agreement or understanding of the parties to the interference made in connection with or in contemplation of the termination of such interference. On December 14, 1962, the Patent Office terminated the interference proceedings. On June 18, 1962, during the pendency of the interference proceedings, the defendant, Continental Can Company, Inc., and the Federal Paper Board Company entered into an agreement under provisions of which the latter company was granted a license under the Weiss patent. That agreement was not filed with the Patent Office. It is the contention of the plaintiffs that the agreement was of such a character as to require the filing of it in the Patent Office under the provisions of Section 135(c), Title 35 U.S. C.A., and that because it was not filed the defendant may not enforce any rights that it might have under the Weiss patent. The defendant controverts that contention. 16. It is the claim of the plaintiffs that Claim 4 of the Ganz patent was anticipated by certain prior patents. The prior art patents referred to in the Ganz patent are as follows: 2,751,730 Gentry ........... ................. June 26, 1956 2,809,484 Gentry............ ..................Oct. 15, 1957 2,809,486 Gentry............ ..................Oct. 15, 1957 The plaintiffs introduced into evidence as prior art patents in connection with the Ganz patent the following: Heybach 995,965 of June 20,1911 Lane 1,624,257 of April 12,1927 Pergande 2,060,240 of November 10,1936 Banta 2,305,130 of December 15, 1942 Wood 2,625,778 of January 20,1953 Monroe 2,780,900 of February 12,1957 Tobey 2,823,501 of February 18,1958 Arneson 2,931,152 of April 5,1960 Galloway 2,979,876 of April 18,1961 German 598,010 of June 4,1934 Anness 2,817,197 of December 24,1957 Arneson 2,860,461 of November 18, 1958 Murray 2,953,879 of September 27,1960 17. The carton which is the subject matter of the Weiss patent and the machine which is the subject matter of the Ganz patent are very closely related. It' is the claim of the defendant that the plaintiffs are infringing Claims 1, 2 and 4 of the Weiss patent and Claim 4 of the Ganz patent. Claims 1, 2 and 4 of the Weiss patent are as follows: “1. A wrap-around carrier having overlapping closure panels, one of the panels having a latching extension disposed beyond a transverse pivot line located within the overlap of the closure, the latching extension being formed with a catch which, when the latching extension is brought toward the other panel, is received in a latch opening in the other panel, the base of the catch being tightly aligned with the adjacent edge of the latch opening when the overlapping panels are drawn into their positions of maximum overlap, the overlapping edge of the inner one of said overlapping panels being spaced from the fold line of the other of said overlapping panels and said overlapping panels being free to be drawn together as the catch is hooked around said adjacent edge of the opening and the latching extension' is pressed against the other panel to bring the side walls of the carrier tightly against the contents of the carrier whereby the action of the catch will produce an automatic tightening of the side walls against the contents as it cams or levers the closure panels into the fully closed overlapping position. “2. A paperboard blank for forming a wrap-around carrier for cylindrical objects such as cans having chines at their ends, said blank being rectangular in form and having five transverse fold lines which define three body panels and a closure panel extending from the outer end of each of the outer body panels and a latching flap at the end of one closure panel, said closure panels being of a width such that they overlap when the carrier is in erected position, a catch in one of said closure panels and an opening in the other closure panel both of which are within the overlap when the carrier is in erected position so that the catch can be received within the opening, the transverse fold line which defines said latching flap being within the overlap of the closure panels when the carrier is in erected position, said catch extending from said latching flap across and interrupting said fold line in the closure panel so that, when the carrier is being erected and said latching flap is being folded back, the catch hooks around the edge of the opening to draw the overlapping panels together. “4. A paperboard blank for forming a wrap-around carrier for cylindrical objects such as cans having chines at their ends, said blank being rectangular in form and having transverse fold lines which define body panels and a closure panel extending from the outer end of each of the outer body panels, the outer ends of said closure panels forming the outer ends of said blank, said closure panels being of a width such that they overlap when the carrier is in erected position, one of said closure panels having a latching extension disposed along the free end of the closure panel beyond a bending axis disposed in said one closure panel, a catch in said one closure panel and an opening in the other closure panel, both of which are within the overlap when the carrier is in erected position so that the catch can be received within the opening, the bending axis being within the overlap of the closure panels when the carrier is in the erected position, said catch extending from said latching extension with its base portion substantially in line with and interrupting said bending axis, so that when the carrier is being erected and said latching extension is being folded back about said bending axis, the catch hooks around the edge of the opening to draw the overlapping panels together.” Claim 4 of the Ganz patent is as follows: “4. In a machine for applying to cans and the like arranged in rows, a wrap-around carton having closure panels one of which has a latch opening and the other of which includes a pivotal catch for engagement with said latch opening, the combination comprising means for folding the pivotal catch panel and for engaging the pivotal catch through said latch opening, and means for swinging the pivotal catch into substantially the plane of the folded closure panels.” 18. It is the contention of the plaintiffs that the Ganz patent does not particularly point out and distinctly claim the claimed invention. The plaintiffs, as to Claim 4 of the Ganz patent, in their brief state as follows: “Claim 4 does not include any tightening action. It calls for means for producing three manipulations: 1. Folding the pivotal catch relative to its associated closure panel; 2. Engaging the pivotal catch through the latch opening; and 3. Swinging the pivotal catch into substantially the plane of the folded closure panel. “Tightening action is not inherent in these manipulations, which may or may not produce a tightening action, depending upon the particular overlap relationship between the closure panels and the degree to which the pivotal catch is folded relative to its associated closure panel.” The plaintiffs contend that nowhere in the Ganz patent is the claimed invention as to the tightening particularly pointed out and distinctly claimed. They contend that because of that claimed situation the Ganz patent is invalid because of vagueness and indefiniteness as to the matter of the claimed invention. In connection with Claims 1, 2 and 4 of the Weiss patent the plaintiffs contend that those claims are invalid because they are too vagüe and indefinite. In their brief the plaintiffs state: “It is essential that the public be able to read the patent claims and determine with a reasonable degree of certainty what structures are and are not covered thereby. The claim interpretation which defendant presents, involving the question of whether or not the locking structure as actually manipulated has produced a ‘tightening effect’, makes it impossible for a competitor to determine whether his product infringes. * * * The only way one can tell is by knowing just how the carton was manipulated as it passed through the assembly machine. Anomalously, if it was manipulated as actually disclosed in the Ganz patent in suit, so that no tightening effect is produced by the locking structure, there would be no infringement. * * * ” The defendant contends that the Weiss patent is not vague and indefinite as to the matter of tightening. In that connection in its brief it states : “The disclosure of the Weiss specification makes it clear that Mr. Weiss’s objective was to design a wrap-around carton blank for simultaneously forming and filling a tight, open-ended package. * * *. <i * * * “Insofar as the issues in this case are concerned, only the ‘primary lock’ of the Weiss patent requires consideration. This primary lock consists of an opening in one of the overlapping closure panels and a latching flap and catch as part of the other overlapping closure panel. This arrangement, in a properly designed and dimensioned carton blank, provides the rotary latching action, resulting in automatic tightening of the carton against the side walls of the cans (Weiss, Tr. 219). The ‘secondary lock’ is useful for keeping the primary lock in place after it has been completed (Weiss, Tr. 220-221). «* * * “Each of claims 1, 2 and 4 in suit includes reference to this crucial tightening action. Claim 1 states that ‘the action of the catch will produce an automatic tightening of the side walls against the contents as it cams or levers the closure panels into the fully closed overlapping position.’ Claims 2 and 4 refer to ‘the catch hook[ing] around the edge of the opening to draw the overlapping panels together.’ ” The defendant contends that the Ganz patent is not vague and indefinite as to the matter of tightening. The defendant in its brief states as follows in that connection : “ * * * His [Ganz] machine was specifically designed for forming, filling, and locking wrap-around carton blanks of the Weiss patent in suit to produce multipacks. In this regard, the Ganz patent specification states (col. 1, 11. 12-23) : “ ‘My invention has special application to use with paperboard cartons of the type disclosed in the co-pending application of Arthur J. Weiss, Serial No. 748,728, filed July 15, 1958, a continuation-in-part of Serial No. 613,935, filed February 7, 1958, now abandoned. Such cartons have overlapping closure panels, one of which has a latch opening and the other of which includes a pivotal catch for engagement with such latch opening. In applying such a carton to cans, the closure panels in the completed package are locked together. The catch of one panel is inserted within the latch openings of the other panel, and is then swung so as to lock the catch.’. “Mr. Ganz testified (Tr. 629) that one of the objectives he wanted to accomplish was to design a locking mechanism which would provide a tight package. Reference is made to this objective in the Ganz patent specification as follows: “ ‘The pivotal catch must be inserted and locked so as to maintain a tight finished package.’ (col. 1, II. 39-40) “The machine of the Ganz patent, when properly adjusted, produces and maintains ‘a tight finished package’ (Ganz, Tr. 628, 633-35; Myers, Tr. 833-4; 862).” 19. The contentions and arguments of the parties referred to as to the matter of vagueness and indefiniteness require a consideration of certain statutes and decisions relating thereto. Under the provisions of Section 111, Title 35 U.S.C.A., it is provided that an application for a patent shall have a specification as prescribed by Section 112, Title 35 U.S.C.A., and a drawing as prescribed by Section 113, Title 35 U.S.C.A. Section 112, Title 35 U.S.C.A., referred to provides, in part, as follows: “The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. * * * ” It is well established that the claims of the patent constitute the measure of invention monopoly. Graver Tank & Mfg. Co. v. Linde Co. (1949), 336 U.S. 271, 69 S.Ct. 535, 93 L.Ed. 672. It is also well established that the claims of a patent are to be interpreted and read in the light of the specifications. Schriber-Schroth Co. v. Cleveland Trust Co. (1940), 311 U.S. 211, 312 U.S. 654, 61 S.Ct. 235, 85 L.Ed. 132. In the case of Graver Tank & Mfg. Co. v. Linde Co., supra, the United States Supreme Court, in discussing that portion of a statute which appears as Section 112, Title 35 U.S.C.A., requiring an inventor to separately state his claims and to particularly point out and distinctly claim what he regards as his invention, stated (p. 277 of 336 U.S. p. 538 of 69 S.Ct.) : “ * * * While vain repetition is no more to be encouraged in patents than in other documents, and claims like other statements may incorporate other matter by reference, their text must be sufficient to ‘particularly point out and distinctly claim’ an identifiable invention or discovery. * * * ” It was heretofore noted that the two patents here in question are based on a combination of old elements. In the case of Halliburton Oil Well Cementing Co. v. Walker (1946), 329 U.S. 1, 67 S.Ct. 6, 91 L.Ed. 3, there was involved a patent based on a combination of old elements. The particular issue in the case was whether the inventor had particularly pointed out and distinctly claimed what he claimed was his invention under the provisions of the statute heretofore referred to and set out. The Court stated (p. 3 of 329 U.S. p. 7 of 67 S.Ct.): “This statutory requirement of distinctness and certainty in claims is important in patent law.” The Court, after stating that the courts have viewed claims to patents based on combinations of old elements with very close scrutiny, goes on to state (p. 10 of 329 U.S. p. 11 of 67 S.Ct.): “It is quite consistent with this strict interpretation of patents for machines which combine old elements to require clear description in combination claims.” 20. In neither Claim 4 of the Ganz patent nor in any other claims therein is there any mention made of any tightening effect produced by the locking mechanism of the Ganz machine. In the specification references are made to a great many matters. Included in the references is a brief reference to the matter of maintaining a “tight finished package”. It is the finding of the Court that the Ganz patent does not particularly point out and distinctly claim the invention presently claimed as required by Section 112, Title 35 U.S.C.A. 21. The situation is not the same as to the Weiss patent. In Claim 1 of that patent the matter of “automatic tightening” is particularly pointed out and is distinctly claimed. It is the finding of the Court that the Weiss patent does particularly point out and distinctly claim the invention claimed. 22. It was heretofore noted that it was the contention of the plaintiffs that the defendant could not enforce the Weiss patent because the provisions of Section 135(c), Title 35 U.S.C.A., hereafter set out, were not complied with in regard to the matter of the filing of the agreement between the Federal Paper Board Company and the Continental Can Company, Inc., in connection with the termination of the interference proceedings between the Arneson carton and the Weiss carton. Section 135(c), requiring the filing of settlement agreements in connection with the termination of interference proceedings, was enacted on October 15, 1962, while the interference proceedings were still pending. The attorneys have cited no cases arising under that statute. In the House Committee Report relating to that enactment, which appears in United States Code and Congressional and Administrative News, 87th Congress, Second Session, 1962, pp. 3286-3289, the following appears: “PURPOSE “The purpose of this bill is to amend the patent laws to require the filing in the Patent Office of agreements settling patent interference proceedings. When two or more applicants claim substantially the same invention an interference is declared in order to determine which applicant is entitled to priority. Interference proceedings may be terminated in a manner hostile to the public interest by using patent interference settlement agreements as a means of restricting competition. To make such a practice more difficult the bill requires the filing of such agreements in the Patent Office.” In material accompanying the Report it was stated that the United States Supreme Court had, in the absence of a statute, condemned a particular private interference settlement. Precision Instrument Manufacturing Co. v. Automotive Maintenance Machinery Co. (1945), 324 U.S. 806, 65 S.Ct. 993, 89 L.Ed. 1381. In 1955 a license agreement had been entered into between Morris Paper Mills, the corporate predecessor of Federal Paper Board Company, and the Robert Gair Company, the corporate predecessor of the Continental Can Company, Inc. Various questions had arisen between the parties as to what extent the Federal Paper Board Company had rights to the JAK-ET-PAK developments of the Continental Can Company, Inc. Negotiations between the parties had extended for a considerable period of time prior to June 18, 1962. On June 18, 1962, the Federal Paper Board Company and the Continental Can Company, Inc., entered into the agreement heretofore referred to. The agreement was quite lengthy. Under it the Federal Paper Board Company secured an exclusive license for the Weiss carton and for the Ganz machine. On June 18, 1962, on the day the agreement was executed and while the interference proceedings were still pending, counsel for the defendant, Continental Can Company, Inc., wrote counsel for the Federal Paper Board Company, in part, as follows: “Obviously, the public use referred to in your letter of May 21, 1962 would constitute a bar to the allowance of any valid claims in the Arneson application which would cover the Weiss carton. However, the disclosures in the application and in patent No. 2,990,997 are not identical and possibly limited claims could be drawn which would not be generic. Whether any such claims, if obtained, would be of any value is questionable, particularly in view of the fact that the lock per se is broadly old as shown in Trogman patent No. 2,-102,497, which we note is cited in 2,-990,997. “If you feel the interests of both parties will best be served by abandoning the Arneson application, we are authorized to drop the prosecution of the same. * * It is the contention of the defendant that by the time the agreement of June 18, 1962, was entered into Federal’s patent counsel were of the view that the Arneson application could not prevail over the Weiss patent in the interference proceedings and for that reason a concession of priority was filed and that the agreement of June 18, 1962, was not an agreement in connection with or in contemplation of the termination proceedings. The agreement of June 18, 1962, contained numerous provisions covering many matters. Some of its provisions related to the Weiss patent. In those provisions Continental granted Federal an exclusive license to manufacture and sell cartons under the Weiss patent. The agreement contained no specific provision for the termination of the interference proceedings as to the Weiss patent, yet the licensing of Federal under the Weiss patent, for all practical purposes, made it improbable that the interference proceedings would or could be continued. The parties to the agreement apparently recognized that fact, for on the very day the contract was entered into counsel for Continental wrote counsel for Federal in regard to the matter of terminating the interference proceedings, which was done. Realistically, it is difficult to envision the agreement of June 18, 1962, other than as an agreement “in connection with or in contemplation of the termination of the interference.” It seems clear that at the time the agreement was signed there was in the contemplation of the parties a termination of the interference proceedings. It is the finding of the Court that the agreement of June 18, 1962, did constitute an agreement within the purview of Section 135 (c), Title 35 U.S.C.A. 23. The matter of the prior art relied on by the plaintiffs in connection with Claim 4 of the Ganz patent will next be considered. That claim is very short. For convenience in reference, it will be set out again: “4. In a machine for applying to cans and the like arranged in rows, a wrap-around carton having closure panels one of which has a latch opening and the other of which includes a pivotal catch for engagement with said latch opening, the combination comprising means for folding the pivotal catch panel and for engaging the pivotal catch through said latch opening, and means for swinging the pivotal catch into substantially the plane of the folded closure panels.” The prior art patents introduced into evidence by the plaintiffs are thirteen in number. Nine of them relate to machines for closing conventional folding cartons and four of them relate to machines for applying wrap-around cartons. The plaintiffs make special reference to Heybach Patent No. 995,965, Banta Patent No. 2,305,130, German Patent No. 598,010, Wood Patent No. 2,625,778, Monroe Patent No. 2,780,900, and Tobey Patent No. 2,823,501. It is the contention of the plaintiffs that all of those patents disclose machines adapted to close and lock folding cartons, the cartons having a closing and locking structure which includes a pivotal catch which is adapted to be folded relative to the closure panel to which it is attached, then inserted through an opening in the other overlapping closure panel, and then swung into substantially the plane of the folded closure panels, the machines in question automatically performing the described manipulation steps. The defendant contends that those patents all relate to machines having to do with folding cartons and not with wrap-around packaging as to cans arranged in rows. Three of the prior art patents — Anness Patent No. 2,817,197, Arneson Patent No. 2,860,461, and Murray Patent No. 2,953,-879 — do relate to machines designed for wrap-around packaging. The defendant contends that those machines are not pertinent because they are machines directed to the use of glue in the packaging. The plaintiffs contend that the Ganz machine was directly anticipated by Arneson Patent No. 2,931,152 of April 5,1960. About July, 1957, Arneson designed and built a carton carrier machine. It would appear that the earliest date of the conception of the Ganz machine was in October, 1957. It is the contention of the plaintiffs that Arneson’s machine corresponds to Claim 4 of the Ganz patent. The plaintiffs contend that the Arneson machine wrapped cartons around groups of cans and locked the cartons where the cartons corresponded to and had locking arrangements virtually identical with the cartons involved in the Ganz patent. Arneson filed an application for a patent on the machine designed by him on June 30, 1958, which was four days after Ganz had filed an application for a patent on his machine. It is the contention of the plaintiffs that Arneson was a prior inventor. In that connection the defendant in its brief states as follows: “In order for Arneson to qualify as a prior inventor, plaintiffs must prove: (a) That Arneson conceived the invention and reduced it to practice before Ganz did so, or (b) If plaintiffs are unable to establish the facts set forth in (a), they must establish that Arneson was diligently working toward a reduction to practice at a time just prior to October, 1957, the date on which Ganz commenced his inventive activities, and that Arneson continued to work diligently thereafter until he reduced the invention to practice.” It is the view of the Court that the plaintiffs are put to the proof of either (a) or (b). The defendant further states that the Arneson machine was a single row machine and not directed to applying wraparound cartons to “cans and the like arranged in rows” as was the Ganz machine. The plaintiffs contend that Arneson had reduced his machine to practice before Ganz conceived his machine. They also contend that the difference between a one-row machine and one directed to the applying of wrap-around cartons to cans arranged in rows is not of significance. Arneson testified that modification would have to be made to his single row machine to make it suitable for applying wrap-around carton blanks to double rows of cans as called for in the Ganz patent. He also testified that he did not know whether his machine, if so modified, would work. It was heretofore noted that Arneson did not file his application until four days after Ganz filed his application. In September, 1958, the Federal Paper Board Company caused the Arneson machine to be shipped to one T. Walter Kaestner, an outside engineering consultant relied on by it, to study and investigate the general functioning of the machine. Kaestner made trial runs on an experimental basis in which various cartons were folded into place and locked. He found that at low speeds the machine functioned very well. He experienced difficulty when he tried to fold cartons at high speeds. He was of the opinion that changes were necessary, perhaps costly in character, to make the machine operate at higher speeds in order to provide the versatility desired by the Federal Paper Board Company. In his report to Federal he suggested a number of changes which might be made in the machine to give it the versatility desired. The machine was returned by Kaestner to Federal. No changes were made in it. After its return it was in Federal’s plant in New Haven, Connecticut, and not used thereafter. The Court is of the view that the plaintiffs have not established either (a) or (b) heretofore set forth. 24. There is for consideration the question as to whether Claim 4 of the Ganz patent discloses a patentable invention over the prior art. In the preamble to the patent it is stated: “The invention relates to the packaging of cans and the like in wrap-around paperboard carriers.” In Claim 4 of the patent it is stated the machine involved is “a machine for applying to cans and the like arranged in rows, a wrap-around carton * * *.” Claim 4 then calls for a means of producing three manipulations in relation to the carton: (1) folding the pivotal catch panel relative to the associated closure panel; (2) engaging the pivotal catch through the latch opening; and (3) swinging the pivotal catch into substantially the plane of the folded closure panels. Since, as heretofore noted, the patent does not particularly point out and distinctly claim the feature of tightening, the three manipulations made by the machine in connection with wrap-around packaging are what are involved in connection with the prior art patents. Heybach Patent No. 995,965, Banta Patent No. 2,305,130, German Patent No. 598,010, Wood Patent No. 2,625,778, Monroe Patent No. 2,780,900 and Tobey Patent No. 2,823,501 all disclose machines adapted to close and lock folding cartons, the cartons having a closing and locking structure which includes, a pivotal catch which is adapted to be folded relative to the closure panel to which it is attached, then inserted through an opening in the other overlapping closure panel, and then swung into substantially the plane of the folded closure panels. The machines disclosed automatically perform the described steps. The language in Claim 4 of the Ganz patent relating to a wrap-around carton for cans “arranged in rows”, or similar language, does not appear in the prior art patents referred to. The manipulations necessary to close and lock a carton, whether it is a wrap-around or nonwrap-around operation, would seem to be very closely related. In both instances the manipulations result in tabs being inserted into openings so as to close and lock the carton containing the cans or other containers. The locking structures employed in connection with wrap-around cartons and nonwrap-around cartons are very similar in the matter of manipulalations. In view of the close relationship between the matters referred to, it would seem to be merely a matter of option and design on the part of those having ordinary skill in the art to adapt the Ganz machine to handle a wraparound carton. It would seem that Claim 4 describes in machine terms nothing more than the functions and operations required to manually manipulate and lock cartons of the wrap-around type. It is to be noted that Lane Patent No. 1,624,-257, Monroe Patent No. 2,780,900, Tobey Patent No. 2,823,501 and Wood Patent No. 2,625,778 disclose machines for folding cartons by means of stationary parts which is a feature of the Ganz machine. It was heretofore noted that Anness Patent No. 2,817,197, Arneson Patent No. 2,860,461 and Murray Patent No. 2,953,-879 all relate to machines designed for wrap-around packaging and that the defendant contends that the machines disclosed by those patents are not pertinent, among other reasons, for the reason they are directed to the use of glue in packaging. While the Ganz machine is not directed to the use of glue in packaging, in the preamble to the Ganz patent it is stated that the pivotal catch of the Weiss carton patent could be secured “after locking either by a tongue attached to the latching flap or by gluing the latching flap directly, or both.” Since the feature of tightening was not particularly pointed out and distinctly claimed in Claim 4 of the Ganz patent, it is clear that so far as patentable invention is involved the Ganz patent has to start or fall by the manipulations accomplished by means of stationary swords and guides in relation to a carton of the type set forth in the patent. It is the finding of the Court that such does not reach the level of patentable invention. 25. In the Weiss patent, different from the Ganz patent, the feature of tightening is particularly pointed out and distinctly claimed. It is clear that the heart of the claimed patentable invention is that the structure of the Weiss carton is such that a tightening effect may be achieved by means of a rotary latching action. In the specification it is stated that such rotary latching action can “if desired” produce an automatic tightening of the package as it cams or levers the closure panels into fully closed overlapping position. In the cross-examination of A. J. Weiss, certain questions were directed to him as to the matter just referred to. Some of those questions and his answers thereto were as follows: “Q * * * My question has to do with the action of the locking structure in producing the tightness. As I read that sentence it says that the rotary latching can if desired produce an automatic tightening, and I am asking you if that does not imply that the rotary-latching action can be used without producing an automatic tightening ? “A I would have to agree it does. “Q Now I ask you how can the rotary latching be used without producing a tightening action ? “A By the dimensions of it, perhaps. “Q Would you be more specific on that point? “A Well, if I foreshorten dimensions in the bottom closure panels or increase them — as the case may be— I can make a loose closure or a tight closure with the rotary-latching action.” It appears that the locking structure in the Weiss carton may or may not produce a carton-tightening action, depending upon the spatial relationship of the overlapping panels at the time that carton lock structure is pivoted. If the pivotal axis of the lock structure is positioned inwardly beyond the lock-engaged edge of the opening in which the catch is received no tightening will result, but if the pivotal axis is positioned outwardly of that edge tightening action will result. It was the testimony of witnesses for the defendant that in packaging a Weiss carton by the rotary action a % 2nd of an inch of tightening may be achieved. A. J. Weiss testified that the individual features of his locking arrangement were disclosed in the different prior art cartons. He further testified that he did not know of any wrap-around carton in which those individual features were combined as they were in his locking arrangement. The prior art patents introduced into evidence in connection with the Weiss patent by the plaintiffs were twenty in number. Eleven of those patents related to folding cartons and boxes; six to wrap-around cartons; and three related to envelope fasteners, fruit basket liners, and disintegrated pots. It is the contention of the plaintiffs that the cartons shown in Morrison Patent No. 1,104,821, Close Patent No. 1,669,454, Trogman Patent No. 2,102,497, Pergande Patent No. 2,060,240, Poe Patent No. 2,316,362, Crary Patent No. 2,-419,391, French Patent No. 1,063,058 and Kells Patent No. 2,572,159 all would exhibit a tightening effect if appropriately manipulated. Further, it is their contention that the Eobertson Paper Box and the Eay Paper Box cartons referred to would exhibit the tightening effect if appropriately manipulated. Further, it is their contention that the tightening effect is an inherent character of the prior art cartons referred to. The defendant controverts those contentions of the plaintiffs. In that connection it also asserts that the cartons referred to were closed-end cartons as contrasted with the open-end of the Weiss carton. The plaintiffs contend that whether the cartons referred to are of the open-end or closed-end type is not of significance. It is the contention of the defendant that the tightening action, if any, which might be embodied in the prior art cartons relied on by the plaintiffs occurs as an incident to accomplishing the locks thereof and serves no usual purpose and may be undesirable. It points out that in none of those patents is there any direct reference made to the matter of tightening. 26. The prior art patents relating to wrap-around cartons were directed to closed-end rather than wrap-around cartons. There appears to be nothing in the Weiss patent which excludes closed-end cartons. Both closed-end and open wraparound cartons were well known in the art prior to the Weiss patent. Both the Ray Paper Box and the Robertson Paper Box in 1951 and 1954 made and sold wrap-around cartons which appear to be somewhat similar to the Weiss carton. In the packaging of containers in those cartons the product was placed on the flat carton blank and the carton blank was then folded or wrapped around the product with the overlapping outer closure panels locked in place by means of a structure similar to that of the Weiss carton. Four of the six wrap-around prior art patents — Gentry No. 2,786,572, Gentry No. 2,827,165, Andre No. 2,911,096, and Stone No. 2,975,891 — relate to cartons held together by punch locks. One of the wrap-around patents — Grinspoon No. 2,798,603 — relates to cartons held together by tuck flaps. One of the wraparound patents — Currivan No. 2,922,561 —relates to cartons held together by glue. The six following carton prior art patents —Trogman No. 2,102,497, Morrison No. 1,104,821, Pergande No. 2,060,240, Poe No. 2,316,362, Crary No. 2,419,391 and Lighter No. 2,395,558 — teach the use of overlapping panels, matching tongues, and openings in cartons which enclose their contents on all sides. In this connection the defendant in its brief states: “These prior art patents relating to wrap-around cartons are enlightening evidence of the state of the pertinent art, and confirm the novelty and patentability of the Weiss combination. These patents demonstrate, as Weiss testified, that wrap-around cartons having the general characteristics of his carton, but with different locking arrangements, were old and well known. But, more importantly, they show a high degree of activity in the field of wrap-around carriers during the four years immediately preceding the Weiss invention, and demonstrate that before Weiss, nobody had thought of the idea of using the Weiss locking arrangement to produce a tightening action in a wrap-around carton. This remained for Weiss to invent * * 27. The patentable invention claimed is, as noted, a combination of old elements. While numerous patents involving a combination of old elements have been held invalid, yet it is possible for a combination of old elements to give rise to patentable invention. In the case of Copease Manufacturing Co. v. Cormac Photocopy Corporation (D.C.S.D.N.Y. 1965), 242 F.Supp. 993, this Court upheld the validity of a patent based on a combination of old elements. Section 103, Title 35 U.S.C.A., 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. * * In the recent cases of Graham v. John Deere Plow Co. (1966), 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545, and United States v. Adams (1966), 383 U.S. 39, 86 S.Ct. 708, 15 L.Ed.2d 572, the Supreme Court has considered and restated the principles applicable to patentability. In the case of Graham v. John Deere Plow Co., supra, the Court stated (pp. 17-18 of 383 U.S. p. 694 of 86 S.Ct.): “ * * * 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. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy. * * * ” Prior to the conception of the Weiss carton there were cartons which met and have continued to meet the needs and wants of numerous users of wrap-around cartons. However, they had not met the needs and wants of other users. In the case of the Weiss carton, by means of a rotary latching action during the packaging operation, a tightening of the completed package up to %2nd of an inch is or can be brought about. Some users desire such tightening action. 28. The tightening effect in the Weiss carton packaging produced by rotary latching action represents a moderate but nevertheless commercially worth-while advance in the field of wrap-around packaging. It is a close and troublesome question whether that advance amounted to patentable invention. That advance was made by combining certain well-known carton locking structures with a rotary latching action. It is the view of the Court that in light of all the prior art that advance was not such as to have been nonobvious to a person having ordinary skill in the art. It is the finding of the Court that at the time the Weiss patent was obtained the differences between the subject matter of that patent and the prior art were such that the subject matter of the Weiss patent as a whole would have been obvious at the time t