Citations
- 273 F. Supp. 550
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. * * *.