Package Devices, Inc. v. Sun Ray Drug Co. (301 F. Supp. 768, 1969)

OPINION AND ORDER

FULLAM, District Judge.

This is a consolidated action for infringement of United States letters of patent number 2,620,938 (hereinafter ’938). Defendants seek a declaration of invalidity and non-infringement. Pursuant to Rule 42(b) of Fed.R.Civ.P., the issues of liability for infringement and damages have been separated. Upon review of the trial record, and consideration of the proposed findings of fact and conclusions of law, the Court makes the following:

FINDINGS OF FACT

1. The ’938 patent was originally issued to Mr. Charles Jesnig on December 9, 1952. Mr. Jesnig died before trial. Plaintiff Package Devices, Inc., (hereinafter PDI), is now the rightful owner of ’938.

2. Plaintiff PDI is a Pennsylvania corporation having its principal office in Philadelphia, Pennsylvania.

3. Defendant, Sun Ray Drug Co. is a Pennsylvania corporation, having its principal place of business in Philadelphia, Pennsylvania.

4. Defendant, Owens-Illinois Glass Co. is an Ohio corporation, having a regular and established place of business at Philadelphia, Pennsylvania.

5. Defendant, Wyeth Laboratories Division, American Home Products Corp. is a Delaware corporation, having a regular and established place of business in Wynnewood, Pennsylvania.

6. Defendant, E. J. Korvette is a New York corporation, having a regular and established place of business at Philadelphia, Pennsylvania.

7. Owens-Illinois Glass Company (hereinafter Owens-Illinois) is a manufacturer of the accused structures, and Sun Ray Drug Co., Wyeth Laboratories, and E. J. Korvette, Inc. have marketed products in these structures.

8. The subject matter of the ’938 patent is the design of a container finish, particularly the neck ring, and the design of an elastomer container cap. Products such as aspirin are marketed in containers with the so-called snap-tops which are alleged to infringe ’938.

9. The inventor, Mr. Jesnig, conceived his invention in January of 1947, while engaged in research to develop method of vacuumizing tin can containers. He made a polyethylene cap to fit over a model with a 30°/30° conical finish on February 4, 1947.

10. At some time before May 12, 1948, Mr. Jesnig was requested by Mr. Nack, an employee of Sharpe & Dohme, Inc., to endeavor to develop a suitable closure for serum vials which the Wheaton Glass Co. was currently manufacturing and supplying to Sharpe & Dohme, Inc.

11. Subsequent to the meeting with Mr. Nack, but prior to May 12, 1948, Mr. Jesnig prepared a lucite model of a closure and a neck finish which reflected the concepts incorporated in the tin-can experiment of February 4, 1947, and which was essentially the same as the ’938 patent.

12. Mr. Wheaton, of the Wheaton Glass Co., (hereinafter Wheaton), found Jesnig’s model acceptable, but for expediency decided to use the closure with a standard rounded finish that was presently available.

13. After the meeting with Mr. Wheaton, Mr. Jesnig began the process of preparing a patent application concerning the use of his closure with the standard rounded finish which Mr. Wheaton had decided to use. The application was filed on May 12, 1948, and United States Letters of Patent No. 2,-587,327 (hereinafter ’327) was issued on February 26, 1952.

14. After his original decision to use a standard rounded finish, Wheaton developed a glass finish with a 30°/30° conical surface. This new finish was design to imitate the finish of the original model which Jesnig had shown to Mr. Wheaton, and production drawings were in existence on October 22, 1948. Production of bottles with the new finish was underway by February 1949.

15. On January 24, 1949, PDI, the assignee from Jesnig of patent application No. 26687 (this application matured into the ’327 patent) entered into a licensing agreement with Wheaton. The subject of this agreement was the closure or the snap-cap that was to be used with the standard rounded finish.

16. Bristol Myers, a vendee of Wheat-on, forwarded Wheaton’s production drawings of the 30°/30° conical neck ring to Owens-Illinois some time just prior to July 5, 1949. Owens-Illinois manufactured bottles in accord with the Wheaton drawing in December of 1949.

17. The prosecution of the ’938 patent was initiated on September 12, 1949, and the patent was issued on December 9, 1952. Ten claims were contained in the original application. Shortly thereafter, November 22, 1949, Claims 11 and 13 were added. These were designed to elucidate the importance of the neck ring and the interaction of the neck ring and cap. All thirteen claims were rejected by the Examiner on January 27, 1950, on the basis of prior art. The term “apex” was used in Claims 11 and 12 to describe the juncture of the outward and inward tapers of the container ring. No definition of appex was contained in these claims; however, the application described the apex as a “peak or line.”

18. In response to the Examiner’s action of January 27, 1950, amendments were made by a letter dated May 31, 1950. These amended Claims, 1 through 13, were again rejected on the basis of prior art.

19. By letter dated May 9, 1951, all thirteen claims were cancelled and Claims 14 through 18 were added. On July 3, 1951, Claims 19 through 25 were added and Claims 14 through 18 were cancelled without any action being taken by the Examiner. The term “apex” was again used to describe the juncture point. The Examiner rejected Claims 19 through 25 on July 31, 1951. His basis, again, was prior art.

20. On January 25, 1952, plaintiff cancelled his prior claims and added Claims 26 through 28. An affidavit by Dr. Mauehly accompanied these amendments. The language “steep annular apex” was used in. these claims. In the statement supporting these amendments, Mr. Jesnig described the neck ring as “two flats coming up to a steep apex or knife edge which acts as a fulcrum * * * ” (D.E. 71 p. 58) On February 21, 1952, Claims 26 and 28 were rejected on the basis of prior art, but 27 was allowed if the term “steep” was eliminated. The Examiner observed: “The word ‘steep’ in [the three claims] is objected to as being meaningless and indefinite as used in these claims.” (D.E. 71 p. 82)

21. On February 21, 1952, Mr. Jesnig, apparently unaware of the Examiner’s action of that date, cancelled all previous claims and substituted Claims 29 through 31. In these he used the language “annular peak line” to refer to the juncture of the inward and outward tapers. In the accompanying statement, Mr. Jesnig emphasized the importance of the design of the neck ring:

“The neck ring should make a rapid transition from one of these conical surfaces to the other and at an apex which is essentially a circular edge. * * * The object here is to minimize the possible position in which the cap could remain in a state of neutral equilibrium instead of either sealing properly or coming back off.” (D.E. 71 p. 89)

22. On August 19, 1952, after Jesnig became aware of the Examiner’s action of February 21, 1952, all prior claims were cancelled and Claims 32 through 34 were added. The claim at issue in the present litigation was denominated as Claim 33 of these amendments. Claim 33 was formerly Claim 29 and Claim 29 was formerly 26. Claim 26 was originally rejected by the Examiner’s action of February 21, 1951, on the basis of prior art. The term “steep” was deleted in accord with the Examiner’s observation that the term was “meaningless and indefinite.” A notice of allowance was then issued on September 19, 1952.

23. Claim 2 of ’938, which is at issue in this action, reads as follows:

In a container,

A a vessel having a rigid neck provided with a neck opening and

B having an external annular neck ring on the neck

C which has a conical annular surface tapering abruptly outwardly from the end of the neck ring adjoining the neck opening and

D a reverse conical annular surface tapering abruptly inwardly on the side of the neck ring remote from the neck opening,

E the conical annular surfaces meeting in an annular apex which has the largest diameter of the cap area of the neck ring,

F and a resilient elastomer cap body

G having an end portion which extends over, closes and seals against the otherwise open end of the neck and

H having a continuous annular flange portion integral with the end portion,

I the flange portion having a larger diameter than the conical annular surface of the neck ring, and

J the flange portion having an inwardly extending and downwardly converging continuous annular rim which engages around and grips the reverse conical annular surface of the neck ring when the cap is in place on the neck ring,

K the inner annular rim surface conforming with the reverse conical surface for sealing engagement therebetween,

L the rim being so spaced relative to the cap end portion that when the cap is in place on the neck ring, the cap engages the neck ring at the end of the neck adjoining the neck opening and on the reverse conical surface,

M the aforesaid structure of the neck ring cooperating with the axial resilience of the cap flange to store energy during the first stages of cap application, which energy is released suddenly as the rim attains the apex so as to cause the rim to pass completely over the. apex and the cap attains its final sealing position and to maintain said flange portion under substantial axial tension in said cap position.

24. During the prosecution of this application, seventeen patents were cited as prior art by the Examiner.

25. Of those cited by the Examiner, defendants now rely on the Stewart, Jesnig '327, and the British patents.

26. The Stewart patent, Patent No. 2,109,805, was issued on March 1, 1938. The subject matter of the patent is a metal pry-off closure to be applied to a glass bottle. Locking of the metal cap is effectuated by circumferentially spaced inwardly projecting lugs. The neck ring is a circumferentially continuous bead which has a downward and outward slope of 45°, a radius of V32 of an inch, and a downward and inward slope of 30°. The upper surface of the bead is considerably longer than the lower surface. After the lugs have traversed the upper surface of the bead and the radius, the lugs engage the lower surface of the bead. A gasket is used in order to create a seal at the mouth df the bottle.

27. British Patent No. 484,161 was issued on April 29, 1938. A conical neck finish is used on the bottle, and the juncture of the upper and lower surfaces is specified to be as sharp as possible. A metal cap with packing in the cap skirt is designed to fit onto the upper and lower surfaces of the neck finish. Another gasket is used in the top of the closure to form a seal between the cap and the mouth of the bottle.

28. The Jesnig patent, No. 2,587,327, was issued on February 26, 1952. The subject matter of the patent is a resilient plastic cap to be utilized with a standard rounded finish. The skirt of the cap has a circumferential annular bead which is applied over the finish, and depending upon design, either engages the lower surface of the rounded finish or the wall of the container itself. The skirt of the cap has a cut-out groove that separates the bead portion of the skirt from the outside portion of the skirt. This allows the bead portion of the skirt to expand while the outside portion is stable. Engagement is made between the cap and the mouth of the bottle. By using this design a snapping action was created when the cap was applied to the bottle.

29. Defendants also cite the Dunfee, Goebel, and Randlett patents. These were not cited by the Examiner.

30. The Dunfee patent, Patent No. 1,175,054, was issued on March 14, 1916. The inventor’s purpose was to design a one-piece nipple and closure that could be more securely attached to a nursing bottle. A neck ring with an outwardly-faced “V” shaped conical surface interacts with a “V” shaped internal bead on the skirt of the rubber cap. There is contact between the cap bead and the lower conical surface of the neck ring and with the container wall below the lower conical surface.

31. The Goebel patent, Patent No. 2,-063,428, issued on December 8, 1936, concerns a reusable metal cap which can be manually snapped on and off a glass container. The neck ring of the finish originates below the mouth of the container, and the circumferential bead has an upper surface moving downwardly and outwardly to a radial juncture, and a lower surface moving downwardly and inwardly at a greater angle than the upper surface. The inwardly-facing corrugated skirt of the cap has a slightly smaller diameter than the maximum diameter of the neck finish, in order to insure the engagement of this skirt and the lower conical surface of the neck ring. By using a resilient corrugated skirt with a narrower diameter than the bottle finish, a camming effect is created, and as the cap passes to the lower conical surface a tensioning effect is created; said effect is enhanced by the abrupt angle of the lower surface. An upper seal is effectuated by the use of a gasket in the cap.

32. The Randlett patent, Patent No. 2,576,416, was applied for on June 8, 1948, and issued on November 27, 1951. This invention involves a removable rubber-like snap-cap with a perforated top for dispensing seasonings. A glass container is fitted with the removable dispensing cap, and a standard threaded closure is applied over this dispensing cap. There is a slight radius at the mouth of the container, and just below this point there is an inwardly-faced “Y” shaped groove. The dispensing cap has a skirt with a “V” shaped bead which is received into the container’s “V” shaped groove when the cap is applied. Engagement is made between the cap bead and the container groove on the downward and inward surface of the groove.

33. Defendants also cite the Lumelite Cap, an article entitled “Precocious Plastics” in the February 1948 issue of Modern Plastics, the combination of the Lumelite, Cap and British Patent No. 484,161, the Kitchen Kap and Flexeal Finish, and the Barnby patent application, No. 759,-019, filed on July 5, 1947.

34. By December of 1945, the Lumelite Corp. of Pawling, N. Y. was marketing a reusable polyethylene cap [the Lumelite Cap] to be applied to bottles having a standard crown finish. The diameter of the cap was designed to be smaller than the maximum diameter of the crown finish. After the cap was stretched over the crown finish, the internal circumferential bead of the cap engaged the downward and inward surface of the crown finish. A primary seal was formed between the cap and the bottle mouth, and a secondary seal was formed between the bead of the cap and the lower surface of the crown finish. Small orders for the Lumelite Caps were received as early as December 14,1945, and sales increased thereafter. One of the main selling features of the cap was the noise of the cap bead snapping over the finish of the bottle.

35. The February 1949 issue of Modem Plastics contained an article entitled “Precocious Plastics.” This article predicted that one of the largest uses of polyethylene would be in the container closure field, and that Lumelite Corp. was currently marketing a wide variety of polyethylene closures, including the Lumelite Cap.

36. Defendants have also cited a hypothetical combination of the Lumelite Cap and the finish of the British Patent No. 484,161. If the cap and the container finish were dimensionally coordinated, the bead of the Lumelite Cap would move down the upper surface of the neck ring, cross the sharp juncture point of the upper and lower surfaces, and then engage the lower conical surface.

37. By January 1, 1946, Owens-Illinois manufactured and sold a glass container with a Flexeal finish. Customers of Owens-Illinois marketed coffee in these containers. Drawings for a reusable polyethylene cap designed to be used with the Flexeal finish were in existence on April 10, 1947, and said polyethylene caps were manufactured and sold under the trade name Kitchen Kaps by July 1,1947. Coffee retailers marketed coffee in Flexeal containers with a metal closure, and after the purchaser removed the metal closure the Kitchen Kap was used as its replacement. The skirt of the Kitchen Kap has a circumferential bead at its lower portion, and the Flexeal finish has a top sealing bead at the mouth and below that a non-continuous annular neck ring. The bead of the Kitchen Kap moves down the 4° angle of the upper surface of the neck ring to the point of maximum diameter, then the bead moves inward on the lower surface of the neck ring, which has a substantially more acute angle than the upper surface. Engagement is made between the cap and the container at the mouth of the container and between the bead of the cap and the lower surface of the neck ring.

38. On July 5, 1947, Herbert Barnby, an employee of Owens-Illinois, filed patent application No. 759,091. This application describes a closure similar to the Kitchen Kap, and the bottle finish of the container was similar to that of Flexeal finish. By June 30, 1949, Barnby claimed that when the cap was applied to the glass finish a hermetic seal would result at the point of engagement of the cap and the mouth of the container, and at the point of engagement of the cap bead and the lower surface of the neck ring.

39. Owens-Illinois was aware of the ’938 patent as early as 1954. Subsequently, employees of Owens-Illinois manifested their awareness of the possibility that their products might be alleged to infringe ’938.

40. Owens-Illinois accused structures, bottle finishes 1061-C, 1056, and 1058, all have a radius of %