Chun King Sales v. Oriental Foods

• Decision Date: 13 December 1955
• Docket Number: No. 17882.,17882.
• Citation: 136 F. Supp. 659
• Court: U.S. District Court — Southern District of California
• Parties: CHUN KING SALES, Inc., and Jeno F. Paulucci, Plaintiffs, v. ORIENTAL FOODS, Inc., Defendant.

136 F. Supp. 659

CHUN KING SALES, Inc., and Jeno F. Paulucci, Plaintiffs, v. ORIENTAL FOODS, Inc., Defendant.

No. 17882.

United States District Court S. D. California, Central Division.

December 13, 1955.

COPYRIGHT MATERIAL OMITTED

Williamson, Schroeder, Adams & Myers, Everett J. Schroeder, Minneapolis, Minn., and Lyon & Lyon, Lewis E. Lyon, R. Douglas Lyon, Los Angeles, Cal., for plaintiffs.

Harris, Kiech, Foster & Harris, Ford Harris, Jr., Los Angeles, Cal., for defendant.

YANKWICH, Chief Judge.

The plaintiff by this action seeks injunction and damages for patent infringement and unfair competition. 28 U.S.C.A. § 1338(a) and (b). The patent involved is No. 2,679,281, issued on May 25, 1954, to Jeno Francis Paulucci. The defendant denies infringement, challenges the validity of the patent, and, in a counterclaim, asks for a declaration of invalidity. While the original pleadings as to the cause of action for infringement related to all three claims of the patent in suit, the plaintiff, at the trial, restricted itself to a charge of infringement of Claim 1 only.

I Validity and Infringement

The object of the patent in suit is to join cans so that canned foods might be sold together and is on "a method and means for securing cans together in end-to-end relationship." Claim 1 describes it:

"1. The method of securing two cans together said cans having beaded ends protruding beyond their side walls, comprising (1) alining said cans in end-to-end relationship with adjacent end beads of said cans abutting each other, (2) stretching a portion of a slightly resilient sticky tape and applying said portion of said tape over portions of the abutting beads and adjacent side walls of said cans while said tape is in a stretched condition to secure said cans together; (3) pulling on the portion of said tape not secured to said can in a direction substantially tangential to the periphery of the cans to place same in a stretched condition to cause said tape to be applied and adhere to the remainder of the periphery of said beads and adjacent side walls of said cans."

For convenience of reference, we have numbered the three elements of the claim.¹

While the scope of the claim is narrow, it represents invention over the prior art. 35 U.S.C.A. § 103; Pointer v. Six-Wheel Corp., 9 Cir., 1949, 177 F.2d 153, 160-161; Pacific Contact Laboratories v. Solex Laboratories, 9 Cir., 1953, 209 F.2d 529, 532-533; Jeoffroy Mfg. Co. v. Graham, 5 Cir., 1953, 206 F.2d 772, 776-778; Stearns v. Tinker & Rasor, 9 Cir., 1955, 220 F.2d 49, 57-58. There is no merit to the contention that it is anticipated in the prior art. 35 U.S.C.A. § 102. Admittedly, the two best references (T. H. Nifong, 2120504, June 14, 1938, and Arnold E. Johnson, 2652166, September 15, 1953) do not contain the element which we have marked (2). There is no method in either for applying tension to or stretching the tape either before or after application in order to cause it to pass around an irregular contour so as to secure, in effect, a welding as set forth in the patent in suit. There is, therefore, absent an important element of the method and the desirable result which its combination with the other elements achieves. And there can be no anticipation unless all the elements of the invention or their equivalents are found in a prior invention where they achieve the result in substantially the same manner. Bianchi v. Barili, 9 Cir., 1948, 168 F.2d 793, 795-796; Allied Wheel Products v. Rude, 6 Cir., 1953, 206 F.2d 752, 755-756.

The burden of establishing anticipation rests heavily on him who charges it. Radio Corp. of America v. Radio Engineering Laboratories, 1934, 293 U.S. 1, 7-9, 55 S.Ct. 928, 79 L.Ed. 163; Marconi Wireless Co. of America v. United States, 1943, 320 U.S. 1, 34-35, 63 S.Ct. 1393, 87 L.Ed. 1731; Paraffine Companies v. McEverlast, Inc., 9 Cir., 1936, 84 F.2d 335, 339; Insul-Wool Insulation Corp. v. Home Insulation, 10 Cir., 1949, 176 F.2d 502, 504-505.

There is evidence in the record that the Minnesota Mining & Manufacturing Company made several attempts to construct a machine for the plaintiff for the purpose of achieving the result finally attained by this invention. They were interested in selling to the plaintiff their patented tape. Their employees were allowed on the premises of the plaintiff to see, and participated in, the experiments being carried on. Whether they were pledged to secrecy is not material. They knew that experiments were being carried on and the plaintiff had the right to rely on the decencies of ethical conduct which forbid a concern dealing with another to disclose to others experimental demonstrations and uses carried on in order to enable the two parties to deal in the future on more favorable terms.

I am quite certain that the Minnesota Mining & Manufacturing Company did not act with deception. And there is direct testimony in the record that their representatives, who saw certain experiments anticipatory of the invention, understood that these were private experimental attempts to achieve certain results and did not amount to public disclosure or use of the method that was later patented. It would be a sad commentary on the ethics of business, indeed, if, on the basis of the facts disclosed here, an infringer could benefit by what would be a breach of trust. But ethics aside, legally the efforts were purely experimental, did not amount to public use, and were not anticipatory. Electric Storage Battery Co. v. Shimadzu, 1939, 307 U.S. 5, 20, 613, 616, 69 S.Ct. 675, 83 L.Ed. 1071; Merrill v. Builders Ornamental Iron Co., 10 Cir., 1952, 197 F.2d 16, 18-19; Pacific Contact Laboratories v. Solex Laboratories, 9 Cir., 1953, 209 F.2d 529, 534. More, the experiments were not successful as the models constructed with the aid of Minnesota Mining & Manufacturing Company proved unworkable. Only after their abandonment was the present novel and successful invention devised.

"* * * And a prior unsuccessful experiment does not constitute invention and cannot therefore be an anticipation." Pacific Contact Laboratories v. Solex Laboratories, supra, 209 F.2d at page 532.

So the claim of invalidity by reason of prior public disclosure or use in 1950 or 1951 made in the counterclaim must fail.

The method used by the defendant infringes Claim 1, for it uses, without deviation, the four steps described in the Claim, as was clearly demonstrated when the machine was operated at the trial. While thus satisfied that there has been deliberate infringement of the plaintiff's patented method, I am of the view that the plaintiff is not entitled to recover on the claim or cause of action for unfair competition. 28 U.S.C.A. § 1338(b).

II Tests for Determining Unfair Practices

Unfair competition or unfair practices are condemned because they lead to confusion of sources or sponsorship of goods. Restatement, Torts, § 728. The test for determining the existence or non-existence of confusing similarity has been stated in this manner:

"The ultimate test of whether or not there is a confusing similarity between a designation and a trademark or trade name which it is alleged to infringe is the effect in the market in which they are used. In some cases the probable effect can be determined by a mere comparison of the designation with the trade-mark or trade name. In other cases extrinsic evidence may be necessary. In any event, the issue is whether an appreciable number of prospective purchasers of the goods or services in connection with which the designation and the trade-mark or trade name are used are likely to regard them as indicating the same source. That a few particularly undiscerning prospective purchasers might be so misled is not enough. On the other hand, it is enough that an appreciable number of purchasers are likely to be so misled, even though by exercising greater discernment they could avoid the error." Restatement, Torts, § 728. Emphasis added.

In most cases of this character, instances of actual confusion by purchasers are offered and received in evidence. Surveys and polls conducted by individuals or research organizations are also used. Laskowitz v. Marie Designer, Inc., D.C.Cal.1954, 119 F.Supp. 541, 550; Note, Public Opinion Surveys as Evidence, 1953, 66 Harv.L.Rev., p. 498.

There is no such evidence in this case. We are, therefore, to determine whether, — to paraphrase the language of the Restatement — an appreciable number of prospective purchasers of the goods are likely to regard them as coming from the same source. So doing, we disregard what the Restatement calls "the undiscriminating prospective purchaser", and are guided by the effect upon the person who looks for brand names. Restatement, Torts, § 717, Comment (b); § 727.

The test by which is determined the likelihood that confusion might be engendered in a purchaser's mind is given in the Restatement in this manner:

"* * * Under the rule stated in this Section, the likelihood that prospective purchasers will regard the use of the designation in the manner stated must be substantial. That there is a very remote possibility that prospective purchasers generally will so regard the use is not enough. Nor is it enough that there is strong likelihood that one or two prospective purchasers will be so misled. On the other hand, the rule does not require a probability of general confusion among most of the prospective purchasers. Compare § 728, Comment (a)." Restatement, Torts, § 727. Emphasis added.

See, Restatement, Torts, § 730, Comment (b).

These criteria have the approval of California courts. Scudder Food Products v. Ginsberg, 1943, 21 C.2d 596, 599-602, 134 P.2d 255; Weatherford v. Eytchison, 1949, 90 Cal.App.2d 379, 384, 202 P.2d 1040; Schwartz v. Slenderella Systems of Cal., 1954, 43 Cal.2d 107, 112, 271 P.2d 857; Sunlite Bakery v. Homekraft Baking Co., 1953, 119 Cal.App.2d 148, 150, 259 P.2d 711. And in their application, similarity and not complete...