Illinois Tool Works, Inc. v. Continental Can Company

• Decision Date: 12 July 1967
• Docket Number: No. 65 C 2179.,65 C 2179.
• Citation: 273 F. Supp. 94
• Parties: ILLINOIS TOOL WORKS, INC., Plaintiff, v. CONTINENTAL CAN COMPANY, Inc., Defendant.
• Court: U.S. District Court — Northern District of Illinois

273 F. Supp. 94

ILLINOIS TOOL WORKS, INC., Plaintiff, v. CONTINENTAL CAN COMPANY, Inc., Defendant.

No. 65 C 2179.

United States District Court N. D. Illinois, E. D.

July 12, 1967.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

James P. Hume and Granger Cook, Jr., Hume, Clement, Hume & Lee, Chicago, Ill., for plaintiff.

Fred S. Lockwood and John D. Dewey, Greist, Lockwood, Greenawalt & Dewey, Chicago, Ill., for defendant.

MEMORANDUM OPINION

DECKER, District Judge.

This is a suit for infringement of United States Patent No. 3,139,213 ("'213"), entitled "Nestable Cup," and for infringement of United States Patent No. 3,061,139 ("'139"), entitled "Self-Venting Package." The '213 patent was granted on June 30, 1964, upon an application originally filed on October 29, 1958, and divided on December 13, 1962, into the subject matter on which the '213 patent was granted and the subject matter on which United States Patent No. 3,091,360 was granted on May 28, 1963. The '139 patent was granted on October 30, 1962, upon an application filed on March 14, 1960. The applicant for both patents was Bryant Edwards, who has assigned all right, title and interest in both to plaintiff.

Plaintiff, Illinois Tool Works, Inc. ("ITW"), is a Delaware corporation, with its principal place of business and offices in Chicago, Illinois. Defendant, Continental Can Company, Inc. ("Continental Can"), is a New York corporation, with its principal place of business in New York and with a regular and established place of business in Chicago, Illinois.

In response to the complaint charging infringement, defendant filed an answer and counterclaim, asserting that the '213 and '139 patents are invalid and void and not infringed, and seeking a declaratory judgment under 28 U.S.C. ?? 2201, 2202 to this effect.

This court has jurisdiction of this case under 35 U.S.C. ?? 271 and 281 and under 28 U.S.C. ?? 1338(a) and 2201. Venue in this district is proper. The case was tried before the court on October 31 and November 1, 1966, and on November 7?€”18, 1966. This memorandum opinion, containing findings of fact and conclusions of law in accordance with Rule 52(a), Federal Rules of Civil Procedure, is based upon the evidence produced at the trial and upon the voluminous briefs filed by both parties. I have concluded that both the '213 patent and the '139 patent are valid and that Continental Can is guilty of infringement of both patents.

For convenience, this opinion will first set forth the general factual background concerning this suit and then will separately discuss the '213 and '139 patents and issues raised with respect to each of them.

* * *

In general, the subject matter of both patents involves thin-wall plastic cups and containers, used for containing beverages or food, and with the form of such cups and containers, together with thin plastic lids. These products are formed from sheets of plastic by the use of molds and a process known as thermoforming. ITW initially became interested in the container market in late 1956, and began to produce plastic drinking cups on a commercial basis in 1958. In 1959, ITW began to manufacture plastic cottage cheese containers and supplied plastic lids for these containers, through a subcontractor, commencing in 1960. Continental Can has been in the cup and container market for a number of years, and prior to 1956 manufactured and sold paper drinking cups and food containers. Continental Can manufactured and sold thin-wall plastic drinking cups for use in vending machines on a sporadic basis from about 1956 through 1961. This product has been discontinued by Continental Can. In 1962 or 1963, Continental Can began to produce and sell plastic cottage cheese containers and lids and continues to do so at the present time. It is this latter product and activity by Continental Can which has directly given rise to this suit.

The '213 Patent

1. Subject Matter.

In general, the subject matter of U. S. Patent No. 3,139,213 is a thin-wall plastic container, particularly of the expendable or throw-away variety. Such containers are typically used in vending machines, to hold hot and cold beverages, and in the field of dairy product containers, most particularly for cottage cheese products. The '213 patent, entitled "Nestable Cup," relates to the use of a Z-shaped stacking ring configuration around the side wall of the container. The purpose of this stacking ring is to permit the containers to nest one inside the other in tubular, telescopic fashion for economic storage and shipment and for use in vending machines and other machinery, where containers are dropped singly from the bottom of such a tube of containers to be filled with the appropriate beverage or product. The stacking ring is intended to permit such stacking to the extent of maximum telescoping without allowing the containers to wedge together, thereby providing for ready separation. The stacking ring is also intended to take advantage of the inherent resiliency of the plastic material and to embody a quality of resiliency in the column of containers, for the purpose of preventing the splitting of cartons of such containers during shipment if accidently dropped, and otherwise to prevent problems arising from the rigidity of such columns of telescoped containers.

2. Background and Issues in Suit.

ITW first became interested in the packaging or container field in 1956, and became acquainted at that time with Mr. Charles Politis of Athens, Greece, who was promoting a thermo-forming machine and process. ITW negotiated an option with Politis in 1956 for his machine and process, and conducted several market surveys to determine the potential commercial value of thin-wall plastic containers. Following these surveys and several inspections of the Politis operation in Greece, ITW in the first part of 1957 signed a contract with Politis for a machine. Subsequent to this time, ITW assigned to one of its engineers, Bryant Edwards, the task of designing a suitable cup. Edwards designed a cup having a continuous Z-stacker configuration located at its rim and beneath the overhang of the rim curl, and in June 1957, Edwards took this design to Athens where sample cups were produced on the Politis machine. Edwards returned in July 1957, and a Politis machine was shipped to ITW at about the same time. Further sample cups were produced on this machine, but these were found to be unsatisfactory. Edwards then completely redesigned the cup, coming up with a cup utilizing a continuous Z-stacker configuration around the side wall below the rim of the cup.

About this same time, Edwards also designed a cup utilizing the continuous Z-stacker configuration at the bottom of the cup. ITW submitted copies of this latter cup to Automatic Canteen, a major consumer of vending machine products, and in December 1957 Automatic Canteen gave ITW a verbal order for 1,000,000 of these cups, with minor modification. Molds were constructed and production begun early in 1958. In April 1958, ITW produced and shipped to Automatic Canteen 50,000 of these cups. However, the Politis machine was not efficient, and individual sorting and inspection of each cup was required. It was decided at this time to redesign the cup to provide for much greater production tolerances. The change consisted of adding an accentuated interrupted Z-stacker configuration to the existing Z-stacker ring at the bottom of the cup, and also further adding at spaced intervals camming nibs having lower surfaces oblique to the lower edge of the ring. The balance of the Automatic Canteen order was filled from about May 1958 through the fall of that year, and it was filled first with the accentuated interrupted Z-stacker cup and later with that cup having in addition the camming nibs. ITW has continued to produce and sell the latter cup, in part because of the cost of changing its molds and tools.

ITW subsequently embodied the Z-stacker ring in an all-plastic tub for cottage cheese products in the dairy food industry. New molds were designed, and the tub contained a continuous Z-stacker configuration located on the side wall below the rim. In the summer of 1959, these tubs were produced and market tested by the Borden Company, and commercial production commenced shortly after that time. This production has continued to the present time, on the part of ITW as well as by its domestic and foreign licensees.

On November 29, 1957, Bryant Edwards filed application Serial No. 699,678, for a thin-wall plastic "nestable cup" containing a continuous Z-stacker ring located around the side wall of the cup below the rim. Subsequently, on October 29, 1958, Edwards filed application Serial No. 769,057, also for a thin-wall plastic "nestable cup" with a continuous Z-stacker ring located on the side wall. Furthermore, this second application also described and claimed the interrupted accentuated Z-stacker ring and the camming nibs which were developed by Edwards in 1958 as a result of the commercial difficulties in producing cups to fill the Automatic Canteen order. Serial No. 769,057 was filed as a continuation-in-part of Serial No. 699,678 and Serial No. 699,678 was subsequently abandoned. After prolonged negotiation with respect to Serial No. 769,057, the Patent Office required a division under 35 U.S.C. ? 121, and Serial No. 244,320 was filed on December 13, 1962. This application described and claimed a continuous Z-stacker ring, together with the additional feature of an oblique lower edge to this ring, located on the side wall of the cup. The application was successfully prosecuted, and the '213 patent was issued on June 30, 1964. The feature of the camming nibs, some of which possessed oblique lower edges, in conjunction with a Z-shaped stacking ring was embodied in U. S. Patent No. 3,091,360, issued to Bryant Edwards on May 28, 1963, and also entitled "Nestable Cup."

ITW alleges infringement of four of the eleven...