Illinois Tool Works, Inc. v. Sweetheart Plastics, Inc.

• Decision Date: 09 September 1969
• Docket Number: No. 66 C 1609,67 C 888.,66 C 1609
• Citation: 306 F. Supp. 364
• Parties: ILLINOIS TOOL WORKS, INC., Plaintiff, v. SWEETHEART PLASTICS, INC., Maryland Cup Corporation, and Sweetheart Cup Corporation, Defendants.
• Court: U.S. District Court — Northern District of Illinois

306 F. Supp. 364

ILLINOIS TOOL WORKS, INC., Plaintiff, v. SWEETHEART PLASTICS, INC., Maryland Cup Corporation, and Sweetheart Cup Corporation, Defendants.

Nos. 66 C 1609, 67 C 888.

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

September 9, 1969.

Granger Cook, Jr., James P. Hume, Hume, Clement, Hume & Lee, Chicago, Ill., for plaintiff; Richard R. Trexler, Robert W. Beart and Michael Kovac, Chicago, Ill., of counsel.

Dugald S. McDougall, Chicago, Ill., and George L. Greenfield, Boston, Mass., for defendants.

MEMORANDUM OPINION

DECKER, District Judge.

Plaintiff Illinois Tool Works, Inc. seeks to enforce two Edwards patents, 3,139,213 and 3,091,360. Defendant Maryland Cup Corporation is the parent corporation of the other two defendants, Sweetheart Plastics, Inc. and Sweetheart Cup Corporation. Defendants have constructed an assortment of plastic containers which are charged with infringement.

These consolidated actions are a sequel to Illinois Tool Works, Inc. v. Continental Can Company 273 F.Supp. 94 (N.D.Ill. 1967), aff'd 397 F.2d 517 (7th Cir. 1968). Plaintiff there sued an infringer of the '213 patent. Totaling over forty pages, the District Court opinion and the Court of Appeals decision describe in detail the history of the '213 patent and Edwards' contribution to the art. Except as hereinafter noted, the discussion of the '213 patent printed at 273 F.Supp. 97-120 and 397 F.2d 517-521 applies equally to the '360 patent.

Edwards taught that thin wall plastic containers may be constructed so they do not wedge together when stacked. Maturing out of the same application, both patents explain that a "Z" shaped cylindrical ring, if formed in the side wall of the container, will support nested cups so that only the shelves of the rings touch one another.¹ The '213 invention covers continuous stacking rings, while '360 encompasses interrupted rings.²

After discussing the patents' validity, the opinion will consider whether defendants' accused devices infringe the asserted claims.

I. VALIDITY

Defendants advance the usual defenses of anticipation and obviousness. The invalidity attacks are virtually identical for both patents.

With respect to anticipation, Maryland Cup relies primarily upon Nias patent 1,766,226³ which describes a pleated paper container with a prior art rim stacker.⁴ The cover of a Nias cup snaps into a groove adjacent to the top of the container. The upper portion of the cup must expand substantially to receive the lid; thus, if a stack of cups were dropped or otherwise subjected to axial pressure, the cups would similarly enlarge so that the grooves of adjacent cups would become wedged together. Therefore, although the specification states that the groove "limits the relative telescoping movement of the containers" (page 3, lines 79-80), the Nias cup structure facilitates jamming rather than stacking. Nias does not anticiate Edwards' inventions.⁵ See, e. g., Amphenol Corp. v. General Time Corp., 397 F.2d 431, 438 (7th Cir. 1968); Copease Mfg. Co. v. American Photocopy Equipment Co., 298 F.2d 772 (7th Cir. 1961).

Alleging obviousness, defendants next emphasize Louis H. Pfohl's earlier experience with undercut side walls in plastic products.⁶ In combination with prior art references such as Nias, Pfohl's expertise would purportedly have rendered Edwards' contribution obvious at the time of his conception. But, Pfohl constructed rim stackers rather than using the Z side wall configuration; Pfohl was unable to produce a single container, cup, dish, or box embodying Edwards' inventions.⁷ Moreover, in their earlier consideration of Aldington patent 2,985,354 and Nowak patent 2,749,572, the Patent Office, the District Court and the Seventh Circuit indicated an awareness of the undercutting technique. See 273 F. Supp. 113-115 and 397 F.2d 519.⁸ At the time of Edwards' inventions, neither the '213 patent nor the '360 patent were obvious to one ordinarily skilled in the art. See, e. g., Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966); Gass v. Montgomery Ward & Co., 387 F.2d 129, 132 (7th Cir. 1967).

Defendants have failed to present persuasive new evidence in support of their invalidity allegations. See American Photocopy Equipment Co. v. Rovico, Inc., 384 F.2d 813, 815-816 (7th Cir. 1967). In fact, Maryland Cup's "new" evidence is less convincing than the defenses advanced by Continental Can in the earlier litigation.⁹ Accordingly, each patent is valid and enforceable.

II. INFRINGEMENT: THE '213 PATENT

The limits of the patent's claims have already been delineated in the preceding litigation. See 273 F.Supp. 119-120 and 397 F.2d 520-521. Except for two groups of containers, defendants concede infringement by their accused structures.

First, defendants' DF-106 current containers have slight nicks in the upper shoulders of the stacking facility. Claim 1 covers stacking rings which are "substantially circumferentially continuous," thus including the disputed containers within its literal language. Moreover, neither the function nor the result nor the means taught by Edwards are altered by the nicks. The only explanation for their presence is defendants' attempt to avoid infringement while simultaneously utilizing a Z shaped stacker.

Second, the accused CC-7, CC-9 and SQ-4 containers purportedly lack the following element:

"the configuration of said bottom in central axial cross-section being such as to enhance its resistance to deformation." Col. 4, lines 25-27.

The drawings, specification, and claims demonstrate that the patent is restricted to containers with specially constructed bottoms.¹⁰ Since defendants' containers never rest on their bottoms, they have small bottoms which lack any means calculated to resist deformation.¹¹ Defendants' containers thus lack one of the patent's elements, together with its designated function. They therefore do not infringe. See, e. g., Edwards v. Hychex Products, 171 F.2d 259, 260 (7th Cir. 1948).

III. INFRINGEMENT: THE '360 PATENT

The '360 patent describes an interrupted stacking ring which assures air communication between nested cups. In addition, cams may be added to the cups to separate the stacking shoulders of adjacent cups. Defendants advance three arguments to avoid infringement.

First, Maryland Cup asserts that all claims are limited to cups with cams, thus rendering patent figures 1-5 irrelevant to the invention. Claim 1 includes the following elements:

"circumferentially spaced portions of said stacking ring means located beneath and providing a support for said internal shoulder means, said support converging toward the cup axis from bottom to top * * * and at least one of said shoulder means having separate means associated therewith for cooperation with a shoulder means of a nested cup to provide a circumferentially discontinuous area to assure air communication between completely nested cups * * *" Lines 24-34.

Edwards testified that the wall portions (38), which create the interrupted construction of the stacking ring, insure air communication without cams.¹² Similarly, the specification explicitly declares that:

"As will be apparent, there is necessarily an air space between the bottoms of the adjacent cups, and the spaces 38 between the protuberances or nibs 36 provide air channels for venting air into this space. Thus, the cups do not wedge together, and also do not stick together due to air trapped in the cups." Col. 3, lines 44-49.

In the file history, both plaintiff and the patent examiner demonstrated repeatedly that they believed the claims were not limited to containers with cams.¹³

The projecting nibs (36) in figures 1-5 provide support for the internal shoulder (32) and converge toward the cup axis.¹⁴ The nibs also increase the lateral strength of the stacking ring and enlarge the radial extent of the internal shoulder means. Therefore, claim 1's reference to "portions" of the stacking ring defines the projecting nibs (36) in figures 1-5.¹⁵ Rather than being restricted to containers with cams, claim 1 encompasses the devices pictured in figures 1-5.¹⁶

Second, Maryland Cup contends that structures with the lower stacking shoulder located at the bottom of the cup do not infringe. While the Patent Office was processing Edwards' application, the claims' language was initially restricted to stacking facilities located above the bottom of the cup. By its amendment of February 14, 1969, however, the plaintiff removed this limitation with the following explanation:

"Claim 39 does not specifically limit the lower or external shoulder means to being spaced above the bottom of the container, as in the case of claim 31 subsequently cancelled. It is believed that this limitation is unnecessary for patentability of the claim, when the interruption in the external shoulder means is specifically recited."¹⁷

Claim 1 declares that the invention includes:

"stacking ring means having at its lower extremity circumferentially disposed externally projecting shoulder means and having at its upper extremity circumferentially disposed internal shoulder means of smaller minimum diameter than the maximum diameter of said external shoulder means and spaced upwardly from said recessed bottom * * *" Lines 14-20.

The last phrase quoted above, "spaced upwardly from said recessed bottom," refers to the antecedent "internal shoulder means."¹⁸ Thus, defendants' accused structures infringe the '360 patent even though the Z configuration is positioned at the bottom of the container.

Finally, defendants' CVP-9 devices allegedly do not embody a Z shaped configuration because the stacking structures also have vertical intermediate sections.¹⁹ PX 107 is an enlarged cross-section of one segment of the stacking facility. The exhibit demonstrates that a Z undercut is present in CVP-9 containers, thereby creating the cups' stacking overlap. The structures' reverse taper allows nested cups to stack without jamming. The...