Shanklin Corporation v. Springfield Photo Mount Co., Civ. A. No. 72-410-C.

Decision Date06 January 1975
Docket NumberCiv. A. No. 72-410-C.
PartiesSHANKLIN CORPORATION v. SPRINGFIELD PHOTO MOUNT COMPANY.
CourtU.S. District Court — District of Massachusetts

Robert E. Meyer, Charles E. Pfund, Boston, Mass., for plaintiff.

Charles W. Bradley, Cooper, Dunham, Clark, Griffin & Moran, New York, N. Y., Robert J. Horn, Boston, Mass., for defendant.

OPINION

CAFFREY, Chief Judge.

This is a civil action brought pursuant to 35 U.S.C.A. § 281 for alleged infringement of United States Patent No. 3,583,888. Jurisdiction is based on 28 U.S.C.A. § 1338(a) and 28 U.S.C.A. § 1400(b). Plaintiff Shanklin Corporation and defendant Springfield Photo Mount Company are Massachusetts corporations.

The patent in suit was issued on June 8, 1971, on the basis of an application filed on April 10, 1969 by Frank G. Shanklin, plaintiff's assignee. The allegedly infringing device is a machine called Weldotron Model 5872 Automatic L-Bar Package Forming System, which is manufactured by Weldotron Corporation of Piscataway, New Jersey. Although not a formal party to this case Weldotron is the real party in interest and it has entered into a letter of agreement dated February 29, 1972 under the terms of which it has agreed to defend this suit "at its own expense," and to "pay all damages and costs, and be responsible for any other liability assessed by any judgment rendered in this suit."

In its answer, defendant Springfield admits that it has used the Weldotron machines in its commercial operation. The case presents the usual issues of validity and infringement raised by both plaintiff's complaint and by defendant's counterclaim for declaratory relief. Defendant also charges plaintiff with patent abuse. The issue of defendant's liability for any monetary damages was reserved until after a decision on the issues of validity and infringement.

After a four-day trial, I find and rule as follows:

1. With Reference to the Issue of Validity

The general subject matter of this litigation is the field of packaging machines. The machines involved are in a class of packaging machines generally known in the trade as L-type Sealers or, alternatively, as L-Sealers. More particularly, the machine in question is a packaging machine which uses clear plastic wrapping film positioned on a roll, which film is drawn from the supply roll as a continuous source of wrapping material and formed by the machine into a shape which will receive the article or articles to be wrapped in the plastic film. The articles to be packaged are fed into the film manually or by means of a mechanical pusher and the film is then sealed about or around the articles to make a completed package. The articles to be wrapped follow a straight line path to and through the machine. The roll of wrapping film is located out of the path of the moving articles and the film is drawn from the roll into the path of the article where it makes a 90° turn through the use of a forming head or inverting head. The wrapping film while on the roll, and thereafter, is in a folded condition, being folded in two along its center line before it makes the 90° turn through the head. As the folded film turns the corner in the head into the article path, it is opened in order to be able to receive the article passing along the article path. The article to be wrapped passes between the open sides of the film and against a previously made transverse seal to advance the film with the article into a sealing situation. At this point, a transverse seal is formed behind the article as well as a longitudinal seal alongside the article. The film is then severed transversely along the middle of the transverse seal being formed, in such a manner as to separate the completed package from the ribbon of film which has come off the roll, and in such a manner as to effectively separate the seal into two parts, one providing a back seal for the package which has just been wrapped and the other providing a forward seal for the next article in line to be wrapped on the machine.

At the trial a considerable quantity of prior art was introduced into evidence in support of defendant's contention that the Shanklin patent lacks invention over the prior art and in support of the claimed obviousness. Defendant's principal reliance is placed on the Siegel, et al patent No. 3,047,991 which is the patent for Weldotron's manual L-Sealer; Zelnick patent No. 3,429,100, the patent for Weldotron's automatic L-Sealer packaging machine; the Suzuki patent No. 3,494,096 for a folding head; and the Runo, et al patent No. 3,538,676 for intermittent motion in-line packaging machines. On the issue of obviousness defendant also relies on the disclosures involved in the exhibition and offering for sale, in 1965, of a packaging machine manufactured by Kleer-Vu Industries, which machine was the subject matter of the Dean's, et al patent No. 3,420,035.

One preliminary matter must be disposed of before the evidence of either obviousness or lack of inventiveness is analyzed and that matter is the plaintiff's objection to the Court considering the testimony given by William R. Runo, the inventor of patent No. 3,538,676.

When Mr. Runo was called as a witness by defendant on March 27, the plaintiff objected to the Court receiving his testimony on the grounds that defendant had failed to afford plaintiff the full 30-day notice prior to trial required by 35 U.S.C.A. § 282. The Court then took Mr. Runo's testimony as an offer of proof. At the close of all evidence on April 9 defendant moved to have the testimony of Mr. Runo received as evidence. The Court advised counsel that it would reserve judgment on the motion to accept Mr. Runo's testimony until after counsel had filed their requests for findings of fact, rulings of law, as well as memoranda of law. A review of the file indicates that although scheduled for trial on March 11, 1974, actual trial of this case did not begin until March 26. On February 11 defendant filed a motion to continue the trial for "about one month." On February 12 plaintiff filed a memorandum in opposition to the allowance of this continuance sought by defendant. On February 14 defendant's motion for a continuance was denied. On March 20 Mr. Runo agreed to become a witness. On the same day, counsel for defendant telephonically notified counsel for plaintiff that Mr. Runo had agreed to testify and also served written notice of that fact on counsel for plaintiff. Had not plaintiff's objection to the continuance prevailed, this case would have been scheduled for trial on Monday, April 15, or Tuesday, April 16, by which time plaintiff would have had 26 days' notice of the fact that Mr. Runo agreed to testify for the defendant, and, if the delayed trial had spread over the same number of calendar days as were used up by the trial which took place, from March 26 to April 9 (15 days), a trial which began on April 15 would not have concluded until April 29, in which event more than 30 days would have elapsed from March 20, the date on which notice of Mr. Runo's testimony was given.

Counsel for the defendant has represented to the Court, without challenge, that on March 25 at the calendar call, counsel for plaintiff made no objection on the ground of untimeliness to the announcement that defendant contemplated using Mr. Runo as a witness. Counsel further represented that in reliance on this lack of objection he did not advise the Court at the calendar call of the shortness of the notice given, and counsel for defendant further represented that had he been advised of any objection to the Runo testimony he would have used the opportunity available at the calendar call either to request that the Court rule on plaintiff's objection or to request a continuance of the trial until after the expiration of 30 days from March 20.

It also should be noted in reference to this objection that notice of the fact that defendant planned to...

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2 cases
  • Stanley Works v. McKinney Mfg. Co.
    • United States
    • U.S. District Court — District of Delaware
    • August 27, 1981
    ...list it as an exhibit, DX M will be admitted as illustrative of the state of the art but not prior art. See Skanklin Corp. v. Springfield Photo Mount Co., 387 F.Supp. 345 (D.Mass.), aff'd, 521 F.2d 609 (1st Cir. 1975), cert. denied, 424 U.S. 914, 96 S.Ct. 1112, 47 L.Ed.2d 318 (1976); Roller......
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    • United States
    • U.S. Court of Appeals — First Circuit
    • August 20, 1975
    ...is the real party in interest defending in this action. The district court held that the patent was invalid and unenforceable, 387 F.Supp. 345 (D.Mass.1975), and Shanklin Shanklin's patented apparatus is an "in-line" packaging machine, a term used when the articles to be wrapped follow a st......

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