Illinois Tool Works, Inc. v. Continental Can Company, 16500.

Citation397 F.2d 517
Decision Date10 September 1968
Docket NumberNo. 16500.,16500.
PartiesILLINOIS TOOL WORKS, INC., Plaintiff-Appellee, v. CONTINENTAL CAN COMPANY, Inc., Defendant-Appellant.
CourtUnited States Courts of Appeals. United States Court of Appeals (7th Circuit)

Fred S. Lockwood, John D. Dewey, John L. Alex, Chicago, Ill., for defendant-appellant.

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

Before DUFFY, Senior Circuit Judge, and KILEY and SWYGERT, Circuit Judges.

KILEY, Circuit Judge.

This is a patent infringement action seeking damages and injunctive relief against Continental Can Company, Inc. (Continental). The district court found the patents in suit valid and infringed, and entered an order requiring an accounting and restraining Continental from further infringement.1 The injunction and accounting were stayed pending appeal. We affirm.

Plaintiff Illinois Tool Works, Inc. (Illinois Tool), a Delaware corporation, with principal place of business in Illinois, is assignee and owner of Edwards Patent #3,139,213 (#213) covering nestable thin wall plastic drinking cups; and Patent #3,061,139 (#139) covering a self-venting plastic container and lid, used primarily to contain cottage cheese. Illinois Tool's Conex Division manufactures and sells the products covered by the patents. Continental's Bondware Division manufactures and sells the accused plastic cups and containers.

Continental defended on the usual grounds of invalidity and non-infringement. Invalidity was asserted on the grounds of anticipation by the prior art, obviousness, vagueness of the Edwards claims and lack of "inventive novelty." The non-infringement defense was based on alleged differences between the Continental nestable cups and plastic cottage cheese containers and the plaintiff's patents; and file wrapper estoppel based on Edwards' abandonment of certain claims in the Patent Office.

The district court in a 107-page memorandum found that the prior art patents and uses were not sufficiently identical to the Edwards patents to constitute anticipation; that the evidence "clearly" favored Illinois Tool on the issue of obviousness; that the claims were sufficiently defined; and that "inventive novelty" is no longer a valid test of inventiveness and that the patent is "new." On infringement, the court found the "means, operation and result" of Continental's nestable cups identical to those of plaintiffs; and that its cottage cheese container was "in all respects * * * location, operation, principle and result" identical to plaintiff's. The court's judgment concluded that plaintiff's #213 patent claims 1, 5, 6 and 9 were valid and infringed, and plaintiff's #139 claims 1 and 3 through 13 were valid and infringed.

#213

Patent #2132 issued June 30, 1964, upon application filed December 13, 1962. The application stated that the object of the patent was "to provide a cup, particularly a throw-away cup, which is so configured that a plurality of such cups can be stacked in telescopic relation without wedging together." This stacking capacity, called nesting, is well known in the art and is commonly observed in vending machines used for dispensing liquid in plastic drinking cups. Stacking rings are used to minimize the degree of contact between cups in the stack and thereby prevent the cups from becoming wedged together.

The design of Illinois Tool's principal cup, one of five embodiments of patent #213, is of a thin walled plastic cup with a body that tapers upward and outward from a recessed bottom to a lipped top. On the outside of the cup between the top and center of the body is a series of step-like cylindrical rings circling the cup. The walls of the top ring incline up and in, forming a horizontal shelf at both the top and bottom of the ring in a Z-configuration. When stacked, the lower shelf of the top ring of one cup is supported on the upper shelf of the top ring of the next lower cup. The result is that when stacked, only the surfaces of the shelves are engaged, and the cups are nested but not wedged. The lower rings in the series are "gripping rings" which prevent the cup from slipping from the hand of the user.

The district court found that the 213 patent calls for a single circumferentially continuous Z-shaped stacking ring configuration located below the rim on the side wall of a thin wall plastic cup. It concluded that this stacking arrangement provides protection against the wedging of stacked cups while at the same time utilizing the natural flexibility of thin wall plastic to cushion shocks and thereby prevent cup breakage during shipping. We believe that the evidence supports these conclusions and we also agree with the district court's determination that nothing in the prior art anticipates these features under the exactness standard of Monroe Auto Equip. Co. v. Heckethorn Mfg. & Sup. Co., 6 Cir., 332 F.2d 406, 414, 415, and McCullough Tool Co. v. Well Surveys, Inc., 10 Cir., 343 F.2d 381, 398, or makes them obvious under the guidelines of Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545. We think the court's findings have substantial support in the record and that its conclusions are not erroneous.

In making its anticipation and obviousness arguments, Continental places its chief reliance on Aldington Patent #2,985,354. It admits that because the Patent Office issued the Edwards patent over the Aldington reference, the presumption of #213's validity is stronger than it might otherwise be.

Aldington's patent covers a lid, not a container. The problem Aldington solved in stacking lids is not the same problem solved by the 213 patent. The Z-shaped stacking ring in the Aldington lid covers the entire height of the lid side wall, whereas in #213 the stacking ring is above the middle of the cup. The arrangement in Aldington causes the bottom of one lid to rest on the top shoulder of a lower lid, thereby avoiding the nesting needed in the efficient stacking of deep walled containers such as the Edwards cup. The Aldington lids need only vertical spacing; unlike the nesting cups which must be spaced horizontally to avoid jamming in packaging, shipping and handling.

Continental relies also on the Geuder 795,437, Pfalzgraf 1,324,432, Amberg 2,707,588, Nowak 2,749,572, Flack 2,879,917, and Caine 3,045,887 patents in the prior art. Of this group, only the Caine and Flack patents were before the Patent Office. Geuder and Pfalzgraf cover large non-seamless, rigid, heavy gauge metal wash tubs and the court found they had greatly differing characteristics from those inherent in the thin wall plastic containers covered by #213. Moreover, the Geuder patent does not disclose either a single Z- or S-shaped stacker ring, but instead utilizes either a series of four S-shaped rings or alternatively two unconnected beads,3 one extending into the wash tub, and the other extending beyond the outside wall of the wash tub. In the Pfalzgraf patent the tub handles provide the primary stacking means while the Z-shaped ring in the side wall has no stacking function unless the tubs are tilted, and even then the ring is only partially operative. Amberg covers a paper container in which a solid paper-button in the bottom seems to be the primary stacking device. Amberg also shows a Z-shaped configuration at the lip of the cup, but there is no disclosure that it has a stacking function. Even if it did function as a stacker, its position at the rim would not anticipate the spacing of the Edwards ring. Nowak covers a plastic container but does not disclose that the curved rim at the top is a stacking ring, or if so that it reached the problem solved by positioning the stacker below the rim in #213.

Flack covers a thin walled plastic container, but the walls of the stacker ring are vertical and therefore do not have a Z-configuration. The vertical walls of Flack display the rigidity inherent in such a configuration and therefore do not have the shock absorbing quality of the 213 patent. The Caine patent covers a thin walled plastic container with a stacker ring which is neither Z-shaped nor continuous.

Miller, Continental's engineer, was working on developing thin wall plastic cups and food containers contemporaneously with Edwards. His DX-58 cup is relied on as anticipatory. The DX-58 cup has a segmented double stacking ring rather than a continuous single stacking ring. The effect of the double ring is to lessen rather than enhance the ability of the plastic cups to absorb shock. The result is that while the Edwards configuration reduces the probability of damage in handling and shipping, Miller's DX-58 cup actually increases the probability of damage. We think the court was not required to find that the claims of #213 read "squarely" or "clearly" on Miller's DX-58 cups. We accordingly see no merit in Continental's contention that Miller's activities amounted to a prior use which precludes the Edwards patent under Sec. 102(a).

Continental also claims that Miller's 1957 DX-133 half-gallon ice cream container anticipated the Edwards patent. The district court found that these containers were rectangular, had a double rim stacking configuration generally Z-shaped, but vertical at the four corners, and that these were not developed beyond the "initial design and testing phase." These findings have substantial support in the record. The court did not err in concluding that these...

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