461 F.2d 265 (7th Cir. 1972), 18960, Illinois Tool Works, Inc. v. Solo Cup Co.

Docket Nº:18960.
Citation:461 F.2d 265, 172 U.S.P.Q. 385
Party Name:ILLINOIS TOOL WORKS, INC., Plaintiff-Appellant, v. SOLO CUP COMPANY, Inc., Defendant-Appellee.
Case Date:January 26, 1972
Court:United States Courts of Appeals, Court of Appeals for the Seventh Circuit
 
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Page 265

461 F.2d 265 (7th Cir. 1972)

172 U.S.P.Q. 385

ILLINOIS TOOL WORKS, INC., Plaintiff-Appellant,

v.

SOLO CUP COMPANY, Inc., Defendant-Appellee.

No. 18960.

United States Court of Appeals, Seventh Circuit.

January 26, 1972

Rehearing Denied March 24, 1972.

Certiorari Denied June 12, 1972.

See 92 S.Ct. 2441.

Page 266

John F. Flannery, Francis A. Even, Fitch, Even, Tabin & Luedeka, Chicago, Ill., for defendant-appellee.

Before DUFFY and HASTINGS, Senior Circuit Judges, and SPRECHER, Circuit Judge.

DUFFY, Senior Circuit Judge.

In this suit, plaintiff, Illinois Tool Works, Inc. (ITW), charges defendant, Solo Cup (Solo), with infringement of ITW's Edwards' Patents Nos. 3,139,213 ('213) and 3,091,360 ('360). Both patents at issue relate to the design and manufacture of nestable, expandable thin-wall plastic containers of unitary construction, whose usual use is in applications which require dependable automatic dispensing of such containers, singly and in an upright position.

The '213 patent discloses and claims a thin-walled plastic container including a side wall, a bottom, a rim and a continuous Z-shaped stacking facility located in the side wall below the rim.

The '360 patent discloses and claims a similar thin-walled plastic container but with an interrupted stacking facility located in the side wall below the rim.

These two patents have been before us on previous occasions. The District Court found the '213 patent to be valid and infringed in Illinois Tool Works, Inc. v. Continental Can Company, 273 F.Supp. 94 (N.D.Ill.1967). We affirmed, 397 F.2d 517 (7 Cir., 1968).

Page 267

The patents ('213 and '360) were before us in Illinois Tool Works, Inc. v. Sweetheart Plastics, Inc., 436 F.2d 1180 (7 Cir., 1971). The District Court, in the Sweetheart decision, determined that each of the patents was valid and infringed. (306 F.Supp. 364). We affirmed (436 F.2d 1180).

In 436 F.2d, at page 1182, we pointed out that the '213 patent had been challenged in a previous infringement suit in which, after full consideration of both anticipation and obviousness defenses raised therein, the District Court held the patent valid, and we affirmed in 397 F.2d 517 (7 Cir., 1968). We stated: "We again hold that the '213 patent is valid, unanticipated and nonobvious." (436 F.2d 1180, 1182). We further held ". . . The Edwards '360 patent was not anticipated by any of the inventions cited by defendant here or in the district court." (436 F.2d 1180).

With reference to the defense of obviousness, we stated: "Application of the foregoing method convinces us that the '360 patent is valid and nonobvious from the state of the prior art." (346 F.2d 1180, 1183).

We also said: "As is apparent from the descriptions of the asserted prior art which follow, none of these items sufficiently approximates the '360 invention to satisfy the narrow anticipation defense. Moreover, none of them, independently or in combination, renders the invention obvious." (436 F.2d 1180, 1183).

As to infringement, we said: "We agree with the district court that 'the accused . . . devices embody each of the elements specified in the patent."' (436 F.2d 1180, 1187). We then affirmed the District Court in all respects.

In the instant case, on January 23, 1970, Solo filed a motion in the District Court seeking partial summary judgment as to Claims 1, 2 and 3 of the '360 patent, on the ground that these claims were invalid for obviousness. The District Court, 317 F.Supp. 1169, denied Solo's motion for summary judgment but decided that the '213 cups delivered to Automatic Canteen in April 1958 and resold for public use in April and May 1958 constituted prior art to be considered on the trial on the question of validity of the '360 patent.

The District Court adopted Solo's interpretation of 35 U.S.C. § 102(a) and held the sale to and the use of the '213 cups by Automatic Canteen rendered Edwards' own invention "known or used by others" within the meaning of Section 102(a), therefore available as prior art against the '360 cups.

The District Court then granted ITW's alternative motion to certify the "prior art" issue. ITW then petitioned this Court for leave to file this appeal and we granted that petition.

The important issue to be decided here is whether the District Court was in error in holding that one's own invention once disclosed to the public is "prior art" against the same inventor's later related invention on which an application was filed less than one year from such public disclosure.

We must also consider whether public knowledge, sale and use by others of the '213 plastic cups is "prior art" against the '360 patent even though the '360 patent was filed within one year of such public knowledge, sale and use and the inventive subject matter common to both the...

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