Illinois Tool Works, Inc. v. Solo Cup Company, 18960.

• Decision Date: 12 June 1972
• Docket Number: No. 18960.,18960.
• Citation: 461 F.2d 265,172 USPQ 385
• Parties: ILLINOIS TOOL WORKS, INC., Plaintiff-Appellant, v. SOLO CUP COMPANY, Inc., Defendant-Appellee.
• Court: U.S. Court of Appeals — Seventh Circuit

172 USPQ 385, 461 F.2d 265 (1972)

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.

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

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.

Certiorari Denied June 12, 1972. See 92 S.Ct. 2441.

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).

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 '213 and '360 inventions was developed by Edwards prior to the public knowledge and use of the '213 patent.

On November 29, 1957, ITW filed a patent application describing several species of thin-walled plastic nestable containers having a continuous Z-shaped stacking facility.

In December 1957, ITW submitted samples of plastic drinking cups to Automatic Canteen Company. In the same month, Automatic Canteen placed an order for one million of these cups. By April 1958, 50,000 of these cups had been delivered to Automatic Canteen and were, presumably, placed in vending machines used by the public in April and May 1958.

In June 1958, Edwards developed a thin-walled plastic cup having an interrupted side-wall Z-shaped stacking facility.

On October 29, 1958, ITW filed a continuation-in-part application comprising all of the subject matter of the original application plus drawings and claims directed to plastic containers having different forms of interrupted side-wall Z-shaped stacking facilities.

The original application was intentionally abandoned on November 10, 1958 after the filing of the continuation-in-part application. Thereafter, in response to the Patent Office's requirement for restriction of May 1, 1959, ITW filed a divisional application claiming the container species embodying the continuous Z-shaped stacking facility. The divisional application eventually matured into the '213 patent in suit.

The continuation-in-part application retained claims embodying the interrupted Z-shaped stacking facility and eventually matured into the '360 patent.

The District Court placed primary reliance on a court decision not cited by either party. This was a decision by the Court of Customs and Patent Appeals (C.C.P.A.). Application of Jaeger, 241 F.2d 723, 44 C.C.P.A. 767 (1957). We think that Court overlooked a fact which sharply distinguishes that case from the one at bar.

In the Jaeger case, the earlier prior art patent of one of the co-inventors had been issued more than two years prior to the filing of the application in question. Therefore, there was a statutory bar under 35 U.S.C. § 102(b). In that case, the subject application was not filed within one year of the publication or issue date of the earlier patent. The broad language used by the Court in Jaeger must be limited to a case where the prior art reference is a statutory bar under 35 U.S.C. § 102(b).

The District Court, in the case at bar, quoted from an unsubstantiated statement by the Court of Customs and Patent Appeals in Jaeger, supra, in arriving at its opinion in the case at bar:

". . . (t)he law makes no distinction between prior art of an applicant\'s own making and the prior art of others."

Upon closer examination, this statement appeared first in Dix-Seal Corporation v. New Haven Trap Rock Company, 236 F.Supp. 914 (D.C.Conn., 1964), where the Jaeger Court used this reasoning without including the determinative sentence preceding it. At page 920, the Dix-Seal Court said:

"Once the year in which to prepare and file his application has passed, the employment of a standard of patentability less stringent against the first inventor than against . . . others would seem to impair, if not defeat congressional policy. There should be no distinction between prior art of the inventor\'s own making and that of others."

Therefore, the reliance of the District Court on Jaeger as applicable to the case at bar seems misplaced.

In the appeal before our Court, ITW alleges the District Court erred in its ruling on the statutory interpretation of 35 U.S.C. § 102(a). The District Court reasoned in its memorandum opinion of June 24, 1970, that to give the statute the construction ITW desires would provide the inventor of two similar devices a "preferential exemption" from the prior art statutes as to the later invention. We believe the District Court erred in its interpretation of 35 U.S.C. § 102(a).

ITW has urged upon appeal that 35 U. S.C. § 102(a) pertains only to the originality or novelty of an application for a patent and the subject matter covered under said application; that a patent issue only to the first and original inventor of the subject matter. The District Court rejected ITW's argument that the language of 35 U.S.C. § 102(a) must be read to mean "invented by others" as well as "known or used by others", as not persuasive.

The Supreme Court in Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390, 46 S.Ct. 324, 70 L.Ed. 651 (1926) contemplated the Congressional intent of R.S. 4886 which preceded 35 U.S.C. § 102(a). In Milburn, supra, one Whitford's patent was invalidated on the premise that one Clifford's patent containing a full description of the Whitford claim earlier than any date of invention claimed by Whitford, was evidence that Whitford was not the first inventor. The statutory basis of that decision was that Whitford's invention was not patentable because "known or used by others in this country, before his...