521 F.2d 609 (1st Cir. 1975), 75-1061, Shanklin Corp. v. Springfield Photo Mount Co.

Docket Nº:75-1061.
Citation:521 F.2d 609
Party Name:187 U.S.P.Q. 129 SHANKLIN CORPORATION, Plaintiff-Appellant, v. SPRINGFIELD PHOTO MOUNT COMPANY, Defendant-Appellee.
Case Date:August 20, 1975
Court:United States Courts of Appeals, Court of Appeals for the First Circuit
 
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521 F.2d 609 (1st Cir. 1975)

187 U.S.P.Q. 129

SHANKLIN CORPORATION, Plaintiff-Appellant,

v.

SPRINGFIELD PHOTO MOUNT COMPANY, Defendant-Appellee.

No. 75-1061.

United States Court of Appeals, First Circuit

August 20, 1975

Argued May 7, 1975.

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[Copyrighted Material Omitted]

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Charles E. Pfund, Boston, Mass., with whom Dike, Bronstein, Roberts, Cushman & Pfund and Robert E. Meyer, Boston, Mass., were on brief, for plaintiff-appellant.

Charles W. Bradley, New York City, with whom Robert J. Horn, Jr., Kenway & Jenney, Boston, Mass., and Cooper, Dunham, Clark, Griffin & Moran, New York City, were on brief, for defendant-appellee.

Before COFFIN, Chief Judge, McENTEE and CAMPBELL, Circuit Judges.

LEVIN H. CAMPBELL, Circuit Judge.

Plaintiff Shanklin Corporation sued Springfield Photo Mount Company for infringement of its patent, No. 3,583,888. The claimed infringing device, "Weldotron Model 5872 Automatic L Bar Package Forming System," is manufactured by Weldotron Corporation, which 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 appeals.

Shanklin's patented apparatus is an "in-line" packaging machine, a term used when the articles to be wrapped follow a straight-line path to and through the machine. The wrapping material, a thermo plastic film, must be heat sealable so that its edges can be sealed around the articles being wrapped, and it may be heat-shrinkable so that the packages

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formed by the machine can be passed onto a conveyor and through a hot air tunnel to be shrunk into a tightwrap. A supply roll of the film is located out of the straight-line path of the articles, and the film is drawn from the roll into the articles' path, where it makes a 90o turn to follow the remainder of the path. The film must be in a folded condition (longitudinally along its center) while on the roll or before it turns the corner. By being tracked over a u-shaped rod called an "inverting head," 1 the folded film is able to turn the corner into the article path and in the process effectively turned inside out so that its sides are separated and capable of receiving an article passing along the in-line article path through the inverting head. The article to be wrapped, passing between the film's open sides, presses against a previously made transverse seal across the film to advance the film into a sealing area. There an L-shaped bar ("L-sealer") seals the film longitudinally along the side of the article and transversely behind the article, thus forming a complete closure around the article. The film is severed at this transverse seal in such a way as to separate the completed package from the roll of film and also to provide the forward edge for the next article to be packaged. The articles can be passed either manually or automatically by a mechanical pusher.

The application for the Shanklin patent was filed on April 10, 1969. The Patent Office examiner initially rejected all claims, principally on the basis of Deans, et al. patent No. 3,420,035, which shows an in-line continuous-motion packaging machine. The examiner stated that it would be obvious to modify the Deans machine in accordance with prior art L-sealers (Hosso patent over sealing mechanism and Kral patent over feeding mechanism, which conveys articles to be packaged at right angle to the straight-line path of the film) to achieve the Shanklin claims. In particular, the examiner stated,

"The patent to Deans et al. discloses a packaging method and apparatus, the apparatus comprising film supply means 19 for feeding film transversely to the path of an article infeed conveyor and to an inverting head 22 having edges at approximately 45 degrees to each path (Fig. 1), which head folds the film about the articles so that longitudinal and transverse seams may be made to form packages, the transverse sealing means being used to draw film through the inverting head. While roll 20 is flat sheet, the apparatus of the patent to Deans et al. does fold the sheet to a V-shape as at 21, Fig. 1, prior to the inverting operation. The patent to Hosso shows that it is conventional, in apparatus for packaging articles in U-folded webs, to provide a generally U-shaped film spreader member 20, 24 having generally parallel upper and lower surfaces. In view of this teaching it would be an obvious modification, if such were desired, to bend member 22 of the patent to Deans et al. to a U-shape."

Shanklin responded that the Deans patent was deficient in its disclosure of the folding head that it showed the desired result of folding the web without showing how to accomplish the result. Shanklin pointed out that in the Deans machine the web could not be folded into a v-shape prior to an inverting operation as stated by the examiner. In any event, according to Shanklin, it was unnecessary for Deans to describe the folding mechanism in detail because folding heads are old in the art and have been frequently used to wrap flat film around a mandrel, or forming head, to form a tube while articles to be packaged are passed through the mandrel into pouches as they are formed. Shanklin stated that, by contrast, the present invention involved pre-folded film turned inside out around an inverting head, thus permitting

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the film to pass through the sealing machine in a single plane simply, efficiently, and without elaborate film guides a result which is particularly useful in L-sealers. Shanklin stated,

"Because of the structural requirements of the machine frame, L-sealers have used center folded film since they were first invented. Unfortunately, the center folded film has made it necessary to insert the product into the folds of film at right angles to the direction of travel of the film. The inverting head turns the prefolded web of film inside out thus permitting the product to be inserted in the same direction as the travel of the film through the sealing head while still using center folded film and thereby obtaining the advantages of the horizontal film webs. The product, in effect, is placed on the 'outside' of the webs of film which becomes the 'inside' upon passing over the inverting head. Prior to the invention of the inverting head, this was not possible."

The Patent Office examiner, in a "final" action, rejected the argument that the Deans folding head was insufficiently disclosed and again rejected all claims for the reasons stated originally. The inventor, F. Garrett Shanklin, subsequently had an interview with the examiner, and this was followed by an amendment submitting revised claims and containing remarks of what had transpired at the interview. The amendment states that at the interview Mr. Shanklin, in addition to showing three short motion pictures to demonstrate his machine, explained that it was a great improvement over prior art L-sealers, in which articles followed a right-angle path, because the Shanklin machine provided increased speed of operation and ease of adjustability for packaging articles of varying size. As for the Deans patent, Mr. Shanklin explained that when he first started to develop a straight-line L-sealer, he had tried a film feed and folding means similar to Deans's, using a roll of flat film mounted vertically and centered on a horizontally oriented and u-shaped folding head:

"This proved to be unsuitable for an L-type sealer where the film is advanced by the motion of a package pressing against a previously made seal in view of the fact that when the final transverse seal is made as to any given package all tension on the film is released and the film goes slack until the leading edge of the next succeeding package presses against the previously made seal. While the film in the experimental head would track as long as constant tension was maintained on the film, the film tended to slide down off of the folding head whenever the film was permitted to go slack. It will be noted that in Deans a constant tension on the film while the machine is in operation is provided by the constant movement of sealer bars 43 of end sealing mechanism 30 particularly in view of the fact that the sealing and severing step is not performed until 'just prior to the discharge thereof from the machine.' (Column 3, line 42). It was not until many months after this unsuccessful experiment that Mr. Shanklin conceived the present invention where prefolded film is advanced along a horizontal path to a film inverting head."

Thereafter, on June 18, 1971, a patent showing the Shanklin apparatus (but not the method) was allowed. The claims of the patent are recited in an appendix to this opinion.

The Shanklin machine was introduced in April 1969. In the fall of 1965 Weldotron introduced an automatic L-sealing packaging machine, based on Zelnick patent No. 3,429,100. This machine fed articles at right angles onto a straight film flow. Weldotron built its first in-line L-sealer in 1970 and in the spring of 1971 introduced its Model 5872 in-line L-Sealer, which is the machine at issue here and substantially the same as the Shanklin machine. Weldotron asserts

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that the Shanklin patent is invalid but does not contest infringement otherwise. 2

On November 25, 1969, about seven months after the filing for the Shanklin patent, and after Weldotron vice-president of engineering Seymour Zelnick had seen the Shanklin machine, Weldotron filed an application for a patent showing a large in-line L-sealer, with a u-shaped inverting mechanism almost identical to the Shanklin machine. A patent was later issued as Zelnick patent No. 3,619,970, which has been disclaimed by Weldotron since the trial of this case. That Weldotron's claims before the Patent Office were inconsistent with...

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