George P. Converse & Co. v. Thomas J. Lipton, Inc.

• Decision Date: 28 February 1957
• Docket Number: Civ. A. No. 209.
• Citation: 149 F. Supp. 105
• Parties: GEORGE P. CONVERSE & CO., Inc. and Harry F. Waters, Plaintiffs, v. THOMAS J. LIPTON, Inc., Defendant.
• Court: U.S. District Court — District of New Jersey

149 F. Supp. 105

GEORGE P. CONVERSE & CO., Inc. and Harry F. Waters, Plaintiffs, v. THOMAS J. LIPTON, Inc., Defendant.

Civ. A. No. 209.

United States District Court D. New Jersey.

February 28, 1957.

David M. Satz, Newark, N. J., for plaintiffs, John H. Glaccum, New York City, of counsel.

Dickson & Creighton, Donald R. Creighton, Hoboken, N. J., Campbell, Brumbaugh, Free & Graves, New York City, Dana M. Raymond, New York City, of counsel, for defendants.

Parnell & Krueger, Newark, N. J., for R. R. Williams, licensee and amicus curiae.

MODARELLI, District Judge.

Plaintiffs, George P. Converse & Co., Inc., a corporation of New York, and Harry F. Waters, a resident of that State, brought this suit against Thomas J. Lipton, Inc., a Delaware corporation with an established place of business in Hoboken, New Jersey, charging patent infringement under 35 U.S.C.A. §§ 67, 70 (now 35 U.S.C.A. §§ 281, 283, 284, 285).

Plaintiffs allege that on April 7, 1942, Patent No. 2,278,502 was issued to Harry F. Waters for a container and package. Waters asserts that Patent No. 2,262,480 was also issued to him for a thermal sealing machine on November 11, 1941. Plaintiff, George P. Converse & Co., Inc., contracted with Waters for the exclusive right to grant licenses under said patents and to bring suit to enforce same. It is alleged that defendant has been infringing and continues to infringe the patents aforementioned "by making, using and selling containers embodying the invention set forth in said Letters Patent No. 2,278,502 and by manufacturing said containers on thermal sealing machines embodying the invention set forth in said Letters Patent No. 2,262,480." Plaintiffs seek injunctive relief, an accounting, damages, costs, disbursements of this action, and counsel fees.

In its answer, defendant denied the allegations of infringement. Defendant states that long prior to the commencement of this action, namely, during 1944, and again during 1949, plaintiff Waters, without asserting infringement by defendant of any specific patent or patents, offered to license defendant under the patents here in suit. Defendant asserts it declined those offers. Additional defenses include averments that Patent No. 2,278,502 is invalid for lack of invention and prior art, reference being made to eleven United States patents and two foreign patents. Defendant challenges the validity of Patent No. 2,262,480 as well on ground of prior art, citing five United States patents in corroboration. The two patents are also challenged upon the following grounds: (1) Of failure of invention within the meaning of the patent laws; (2) that the subject matter would have been obvious to a person having ordinary skill in the arts concerned; (3) that the specifications of each of the patents are not in such full, clear, concise and exact terms as to enable any person skilled in the art to make use of same. Lastly, it is said that plaintiffs are estopped to assert infringement because of laches.

By way of counterclaim, defendant petitions for a declaratory judgment pursuant to 28 U.S.C. §§ 2201, 2202, adjudging the two patents and the claims thereunder invalid and void. Plaintiffs filed a reply denying the allegations of the counterclaim and praying its dismissal. The action was tried by the court without a jury.

Attention is directed to Waters' '502, the patent for container and package to which plaintiffs have limited their infringement allegations to Claims 1, 4, 5, and 6.¹

The patent was granted April 7, 1942, on application filed July 18, 1936. This patent teaches that a liquid-proof container, the walls of which consist of a double-thickness paper or foil, may be made in the form of a tube with an edge double-folded back upon itself and heat sealed. The object of the invention is to provide an improved seam construction by using a liquid-proof surface of the container as part of the seam. In the case of thermoplastic layer against thermoplastic layer, an interior surface which is contiguous or integral in nature can be produced. The four claims in issue reveal in large measure the scope of the invention.

It is apparent from a study of this patent that both the specifications and its claims are directed to the invention of a type of seam for a plural-ply envelope which would be liquid-proof. The question which arises out of the evidence is whether or not this purported improvement in structure and seams was sufficiently novel to constitute such an advance in the art as to be an invention. The problem which the '502 patent sought to solve was the elimination of the leakage from the overlap seam of conventional tubing caused by a capillary flow known technically as "wicking." As noted above, the Waters' patent proposed a folded-over face-to-face seam, various views of which are diagrammed in Figures 1 through 4 of the patent. The specifications do not disclose that the thermoplastic coating or lamination of the packaging material must constitute a self-sustaining film, nor does it reveal any optimum limits regarding the thickness of the inner coating or lamination of the material.²

The idea of a folded-over face-to-face seam is taught in Milmoe Patent No. 1,793,710, granted February 24, 1931. This patent relates to an invention of a package and process for forming the same. The process entails a duofold wrapping commonly consisting of an inner layer and an outer layer. Instead of the conventional overlapping edges, the invention draws the free edges away from the package and folds them back upon the outer surface thereof. By this method, heat may easily be applied to seal the free edges, creating an inner surface integral or continuous in nature to protect the contents from contact with any outer layer of the wrapping.

Likewise Becker Patent No. 1,953,097, issued April 3, 1934, also relates to a method of packaging articles in moisture-proof, air-tight containers. The process here employed a wrapper with a fusible coating thereon, the flattened edges of which are heat sealed and then bent over and against the body portion. Again, an inner surface integral in nature is formed to protect the contents. The invention specifically contemplated "various modifications and applications * * particularly as to the articles packaged, the exact wrapping material employed, the specific apparatus used, and the order and number of the steps, * * * without departing from the spirit of the invention or the scope of the appended claims."

The court is impressed that results substantially similar to those discussed above were achieved by inventions ascribed to several other earlier inventors. Suffice to mention the work of Smith Patent No. 1,754,839, granted April 15, 1930; Peterson Patent Nos. 1,137,280 and 1,217,818, issued April 27, 1915, and February 27, 1917, respectively. The folding and heat-sealing methods explained in the foregoing patents must be considered together with the complementary patents relating to wrapping materials compatible to such methods. Reference is made to Calvert Patent No. 1,989,632, issued January 29, 1935 (transparent film); Calvert Patent No. 2,273,560, issued February 17, 1942 (method of coating); Reynolds Patent No. 2,003,494, issued June 4, 1935 (laminated material).

The Waters' Patent '502 has been litigated in the United States Court of Claims in a suit against the Government. The Commissioner appointed by the Court of Claims reported to that Court on February 21, 1956, that Claims 5 and 6 are invalid over prior art. Harry F. Waters v. The United States H. Waters, Inc., Intervenor, No. 49,293 (Ct.Cl.1956). As of this date this report has not been confirmed. These two claims are pressed by plaintiffs in the case at bar. In a subsequent action, this patent was litigated in George P. Converse & Co., Inc., v. Polaroid Corporation, D.C.Mass.1956, 141 F.Supp. 631. It was there determined that the patent was invalid for lack of invention and prior art. An appeal from this judgment is pending. After having independently judged the issue of validity from the pleadings and evidence, this court is impelled to announce a similar conclusion on Claims 1, 4, 5, and 6 of Waters' Patent '502. Both structurally and functionally the elements of '502 have been found, by searching examination, to be combined in several earlier patents. Indeed, a patent of Waters' not in issue, takes note of the fact that the type of package used by Lipton with face-to-face seam was "well known" as early as 1935.³ Authorities agree that that which is obvious to persons skilled in the art, or involves mere substitution of materials, or the application of an old process to a new but analogous use is not invention. Electric Cable Joint Co. v. Brooklyn Edison Co., Inc., 1934, 292 U.S. 69, 54 S.Ct. 586, 78 L.Ed. 1131; Concrete Appliances Co. v. Gomery, 1925, 269 U.S. 177, 46 S.Ct. 42, 70 L. Ed. 222; Hollister v. Benedict & Burnham Mfg. Co., 1885, 113 U.S. 59, 5 S.Ct. 717, 28 L.Ed. 901.

As to the factor of commercial success, this is not a close or doubtful case which would admit that factor as determinative of the holding herein. The Supreme Court has cautioned that commercial success is an "unsafe criterion" of invention. McClain v. Ortmayer, 1891, 141 U.S. 419, 428, 12 S.Ct. 76, 35 L.Ed. 800. Accord, Paramount Publix Corp. v. American Tri-Ergon Corp., 1935, 294 U. S. 464, 55 S.Ct. 449, 79 L.Ed. 997; Kester Solder Co. v. Berry Solder Co., D.C. S.D.N.Y.1936, 14 F.Supp. 863, affirmed 2 Cir., 1937, 88 F.2d 1012. In the cases dealing with patents of designs as in textiles, commercial success has been accorded special weight. R. M. Palmer Co. v. Luden's, Inc., 3 Cir., 1956, 236 F.2d 496; Sanson Hosiery Mills, Inc., v. Warren Knitting Mills, Inc., 3 Cir., 1953, 202 F.2d 395, 396; Glen Raven Knitting Mills, Inc., v. Sanson Hosiery Mills, Inc., 4 Cir., 1951, 189 F.2d 845, 853; J. R. Wood & Sons, Inc., v. Abelson's, Inc., 3 Cir., 1934, 74 F.2d 895. But even in such design...