WR Grace & Co. v. Park Manufacturing Company

• Decision Date: 29 March 1974
• Docket Number: No. CV 70-131-D.,CV 70-131-D.
• Citation: 378 F. Supp. 976
• Parties: W. R. GRACE & CO., a corporation, Plaintiff, v. PARK MANUFACTURING COMPANY, a corporation, et al., Defendants.
• Court: U.S. District Court — Eastern District of Illinois

378 F. Supp. 976

W. R. GRACE & CO., a corporation, Plaintiff, v. PARK MANUFACTURING COMPANY, a corporation, et al., Defendants.

No. CV 70-131-D.

United States District Court, E. D. Illinois.

March 29, 1974.

F. Daniel Welsch, Graham, Meyer, Young, Welsch & Maton, Danville, Ill., George T. Mobille and George M. Sirilla, Cushman, Darby & Cushman, Washington, D. C., John J. Toney, Duncan, S. C., for plaintiff.

John B. Jenkins, Gunn, Hickman, Kesler, Jenkins, & Vogel, Ltd., Danville, Ill., and Michael G. Berkman, Kegan, Kegan & Berkman, and Thomas F. McWilliams, Chicago, Ill., for defendants.

OPINION AND FINDINGS OF FACT AND CONCLUSIONS OF LAW

WISE, Chief Judge.

This matter is before the Court on a complaint for infringement of three United States patents owned by the plaintiff, W. R. Grace & Co. The patents relate to double wall, hollow plastic containers made by blow molding methods and utilizing specially designed apparatus. Specifically, the patent claims in issue are claims 1-6 of U. S. patent No. 3,317,955, granted May 9, 1967, and covering the apparatus for making the containers; claims 1, 2 and 4 of U. S. patent No. 3,441,071, granted April 29, 1969, and covering the containers themselves; and claims 2-6 of U. S. patent No. 3,452,125, granted June 24, 1969, and covering the methods for making the containers.

As their basic defense against these charges of infringement, the defendants have asserted that the patent claims are invalid because the subject matter they cover was anticipated or rendered obvious to one skilled in the art by prior teachings of certain patents and publications, or had been previously used on a commercial scale. Additionally, the defendants have asserted that the patent claims are unenforceable because the patentees did not disclose the existence of a certain Italian patent to the Patent Examiner.

A trial of these issues was had before the Court without a jury, commencing June 12, 1972, during which extensive evidence was introduced by all parties and following which such parties submitted briefs as well as proposed findings of fact and conclusions of law.

INFRINGEMENT

The record discloses that the defendants have manufactured and sold double wall, hollow plastic containers made by a blow molding method, as evidenced by exemplary containers and by photographs with related testimony from the defendants describing the apparatus and method used. Such evidence was analyzed at trial through expert testimony and shown to fully conform with the claimed apparatus, containers, and methods of the aforesaid patent claims, thus establishing infringement in accordance with the applicable statute, 35 U.S.C. Section 271.

The following are applicable cases in this Circuit to the effect that infringement of a patent is established when the patent owner demonstrates that the alleged infringer has made, used or sold a product, process or apparatus coming within the scope of the claimed inventions. Reese v. Elkhart Welding & Boiler Works, Inc., 447 F.2d 517, 527 (7th Cir. 1971) and University of Illinois Foundation v. Block Drug Co., 133 F. Supp. 580, 584 (E.D.Ill.1955), aff'd. 241 F.2d 6 (7th Cir. 1957), cert. denied 354 U.S. 922, 77 S.Ct. 1382, 1 L.Ed.2d 1437, for the product; LaSalle Street Press v. McCormick & Henderson, Inc., 445 F.2d 84, 94 (7th Cir. 1971) and Binks Mfg. Co. v. Ransburg Electro-Coating Corp., 281 F.2d 252, 258 (7th Cir. 1960), cert. granted 364 U.S. 926, 81 S.Ct. 353, 5 L.Ed.2d 265, but dismissed 366 U.S. 211, 81 S.Ct. 1091, 6 L.Ed.2d 239, for the process; and Artmoore Co. v. Dayless Mfg. Co., 208 F.2d 1, 4 (7th Cir. 1953), cert. denied 347 U.S. 920, 74 S.Ct. 518, 98 L.Ed. 1075, and Kalo Inoculant Co. v. Funk Bros. Seed Co., 161 F.2d 981, 988-989 (7th Cir. 1947), rev'd. on other grounds 333 U.S. 127, 68 S.Ct. 440, 92 L.Ed. 588, for the apparatus.

The evidence of record on infringement also shows that it was deliberate in that the defendants made the infringing containers with knowledge of the pendency of the plaintiff's patent applications and the subsequent grant therefrom of the patents here in suit. Moreover, such testimony showed lack of any attempts on the part of the defendants to develop their own competitive but non-infringing containers and, instead, they determined to copy the Grace container then on the market.

Where claims are infringed in a willful and deliberate manner, sanctions are provided by 35 U.S.C. Section 284 and 285. Copease Mfg. Co. v. American Photocopy Equipment Co., 298 F.2d 772, 783-784 (7th Cir. 1961); Dixie Cup Co. v. Paper Container Mfg. Co., 169 F.2d 645, 650-651 (7th Cir. 1948), cert. denied 317 U.S. 686, 63 S.Ct. 260, 87 L.Ed. 550; Maxon Premix Burner Co. v. Mid-Continent Metal Products Co., 279 F.Supp. 164, 181 (N.D.Ill.1967); Zysset v. Popeil Brothers Inc., 167 F.Supp. 362, 368, 369 (N.D.Ill.1958), aff'd. 276 F.2d 354 (7th Cir. 1960), cert. denied 364 U.S. 826, 81 S.Ct. 62, 5 L.Ed.2d 54.

PRIOR ART

The prior art developed by expert testimony at trial centered upon various combinations of two Italian patents, Nos. 654,579 (Fiori) and 597,021 (Fiorin), two U.S. patents, Nos. 3,078,508 (Martin) and 2,687,157 (Cowan), as well as an article published in the magazine, "Product Engineering" and a prior container called the "Pinckney box". Suffice it to say that the prior patents, at best, merely offered the inventors a starting point for the further work that was necessary to conceive the inventions. Furthermore, the "Product Engineering" article is no more relevant than the patents, and the Pinckney box was an experimental container constituting nothing but an abandoned experiment.

The plaintiff also argued with respect to the aforesaid Fiori Italian patent No. 654,579 that, for the purpose of anticipation, it is limited only to what is clearly patented by its claims because of a failure on the part of the defendants to prove that it was reduced to a printed publication either earlier than the date of the inventions in suit or more than one year prior to the date of filing of the patent applications thereon. Bendix Corporation v. Balax, Inc., 421 F.2d 809, 813 (7th Cir. 1970), cert. denied 399 U.S. 911, 90 S.Ct. 2203, 26 L.Ed.2d. 562; Reeves Brothers, Inc. v. United States Laminating Corp., 282 F.Supp. 118, 136-137 (E.D.N.Y.1968), aff'd. 417 F.2d 869 (2nd Cir. 1969); Carter Products, Inc. v. Colgate-Palmolive Co., 130 F.Supp. 557, 566 (D.Md.1955), aff'd. 230 F.2d 855 (4th Cir. 1956), cert. denied 352 U.S. 843, 77 S.Ct. 43, 1 L.Ed.2d 59. However, regardless of whether that Italian patent is limited to its patent claims or expanded to include its specification and drawings, it fails to anticipate because, inter alia, it does not disclose a container made in accordance with blow molding techniques using a plastic tube (known in the art as a "parison"), and male and female mold sections in the manner contemplated by the claims here in suit.

In summation, the prior art relied upon by the defendants for the purpose of anticipating or rendering obvious the methods of claims 2-6 of U.S. patent No. 3,452,125 does not teach the claimed method of blow molding double wall, hollow plastic containers with or without an integral hinge by the use of a tubular parison, male and female mold sections, and the application of a vacuum between the parison wall and the interior of the female mold section so as to obviate the threat of parison collapse engendered by the protruding male mold section as it closes well into the female mold section; neither does the prior art relied upon by the defendants for the purpose of anticipating or rendering obvious the apparatus of claims 1-6 of U.S. patent No. 3,317,955 teach the claimed combination of blow molding apparatus including male and female mold sections having means for producing an integrally hinged plastic double wall, hollow container and vacuum apparatus used therewith; nor does the prior art relied upon by the defendants for the purpose of anticipating or rendering obvious the containers of claims 1, 2 and 4 of U.S. patent No. 3,441,071 teach the claimed plastic blow molded double wall, hollow container having an integrally hinged top and bottom and wherein the container is made from a single tubular parison with the resulting hinge being thinner than the integral container walls. Even if one skilled in the art had before him at the time of the inventions in suit, the teachings of the prior art relied upon by defendants and particularly, Fiori, Fiorin, Martin, Cowan and the "Product Engineering" article discussed above, such teachings would not have disclosed or rendered them obvious to him.

Applicable case law in this Circuit holds that proof of patent invalidity must be established by clear and convincing evidence which is absent from this record. See Malsbary Manufacturing Co. v. Ald, Inc., 447 F.2d 809, 812 (7th Cir. 1971); Ortman v. Maass, 391 F.2d 677, 681 (7th Cir. 1968); Walt Disney Productions v. Niles Communications Center, Inc., 369 F.2d 230, 234 (7th Cir. 1966). Furthermore, this premise is bolstered where, as here, the earlier disclosures relied upon as prior art offer nothing more than a starting point for further experiments, General Foods Corp. v. Triangle Mfg. Co., 253 F.2d 227, 230 (7th Cir. 1958).

Positive tests bearing on validity and applicable in this Circuit are also disclosed in the record. These are (1) that the patented inventions fulfilled a long-felt need in the industry to which they apply, Rex Chainbelt, Inc. v. General Kinematics Corporation, 363 F.2d 336, 337 (7th Cir. 1966); (2) that the patented inventions met with substantial success upon their introduction to market, Rex Chainbelt, Inc. v. General Kinematics, supra, at page 337; Continental Can Co. v. Anchor Hocking Glass Corp., 362 F.2d 123, 124 (7th Cir. 1966); (3) that the defendants' attack upon the inventions as being "obvious" is viewed from the benefit of hindsight, long after the fact of invention, Walt...