Anchor Hocking Corp. v. Eyelet Specialty Co., Civ. A. No. 4703.

• Decision Date: 09 May 1974
• Docket Number: Civ. A. No. 4703.
• Citation: 183 USPQ 87,377 F. Supp. 98
• Parties: ANCHOR HOCKING CORPORATION, Plaintiff, v. The EYELET SPECIALTY COMPANY, Defendant.
• Court: U.S. District Court — District of Delaware

377 F. Supp. 98

183 USPQ 87

ANCHOR HOCKING CORPORATION, Plaintiff, v. The EYELET SPECIALTY COMPANY, Defendant.

Civ. A. No. 4703.

United States District Court, D. Delaware.

May 9, 1974.

James M. Mulligan, Jr., of Connolly, Bove & Lodge, Wilmington, Del., for plaintiff.

Douglas E. Whitney and William H. Sudell, Jr., of Morris, Nichols, Arsht & Tunnell, Wilmington, Del., and Roy C. Hopgood and Stephen B. Judlowe of Sandoe, Hopgood & Calimafde, New York City, of counsel, for defendant.

OPINION AND ORDER

LATCHUM, Chief Judge.

This action is presently before the Court on a motion by the defendant Eyelet Specialty Company ("Eyelet") for partial summary judgment declaring United States Patent No. 3,744,655 on a "safety closure for containers" (the "utility patent") assigned to Anchor Hocking Corporation ("Anchor") to be invalid for double patenting. Jurisdiction is conferred by 28 U.S.C. § 1338(a).

The undisputed facts relevant to the present motion are as follows: On February 23, 1971, Frank Nixdorff, Jr. ("Nixdorff") filed a patent application (Serial No. 118,212), seeking a design patent on an ornamental design for a locking ring for a container closure.¹ The application issued on January 23, 1973 as United States Design Patent No. D 226,054 (the "design patent") and was assigned to Anchor from its date of issue.

On July 8, 1971, Nixdorff also filed a patent application (No. 160,737) seeking a utility patent on a "safety closure for containers." The application issued on July 10, 1973 for the utility patent in suit and was assigned to Anchor from its issue date.

The design patent, the first to issue, contained the following claim: "I claim: The ornamental design for a locking ring for a container closure, substantially as shown and described." The specification comprised the following figures:

accompanied by the following description:

"FIG. 1 is a side elevational view of a locking ring for a container closure showing my new design;

FIG. 2 is a top plan view;

FIG. 3 is a view looking from the right of FIG. 2; and

FIG. 4 is a side elevational view showing the side opposite that seen in FIG. 1 with a portion of the container being shown in broken lines for illustrative purposes only."

The utility patent, the second to issue, had fifteen claims, claim one of which is illustrative of the subject matter claimed:

"1. A locking ring for container closures comprising a body for fitting on the neck of a container, mounting means on said body for preventing relative rotation between said body and the container, a tab connected to and extending away from body, at least one locking tooth on said tab for engagement with locking elements on the closure, and a cut away portion between adjacent portions of said tab and said body to comprise a hinged connection of said tab to said body whereby said tooth may be moved up and down into and out of engagement with the locking elements on the closures, said body including a rim portion, said rim portion being made of a stiff non-pliable material which is maintained stationary when affixed to the neck of the container, said rim being less than a full circle having spaced ends disposed near each other, said tab being integral and coplanar with said rim, and said tab being disposed between said open ends of said rim and said tab whereby said rim and tab together extend substantially 360° around the container neck."

Its specifications contained a word description of the functional operation of the locking ring supplemented by a number of drawings including the following:

Eyelet contends that the issuance of the later utility patent in view of the earlier design patent amounts to double patenting. Double patenting is a doctrine of patent law which, most simply stated, prevents a single patentee from obtaining two patents on the "same invention." The doctrine was discussed in detail by the United States Supreme Court in Miller v. Eagle Manufacturing Co., 151 U.S. 186, 198, 14 S.Ct. 310, 315, 38 L.Ed. 121 (1894) where the Court stated:

"The result of the foregoing and other authorities is that no patent can issue for an invention actually covered by a former patent, especially to the same patentee, although the terms of the claims may differ; that the second patent, although containing a broader claim, more generical in its character than the specific claims contained in the prior patent, is also void; but that where the second patent covers matter described in the prior patent, essentially distinct and separable from the invention covered thereby and claims made thereunder, its validity may be sustained.

In the last class of cases it must distinctly appear that the invention covered by the later patent was a separate invention distinctly different and independent from that covered by the first patent; in other

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