Connecticut Paper Products v. New York Paper Co.

• Decision Date: 13 April 1942
• Docket Number: No. 4902.,4902.
• Citation: 127 F.2d 423
• Parties: CONNECTICUT PAPER PRODUCTS, Inc., v. NEW YORK PAPER CO.
• Court: U.S. Court of Appeals — Fourth Circuit

127 F.2d 423 (1942)

CONNECTICUT PAPER PRODUCTS, Inc., v. NEW YORK PAPER CO.

No. 4902.

Circuit Court of Appeals, Fourth Circuit.

April 13, 1942.

Karl W. Flocks, of Washington, D. C., for appellant and cross-appellee.

C. Paul Parker, of Chicago, Ill. (William Mercer Alexander, of Chicago, Ill., on the brief), for appellee and cross-appellant.

Before SOPER and DOBIE, Circuit Judges, and WARING, District Judge.

DOBIE, Circuit Judge.

This was an action brought by Connecticut Paper Products, Incorporated (hereinafter called plaintiff), against New York Paper Company (hereinafter called defendant), upon three patents, all involving related subject matter, in which it was claimed that defendant had infringed each of the three patents in suit. The first patent was for a paper drinking cup (Ericson patent No. 1940406, issued December 19, 1933, upon application of June 30, 1932); the second patent was for a metal device for dispensing such cups (Emerson patent No. 2206838, issued July 2, 1940, upon application of April 15, 1940); the third patent was for a design for a paper cup dispenser (design patent to the same Emerson, No. 118578, issued January 16, 1940, upon application of November 4, 1939).

Judge Coleman, in the District Court, 39 F.Supp. 127, 131, held that the first patent (paper cup) was invalid under the prior art; that the second patent (metal dispenser) was valid and infringed by defendant; that the third patent (design patent) was invalid on the score that this patent involved only functional features without any substantial ornamental features. From the final decree entered in the lower court, plaintiff duly appealed to this Court and defendant filed a cross-appeal. We shall consider the three patents separately, in the order above indicated.

The Ericson Patent for a Paper Drinking Cup.

Judge Coleman held that this patent is invalid under the prior art. This holding, we think, is eminently correct. Said Judge Coleman, in his opinion: "We have no hesitancy in finding that the Ericson patent is invalid because anticipated by Dickerson". Judge Coleman also discussed the obvious similarities between the Ericson cup and the Hogan cup. Any lingering doubt here, we feel, will be dispelled when the Ericson cup is compared with other paper cups ante-dating the Ericson patent.

As Judge Coleman well said in his opinion: "It is too well established to require citation of authorities that the object of the patent laws is to reward those who make some substantial discovery or invention which adds to the sum total of our knowledge and makes a step in the development of a given art. It was never the object of the patent laws to grant a monopoly for every trivial device, or for every shade or shadow of an idea which would naturally occur to any one skilled in the particular art. Such an indiscriminate creation of exclusive privileges would tend to discourage rather than stimulate invention."

See, also, Atlantic Works v. Brady, 107 U.S. 192, 2 S.Ct. 225, 27 L.Ed. 438; Weidhaas v. Loew's, Inc., 2 Cir., 125 F.2d 544.

And, as this Court (citing authorities therefor) said in Scott & Williams, Inc., v. Whisnant, 4 Cir., 126 F.2d 19, 23, decided February 17, 1942: "Again, the record makes clear that the * * * patent is in no sense basic or revolutionary. At best, it is no more than an ingenious improvement in a crowded field. * * * At the very least, we are justified in giving to the claims of the patent in suit and to the wording of the specifications, a narrow rather than a liberal interpretation."

There are three claims in the Ericson patent, all substantially similar. We quote the most elaborate of these, Claim 3: "A paper drinking cup having a pair of opposed walls, one of said walls being formed by a pair of overlapping wings, each of which is provided with a flap at its lower edge, the other wall having an extension secured to its lower edge, said flaps and extension being of the same width as that of their respective walls, said overlapping wings providing a thickened triangular portion the base portion of which is substantially the same width as that of said walls, said flaps and extension being folded together in superimposed relation and secured to the base portion of said triangular portion to provide a closed bottom."

Also we quote the first twenty-three lines of the Ericson patent:

"This invention relates to paper drinking cups, and more specifically to the flat or envelope type of cup which is adapted to be stored in stacks in dispensing machines and to be withdrawn therefrom one by one in a flat condition.

"It is an object of the present invention to provide an improved cup of this character, one wall of which is provided with a substantially thickened triangular portion, the base of which is disposed adjacent the closed bottom of the cup and which gradually decreases in width towards the mouth of the cup. By means of such a structure, my improved cup may be readily opened by merely pressing the opposite side edges thereof.

"Another object of the present invention is to provide an improved cup of this character, the bottom portion of which will remain substantially flat while stored in the dispensing machine so that the cup may be easily taken therefrom.

"A further object of the present invention is to provide an improved cup of this character which is relatively simple in construction and hence may be cheaply and easily manufactured."

We append also the drawing which accompanied the Ericson patent, together with lines 35-42 of the patent which seek to explain the drawing:

Also, we quote from Judge Coleman's opinion, since we think they are important, some statements as to the obvious discrepancies between the description of the Ericson cup in the patent and the Ericson cup model actually introduced in evidence: "Ericson's patent drawings and specifications describe a triangular overlap and specify that the base of the triangle is the full width of the bottom of the cup; whereas the Ericson cup model actually introduced in evidence does not have the edge of the overlapped side coming down and meeting the corresponding edge of the bottom overlap. Furthermore, the Ericson model has a folded down portion on one of the top edges, giving a double reinforced part that is not shown in the patent. Also, what is more important, the model is molded in an open position, and dispensed from nested stacked formation as is the Dickerson cup; whereas the Ericson patent stresses the adaptability of the cups to having a plurality of them, `stored in a dispensing machine, one upon another, with the bottom of the lowermost cup of the stack exposed so that it may be grasped by the finger of the user and withdrawn from the dispensing machine in flattened condition'."

Probably the basic claim of the Dickerson patent is Claim 3, which reads: "As a new article of manufacture, a paper drinking cup having its body portion in self-extended substantially rounded form, said body from its open mouth tapering in wedge-like form to a watertight bottom closure made by a straight edge transverse fold-up of the cup material secured to the body wall, the line of fold of said fold-up being of sufficient length to provide a base for resting the cup against a finger of the user, when held to filling position in his hand."

Also, we append a drawing of the Dickerson cup:

Below are appended drawings of six other patents for paper drinking cups, all granted before the Ericson patent:

In the light of what has already been said, the drawings incorporated in this opinion, and the observations in Judge Coleman's opinion, we think it is apparent that the Ericson patent displays no essential novelty that amounts to patentable invention. Plaintiff, we think, has greatly exaggerated both the novelty and the importance, in the Ericson cup, of the triangular overlap tapering from the bottom to the top of the cup. We hold, accordingly, that the Ericson patent in suit is invalid under the prior art.

The Emerson Mechanical Dispenser Patent.

This patent was held by Judge Coleman to be valid and infringed by the device of defendant. We believe that this patent, too, is invalid under the prior art for lack of patentable novelty, since the device in question discloses not a new and patentable combination but rather a mere aggregation of elements, which were old and well known. This distinction between a new combination, which is patentable, and...