Continental Can Company v. Old Dominion Box Company
| Decision Date | 08 April 1968 |
| Docket Number | Docket 31801.,No. 252,252 |
| Citation | 393 F.2d 321 |
| Parties | CONTINENTAL CAN COMPANY, Inc., Defendant-Appellant, v. OLD DOMINION BOX COMPANY, Inc. and Dacam Corporation, Plaintiffs-Appellees. |
| Court | U.S. Court of Appeals — Second Circuit |
William K. Kerr, New York City (David W. Plant, New York City, of counsel), for defendant-appellant.
Harold James, New York City (James & Franklin, New York City, on the brief), for plaintiffs-appellees.
Before WATERMAN and FEINBERG, Circuit Judges, and BARTELS, District Judge.*
Continental Can Company, Inc. appeals from a declaratory judgment of the District Court holding invalid for want of invention under 35 U.S.C.A. § 103, the patent known as A. J. Weiss Patent (2,990,997), relating to a rotary latching or locking action on wrap-around cartons or carriers, and also holding unenforceable under 35 U.S.C.A. § 135(c) any rights Continental might have had under the Weiss patent.
Old Dominion Box Company, Inc. was engaged in the business of manufacturing and selling cartons and Dacam Corporation was engaged in the business of designing and licensing packaging machinery and equipment (both will be referred to as Old Dominion). In instituting the action Old Dominion alleged not only that the Weiss patent was invalid and unenforceable but also that the patent known as H. Ganz Patent (2,986,857), relating to a machine for wrap-around packaging including the Weiss carton, was also invalid and unenforceable. Infringement of both patents has been conceded and neither party appeals from that portion of the judgment holding the Ganz patent invalid. The trial judge did not rule upon certain claims of invalidity and unenforceability and decided others adversely to Old Dominion. Old Dominion filed no cross-appeal but asserts that all additional grounds supporting the District Court's ruling upon invalidity and unenforceability may nevertheless be considered upon this appeal, although decided adversely or not considered by the District Court. It also asserts the right to attorney's fees, which in the absence of a cross-appeal we hereby deny. Standard Acc. Ins. Co. v. Roberts, 132 F.2d 794 (8 Cir. 1942); North Texas Producers Ass'n v. Metzger Dairies, Inc., 348 F.2d 189, 197 (5 Cir. 1965), cert. denied, 382 U.S. 977, 86 S.Ct. 545, 15 L.Ed.2d 468 (1966).
The basic issue in this case is the validity of the Weiss patent. We affirm the District Court's finding of invalidity, rendering unnecessary the disposition of Old Dominion's additional claims and also the resolution of the issue of unenforceability.
There are two general types of folding cartons, to wit: "set-up" cartons and "wrap-around" cartons. In the set-up carton the sidewalls are held in erected position by overlapping and locking along the sides, leaving the top open in order to permit the contents to be inserted, thus requiring a two-step operation. In the wrap-around type of folding carton the contents are placed on the flat carton blank, which is thereafter erected by being wrapped around the contents and secured in place by locking together overlapping closure panels, thereby completing the enclosure of the contents in a one-step operation.
There are also two types of "wraparound" cartons, i. e., "open-ended" or four-sided and "closed-ended" or six-sided, the only difference being the presence or absence of the end walls. In wrap-around packaging, at least of the open-ended type, a carton design which insures a secure, tight package is vital. In such cartons the group of containers about which the carton blank is to be wrapped is positioned by the machine on top of the central panel, or that central panel may be placed on top of the containers. As the carton and the containers advance through the wrapping machine, the latter automatically folds the two side panels of the carton against the sides of the containers, and then folds the two closure panels into overlapping position. The carton is thus wrapped in open-ended, rectangular form about its contents, and finally the overlapping closure panels are fastened together by glue, staples, interlocking parts formed in the overlapping panels, or a combination of two of these alternatives. Glue closures, metal staples and punch locking systems or devices in wrap-arounds were found unsatisfactory for various reasons. There was a need for a machine and a carton which permitted a rapid packaging operation producing a carton holding containers securely in the carton and one which could be easily opened and closed. A properly designed machine was just as essential as a properly designed carton, as evident from the use of the Ganz machine for the purpose of packaging the Weiss carton. The trial judge found that "in the matter of invention claimed by the defendant, those patents are closely intertwined." Similarly, the machine which was the subject matter of Arneson Patent No. 2,931,152, cited against the Ganz machine, was designed for use in packaging a carton (asserted by Old Dominion as anticipating the Weiss carton), depicted but not patented.
This invention relates to paperboard cartons and more specifically, to those which are wrapped around a group of containers. Weiss first conceived his invention on October 8, 1957, for which he filed an application on July 15, 1958, and thereafter received a patent on July 4, 1961. The patent describes a wrap-around carrier, typical examples being the familiar "six-pack" carriers of beer or soft drink cans or bottles.
The substance of the invention appears in Claim 1, where Weiss describes the design of a wrap-around carton with two side panels to be folded against the sides of the cans, and two closure panels to be folded into an overlapping position and then fastened by a rotary action of hooking a latching flap with the catches and tongues in one overlapping closure panel into the latch openings and slots in the other overlapping closure panel, thus producing automatic tightening. In his specifications Weiss stated that it was not too difficult to obtain fastening which produced tightness, but that it was rather difficult to combine the attribute of tightness with the unique facility of easily opening the wrap-around structure.1 In describing the action of the latch, Weiss said that "the rotary latching action can, if desired, produce an automatic tightening of the package as it cams or levers the closure panels into fully closed overlapping position"2 (emphasis added). The trial judge found that beyond the normal tightness of the container due to its dimensions and extent of overlap, the rotary action produces an automatic tightening effect of about 1/32 of an inch. Accordingly, the locking structure of the Weiss patent may or may not produce automatic tightening, depending upon the spatial relationship of the overlapping closure panels at the time the carton lock structure is pivoted. Only in Claim 1 does Weiss mention that "the action of the catch will produce an automatic tightening of the sidewalls against the contents as it cams or levers the closure panels into the fully closed overlapping position."3
A number of prior art patents were introduced into evidence, of which only seventeen were pertinent; eleven related to six-sided, folding cartons, and six related to open-end wrap-around cartons. The six wrap-around carton patents relied upon are: Gentry 2,786,572, Gentry 2,827,165, Andre 2,911,096, and Stone 2,975,891, all pertaining to cartons held together by punch locks; Grinspoon 2,798,603, pertaining to cartons held together by tuck flaps; and Currivan 2,922,561, pertaining to cartons held together by glue. These carton patents do not embody the same type of locking arrangement, nor suggest the combination of tongue, catches and openings employed by Weiss, although the design of the cartons is essentially the same.
The most important of the six-sided, folding carton patents relied upon by Old Dominion are Trogman 2,102,497, Morrison 1,104,821, Close 1,669,454, Pergande 2,060,240, Poe 2,316,362, Crary 2,419,391, Kells 2,572,159, Lighter 2,395,558, and the French Patent 1,063,058.4 There are also two instances of prior public use of the Ray Paper Box and the Robertson Paper Box, both six-sided wrap-around cartons completely enclosing their contents, which were made and sold in 1951 and 1954. They teach the use of overlapping panels, matching tongues with catches and openings in a locking arrangement for six-sided cartons essentially the same as the arrangement used by Weiss. With the possible exception of the Morrison and French patents, none explicitly recognized the automatic tightening effect resulting from the Weiss combination.
Locking arrangements, typical of the teachings found in the prior art folding cartons, appear in the Morrison and the French patents. Morrison, in his specifications, describes a form of corner locking of adjoining sidewalls of a set-up box by the insertion of tongues and catches on flaps on one sidewall into a set of slots on the adjoining sidewall, to enable the adjoining end to be quickly locked in a durable position. He states that the "straightening of the flap after insertion of the inner tongue 18 into the registering slot causes such tongue and the outer end portion of the flap to exert a leverage action between the inner end portion of the flap and the wall or side portion in which the slot is provided, whereby to draw the flap and wall closely together, and also to draw the end portion of the wall to which the flap is attached firmly against the end of the adjoining wall, as indicated at 19 in Fig. 3."5 The French Patent also refers to the closing of a box by the use of a tongue integral with the flap to be inserted into a slot in the fixed portion of the box so that the "tongue extends, in the opposite direction from that of its free end, a miter integral with the flap by a folding...
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