CUSTOM PAPER PRODUCTS CO. v. ATLANTIC PAPER BOX CO.

• Decision Date: 12 April 1972
• Docket Number: Civ. A. No. 69-1207-C.
• Citation: 340 F. Supp. 897
• Parties: CUSTOM PAPER PRODUCTS CO. and Howard F. Hincher, Plaintiffs, v. ATLANTIC PAPER BOX CO., Defendant.
• Court: U.S. District Court — District of Massachusetts

340 F. Supp. 897

CUSTOM PAPER PRODUCTS CO. and Howard F. Hincher, Plaintiffs, v. ATLANTIC PAPER BOX CO., Defendant.

Civ. A. No. 69-1207-C.

United States District Court, D. Massachusetts.

April 12, 1972.

Robert F. O'Connell, Dike, Bronstein, Roberts & Cushman, Boston, Mass., for plaintiffs.

Gerald Altman, Morse, Altman & Oates, Boston, Mass., for defendant.

OPINION

CAFFREY, Chief Judge.

This is a civil action for patent infringement. Jurisdiction of this court is invoked under 28 U.S.C.A. § 1338(a) and § 1400(b). Plaintiff Custom Paper Products Company (Custom) is a corporation organized under the laws of the State of California, and the individual plaintiff, Howard F. Hincher, is a resident of California. Defendant Atlantic Paper Box Company (Atlantic) is a corporation organized under the laws of the Commonwealth of Massachusetts.

Custom is co-owner of United States Patent No. 2,841,056, issued to Lee D. Hincher on July 1, 1958. Howard F. Hincher is a surviving son of Lee D. Hincher and is a co-owner of this patent. The machine covered by the claims of the Hincher patent prepares a strip of cardboard stock for use in forming the sides of heart-shaped candy boxes. The machine provides a flared edge along one edge of such a strip of cardboard. The purpose of the flared edge is to provide a sufficiently wide surface for the application of glue so that the flared edge may be successfully glued on to a flat surface serving either as the top or bottom of a heart-shaped box. This method of construction is less expensive than other means, such as, for instance, using L-shaped supports spaced around the perimeter of the box. For a period of years prior to April 3, 1968, when it purchased patent ownership, Custom was a licensee under the Hincher patent.

The case, by stipulation of counsel, was submitted to the court for resolution on the basis of affidavits and various other documentary exhibits, photographs, depositions, etc. No live testimony was proffered by either side. In addition to the customary denial of validity and infringement found in most patent cases, defendant herein affirmatively alleged the defense of laches and estoppel, on the ground that more than six years prior to the filing of defendant's answer (on January 6, 1970), the then title-holder of the patent, Lee D. Hincher, was aware of sufficient information to put him on notice that defendant's machine might be infringing his patent. The affirmative defense also alleges that discussions were held between Hincher and Atlantic for a time and thereafter discontinued, and that in reliance on the discontinuance of discussion and the absence of any patent litigation, defendant continued for more than six years to use its "secret" machine and to develop its business in products produced by the use of the machine.

Although not material, in view of the ruling that the patent is invalid for lack of invention, I rule that on the...