Dennison Mfg. Co. v. Ben Clements and Sons, Inc.
| Decision Date | 14 March 1979 |
| Docket Number | No. 74 Civ. 979 (CES).,74 Civ. 979 (CES). |
| Citation | 467 F. Supp. 391 |
| Parties | DENNISON MANUFACTURING COMPANY, Plaintiff, v. BEN CLEMENTS AND SONS, INC., Defendant. |
| Court | U.S. District Court — Southern District of New York |
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James & Franklin, P. C., New York City, for plaintiff; Harold James, Robert L. Epstein, New York City, of counsel.
Blum, Moscovitz, Friedman & Kaplan, New York City, for defendant; Lawrence Rosenthal, William L. Botjer, New York City, of counsel.
This is a suit for infringement of certain claims of a patent owned by plaintiff Dennison Manufacturing Company ("Dennison"), relating to clips of attachments as exemplified by the familiar molded plastic attachments used in retailing operations to affix tags to garments on display. The case was tried without a jury, and this opinion comprises the Court's findings of fact and conclusions of law pursuant to Rule 52(a), F.R.Civ.P.
Dennison is a corporation of the State of Nevada, with a place of business in Framingham, Massachusetts. It owns the patent in suit by virtue of an assignment by the patentee, Gordon B. Lankton1 ("Lankton").
Defendant Ben Clements & Sons, Inc. ("Clements") is a corporation of the State of New York, and at the time this suit was brought maintained a place of business in New York City. Clements imports and sells devices which allegedly infringe plaintiff's patent.
Jurisdiction and venue are not challenged. This is an action arising under the patent laws of the United States, 35 U.S.C. §§ 271 and 281, with jurisdiction based on 28 U.S.C. § 1338(a) and venue on 28 U.S.C. § 1400(b).
The Lankton U.S. Patent 3,733,657,2 issued May 22, 1973 on an application filed May 25, 1972, concerns a plurality of attachments, each of which is to be associated individually with an object by being inserted through that object. The attachments are formed into an easily handled assembly by being secured together not only at those ends which are to be inserted through the object, as in the prior art, but also at their opposite ends, thereby preventing the individual attachments from tangling while they remain part of the assembly or clip. The second connection, that is, the one between the ends of the attachments that do not pierce the object, is designed to be more readily frangible in torsion than in tension, to facilitate the separation of an attachment from the clip after the attachment has been associated with an object, leaving the remaining attachments secured to one another.
Although the claims of the patent in suit claim more broadly, Lankton's original conception related to plastic molded attachments used in "marking" operations. In retail merchandising, it is often desirable to mark objects, such as garments displayed on a rack, to convey information to the consumer such as brand name, price and size. Over the years, many different means have been devised for and used in marking operations, but for the purpose of attaching a tag to a garment displayed on a rack, the most widely used device has been some form of a "hang tag" which allows the tag to hang from the garment. At the time Lankton entered the picture in early 1972, Dennison was marketing (and still markets) a hang tag attachment known commercially as the "Swiftachment", which was introduced in 1965. It consisted of a number of plastic attachments integrally molded into a clip or assembly. Each attachment was comprised of a "T-bar" (the end which was inserted through an object by means of a hollow needle), an elongated section or "string", and at the opposite end of the string from the T-bar, an enlarged portion or "paddle", which was designed to prevent the tag once attached from falling off the string. Each attachment was joined at the T-bar end to a strip of plastic known as a "runner bar" by a sturdy connection which was designed to be cut by a blade within an attaching device, the entire assembly having been manufactured in a single molding operation. The paddle ends were not joined in any fashion. After being molded, the plastic assembly was stretched in order to impart strength and flexibility to the strings, a process which at first took place in the mold by moving the ends of the mold apart, and later, because of cost advantages, outside the mold in a separate stretching apparatus that grasped the ends of the attachments and pulled them in opposite directions. While out-of-the-mold stretching achieved production advantages over the previous method of in-the-mold stretching, it also presented a problem — often when a clip was ejected from the mold one or more of its strings or paddles would deviate from the parallel orientation in which it was molded, with the result that the stretching apparatus would fail to grasp that paddle, leaving the string unstretched. Clips with just one unstretched string were not being shipped by manufacturers to customers at the time of Lankton's invention. Another, more serious problem, not particularly associated with out-of-the-mold stretching, was prevalent with the Swiftachment devices, as with its precursors — the stretched strings had a tendency to tangle with other strings on the same clip and with the strings of other clips when packed in a box for shipment. It was to this problem that Lankton's invention specifically addressed itself.
The specification of the patent in suit relates several objects of Lankton's invention, which can be summarized as to provide a structural solution to the tangling problem. Analyzing the mechanics of a normal attaching operation utilizing the Swiftachment-type device, Lankton realized that if there existed a connection between the paddles of the attachments in a clip, that connection would be subjected to a combination of torsion and tension by the normal movements of the operator in attaching a tag to a garment. Thus, the structure Lankton devised was one that was designed to resist strong dislocative forces during manufacturing and handling, thus eliminating the tangling problem, but to break easily when twisted, in the course of an attaching operation. As indicated in the specification, Lankton thought the normal spacing between paddles, about 0.04 inch, militated against the attainment of a connection with the desired characteristics, so he devised a construction to shorten the distance, in effect making the connection more torsion-sensitive. Lankton provided protrusions on the face of each paddle surface, with the result that the filamentary connection spanned only 0.005 inch and consequently readily yielded to torsion.
Not all of the claims of the patent in suit, however, are limited to Lankton's conception. In addition to the protrusion/short filament embodiment, there are claims which cover generally clips of attachments joined at or near both ends by connections which are severed at different times and by different means, one connection being more readily severable than the other. As Clements' devices do not utilize the precise form of connection which Lankton conceived, the claims which defendant is accused of infringing are claims which are not limited to the protrusion/short filament embodiment.
Defendant imports from Korea, Japan and Italy and sells in the United States plastic molded assemblies of attachments utilizing one or more thin filamentary connections between the paddles. These are the alleged infringing devices. Clements denies infringement and asserts that the claims in suit are invalid because they are indefinite, because they "overclaim", and because they are obvious in light of the prior art. Even if the claims in suit are not invalid on any of these grounds, defendant argues, they may not be sued upon because they were obtained with deceptive intent. These are the issues to be decided in this opinion. In addition, defendant has filed a countersuit alleging patent misuse and antitrust violations, issues which have not yet been tried, and await the outcome of this suit. Damages are also reserved for later trial or accounting.
The patent in suit contains 22 claims setting forth Lankton's invention and variations thereon, as well as methods of manipulating the assemblies of attachments. Defendant has not been accused of infringing all of these claims, and there is a threshold question as to which claims are in suit.
The Pre-Trial Order in this case listed as an issue to be tried whether the following claims are infringed by defendant: Claims 1, 2, 3, 4, 5, 7, 9, 10, 11, 14, 15, 16 and 17. However, in its Trial Brief and again in its Post-Trial Brief, plaintiff stated that it was confining its case "without prejudice" to proving infringement of Claims 1, 2, 4, 5, 7, 10, 11, 16 and 17, thus omitting Claims 3, 9, 14 and 15 from its proof. We therefore will make no determination of whether Claims 3, 9, 14 and 15 are infringed. But that does not end the matter. Defendant asserted in its answer to the complaint in this case the affirmative defense of invalidity of the claims in suit. Under Rule 8(c), F.R.Civ.P., we are required to treat a mistakenly designated defense as a counterclaim where justice so dictates. Applying this standard, and treating the affirmative defense of the claims' invalidity as a properly designated counterclaim, we think defendant is entitled to an adjudication of whether all claims which it has been accused of infringing are valid, including those which plaintiff has chosen to omit from its proof. Since defendant arguably does infringe the omitted claims, there exists a genuine controversy as to the validity of the claims and that issue ought to be decided. Thus, we will consider the validity of all of the claims denominated in the Pre-Trial Order, which are set forth in full in the margin.3
Claims 1, 2, 3, 4, 5,...
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