Diamond International Corp. v. Maryland Fresh Eggs, Inc.

• Decision Date: 25 April 1974
• Docket Number: Civ. A. No. 20809.
• Citation: 374 F. Supp. 1223,182 USPQ 147
• Parties: DIAMOND INTERNATIONAL CORPORATION, a corporation of Delaware, v. MARYLAND FRESH EGGS, INC., a corporation of Maryland.
• Court: U.S. District Court — District of Maryland

374 F. Supp. 1223

182 USPQ 147

DIAMOND INTERNATIONAL CORPORATION, a corporation of Delaware, v. MARYLAND FRESH EGGS, INC., a corporation of Maryland.

Civ. A. No. 20809.

United States District Court, D. Maryland.

April 25, 1974.

John W. Avirett, II and Paul V. Niemeyer, Baltimore, Md., Karl W. Flocks and Sheridan Neimark, Washington, D. C., and Sumner S. Kittelle, New York City, for plaintiff.

Benjamin C. Howard, Baltimore, Md., Truman A. Herron and Herbert C. Brinkman, Jr., Cincinnati, Ohio, for defendant.

WATKINS, Senior District Judge.

This is an action brought by Diamond International Corporation (hereinafter sometimes "Diamond" or "Plaintiff") against Maryland Fresh Eggs, Inc. (hereinafter sometimes "MFE" or "Defendant") for alleged infringement of United States Patent 2,990,094 (Reifers '094) issued June 27, 1961, on a continuation of a copending application filed December 16, 1953, which was in turn a continuation-in-part of an application filed May 24, 1952, for a "Molded Pulp Egg Carton." It is a product patent.

The Patent Office has determined that Reifers '094 is entitled to the filing date of May 24, 1952.

Dolco Packaging Corporation (hereinafter sometimes "Dolco") by agreement dated June 26, 1969, undertook to save MFE harmless with respect to Diamond's claim in this action; its defense is open and avowed; and it has engaged and is paying the (very able) attorneys who are defending MFE.¹ It is jointly owned by Olson Brothers, Inc. (hereinafter sometimes "Olson") and Dow Chemical Company (hereinafter sometimes "Dow"), neither of which is a party to this suit.²

Jurisdiction and venue are admitted and were established.

In Diamond International Corporation v. Walterhoefer, 289 F.Supp. 550 (D.Md. 1968) (hereinafter "Walterhoefer"), the author of this opinion held Reifers '094 to be valid and infringed.³ No appeal was effected to the United States Court of Appeals for the Fourth Circuit.

Plaintiff, of course, contends that the Walterhoefer decision is controlling. Defendant (equally), of course, contends that it is not. In general, Defendant urges that the decision in Walterhoefer was probably wrong, but that even if it were not, subsequently developed additional information, including additional patents; later decisions with respect to combination patents and fraud on the Patent Office; and the physical and geometrical properties of the accused structure should now lead to a different result. Alternatively, Defendant contends that Reifers '094, if valid, is so limited that it does not read on the accused device. Plaintiff counters that the accused device is the equivalent of that claimed in Reifers '094.

This litigation also has been vigorously contested.⁴

The claim in suit read as follows:

"1. In an integral and nestable egg carton made of relatively flexible molded pulp, a cellular tray portion having a front side, a rear side, and two ends, an inverted dished cover hinged to said tray portion, means for latching said tray portion to said cover with a latch located above said tray portion and extending completely through said cover from the inside to the outside, said tray portion having its front side strongly tied to its rear side by a plurality of spaced cell-forming partitions extending generally parallel to said tray portion ends, said partitions acting as means for preventing spreading of said front side from said rear side, said tray portion including egg cells adjacent but below the latching means, said inverted dished cover having a planar top, a front side, a rear side, and two ends, said front side being connected to said rear side only by said two ends and said planar top so that the front side is relatively flexible and is not rigidly tied to said rear side intermediate the ends of said front side of said cover having an opening formed therein through which the latch is adapted to extend completely from the inside to the outside, said dished cover being hinged to said tray portion along its rear side, a latch holding flap hinged to the front side of said tray portion, the hinge line connection of said cover with said tray portion and the hinge line connection of said latching flap with said tray portion being maintained parallel by said tying partitions even when the tray portion is loaded with eggs, said latch on said latching flap being located on one side of said tray portion which is opposite to the side where the cover is connected to the tray portion so that both the cover and the latching flap are each connected to the tray portion when the carton is open, said molded pulp egg carton being integrally formed with the latching flap, the upper edges of the two sides and the two ends of the tray portion, the upper edges of the two sides and two ends of the cover generally in the same plane and with the latch extending downwardly from the underside of the latching flap which is hinged to the front side of the tray portion and said latch being relatively close to the tray portion as compared with the opening in the front side of the cover which is relatively remote from the tray portion; when the tray portion is loaded with eggs and the latching flap is turned upwardly and the cover portion is rotated in a direction to telescope over the latching flap, the two hingelines are relatively immovable but the front side of the cover may flex, whereby the loaded egg carton may be latched by simply rotating the latching flap upwardly and inwardly and rotating the cover upwardly and around the latching flap while the structural features maintain the geometric relation of the latch on the latching flap to the opening in the cover until the front side of the cover engages the latch on the latching flap and is cammed thereover until the latch on the latching flap registers with the opening in the front side of the cover whereupon the latch passes through the opening in the cover from the inside to the outside to effectively latch the carton.

"2. A nestable molded pulp egg carton in accordance with Claim 1, wherein the opening in the front side wall of said cover extends to the planar portion thereof and the latch on said latching flap is near the edge thereof which is remote from the hinge connection of the latching flap with the tray portion."

FORMATION OF CARTONS

Plaintiff's cartons are integrally⁵ produced by a process of secretion of liberated wood or waste paper fibers, by suction imposed within a die of desired configuration, upon the exterior of the die. Defendant's cartons are⁶ of foamed polystyrene. The process begins with solid polystyrene in bead form. The beads are thermoplastic, and become a fluid consistency as heat is applied externally to an extruder. A gas (Freon) under high pressure is charged into the molten polystyrene in the extruder and diffuses into the polystyrene. Subsequently, the mass is partially cooled under the maintained pressure, and the mass is squeezed or extruded continuously out of a narrow circular annulus into the atmosphere in the form of a tube.

Upon release of pressure on extrusion, the diffused gas, aided by the prior incorporation of a nucleating agent, forms a myriad of tiny bubbles in the tube.

The tube passes over a cooled mandrel which expands the diameter of the tube and coincidentally causes the tube material to be stretched circumferentially, building what is called transverse axial orientation into the material and strengthening it. Coincidentally the tube is subjected to longitudinal stretch by means of pull rolls, which also improves the toughness of the material.

The moving tube is slitted longitudinally by a stationary knife at a point beyond the stretching mandrel. The slitted tube is then laid open as a continuous flat sheet and is rolled upon itself as roll stock.

To make an egg carton, the flat sheet material fed from the roll is led to a thermoforming machine in which it is gradually reheated to render it thermoplastic, but without bursting the contained bubbles. When suitably thermoplastic, a length is advanced to a position between chilled or cooled dies having non-porous mating faces of the desired egg carton shape. These dies, brought toward one another, deform the sheet. The cooled dies cool the thermoplastic sheet material so that it becomes immobilized.

The next step is the punching of holes or apertures in the cover for the reception of lugs formed by the dies.

Finally, the excess marginal portions of the sheet are trimmed by cutting dies which separate the formed cartons from the sheet margins. The trimmings and aperture punchings are reground and recharged to the extruder.

The Court's comments by way of partial summary were as follows:

"It seemed to me that the physical and mechanical procedures at Palmer⁷ and Lawrenceville were quite different, although each seems to involve a molding process. Palmer is a molding by agglomeration of disassociated particles, which are then dried and sometimes pressed, and in that sense, perhaps, thermo-refined. (Tr. p. 600).

"The molding at Lawrenceville is accomplished by softening sheets, then forming cartons by dies `deforming' the flat sheets . . . (Tr. p. 600).

"I also noticed as we were coming up that there was some differentiation. In Palmer, a defoamer is inserted, while at Lawrenceville, a foam generator is considered to be indispensible." (Tr. p. 603)."

VALIDITY

Defendant urges that the decision in Walterhoefer is not controlling, on a number of grounds:

1. Koppelman Patent No. 2,093,280, issued September 14, 1937, on application filed December 6, 1934, for "Self-Locking Carton and Packing." a. In Walterhoefer, Koppelman was urged as a defense under 35 U.S.C. Section 103—obviousness. In this case the Defendant vacillates in its briefs from a claim of anticipation under 35 U.S.C. Section 102, to anticipation under Section 103 if coupled with another patent, or other patents. However, in the final arguments Defendant admitted,⁸ albeit reluctantly, that...