Great Northern Corp. v. Davis Core & Pad Co., Inc.
| Decision Date | 06 January 1986 |
| Docket Number | No. 85-2485,85-2485 |
| Citation | 782 F.2d 159,228 USPQ 356 |
| Parties | GREAT NORTHERN CORPORATION, Appellee, v. DAVIS CORE & PAD COMPANY, INC., Appellant. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
Thomas M. McKinley, Price, Heneveld, Huizenga & Cooper, Grand Rapids, Mich., for appellant. With him on brief was Daniel Van Dyke, Grand Rapids, Mich.
George H. Solveson, Andrus, Sceales, Starke & Sawall, Milwaukee, Wis., for appellee. With him on brief was Glenn O. Starke, Milwaukee, Wis.
Before MARKEY, Chief Judge, and RICH and KASHIWA, Circuit Judges.
This appeal is from the April 24, 1985, judgment of the United States District Court for the Northern District of Georgia, 226 USPQ 541, holding valid and infringed all 4 claims of United States Patent No. 4,195,732 ('732 patent), filed February 28, 1978, for "Supporting and Spacing Member For Web Material Rolls," originally assigned to Great Northern Corp. (Great Northern) and Presto Products, Inc. (Presto), by Davis Core & Pad Co., Inc.'s (Davis Core) support member (Rollrider). Davis Core was also held liable to Great Northern for treble damages, yet to be assessed, together with pre-judgment interest, costs, and attorney fees because Davis Core's infringement was willful. We affirm.
The '732 patent discloses a molded expanded polystyrene foam support for shipping rolls of web material such as cellophane. The support has indentations for receiving rolls and recesses in the side portions of those indentations and elsewhere allegedly to prevent the support from cracking during transportation by imparting flexibility to the support. The published Order of the trial court sets forth the claims in full together with extensive findings of fact and conclusions of law, all of which will be better understood when read in connection with the following drawings from the patent-in-suit and explanation thereof.
The invention, made by Norman H. Bell, an employee of Great Northern, provides a means for safely shipping rolls of web material 12 from the manufacturer to a user on a pallet 14 as shown in Fig. 1. Fig 3 shows the claimed spacing member or bar 10 having indentations 22 in which the rolls rest, or which rest on the rolls, separated by lands 24. The bottom rolls in the package rest on bars having flat bottoms and indentations only on the top side as shown in Fig. 7, bars used at the ends optionally having lips 28. Significant to the controversy here, members 10 are provided with numerous recesses 26 molded into the bars to increase their overall flexibility and ability to conform to the shape of the rolls. The extent of these recesses is best seen in Fig. 4 where they are shown in dotted lines. It is said that these recesses prevent cracking of the molded polystyrene foam bars during use under the weight of the stacked rolls of web material and the forces applied during transportation. In the finished shipping assembly as shown in Fig. 1, the twelve rolls of plastic or other web material, the spacing members, and the pallet are all secured together by the strapping 18.
To indicate the nature of the defendant's Rollrider products we reproduce two figures from Patent No. 4,435,463 issued to Thomas A. Roellchen, assignor to Ace Polymers, March 6, 1984. These drawings closely resemble drawings in Ace's Rollrider sales literature.
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
Great Northern and Presto, a manufacturer of cellophane, worked together to develop the subject matter of the '732 patent, their work culminating in a test shipment in February and March of 1977 from Presto's plant in Wisconsin to its plant in Utah and back again. 1
Davis Core began marketing the allegedly infringing Rollrider support after it was contacted by Thomas Roellchen of Ace Polymers in the fall of 1980, Ace Polymers then being a distributor for Presto. 2 The '732 patent issued April 1, 1980, and Great Northern demanded that Davis Core cease production of Rollrider in a letter dated March 25, 1982. This suit followed.
I. Whether the '732 patent is valid and enforceable.
II. Whether Davis Core's Rollrider infringes under the doctrine of equivalents.
III. Whether Davis Core's infringement was willful, making treble damages and the award of attorney fees appropriate.
Davis Core contends that the '732 patent's subject matter was on sale and in public use more than one year before the February 28, 1978, filing date because, it alleges, foam supports that met all of the claim limitations were made in December of 1976 and January of 1977 and transferred to Presto, not in a joint venture with Great Northern, without restriction and with intent to sell. Davis Core particularly points to the Utah shipment as evidence of a Sec. 102(b) bar.
The district court found that all of the tests conducted before the critical one year bar date of February 28, 1977, had resulted in cracked supports and were failures. The Utah shipments, the court found, were made to test the recesses in the side portions of the indentations which were added in December of 1976 to eliminate cracking. Further modification in the number and size of recesses was made subsequent to the Utah test because slight damage to the recesses occurred. Testing continued until the summer of 1977. The district court concluded, correctly we hold, that the invention was not reduced to practice until after February 28, 1977, and, therefore, the testing prior to that date did not constitute a Sec. 102(b) bar. See Shatterproof Glass v. Libbey-Owens Ford Co., 758 F.2d 613, 622, 225 USPQ 634, 639-40 (Fed.Cir.1985); Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831, 838, 221 USPQ 561, 566-67 (Fed.Cir.1984). Cf. King Instrument Corp. v. Otari Corp., 767 F.2d 853, 860, 226 USPQ 402, 406 (Fed.Cir.1985). The '732 support was not reduced to practice until it was sufficiently tested to demonstrate that it would work for its intended purpose, see, e.g., Shatterproof Glass, 758 F.2d at 622, 225 USPQ at 640, and that did not occur, in our view, until a location for the recesses, as defined in the claims, was determined that eliminated the cracking problem.
Anticipation requires the presence in a single prior art reference disclosure of every element of the claimed invention. See, e.g., Lindemann Maschinenfabrik v. American Hoist and Derrick, 730 F.2d 1452, 221 USPQ 481 (Fed.Cir.1984). The court's conclusion that Davis Core failed to prove anticipation is not clearly erroneous because none of the prior art satisfies this requirement.
Davis Core relied upon numerous references, some before the Patent and Trademark Office (PTO) examiner and some not, to support its claim that the '732 subject matter failed to meet the nonobviousness requirement of Sec. 103. The district court considered the scope and content of the prior art, the ordinary level of skill in the art, the differences between the claimed invention and the prior art, and the secondary considerations as required by Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545, 148 USPQ 459 (1966). We see no clear error in these findings and we agree with the district court's legal conclusion, based upon these findings, that the claimed subject matter would not have been obvious to one of ordinary skill in the art at the time the invention was made. The problem solved by the '732 subject matter--cracking of the supports--and the advantages gained--tolerance to rolls of various diameters--were peculiar to expanded polystyrene foam supports and were achieved by incorporating recesses in the side portions of the indentations in the foam supports, structure not shown or suggested by the prior art.
Davis Core's argument that the '732 patent is unenforceable due to inequitable conduct during prosecution of the application for the patent is specious, see generally, e.g., American Hoist and Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 220 USPQ 763 (Fed.Cir.1984), and we affirm the district court's conclusion that the '732 patent is not unenforceable.
A device that performs substantially the same function in substantially the same way to obtain the same result as the patentee's product may be treated as an equivalent of what is claimed and therefore an infringement of the patent claims even though a case of literal infringement is not established. Graver Tank & Manufacturing Co. v....
To continue reading
Request your trial
-
California Medical Products v. Tecnol Med. Prod., Civil A. No. 91-620-LON.
...Instr., 52 F.3d 967 (Fed.Cir.), cert. granted ___ U.S. ___, 116 S.Ct. 40, 132 L.Ed.2d 921 (1995); Great Northern Corp. v. Davis Core & Pad Co., Inc., 782 F.2d 159 (Fed. Cir.1986). 22 So that the record is clear, the Court has not relied in any way upon a second experiment performed by Garth......
-
Procter & Gamble Co. v. Nabisco Brands, Inc., Civ. A. No. 84-333 LON.
...device or practice. Kalman, 713 F.2d at 771, quoted in Phillips Petroleum, 673 F.Supp. at 1287; see Great Northern Corp. v. Davis Core & Pad Co., Inc., 782 F.2d 159, 165 (Fed.Cir. 1986); Tyler Refrigeration, 777 F.2d at 689; American Hosp. Supply Corp. v. Travenol Lab., 745 F.2d 1, 6 (Fed.C......
-
Joy Mfg. Co. v. CGM Valve & Gauge Co., Inc.
...to obtain a validity and infringement opinion after receiving notice of a relevant patent. See, e.g., Great Northern Corp. v. Davis Core & Pad Co., 782 F.2d 159, 166-67 (Fed.Cir. 1986); see also CPG Prods. Corp. v. Pegasus Luggage, Inc., 776 F.2d 1007, 1014-15 29. The plaintiff is entitled ......
-
Pennwalt Corp. v. Durand-Wayland, Inc.
...USPQ 233 (Fed.Cir.1985); Loctite Corp. v. Ultraseal, Ltd., 781 F.2d 861, 228 USPQ 90 (Fed.Cir.1985); Great Northern Corp. v. Davis Core & Pad Co., 782 F.2d 159, 228 USPQ 356 (Fed.Cir.1986); Moeller v. Ionetics, Inc., 794 F.2d 653, 229 USPQ 992 (Fed.Cir.1986); Chemical Engineering Corp. v. E......
-
Chapter §7.11 Prior Invention Under §102(g)
...with 35 U.S.C. §112, see Hyatt [v. Boone], 146 F.3d [1348,] 1352 [(Fed. Cir. 1998)].").[839] See Great N. Corp. v. Davis Core & Pad Co., 782 F.2d 159, 165 (Fed. Cir. 1986).[840] Slip Track Sys., Inc. v. Metal-Lite, Inc., 304 F.3d 1256, 1265 (Fed. Cir. 1992).[841] Gordon v. Hubbard, 347 F.2d......
-
Patent Law - Substantially Equivalent Disclosure Sufficient to Satisfy Written Description Requirement for Non-Operative Features - Nalpropion Pharmaceuticals, Inc. v. Actavis Laboratories FL, Inc.
...(Fed. Cir. 1986) (stating requirements for actual and constructive reduction to practice); Great N. Corp. v. Davis Core & Pad Co., 782 F.2d 159, 165 (Fed. Cir. 1986) (requiring working embodiment of invention to establish actual reduction to practice); In re Glass, 492 F.2d 1228, 1232 (......
-
Chapter §8.02 The Process of Inventing
...with 35 U.S.C. §112, see Hyatt [v. Boone], 146 F.3d [1348,] 1352 [(Fed. Cir. 1998)].").[47] See Great N. Corp. v. Davis Core & Pad Co., 782 F.2d 159, 165 (Fed. Cir. 1986).[48] Slip Track Sys., Inc. v. Metal-Lite, Inc., 304 F.3d 1256, 1265 (Fed. Cir. 1992).[49] For case law examples of actua......
-
Umc Electronics v. United States: Should Reduction to Practice Be a Requirement of the on Sale Bar?
...Cir. 1985) ("[A] bare offer to sell does not ipso facto satisfy the 'on sale' bar. . . ."). 5. Great N. Corp. v. Davis Core & Pad Co., 782 F.2d 159, 165, 228 U.S.P.Q. (BNA) 356, 358 (Fed. Cir. 1986). See also Shatterproof Glass, 758 F.2d at 623, 225 U.S.P.Q. at 640 ("[T]he invention must ha......