Greenberg v. Croydon Plastics Co., Inc.
| Citation | 378 F. Supp. 806 |
| Decision Date | 27 June 1974 |
| Docket Number | Civ. A. No. 72-832. |
| Parties | Samuel GREENBERG and Right-Gard Corporation v. CROYDON PLASTICS CO., INC., et al. |
| Court | U.S. District Court — Eastern District of Pennsylvania |
Max R. Millman, Morton C. Jacobs, McClure, Millman & Jacobs, Philadelphia, Pa., for plaintiffs.
Eugene E. Renz, Jr., Lewis F. Gould, Jr., Howson & Howson, Philadelphia, Pa., for defendants.
This is in part a suit for infringement of United States Letters Patent No. 3,411,501 ("Greenberg '501"), of which plaintiff Greenberg, a citizen of Pennsylvania, is the owner and Right-Gard Corporation ("Right-Gard"), a Pennsylvania corporation, the exclusive licensee. Plaintiffs also complain of trade secret misappropriation and misuse, conspiracy to infringe the patent and to misappropriate trade secrets, inducement to infringe the patent in suit, unfair competition and trade libel. We have jurisdiction under 28 U.S.C. § 1338(a) and (b). We denied plaintiffs' motion for a preliminary injunction and ultimately had a non-jury trial on these issues.
In order to place plaintiffs' contentions in perspective, it is necessary to present a brief overview of the facts of the case. Further findings of fact will be made as we reach the merits of each of their claims.
The patent in suit describes a mouthguard made of thermoplastic material which is to be worn by athletes for the protection of their teeth during sporting events. Right-Gard Corporation, a small company of which plaintiff Greenberg is the president, has been manufacturing flavored and unflavored versions of this mouthguard. For five years, until November 1971, defendant Dobrowolski was employed by Right-Gard and managed its sales operations. In the course of his employment, Dobrowolski became thoroughly familiar with every phase of Right-Gard's business, including the technical aspects of mouthguard manufacturing. Dobrowolski left Right-Gard in November 1971 to become the east coast sales representative for Safe-Play Manufacturing Co., Inc. ("Safe-Play"), a Nebraska corporation which had sold athletic equipment such as pennants and line markers but which, until Dobrowolski's arrival, had never been in the mouthguard business.
About two weeks after he started working for Safe-Play, Dobrowolski and the president of Safe-Play discussed the possibility of manufacturing mouthguards. Dobrowolski contacted Croydon Plastics Co., Inc. ("Croydon"), a Pennsylvania corporation, which had at one time molded mouthguards on a subcontracting basis for Right-Gard, and asked Croydon president Eugene Grzesnikowski for a quotation on the cost of tooling and molding mouthguards. Croydon quoted a price and ultimately manufactured and delivered to Safe-Play the mouthguards which are alleged to infringe the patent in suit. Safe-Play advertised, marketed and distributed these mouthguards under the name Power Cushion Models 800, 801, 802 and 803, with and without flavoring. Plaintiffs then instituted this lawsuit seeking a preliminary injunction, which we denied, and permanent injunctive relief and damages.
Claim 9 of the Greenberg '501 patent, which plaintiffs allege has been infringed by defendants' mouthguards, describes the mouthguard as follows:
"A preformed saddle for use in making a mouthpiece comprised of a substantiallly U-shaped member of channel cross-section including an outer flange, a lingual flange and a web joining them and made of a plastic such that at a predetermined temperature range below that of boiling water the saddle will retain its essential shape but will be soft enough to take teeth impressions and to retain the teeth impressions below the softening range, the web having a mean thickness exceeding that of the outer and lingual flanges so that when the inner surface of the web contains the impressions of one set of teeth and the outer surface of the web contains impressions of the bite surface of the opposite set of teeth, a thickness of material is present in the web between impressions to protect both sets of teeth."
Defendants assert as a defense to the infringement claim that Claim 9 of the Greenberg patent is invalid and that even if it is valid, the Safe-Play mouthguards do not infringe. We have concluded that the subject matter of Claim 9 would have been obvious at the time of invention to a person of ordinary skill in the art of making mouthguards and therefore that Claim 9 of the patent in suit is invalid under 35 U.S.C. § 103. Because of this conclusion we find it unnecessary to reach the question of infringement, nor need we pass on the other grounds defendants have asserted in support of their defense of invalidity.1
Congress has prescribed a threepronged test for patentability: novelty, utility and nonobviousness. The test of obviousness is contained in § 103 of the Patent Act of 1952, 35 U.S.C. § 103, which provides in relevant part:
"A patent may not be obtained * * * if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."
The criteria for determining obviousness or nonobviousness under § 103 were set out by the Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S. Ct. 684, 694, 15 L.Ed.2d 545 (1966):
The prior art at the time of Mr. Greenberg's invention was such that Claim 9 must be held invalid for obviousness. An examination of two prior mouthguard patents, Grossberg Patent No. 3,211,143 and Cathcart et al. Patent No. 2,966,908, makes this conclusion unavoidable, especially in light of plaintiff's own testimony at trial.2
Grossberg teaches a mouthguard with a U-shaped member of channel cross-section, an outer flange, a lingual flange and a web joining them. It is made of a thermoplastic material which can be softened at a molding temperature of between 120° and 160° Fahrenheit. The only discernible difference between Claim 9 of the patent in suit and Grossberg, and the only difference plaintiff himself was able to point to at trial, is that the Greenberg mouthguard has a web thick enough to take impressions of one set of teeth and of the bite surface of the other set, while the web described in Grossberg will only take impressions of one set of teeth.
Claim 9 of the patent in suit teaches a web "having a mean thickness exceeding that of the outer and lingual flanges." This prescribed measurement does not have an arcane mystical significance. It is merely a way of describing a web thickness which will provide enough material to take impressions of one set of teeth and of the bite surface of the opposite set and prevent the wearer from biting through during fitting, but which at the same time will not be so thick that after fitting the player will find himself unable to talk or breathe with ease.
Since the Greenberg mouthguard is in every other respect identical to that of Grossberg, the crucial question is whether thickening the web in this manner would have been obvious to a person such as Mr. Greenberg who was skilled in the art. We have concluded that the teachings of Cathcart et al. would have made the thickened web obvious.
Cathcart et al. teaches a thickened web. The structural configuration of the Cathcart mouthguards is in all respects save one identical to that of the Greenberg mouthguards. The mouthguard disclosed in Cathcart is a substantially U-shaped member of channel cross-section having an outer flange, a lingual flange and a web joining them. The web taught by Cathcart has a thickness ranging from 3mm. at the ends to approximately 5mm. at the incisors, or a mean thickness of 3mm. Since the flanges of the Cathcart mouthguard have a thickness of 2mm., Cathcart teaches a mean web thickness exceeding that of the flanges. The one significant difference between the Cathcart mouthguards and Greenberg's is that Cathcart teaches mouthguards which are made of a vinyl resin plastic and are ready-to-wear, while the Greenberg mouthguards are made of a thermoplastic which can be softened by heat and molded to the teeth of the wearer.
At the time of Mr. Greenberg's invention, he had before him prior art in Grossberg which disclosed every characteristic enumerated in Claim 9 of the patent in suit except the thickened web, and prior art in Cathcart which taught a thickened web in the proportions Mr. Greenberg ultimately specified in Claim 9. The question is whether it would have been obvious to a skilled artisan like Mr. Greenberg to combine the web thickness of Cathcart with the specifications of Grossberg to come up with Claim 9.
The conclusion that it would have been obvious is inescapable. Perhaps the most eloquent testimony on this point came from Mr. Greenberg's own lips at trial. In order to discover whether one skilled in the art, faced with the problem of not having enough material to take impressions of one set of teeth and of the bite surface of the other set without biting through, would come to the same conclusion an untutored layman would, we engaged in the following colloquy with Mr. Greenberg:
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