Illinois Tool Works, Inc. v. Sweetheart Plastics, Inc.

• Decision Date: 22 February 1971
• Docket Number: No. 18215.,18215.
• Citation: 436 F.2d 1180
• Parties: ILLINOIS TOOL WORKS, INC., Plaintiff-Appellee, v. SWEETHEART PLASTICS, INC., Maryland Cup Corporation, and Sweetheart Cup Corporation, Defendants-Appellants.
• Court: U.S. Court of Appeals — Seventh Circuit

436 F.2d 1180 (1971)

ILLINOIS TOOL WORKS, INC., Plaintiff-Appellee, v. SWEETHEART PLASTICS, INC., Maryland Cup Corporation, and Sweetheart Cup Corporation, Defendants-Appellants.

No. 18215.

United States Court of Appeals, Seventh Circuit.

January 21, 1971.

Rehearing Denied February 22, 1971.

George L. Greenfield, Wolf, Greenfield & Hieken, Boston, Mass., Dugald S. McDougall, Chicago, Ill., for defendants-appellants.

James P. Hume, Granger Cook, Jr., Hume, Clement, Hume & Lee, Chicago, Ill., for plaintiff-appellee; Richard R. Trexler, Robert W. Beart, Michael Kovac, Chicago, Ill., of counsel.

Before SWYGERT, Chief Judge, MAJOR, Senior Circuit Judge, and KERNER, Circuit Judge.

SWYGERT, Chief Judge.

This is a patent infringement action against Maryland Cup Corporation and its subsidiaries, Sweetheart Cup Corporation and Sweetheart Plastics, Inc., brought by Illinois Tool Works, Inc., the assignee of United States Patents Nos. 3,139,213 and 3,091,360. It has been consolidated with the defendants' declaratory judgment action filed prior to the commencement of the infringement action by plaintiff. The district court found the patents valid and infringed by certain of defendants' accused containers and entered its final judgment permanently enjoining further infringement and ordering an accounting as to past infringement.¹ Defendants appeal (1) the determination below that each of the patents is valid, (2) a factual determination of the district court that defendants' CVP-9 group of containers infringes the '360 patent, assuming its validity, and (3) the propriety of the district court's refusal to retransfer defendants' declaratory judgment action to the United States District Court for the Southern District of New York, where it was filed, from the Northern District of Illinois, where it had been consolidated with the infringement action filed later in Illinois. We affirm the decision of the district court on each of the three issues raised on this appeal.

Introduction

Both patents at issue relate to the design and manufacture of nestable, expendable, thinwall plastic containers of unitary construction whose principal use is in applications which require dependable automatic dispensing of such containers, singly and in an upright position, so as to be ready to receive their contents with a minimum of human and mechanical effort. The principal demand for such containers has been in the automatic beverage vending and dairy industries for use as drinking cups and cottage cheese tubs, although the containers have also found useful application in restaurants and luncheonettes. The qualitative demands and conditions of use in automatic machines dispensing hot beverages are difficult to meet, and both patents relate to attempts to produce a container which would prove satisfactory and economical in such applications. Briefly, the problems of this endeavor included the necessity for virtually failure-proof separation of the bottom cup from a nested stack of identical cups (because such machines are unattended), an extremely adverse environment characterized by considerable heat and humidity, and the danger of damage to or jamming of such cups when shipped in a nested stack as is necessary to render them both economical to distribute and ready for their intended use. Because the demands of such applications are great, a container which was successful for automatic hot beverage dispensing would be attractive for other, less demanding uses.

The greatest similarity disclosed by a comparison of the two patents is the analytical approach disclosed by their language. Basically, Bryant Edwards, who was the inventor and assignor of both patents, focused in both instances on the use of resilient, thinwall plastic construction and on the use of Z-shaped, undercut (or reverse tapered), circumferential deformations of the cup wall below the upper rim so as to provide a resiliently yieldable "stacking ring" to separate nested cups slightly and minimize contact between them to achieve easy separation as well as protect against damage in shipment. The basic difference between the '213 design and the '360 design is that the stacking ring in '213 is continuous, whereas in '360 it is discontinuous. However, as the parties have agreed, the differences in design and result between the two patents are such that they are mutually exclusive.

I. Validity of the '213 Patent.

The '213 patent which defendants challenge as invalid issued on June 30, 1964 with eleven claims. It has been challenged previously in another infringement action in which, after full consideration of both anticipation and obviousness defenses raised therein, the district court held the patent valid and we affirmed.²

We note that the only new evidence now cited by defendants as supporting their assertion of the invalidity of the '213 patent is United States Patent No. 1,766,226 issued June 24, 1930 to H. Nias and W. Poster. The Nias patent relates to a pleated paper cup, the principal purpose of the design of which appears to have been an improvement in the effectiveness of the seal obtained when a discshaped cover was snapped down inside the container. The obvious effect of the insertion of the cover in such a container is substantially to distend and deform the container outwardly so as to grip the cover more positively than in the prior art. While Nias claimed that a part of his invention included the ability of the lid-restraining, circumferentially continuous ring located at the rim of the container to serve also as a stacking device to facilitate nested stacking, the nature of the design itself would render successful nesting and shipment logically impossible. As the district court said:

If a stack of Nias cups were dropped or otherwise subjected to axial pressure, the cups would * * * enlarge so that the lid-receiving grooves of adjacent cups would become wedged together. Therefore, although the specification states that the groove "limits the relative telescoping movement of the containers" * * *, the Nias cup structure facilitates jamming rather than stacking.³

We concur in the district court's analysis and its determination that the defendants did not sustain their burden of presenting "persuasive new evidence"⁴ of the invalidity of this judicially approved patent. We again hold that the '213 patent is valid, unanticipated and nonobvious.

II. Validity of the '360 Patent.

Edwards' '360 patent issued on May 28, 1963 with ten claims. The application from which the patent derived was filed October 29, 1958. Defendants challenge the validity of this patent on the grounds of anticipation and obviousness. Although the parties herein have treated the two defenses as if they represented opposite sides of the same coin, we shall separate them in recognition of their differences and in order to strive for greater clarity.

The defense of anticipation derives principally from 35 U.S.C. § 102(a) which provides:

A person shall be entitled to a patent unless — (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant * * *.

It has been held repeatedly that the defense of anticipation "is strictly a technical defense and unless all of the same elements are found in exactly the same situation and united in the same way to perform an identical function, there is no anticipation."⁵ Applying this definition of the defense to the state of the prior art in the instant case as described, infra, the Edwards' '360 patent was not anticipated by any of the inventions cited by defendants here or in the district court. Anticipation, however, speaks only to the novelty of an invention.⁶

Conversely, the defense of obviousness raises the question of inventiveness and derives from 35 U.S.C. § 103. The obviousness test is somewhat broader in its restrictions on the issuance of valid patents, and prior art which does not render an invention anticipated may nonetheless make it obvious.⁷ Section 103 provides:

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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. Patentability shall not be negatived by the manner in which the invention was made.⁸

The Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), explained the analytical method to be utilized by courts confronted with the question of obviousness:

Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.⁹

Application of the foregoing method convinces us that the '360 patent is valid and nonobvious from the state of the prior art.

A. The Prior Art.

Defendants cite three items, not of record reference in the '360 patent file, as constituting prior art which they contend establishes both that '360 was anticipated and obvious. As is apparent from the descriptions of the asserted prior art which follow, none of these items sufficiently approximates the '360 invention to satisfy the narrow anticipation defense. Moreover, none of them, independently or in...