Illinois Tool Works, Inc. v. Brunsing
| Decision Date | 09 February 1966 |
| Docket Number | 40784.,No. 40783,40783 |
| Citation | 254 F. Supp. 281 |
| Court | U.S. District Court — Northern District of California |
| Parties | ILLINOIS TOOL WORKS, INC. et al., Plaintiffs, v. Rex L. BRUNSING et al., Defendants. |
Olson, Trexler, Wolters & Bushnell, Chicago, Ill., and Hoppe, Mitchell, Murtha & Anderson, San Francisco, Cal., Carl Hoppe and John R. Murtha, San Francisco, Cal., appearing for plaintiffs.
Hawkins & Hawkins, Corte Madera, Cal., Louis F. Hawkins, Corte Madera, Cal., appearing for defendants.
FINDINGS OF FACT
This is a patent infringement action arising under the Act of July 19, 1952, c. 950, § 1, 66 Stat. 811, Title 35 U.S.C. § 271.
This is a consolidated action. Originally two actions were filed: No. 40783, entitled Illinois Tool Works, Inc., a Delaware corporation, Plaintiff, vs. Rex L. Brunsing, Tay-Pak Corporation, Brunsing & Sons, Inc., and California Blowpipe and Steel Co., Inc., Defendants, and No. 40784, entitled Lawrence O. Holmberg, Plaintiff, vs. Rex L. Brunsing, Tay-Pak Corporation, Brunsing & Sons, Inc., and California Blowpipe & Steel Co., Defendants.
The cases were consolidated by consent order filed June 8, 1962. Thereafter, California Blowpipe was dismissed as a defendant in both cases by stipulation of the parties.
Thereafter, on oral motion made at trial by counsel for defendants after plaintiff had introduced into evidence an assignment from Lawrence O. Holmberg to plaintiff Illinois Tool Works, Inc., Illinois Tool Works, Inc., was substituted as plaintiff in action No. 40784.
Plaintiff complains that defendants have made, used and sold devices that infringe plaintiff's patents, specifically claims 1, 2, 4, 5, 7, 8, 9, 10, 11, 12 and 13 of the U. S. Patent #2,646,911 issued to Lawrence O. Holmberg on July 28, 1953 (hereinafter referred to as "Holmberg"), and thereafter assigned to plaintiff, and claims 1 and 2 of U. S. Patent #2,923,406 assigned to plaintiff Illinois Tool Works, Inc., prior to the date of its issuance, October 30, 1950 (hereinafter referred to as "Poupitch").
Defendants and each of them have denied infringement.
The issue of infringement only was tried by this court commencing September 15, 1965, and concluding September 22, 1965, pursuant to the pre-trial order of this court signed by The Honorable Alfonso J. Zirpoli and dated July 9, 1965, pursuant to Rule 42(b), Federal Rules of Civil Procedure.
The prior art introduced demonstrates that both of plaintiff's combination patents in suit were improvements, but did not solve the problem of providing a carrier which would hold cans securely and still provide for relatively easy removal of a can from the carrier.
The plaintiff's patents were never commercialized, and are so-called "paper patents."
Defendants to the time of trial had made, caused to be made, and sold some 30-odd million of the accused device.
Both Holmberg and Poupitch and defendants' accused device relate to structures for carrying multiple numbers of containers having projecting top rims. The purpose of all three contemplated structures is to provide a method of conveniently holding together and transporting a number of these containers.
The accused device is entirely dissimilar in appearance when compared with the structure called for by the Holmberg claims read in light of the drawings and specifications.
Construing the Holmberg claims in light of the specifications and drawings, they call for a structure produced from sheet material having an inverted U shape when viewed from either end or in cross section. There are horizontal can-supporting slots disposed in the sides of the body in groupings of two each. The slot is formed so that a container cannot be inserted or removed when the structure and the container are in vertical positions, nor when one is at a right angle to the other. It is necessary that a container be inserted or removed when it is at an intermediate angle to the structure, or vice versa. Cans are freely inserted into the accommodating slots by inserting the cans therein while the cans are at an intermediate angle, and the cans then freely rotate downwardly to a vertical or almost vertical position by the action of gravity. The outside bottom portion of the top rim of the can sits or rests on that portion of the body member forming the bottom of the slot which has been curved, and is prevented from falling out of the carrier by an overhanging portion which is bent or formed first outwardly from the body and then downwardly at its end to form an overhanging lip which engages the inside of the top rim or chime and prevents any substantial outward movement when the container and the carrier are in a substantially vertical position. The portions of the body members below each of the slots are curved to conform to the contour of the side walls of the containers or cans and provide additional support. This last is necessary because the structure of the carrier does not grip or hold the chimes or rims of the containers or cans in the sense of applying any gripping pressure to the chimes or rims. In order that the structure and the containers may be maintained in a vertical position, a U-shaped handle is provided. The ends are inserted in slots at the topmost part of the inverted U structure and are allowed to rotate freely, and the structure then tends to remain in a vertical position so that the containers will not reach an intermediate angle to the structure.
In the amendment of June 18, 1953, the following statement was made by Holmberg:
"The character of the holding devices and their spacing so that the cans are held by the upper rim and the downward swinging action brings about an abutment at the bottom edge of the can is included in the claim and thus defines the essence of novelty of the invention."
This statement of June 18, 1953 restricts Holmberg to a device that relies for its operation on the action of gravity and which allows free entrance and exit of a container at an intermediate angle, and a free downward swinging action for seating the container, and a free upward swinging action to accomplish removal.
Poupitch calls for a clip holding two cans. The clip is described in the Poupitch patent as a novel one-piece sheet material clip produced from sheet stock, as an example, sheet metal.
The inventor worked with Holmberg, and his invention was to be an improvement over Holmberg.
The operation of Poupitch is exactly the same as Holmberg except that the clip is applied to the containers by snap action. The clip is placed over two cans in substantial abutment with the tabs to be positioned underneath the outside rims of the cans at the spaces created at opposite ends of the abutment. As the clip is forced down the ends of the tabs cam the tabs outwardly until the shoulders clear the rims and the tabs then snap back to their original positions. Flanges project downwardly from the body of the clip on each side and serve the same purpose as the overhanging lip of Holmberg, that is, they restrict substantial outward movement of the cans by engaging the inside of the top rim. However, as demonstrated to the court, the cans may also be inserted as in Holmberg and removed in the same manner.
The method of holding more than one claimed clip together in order to form a 6-pack is illustrated in Poupitch but is not claimed, and in addition a handle is not called for by either of the two Poupitch claims in suit (1 and 2).
File wrapper estoppel is applicable with regard to Poupitch. Claim 14 of the application was rejected by the examiner on the grounds that it was "aggregative, as the inclusion of a plurality of similar clips does not form a patentable combination," and because there is "no invention in providing a handle for any article." In the next amendment (September 8, 1958) claim 14 was abandoned.
XX
In contrast, the defendants' accused device is a relatively flat plastic structure made by an injection molding process. It has three opposedly-disposed interdependent sets of two can-holding clips each. Finger holes are provided for lifting. For each set of two clips there is a central rib. The outside bottom of the top rim rests on the top of one side of the rib and the corresponding part of the other can rests on the corresponding part of the other side of the rib. Each side of the rib is arcuate. In order to reach this position the tongue or tab must be forcibly moved upwardly to clear the top of the chime, and the tongue or tab is then sprung back in an attempt to return it to its former position. This is necessary because the width of the space between the end of the tongue and the side of the central rib is designed to be less than the diameter of the rim of the can. Thus, the arcuate end of the tongue or tab engages the inside of the top rim of...
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Illinois Tool Works, Inc. v. Brunsing
...made detailed findings supporting defendants' position. The findings of fact and conclusions of law of the trial court are reported in 254 F.Supp. 281, and the discussion which follows assumes familiarity with those findings and In its findings the trial court noted a number of differences ......