Illinois Tool Works, Inc. v. Foster Grant Co., Inc., 69 C 481.

• Decision Date: 13 March 1974
• Docket Number: No. 69 C 481.,69 C 481.
• Citation: 395 F. Supp. 234
• Parties: ILLINOIS TOOL WORKS, INC., Plaintiff, v. FOSTER GRANT COMPANY, INC., Defendant.
• Court: U.S. District Court — Northern District of Illinois

395 F. Supp. 234

ILLINOIS TOOL WORKS, INC., Plaintiff, v. FOSTER GRANT COMPANY, INC., Defendant.

No. 69 C 481.

United States District Court, N. D. Illinois, E. D.

March 4, 1974.

As Amended March 13, 1974.

COPYRIGHT MATERIAL OMITTED

J. P. Hume/Granger Cook, Jr., Hume, Clement, Brinks, Willian, Olds & Cook, Ltd., Chicago, Ill., for plaintiff.

Berton S. Sheppard/C. Frederick Leydig, Wolfe, Hubbard, Leydig, Voit & Osann, Ltd., Chicago, Ill., for defendant.

FINDINGS OF FACT AND CONCLUSIONS OF LAW

FINDINGS OF FACT

McGARR, District Judge.

I. THE PARTIES AND JURISDICTION

The plaintiff, Illinois Tool Works, Inc. (hereinafter "ITW"), is a corporation organized and existing under the laws of the State of Delaware, and has its offices and principal place of business at 8501 West Higgins Road, Chicago, Illinois.

ITW manufacturers and sells (in its Conex Division) a variety of products, including thin-wall plastic cups, thin-wall plastic tubs and plastic lids for those cups. Plaintiff's thin-wall plastic cups and tubs are covered by the Edwards' patents Nos. 3,139,213 (hereinafter '213 patent) and 3,091,360 (hereinafter '360 patent) in suit. The packages and/or lids are covered by Edwards' patent No. 3,061,139 (hereinafter '139 patent) in suit.

Defendant Foster Grant Co. (hereinafter "Foster Grant") is a Delaware corporation with a place of business in Chicago, Illinois.

Foster Grant manufactures and sells a variety of plastic cups and packages which ITW charges to be infringements of its '213, '360 and '139 patents in suit.

Edwards' first "Nestable Container" patent application Serial No. 699,678 was filed on November 29, 1957. This application did not include claims covering containers with interrupted stacking devices. On October 29, 1958, Edwards filed a continuation-in-part application, Serial Number 769,050, with CIP included claims to containers with both continuous and interrupted stacking means. Pursuant to an election of species requirement by the Patent Office, a divisional application was filed on December 13, 1962, comprising claims directed only to containers with the continuous stacking device, and this divisional application subsequently issued as the '213 patent on June 30, 1964. CIP application No. 769,050 issued on May 28, 1963 as the '360 patent, containing claims directed to containers with interrupted stackers. ITW is presently, and since the issue dates set forth above, has been the sole and exclusive owner of U.S. Letters Patent Nos. 3,139,213 and 3,091,360.

The '139 patent in suit, issued on October 30, 1962 with 13 claims and is entitled, "Self-Venting Package." This patent covers generally a lid-container package and/or lid which vents gas from the package when a buildup of pressure occurs.

The actions alleged in ITW's complaint and Foster Grant's counterclaim arise under the patent laws of the United States, 35 U.S.C. §§ 271-287. This Court has jurisdiction over the parties and the subject matter of ITW's complaint, and the subject matter of Foster Grant's counterclaim. Venue in this judicial district is proper.

II. DEVELOPMENT OF THE EDWARDS' NESTABLE CONTAINER INVENTIONS

For at least the past twenty-five years, the paper companies have been making and selling (1) paper drinking cups for the vending industry and for over-the-counter usage, and (2) paper tubs for dairy food products (R. 63, 69, 79).¹ The paper containers were designed to be dispensed one at a time by a dispensing device located in an automatic vending machine, at or near a counter and the like, or at a dairy filling station (R. 63-4, 455). A typical paper cup is depicted by PX-13 and a typical paper tub is depicted by PX-14² (R. 66-7, 69, 455-57).

Both the paper cups and tubs usually were waxed two-piece containers consisting of a paper conical wall section having an overlapped vertically glued seam and an insert or false paper bottom suitably attached to the lower end of the paper wall (R. 63-4, 66, 69, 455). These paper containers were nestable and were arranged in stacks for shipment, handling and dispensing (R. 64). The fact that they were waxed posed problem because an undesirable taste could be imparted to the product in the container (R. 66, 69) and the fact that they were of two-piece construction presented leakage problems (R. 66).

With the advent of plastic as a packaging material in the early 50's, plastic containers were made by the "injection-molded" process (PX-15; R. 70-2). Although this process was relatively expensive, injection-molded food tubs, typified by PX-15, were sold during the 50's, primarily as a premium item (R. 72).

In the mid-50's, injection-molded drinking cups (PX-17) were offered for sale by Crown Co. in relatively small commercial quantities (R. 73). These injection-molded cups (PX-17) were nestable and were arranged in stacks for shipment, handling, and dispensing (R. 74). However these containers, as made prior to the invention of the '213 patent, due to their rigidity and breakability, required careful handling in shipment and use (R. 74-5). The Crown cup (PX-17) has a stacking device comprising a vertical thickened section in the sidewall, which was not effective (R. 73). The Crown cup jammed, and was withdrawn from the market (R. 74-5).

While the paper containers were made and priced to be high volume, disposable items, the cost of the injection-molded plastic containers confined their use primarily to premium or specialty products —being intended for reuse rather than being disposable (R. 72).

At or about this same time, other companies — for example, Caine Company —were marketing and selling a thermoformed plastic cup of the type shown by PX-16 (R. 75). This Caine cup (PX-16) has a stacking device comprised of a series of vertical protuberances around the periphery of the sidewall of the cup (R. 76). However the cups jammed or telescoped when stacked (R. 76-7). Even after several changes in the stacking device, the cup never worked properly and was withdrawn from the market (R. 76-7).

This was the general status of the container field when ITW became interested in designing, making, and commercially selling an all-plastic container (R. 63).

Prior to 1957, ITW was not in the plastic container field (R. 82-3). However in 1956, ITW became aware of and interested in a technique for thermoforming thin-sheet plastic material which could be utilized for making containers (R. 82-3). ITW investigated the use of the Politis machine and its related process, which had been developed and made the subject of patent applications, by a Mr. Charles Politis of Athens, Greece — with the view of entering the market with a line of plastic containers made by the Politis thermoforming process (R. 82-4).

In 1956, Mr. Politis gave ITW several samples of thermo-formed plastic containers made on his machine (PX-18 through PX-20), none of which had any type of stacking device (R. 82-6). In late 1956, ITW's Donald Welshon sent Mr. Politis a Continental Can thermoformed cup which was unsatisfactory because it jammed, but which did illustrate a more acceptable wall thickness (R. 80; PX-166).

ITW, in 1956, agreed to take an option (R. 85-6). During the option period, ITW investigated Mr. Politis' equipment in Greece and ITW's Donald Welshon made several market surveys which indicated that (1) there existed a substantial commercial potential for marketing plastic containers, and (2) ITW should first attempt to develop plastic drinking cups for the vending industry and, thereafter, should undertake to develop plastic tubs for the dairy food industry (R. 87-91, 94). ITW also learned that the process then being practiced by Politis was technically sound, but that the machinery and process would have to be improved (R. 89, 93). It was also apparent that a new cup had to be designed, because there was no satisfactory plastic cup on the market (R. 87, 94, 100, 460).

In May or June, 1957, Bryant Edwards, after working on the solution to the cup problem, conceived of a one-piece, nestable, seamless cup of thin-wall plastic material having a bottom configured to enhance its resistance to deformation, an upwardly and outwardly tapering sidewall of substantial height to permit gripping, a rim constructed to lend lateral strength to the upper end of the container, and a single continuous Z-shaped stacking ring located either at the rim or in the sidewall below the rim (PX-21, R. 102, 113, 454, 472-74). These designs were disclosed to and discussed by Messrs. Welshon, Black, Beart, Cathcart and Wiley who were present at an ITW meeting held on June 12 or 13 (PX-21). Mr. Fred Wiley an ITW consultant for thermo-forming machines and methods made notes of the meeting and recorded the Edwards' cup designs and volumetric calculations for such cup designs (R. 102-05, 107, 111-12, 464-471, 1025-28, 1034-43).

Because of the "apparent" advantages of locating the stacking ring at the rim (i. e., increased material for strength and quick release at top of mold), Edwards made a mold drawing (PX-22), with the stacking ring at the rim (R. 113-14, 115, 476, 477). He took the mold drawing (PX-22) to Greece, a mold was constructed, and sample cups (PX-23) of the Edwards first design were made on the Politis sample press (R. 115-17, 477-78, 1000). Some cups were also made on Politis machinery, but these cups were all scrapped (R. 480). The cups made on the sample press were brought back to the United States by Edwards in July, 1957, and were not submitted to anyone outside of ITW (R. 115-17, 482, 1000). Cups (PX-23, PX-24) made from this mold, however, jammed or stuck together (PX-25; R. 119-20, 482-86). As a result, Edwards abandoned this design and scrapped the mold (R. 120-21, 486).

Edwards then returned to his earlier design (PX-21) with the stacking ring located in the sidewall below the rim and designed an entirely new mold (R. 121, 126). Edwards made or had made several sketches and drawings in August of 1957 of...