LD Schreiber Cheese Co., Inc. v. Clearfield Cheese Co.
| Decision Date | 24 June 1982 |
| Docket Number | Civ. A. No. 77-1032. |
| Citation | 540 F. Supp. 1128 |
| Parties | L. D. SCHREIBER CHEESE CO., INC., Plaintiff, v. CLEARFIELD CHEESE CO., INC., Defendant. |
| Court | U.S. District Court — Eastern District of Pennsylvania |
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Dickie, McCamey & Chilcote, Pittsburgh, Pa., for plaintiff.
Reed, Smith, Shaw & McClay, Pittsburgh, Pa., for defendant.
On Motion for Attorney's Fees June 24, 1982.
This is an action for patent infringement under 35 U.S.C. § 271 and § 281. Jurisdiction of the subject matter is conferred on this court by 28 U.S.C. § 1338. Venue is proper under 28 U.S.C. § 1400(b). After trial of this matter to the court and submission of exhibits and depositions, the parties have stipulated to decision by this court on the record as it now stands.
Plaintiff L. D. Schreiber Cheese Co., Inc. (Schreiber) is the owner of United States Patent No. 4,046,923 (Meng Patent) by assignment from the inventors. Schreiber contends that defendant Clearfield Cheese Co., Inc. (Clearfield) has infringed and is still infringing the claims of the Meng Patent by certain products and processes. Schreiber seeks damages for past infringement and an injunction against further infringement by Clearfield. Defendant by its Answer denies any acts of infringement and asserts that the Meng Patent is invalid for lack of novelty, 35 U.S.C. § 102, for obviousness, § 103, and for double patenting.
Plaintiff's business is the manufacture of cheese and cheese products. The cheese industry has faced a persistent problem in the separation of cheese slices in great measures intensified by the great growth of the fast-food cheeseburger industry.1 Due to their component ingredients, moisture content, and other characteristics, cheese slices have a tendency to adhere to each other and inhibit manual separation. The industry has tried to solve this separation problem, with some measure of success, by improvements in the ingredients mix, moisture and heat control, and the use of oils and coatings.
The problem, however, has never disappeared and the cheese industry still wrestles with separation. Alternate offset stacking, which presents an extended, grippable edge to assist manual separation, had been attempted previously to the Meng invention with the difficulty that the extended edges, being pliable, tended to sag out of the plane of the slice. This is the problem which the Meng Patent addresses.
The Meng Patent discloses an alternate offset arrangement of cheese slices in a stack overwrapped to form a package, and the production process to produce that stack. The date of invention is April 1, 1970, and the patent was issued on September 6, 1977. Claim 1 describes a package containing individual product slices formed of "a flexible plastic material, such as cheese", in which the lateral edges of alternate slices are aligned in offset relation to adjacent slices. This alternating offset provides a "gripping portion" extending outwardly relative to adjacent slices which the patent specifies must be "sufficient to facilitate manual separation of the slices, but insufficient to allow the gripping portions to sag out of the plane of the major portion of the slice." Claims 2-4 define the effective amount of offset as being greater than 1/8 " but less than 5/16". The remainder of the claims describe the production line process and guide members used to produce the alternating offset relation. Figure 5 of the Meng Patent illustrates the claimed package and demonstrates the offset element.
Plaintiff's application for a patent on the described package and process was initially denied by the Patent Examiner on the basis of the Beck Patent alone, which discloses the packaging of food slices in a plastic pouch, and in conjunction with the Palmer patent which discloses the conventional ribbon line production process. The Beck patent includes an illustration depicting slightly offset slices, but makes no claim for offsetting nor specifies any dimension of offset.
Schreiber filed with the Patent Office the affidavit of Beck, the co-patentee of the Beck patent. Beck asserted ignorance of any package in the art such as Schreiber's, containing uniform slices in uniform offset. Beck also stated that although he was familiar with the Beck patent, and as a person skilled in the art, he had not conceived the offset principle taught by the Meng patent.
Schreiber also submitted the affidavit of Robert G. Bush to the Patent Office. Bush, a Schreiber employee, described Schreiber's previous use of temporary offset stacks in its "shingle stack" production line. Beginning in 1966, Schreiber produced a shingle stack package consisting of slices of 3 varieties of cheese. These slices were stacked in a stairstep arrangement, each slice offset in relation to the underlying slice. In production of this shingle stack, line employees manually removed slices from temporary stacks to re-stack in the stairstep arrangement. To facilitate this manual disassembly Schreiber produced a temporary stack with cheese slices alternately offset a uniform amount. Bush states that this offset was ½" and sagged considerably. These temporary stacks are depicted in photo exhibits accompanying the Bush affidavit.
The Patent Examiner considered the Beck and Bush affidavits but denied plaintiff's application on the basis of the disclosures of the Beck and Palmer patents. The Patent Office Board of Appeals affirmed.
The Court of Customs and Patent Appeals (CCPA) reversed the decision of the Board of Appeals in Application of Meng, 492 F.2d 843 (CCPA 1974). The court identified the claimed offset as the only distinguishing feature and held that neither the Beck nor the Palmer patent disclosed or suggested the offset step. The court also found the assertions of the Beck and Bush affidavits to be persuasive evidence of the non-obviousness of the specified offset. On the basis of this distinguishing element, the CCPA found the invention to be non-obvious and the claims patentable. Id., at 849.
Schreiber immediately filed this suit charging Clearfield with infringement of the newly acquired patent. Schreiber specifically charges that Clearfield's activities at its Curwensville, Pa. and Clinton, Mo. plants constitute infringement.
Clearfield employs a Palmer-type ribbon line production at both of the above-named facilities with modifications to achieve alternate offset of the ribbons in the stack. The ribbons are sliced into individual stacks which are then overwrapped to form defendant's "Easy Deal" packages. Although the degree of offset varies and is not strictly limited to the claimed effective range of offset of the Meng patent, the Easy Deal packages do include offset dimensions within that range and Clearfield's offset arrangement is designed to facilitate manual separation.
In support of its defense of patent invalidity under 35 U.S.C. § 103, Clearfield has brought before this court several patents and prior practices in the cheese industry for consideration as prior art and as evidence of ordinary skill. This evidence was not before the CCPA and therefore not considered by it in rendering its decision in this matter.
The Jerome patent, U. S. Patent No. 573,599 discloses a package of uniform rectangular sheets of toilet paper. Adjacent sheets are offset with alternate offset edges aligned "so as to be distinguishable and accessible to the finger of the user." This principle is illustrated by Figure 2 of the Jerome patent.
While the offsetting of sheets is intended for ease in separation and handling, it is the inside edge, lying on the face of the adjacent sheet which is intended to be gripped by the user.
British Patent No. 793,347 published in 1958, discloses the vertical stacking of slices of various flexible synthetic materials of uniform size in an alternative offset arrangement. The apparatus described is to operate with some materials having adhesion problems. The "pieces are alternatively arranged with opposite edges protruding", with the purpose of facilitating the removal of each piece from the stack. The patent does not specify any particular dimension of offset, nor is the stack over-wrapped to form a package. The offset stacking arrangement is depicted in Figure 2 of the patent.
Clearfield has also offered evidence of alternately offset slices in cheese stacks produced by Kraft, Inc. Beginning in 1965, Kraft produced stacks of cheese slices with alternate slices offset as a stage of their production. Kraft's still photographs and a film clip of this process depict a uniform degree of offset within the dimensions claimed in the Meng patent. These stacks were not overwrapped as packages but were manually dismantled for feeding onto a plant production line. The consuming public is not aware of this stage of production which Kraft has kept confidential. The slices were offset to facilitate manual separation of slices. In practice, the degree of offset did vary from the specifications but this was acceptable as long as a grippable edge was exposed.
Also in evidence and under Protective Order are Kraft design drawings depicting cheese slice stacks with uniform alternate offsets. (Defendant's Exhibits 40, 41). Testimony of Kraft employees establishes that these stacks, first produced in 1970 or 1971, were overwrapped to form a package and sold to fast food customers who had demanded stacks allowing for quick, easy separation. These stacks, sold under the name "Stak Pak" or "Stagger Stak Pack", were Kraft's answer to the separation problem. The concept was conceived contemporaneously with the Meng invention of April 1, 1970.
Additional evidence, elicited by plaintiff from its own employees, elaborates on Schreiber's own prior practices in the "shingle stack" production line. In an affidavit to the Patent Office, Bush stated that the temporary offset stacks had employed a uniform offset of ½" which...
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