Monaplastics, Inc. v. Caldor, Inc.

• Decision Date: 04 November 1966
• Docket Number: Civ. No. 10906.
• Citation: 264 F. Supp. 57
• Court: U.S. District Court — District of Connecticut
• Parties: MONAPLASTICS, INC., William C. Monahan v. CALDOR, INC.

264 F. Supp. 57

MONAPLASTICS, INC., William C. Monahan v. CALDOR, INC.

Civ. No. 10906.

United States District Court D. Connecticut.

November 4, 1966.

Armand Cifelli, Garold E. Bramblett, Jr., Wooster, Davis & Cifelli, Bridgeport, Conn., for plaintiffs.

Roger B. McCormick, McCormick, Paulding & Huber, Hartford, Conn., William S. Rambo, Mahoney, Miller & Rambo, Columbus, Ohio, for defendant.

RULING ON MOTIONS FOR SUMMARY JUDGMENT AND TO AMEND COMPLAINT

BLUMENFELD, District Judge.

This is a suit for infringement of U.S. Patent No. 3,160,361 entitled "Unitary Paper Towelling Rack" made entirely of polypropylene. The patent was applied for on August 21, 1962, and on December 8, 1964, it was issued to William C. Monahan, who assigned it to the plaintiff. The defendant pleaded invalidity of the patent as an affirmative defense and has also counterclaimed for a declaration of invalidity and noninfringement. It now moves for summary judgment on the ground that the patent in issue is invalid because it fails the test of nonobviousness under 35 U.S.C. § 103.

This court has jurisdiction of this suit under the patent laws of the United States. 35 U.S.C. §§ 271, 281 and 28 U.S.C. § 1338.

I.

The invention is a simple device, easily understood without benefit of technical experience. As described by the inventor pursuant to 35 U.S.C. § 112:

"The invention generally pertains to wall-mounted supports for articles in the form of rolls of sheet material, such as paper, and particularly to paper towelling racks.

"It is a common sight in the average kitchen to see a wall-mounted paper towelling rack for supporting rolls of paper towelling. Most known paper towelling racks are formed of metal, as by being stamped, or of nonmettallic plastic materials, as by being molded. The field is highly competitive, and heretofore, plastic racks have been extremely popular. However, all known plastic racks are formed of a plurality of components which are individually molded and assembled into a completed rack. Furthermore, all such known plastic racks include conventional hinging structures, including hinge pins, for individually hingedly connecting the usual spaced arms of the rack which support the rolls to the usual back plate of the rack which, in turn, is employed to mount the entire rack on a wall. * * *

* * * * * *

"The object of the invention is accomplished in one form by providing a molded plastic paper towelling rack in the form of a unitary structure that can be molded in one piece in its final form.

* * * * * *

"One of the important features of the invention which permits the entire rack to be formed in a single piece is that of providing hinges between the arms and back plate in the form of hinge webs * * * that can be integrally formed with the entire rack by molding plastic materials. It has been found in practice that unitary racks having integral hinge webs may be conveniently formed by known injection molding techniques utilizing polypropylene as the plastic material. * * *"

Another important feature he stresses is the flexibility of the arms permitting them to be forced apart sufficiently to permit changing rolls of paper towelling. And finally, he emphasizes that the hinge permits the arms to be folded inwardly, to lie flat on the back plate, making for economy in packaging and shipping.

Applicability of Summary Judgment

Despite earlier cases denying the use of summary judgment to resolve the validity of a patent, it is now widely recognized that summary judgment may be entered under Rule 56 in a patent case where appropriate. "There is no special rule for patent cases." Allen v. Radio Corp. of America, 47 F.Supp. 244, 246 (D.Del.1942); 6 Moore, Federal Practice ¶ 56.17(44) at 2613 (3d ed. 1965). In sustaining a summary judgment holding a patent invalid on the ground of its "obviousness" under 35 U.S.C. § 103, it was pointed out that:

"Summary judgment represents a most useful legal invention to save time and expense, by the avoidance of a trial, when there exists no material fact-issues. It may well be that, in a patent case, a judge should exercise unusual caution in granting a summary judgment. But there are patent cases where it would be an absurd waste of time and effort to deny such a judgment." Vermont Structural Slate Co. v. Tatko Bros. Slate Co., 233 F.2d 9, 10 (2d Cir.), cert. denied, 352 U.S. 917, 77 S.Ct. 216, 1 L.Ed.2d 123 (1956).

II.

The movant in this case argues that the patent in issue is invalid within the meaning of § 103¹ in "that the differences between the subject matter claimed in the patent 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 formula by which nonobviousness of subject matter is to be tested was recently outlined by the Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 694, 15 L.Ed.2d 545 (1966), as follows:

"1 The scope and content of the prior art are to be determined;

2 differences between the prior art and the claims at issue are to be ascertained; and

3 the level of ordinary skill in the pertinent art is to be resolved.

4 Against this background, the obviousness or nonobviousness of the subject matter is determined."

The Prior Art

It should be borne in mind that the patent is for a one-piece paper towel rack molded from nonmetallic plastic, rather than for the process by which it is made, or for the polypropylene from which it is made. Indeed, since the inventor said in his own words when he applied for this patent, "it is a common sight in the average kitchen to see a wall-mounted paper towelling rack for supporting rolls of paper towelling," one might be tempted to say off-hand that his towel rack, while "new and useful," is not "invention" or "discovery" under 35 U.S.C. § 101. See Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84, 90-92, 62 S.Ct. 37, 86 L.Ed. 58 (1941); (adhered to in Graham v. John Deere Co., supra, 383 U.S. at 15, 86 S.Ct. 684). In addition to this disclosure by the patentee, there was more definitive prior art providing a basis for the application of § 103. That section requires that the prior art teachings be evaluated as a whole.

"Where a patent includes a combination of elements, it is not necessary to establish anticipation that all of the elements be found in a single earlier patent or in a single device previously in general use. It is enough if the evidence, taken as a whole, discloses that all the claimed elements are found in different prior patents in the art or in different devices previously in general use, and no new functional relationship arises from their combination." Lyman Gun Sight Corp. v. Redfield Gun Sight Corp., 87 F.2d 26, 28 (10th Cir. 1936) (Emphasis added).

Fairchild v. Poe, 259 F.2d 329, 332 (5th Cir. 1958); Tele-Sonic Packaging Corp. v. Errich International Corp., 173 F. Supp. 335, 342 (S.D.N.Y.1959).

The prior art patents can be summarized briefly. The Krueger patent, U.S. Patent No. 2,222,951, issued November 26, 1940, was for a "Bracket for Dispensing Rolls." According to the patent, it was "particularly adopted for supporting a roll from which paper toweling or the like is dispensed * * *." It disclosed a unitary structure for it was formed "integrally of sheet metal" which is a plastic substance. See Cornell v. Chase Brass & Copper Co., 142 F.2d 157, 159 (2d Cir. 1944). The device employed arms to be sprung apart to receive the roll which was to be dispensed. While Krueger may not be a complete anticipation because presumably it was shaped from metal by a stamping machine with suitable dies rather than molded from thermoplastic polypropylene, it did teach a one-piece towel rack used to perform substantially the same functions in substantially the same way as the subject matter of the patent in suit.

The Mayer patent, U. S. Patent No. 3,038,676, issued June 12, 1962, discloses a towel roll holder made entirely of moldable nonmetallic plastic material by injection molding. This is made in three parts, a back plate and two arms. The arms are interchangeable and are easily snapped into place in the process of assembly. Holes in the top and bottom flange of the arm fit over pins integral with the back bar. It is obvious that the arms can be turned inwardly on these hinges to permit economical packaging.

The foregoing patents were considered by the Patent Office but the following prior art was not.

The Perelman design patent, U. S. Patent No. 161,199, issued December 12, 1950, claims the design of an all-plastic towel rack with metal hinge pins.

The Dolezal patent, U. S. Patent No. 2,746,087, issued May 27, 1956, teaches a method of manufacturing a frame for spectacles as an integral unit from polymer and cold-working a portion of each temple at the rim, whereby molecular orientation in said portions is effected and their strength and resiliency is increased, so that said portions provide sufficient strength and resiliency to cause the temples to grip the head of the wearer, and to permit the temples to be folded inwards to a sustantially flat position when out of use.

It is significant that before Monahan applied for his patent, the plastics industry had been widely and comprehensively informed of the principles, properties, basic design and molding techniques of Monahan's principal claim—the application of the polypropylene hinge to the manufacture of a unitary paper roll towel rack. A description in a printed publication prior to the date of the applicant's invention is part of the prior art. 35 U.S.C. § 102(b). An article in a trade magazine, Materials in Design Engineering, October 1960, entitled "The Polypropylene Hinge: Long Life at Low Cost" explained "how it works * * * how to design one * * * and some outstanding examples of successful use." "The Molded-In Hinge in Polypropylene...