Oriental Foods v. Chun King Sales

• Decision Date: 16 May 1957
• Docket Number: No. 15104.,15104.
• Citation: 244 F.2d 909
• Parties: ORIENTAL FOODS, Inc., a corporation, Appellant, v. CHUN KING SALES, Inc., and Jeno F. Paulucci, Appellees. CHUN KING SALES, Inc., and Jeno F. Paulucci, Appellants, v. ORIENTAL FOODS, Inc., a corporation, Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

244 F.2d 909 (1957)

ORIENTAL FOODS, Inc., a corporation, Appellant, v. CHUN KING SALES, Inc., and Jeno F. Paulucci, Appellees.

CHUN KING SALES, Inc., and Jeno F. Paulucci, Appellants, v. ORIENTAL FOODS, Inc., a corporation, Appellee.

No. 15104.

United States Court of Appeals Ninth Circuit.

May 16, 1957.

Harris, Kiech, Foster & Harris, Ford Harris, Jr., Walton Eugene Tinsley, Los Angeles, Cal., for appellant.

Lyon & Lyon, Lewis E. Lyon, Robert Douglas Lyon, Los Angeles, Cal., Williamson, Schroeder, Adams & Myers, Everett J. Schroeder, Minneapolis, Minn., for appellee.

Before STEPHENS, FEE and BARNES, Circuit Judges.

BARNES, Circuit Judge.

The plaintiff Chun King Sales, Inc. sought an injunction and damages for patent infringement and unfair competition. 28 U.S.C.A. § 1338(a) and (b) The patent involved is No. 2,679,281, issued on May 25, 1954, to Jeno Francis Paulucci. The defendant denied infringement, challenged the validity of the patent, and, in a counterclaim, asked for a declaration of invalidity. While the original pleadings as to the cause of action for infringement related to all three claims of the patent in suit, the plaintiff, at the trial, restricted itself to a charge of infringement of Claim 1 only.

Defendant Oriental Foods appeals from that portion of the judgment establishing the validity of plaintiff Paulucci's patent, and defendant's infringement thereof. Plaintiffs Paulucci and Chun King Sales, Inc., appeal from that portion of the judgment denying relief from defendant Oriental Foods' alleged unfair competition.

I.

Validity and Infringement.

We adopt the statement describing Claim 1 appearing in the Opinion of the District Court, with the addition of the portion italicized, which was inadvertently omitted from the Transcript:

"The object of the patent in suit is to join cans so that canned foods might be sold together and is on `a method and means for securing cans together in end-to-end relationship.\' Claim 1 describes it:

"`1. The method of securing two cans together said cans having beaded ends protruding beyond their side walls, comprising (1) aligning said cans in end-to-end relationship with adjacent end beads of said cans abutting each other; (2) stretching a portion of a slightly resilient sticky tape and applying said portion of said tape over portions of the abutting beads and adjacent side walls of said cans while said tape is in a stretched condition to secure said cans together; (3) pulling on the portion of said tape not secured to said can in a direction substantially tangential to the periphery of the cans to place same in a stretched condition; (4) and rotating said cans on their longitudinal axes, while said tape is in said stretched condition to cause said tape to be applied and adhere to the remainder of the periphery of said beads and adjacent side walls of said cans.\' for convenience of reference, we have numbered the four elements of the claim." 136 F.Supp. 661.

The District Court in its opinion, correctly stated that "the scope of the claim is narrow," but that "it represents invention over the prior art," insofar as element (2) is concerned. The court then found no anticipation in prior art, because "there is no method in either the Nifong or Johnson patents¹ for applying tension to or stretching the tape either before or after application, in order to cause it to pass around an irregular contour so as to secure, in effect, a welding as set forth in the patent in suit." The court found some prior use, but held that this was experimental and unsuccessful anticipation of the invention, and that it did not amount to a public use.

The letters patent discloses a "method" or "means" or "process" patent. It involves the aggregation of two previously known elements: (1) a 90° angle iron, large enough to hold two or more tin cans longitudinally to each other, resting on the point of its angle, and being secured to a platform, with a "stop" at one or both ends of the angle iron; and, (2) a sticky, resilient tape rolled onto the cans from a tangentially right angle position, which tape is held by hand, or by a tape holder not secured to the platform, or held by both. Claim 1 does not refer to the tape holder, nor make it a part of the claim in any way. The tape holder may be of any type, or none need be used. If a holder is not used, the stretched condition of the severed tape is accomplished wholly by manually pulling on the tape at right angles to the cans. If the tape is still on the roll, the stretched condition is created by pulling the holder away from the cans. In either event, after the cutting of the tape, tension required in the stretched tape can only be applied by manually stretching the tape.

The firmness by which the two tin cans are "welded" together by the use of the cellophane or other "sticky, resilient tape" depends, as shown in Figure 5 of the patent, upon how well or how closely the sticky, resilient tape when applied follows the contours of the can's beading and affixes itself to the beading and, as well, to such portion of the adjacent side walls and/or the labels on said cans, immediately adjoining the beads, as the width of the tape will permit.

If the length of tape is not under tension, a "ruffling" of the tape on the cans takes place and the bond is not as solid, permitting a "play" by the cans, making them more difficult to handle, and easier for an unscrupulous merchandiser to separate and sell separately for a larger combined price.

Claim 1 requires a stretching of the sticky, resilient tape. The word "tension" is not mentioned in the claim. Neither the amount of tension nor the force of the pull is described or defined in the claim. The process or method patented embraces the same results as though two cans were held solidly and longitudinally together in one hand while a piece of cellophane was tightly stretched around the adjoining beads and the adjacent side walls of the can with the other hand. To do this, we must assume the holder has sufficient strength, agility and eyesight to accomplish the desired result.

Ordinary "sticky, resilient," cellophane tape was used manually to accomplish this before the "machine" in question was created, and with the "machine" thereafter. This tape is described as any "pressure sensitive tape with a rubber type adhesive. It requires no activator such as water." Witnesses testified they had seen such cellophane tape used in tying two cans together, from 1944 on.

Holding circular objects desired to be wrapped or tied longitudinally together by manual pressure, or in a trough or against an obstacle on a table, while rolling them, is as old as the art of wrapping packages, coins or any cylindrical objects. Hand taping of cans was done by plaintiff company in 1949, 1950 and 1951 and perhaps as early as late 1948. The plaintiff Chun King Sales first affixed cans together longitudinally by tape in 1948. Thousands of cans so taped were sold by plaintiff in 1949. Chun King Sales taped many cans together by hand in 1949. Such taped cans were a sizable part of Chun King Sales in 1950. The patented "machine" was first used in August of 1951. The application for patent was filed on May 14th, 1952, and the patent was issued May 24th, 1954. The accused machine was acquired by the defendant on May 3rd, 1954, prior to the issuance of the patent in suit. It is stated by the inventor that the basic difference in the use of the tape prior to the patented machine and the use of the tape after the patented machine was that the machine produced more tension on the tape.² Before the use of the patented device, after affixing the tape, tension was created by the hands of the taper, stretching the tape. By the machine, the tension was again created by the hands of the taper holding first the dispenser and next the end of the tape at a sufficient distance and with sufficient pull away from the cans to stretch the tape.

We think any use of cellophane tape demonstrates beyond doubt that after the tape is affixed to whatever objects it is sought to hold together, some degree of tension must be used to stretch the tape, otherwise it ruffles and handles less efficiently than if tension were used. Thus the device serves to accomplish no more than is accomplished by a careful manual application of the tape.

Our first concern is properly with the validity of the patent allegedly infringed. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 330, 65 S.Ct. 1143, 89 L.Ed. 1644. We think this device fails to meet the strict standards set up by the Supreme Court with respect to patents made up of new combinations of old elements. The basic reasoning underlying the unanimous decision of the Supreme Court in Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corporation, 340 U.S. 147, 71 S.Ct. 127, 129, 95 L.Ed. 162, requires us to reverse the decision of the District Court. There the Supreme Court found the patents invalid, despite a finding by both the District and the Circuit Courts^* that the patents were valid as constituting invention. There as here, the lower court relied to some degree on a wide commercial success. There as here, the District Court found a result in excess of the accumulation of results of the individual elements of the claim. In the Atlantic & Pacific case, the Court said:

"While this Court has sustained combination patents, it never has ventured to give a precise and comprehensive definition of the test to be applied in such cases. The voluminous literature which the subject has excited discloses no such test. It is agreed that the key to patentability of a mechanical device that brings old factors into cooperation is presence or lack of invention. In course of time the profession came to employ the term `combination\' to imply its presence and the term `aggregation\' to signify its absence, thus making antonyms in legal art of words which in ordinary speech are more nearly

...