Plastic Container Corp. v. Continental Plastics
| Decision Date | 26 March 1981 |
| Docket Number | No. CIV-76-1011-B.,CIV-76-1011-B. |
| Citation | 515 F. Supp. 834 |
| Parties | PLASTIC CONTAINER CORPORATION, Plaintiff, v. CONTINENTAL PLASTICS OF OKLAHOMA, INC., Defendant. |
| Court | U.S. District Court — Western District of Oklahoma |
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Walter Ames, Washington, D. C., and Thomas J. Greer, Jr., Arlington, Va., for plaintiff.
William R. Laney and Jerry J. Dunlap, II, Oklahoma City, Okl., for defendant.
On Request For Attorney's Fees March 26, 1981.
FINDINGS OF FACT AND CONCLUSIONS OF LAW
This matter came on for trial before the court on September 29, 30 and 31, 1980, with plaintiff represented by Walter Ames and Thomas J. Greer of Washington, D.C., and defendants represented by William R. Laney and Jerry J. Dunlap of Oklahoma City, Oklahoma.
Upon consideration of the evidence adduced at trial, this court makes the following Findings of Fact and Conclusions of Law:
Findings of Fact
1. This is a patent infringement action brought under the provisions of 35 U.S.C. § 281 and entails defenses asserted by the defendant under the provisions of 35 U.S.C. § 282.
2. The principal substantive issue before the court is the validity of the two claims of the plaintiff's U. S. Patent RE 28,861. The issue of infringement of the claims, if valid, has been settled of prior adjudication of this question in an earlier part of this litigation. Defendant also contends this is an exceptional case within the meaning of 35 U.S.C. § 285, and thus may justify an award of attorneys' fees to the defendant.
3. The plaintiff's patent here in suit is a reissue patent, having been reissued on June 15, 1976, by the United States Patent Office on the basis of an application filed on May 23, 1975, and is a reissue of Hall U. S. Patent 3,473,681 also owned by the plaintiff, and previously held invalid.
4. The reissue patent concerns a container and a double or two-part closure for that container, with the parts interfitted with each other and cooperating in such a way that opening of the container would be difficult for children.
5. The patent in suit contains two claims (claim 5 and claim 8) directed to the described safety container closure assembly, and these two claims are as follows:
6. This case comes before this court as the most recent phase of protracted litigation between the same parties involving, essentially and in substance, the same subject matter. In a first suit, the Hall U. S. Patent 3,473,681, upon which the reissue patent in suit is based, was held by this court invalid and not infringed by the defendant, and that decision was affirmed on appeal. (No. 74-1123) (10th Cir. Oct. 30, 1974).
7. For purposes of comparison, the two claims of the reissue patent in suit with the most similar or nearly identical invalid claim appearing in the original Hall patent, claim 5 of that patent is set forth in extensio:
8. In affirming invalidation of claim 5 of the original Hall patent, the Tenth Circuit Court of Appeals noted that the safety container closure assembly there claimed was anticipated as including only:
"an aggregation of elements old in the art, which when considered together, disclose all of the claimed elements" from the combination of which "no new functional relationship arises"
The appellate court also affirmed, as a second and alternate reason for the invalidation of the Hall patent, and claim 5 in particular, the obviousness per 35 U.S.C. § 103 of the claimed container closure assembly in view of the teachings of the prior art, particularly the Mostoller and Velt U.S. Patents. The appellate court noted particularly, and cited, the admissions of the plaintiff's President and the patentee Hall relative to the very slight degree of modification from the known prior art which had been involved in arriving at the alleged invention.
9. A comparison of the two claims in plaintiff's reissue patent here in suit with invalid claim 5 of the original patent shows that the only difference of substance to be found is the recitation in the two reissue claims that a structural element present and referred to as a key in invalid claim 5 can be pushed upon to remove an external cap which carried such key. The cap and key, and arrangement and location of each, were referred to in the original invalid claim 5. Only the thumb pushing capability has been added.
10. No single prior art patent or publication placed in evidence by the defendant in the course of the trial before this court on plaintiff's reissue patent disclosed each and every identical element arranged in the same combination as such elements are recited and arranged in the two patent claims.
11. The patent claims and not the specification or drawings define the invention and its true scope. Further, the terms used in patent claims are to be accorded their ordinary meaning, absent a manifest contrary intent on the part of the patentee. Each and every element which is recited in the two claims before the court can be clearly discerned in the collective prior art of record.
12. The trial and appellate court's prior finding in the litigation on the first Hall patent was that everything appearing in claim 5 of that patent was "anticipated" by the prior art, which, by the definition appearing in the opinion of the appellate court affirming the invalidity of that claim, meant that all the prior art "considered together, discloses all of the claimed elements" in a combination from which "no new functional relationship arises."
13. Taylor U. S. Patent 1,761,597 (in DX-6 and see DX-23) discloses an external cap for a container, which cap carries a projecting tab or abutment which the patent states can be used as a prong or key to remove an internal closure positioned in that same container, and also used as a finger or thumb abutment or tab to allow the external cap to be snapped or pushed off of the container.
The 1931 Taylor patent teaches and equates to the sole difference between the two claims of the plaintiff's reissue patent in suit and claim 5 of the original Hall patent, the narrowest claim of that patent (and closest to the two claims here in suit), and held invalid as containing only elements which were, in their entirety, to be found in the prior art. It appears in logic the sum of the Taylor disclosure plus the other prior art equals the sum and arrangement of all of the elements in the two claims of the patent in suit.
14. The teachings and disclosure of the Taylor patent, British Patent 598,455 (in DX-6), offered and received in evidence here, also includes a horizontally projecting, integrally formed element carried on an external cap, and performing the dual function of a key for removing an internal closure or cap, as well as a thumb tab. Again, this prior art reference, when considered conjunctively with the teachings of the prior art previously considered by this court in invalidating the original Hall patent, equates to the only and slight difference...
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Plastic Container Corp. v. Continental Plastics of Oklahoma, Inc., 81-1484
...omitted). 4 On remand, the district court reconsidered the validity of the reissued patent. See Plastic Container Corp. v. Continental Plastics of Oklahoma, Inc., 515 F.Supp. 834 (W.D.Okl.1981). The court examined whether the additional claim of the dual function thumb tab cured the flaws i......