Plastic Container Corp. v. Continental Plastics of Oklahoma, Inc., No. 77-1753
| Court | United States Courts of Appeals. United States Court of Appeals (10th Circuit) |
| Writing for the Court | Before BARRETT and LOGAN; MILLER; Before SETH, Chief Judge, McWILLIAMS, BARRETT, DOYLE, McKAY and LOGAN, Circuit Judges, and MILLER |
| Citation | 607 F.2d 885,203 USPQ 27 |
| Parties | PLASTIC CONTAINER CORPORATION, Plaintiff-Appellant, v. CONTINENTAL PLASTICS OF OKLAHOMA, INC., Defendant-Appellee. |
| Docket Number | No. 77-1753 |
| Decision Date | 25 September 1979 |
Page 885
v.
CONTINENTAL PLASTICS OF OKLAHOMA, INC., Defendant-Appellee.
Tenth Circuit.
Decided Aug. 8, 1979.
Rehearing Denied Sept. 25, 1979.
Page 889
Walter D. Ames, Watson, Cole, Grindle & Watson, Washington, D. C. (Thomas J. Greer, Jr., Diller, Brown, Ramik & White, Arlington, Va., and James A. Peabody, Oklahoma City, Okl., on the brief), for appellant.
William R. Laney, Laney, Dougherty & Hessin, Oklahoma City, Okl., for appellee.
Before BARRETT and LOGAN, Circuit Judges, and MILLER, * Judge.
MILLER, Judge.
Plastic Container Corporation ("Plastic") appeals from an adverse judgment in its patent infringement suit against Continental Plastics of Oklahoma, Inc. ("Continental"). In an order of August 5, 1977, without opinion, the district court denied Plastic's cross-motion for summary judgment, dismissed its complaint, entered judgment in favor of Continental, and awarded Continental costs and attorney fees. We reverse and remand.
The Subject Matter of the Patent in Issue
The infringement suit involves Reissue Patent No. 28,861 to Samuel Hall, Jr. ("Hall Reissue"). 1 The Hall Reissue, obtained pursuant to 35 U.S.C. § 251, 2 is based on Patent No. 3,473,681 3 ("Hall Patent"), which was held invalid in the prior litigation of Plastic Container Corp. v. Continental Plastics of Oklahoma, Inc., Civil Action No. 72-825 (W.D.Okl. December 13, 1973), affirmed in an unpublished opinion of this court, No. 74-1123, October 30, 1974. The subject matter of the Hall Reissue is a container or vial employing a safety plug and a cover which snaps on and off the container. Such containers are used by pharmacists in dispensing medicaments, such as capsules or tablets, as a precaution against access by young children. Figure 1 of the Hall Reissue is illustrative of an embodiment of the claimed invention:
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NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
In order to remove the safety plug (internal closure 20), the external closure cap 36 (snap cover) is snapped off container 10 using abutment key 44, which depends from the side of the external closure cap. With the cap removed, the abutment key is used to remove the safety plug by inserting it into recess 28 of the safety plug and pulling the plug out. Although such manipulations are relatively simple for an adult, they are too complex for most young children. Because the abutment key serves the dual function of a key and a thumb tab, the same external closure cap may be used when there is no safety plug, thus providing the pharmacist with an option to omit the safety plug for a "non-childproof" container.
Claims 5 and 8, the only two claims that remain in the Hall Reissue, are illustrative: 4
5. The safety container closure of claim 1 ( 5 wherein said external closure cap is provided with a peripheral skirt, the lowermost part of said skirt carrying said key, the interior of said skirt carrying an annular bead which snaps over a complementary bead around an outer periphery of the container opening, Whereby the key carried by the external cap functions as a tab against which the thumb is pressed in a generally upward direction to remove the external cap from the container and functions additionally as a key for cooperation with the key recess of the internal closure to thereby permit the internal closure to be removed from its position within the opening of the container.
8. A safety container closure assembly including,
(a) a container having an opening,
(b) an internal closure in the form of a plug positioned within said opening, said closure having a key recess therein,
(c) an outer closure in the form of an external cap positioned over said opening,
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(d) said external cap having a skirt integral therewith and depending from the top of said cap, the interior of said skirt carrying an annular bead which snaps over a complimentary bead on the outer periphery of container opening,
(e) a combination thumb abutment-key integral with and extending substantially horizontally outwardly from said skirt at the lower portion of the skirt, said thumb abutment-key functioning as a tab against which the thumb is pressed in a generally upwardly direction to remove the said external cap from the container and functioning additionally as a key for cooperation with the said key recess of said internal closure to thereby permit said internal closure to be removed from its position within the opening of said container.
Background
An understanding of the previous litigation involving the Hall Patent is necessary for consideration of the issues presented by this appeal involving the Hall Reissue. In its December 13, 1973, unpublished opinion, the district court stated the following conclusions of law: (1) Claims 1-4 and 7 are invalid under 35 U.S.C. § 102 because they "define structures which are devoid of novelty in that they are clearly anticipated by the prior art." (2) Claims 1-5 and 7 are invalid under 35 U.S.C. § 103 "as being directed to structures which lack invention and were 'obvious'." 6 (3) Claims 1-7 7 are invalid under (the second paragraph of) 35 U.S.C. § 112 8 because they "fail to particularly point out and distinctly claim the subject matter which the applicant regarded as his invention." The court somewhat amorphously stated that the invention is not distinctly claimed if "the dictionary meanings of the term 'coincident' are not used in construing the claims," because the specification fails "to explain or set forth the meaning" of that term. (4) Claims 1-7 are invalid for being "in contravention of the provisions of Rule 75(d)(1)," 37 C.F.R. § 1.75(d)(1), 9 because all claims
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contain terms ("at a location not coincident with the location of the key recess," "coincident," and "recess") which do not find clear support or antecedent basis in the description set forth in the specification. (5) Claims 1-7 are invalid under 35 U.S.C. § 112, first paragraph, for failure to set forth the best mode of carrying out the invention ("to provide ribs on the skirt portion of the stopper or internal closure") as contemplated by the inventor at the time of filing his application.On appeal, this court stated in its unpublished opinion (No. 74-1123, Oct. 30, 1974, at 7):
We hold that the Trial Court did not err in finding that the entire patent was anticipated by the prior art. We have considered Plastic's contention raised in its reply brief that the "prior art fails to show an element that functions both as a key which enters a key recess and as a thumb abutment." We agree. However, Such an element, i. e., an abutment functioning as a key and a thumb tab, was never claimed. (Emphasis added.)
The court discussed further testimony at trial and said (Supra at 9):
Applying the prior art of Velt and Mostoller, and the differences between the prior art and Claim 5, considered together with the ordinary skill in the pertinent art, we hold that the Trial Court did not err in finding '681 (Hall Patent No. 3,473,681) invalid as obvious.
We have carefully considered the remaining allegations of error advanced by Plastic. ( 10 They are without merit.
Thus, it is clear that this court affirmed the district court in its conclusion that all claims were invalid under 35 U.S.C. § 103. The court particularly pointed out that the claims failed to recite the limitation on which Plastic relied as evidence of nonobviousness. Moreover, the statement in section III of the opinion indicates that this court intended to reject all of Plastic's allegations of error and to affirm each of the other bases for the district court's holding that the claims were invalid. 11
Acting on the above-quoted statement in this court's previous opinion, that "an abutment functioning as a key and a thumb tab, was never obtained" in the Hall Patent, Plastic returned to the Patent and Trademark Office ("PTO") and filed an application for reissue. Following issuance of the Hall Reissue, Plastic filed this action for patent infringement against Continental.
District Court Proceedings
In the district court, 12 Continental moved for summary judgment and requested an award of costs and attorney fees, arguing: (1) that as a result of the prior litigation between the same parties, Plastic "is barred from relief as a result of the application of one or more of the doctrines of res judicata, collateral estoppel, estoppel by record and/or law of the case"; (2) that the claims
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of the Hall Reissue are invalid because Plastic did not discharge "the heavy duty of complete good faith, and full and open disclosure of all pertinent and material facts to the Patent Examiner during the prosecution of the reissue application"; and (3) even assuming, Arguendo, that the Hall Reissue is infringed, Continental "is vested with certain statutorily recognized intervening rights (pursuant to 35 U.S.C. § 252 13) which immunize" Continental. Plastic cross-moved for summary judgment: (1) on infringement because Continental had admitted that its device is readable upon both claims 5 and 8 of the Hall Reissue; and (2) on validity because reissue claims 5 and 8 are "now purged of the defect" noted in the previous Tenth Circuit opinion.As related earlier, the district court denied Plastic's motion for summary judgment, dismissed its complaint, granted Continental's motion for summary judgment, and awarded Continental costs and attorney fees.
Because the district court did not indicate which of Continental's arguments it found persuasive, 14 this court must consider each argument and, in order for the lower court's decision to be reversed, Plastic must prevail on each issue.
(1) Collateral Estoppel Issue 15
Continental argues that Plastic should be collaterally estopped from asserting Hall Reissue claims 5 and 8 because "these...
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