Reynolds Metals Co. v. Continental Group, Inc.

• Decision Date: 06 July 1981
• Docket Number: No. 76 C 4198.,76 C 4198.
• Citation: 525 F. Supp. 950,210 USPQ 911
• Parties: REYNOLDS METALS COMPANY, Plaintiff, v. The CONTINENTAL GROUP, INC., Defendant.
• Court: U.S. District Court — Northern District of Illinois

525 F. Supp. 950

210 USPQ 911

REYNOLDS METALS COMPANY, Plaintiff, v. The CONTINENTAL GROUP, INC., Defendant.

No. 76 C 4198.

United States District Court, N. D. Illinois, E. D.

July 6, 1981.

COPYRIGHT MATERIAL OMITTED

George M. Sirilla, John W. Malley, Allen Kirkpatrick, W. Warren Taltavull, Peter W. Malley, and Cushman, Darby & Cushman, Washington, D. C., John F. C. Glenn and Robert C. Lyne, Jr., Richmond, Va., Holland C. Capper, Chicago, Ill., for plaintiff.

James R. Sweeney, Ronald B. Coolley, Mason, Kolehmainen, Rathburn & Wyss, Chicago, Ill., John J. Kowalik, Glenview, Ill., for defendant.

FINDINGS OF FACT AND CONCLUSIONS OF LAW

MEMORANDUM OPINION

ROSZKOWSKI, District Judge.

This action was commenced in November, 1976 by Reynolds Metals Company charging The Continental Group with infringement of two U. S. Patents owned by Reynolds. The Continental Group filed a counterclaim alleging that both of Reynolds' patents are invalid because of an alleged prior patent owned by Continental and charging Reynolds with infringement of its patent. Reynolds, in turn, filed two counterclaims contending that Continental's patent is invalid and unenforceable and has not been infringed. Before the court is a ruling on the bench trial held in this case on April 21-25, 28-30, and May 5-6, 1980. For the reasons herein stated, this court finds in favor of plaintiff Reynolds.

FINDINGS OF FACT¹

THE PARTIES AND THEIR CONTENTIONS

Reynolds Metals Company, ("Reynolds"), plaintiff and counter-defendant, is a Delaware corporation with its principal place of business in Richmond, Virginia.

The Continental Group, Inc. ("Continental"), defendant and counter-plaintiff, is a New York corporation with its principal place of business in Chicago, Illinois.

Reynolds is the owner of the entire right, title, and interest to United States Patents Nos. 3,967,752 and 3,967,753 (the "Cudzik" patents '752 and '753) which issued on July 6, 1976.²

Continental is the owner of the entire right, title, and interest to United States Patent No. 4,051,976 (the "Perry" patent '976) which issued on October 4, 1977.³

The application for the Perry '976 patent claimed the benefit of U. S. Patent No. 3,843,011 (the "Perry" patent '011) filed on March 2, 1972.

Reynolds maintains that Continental's manufacture of Permatab ends or Pontiac ends under its Perry patent '976 infringes claims 1-3, 5, 6, 8-13, 16-21, 24, 29, and 31 of Reynolds' Cudzik '752 patent and claims 1-4, 7, 8, 10-12, 14, and 15 of Reynolds' Cudzik '753 patent as provided by Title 35 U.S.C. § 281.

Continental, on the other hand, contends that Reynolds' manufacture of Stay-On-Tabs ("SOT") under its Cudzik '752 and '753 patents infringes claims 1, 2, 4-6, 8-11, 14-19, 23-25, 27-32, 34, 35, 38, 39, and 50 of Continental's Perry patent '976 as provided by Title 35 U.S.C. § 281.

Reynolds, in its counterclaim, maintains that, if this court concludes that the claims of the '976 patent covers the structures manufactured by Reynolds under patents '752 and '753, then the claims of these three patents cover common subject matter so that the three patents are interfering under 35 U.S.C. § 291.

Additionally, Reynolds argues that all of the claims in the Perry '976 patent are invalid and/or unenforceable under 35 U.S.C. §§ 101, 102(a), (b), (c), (e), (f), (g), 103, 112, and 115 and seeks a declaratory judgment that the '976 Perry patent is invalid.

The following issues are before this court:

(1) Whether claims 1-3, 5, 6, 8-13, 16-21, 24, 29, and 31 of plaintiff's U. S. Patent No. 3,967,752 are valid under 35 U.S.C. §§ 101, 102, 103, 111, 112, 113, 115, 116, 121, 181, 184, 185, 291, and 292; and, if so, whether any of them have been infringed by the defendant, and whether the infringement was willful and deliberate;

(2) Whether claims 1-4, 7, 8, 10-12, 14, and 15 of plaintiff's U. S. Patent No. 3,967,753 are valid under 35 U.S.C. §§ 101, 102, 103, 111, 112, 113, 115, 116, 121, 181, 184, 185, 291, and 292; and, if so, whether any of them has been infringed by the defendant, and whether the infringement was willful and deliberate;

(3) Whether the plaintiff's U. S. Patent Nos. '752 and '753 and each and every claim thereof are valid or whether defendant's U. S. Patent No. 4,051,976 and each and every claim thereof are valid under 35 U.S.C. § 291; and

(4) Whether claims 3, 7, 12, 13, 20, 22, 26, 33, 36, 37, and 40-49 of defendant's U. S. Patent No. 4,051,976 are valid and enforceable; and, if so, whether any of them has been infringed by the plaintiff.

Because this court finds that Cudzik, the patentee of plaintiff's patent Nos. '752 and '753, was the first inventor as against Perry as to the subject matter in suit, we conclude that plaintiff's U. S. Patent Nos. '752 and '753 are valid and that claims 1-6, 8-13, 16-24, 29, and 31 of patent No. '752, and claims 1-8 and 10-15 of patent No. '753 have been infringed by defendant. Additionally, we conclude that defendant's patent No. 4,051,976 is invalid and unenforceable.

THE BACKGROUND AND THE PATENTS IN SUIT

Both of the patents in suit concern nondetachable opening devices for beverage cans.

Since the early 1960's, the removable ring pull tab has been the means used most widely for opening beverage cans.⁴

The patents in suit are directed to the tops or ends⁵ of beverage cans and are designed to replace the removable ring pull tab with a non-detachable lift tab, which has such benefits as reducing the litter of, and potentially hazardous edges of, the ring pull tabs, and aiding in energy conservation through recycling.

Samples of the Reynolds and Continental cross-accused devices now on the market are shown side-by-side below.

The non-detachable tabs are operable, upon lifting, to completely form the pour opening in the can without requiring any finger push-in action on the top end wall of the container. The top end wall pour opening area is defined by a tear panel formed by a score or cut line with a lift tab connected to the end wall by a rivet located outside of the tear panel area.

To open the pour opening in the end wall, the lift tab is fully raised by the fingers from a horizontal position (or a position whereby the tab lies flat against the end wall) to the vertical position (or a position whereby the tab is perpendicular to the pour opening). The pour opening is produced by lifting the tab which causes the tear panel to be substantially completely severed from the top end wall and to be forced, or depressed, down into the can. After the pour opening is produced, the tab remains attached to the end wall and may be pushed back to its original horizontal, or flat, position out of the way of the pour opening.

Prior to the early 1960's, beverages were marketed in cans that required the use of a separate can-opening device to cut pour openings. Beginning in the early 1960's, Ermal C. Fraze and his company, Dayton Reliable Tool and Manufacturing Co., developed the rivet system used to secure the detachable pull tab to the tear panel.⁶

This Fraze-Dayton device included a scored (or cut) line in the beverage can end wall to form the tear panel. An integral rivet was secured within the tear panel near the center of the can end, and the pull tab was secured to this rivet. To produce the pour opening, the tab was lifted, which caused the score line to rupture and which released the pressure within the can. The tab was then pulled entirely off the can end. The current commercial production in this country of beverage cans using the Fraze-Dayton patent is estimated to be approximately 54 billion per year.

Because of the safety and environmental problems that resulted from the throwing away of this detachable pull tab, a need emerged to develop a non-detachable opening device for beverage cans. The need became particularly important in the face of local and state legislation banning cans with detachable opening devices.

For the next ten years or so, various companies and individuals sought to develop a solution to the problem. Several solutions were contemplated, including the development of an opening device which required a finger push-in action upon the area forming the pour opening. Although this concept was advocated and marketed, this solution ultimately failed to have any real impact.

THE DEVELOPMENT OF REYNOLDS' CUDZIK PATENTS '752 AND '753

In August, 1971, Reynolds assigned the responsibility of inventing a non-detachable opening device for beverage cans to its employee, Daniel F. Cudzik.

By September 28, 1972, Cudzik filed a patent application for a beverage can non-detachable tab which would be disposed of at right angles to the greatest length of the tear panel. This device became known as the "Montana end" and was eventually incorporated into Cudzik's '753 patent in suit. An exemplary form of that structure is shown below.

The principle of operation of the Montana end is that the user places his finger under the rear end of the tab and lifts it up which causes the front end of the tab to press down on the score line directly under the front end of the tab. Lifting the tab ruptures or severs the tear panel in a limited amount thereby venting the interior pressure of the can. Continued upward lifting of the tab (to a vertical position and beyond) presses the forward end of the tab farther down against the tear panel causing the entire panel to be depressed down into the can. The initial rupture of the score line propagates away from the tab toward the periphery of the can and around the enlarged curved end of the tear panel to completely form the pour opening while simultaneously swinging the tear panel down from the end wall so as not to be in the way of the beverage when it discharges through the opening. The tab may then be pushed back approximately to its original flat position so as to be out of the way should the user drink the beverage directly from the can. The tear panel remains connected to the end wall through an...