Sealed Air Corp. v. US Intern. Trade Com'n
| Decision Date | 12 March 1981 |
| Docket Number | 80-4.,Appeal No. 79-35 |
| Citation | 645 F.2d 976 |
| Parties | SEALED AIR CORPORATION, Appellant, v. U. S. INTERNATIONAL TRADE COMMISSION, Polybubble, Inc., Tong Seae Industrial Co., Ltd., Appellees. UNIPAK (H.K.) LTD., Appellant, v. U. S. INTERNATIONAL TRADE COMMISSION, Sealed Air Corporation, Appellees. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
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Lawrence I. Lerner, Westfield, N. J., and Harvey Kaye, Washington, D. C., for Sealed Air.
Glen R. Grunewald, Oakland, Cal., for Tong Seae.
N. Tim Yaworski and Michael H. Stein, Washington, D. C., for I. T. C., in 79-35 and 80-4.
Peter W. Gowdey, Michael L. Keller, W. S. Graham Welton, pro se, for UNIPAK, in 80-4.
Before MARKEY, Chief Judge, and RICH, BALDWIN, MILLER and NIES, Judges.
This is a consolidated appeal from the June 29, 1979 determination of the United States International Trade Commission (ITC) terminating investigation No. 337-TA-54, "Certain Multicellular Plastic Film" (film). All respondents save one were found in violation of section 337 of the Tariff Act of 1930, as amended by the Trade Act of 1974, by reason of the importation of the film into, or its sale in, the United States. We affirm.
On May 12, 1978, Sealed Air Corporation (Sealed Air) filed a complaint with the ITC, alleging violations of Section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337), by the importation into the United States, or subsequent sale, of film manufactured in a foreign country by processes that allegedly infringed method claims 1 and 2 of U. S. Letters Patent 3,416,984 ('984).
After a January 1979 evidentiary hearing, a Commission Administrative Law Judge (ALJ) concluded that the claims were invalid under 35 U.S.C. § 103 and recommended that no violation of 19 U.S.C. § 1337 be found. The ALJ determined that the ITC had jurisdiction over all respondents.
Manufacturers named and served were: Tong Seae Industrial Co., Ltd. (Tong Seae) of Taiwan; Conform Plastics Ltd. (Conform) of New Zealand; and Unipak (H.K.) Ltd. (Unipak) of Hong Kong. Importers named and served were Polybubble, Inc. (Polybubble) and Peter Darlington, d/b/a Solar Pool Covers (Darlington).
Unipak neither answered the complaint nor participated in discovery. Conform filed a response but did not participate in discovery or in the hearing. Darlington participated in discovery but not in the hearing. Neither Conform nor Darlington is represented in this appeal.
A June 26, 1978 mailing of the complaint and other papers by the ITC to Unipak resulted in a return receipt stamped July 6, 1978. Unipak admittedly received Sealed Air's request for discovery and declined to participate. Four shipments of film into the United States were made by Unipak, with Polybubble as the importer.
On December 7, 1978, upon motion by Sealed Air, the ALJ issued Order No. 6, finding Unipak in default and ruling that "without further notice to Unipak, the facts may be found to be as alleged in the complaint and notice of investigation."
The Commission: (1) reversed the ruling of invalidity; (2) found Tong Seae's process non-infringing; and (3) sustained the finding of jurisdiction with respect to Unipak. Conform and Unipak were found to have infringed claims 1 and 2 of the '984 patent. All respondents except Tong Seae were held in violation of 19 U.S.C. § 1337.
Polybubble, as an importer of Unipak's products, and Tong Seae challenge the ruling that the '984 patent is valid. Sealed Air challenges the determination of non-infringement by Tong Seae. Unipak challenges the determination that it is subject to the jurisdiction of the ITC.1
(1) Would the subject matter of claims 1 and 2 of the '984 patent have been obvious to one of ordinary skill in the art at the time the invention was made?
(2) Was the determination that Tong Seae's extrusion process does not infringe claims 1 and 2 of the '984 patent erroneous?
(3) Did the ITC have jurisdiction to exclude Unipak's product?
The '984 patent discloses and claims a process for manufacturing film. Two sheets of polyethylene are so heated, shaped, and bonded together as to form numerous air-tight cells. The resulting cushioning and insulating properties make the product useful as packaging material and as covers for swimming pools.
In the '984 process, two sheets of film are separately heated. One sheet (the embossed film) is heated to a low temperature sufficient to render it deformable by vacuum drawing into the cavities of an embossing roller to form numerous discrete embossments. The second sheet (the laminating film) is heated to about the fusion temperature with at least one surface above the fusion temperature, and then applied to the now embossed surface of the embossed film while the latter is still on the embossing roller. During their mating, transfer of heat from the laminating film to the embossed film seals the two films to form a product having numerous airtight cells.
Unlike prior art techniques, the '984 process employs a cooler embossed film and a hotter laminating film. It had previously been thought that effective sealing required the mating surfaces of both films to be at or above the fusion temperature2 at the "kiss point," where the embossed film contacted the laminating film. The problem was that when the embossed film was heated to fusion temperature, it became so soft and weak that individual embossments often ruptured when subjected to vacuum during their formation. The solution to that problem disclosed in the '984 patent is to so increase the temperature of the contact surface of the laminating film as to allow a reduced temperature of the contact surface of the embossed film, thus permitting vacuum embossment without rupture, and to transfer the excess heat from the laminating film to the embossed film at the kiss point, thus equalizing the temperatures of both films at or above the fusion temperature and producing an effective heat seal between them.
Claims 1 and 2 of the '984 patent read:
Analysis of validity under 35 U.S.C. § 103 requires determination of the scope and content of the prior art, ascertainment of differences between the prior art and the invention claimed, and resolution of the level of ordinary skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 693, 15 L.Ed.2d 545 (1966).
The principal prior art reference is U.S. patent No. 3,142,599 (Chavannes I) assigned to Sealed Air.3 Chavannes I discloses a process of embossing a heated film and applying a heated laminating film to the embossments, and, as in the '984 patent, employs low density polyethylene films having a narrow temperature band in which embossing may be performed. The minimum embossing temperature4 and the melting temperature5 are separated, dependent on the characteristics of the film selected, by as little as ten to twenty degrees. The embossing temperature is between 218 and 226°F and the melting temperature is between 225 and 230°F.6 The fusion temperature is between 214 and 222°F.
Chavannes I teaches that both films should be so heated that their mating surfaces will be at fusion temperature at the kiss point. Both films were processed in Chavannes I at a temperature considered very close to their upper limits, and the embossed film remained susceptible to ruptured embossments. Though the surface of the embossed film in contact with Chavannes' cool embossing roller lost heat, Chavannes taught maintenance of its opposite or "mating" surface at the fusion temperature or greater. The film being relatively thin (1-5 mils), each of its surfaces is affected by temperature changes on the opposite surface. Extreme care was necessary with the Chavannes I process in attempting to minimize the tearing effect of embossment by keeping one surface of the embossed film as cool as possible, while simultaneously, and directly contra the teachings of the '984 patent, maintaining the opposite mating surface at fusion temperature.
Though claim 1 of the '984 patent speaks of initially heating the mating surface of the embossed film to about its fusion temperature, the cooling step of that claim reduces that temperature below the fusion level; next, at the kiss point, the surface of the embossed sheet is brought up to fusion temperature. Nothing in Chavannes I discloses or suggests the steps of the asserted claims in which the mating surface of the embossed film is cooled and sealing is accomplished through heat transfer from the laminating layer.7
Chavannes and Fielding obtained a patent (Chavannes II) on "Apparatus For Embossing And Laminating Material",8 relating to fabrication of film. Chavannes II discloses...
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