Shanklin Corp. v. Springfield Photo Mount Co.
Decision Date | 20 August 1975 |
Docket Number | No. 75-1061,75-1061 |
Citation | 521 F.2d 609 |
Parties | SHANKLIN CORPORATION, Plaintiff-Appellant, v. SPRINGFIELD PHOTO MOUNT COMPANY, Defendant-Appellee. |
Court | U.S. Court of Appeals — First Circuit |
Charles E. Pfund, Boston, Mass., with whom Dike, Bronstein, Roberts, Cushman & Pfund and Robert E. Meyer, Boston, Mass., were on brief, for plaintiff-appellant.
Charles W. Bradley, New York City, with whom Robert J. Horn, Jr., Kenway & Jenney, Boston, Mass., and Cooper, Dunham, Clark, Griffin & Moran, New York City, were on brief, for defendant-appellee.
Before COFFIN, Chief Judge, McENTEE and CAMPBELL, Circuit Judges.
Plaintiff Shanklin Corporation sued Springfield Photo Mount Company for infringement of its patent, No. 3,583,888. The claimed infringing device, "Weldotron Model 5872 Automatic L Bar Package Forming System," is manufactured by Weldotron Corporation, which is the real party in interest defending in this action. The district court held that the patent was invalid and unenforceable, 387 F.Supp. 345 (D.Mass.1975), and Shanklin appeals.
Shanklin's patented apparatus is an "in-line" packaging machine, a term used when the articles to be wrapped follow a straight-line path to and through the machine. The wrapping material, a thermo plastic film, must be heat sealable so that its edges can be sealed around the articles being wrapped, and it may be heat-shrinkable so that the packages The application for the Shanklin patent was filed on April 10, 1969. The Patent Office examiner initially rejected all claims, principally on the basis of Deans, et al. patent No. 3,420,035, which shows an in-line continuous-motion packaging machine. The examiner stated that it would be obvious to modify the Deans machine in accordance with prior art L-sealers (Hosso patent over sealing mechanism and Kral patent over feeding mechanism, which conveys articles to be packaged at right angle to the straight-line path of the film) to achieve the Shanklin claims. In particular, the examiner stated,
formed by the machine can be passed onto a conveyor and through a hot air tunnel to be shrunk into a tightwrap. A supply roll of the film is located out of the straight-line path of the articles, and the film is drawn from the roll into the articles' path, where it makes a 90o turn to follow the remainder of the path. The film must be in a folded condition (longitudinally along its center) while on the roll or before it turns the corner. By being tracked over a u-shaped rod called an "inverting head," 1 the folded film is able to turn the corner into the article path and in the process effectively turned inside out so that its sides are separated and capable of receiving an article passing along the in-line article path through the inverting head. The article to be wrapped, passing between the film's open sides, presses against a previously made transverse seal across the film to advance the film into a sealing area. There an L-shaped bar ("L-sealer") seals the film longitudinally along the side of the article and transversely behind the article, thus forming a complete closure around the article. The film is severed at this transverse seal in such a way as to separate the completed package from the roll of film and also to provide the forward edge for the next article to be packaged. The articles can be passed either manually or automatically by a mechanical pusher.
Shanklin responded that the Deans patent was deficient in its disclosure of the folding head that it showed the desired result of folding the web without showing how to accomplish the result. Shanklin pointed out that in the Deans machine the web could not be folded into a v-shape prior to an inverting operation as stated by the examiner. In any event, according to Shanklin, it was unnecessary for Deans to describe the folding mechanism in detail because folding heads are old in the art and have been frequently used to wrap flat film around a mandrel, or forming head, to form a tube while articles to be packaged are passed through the mandrel into pouches as they are formed. Shanklin stated that, by contrast, the present invention involved pre-folded film turned inside out around an inverting head, thus permitting
the film to pass through the sealing machine in a single plane simply, efficiently, and without elaborate film guides a result which is particularly useful in L-sealers. Shanklin stated,
The Patent Office examiner, in a "final" action, rejected the argument that the Deans folding head was insufficiently disclosed and again rejected all claims for the reasons stated originally. The inventor, F. Garrett Shanklin, subsequently had an interview with the examiner, and this was followed by an amendment submitting revised claims and containing remarks of what had transpired at the interview. The amendment states that at the interview Mr. Shanklin, in addition to showing three short motion pictures to demonstrate his machine, explained that it was a great improvement over prior art L-sealers, in which articles followed a right-angle path, because the Shanklin machine provided increased speed of operation and ease of adjustability for packaging articles of varying size. As for the Deans patent, Mr. Shanklin explained that when he first started to develop a straight-line L-sealer, he had tried a film feed and folding means similar to Deans's, using a roll of flat film mounted vertically and centered on a horizontally oriented and u-shaped folding head:
Thereafter, on June 18, 1971, a patent showing the Shanklin apparatus (but not the method) was allowed. The claims of the patent are recited in an appendix to this opinion.
The Shanklin machine was introduced in April 1969. In the fall of 1965 Weldotron introduced an automatic L-sealing packaging machine, based on Zelnick patent No. 3,429,100. This machine fed articles at right angles onto a straight film flow. Weldotron built its first in-line L-sealer in 1970 and in the spring of 1971 introduced its Model 5872 in-line L-Sealer, which is the machine at issue here and substantially the same as the Shanklin machine. Weldotron asserts On November 25, 1969, about seven months after the filing for the Shanklin patent, and after Weldotron vice-president of engineering Seymour Zelnick had seen the Shanklin machine, Weldotron filed an application for a patent showing a large in-line L-sealer, with a u-shaped inverting mechanism almost identical to the Shanklin machine. A patent was later issued as Zelnick patent No. 3,619,970, which has been disclaimed by Weldotron since the trial of this case. That Weldotron's claims before the Patent Office were inconsistent with its present posture on the Shanklin patent is a factor to be considered; still, the prosecution of the Zelnick patent did not estop Weldotron from denying in this suit the validity of the Shanklin patent. See Paramount Corp. v. Tri-Ergon Corp., 294 U.S. 464, 476-77, 55 S.Ct. 449, 79 L.Ed. 997 (1935).
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