St. Regis Paper Co. v. Winchester Carton Corp.

• Decision Date: 18 February 1976
• Docket Number: Civ. A. No. 71-2052-F.
• Citation: 410 F. Supp. 1304
• Parties: ST. REGIS PAPER COMPANY, Plaintiff, v. WINCHESTER CARTON CORPORATION, Defendant.
• Court: U.S. District Court — District of Massachusetts

410 F. Supp. 1304

ST. REGIS PAPER COMPANY, Plaintiff, v. WINCHESTER CARTON CORPORATION, Defendant.

Civ. A. No. 71-2052-F.

United States District Court, D. Mass.

February 18, 1976.

John N. Williams and Charles C. Winchester, Fish & Richardson, Boston, Mass., Cooper, Dunham, Clark, Griffin & Moran, by Raymond J. McElhannon and Norman H. Zivin, New York City, for plaintiff.

Thomson & Mrose, James E. Mrose, Boston, Mass., for defendant.

OPINION

ALDRICH, Senior Circuit Judge.^*

This is a suit by St. Regis Paper Co., owner of two patents, No. 3,001,684, Wenzel, Service Tray, September 26, 1961 (hereinafter W1) and No. 3,140,035, Wenzel, Service Tray, July 7, 1964 (hereinafter W2), against Winchester Carton Corp., alleging infringement. Defendant denies both infringement and validity. Both parties manufacture paperboard service trays used in the fast food industry, so-called, and have done so for over twenty years. One Wischusen, president and sole operator of Winchester, will be referred to, or included as, defendant where the personal intendment is apparent.

Plaintiff's W2 tray, patented as an improvement over W1, and demonstrating the features of both, is illustrated and described as follows, the illustrations being Figures 1 and 2 of the patent, the definitions, in some instances, being the court's.

Tray. — Here used to denote a die-cut, disposable, paperboard two-level service tray, bought and stored as a "flat," doubled over once with the ends flap-glued together, easily transposed into a rectangular center box food compartment (11), with, at each end, a raised platform, or top (10), having circular cut-outs (16, 17) to contain cups for drink or food.¹

Transverse flap, or partition (18, 19) — An inner side of the center box, made by bending down an extension of the cup platform. The flap has a center slit, sometimes described in the patent as a slot.

Cup stay, or strut (25, 26) — A middle partition underneath the cup platform at right angles to the transverse flap, made from the cup cut-out, with one end permanently "adhered" to the tray bottom.

Shoulder (32, 33) — The sloping edge of a cup stay nearest the center box, which extends through the slit in the transverse flap on erection (34).

Rim (37) — A horizontal ledge on an outer side of the center box, made by bending inwardly the top of the side (14, 15).

Erection is accomplished by the server, who erects the tray from the flat when filling the order, (1) pressing the side edges of the flat horizontally towards each other, causing the platform to rise by pivoting on the outer sides and the cup stays until said members, which have partially cut-through score lines to facilitate bonding (27, 28), are at right angles to the bottom and to the platform, and (2) bending downwards the transverse flaps, also scored (23, 24), until the slit straddles the cup stay shoulder (34), effecting a friction lock.

W1 differs in that the cup stay is an extension of the bottom sheet, bent upwards and adhered to the top. The transverse flaps extend to, and support, the outer sides, which can have no center box rim because this requires material deducted from the flaps.

The W2 claims and specifications state that the transverse flap "may" be bent more than 90%, resulting in the center box being wider at the bottom than the top. In point of fact, "may" means "must," since if the cup cut-out serves as the stay, the transverse flap could not intersect it unless bent beyond 90°. It is asserted in the patent that the additional bending, resulting in the center box being wider at the bottom than at the top, and making the platform an overhanging ledge, is an advantage. I find none.

A one-time-use erectable tray must have a number of characteristics: cheapness of manufacture; simplicity and speed of erection, and strength. (1) Cheapness is best achieved by restricting the material to a single sheet of paperboard, with minimum gluing. (2) Speed of erection is, essentially, a by-product of simplicity. (3) Strength, because an erectable tray is, correspondingly, collapsible, means not only with relation to the contents, but also resistance to collapse. It is the successful achievement of all factors that poses the difficulty.

Because erectable trays and containers have long been in the art, I detail plaintiff's features before considering to what extent they are novel or inventive. (1) Both W1 and W2 are made inexpensively, W2 requiring the minimum amount of material because using the cup cut-outs as stays avoids W1's adding to the length of the basic sheet. (2) Both W1 and W2 erect easily; W2 slightly more so because the transverse flaps do not tough the outer sides. The common center friction shoulder lock is of great erectable simplicity. (3) The matter of strength calls for more discussion. Trays undergo stress from handling and from the weight of the contents. Defendant offered as exhibit D1 a tray it allegedly made in the mid-fifties, well prior to the patent. D1 is like W1, except that it lacks the center lock. The transverse flaps butt against the outer sides, and effectively prevent collapse as long as the flaps remain rigid. Thin paperboard, however, bends. Weight in the tray, including cups of heavy liquid, which rest on the bottom since they are supported only laterally by the platform, makes the bottom sag, effecting a constructing force on the sides. So, also, may handling. This pressure may cause the flaps to buckle, in turn reducing butt resistance, and there is a danger of partial collapse. W1's center lock at least doubles the rigidity of the flap, and hence resistance to buckling.

In sum, I find plaintiff's center friction lock tray achieved maximum strength even though, if properly erected, defendant's D1 transverse flap may receive some support from the butt of the cup stay. In fact, the center lock, as proven by W2's great commercial success, was so efficient that it permitted eliminating all contact between the butts of the transverse flaps with the outer sides, thereby somewhat facilitating erection, and releasing material for the center box rims. I find, also, that each rim provided a beneficial amount of lateral support.

While these matters are fresh, I turn to defendant's accused trays. Defendant has some of the features of each patent. It has W2's cup stay made from a cup cut-out. On one outer side it does not carry the transverse flap all the way, and hence is able to have a rim. On the other side it butts the flap against the outer side. There was, however, a substantial controversy whether defendant adopted plaintiff's cup stay lock. Concededly, its early accused trays precisely did. Upon learning that he was charged with infringement, defendant, who his counsel says would rather switch than fight, changed from a slit to a truncated triangular slot, one side remaining erect and pressing against the side of the shoulder as before, but the other side sloping away so as to avoid contact. Whether these structures infringed either patent I defer until after considering validity.

I do not believe it necessary to describe in detail the many prior patents introduced by defendant. I do reject out of hand plaintiff's contention that "a single prior art reference must disclose all of the claim elements or their substantial equivalents."² On the contrary, I rule, to follow the court's opinion in Associated Folding Box Co. v. Levkoff, 1 Cir., 1952, 194 F.2d 252, at 257, that it is not enough "to integrate the old elements in a single structure." It must be found that the "new and useful . . . tray . . . was an unusual or surprising consequence of the unification of the old elements." Even on that basis, however, I find that the defense of invalidity has not been sustained.

There was nothing novel about W1's erected shape, as is demonstrated by Anderson, Roadside Stand Tray, Patent No. 2,732,994, Jan. 31, 1956, but the difficulty of Anderson's assembly, not to mention original cost, shows fully why it apparently never gained acceptance. Other trays, such as Foster, Drive-in Theatre Service Tray, Patent No. 2,640,589, June 2, 1953, were not only complex to set up, but could come apart on use. I do not find in this field, or in any analogous art, the simple locking mechanism that made plaintiff's trays a success.³ The "slots made by the cuts" in Anderson did not erect or function at all in the same way. Nor do I find that Buchmiller & Cohen's Paperboard Serving Tray, Patent No. 2,670,124, Feb. 23, 1954 flap lock teaches plaintiff's. I have no difficulty in finding that W1 was a markedly useful, but unobvious, advance over all cited prior art, viewed separately or collectively, that, although W2 was better, achieved a markedly successful combination of all three factors listed at the beginning of this opinion.

I deal now with the D1 and D7 trays defendant allegedly made and marketed sufficiently before W1 and W2, respectively. For the dates there is nothing but defendant's word. He is not corroborated by invoices, because such invoices as were produced do not, without his word, identify the trays. I find defendant's conduct somewhat singular. When, in June, 1969, pla...