St. Regis Paper Company v. Bemis Company, Inc.
| Citation | 403 F. Supp. 776 |
| Decision Date | 12 November 1975 |
| Docket Number | No. P-CIV-73-31.,P-CIV-73-31. |
| Parties | ST. REGIS PAPER COMPANY, Plaintiff, v. BEMIS COMPANY, INC., Defendant. |
| Court | U.S. District Court — Southern District of Illinois |
Raymond J. McElhannon, Clyde H. Haynes, New York City, Charles V. O'Hern, Jr., Peoria, Ill., for plaintiff.
Davis, Morgan & Witherell, Peoria, Ill., Irving Powers, St. Louis, Mo., for defendant.
DECISION AND ORDER
This cause arises upon a complaint, under the patent laws of the United States, 35 U.S.C. § 1 et seq., alleging patent infringement. The court has jurisdiction of the parties and of the subject matter under the provisions of 35 U.S.C. § 281 and 28 U.S.C. §§ 1331, 1332, 1338(a), 1391(c), 1400(b).
Plaintiff, a New York corporation, has its principal place of business in the city of New York. Defendant, a Missouri corporation, has a regularly established placed of business in Peoria, Illinois, within this judicial district. Both parties are manufacturers of paper and paper products, including multiwall bags of various types.
The complaint, as amended, is grounded upon three patents which are owned by the plaintiff: Lokey Patent No. 3,650,460, hereinafter Lokey, issued March 12, 1972, and Goodrich Reissue Patents numbered RE28,317 and RE 28,318, both issued January 28, 1975. These latter patents are hereinafter referred to, respectively, as the RE317 and RE318 patents.
The application, which ultimately ripened into the Lokey patent, was filed in the Patent Office on August 13, 1962. Co-pending with the Lokey application were an application of John J. Goodrich, numbered 169,287, filed January 29, 1962, and an application of one Harmsen, both asserting similar claims of invention. The examiner declared an interference between the three competing applications, as a result of which priority of invention was awarded to Lokey, and the Lokey patent was issued. The Goodrich and Harmsen applications were rejected.
In the meantime, a monologue of the Goodrich application was filed in France, and the same ripened into French Patent No. 1,345,471 which is owned by the plaintiff.
On June 28, 1965, an application by Mr. Goodrich and Chester E. Waxlax was filed in the Patent Office, which ultimately ripened into a patent to Goodrich and Waxlax, 3,687,356, hereinafter the 356 patent, issued August 29, 1972, and a second patent to the same, numbered 3,776,451, hereinafter the 451 patent, issued December 4, 1973. The application as originally filed contained a cross-reference stating that it was "a continuation in part" of the Goodrich 287 application. As the result of the Examiner's requirement that an election of species be made, the embodiment of figure 14 of the drawings was elected, which ultimately ripened into the 356 patent. A divisional application was then filed which ripened into the 451 patent. As a basis for allowance of those patents, the Examiner required that the cross-reference to the 287 application be deleted by amendment of the applications. That requirement rested upon his ruling that a joint application could not derive as a continuation in part from a previous sole application by one of the joint inventors. The reference was deleted in each instance.
Plaintiff's French Patent 471 was not cited as a prior art reference to the Goodrich-Waxlax application.
The original complaint herein alleged infringement of Lokey and the 356 and 451 patents.
Following extensive pre-trial discovery, preliminary proceedings, and pre-trial conferences, the cause was scheduled for a trial, upon the issues of validity and infringement of the three patents, to commence on February 11, 1974. In the course and context of such pre-trial proceedings, the defendant asserted plaintiff's 471 French patent as a prior art reference against both the 356 and 451 patents.
On the eve of trial in late January, the plaintiff filed a motion under 35 U. S.C. § 256, praying an order directing the Commissioner of Patents to correct the 356 and 451 patents by the deletion of Mr. Waxlax as a joint inventor from each patent and the addition therein of a "continuation in part" reference to the Goodrich 287 application. That motion was denied on February 1, 1974. It was thereafter renewed and again denied at the outset of the trial.
At the close of the trial, the parties were directed by the court to submit proposed findings of fact and conclusions of law and their post-trial briefs. Such documents were filed during a period extending into the month of July, at which time the cause was taken under advisement by the court. In August 1974, plaintiff advised the court and opposing counsel, by letter, that it had filed an application in the Patent Office for reissue of the 356 and 451 patents, which said applications sought the deletion of Mr. Waxlax as a joint inventor and the restoration of the "continuation in part" reference to the Goodrich 287 application.
Prior to a decision, it became apparent that the patents would be reissued, and that the 356 and 451 patents would be superseded by reissue patents. A conference was then directed by the court, at which the plaintiff was granted leave to substitute those reissue patents when the same became available for the 356 and 451 patents. The parties were authorized to supplement the record pursuant to the demands of that changed situation and directed to submit revised findings and conclusions and such supplemental briefing as the premises were deemed to require.
The claims of each RE317 and RE318 patent are identical to those of the superseded 451 and 356 patents, respectively. The reissue patents differ from the original patents only in showing Goodrich, alone, as the inventor, and in reciting that the patents are issued upon an application which is a continuation in part of the 1962 Goodrich 287 application.
It seems apparent that both the Section 256 motion before this court and the subsequent reissue applications sprang from plaintiff's belated realization that its own French 471 patent might be a prior art reference against both the 356 and 451 patents, and that the same had not been cited during processing of the Goodrich-Waxlax applications. It is equally apparent that both the motion and reissue applications were designed to recapture the "continuation-in-part" cross reference to the Goodrich 287 application and an effective filing date of January 29, 1962, for the applications as thus revised.
The cause, in present posture, is grounded on Lokey, RE317 and RE318.
Each patent relates to a paper bag-type, which is designated by the trade as a gusseted, multiwall, pinch-bottom, open-mouth bag.
Lokey relates to a bag of that type comprised of several contiguous plies of flexible material, such as paper, in tubular form, with, at its open end, a front wall, and a rear wall portion which is designed, in closing the bag, to overlap the front wall. The bag is longitudinally and reversely creased along diametrically opposed portions to provide a pair of gussets between the front and rear walls. Each of those gussets has a front wall which is cut above, or stepped up from, the plane of the front wall, and a rear portion which is stepped upward above the front portion thereof. The rear bag wall is, in turn, stepped upward above the rear gusset portions. The exposed overlap portion of the rear wall and of the gussets are coated with an adhesive for sealing such portions against the front wall after the bag has been filled with a bulk commodity. The construction of the closed bag end is complementary to that of the open end, and the same is folded over and sealed against the rear wall as a part of the process of manufacture of the bag.1
Patent RE317 combines with the Lokey end construction the further feature that at least some of the several bag plies are stepped upward relative to each other in the front and rear walls of the bag ends.2 The patent RE318 claims add to the Lokey RE317 composite structure the further features that the several bag plies also stepped upward, the one above the other, in the gusset portions of the bag.3
The object of the several patents is best defined with relation to the problems sought thereby to be solved. Bag types in use prior to the Lokey concept were susceptible of excessive sifting of dry contents therefrom, the introduction of moisture thereinto, and insect penetration through the sealed portions at either end of the bag. Lokey was designed to achieve a high-strength end-closure construction, having greatly superior sift-proof properties and moisture and insect penetration resistance. The evidence is compatible only with the finding that the invention claimed in Lokey did substantially achieve that object. The structures claimed in RE317 and RE318 do achieve sift, moisture and inset-proof qualities which are substantially enhanced over those bags of the Lokey construction.
Plaintiff alleges that defendant has infringed the claims of each of those patents. Defendant denies infringement in each instance. It further defends upon its contention that each patent is invalid for divers reasons as hereinafter noted and discussed.
Certain stipulations of the parties must be construed as an admission by the defendant that it has been manufacturing and marketing bags within this judicial district, which are embraced by the context of Lokey claims 1, 2, 4 and 5. Plaintiff's expert witness testified that bags manufactured by defendant, as exemplified by plaintiff's exhibits 1, 2, 4, 6, 8-10, inclusive, 13-19, inclusive, and 22, do infringe each of claims 1, 2, 4 and 5 of Lokey. That testimony stands not only undisputed, but, also, corroborated by a comparison of those several exhibits with the Lokey claims.
Consideration of the relevant evidence requires the finding that defendant's bags, as exemplified by plaintiff's exhibits 4, 6, 10 and 17, do infringe claim 1 of...
To continue reading
Request your trial
-
Studiengesellschaft Kohle mbH v. Northern Petrochemical Co., 85-1054
...division into more than one patent was due to a restriction requirement by the PTO. See, e.g., St. Regis Paper Co. v. Bemis Co., Inc., 403 F.Supp. 776, 787, 188 USPQ 107, 117 (S.D.Ill.1975), rev'd on other grounds, 549 F.2d 833, 193 USPQ 8 (7th Cir.), cert. denied, 434 U.S. 833, 98 S.Ct. 11......
-
Republic Industries, Inc. v. Schlage Lock Co.
...1725, 48 L.Ed.2d 194 (to be patentable a "new invention must be more than the sum of its old parts."). 12 St. Regis Paper Co. v. Bemis Co., Inc., 403 F.Supp. 776 (S.D.Ill.1975). 13 Compare, e. g., Reese v. Elkhart Welding & Boiler Works, Inc., 447 F.2d 517, 523 (7th Cir. 1971), stating that......
-
Orthman Mfg. v. Chromalloy American Corp.
...of the divisional application over the 693 application and patent as a reference before him. E. g., St. Regis Paper Company v. Bemis Company, Inc., 403 F.Supp. 776 (S.D.Ill.1975), rev'd on other grounds, 549 F.2d 833 (7th Cir. 1977). In view of testimony that those claims are capable of bei......
-
St. Regis Paper Co. v. Bemis Co., Inc.
...by the district court in arriving at the conclusion that the patents in issue were valid and infringed. St Regis Paper Company v. Bemis Company, Inc., 403 F.Supp. 776 (S.D.Ill.1975). I am satisfied that not only were the district court's findings of fact not clearly erroneous but that the d......