St. Regis Paper Company v. Tee-Pac, Inc.

• Decision Date: 08 January 1973
• Docket Number: C 71-1094.,Civ. A. No. C 71-446
• Citation: 352 F. Supp. 309
• Parties: ST. REGIS PAPER COMPANY, Plaintiff, v. TEE-PAC, INC., Defendant. TEE-PAC, INC., Plaintiff, v. ST. REGIS PAPER COMPANY, Defendant.
• Court: U.S. District Court — Northern District of Ohio

352 F. Supp. 309

ST. REGIS PAPER COMPANY, Plaintiff, v. TEE-PAC, INC., Defendant.

TEE-PAC, INC., Plaintiff, v. ST. REGIS PAPER COMPANY, Defendant.

Civ. A. Nos. C 71-446, C 71-1094.

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

December 22, 1972.

As Amended January 8, 1973.

Bruce B. Krost, Charles Rust, Cleveland, Ohio, Clyde H. Haynes, New York City, for St. Regis.

Victor DeMarco, Cleveland, Ohio, James W. Clement, Ernest Cheslow, Chicago, Ill., Charles S. Lopeman, Columbus, Ohio, for Tee-Pac.

BATTISTI, Chief Judge.

MEMORANDUM OPINION AND ORDER

This action involved certain business activities of plaintiff, St. Regis Paper Company (hereinafter St. Regis), and a meat packaging patent owned by defendant, Tee-Pac, Inc. (hereinafter Tee-Pac). Defendant filed an infringement suit in the Southern District of Ohio, which was pending when plaintiff commenced this action. The infringement suit alleged active inductment of direct and contributory infringement of Claims 5 and 7 of Reissue Patent No. 24,992.

The complaint herein seeks a declaratory judgment holding Reissue Patent No. 24,992 invalid,¹ and also treble damages for an alleged violation of the Sherman Act, 15 U.S.C. §§ 1 and 2. By agreement of the parties, the infringement suit was transferred to this Court and was consolidated with this action pursuant to Fed.R.Civ.P. 42(a).

St. Regis has filed four separate, voluminous motions for partial summary judgment on the issue of patent validity. Included with these motions were copies of the patent as originally issued, the reissue version, and several excerpts from trade journals disclosing the state of the art prior to the original issuance. Defendant responded with an equal volume of material, including affidavits from experts in the field. After careful examination of these pleadings, affidavits, and trade journal excerpts, it is concluded that undisputed facts are disclosed which render Claims 5 and 7 of Reissue Patent No. 24,992 invalid as a matter of law.² Although plaintiff raises numerous legal issues on the question of validity, only those which relate to the undisputed facts will be discussed in this opinion.

The patented process involved herein is designed to preserve the bright red color of freshly-cut meat. It involves three uncomplicated steps:

1. Wrapping the meat in a plastic wrap of low oxygen permeability³ within 15-30 minutes of comminution;

2. Maintaining the chilled meat beyond the period in which unwrapped meat loses its attractive color; and,

3. Unwrapping the meat and re-exposing it to the oxygen in the atmosphere.

Wrapping the meat in this way reduces the rate at which the meat will undergo undesirable changes in color. These changes are a result of the characteristic reaction between oxygen in the air and the hemoglobin and myoglobin found in fresh meat. The oxidation reaction is conceded by all to have been well known and understood long before the date of the claimed invention. The patentee's only claim of novelty is that those skilled in the prior art had always believed that fresh meat must be wrapped in film of high oxygen permeability to achieve its most pleasing color. Therefore, Tee-Pac argues, the patentee's process went contrary to the accepted practices by utilizing a low-permeability wrap.

I.

The Court will first consider plaintiff's contention that the patent is invalid under 35 U.S.C. § 103, since all essential elements would have been obvious to those skilled in the prior art at the time of the claimed invention. While it is settled that "obviousness" is a question of law, it can only be found after the state of the prior art is factually determined. International Salt Co. v. Commissioner of Patents, 140 U.S. App.D.C. 378, 436 F.2d 126, 129 (1970). In spite of the fact that the patent here in question is very easy to understand, the Court would be reluctant to find the invention to have been "obvious" without first hearing expert testimony on the scope of the prior art. However, plaintiff's arguments may properly be considered under the more narrow provisions of section 102(b).⁴ This section has been held to implicitly contain the obviousness test, although in a more limited way. Package Devices Inc. v. Sun Ray Drug Co., 432 F.2d 272, 275 (3rd Cir. 1970), cert. denied, 401 U.S. 956, 91 S.Ct. 977, 28 L.Ed.2d 239 (1971).

Under section 102(b), it is unnecessary to ascertain the exact extent of the knowledge and skill of those trained in the art prior to the claimed invention. Even if most of the prior art references fail to disclose the invention, the patent is nevertheless invalid if all essential elements are disclosed in a printed publication more than one year prior to the filing date of the patent application. Invalidity may also be found if all such elements are contained in a collection of such publications. Package Devices, Inc. v. Sun Ray Drug Co., supra; Application of Foster, 343 F.2d 980, 988, 52 C.C.P.A. 1808 (1965), cert. denied 383 U.S. 966, 86 S.Ct. 1270, 16 L.Ed.2d 307 (1966). Thus, the Court need only make a comparison between the claimed invention and the submitted publications. Of course, a Court may utilize expert testimony in making the comparison, especially in complex cases. However, there is certainly no inflexible requirement that this be done. Deep Welding, Inc. v. Sciaky Bros., Inc., 417 F.2d 1227 (7th Cir. 1969), cert. denied, 397 U.S. 1037, 90 S.Ct. 1354, 25 L.Ed.2d 648 (1970).⁵ Here we have the patent claims⁶ as well as printed publications⁷ in circulation more than one year prior to the filing date on the patent application. In view of the easily understandable nature of the subject matter, the Court may decide on the basis of the documentary evidence submitted if the patent is invalid as a matter of law under the provisions of 35 U.S.C. § 102(b). Deep Welding, Inc. v. Sciaky Bros., Inc., supra at 1229-1230.

Considering the comparison outlined above, it is concluded that Claims 5 and 7 of Reissue Patent No. 24,992 are void. An examination of the materials submitted by both parties reveals that the inventor does not claim to have discovered the direct proportional relationship between oxygen pressure and color changes in meat.⁸ The fact that color and bacterial growth rates are affected by the characteristics of the wrapping material used was also fully disclosed in the prior art.⁹ Counsel for defendant has attempted to diminish the force of these articles by referring to a so-called "widely held belief" at the time of the application that only high-permeability wrap should be used in packaging. Such a belief, if true, would seem to run counter to the fact (which both parties agree was well known at the time) that the presence of oxygen discolors fresh meat. It is unnecessary, however, to speculate further on this dilemma. Assuming such a belief was common, the inventor's idea was fully described in an article published in Volume 22 of Food Industries in 1950. There it was stated at page 65:

"Even more important is the length of time the cut of beef has been exposed to air before packaging. When cut, fresh beef has a purple-red hue—the true color of the flesh. But this color rapidly changes to a bright red, due to oxygenation of myoglobin present in the meat. If the meat is wrapped directly after it is cut—before the formation of oxymyoglobin—some wraps will never permit this reaction to occur. "Others that are slightly permeable to oxygen will eventually allow this reaction to take place. (Emphasis added)."

If this passage is read in conjunction with a 1951 DuPont publication, submitted with plaintiff's briefs, the thoroughness of the anticipation is even more evident. In the DuPont article it was stated that:

"After fresh beef is cut, it should be exposed to the air from 15 to 30 minutes before packaging . . . This allows the meat to attain the bright red color commonly associated with fresh beef.

. . . . . .

Tight, well-sealed packages . . . will maintain the color and freshness of red meats for 72 hours."

The Court realizes that utmost care must be employed when the validity of a patent is determined by summary judgment. However, considering the excerpts cited above, a more complete anticipation is difficult to imagine. Therefore, Claims 5 and 7 of Reissue Patent No. 24,992 are void.

II.

The above holding of invalidity, however, is not limited to a finding of anticipation. A more serious question is presented by plaintiff's contention that these claims are invalidated by defendant's attempted "recapture" of subject matter which had been abandoned during the prosecution of the patent application. The parties do not dispute the fact that the moisture vapor permeability limitation found in Claim 1 of the original patent was inserted at the insistence of the Patent Office.¹⁰ It was then omitted from Claim 5 in the reissue patent. Plaintiff argues that when a patentee acquieses in the addition of a limitation in order to secure a patent, he may not later recapture the broader claim by reissue. This argument must be weighed against the policy of the reissue statute, 35 U.S.C. § 251.¹¹

The reissue statute is intended to provide a means whereby a party may correct good faith errors in a patent to secure protection commensurate with the scope of his invention. It therefore is in the nature of an equitable remedy. Application of Willingham, 282 F.2d 353, 354-355, 48 C.C.P.A. 727 (1960). As such, the statute precludes relief in cases of fraud, rather than error.

Defendant has seized upon the "deceptive intention" language of section 251, and argues that this raises an issue of fact not determinable on a motion for summary judgment. If defendant's interpretation were correct, the Court would be bound to deny plaintiff's motion on this ground. A finding of error or "deceptive intent" could properly be made only after a full trial on the merits.

Defendant's interpretation of the reissue statute, however, has been consistently...