Tri-Wall Containers, Inc. v. Continental Can Co.

• Decision Date: 04 February 1971
• Docket Number: No. 64 Civ. 217.,64 Civ. 217.
• Citation: 323 F. Supp. 700
• Parties: TRI-WALL CONTAINERS, INC., Plaintiff, v. CONTINENTAL CAN CO., Inc., Defendant.
• Court: U.S. District Court — Southern District of New York

323 F. Supp. 700

TRI-WALL CONTAINERS, INC., Plaintiff, v. CONTINENTAL CAN CO., Inc., Defendant.

No. 64 Civ. 217.

United States District Court, S. D. New York.

February 4, 1971.

Richard A. Huettner, New York City, for plaintiff; Charles B. Spencer, John P. Kirby, Jr., Kenyon & Kenyon, Reilly, Carr & Chapin, New York City, of counsel.

Brumbaugh, Graves, Donohue & Raymond, New York City, for defendant; Granville M. Brumbaugh, James N. Buckner, Thomas D. MacBlain, New York City, of counsel.

OPINION

COOPER, District Judge.

Plaintiff, Tri-Wall Containers, Inc. (hereinafter "Tri-Wall"), a New York Corporation, is engaged in the manufacture and distribution of corrugated paper board containers. Tri-Wall's prominent product, triple wall board, is described and produced in accordance with the teachings of United States Letters Patent No. 3,096,224.¹ Tri-Wall² alleges literal infringement of this patent by defendant Continental Can Company, Inc., (hereinafter "Continental"), a New York Corporation.

Jurisdiction and venue are conferred under the patent laws of the United States, 35 U.S.C. and 28 U.S.C. §§ 1338, 1400. This opinion constitutes our findings of fact and conclusions of law in accordance with Rule 52, F.R.Civ.P.

The Patent In Suit

Although the patent is comprised of three claims, each and every requisite of the alleged invention is disclosed in claim 1.³ Thus:

"1. Triple wall corrugated paper board which is flat and adapted for scoring and bending to form a shipping container and consisting essentially of four paper liners, three corrugated paper mediums, the mediums being individually interposed between two liners in each instance, and adhesive applied to the ridges of the medium's corrugations and the liners and intimately and rigidly bonding the mediums and liners together, the corrugations of the mediums' being parallel to each other throughout said board and high enough so that the total thickness of said board is at least 3/8 ", and the total thickness of the liners and mediums being at least approximately .091", this total thickness being distributed between the liners and mediums so that said board is strong and rigid, said triple wall corrugated paper board having been made by a single pass of all of said sheets prior to setting of said adhesive simultaneously through a corrugated paper board machine having a heating and drying section operated at a temperature within the range of approximately 300° to approximately 350° F. and at a temperature-speed relationship which so varied with the humidity, the thickness, and porosity of said sheets to provide a residence time in said section sufficient to set adhesive and make a rigid and strong triple wall corrugated board." P.Ex. 1, p. 6, col. 5 line 45 — col. 6 line 2.

In essence, the "product-by-method" envisioned by Tri-Wall is the combination of three corrugated mediums interposed between four paper liners by a distinctive method of manufacture to produce an extraordinary stiff "woodlike" triple wall paper board. The significant attribute of plaintiff's corrugated paper board, the beam strength, enables it to be used as a substitute for wood to form a shipping container. The characteristics of the corrugated paper box: relative light weight, facility in storage or disposal, ease of handling without employing a large crew of carpenters, combine to make plaintiff's product far more preferable to the wood container.

The background of the product

The genesis of Tri-Wall's product was the purchase by the Goldstein brothers in 1947 of machinery from the Old King Cole Company, (Tr. 37)⁴ coupled with an exclusive license to manufacture the products it produced. (Tr. 36)⁵ In their initial manufacturing process, the brothers first purchased single face corrugated board.⁶ Single face board is formed by the combination of a liner paper (P.Ex. 2)⁷ and a corrugated medium (P.Ex. 3)⁸ and the application of an adhesive to the tips of the medium's flutes. They then introduced three rolls of single face sheet and a bottom liner into the King Cole machine, coating the exposed tips of each of the single face board's corrugated mediums with a sodium silicate adhesive. (Tr. 38-41, 143) The combined plys were brought flat and fed into channel-shaped dies⁹ (Tr. 144), forming triple wall channel board. The combined board, as it exited from the channelizer, was cut to the appropriate length (Tr. 40) and "sent" into a frame or jig that conveyed the board into a bath of molten sulfur.¹⁰ (Tr. 144) Upon emerging therefrom, the three-wall board solidified when exposed to air, and the finished product's, Laminate's, rough edges were trimmed. (Tr. 144) Plaintiff's witnesses testified that the pre-immersed board felt "soft" and "squashy" (Tr. 145), "dampish" (Tr. 309), "more like padding material." (Tr. 41) They unanimously attributed Laminate's beam strength,¹¹ rigidity, to the sulfur treatment. (e.g. Tr. 33, 143)

The brothers encountered a plethora of substantial difficulties with this method of producing triple wall corrugated paper board: the channels were often formed with weak points in the legs; lamination was not always successful and necessitated hand application of an adhesive and clamping of the board until the bond secured (Tr. 146-7); the physical operation was nothing less than gigantic;¹² a change in the size of the desired board container required a day long operation to replace the "countless numbers" of dies;¹³ a pungent sulfur dioxide odor (Tr. 65, 67); and "the quality of the completed board was so bad." (Tr. 47) Laminate, plaintiff's first venture in the sale of triple wall board, 1947-1950, met with little commercial success. (Tr. 61)

Undaunted, the brothers sought guidance from "outside" consultants and settled upon "a chap by the name Deering Roberts"¹⁴ to design a more successful mechanical operation. Roberts devised a method of manufacture which incorporated the sulfur impregnation principle of Old King Cole,¹⁵ but replaced the metal dies of the channelizer with movable belts supported by rollers. (Tr. 148) Installation of the Roberts machine was abruptly accomplished on a Saturday (early 1950) when two welders appeared, "tore" the old equipment apart, and "threw the pieces presumably no longer needed out in the yard." (Tr. 49) In short, Old King Cole was "scrapped" (Tr. 149), all hopes were focused on the new production line. The "success" of the Roberts machine was succinctly summed up by witness Goldstein, "It was disasterous * * * It didn't work." (Tr. 50, 154) The machine failed to achieve a satisfactory lamination of the single face sheets (Tr. 50-1, 158-60) to even warrant immersing the "combined" board into the sulfur bath.

The resourceful brothers, hovering on the brink of business ruin¹⁶ and apparently without any machinery to combine three sheets of single face for sulfur immersion, abandoned the Roberts scheme and devised yet another method of manufacture. They first produced double wall corrugated paper board on a standard corrugation line. This operation consisted of two single facers¹⁷ producing continuous sheets of single face board; application of glue to the single faces' exposed flute tips; introduction of a bottom or third liner which entered, simultaneously with the two single face sheets, a double backer¹⁸ that combined the three material layers. Contemporaneously, an additional roll of single face was produced on a single facer. This single face board was then passed over a glue applicator¹⁹ that coated the exposed tips of the sheets' flutes, and carefully placed by hand on top of the double wall board. The resulting triple wall board was scored and folded to form a "U" shaped channel, and carried by conveyer into the sulfur bath. (Tr. 52-4, 160-4, D.Ex.AE) Witness Lichtenstein testified that the pre-immersed board, similar to earlier methods of production, was "soft, squashy * * * pad-like" (Tr. 164) and that it was only subsequent to the sulfur treatment that the board had the essential beam strength to enable it to form a shipping container. (Tr. 165) Although this method produced commercially satisfactory laminated three ply board, it continued to suffer (as previously described) from the shortcomings inherent in the use of sulfur immersion. Additionally, the various manual operations involved in the combining of the board prior to sulfur impregnation substantially increased labor costs.²⁰ (Tr. 168) Despite these difficulties, the brothers persisted in pursuing this method of manufacture for some two and a half years. (Tr. 166-9)

Sam Goldstein, in late 1952, seeking to avoid the expensive labor costs involved in their most recent production method, conceived the idea of eliminating the manual combination of the single face sheet to the double wall by modifying their corrugation line to unite all seven layers mechanically. Accordingly, a third single facer was added to the line, and the machinery altered²¹ so that the three sheets of single face, rather than two, were simultaneously introduced into the double backer and securely bonded. (Tr. 170-2) To their amazement and delight, not only was the lamination successful, but the combined triple wall board, as it exited from the double backer, was "stiff, hard to the touch and wood-like," (Tr. 173) obviating the need for sulfur immersion.²²

Production of triple wall board

The method of manufacture generally used by the producers of triple wall corrugated board is as follows. The corrugation line begins with three single facers. In each single facer a roll of flat corrugating medium (web) is heated and moistened, passed between corrugation rolls forming corrugations, coated with a sodium silicate adhesive²³ on one side of the tips of the now fluted medium, and joined with a roll of flat liner paper. The three single facers are identical except for a variation in the corrugating rolls to produce different size flutes.

As the three sheets of single face exit the...