Weatherchem Corp. v. JL Clark, Inc.

• Decision Date: 30 August 1996
• Docket Number: No. 1:91-CV-35.,1:91-CV-35.
• Citation: 937 F. Supp. 1262
• Parties: WEATHERCHEM CORPORATION, Plaintiff, v. J.L. CLARK, INC., Defendant.
• Court: U.S. District Court — Northern District of Ohio

937 F. Supp. 1262

WEATHERCHEM CORPORATION, Plaintiff, v. J.L. CLARK, INC., Defendant.

No. 1:91-CV-35.

United States District Court, N.D. Ohio, Eastern Division.

August 30, 1996.

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Dennis G. Terez, Squire, Sanders & Dempsey, Cleveland, OH, Robert V. Vickers, Vickers, Daniels & Young, Cleveland, OH, for Weatherchem Corp.

Leslie W. Jacobs, Thomas F. Zych, Sr., Thompson, Hine & Flory, Cleveland, OH, for J.L. Clark, Inc.

OPINION & ORDER

O'MALLEY, District Judge.

With this action, plaintiff Weatherchem Corporation ("Weatherchem") claims that defendant J.L. Clark, Inc. ("Clark") wilfully infringed two patents owned by Weatherchem: Patent No. 4,693,399 (the "'399 patent") and Patent No. 4,936,494 (the "'494 patent"). These two patents are directed toward plastic "two-flap closures," which are commonly used as caps to seal cylindrical spice containers; the caps allow the contents to be sprinkled or spooned out. Clark counterclaims for a declaration that the two patents are invalid, unenforceable, and not infringed by Clark's own two-flap closures.

The parties tried this matter to the bench. The Court now rules in favor of J.L. Clark, holding that both the '399 patent and the '494 patent are invalid. Specifically, the Court concludes that the '399 patent is invalid due to the "on-sale bar," and the '494 patent is invalid because it was obvious given the prior art, which includes the enclosure embodying the claims of Weatherchem's own '399 patent. As to the '494 patent, the Court also concludes, in the alternative, that, if valid, its claims are not infringed by the Clark closures. Pursuant to Fed.R.Civ.P. 52(a), the Court issues its findings of fact and conclusions of law below.

I.

A. The Allegedly Infringed Claims

Although the patents at issue in this case might at first seem mundane, the ubiquity of cylindrical spice containers in kitchens around the world — and the sprinkle/spoon caps that seal them — underscores the importance and value to the parties of the patents at issue. Because cylindrical spice containers are manufactured, filled, and sealed at high volume, the thermoplastically-formed caps placed on top of the containers must meet certain criteria. Among other things, the caps must: (1) be inexpensively manufacturable at high speed; (2) be of generally uniform thickness, so as not to deform when cooling (necessary so the sprinkle/spoon flaps will stay closed and the cap will fit onto the container); (3) not break when mechanically screwed onto the container; (4) not allow the flaps to pop open when mechanically screwed onto the container; (5) not puncture the paper (or foil) safety-seal liner that is placed between the cap and the container;¹ and (6) be easy to use by consumers. Slight variations in the design of the caps can significantly effect these characteristics.

On October 17, 1986, Weatherchem filed a patent application for a "two-flap closure." This application eventually led to issuance of the '399 patent. With no statements by either Weatherchem or the patent examiner contained in the file, the '399 patent was allowed on April 8, 1987. On July 26, 1988, Weatherchem filed another patent application for a "two-flap container closure." This application eventually led to issuance of the '494 patent, but only after the application was twice rejected by the patent examiner. The patent examiner at first rejected Weatherchem's second application because it did not disclose the invention of anything that was not already shown in either the '399 patent itself, or in another patent relating to a rectangular cap for a metal spice can ("the Foster patent," Patent No. 3,322,308). After Weatherchem twice amended its second application, however, the Patent Office issued a Notice of Allowability on April 11, 1990, which led to issuance of the '494 patent.

The '399 patent contains 15 claims, two of which Weatherchem alleges Clark infringes — claim 12 and claim 13. These claims are as follows (emphasis added by the Court):

Claim 12: A two-mode dispensing cap for a container comprising an injection-molded thermoplastic one-piece body, the body having a generally circular end wall, the end wall having a spoon dispensing side and a shake dispensing side, the shake dispensing side including a plurality of relatively small apertures for dispensing therethrough a pourable product carried in the container, the spoon dispensing side including a relatively large aperture of a size sufficient for allowing passage of a spoon therethrough for spooning out product, a chordal land area between the spoon and shake sides, each of said sides having an associated flap hinged on said land, the flap of the shake side being arranged to selectively close or open said relatively small apertures, the flap of the spoon side being arranged to selectively close said relatively large aperture, an internally threaded skirt depending from the perimeter of said end wall, an annular sealing ledge on the lower side of the end wall interior of said skirt, the land area having a lower surface generally coplanar with said sealing ledge and adapted to cooperate with said sealing ledge to support a sealing sheet received in said cap.

Claim 13: A two mode dispensing cap for a container comprising an injection-molded thermoplastic one-piece body, the body having a generally circular end wall, the end wall having a spoon dispensing side and a shake dispensing side, the shake dispensing side including a plurality of relatively small apertures for dispensing therethrough a pourable product carried in the container, the spoon dispensing side including a relatively large aperture of a size sufficient for allowing passage of a spoon therethrough for spooning out product, each of said sides having an associated hinged flap, the flap of the shake side being arranged to selectively close or open relatively small apertures, the flap of the spoon side being arranged to selectively close said relatively large aperture, an internally threaded skirt depending from the perimeter of said end wall, an annular sealing ledge on the lower side of the end wall interior of said skirt, the sealing ledge having a flat surface extending radially a distance substantially equal to at least twice the nominal wall thickness of the cap.

The most important features of these claims were the coplanar sealing ledge and chordal land areas, which served to ensure, among other things, proper seating and attachment of the safety-seal liner when the cap was screwed onto the spice container.

The '494 patent contains 14 claims, three of which Weatherchem alleges Clark infringes — claim 9, claim 13, and claim 14. These three claims are as follows (emphasis added by the Court):

Claim 9: A two-mode dispensing cap for a container comprising an injection-molded thermoplastic one-piece body, said body providing a circular end wall and a cylindrical skirt extending from the face of said end wall, said cylindrical skirt having thread means for engaging mating threads adjacent the mouth of an associated container, said end wall having along one side a spooning opening sufficiently large to allow passage of a spoon for spooning out contents from said associated container and a shake dispensing side along another side of said end wall containing a plurality of relatively small apertures for dispensing therethrough the contents of said associated container, a first hinged flap on said body for selectively closing said spooning opening, a second hinged flap on said body for selectively closing said relatively small apertures, and end wall and flaps providing cooperating releasable latch means normally maintaining said flaps closed, said end wall being contoured so that said end wall and flaps cooperate to provide a substantially planar and circular exterior surface when said flaps are closed, said end wall also providing a relatively flat sealing land inwardly spaced from said skirt having a region adapted to engage the seal with the mouth of said associated container producing forces along the periphery of said end wall in a direction substantially normal to said end wall tending to produce deflection of said wall portion tending to cause malfunction of said latch means, and a plurality of peripherally spaced radially extending reinforcing ribs extending below said wall portion radially between said sealing land and skirt, said reinforcing ribs being disposed on the inner periphery of the skirt at a multitude of relatively closely spaced locations whereby said reinforcing ribs provide an anchoring action for said end wall portion and sealing land by imparting the inherent stiffness of the cylindrical skirt, and indirectly the container mouth portion threaded onto it, to the end wall portion and sealing land to resist deflection of said wall portion and preventing malfunction of said latch means.

Claim 13: In combination, a container adapted to be filled with granular material and having a mouth with threads extending around the said mouth substantially adjacent thereto, a dispensing cap for said container consisting of an injection-molded plastic one-piece body providing a circular end wall and a cylindrical skirt having thread means engaging the threads of said container, said end wall providing at least one opening therein through which contents of said container can be removed without removing said cap from said container, said body providing a hinged flap operable to close said opening, said end wall and flap providing latch means for holding said flap closed, said cap providing a sealing surface inwardly spaced from said cylindrical skirt engaging said mouth of said container and forming a seal therewith, the periphery of said end wall being subjected to a force substantially normal to said end wall when said cap is tightened onto said container tending to cause deflection of

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