Petition — Foster Grant Co. v. Illinois Tool Works, Inc.

FER 10 1977

IN THE

Supreme Court of the inet Beitr. cue

Octoser TERM, 1976

“- %6-1109

FOSTER GRANT CO., INC.,

Petitioner,

vs.

ILLINOIS TOOL WORKS, INC.,

Respondent.

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE SEVENTH CIRCUIT.

C. FREDERICK LEYDIG,

BERTON SCOTT SHEPPARD,

One IBM Plaza—Suite 4600,

Chicago, Illinois 60611,

Attorneys for Petitioner.

Of Counsel:

LEyYpDiG, Voit, OSANN, MAYER

& Hoxt, LTp.,

Chicago, Illinois 60611,

Leroy G. SINN,

HuGH C. CRALL,

289 North Main Street,

Leominster, Massachusetts 01453.

TT _

Gunthorp-Warren Printing Company, Chicago e Financial 66565

TABLE OF CONTENTS.

PAGE

I 2 050606 2855455 ecb bob ccateceeees 1

pO ge re Fe ee ees YP ree 2

eo as pene co 66 ash 66 Ke chee he’ 2

EE vaso 60 6s c Vaseseéob'csee 5-0 3

fk gf EP TPT ee Te rsa 3

IE GEE 5C453 558 565k 6 ae bdeboeevedecc 4

Constitutional Provisions and Statutes Involved ........ 5

eo 6 ukaee cs anw'ee6hsaeecne see 6

EE boot cv diccecseedéss "2 gigi 7

PRE edie wb coeckcli che ddes wees 10

Reasons for Granting the Writ ..............-...... 11

I. As to the Certiorari Policy ................ 11

II. As to the Substantive Issues ............... 15

1. Estoppel as to the °213 Patent .......... 15

2. A Combination of Old Elements in’213 .. 17

Structural and Functional Identity ....... 17

3. The Section 112 Requirements .......... 19

4. That Which Infringes If Later Anticipates

BPP cb desc eeNs Vesdscdidedaces 21

5. A Combination of Old Elements in °139 .. 22

SR 5 5ce ese 6 Cs Sods ld cities cdgicee sss 24

Plates I, II and III, attached at end.

es .

TABLE OF AUTHORITIES.

Cases.

American Photocopy Equipment Co v. Rovico, 834 F. 2d

813 (7th Cir. 1967), cert. denied, 390 U. S. 945

SUE od os-2o<e0etecede oho cab ies se Gull. ot 2

Anderson’s-Black Rock, Inc. v. Pavement Salvage Co.,

Bg re Ws BE SF Care 66sec cnnesnacp cas 14, 19, 23

Beidler v. United States, 253 U. S. 447 (1920) ........ 13

Bendix Corp. v. Balax, Inc., 421 F. 2d 809 (7th Cir.

eT re eee ey ee ee 20

Blonder-Tongue v. University of Illinois Foundation, 402

i Se Ee. ) eee Piege cai eiieess dan 46 dhe 15

Brenner v. Manson, 383 U. S. 519 (1966) .......... 13

Dale Electronics Inc. v. R. C. L. Electronics, Inc., 488 F

Ye &, f- f. eee oe vee eee 13

Dann v. Johnston, 425 U. S. 219 (1976) ............ 12

Exhibit Supply Co. v. Ace Patents Co., 315 U. S. 126

(2068) 063. PPS 6 TT RIK. vi. 14, 15, 17

Frantz Manufacturing Co. v. Phenix Manufacturing Co.,

age 2 8: t: § . eer 20

Graham v. John Deere Co., 383 U. S. 1 (1966) ......

cane (6N66e60b00000000e440. Cel 5, 14, 15, 17, 18, 23

Great Atlantic & Pacific Tea Co. v. Supermarket Equip-

ment Corp., 340 U. S. 147 (1950) ............. 19, 23

Illinois Tool Works, Inc. v. Continental Can Company, .

273 F. Supp. 94 (N. D. Ill. 1967), aff'd. 397 F. 2d 517

Ck Mr nc teien esc avnuudee bw dees ade Res 5,18

Illinois Tool Works, Inc. v. Solo Cup Co., 179 U. S. P. Q.

Se i rn os cuvb bodes cdedueedeuweus 8,12

Illinois Tool Works, Inc. v. Sweetheart Plastics Inc., 306 F.

Supp. 364 (N. D. Ill. 1969), affd. 436 F. 2d 1180

Se ik hie wis 6-68 é-ctewd wane ops 8, 12

Knapp v. Morss, 150 U. S. at 221 (1893) ........ 5, 11, 22

Mercantile National Bank of Chicago v. Howmett Corp.,

524 F. 2d 1031 (7th Cir. 1975), cert. denied, 424 U. S.

EA weet ganGe 6 owk-dea4 64 640.640.5020 « 2

Safe Flight Instrument Corp. v. McDonnell-Douglas Corp.,

482 F. 2d 1086 (9th Cir. 1973), cert. den. 414 U. S.

Bg hi Se Se 2

Sakraida v. Ag Pro. Inc., 425 U. S. 273 (1976)... .14, 19, 23

Schriber-Schroth Co. (Schriber I) v. Cleveland Trust Co.,

See GB. GE GF GATED ook oe 0 CWiicinccatccces 13, 14, 20

Schriber-Schroth Co. (Schriber II) v. Cleveland Trust Co.,

PEE es EE GENS cet cece so Acecccceeséveces 16

Smith v. Hall, 301 U. S. 216 (1937) ................ 5,22

The Paper Bag Patent Case, 210 U. S. 405 (1908). .13, 14, 21

Union Carbide Corporation v. Borg-Warner Corporation

and Sund-Borg Machines Corporation, decided January

27, 1977, slip opinion 75-2263 (6th Cir. 1977)...... 14

Universal Oil Products Co. v. Globe Co., 137 F. 2d 3 (7th

Cir. 1943), affd 322 U. S. 471 (1944)............ 20

Universal Oil Products Co. v. Globe Co., 322 U. S. 471

) a rere er er rrr 13, 20

Constitutional Provisions and Statutes Involved.

United States Constitution, Article I, Section 8, Clause 8.. 18

“Due Process” Clause of Amendment V of the United

EE SPP OTe DS, PPE OP TESTS 24

2 2 BSE ererrrrrerere re ei oe 14

gy De POTTTOTITILIT TL TTT TTT Tee ieee 20

33 U.S. . OB as eines t GK MWS 14, 23

SS "Aa SB Uee csstese 4, 9, 12, 13, 14, 15,19, 20, 21, 23

SU & Ge CRD . oc cc coentievess ends ie asa 20

SHH GEOR: or cdi vec ives eetere cock teat 20

SF WU. EG. ee ESE Oe Ue OC bet bedvenesvcuscescn 13

wu C A, § iden Gwe Be: occu 6s eckneeiebes 13

R. S. 4888, Act of July 8, 1970, C. 230, § 26, 165 Stat.

BOO vp sccctecevetésttiesvee sawebaanns eae 13

References.

14 The New Encyclopedia Britanica, Macropedia (15th

me, SCTE, Wi SEB isd HS Rea 6

Supreme Court of the Gnited States

OcToBER TERM, 1976

No.

FOSTER GRANT Co., INC.,

Petitioner,

vs.

ILLINOIS TOOL WORKS, INC.,

Respondent.

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE SEVENTH CIRCUIT.

Petitioner Foster Grant Co., Inc. (Foster Grant) respectfully

prays that a Writ of Certiorari issue to review the judgment of

the United States Court of Appeals for the Seventh Circuit in the

above-entitied case.

The December 2, 1976 opinion of the Court of Appeals has

not yet been reported; however, it is reprinted in the separately

bound Appendix at pages Al to A26. The March 4, 1974

opinion of the District Court for the Northern Dist.ict of Illinois

is reported at 395 F. Supp. 234, 181 U. S. P. Q. 553 (N. D.

Ill. 1974) and is reprinted in the Appendix at pages A28

to A78.

The judgment of the Court of Appeals was entered on

December 2, 1976 (A27). A timely Petition for Rehearing and

Suggestion for Rehearing En Banc was denied on December

30, 1976 (A27). The jurisdiction of this Court is invoked

pursuant to 28 U. S. C. § 1254(1). The basis of jurisdiction in

the District Court was 28 U. S. C. § 1338(a) and 35 U. S. C.

§§ 271 nd 281.

INTRODUCTORY STATEMENT.

This is a patent infringement action involving three patents

of Respondent Illinois Tool Works (ITW). All three patents

were previously held valid and infringed by the same courts

whose decisions underlie the present petition. The patents and

the prior reported cases are identified in the Court of Appeals

opinion at A2-A3.* In this action, the District Court held the

patents valid and infringed by Petitioner Foster Grant (A76-

A77).

The Court of Appeals purported to base its affirmance in this

case under its Rovico** and Howmett*** decisions charac-

terizing them as “but an application of the doctrine of stare

decisis.” However, the attempted application of stare decisis in

this case is faulty for the very reasons noted by Judge Hamley of

the Ninth Circuit in Safe Flight Instrument Corp. v. McDonnell-

* Additionally, ITW filed suit against Scott Paper Company,

American Can

of which were brought the Northern District of Illinois and there

identified by Nos. 69 C 482, 483, 484 and 485 respectively.

** American Photocopy Equipment Co. v. Rovico, 384 F. tees

815-16 (7th Cir. 1967) cert. denied, 390 U. S. 945 (1967), which

heid that once there has been a judicial determination of validity, the

of “persuasive new evidence” of invalidity and

mnie Ga thes "aan aiden ” between the cases.

*** Mercantile National Bank v. Howmett Corp., 524

iste)” 1032 (7th Cir. 19s) con cert. denied, 424 U. 8 S. 957

3

Douglas Corp., 482 F. 2d 1086 (9th Cir. 1973), cert. den., 414

U. S. 1113 (1973) where he said:

“But the respect which should be accorded prior adjudica-

tions as to the validity of a patent does not, absent estoppel

running against the parties to the prior litigation, supplant

the primary duty ofa court to dispose of cases according t

the law and the facts of the particular case before it. .

482 F. 2d at 1090.*

In affirming, Judge Hamley stressed, as important, “that the |

district court rigidly adhered to the rules and criteria of the

Supreme Court” . . . and made “{ajll of the factual inquiries re-

quired under the Graham decision.” (482 F. 2d at 1092).

Contrast this with the present case, where the Court of

Appeals specifically noted that the District Court did not make

the “step-by-step analysis required by Graham v. John Deere”.

Here, the Court of Appeals also ruled that important findings

of fact made by the District Court were clearly erroneous.

However, relying on its Rovico rule, the Court of Appeals simply

ignored many new facts, its own precedents and other important

principles of law laid down by this Court. Clearly that is not

stare decisis and, in application of the governing law, there is a

marked conflict between the Courts of the Seventh and Ninth

Circuits.

Moreover, since these combination patents may well never be

litigated in another Circuit, Petitioner respectfully requests this

Court, in the exercise of its supervisory powers, to review this

case and the application of the Rovico rule to it by Writ of

THE QUESTIONS PRESENTED.

As to Certiorari Policy.

1. Should a patent owner be allowed to avoid the effect of

estoppels arising from positions it took to win an earlier patent

infringement case while at the same time invoking the stare

* Emphasis added throughout unless otherwise indicated.

4

decisis effect of that case against a subsequent Defendant

charged with infringing the same patents, who was not a party

to the earlier case, and thus expand the scope of his limited

monopoly?

2. Should not this Court grant certiorari to provide much

needed guidance concerning the proper interpretation of the

’ requirements of Section 112 of the patent laws (35 U. S. C.

112) on which this Court has not spoken since its enactment

25 years ago?

3. Should not this Court grant certiorari and now consider

Section 112 in view of

a) the change in the patent laws with respect to the man-

datory “best mode” requirement of Section 112 adopted by

Congress in 1952; and

b) the failure of both courts below to even consider the

inventor’s non-disclosure of the “best mode” contemplated

by him for carrying out his invention at the time of filing

his application for a patent?

4. Can the Rovico case as applied by the Seventh Circuit, be

allowed to abrogate the-effect of the decisions of this Court on

“file wrapper estoppel” and “combination patents” and thus lower

the standard of patentability for a combination of old elements

that produces no synergistic effect or unobvious result?

On the Merits.

5. Did not the Court of Appeals err as a matter of law in

affirming a new definition for the “rim”, a key element of the

‘213 combination patent claims, to find infringement, while dis-

regarding the strict requirements of 35 U. S.C. § 112, where the

patent specification contains absolutely no mention of the term

“rim” and the evidence at trial established that the “best mode”

of carrying out the invention as contemplated by the inventor

was not disclosed in the ‘213 patent application?

4. Did not the Court of Appeals err as a matter of law in

affirming, under Rovico, the patentee’s new, narrowed definition

5

of “rim”, which enlarged the scope of the '213 patent claims,

when it failed to re-evaluate all the prior art and evidence?

7. Did not the Court of Appeals err as a matter of law in

affirming the validity of the °139 patent, under Rovico, when

the District Court said it made its decision “without reliance on

the prior ITW decisions” and yet neither court made the step-

by-step analysis of the new prior art required by Graham v. John

Deere, 383 U.S. 1 (1966) nor compared the new prior art with

either the prior art previously corsidered or with the products

previously held as infringements; thus repudiating the funda-

mental principles of patent law laid down by this Court in Smith

Vv. Hall, 301 U. S. 216 (1937), and Knapp v. Morss, 150 U. S.

221 (1893)?

Because of the Rovico rule, it is necessary to consider the

decisions in the present case in light of the prior Continental

Can* case. Regrettably, this makes the petition longer and the

material necessarily included in the Appendix more voluminous

than Petitioner would like. In view of this, Petitioner will limit

its discussion to the °213 and °139 patents since a discussion of

these two patents raises all of the legal issues that Petitioner

involving the "360 patent are the same or very similar and

according, if this Court grants certiorari. Petitioner requests

leave to also present argument in its Brief as to the invalidity

of the °360 patent.

CONSTITUTIONAL PROVISIONS AND

STATUTES INVOLVED.

This case involves Article I, Section 8, Clause 8 and the

“Due Process” Clause of Amendment V of the United States

Constitution and Sections 101, 102, 103, 112, 120 and 121

* Illinois Tool Works, Inc. v. Continental Can , 273 F.

94 (N. D. Ii. 1967), affd., 397 F. 2d $17 . 1968).

of decisions are reprinted in the at A79-A144

A145-Al155. pate

6

of the Patent Code of 1952 (35 U.S. Code §§ 101, 102, 103,

112, 120 and 121). These Constitutional provisions and statu-

tory sections are set forth in the separately bound Appendix,

beginning at A156.

STATEMENT OF THE CASE.

Petitioner Foster Grant and Respondent ITW are manu-

facturers of disposable, thin-walled plastic containers and lids

of the type which are alleged by ITW to be “inventions” cov-

ered by the patents in suit. They are mass-produced by the

prior art thermoforming process* and are universally used for

packaging food such as cottage cheese, sour cream, yogurt,

meats, salads, etc. To save space, the empty containers and

lids are respectively stored and shipped in nested or stacked

relationship (i.e. stacks of 50-100 containers or lids). To pre-

vent such nested articles from wedging or jamming together,

such that they cannot be easily separated, each article has

annular ridges formed into its side to abut the ridges of ad-

jacent articles in the stack. In the patents involved here, such

ridges are dignified as “stacking devices”. Because the thin wall

plastic material at the upper end is flexible, such containers and

lids are made with a reinforcing “rim”.

Illustrated on fold-out Plate I are drawings from two pertinent

prior art patents (Flack and Aldington) showing plastic con-

tainers and lids in stacked relation. In each case, the upper-

most “stacking device” is colored green and the “rim” (as pre-

viously defined by ITW) is colored red. The combination of

Flack and Aldington is also shown on Plate I.

In 1957, Respondent ITW entered the thermoformed con-

tainer business and its engineer, Bryant Edwards, designed a

nestable plastic cup, an illustration of which appears on Plate

° i thermoplastic sheet, heated to softening

depp ie guint te contours o's mold bya rena

ca Ba 1975) 14 The New Encyclopedia

Beltonea, Mecropedia’ (15th Ba 5), p. 521.

7

Il. By slanting a short portion of the wall inwardly, the cup

was formed with a “Z-shaped” stacking device located at the

rim. Such Z-shaped stacking devices were old in the art (see

Aldington Plate I). Edwards’ rim-stacker design made this cup

uncomfortable to drink from and this rim configuration was

unacceptable to [TW’s customer. Accordingly, Edwards moved

the Z-shaped stacker down to a location in the cup sidewall

about one-half inch below the rim. Respondent ITW has con-

tended—thus far successfully—that this change in location of

the Z-shaped stacker from the rim to below the rim amounted

to “invention”. This is the subject of ITW’s patent No. 3,139,213

for “Nestable Cup” (’213 patent), Figs. 2 and 3 of which are

illustrated on Plate I.

The ’213 Patent.

Edwards’ first Nestable Cup application (PX 5) was filed

November 29, 1957. It contained one sheet of drawings with

four figures which correspond to Figs. 1-4 of the ‘213 patent.

The word “rim” was not used in either the specification or the

claims of this application. The first application (PX 5) was

abandoned aiter Edwards filed a continuation-in-part applica-

tion (PX 7) October 29, 1958. The second application included

three sheets of new drawings comprising Figs. 5-23 of which

Figs. 18, 20 and 23, respectively, became Figs. 6, 7 and 8 of

the '213 patent. The term “rim” appeared for the first time in

the specification of this application where it was equated to

“lip” but it was not used in the claims until they were finally

amended on December 4, 1962. The second application (PX

7) resulted in the "360 patent after a divisional application

(PX 6) directed to the ’213 “invention” was carved out and

filed December 13, 1962. The term “rim” does not appear in

the specification of the divisional application but it was used

in the claims initially filed in the same manner it had been

used in the claims which were allowed in the °360 patent.

Following further extensive amendments purporting to dis-

tinguish the °213 patent application claims over the prior art

Flack and Aldington references illustrated herein the °213

patent issued July 30, 1964.

Two months before Edwards filed his second Nestable Cup

application (PX 7) he filed for another patent (DX 75) dis-

closing how to roll the depending rim of the cup so the rim

would not have a sharp lower edge that could cut a cup user.

Figs. 3 and 4* from this patent (DX 75) appear on Plate I.

Clearly, the Figure 4 embodiment with the rolled over rim to

prevent cuts was the best mode contemplated by Edwards in

August 1958.** However, Edwards did not disclose this “best

mode” of making the rolled rim in either of his subsequently

filed Nestable Cup applications (PX 7 and PX 6).

In 1966, Illinois Tool Works filed suit in the Northern Dis-

trict of Illinois against Continental Can Company and Judge

Decker held the ’213 patent valid and infringed (A143). The

Court of Appeals affirmed (A151). ITW also filed suits against

seven other defendants,*** comprising virtually the entire

thermoformed container industry, all in the Northern District of

lilinois, alleging infringement of the ’213 patent.

Because of the Seventh Circuit's Rovico rule and the fact that

the subsequent courts totally ignored ITW’s changes of posi-

tion regarding its patent claims, the later suits against Sweet-

heart, **** Solo***** and this Petitioner were successful. The

other cases were dismissed when the defendants took licenses

from ITW.

Based on the positions taken by ITW to obtain its favorable

Continental Can om Petitioner redesigned its containers

ik on ee of these figures “rim” and “lip”

used synonymously ( 1, I. 55-59). -

** Note that the rim also establishes the heigh i

anna} ft de ee geet

*** See case cited at A2 and the footnote to page 2, supra.

**** Illinois Tool Works Inc. v. Sweetheart Plastics, Inc., 306 F.

Supp. 364 (N. D. Ill. 1969), aff'd, 436 F. 2d 1180 (7th Cir. 1971).

**##8 Ilinois Tool Works Inc. v. Solo Cup Co., 179 U.

322 (N. D. Il. 1973). “se sahaitis

9

so that the upper stacking shoulder was not positioned below

and spaced axially from the rim, as the 213 claims require.

Rather, the upper shoulder, as in Flack and Aldington, merges

defense of non-infringement based upon 1) file wrapper estop-

pel, 2) ITW’s prior position in Continental Can, 3) the usual

definition of “rim” previously employed by Edwards and by

others and 4) the failure of the '213 patent to satisfy the re-

quirements of 35 U. S.C. § 112.

The District Court ignored these defenses and found in-

fringement based on a new definition of the claim element “rim”

advanced by ITW which was not only unsupported by the patent

specification* but was in direct conflict with common usage

and the prior prosecution and litigation history of the °213

patent. The District Court even held that the prior application

(PX 7) upon which the '213 patent was based—wherein “rim”

was used and equated to “lip”—-was irrelevant to claims of the

213 patent.

Reprinted on Plate II is ITW’s drawing of one of the accused

Foster Grant’s containers, on which ITW designated its new

interpretation of the word “rim” as used in the °213 claim.

The Court of Appeals here gave this critical element of the

claim yet another definition which was not only in conflict with

the prosecution history in the Patent Office and ITW’s prior

position in Continental Can but it also differed from ITW’s new

definition and the District Court’s decision in the instant case.

Incredibly, the Court of Appeals concluded that the portion

called “lip” by the District Court was really the “skirt” and the

portion designated “rim” in the above drawing was really “upper

rim”, a term for which there is no antecedent in the ’213 patent

or in any of its parent applications (PX 5 and 7). Infringement

was affirmed based upon this third and heretofore unknown

* The word “rim” does not appear in the specification.

The 139 Patent.

The second patent involved in this Petition is U. S. 3,061,139

entitled “Self-Venting Package” (the ’139 patent) issued on

October 30, 1962 upon an application filed on March 14, 1960.

The ’139 patent relates to plastic containers and lids intended

primarily for packaging food on automatic filling and capping

machinery. In this case, as in Continental Can, all the containers

held to infringe the '213 patent were also held to infringe the

’139 patent when those containers were used with lids to form

packages for cottage cheese, etc.

In Continental Can, the container had an internal groove at

its upper end and the lid had a projecting bead designed to snap-

fit into the container groove. Four small notches were formed in

the bead of the lid to permit the escape of air from under the lid

during capping.

Petitioner’s lids have no such notches. Instead, the air com-

pressed under the lids during the automatic capping procedure is

vented through vertical grooves in the containers.

Whereas ITW had obtained its °139 patent and in Continental

capping*. If the trapped air is not eliminated during capping, it

sometimes causes the lid to “pon” off.

“lid problem, which was experiencing at the time

of the Can suit. ITW failed during discovery to

such for Petitioner in response to speriic Rule 34 Requests

for documents. A former field service engineer had copies

of his which were introduced into evidence at trial but ignored

‘L1

In the instant case, Petitioner also proved* that Kent Plastics

Co. of Evansville, Indiana had, more than a year before the

filing date of the ’139 patent, manufactured and sold thousands

of all plastic, thermoformed, thin-walled cottage cheese con-

tainers and lids with notches in the lid bead to prevent air from

being trapped during capping. Petitioner also proved the prob-

lem of trapping air during capping was long recognized in the

art.

Petitioner’s effort to introduce testimony and other evidence

demonstrating that the prior art packages and the infringing

Continental Can packages were the same was frustrated when

the trial court sustained ITW’s objection to such evidence. The

Court of Appeals surprisingly failed to find error in such an

adverse evidentiary ruling which prevented Petitioner from

demonstrating the applicability of this Court’s classic pronounce-

ment “that which infringes, if later, would anticipate if earlier”,

Knapp v. Morss, supra.

Because the physical samples of the prior art Kent con-

tainer and lid (admitted in evidence) and the infringing Con-

tinental Can container and lid (refused in evidence) can not

themselves be submitted here, Petitioner has had made, for pres-

entation to this Court, the illustrative drawings** appearing on

Plate III.

REASONS FOR GRANTING THE WRIT.

I._ As to the Certiorari Policy.

The patents involved here have been in continuous litigation

in the courts of the Seventh Circuit for the last ten years. The

District Court in Continental Can held the ’213 and ’139 patents

* The trial court found that Petitioner had not proved that the

Kent were prior art. The Court of held that the

mre ene oy ap age eee Aa

** No contention is made that these illustrations are drawn to scale

or are themselves evidentiary matter. Rather, they are submitted

simply as illustrative of the physical samples Petitioner sought to

have the trial court compare.

12

characterized then as being “quite limited” and “should be nar-

rowly construed”. The Court of Appeals affirmed.

Girded with its Continental Can success and relying on the

Seventh Circuit’s Rovico rule to shield it against subsequent de-

fendants’ attacks on the validity of these patents which define

combinations of old elements, TTW summoned all of its com-

petitors in the theromoforming container industry, who were

not willing to take a license, to the U. S. District Court in Chi-

cago.

As it brought the litigated cases to trial seratim, ITW urged

an ever-expanding scope for the claims of these patents, much

like a snowball rolling downhill in untrodden snow. For in-

stance, Judge Decker in Sweetheart, supra, held flat bottom con-

tainers were not covered by the ’213 patent, but that result did

not prevent ITW from urging that similar flat bottomed cups

were willful infringements in Solo, supra, and succeeding. In the

present case, ITTW has now changed its definition of “rim” and

had it accepted by the Courts of the Seventh Circuit, which have

affirmed under Rovico with total disregard for such changes in

ITW’s position and the validity of the patents in view of the

prior art.

Having in mind that this Court did not reach the Section 112

issue in its recent decision of Dann v. Johnston, 425 U. S. 219

(1976), it is respectfully submitted that the instant case presents

an appropriate opportunity for the Court to rule on the require-

ments of this Section. The first sentence requires that:

“The specification shall contain a written description of the

invention and of the manner and process of making and

using it, in such full, clear, concise, and exact terms as to

enable any person skilled in the art to which it pertains, or

with which it is most nearly connected, to make and use the

same, and shall set forth the best mode contemplated by the

inventor of carrying out his invention.” (See A157)

13

Since this Court has not spoken on either the “written descrip-

tion” or “best mode” requirements of Section 112, as rewritten

by Congress in 1952, granting certiorari here would enable this

Court to provide needed guidance to the lower courts in the

proper interpretation of this Section. Petitioner submits, this

Court should now reaffirm that its pre-1952 decisions continue

to control the “written description” requirement of Section 112.

Beidler v. United States, 253 U. S. 447 (1920), Schriber-Schroth

Co. v. Cleveland Trust Co. (Schriber 1), 305 U. S. 47 (1938)

and Universal Oil Products Co. v. Globe Oil Co., 322 U. S. 471

(1944).

Similarly, it has been well over sixty years since this Court

said “An inventor must describe what he conceives to be the

best mode . . .” The Paper Bag Patent Case, 210 U. S. 405 at

418 (1908). At that time the Patent Statute* only required

disclosure of the “best mode” contemplated by the inventor in a

patent application directed to a “machine”. However, in 1952

Congress changed the law to extend the “best mode” require-

ment to all types of invention.** As pointed out by Federico***

“this requirement is partly derived from and replaces the first

defense specified in old R. S. 4920... as well as being a

revision and extension of the old clause which related only to

machines”. The defense referred to arose inter alia when:

“(Flor the purpose of deceiving the public the description

and specification filed by the patentee in the Patent Office

was made to contain less than the whole truth relative to

his invention or discovery, . . .”

Thus telling the “whole truth” is now part of the “best mode”

requirement of Section 112. The effect of the failure of the

courts below to hold Edwards to the mandatory “best mode”

requirement of Section 112, results in a direct conflict with the

courts of the First and Sixth Circuits. See Dale Electronics, Inc.

*R. S. 4888; Act July 8, 1970, c. 230 § 26, 165 Stat. 201.

** 35 U.S. C.A. § 112, revisers note at p. 5.

*** 35 U.S.C. A. §§ 1-110 at p. 25.

14

v. R. C. L. Electronics, Inc., 488 F. 2d 382 at 389 (1st Cir.

1973), Union Carbide Corp. v. Borg-Warner Corp. et al.,

decided January 27, 1977 slip opinion No. 75-2263 (6th Cir.

1977).

Courts that the “best mode” requirement referred to in the Paper

Bag Patent Case, supra, now applies under Section 112 to all

types of patent applications including the ’213 patent involved

here. Petitioner further submits this Court should now declare

that the requirements of Section 112 must be “strictly observed”

just as it has held with respect to the requirements of Section

101, Brenner v. Manson, 383 U. S. 519 (1966) and Section

103, Graham v. Deere, supra, Anderson’s-Black Rock, Inc. v.

Pavement Salvage Co., Inc., 396 U. S. 57 (1969); Sakraida v.

Ag Pro, Inc., 425 U.S. 273 (1976).

While it is unlikely there will be a conflict between circuits on

the patents, this Court pointed out in Schriber-Schroth Co. v.

Cleveland Trust Co. (Schriber I), supra, that it had granted

certiorari on a showing that:

“. .. [NJot withstanding the doubtful validity of the patents,

litigation elsewhere with a resulting conflict of decision was

improbable because of the concentration of the automobile

industry in the sixth circuit.”

To the same effect is Exhibit Supply Co. v. Ace Patents Co., 315

U. S. 126 (1942). We respectfully urge the Court to grant

certiorari here because of the concentration of suits against the

thermoforming industry brought by ITW in the Seventh Circuit.*

Further, in the exercise of its supervisory powers over the

Circuit Courts under Rule 19 of this Court, we submit, the time

is ripe for this Court to review the Rovico rule as applied by the

Courts of the Seventh Circuit. In doing so, this Court will surely

find that the Seventh Circuit has permitted ITW to use Rovico

not merely as a shield protecting it against the reassertion of the

* See A2 and footnote at p. 2, supra.

15

same evidence of invalidity, but also as a sword against subse-

quent defendants and to carve out an ever expanding scope for

its patent monopolies which should now be declared invalid and

estoppels created by ITW in the Continental Can case disregards,

we believe, the important principles of estoppel and due process

enunciated by this Court in Blonder-Tongue v. University of

Illinois Foundation, 402 U. S. 313 (1971). We recognize that

estoppel there was applied against an unsuccessful patentee, i.e.,

his patent had been declared invalid in the prior case. But,

should not the estoppel rationale of Blonder-Tongue be applied,

even more stringently, against a patentee who was successful in

upholding the validity of his patent in the prior case? And,

should not the rationale of “file wrapper estoppel” which this

Court has long recognized as being created by changes of position

by the patentee to avoid prior art before the Patent Office, Exhibit

Supply Co. v. Ace Patents Corp., supra, Graham Vv. John Deere,

supra, be fully applicable to patentees, who have in one court

case succeeded in enforcing their limited monopoly based on a

particular construction of claim language, but who seek in a later

case t avoid the thrust of the earlier position?

IL. As to the Substantive Issues.

Before discussing the disclosure requirements of Section 112,

the issues dealing with “Estoppel” and “A Combination of Old

Elements” as to the 213 patent are discussed below in order to

lay a more complete foundation for the meaning of the critical

claim element “rim”.

1. Estoppel as to the °213 Patent.

The changes to the ’213 patent claims that are crucial here are

set out at pages A159-A162 of the Appendix. Claim 1, after

being rejected on Flack was changed extensively and rewritten.

Those changes italicized at A159 did not distinguish over Flack

16

but those at A160 in bold face type did. This claim was rejected

on Aldington and then was extensively amended (See A161-

A162). While the italicized changes at A161-162 distinguished

bold face changes in amended claim 10 (which, as rewritten,

became claim 1 of the ’213 patent), distinguish over both Flack

and Aldington. If, from reading the file wrapper, there were any

doubt—and we submit there is not—as to why ITW made these

bold face changes, it is completely dispelled by ITW’s charac-

terization of these references in Continental Can, ITW charac-

terized Flack as a “rim stacker” and about Aldington said the

“rim” is defined as

formation comprising the skirt 11

As such, of course, in neither Aldington nor Flack was the

stacking means:

“positioned below AND SPACED AXIALLY FROM said

upper RIM”

as the '213 claims were amended to require. Likewise in Conti-

nental Can, ITW’s characterization of Aldington and Flack

precluded either of these references from having an internal

“WALL SURFACE ADJACENT AND ABOVE SAID INTER-

NAL SHOULDER MEANS” as also required in the allowed

°213 claims.

In Schriber-Schroth Co. v: Cleveland Trust Co., (Schriber

IT), 311 U. S. 211 (1940), this Court held:

17

Also directly on point are this Court’s decisions in Exhibit

Supply Co. v. Ace Patents Corp., supra, at 37 and Graham

v. Deere, supra, at 33.

Certiorari should be granted, we submit, so this Court can

instruct the Court of Appeals for the Seventh Circuit in the

proper application of its Rovico Rule without evasion of the

established principles of estoppel and due process.

2. A Combination of Old Elements in 213.

If file wrapper estoppel is ignored, and ITW is permitted

to change to a new definition of “rim”, the "213 patent claims

define no more than a combination of old elements. Pictured

on Plate II is the ITW drawing of the accused containers with

the legends applied thereto as accepted by the District Court

and the Court of Appeals. Also pictured on Plate II is the perti-

nent portion of Fig. 2 of Aldington with those same legends

milar} lied

Structural and Functional Identity.

Combining Flack and Aldington produces every element of

the °213 claims. All that need be done is to replace Flack’s

vertical stacker and rim with Aldington’s Z-stacker, wall portion

and rim as identified under ITW’s new definition. Such a com-

bination of old elements in the prior art is illustrated on Plate I.

In Continental Can, ITW made much of the alleged “resili-

ency” of Edwards’ Z-shaped stacker located below the rim.

After a lengthy discussion Judge Decker held that ITW was

entitled to the “resiliency” claimed for the Z-shaped stacker in

the °213 patent because thin-walled plastic is inherently resili-

ent and Edwards had disclosed a Z-stacker in his first applica-

tion, ergo Edwards’ Z-stacker was inherently resilient (A91-

A93).

Flack was distinguished both in the Patent Office and in

Continental Can because Flack’s vertical stacker was said to

18

be rigid, even though it was plastic. The last clause of claim

1 of the "213 patent was added to distinguish over Flack (see

bold face at A160). No such argument was made in the

Patent Office with respect to Aldington.

In Continental Can, Judge Decke: did not give the Aldington

reference the same benefit of “inherent resiliency” that he had

extended to the ’213 patent. Instead he said

“There is no reference in Aldington to resiliency of a

stack of lids. Furthermore, the Z-configuration comprises

the entire side wall of the lid resulting in different struc-

tural interrelationships than in the °213 invention.” 273

F. Supp. at 115. (A113)

The latter point, of course, is no longer true in view of ITW’s

change of position which now results in the “structural identity”

discussed above.

As to the first sentence quoted above, the Aldington refer-

ence repeatedly characterizes the lids as “flexible and resilient”

and even mentions the “inherent flexibility and resiliency of the

cover’, but these properties are not directly mentioned in Ald-

ington’s discussion about stacking.

In the present case, actual samples of the prior art Aldington

lids (DX 135A-C) were introduced in evidence. Aldington

stacked and that the “resilience” of the stacking mechanism

permitted them to be compression packed (R. 1487, 1488,

1554, 1555). Even under the Rovico rule, this was plainly

“persuasive new evidence of invalidity’ and a “material dis-

tinction” over what Judge Decker was prompted to find on

the earlier record before him. Had Judge Decker appreciated

these newly presented facts, we submit, he probably would have

found the °213 patent invalid even under the liberal test of

“invention” which he applied (See A119-A120).

However, we need not speculate on this. Since Judge Decker’s

decision in Continental Can, this Court has repeatedly ad-

ee a eee eee

19

monished that the standard of patentability for a combination

of old elements is a strict one and under the Constitution it

cannot be ignored. Anderson’s-Black Rock, Inc. v. Pavement

Salvage Co., supra, Sakraida v. Ag Pro, Inc., supra.

Moreover, on the facts of this case, as now established the

combination of elements defined in the °213 claims produces

no “synergistic effect”. Anderson’s-Black Rock, Inc. v. Pave-

ment Salvage Co., supra, Sakraida v. Ag Pro, Inc., supra, or

any other “nonbovious” result. Graham v. John Deere Co.,

supra. The “rim”, “wall portion” and “Z-stacker” of Aldington

are the same structurally and functionally as those elements in

the ’213 claims now defined by ITW. When these old elements

are united in the Flack container (see Plate I), the 213 claims

read directly upon it.

The Court of Appeals noted that the District Court in the

present case paid only “lip service” to the analytical approach

required by this Court in Graham v. John Deere Co., supra,

and instead gave substantial emphasis to the secondary factors.

However, those matters “without invention will not make patent-

ability”. Great Atlantic & Pacific Tea Co. v. Supermarket

Equipment Corp., 340 U. S. 147 (1950), Anderson-Black

Rock, Inc. v. Pavement Salvage Co., Inc., supra, and Sakraida

v. Ag Pro, Inc., supra.

3. The Section 112 Requirements.

In the sections above on “file wrapper estoppel” and “a com-

bination of old elements” our arguments have assumed, argu-

endo, that the 213 patent specification and claims satisfy the

statutory requirements of Section 112 of the Patent Laws.*

We respectfully submit they do not and that the Courts below

clearly erred as a matter of law on this issue.

As will be appreciated from the preceding discussion, the

recitations of “rim of predetermined axial extent”, “upper rim”

* 35 U.S. C. § 112 reprinted at A157.

20

and “rim portion” as used to claim the ‘213 “invention” are

critical to both the issues of validity and infringement of the

213 patent. Under such circumstances, it should be sufficient

to point out that the word RIM does not appear in the specifica-

tion of the "213 patent. Not even once, let alone with a “full,

clear and concise written description” thereof in the context

of any of the three ways that it is used in the claims. Peti-

tioner submits this Court’s pre-1952 decisions* should be

reaffirmed as controlling the “written description” requirement

of Section 112.

The word “rim” does appear in Edugrds’ 1958 patent appli-

cation (PX 7) out of which the '213 patent application (PX 6)

was divided. “Rim” is there used synonymously with “lip”. If

“rim” in the °213 claims means something different than what

it meant in that parent application, ITW is not entitled to rely

on the 1958 filing date of that application under Section 120.**

Then the ’213 patent is invalid under 35 U. S. C. § 102(b)***

in view of ITW’s sales of “nestable cups”, as defined by the ’213

claims, well more than one year before the 1962 filing date for

the '213 application.

Petitioner thought that the Section 112 issue and the corollary

issues under Sections 120 and 121 were controlled by such

prior Seventh Circuit cases as: Universal Oil Products Co. Vv.

Globe Co., 137 F. 2d 3 (7th Cir., 1943), affd 322 U. S. 471

(1944), Bendix Corp. v. Balax, Inc., 421 F. 2d 809 (7th

Cir. 1970), and Frantz Mfg. Co. v. Phenix Mfg. Co., 457

F. 2d 314 (7th Cir. 1972), which were cited in its Brief on

Appeal. However, the Court below ignored these important

precedents and those of this Court cited at p. 13 in what,

this Petitioner submits, is clearly a misapplication of stare

decisis. Judicial economy and stability of law are not served

when a Court makes decisions, such as this, in total disregard

of the applicable principles of law.

_* See cases cited at p. 13, supra.

** Reprinted at A158.

*** Reprinted at A156.

21

In the present case the failure of Respondent, ITW, to dis-

close the “best mode” was specifically pleaded, evidence was

submitted at trial and the issue was argued, with citation of

authority, in Petitioner's Brief After Trial and on Appeal.

It directly concerns the best mode contemplated by Edwards

of carrying out his “invention” as defined in the ’213 patent

claims. At least by August, 1958 Edwards knew this “best

mode” to include a “rolled rim” such as made on the machine

which is now disclosed in his patent No. 3,096,546 (DX 75).*

Yet, two months later when Edwards filed the second “Nestable

Cup” application (PX 7) and for the firs: time used the word

“rim” in the specification of any of the applications leading to

the ’°213 patent, he withheld the important information that the

“rolled rim” was the “best mode” contemplated by him of carry-

ing out this element of his claimed invention.

By granting certiorari, this Court can instruct the Circuit

Courts that the “best mode” requirement referred to in the

Paper Bag Patent Case, supra, now applies under Section 112

to all types of patent applications including the ’213 patent

involved here.

4. That Which Infringes if Later Anticipates if Earlier.

In Continental Can, the °139 patent was broadly construed

and held to be infringed by a plastic container and a plastic

lid having a notched bead even though the dry container and

lid did not seal. Infringement was predicated on liquid contents

in the container blocking the notches and thus forming a seal.

The prior art cited in Continental Can did not include a plas-

tic lid with a notched bead for use on a plastic cottage cheese

container. The evidence in the present case establishes that Kent,

not ITW as the Continental Can Court believed, was the first

to develop, market and sell a vented all plastic cottage cheese

package. The essential structure and function of the Kent pack-

* See Fig. 4 reproduced on Plate II.

22

age is identical to the accused infringing package in Continental

Can; both packages had notched lids that would vent air during

capping yet narrow enough to prevent liquid leakage. This was

the basis upon which ITW in Continental Can asserted infringe-

ment. .

“The petitioner having sought and obtained a broad con-

struction of his claims cannot now narrow it so as to avoid

anticipation.” Smith v. Hall, 301 U. S. 216 (1937).

The Court of Appeals found Kent to be prior art to the °139

patent but then erroneously distinguished Kent on a “three seal”

argument contrived by ITW’s counsel. The Court of Appeals

erroneously asserted that Petitioner did not directly address this

argument in its Reply Brief. Possibly, the Court did not read

pages 22-23 of our Reply on this point. There is no evidence

in this case that any package ever made by Kent had such a

“three seal” feature. The evidence is wholly to the contrary. This

completely unfounded argument is totally predicated on an early

designer’s conceptual drawing that was never used to make any-

thing except an argument. Kent witnesses testified that the actual

packages leaked the liquid contents of the packaged cottage

cheese when the notches in the lid bead were too wide and the

packages did not leak when the vents were made smaller. The

Kent witnesses further testified that narrower notches in the lid

bead prevented trapping air and solved the lid popping problem.

The Court’s “three seal” error was further compounded by

a holding that it was not reversible error for the District Court

to refuse to allow this Petitioner to make a comparison between

the prior art Kent package and the infringing package from Con-

tinental Can. The lower court’s holding is plain error, contrary

to the Federal Rules of Evidence and contrary to the decision of

this Court in Knapp v. Morss, supra.

5. A Combination of Old Elements in ’139.

. Each and every element of the °139 venting patent can be

found in the prior art Kent Plastic package. Yet under the

23

Seventh Circuit’s application of the Rovico rule and the lower

court’s erroneous interpretation of the evidence, this Petitioner

has been denied due process and the step-by-step analysis re-

quired by this Court in Graham v. Deere, supra, at 17. The

combination of elements in the infringing Continental Can pack-

age are identical to those found in the prior art Kent package.*

Additional new prior art was also introduced, that demon-

strated trapping air in packages was a problem long recognized

by the art (e.g., DX 345, tab 13).

This Court has repeatedly emphasized that courts should

scrutinize combination claims with a care proportioned to the

difficulty and improbability of finding invention in an assembly

of old elements. Great Atlantic & Pacific Tea Co. v. Supermar-

ket Equipment Corp., supra, at 152. Anderson’s-Black Rock,

Inc. Vv. Pavement Salvage Co., Inc., supra, and Sakraida v. Ag

Pro, Inc., supra. Under the standard laid down in these cases,

the °139 patent is invalid because there is no unobvious result,

indeed there is nothing new.

Here, no such scrutiny was observed. In fact, no mean-

ingful analysis of the prior art taken as a whole was made

by either court. The Couft of Appeals in its Opinion faulted

the District Court’s analysis of the prior art; however, the

Court of Appeals itself failed to even mention Petitioner’s

newly cited art with the exception of Kent much less consider the

art cited in the prior Continental Can case. Here, Petitioner

brought forth for the first time prior art (Kent) that was struc-

turally identical to the alleged invention but that was dismissed

piece-meal without consideration of the other prior art taken as

a whole (DX 345).

* See illustrations on Plate III.

24

The application of the Rovico rule by the Court of Appeals,

here, has effectively denied this Petitioner his day in Court.

Further, unchecked application of the Rovico rule in the manner

used by the Seventh Circuit will effectively evade the mandates

of this Court, the “Due Process” clause of the Constitution and

35 U. S. C. §§ 103 and 112 of the Patent Act.

CONCLUSION.

For the reasons stated this Petition for Certiorari should be

granted.

Respectfully submitted,

C. FREDERICK LEYDIG,

BERTON SCOTT SHEPPARD,

One IBM Plaza—Suite 4600,

Chicago, Illinois 60611,

(312) 822-9666,

Attorneys for Petitioner.

Of Counsel:

LeypiG, VorT, OSANN, MAYER

& Hott, LTp.,

One IBM Plaza—Suite 4600,

Chicago, Illinois 60611,

Leroy G. SINN,

Hucu C. CRALL,

289 North Main Street,

Leominster, Massachusetts 01453.

PLATE I

E. T. ALDINGTON

SELF-CONFORMING COVER

FOR CONTAINERS

THE COMBINATION

OF

FLACK & ALDINGTON

Z-Stacker

i$

cA

3 8

oa

C

TTF -16

—— ss ig

PLATE ll

Me |

ee _|

ACCUSED PRIOR ART

FOSTER GRANT ALDINGTON

WITH ITW LEGENDS

RIM ' RIM

ALL PORTION

TACKING RING

KENT PLASTICS

CONTAINER

.

VENTING

NOTCHES

BEAD

GROOVE