# Appendix — Foster Grant Co. v. Illinois Tool Works, Inc.

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Appendix
- **Published:** January 1, 1977
- **Citation:** 431 U.S. 929

## Text

*

of the Ginited States

Ocroser TERM, 1976

we 76-1109

P

FOSIER GRANT CO., INC.,

« war

Gunthorp Warren Printing Compeny, Chicago e Financial 66565

> .

ee Fal + ithe’ age "one ee Mn ee , a |
- ? ;

| IN THE
| Supreme Court of the Anited States
OctTosER TERM, 1976
| No.
FOSTER GRANT CO., INC.,
Petitioner,
vs.
{
ILLINOIS TOOL WORKS, INC.,
|
INDEX OF APPENDIX.
PAGE
Opinion of the Court of Appeals—Illinois Tool Works, Inc.
v. Foster Grant Co., Inc., December 2, 1967...... A1-A26
a | Court of Appeals Judgment Order—December 2, 1976. . .A27
} Order Denying Petition for Rehearing—December 30,
FR RP Pore TT TT TTT Tere A27
District Court’s Findings of Fact and Conclusions of Law——
Illinois Tool Works, Inc. v. Foster Grant Co., Inc.,
Decided March 4, 1974. ......ccccccsccccscess A28-A78
a. District Court’s Opinion—Illinois Tool Works, Inc. v. Con-
: tinental Can Company, Decided July 12, 1967. ...A79-A144
Court of Appeals Opinion—Illinois Tool Works, Inc. v.
Continental Can Company, Decided July 8, 1968.....
[i “nT ae Ce, es UST cwtcecccenes A145-A155

ii

Constitutional Provisions and Statutes Involved.....-.. A156
1. Constitution of the United States, Article I, Sec-
OS ey Pk eae en enese A156
2. Constitution of the United States, Amendment
V—Due Process Clause. ......--.-eeeeeeees A156
3. The Patent Act, 35 U. S. Code, Section 101..... A156

4. The Patent Act, 35 U. S. Code, Section 102(a),
CB) CBB. ccc adciccceccceicnetecccess A156-A157

5. The Patent Act, 35 U. S. Code, Section 103. ..A157
6. The Patent Act, 35 U. S. Code, Section 112. ..A157
7. The Patent Act, 35 U. S. Code, Section 120. ..A158
8. The Patent Act, 35 U. S. Code, Section 121...A158

213 Patent Application Original Claim 1, as Amended
se ddeoke as Mhub Ree cneeeedpheneese 6okeaan A159-A160
213 Patent Application Claim 10, as Amended. ..A161-A162

‘Al

APPENDIX.

In THE UNITED STATES COURT OF APPEALS
For the Seventh Circuit

No. 74-1448
ILuiots Toot Works, INc.,
Plaintiff-A ppellee,
VS.
FosTer GRANT Co., INC.,
Defendant-Appellant.

Appeal from the United States District Court for the
Northern District of Illinois, Eastern Division
No. 69-C-481 — Frank J. McGarr, Judge.

Argued November 21, 1974 — Decided December 2, 1976

Before FAIRCHILD, Chief Judge, PELL, Circuit Judge, and
WyzaNnskI, Senior District Judge.*

FAIRCHILD, Chief Judge. This patent infringement action was
brought by Illinois Tool Works, Inc. (ITW) against Foster
Grant Co., Inc. (Foster Grant). ITW, as assignee, charged
Foster Grant with infringement of three patents.

The district court found that all three patents were valid and
infringed by Foster Grant, but denied ITW’s request for treble
damages and attorneys’ fees under 35 U. S. C. §§ 284 and 285.

* Senior District Judge Charles E. Wyzanski, Jr. of the District of
Massachusetts is sitting by designation.

A2

The court further held that recovery for infringement of the
'360 patent by Foster Grant’s early Wilson-Champion contain-
ers was barred by the applicable statute of limitations, 35
U. S. C. § 286. |

The court entered its final judgment permanently enjoining
further infringement and ordering an accounting as to past
infringement.' Defendant Foster Grant appealed, challenging
the trial court’s finding that the three patents in question are
valid; that Foster Grant’s products infringe the three patents,
assuming their validity; and that all three patents are enforce-
able and that ITW is not guilty of unclean hands. ITW does not
appeal the trial court’s holding that the statute of limitations
bars recovery for infringement of the ’360 patent by Foster
Grant’s early Wilson-Champion containers.

I. THE ROVICO-HOWMET ISSUE.

Patent No. 3,061,139, “Self-Venting Package,” was issued
October 30, 1962 on an application filed March 14, 1960,
Bryant Edwards, assignor to ITW. The patent was found valid
in Illinois Tool Works, Inc. vy. Continental Can Company, 273
F, Supp. 94 (N. D. Ill. 1967), affd, 397 F. 2d 517 (7th Cir.
1968). Foster Grant was not a party to that action.

Patent No. 3,139,213, “Nestable Cup,” was issued June 30,
1964 on an application filed December 13, 1962, a division
of an application filed October 29, 1958, a continuation in part
of an application filed November 29, 1957, Bryant Edwards,
assignor to ITW. The patent was found valid in Continental
Can, supra, in 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), and in Illinois Tool Works, Inc. v. Solo Cup
Co., 179 U. S. P. Q. 322 (N. D. Ill. 1973). Foster Grant was
not a party to these actions.

1. The injunction and accounting were stayed re appeal.
The decision of the court below is reported at 181 U. S. P. Q. 553

(N. D. Il. 1974).

A3

Patent No. 3,091,360, “Nestable Cup,” was issued May 28,
1963 on an application filed October 29, 1958, Bryant Ed-
wards, assignor to ITW. The patent was found valid in Sweet-
heart Plastics, supra, and in Solo Cup, supra.

In 1967 this court considered the waste of effort involved
in repeated full scale trials and considerations of validity of a
patent, and held that once there has been a judicial determina-
tion of validity, the party challenging validity in a later action in
the same court has the burden of presenting “persuasive new
evidence” of invalidity and demonstrating that there is a “ma-
terial distinction” between the cases. American Photocopy
Equipment Co. vy. Rovico, 384 F. 2d 813, 815-16 (7th Cir.
1967), cert. denied, 390 U. S. 945. The Rovico rule was recent-
ly explained and reaffirmed in Mercantile National Bank of
Chicago v. Howmet Corp., 524 F. 2d 1031, 1032 (7th Cir.
1975). The court said, “For reasons of stability in the law
and judicial economy, we ordinarily will not reexamine de novo
the decision of the court in the prior case but rather will limit
ourselves to a consideration of whether, assuming the correct-
ness of the earlier decision, additional facts not before the
court in the prior case require a different result. This is but an
application of the doctrine of stare decisis.”

The parties and the district court did not have the benefit of
Howmet at the trial in the instant action. Rovico was discussed,
howzver, and the district judge expressed some doubt as to the
manner in which the record in the subsequent action should be
made to reflect the record in the earlier action so that the Rovico
rule could be applied. We think that the court in the second
action should either take judicial notice of the contents of the
record in the earlier action or admit it in evidence. At any rate,
since the party challenging validity has the burden of showing
new evidence and a material distinction between the cases, that
party, Foster Grant here, has the burden of getting the earlier
record before the court in order to demonstrate the difference.
Foster Grant, however, resisted receipt in evidence of portions

A4

of the. records in the earlier cases, and in several instances the
district court agreed. To the extent that the district court later
relied on the Rovico rule, Foster Grant cannot legitimately ob-
ject to consideration of the factual determinations reflected in
the decisions of the earlier cases.

On appeal, Foster Grant suggests that this application of the
Rovico rule is a denial of due process, citing Blonder-Tongue v.
University Foundation, 402 U. S. 313 at 329 (1971). Rovico
does not, however, call for the earlier decision to create an
estoppel on issues of fact against a person not before the court
in the earlier case. Its effect is, instead, very substantially to
strengthen the statutory presumption which arises out of a de-
termination of validity in the patent office, itself an ex parte
determination. 35 U. S. C. § 282. Rovico is recognition of the
principle that validity is an issue of law, and as long as the facts
are the same, the issue of law remains the same. So viewed,
Rovico seems a sensible and just means of avoiding wasteful,
repeated de novo examination of an issue. .

Insofar as the interest of the public in freedom from an
invalid patent monopoly is concerned, the Rovico formula
creates little problem. One judicial determination of validity,
based as here, upon the adversary efforts of very competent
counsel, representing clients with substantial interests at stake
is a substantial safeguard of the public interest.

The district court noted the Rovico rule, indicated there was
new evidence which it found unpersuasive, but also stated that
it considered the evidence independently from and without re-
liance upon the prior decisions.

Considering first the adequacy of the decision on the de novo
approach, we must observe that the decision itself demonstrates
the intellectual difficulty in making a really independent exam-
ination of complex issues already thoroughly explored, some of
them several times over. Although the district court gave at
least lip service in deciding the obviousness issue to the step-by-
‘Step analysis required by Graham v. John Deere Co., 383 U. S.

AS

1 (1966) the decision did not’ as completely set out those
analytical steps as we would prefer. Instead, it gave substantial
emphasis to the history of problems developed in the field, fail-
ure of others to solve them, and the commercial success of the
inventions. Although such matters are worthy of consideration,

' they are only secondary factors. Graham, supra.

We think that instead of attempting a review of the de novo
determination, we should first decide whether the judgment can
be affirmed under the Rovico rule. In so doing, we shall address
the six matters which Foster Grant has labeled “Primary
Errors,” and then proceed to such of the “many additional
grounds for reversal” as still have pertinence.

Il. THE ALLEGED “PRIMARY ERRORS.”
Error No. 1.

In attacking the 139 patent, “Self-Venting Package,” Foster
Grant produced evidence tending to show the production and
sale by Kent Plastics Co. of thinwall, thermoformed, plastic
139 invention in October, 1959, and‘his application was filed
March 14, 1960. The Kent sales were claimed to have begun
in December, 1958 or January, 1959. This was evidence not
offered in Continental Can, the earlier case involving *139.

The district court found: “[T]he proofs are not sufficient to
meet Foster Grant's burden of showing that the Kent develop-
ment preceded the ’139 invention and the Kent Plastics package
is different from the ’139 Edwards invention in both structure
and function and neither anticipates nor renders obvious the
"139 invention.” We have italicized the part of the finding which
Foster Grant claims is clearly erroneous,

Foster Grant argues, “The proof that the Kent containers and
vented lids were on sale and in public use before Edwards’ ’139

application is clear and convincing.”

ce

A6

ITW relies on the heavy burden resting upon one who secks
to negative novelty by showing prior use, Devex Corporation Vv.
General Motors Corporation, 321 F. 2d 234, 239 (7th Cir.
1963), and argues that Foster Grant did not meet it. “It is fairly
clear that Kent Plastics was doing something with a cottage
cheese container and a lid prior to the Edwards invention in
October of 1959. However, from the evidence presented, it is
not clear what the structure was prior to Edwards’ inventive
date in October, 1959.”

It is very clear that Kent received orders for quantities of
cottage cheese containers and lids in December, 1958, and made
deliveries in February and early March, 1959. The testimony of
Kent personnel indicates and the supporting documents are sus-
ceptible of the interpretation that although the lids had originally
been designed and made for testing purposes without vents,
there was a change in design in November, 1958 so that all the
lids made in quantity and actually sold, including those de-
livered in February and March, 1959 had notches in them,
serving as vents.

Robert T. Johnson employed by Kent as plastics engineer
from May, 1956 to June, 1960, had been in charge of the
project. He testified that sometime in 1958 after July 11, test
use of lids and containers convinced him that the lids should
be vented. The 25 cavity production mold had already been
received, but was sent back to the manufacturer to be changed.
By placing a pin in the groove in the mold in which the bead
of the lid would be formed, an interruption, notch, or vent would
be formed in the bead. He conceded the possibility that there
might have been a quantity of lids produced in the mold before
its change, and that the first delivery in February may have
been of lids without vents, but beyond that, “there was just
simply nu question, they always had vents in them.”

Jack Haag has been employed by Kent since 1950, and
worked under Johnson. He also explained how pins or bosses
were inserted in the mold cavities to produce vents. He testified

A7

- that lids without notches had been produced only in the develop-

ment stage, and that Kent never made unvented lids on pro-
duction molds.

Certain Kent drawings, dated in March, 1959, show the vents,
but they and later drawings are open to the interpretation that

the vents were changes, added at a later date. There is evidence

of problems experienced with the product, and attempts to make
it satisfactory, and ITW appears to suggest that the idea of
venting may have been one of those later changes. Unfortunately
the district court did not explain its process of decision on the
point. Perhaps the court considered testimony as to events from
14 years earlier subject to faulty recollection and therefore not
clear and convincing. There was no impeachment of either wit-
ness except ITW’s suggested bias of Johnson since he also testi-
fied for Foster Grant as its expert.

There is in evidence, however, an invoice and receiving report.
The invoice, to Kent from a tool maker, is dated December 15,
1958. The amount invoiced is “To cover the cost of altering
(1) 25 Cavity Vacuum Form Mold for Container lid. (Added
Boss’s to Grooves.)” Kent’s receiving report shows receipt
December 5, 1958. |

We think in the light of the testimony, the invoice must have
referred to the structures in the molds which formed the notches
in the lids. The documents are very persuasive proof corroborat-
ing the testimony that the mold was changed late in 1958, and
that the lids produced thereafter contained the vents. Thus we
agree that the portion of the finding challenged by Foster Grant
and italicized above is clearly erroneous.

The court went on to find, however, as above quoted, that
the Kent package was different in function from the ’139 in-
vention and neither anticipates it nor renders it obvious. In its
brief, ITW explains that whenever the notches were first made
in the bead of the Kent lid, they were so placed that there were
three sealing engagements of parts of the lid with parts of the
container “downstream” from the notches, i.¢., in a hypothetical

a difference in function. Foster Grant's reply did not directly
address this argument.

Foster Grant proposes a further Error No. 5, and argues that
the erroneous finding with respect to the Kent sales of vented
lids has significance with respect to Error No. 5. We shall ad-
dress that point in its sequence. Except as affected by Error
No. 5, however, the court’s conclusion, above quoted, that the
Kent vented lids did not anticipate the °139 patent, nor render
it obvious, is correct and is sustained.

Error No. 2.

Foster Grant argues that plastic cups produced and sold by
Continental Can in 1956-58 anticipate or render obvious the
213 and °360 patents. Apparently Continental Can had en-
deavored to develop lines of plastic cups, largely under the
supervision of a Mr. Miller. Some of these cups were never
offered to the public, but substantial numbers of at least three
were sold. These were the 7% V, the 7 AB “D”, and the 7 AB
Special. Foster Grant produced Shelby and Creevy, two former
Continental Can employees, and corroborative documents, show-
ing that large numbers of these cups had been sold over a
considerable period of time from mid-1956 into early 1958.
Shelby and Creevy had not testified in the earlier cases.

In part, the district court found:

“With respect to Continental Can’s experimental devel-
opments, they were not prior art and/or were not ‘anticipa-
tions’ (35 U.S.C. 102) of or did not render obvious (35
U.S.C. 103) the ’213 and °360 inventions.

—_—--

——

*213 invention and, as such, is not prior art with respect
to the °213 patent. I find that Continental Can was involved
in the late 1950’s in an experimental program of attempt-
ing to design a plastic vending cup, a plastic food container,
and a plastic ice cream container. Some of the experimental
designs were mere proposals, some never went beyond the
drawing stage, most never went beyond the laboratory
state (and were actually unsuccessful efforts or abandoned
experiments), and a few were manufactured in limited
- quantities and apparently were distributed upon an experi-
mental basis in limited numbers to few Continental Can
customers who found them to be unacceptable. None of
these was a successful container embodying either of the
Edwards inventions.

“These Continental Can cups or containers are not prior
art, and are no more than unsuccessful developmental
efforts and/or abandoned experiments. The results of this
continuous activity caused the entire plastic program at
Continental Can to be abandoned and discontinued. As
such, none of the Continental Can efforts have any prior
art status.”

We have italicized the part of the finding which Foster Grant
claims is clearly erroneous.

ITW does not challenge in its argument Foster Grant's as-
sertion that it proved that large quantities of the 7% V, 7 AB
“D”, and 7 AB Special had been sold by Continental. Rather,
ITW argues that because these cups did not prove satisfactory
with respect to having “an operative stacker,” they have “no
prior art status.” We think, on the contrary, that there were
sufficient public sales and advertising of these cups so that
their structures must be considered to the extent they are perti-
nent, and that insofar as the portion of the finding challenged
by Foster Grant indicates that they need not be considered, it
is clearly erroneous.

The district court found in the alternative that these Con-
tinental Can products did not anticipate or render obvious the

Alo

213 and 360 inventions. Hence, even if the court erred in
deciding that these products need not be considered, the court
did consider them and reached the same result by that route.

Continental Can Company itself challenged the validity of
the ’213 patent, thought not the °360, in Illinois Tool Works,
Inc. v. Continental Can Company, 273 F. Supp. 94 (N. D. Til.
1967), affd, 397 F. 2d 517 (7th Cir. 1968). Judge Decker’s
opinion there shows careful consideration of the Continental
Can activity relied on here, including the cups which were sold
in quantity as well as those which remained intramural. He re-
jected the claim that they anticipated the ’213, 273 F. Supp. at
107 to 110, and that they rendered it obvious, 273 F. Supp. at
115 to 117. We find no persuasive new evidence to demonstrate
that the legal issues in the present case are really different.

We note that, as Foster Grant asserts, the "360 was not in-
volved in Continental Can, and that in considering whether
the 7 AB Special, with “a stacking configuration at the bottom
of the side wall, which configuration consisted of twelve semi
circular indented and inclined intrusions,” anticipated °213,
Judge Decker stated that it was “quite different from the °213
single continuous Z-shaped ring configuration.” P. 109. A dif-
ference between ’213 and °360 is that claim 1 of ’213 calls for
“both said internal shoulder means and said external shoulder
means being substantially circumferentially continuous” while
the claims of ’360 call for various arrangements providing cir-
cumferential discontinuity. We are not persuaded, however,
that 7 AB Special anticipates "360 nor that any of the earlier
Continental Can cups, considered with various other prior art
elements renders °360 obvious. We note in passing that lack
of commercial success of the Continental Can cups at least
has a bearing upon whether they rendered the Edwards inven-
tions obvious.

Illinois Tool Works, Inc. v. Sweetheart Plastics, Inc., 306
F. Supp. 364 (N. D. Ill. 1969), affd, 436 F. 2d 1180 (7th
Cir. 1971), was also heard by Judge Decker. Both ’213 and
°360 were challenged. Judge Decker considered certain new

All

evidence, found it unpersuasive, and, denied the attacks on
both patents under Rovico. Apparently the defendant there
did not attempt to attack °360 separately from °’213 on the
basis of the earlier Continental Can products as Foster Grant
does here.

This court affirmed as to ’213 on the authority of Rovico.
As to °360, this court gave separate considerativn finding no
anticipation, and, after a Graham analysis, no obviousness, and
affirmed.

The validity of both ’213 and °360 was again challenged in
Illinois Tool Works, Inc. v. Solo Cup Co. (N. D. Ill. 1973),
179 U. S. P. Q. 322. The district court (Judge Austin) re-
examined the issues rather than relying wholly on Rovico, al-
though he noted and doubtless gave effect to the increased
weight of the presumption of validity, arising from the earlier
ITW decisions. 179 U. S. P. Q. at 344. On the facts before
him, Judge Austin concluded that the earlier Continental Can
cups were experiments which failed, 179 U. S. P. Q. at 346
and 354 to 362. But he also decided, among other things, that
even if the 7 AB Special were prior art, it did not anticipate
nor render obvious the ’213 or ’360 inventions. 179 U. S. P. Q.
at 359-60.

Although Foster Grant appears to have proved more sub-
stantial sales of several of the earlier Continental Can cups than
proved in the earlier cases, it has not persuaded either the dis-
trict court or us that any of them anticipated or rendered ob-
vious the ’°213 or °360 inventions.

ERRor No. 3.

In the matter to which Error No. 4 pertains, Foster Grant
relies on a statement in the specifications of ’360 in interpreting
the claim in ’°213. Foster Grant challenges the court’s state-
ment that “The statements in the specification of the ’360 patent
are irrelevant to the claims in the °213 patent.” It is unnecessary
to discuss this proposition apart from Error No. 4.

Fost Grant challenges the assertion of the district court
that: “Foster Grant relies on a statement in the specification
of the °360 patent to equate lip and rim. . . . The Court does
not consider the lip to be the rim, but rather to be a separate
entity attached to the rim.”

The problem arises in connection with the claim that certain
Foster Grant cups infringed Claim 1 of ’213. Under Claim 1 the
sidewall of the container ae ee ren and
outwardly “to an upper margin ing an open or
said upper margin having a rim of predetermined axial extent
which is of sufficient increased lateral width relative to the thick-
ness of the thin plastic sidewalls to lend required lateral strength
at said open upper end” and the sidewall has circumferential
stacking ring means “positioned below and spaced axially from
said upper rim and having an axial extent greater than the
axial extent of the rim portion. .. .”

of the upper body portion of one of the accused
imegtuae da aia b an outwardly and downwardly turned
portion which ITW has designated RIM on the drawing re-
produced in this opinion.
RIM

ALL PORTION

SSTACKING RING

;

Al3

This portion continues into a downwardly and inwardly turned
portion which we shall refer to as a skirt. The district court
took the position that the skirt is the “lip” as the word is used
in the patent, and that for the purpose of the claim language
concerning the position of the stacking ring, the upper rim is
as designated RIM on the drawing and does not include the
skirt (“lip”). When “upper rim” is thus limited, the stacking
ring means is entirely “below and spaced axially from said
upper rim” and infringement was properly found.

If the “upper rim” be deemed to include the entire skirt,
then the upper rim of the accused cup, extends, at least on
the outside of the cup, to a level axially below the upper
portion of the stacking ring means, and it would follow that
the terms of the claim are not literally fulfilled by the accused
cup.

Foster Grant maintains that the use of the word “lip” in
the °213 claims, forces the conclusion that either the ’213
patent is invalid under 35 U. S. C. § 102(b), or that Foster
Grant’s cups do not infringe the °213 patent.

The argument goes as follows, 35 U. S. C. § 210 provides
that an applicant of a later filed application may have the
benefit of the filing date of an earlier, co-pending application,
providing that the applicant has satisfied the requirement of 35
U. S. C. § 112 that the specification in the application contain
a“. . . written description of the invention, and of the manner
and process of making and using it, in such full, clear, con-
cise, and exact terms as to enable any person skilled in the art
to which it pertains . . . to make and use the same. . . .”

In the case at bar, the °213 patent issued on an application
filed December 13, 1962, Serial No. 244,320, and explicitly
relies for an effective filing date upon a first application filed
November 29, 1957, Serial No. 699,678, and upon a second
application filed October 29, 1958, Serial No. 769,057. The
first application was abandoned after the second application
(a continuation-in-part, or C. I. P.) was filed. The ’213 patent

Al4

was granted on the 1962 application which was filed as a
divisional application of the second or C. I. P. application of
October 29, 1958.

It is obviously crucial to the validity of the claims of the
213 patent that they relate back to the parent application of
1958. If they do not relate back, then the validity of ’213 is
judged in light of the prior art as of the December 13, 1962
filing date, and the patent is probably invalid fo: anticipation
under 35 U. S. C. § 102(b) by ITW’s sale of its products prior
to 1962, but after 1958.

Given this analysis, Foster Grant argues that ITW may not
have the benefit of the earlier filing date, because the trial court
found that the description of the patented cup in the specifica-
tions varied from that of the cup in the patent claims. Specifi-
cally, the application of November 29, 1957, Serial No. 699,678,
described the cups at issue as follows: “[T]he upper body por-
tion . . . is terminated by an outwardly and downwardly turned
lip. . . .” (Emphasis added.) The application of October 29,
1958, Serial No. 769,057 described the cup: “[T]he upper body
portion . . . is terminated by an outwardly and downwardly
curved lip or rim.” (Emphasis added.) The application of De-
cember 13, 1962, Serial No. 244,320 described the cup: “[T]Jhe
upper body portion . . . is terminated by an outwardly and
downwardly turned lip.” (Emphasis added.) As already stated,
Claim 1 of the ’213 patent includes a circumferential stacking
ring means “. . . positioned below and spaced axially from said
upper rim and having an axial extent greater than the axial ex-
tent of the rim portion. . . .” (Emphasis added. )

The trial court found that the “lip” described in the Novem-
ber 29, 1957 application and the December 13, 1962 applica-
tion was different from the “rim” referred to in the '213 claim,
and that the equation of lip and rim in October 29, 1958
application was irrelevant to the °213 patent because it was the
parent application of the °360 patent. Foster Grant urges the
ingenious argument that ITW is caught in a Hobson’s choice

Al5

on this issue. If we affirm the district court’s finding that lip
and rim are used differently, then the ‘213 patent cannot have
the benefit of the earlier 1958 application because the specifica-
tion does not conform to 35 U. S. C. § 112. Thus, the ’213
patent is invalid per se both because § 112 is not fulfilled and
because of anticipation as of the 1962 filing date.

On the other hand, urges, Foster Grant, if we disagree with
the district court and find that lip and rim are used synonymously,
then the patent is valid but Foster Grant’s cup does not infringe,
because its stacking ring is not spaced axially below the skirt,
or downturn of the lip.

We reject Foster Grant’s arguments and affirm the district
court’s finding of infringement notwithstanding the extent of the
downturning skirt in the accused cup.

Both the ’213 and °360 specifications state that it is the
object of the invention “to provide a cup having a step or shelf
intermediate its top and bottom edges . . .” etc., and “to pro-
vide a frusto-conical cup having a shelf or step, intermediate
its top and bottom margins . . .” etc. These statements, speak-
ing in terms of edges and margins, suggest that the downward
extent of an outer skirt is immaterial to the positioning of the
stacking ring means. As pointed out by the district court, it is
evident that the inventor intended to differentiate the invention
from a rim stacker.* The language of the claim is appropriately
interpreted with that in view.

Both specifications disclose that “The upper body portion 16
is terminated by an outwardly and downwardly turned lip 18.”
Foster Grant points out the dictionary definition of rim as “the
outer often curved or circular edge or border of something”
such as a cup, and that in such context rim, brim, lip, and mar-
gin are synonymous. Webster’s Third New International Dic-
tionary. But although these terms may be synonymous and de-

2. In a rim stacker, the rim structure itself comprises the upper

shoulder and no shelf or structure is i
io alien on cantcameend Glee eordhar, eet sre

Al6

scribe identical portions of a structure, we are mindful of the
difficulty of applying exact labels to portions of a varying con-
tinuum, and do not find that an extended downward hanging
skirt, though it may be part of the “lip” need be part of the
“upper rim.” | |

We are aware of the difference in claim language between
the two patents, °360 referring to positioning the stacking ring
means below the “upper margin,” and ’213 to positioning such
means below and spaced axially from the “upper rim.” We
have considered Foster Grant’s argument that the adoption of
the language in ’213 created a file wrapper estoppel pertinent
to this case. Whatever may have been the reason for the change
in terminology, we do not find that it implied any disclaimer
which would be significant in this case.

Therefore we conclude it is reasonable to construe the claim
so that the “upper rim” is the portion of the accused cup so
indicated on the drawing reproduced in this opinion, and it
follows that the stacking ring means is positioned below and
spaced axially from it. The same construction was made, in
answer to the same argument advanced here by Foster Grant,
in Illinois Tool Works, Inc. v. Solo Cup Co., 179 U.S. P. Q.
322, 332-33 (N. D. Ill. 1973).

To secure the benefit of the 1958 application under 35
U. S. C. § 120, ITW’s assignor had to comply with the mandate
of the first paragraph of 35 U. S. C. § 112 that the specification
contain a written description of the invention “. . . in such full,
clear, concise, and exact terms as to enable any person skilled
in the art to which it pertains... to make and use the same . . .”
Exact identity of description is not required, but “. . . the rele-
vant inquiry under the ‘how to make’ requirement of paragraph
one of 35 U. S. C. § 112 is whether the scope of enablement
provided to one of ordinary skill in the art by the disclosure is
commensurate in scope with the protection sought by the claims.”
Application of Cescon, 474 F. 2d 1331, 1335 (U. S. Ct. of
Cust. and Pat. App. 1973). See also, Application of Cormany,
476 F. 2d 998 (U. S. Ct. of Cust. and Pat. App. 1973).

Al7

‘wargin, upper rim and rim seem not always to have been given
identical content, we conclude that the several disclosures are
adequate, see Yosemite Chemical Co. v. United States, 360
F. 2d 948, 952 (U. S. Ct. of Cl. 1966), and would enable
one skilled in the art to practice the invention. They are suf-
ficiently consistent with each other so that the later application
has the benefit of the filing date of the earlier under § 120.

Error No. 5.

Foster Grant contends that the district court “erroneously
excluded evidence of admissions against ITW’s interest relative
to certain containers and lids held to be infringements in the
Continental Can and Sweetheart cases.”

Foster Grant desired to advance two applications of the epi-
gram, “that which infringes, if later, would anticipate if earlier.”
Knapp Vv. Morss, 150 U. S. 221, 228 (1893). One is that the
Kent containers and vented lids sold in early 1959 were identi-
cal to certain Continental Can containers and lids found to be
infringements of ’139 in Continental Can, supra. The other is
that the 7AB Special cups sold by Continental Can in 1956-68
were similar to the CVP 9 cup found to infringe °360 in
Sweetheart Plastics, supra.

Even though the district court found, and we agree, that the
Kent products did not anticipate "139 and the 7AB Special
cups did not anticipate °360, it is suggested that ITW must, in
obtaining findings of infringement in the earlier cases, have ob-
tained a broader construction of these patents than we now
recognize and that ITW is now estopped from narrowing the
construction. Smith v. Hall, 301 U. S. 216, 232.

Although the district court might well have allowed inquiry
to test the soundness of these applications, we find no reversible
error.

With respect to 139, the formal offer of proof was only that
particular exhibits were a container and lid of the type accused

ieee 2,
oe

Al8

in Continental Can. There was no formal offer of testimony
that the exhibits were identical to the Kent Plastics products.
Apparently the container and lid came into the record in another
connection. ITW has asserted in its brief, without contradiction
by Foster Grant, that the Kent and Continental Can products
were compared and discussed in briefs in the district court, and
that it is clear that in the Continental Can lids the seals were
upstream from the vents, as in °139, while they were down-
stream in Kent. Thus the Foster Grant contention breaks down.

With respect to ’360, the formal offer of proof was similarly
limited. More importantly Foster Grant in its brief claims merely
“similarity” between the infringing Sweetheart cup and the 7AB
Special. Nothing suggests specifically how it was that the in-
fringement finding in Sweetheart Plastics must have committed
ITW to a construction of the claims such that the 7AB Special
would anticipate.

Error No. 6.

Foster Grant challenges the district court’s conclusion (and
its finding to the same effect) that “ITW has not been guilty of
. . - unclean hands, and {the three patents] are each enforce-
able.”

The challenge is supported by claims of misrepresentations
and failures to disclose to the Patent Office. Not all the claims
argued in this court were presented to the district court.

The Lid-Popping Problem.

The ’139 patent claimed a self-venting package with arrange-
ment such that holding and venting means would be on the
downstream side of sealing means “when gaseous material within
said container means causes said sealing means portions to
disengage with each other” and holding the container and
Closure in assembled relation “during egress of gaseous material
under pressure and emanating from the interior of said
container means.”

Al9

The specification describes a problem encountered in packag-.
ing foodstuffs in plastic containers having removable lids. “This
is especially true if the foodstuff to be packaged is of the type
(such as cottage cheese) which generates a gas after being en-
closed in a package.” It is further explained (in part):

“When a container 12 is filled with a material such as
cottage cheese and the lid 14 is assembled thereto, the
biological action of the cottage cheese continues and the
cheese ferments or ‘works’ and thereby self-generates gas.
Also some gas (air) is trapped during the assembly of the
lid to the filled container.

“Thus, at some later time after packaging, due either
to a change in temperature which increases the pressure
of the trapped gas or due to the pressures of the gas
generated in the interior of the containers package,
or a combination thereof, normal lids are literally popped
or unseated relative to the container .means.. There-
fore, in the plastic containers and lids shown, it is desirous
to leave a venting means which affords easy egress of gas
from the interior of the container while still affording a tight
seal to maintain sanitary conditions at all other times.”

There was proof, as found by the court, that when all-plastic
cottage cheese tubs were first used, an unexpected lid-popping
problem occurred during handling, shipping or storage. Ap-
parently part of the problem arose at the time of the capping
operation: pressure from trapped air made the lid unstable.
Various solutions have been developed for this problem. There
was also a problem apparently caused by an increase in pres-
sure subsequently to capping. The latter was believed to result
from an increase in pressure as a result of generation of gas by
the cheese. °139 related to the latter. Edwards, the inventor,
and ITW never made tests to verify the belief that pressure in-
creased as a result of gas production. Foster Grant produced
proof that only minute quantities of gas are emitted by cottage
cheese of marketable quality.

The unclean hands claim in this respect is based on the
representations as to the cause of the problem of increase in

: A20

pressure after packaging and that the ‘139 invention solved it.
Certain reports of a Mr. Engle, when employed by ITW, dealt
with the trapped air part of the problem, and his solution for
it, and are claimed to have put ITW on notice that the °139
invention did not avoid lid popping. The proof is somewhat
equivocal as to whether there is in fact a substantial problem
of lid popping from some cause other than trapped air. As found
by the Court, the evidence gives reason to doubt that internal
pressure buildup is caused by gases emanating from cottage

cheese. Shisii! "Yin Uiehia “seit ii
“The evidence establishes that ITW believed that cot-
tage cheese does generate gas and no evidence was pre-

sented to suggest that ITW felt differently before or during
the prosecution of the ‘139 patent. Thus this contention

of an alleged misrepresentation is without foundation.”
The finding is not clearly erroneous.
Nondisclosure of Prior Art.

In prosecuting the 360 and ’213 patents, ITW did not bring
to the attention of the Patent Office certain cups and patents
of which ITW’s representatives were aware. By hindsight,
several of them seem sufficiently relevant so that disclosure (to
the extent ITW was aware of them) would have been appropri-
ate, and perhaps required by high standards of candor. Each,
however, has been considered by courts in one or more of the
earlier cases, Continental Can, Sweetheart Plastics, and Solo and
found not to anticipate these patents nor render them obvious.

These items are a so-called Caine cup, so-called Continental
Can cups (7-%V, 7AB-D, and 7AB Special), Nowak Patent
No. 2,749,572, Gardner Patent No: 3,004,288, Aldington
Patent No. 2,985,354, Caine Patent No. 3,045,887.

Misrepresentation of Commercial Success.

“Foster Grant points to representations by ITW in the prose-
cution of ’360 which claimed certain commercial acceptance of

- -A21

containers which were later found unsatisfactory. At best ‘the

matter is somewhat equivocal.

Insofar as these matters were raised before the district court,
‘the court’s refusal to find unclean hands is not clearly erroneous.
Insofar as they were not raised, we see no reason to consider
them on appeal.

Til. THE ALLEGED “MANY ADDITIONAL
GROUNDS FOR REVERSAL.”

Infringement of '139.

Foster Grant challenges the trial court’s finding of infringe-
ment on five grounds.’ First, citing Deepsouth Packaging Co. v.
Laitram Corp., 406 U. S. 518 (1972), it contends that it makes
and sells only empty dry containers and lids, that do not seal
when assembled dry. Deepsouth does not support the proposi-
tion. That case involved a combination patent and held only
that manufacture and export in the United States of the com-
ponents of a combination patent for assembly and use in another
country do not constitute direct infringement in the United
States. In the present case, the intended and normal use of
Foster Grant’s lids an-. containers is to be filled with wet food-
stuffs, such as cottage cheese, which trigger the sealing and
venting properties of the package. Foster Grant does not allege
that its lids and containers are filled and sealed outside of the
United States, nor that the filling of the containers with wet
foodstuffs is an unexpected or distorted use. Indeed when sold
by Foster Grant the containers and lids are both imprinted
with the customer’s name and cottage cheese designation.

3. ITW charged that all of Foster Grant’s (represented
by the Wisco Dow cup cheinmen and anocteted li the Wilson-
Se ee ee ee nat SS, snd Ge Foster Grant cur-

chairman and associated lids) infringe one or
poy pe 1, 2, 6 and 7 of the '139 patent. The dis-
trict court agreed with all charges of infringement. —

A22

Second, Foster Grant challenges the finding of infringement
on the ground that the only evidence of infringement are the
results of a distorted test conducted by Edwards, ITW’s
assignor.* | |

The district court in finding infringement relied on applica-
tion of the claim language of ’139 to the accused packages and
on the language of Foster Grant’s own patent, as well as on
the Edwards test. Foster Grant was at liberty to conduct its
own tests if it wished, and in fact extensively cross-examined
Edwards on the results of his tests. The evidence in the record
supports the district court’s finding of infringement.

Third, Foster Grant finds it significant that Edwards “ad-
mitted he had never seen in commerce defendant’s [Foster
Grant's] container and lid assembled as a package or containing
fowi.” Foster Grant does not seriously contend that in fact its
lids and containers are not assembled as packages to contain
food in commerce. The mere fact that Edwards personally did
not see them so used is irrelevant.

Fourth, Foster Grant asserts as error the fact that there was
no evidence that any specific assembled container and lid made
by Foster Grant sealed, vented and resealed when containing
food. This assertion misapprehends the burden placed on a
plaintiff in a patent suit. ITW demonstrated through tests, ap-
plication of the "139 claim language to the accused cups, and
the language of the Foster Grant patent that the accused cup
had the capability of sealing, venting and resealing. Moreover,
Foster Grant’s own expert admitted that in normal commercial
production excess gas is sometimes found in the Foster Grant
packages, and that the packages did vent in the manner
described in the 139 patent. ITW was not required to prove

A23

that any specific container sealed, vented, and resealed when
used in commerce or containing food.

Finally, Foster Grant argues that its accused container and

lid packages do not have some of the structures called for by
Claim 1 of °139.

A pertinent portion of the claim called for the “container
means having a portion of the sidewalls offset radially outward-
ly relative to other portions of the sidewalls.” Everyone agrees
this describes a groove, and the accused container has a groove.
The claim further calls for the “container means and...
closure means [lid] each being formed with a sealing means
portion for normally engaging each other to seal said container
means when in assembled relation.” The accused lid has a
bead which fits into the groove, and there is evidence that a
seal occurs between them. The claim further calls for “one of
said clos!.re means and container means being formed with an
integra. combination holding and venting means portion adapted
to be associated with said [groove], said holding and venting
means portion being arranged relative to said respective sealing
means portions so as to be on the downstream side of said
sealing means portions when gaseous material within said con-
tainer means causes said sealing means portions to disengage
with each other, said holding and venting means having no axial
movement and thereby holding said container and closure in
assembled relation—during egress of [gas].”

In at least one embodiment described in the specification,
there are lugs on a slanted edge of the bead of the lid. These
lugs engage the upper portion of the groove and retain the lid
in assembled relation to the container and space the surface of
the upper portion of the groove from the lid sufficiently to
provide a vent for the egress of gas.

In the accused package, there are vertical slots in the so-called
barb (upper and inwardly extending portion of the groove)
which provide a vent for the gas. The district court, in finding

A24
venting means portion directly reads on both ‘slot or hole’ and
the inwardly extending portion (i.e., the barb). . . . The slots
in the cups coact with, cooperate with, and are ‘associated with’
the groove in the cup.”

The inventor, Edwards, testified, in connection with a chart,
and referring to the claim language “integral combination hold-
ing and venting means portion.” ;

“This phrase, the lines are connected to the portion just
above the groove in the container and in both
this portion just above the groove is what retains the lid
in place and it also has interruptions in it to provide the
venting.”

He further characterized the upper interim part of the groove
as the “lid retaining barb” nd referred to “the venting and hold-
ing means in the barb of the container. .. .”

We find no error in the court’s holding, and reject Foster
Grant’s claim that the court read the integral combination hold-
ing and venting means language on the groove itself, a claim
element.

Minute Difference Between ’213 and ’360.

Claim 1 of ’213 calls for circumferential stacking ring means
formed in the sidewalls, including externally projecting shoulder
means and internal shoulder means projecting inwardly, both
said shoulder means “being substantially circumferentially con-
tinuous.”

Claim 1 of °360 calls for “at least one of said shoulder means
having separate means associated therewith for cooperation with
a shoulder means of a nested cup to provide a circumferentially
discontinuous area to assure air communication between com-
pletely nested cups and consequent freedom of individual cup
separation from a stack.”

Foster Grant complaints that ITW originally took the posi-
tion that the shoulders of four cups were “substantially circum-

—

fi A25

ferentially continuous” notwithstanding the presence of cer-
tain notches, and that the cups infringed °213. Shortly before
trial Edwards conducted physical tests to determine whether
there was air communication, and at trial testified that these
four cups infringed °360 rather than ’213.

Foster Grant attacks the validity of the test and also argues
that the claims of both patents are invalid under 35 U. S. C.
§ 112 for failure particularly to point out and distinctly to claim
the invention. We find no merit in either argument. The exis-
tence of air communication and freedom of cup separation
sufficiently distinctly marks the line between the patents, and
the test could be accepted by the district court as a reasonable
means of determining on which side of the line particular cups
fall. The fact that defendant’s expert reached a different con-
clusion with a different test raises questions ans of weight and
credibility of evidence.

Rejection of Defendant's Tests for Resiliency.

The same comment as the foregoing applies to the com-
parison of tests conducted by the parties to demonstrate the
resiliency of various types of cups in stacks:

Resiliency as a result of the structures described is sig-
nificant in both ’213 and ’360. Claim 1 of ’213 closes with the
following: “said intermediate section of the stacking means
inclined inwardly and upwardly toward the cup axis to present
the aforesaid inner shoulder means and to provide a thin-wall,
resilient support therefor when axial pressure is applied there
against by the external shoulder means of a like, telescopically
associated container.” Claim 1 of ’360 closes with the follow-
ing: “the inherent flexibility of the thin plastic material of the
cup in combination with the aforesaid structural features serving
to impart resilient action to a stack of nested cups without
jamming when such cups are subjected to axial pressure.”

Apparently, in presenting its claim that the subject matter was
anticipated or obvious, Foster Grant attempted to prove that

A26

containers in existence prior to the critical dates achieved the
resiliency claimed. Tests were run up recently fabricated simu-
lating the form of cups which had been produced prior to the
critical dates.

Foster Grant objects to the underlined assertion in the follow-
ing passage, set forth by the district court:

Specifically, Johnson, Foster Grant’s expert, admitted
on cross-examination that there was no attempt to dupli-
cate the process variables, such as sheet thickness (R.
2283), plug design (R 2284-87, 2291-94), and plug tem-
perature (R. 2288-90, 2293-94) which were actually
used to make the alleged prior art cups. Johnson also
admitted that the selection of these variables alters the
construction and performance of a cup or container (R.
2294-95). These tests were all made on cups and con-
tainers manufactured by today’s technology. The mission
of this Court is to determine the prior art ‘at the time the
invention was made’, 35 U. S. C. 103. The advance in
technology since 1957 and 1958 cannot be denied and
demonstrating what can be achieved with today’s tech-
nology does not shed any light on what was possible with
the technology existing when Edwards made the ’213 and
360 inventions. Consequently, these ‘after the fact’ tests
conducted by Foster Grani for the purpose of this lawsuit
have limited probative value. [Emphasis added.]

We can find no fault with the statement objected to.
The judgment appealed from is AFFIRMED.
A true Copy:
Teste:

orcercess

Clerk of the United Siates Court of
Appeals for the Seventh Circuit.

A27

UNITED STATES COURT OF APPEALS.
* * (Title Omitted in Printing) * *
No. 74-1448 December 2, 1976

JUDGMENT ORDER.

This cause came on to be heard on the transcript of the
record from the United States District Court for the Northern
District of Illinois, Eastern Division, and was argued by counsel.

On consideration whereof, it is ordered and adjudged by this
court that the judgment of the said District Court in this cause
appealed from be, and the same is hereby, Affirmed, with costs,
in accordance with the opinion of this court filed this date.

UNITED STATES COURT OF APPBALS.
* * (Title Omitted in Printing) * *

No. 74-1448 December 30, 1976

ORDER.

On consideration of the petition for rehearing and suggestion
that it be reheard en banc filed in the above-entitled cause, no
judge in active service having requested a vote thereon, nor any
judge having voted to grant the suggestion, and all of the
members of the panel having voted to deny a rehearing,

It Is Ordered that the petition for a rehearing in the above-
entitled cause be, and the same is hereby, Denied.

A28

IN THE UNITED STATES DisTRICT COURT
+ * (Civil Action No.69C 481) * *
Decided: March 4, 1974

FINDINGS OF FACT AND CONCLUSIONS OF LAW.

FINDINGS OF FACT.

I. The Parties and Jurisdiction.

The plaintiff, Minois Tool Works, Inc. (hereinafter “ITW”),
is a corporation organized and existing under the laws of the
State of Delaware, and has its offices and principal place of
business at 8501 West Higgins Road, Chicago, Illinois.

ITW manufactures and sells (in its Conex Division) a variety
of products, including thin-wall plastic cups, thin-wall plastic
tubs and plastic lids for those cups. Plaintiffs thin-wall plastic
cups and tubs are covered by the Edwards’ patents Nos.
3,139,213 (hereinafter °213 patent) and 3,091,360 (herein-
after "360 patent) in suit. The packages and/or lids are
covered by Edwards’ patent No. 3,061,139 (hereinafter °139
patent) in suit.

Defendant Foster Grant Co. (hereinafter “Foster Grant”) is
a Delaware corporation with a place of business in Chicago,
Illinois.

Foster Grant manufactures and sells a variety of plastic cups
and packages which ITW charges to be infringements of its
°213, ’360 and °139 patents in suit.

Edwards’ first “Nestable Container” patent application Serial
No. 699,678 was filed on November 29, 1957. This applica-
tion did not include claims covering containers with interrupted
stacking devices. On October 29, 1958, Edwards filed a con-
tinuation-in-part application. Serial Number 769,050, which
CIP included claims to containers with both continuous and
interrupted stacking means. Pursuant to an election of species

A29

requirement by the Patent Office, a divisional application was
filed on December 13, 1962, comprising claims directed only to
containers with the continuous stacking device, and this divi-
sional application subsequently issued as the '213 patent on
June 30, 1964. CIP application No. 769,050 issued on May
28, 1963 as the °360 patent, containing claims directed to
containers with interrupted stackers. ITW is presently, and
since the issue dates set forth above, has been the sole and
exclusive owner of U. S. Letters Patent Nos. 3,139,213 and
3,091,360.

The ’139 patent in suit, issued on October 30, 1962 with 13
claims and is entitled, “Self-Venting Package.” This patent
covers generally a lid-container package and/or lid which vents
gas from the package when a buildup of pressure occurs.

The actions alleged in ITW’s complaint and Foster Grant's
counterclaim arise under the patent laws of the United States,
35 U. S. C. §§ 271-287, et seq. This Court has jurisdiction
over the parties and the subject matter of ITW’s complaint, and
the subject matter of Foster Grant’s counterclaim. Venue in
this judicial district is proper.

II. Development of the Edwards’ Nestable
Container Inventions.

For at least the past twenty-five years, the paper companies
have been making and selling (1) paper drinking cups for the
vending industry and for over-the-counter usage, and (2) paper
tubs for dairy food products (R. 63, 69, 79).' The paper
containers were designed to be dispensed one at a time by a
dispensing device located in an automatic vending machine, at
or near a counter and the like, or at a dairy filling station
(R. 63-4, 455). A typical paper cup is depicted by PX-13 and
a typical paper tub is depicted by PX-14* (R. 66-7, 69, 455-
57).

1. R. refers to the trial transcript in this action.

2. PX refers to plaintiff ITW’s Exhibit; DX refers to Foster
Grant’s (defendant’s) Exhibit.

SS =

A30

- Both the paper cups and tubs usually were waxed two-piece
containers consisting of a paper conical wall section having an
overlapped vertically glued seam and an insert or false paper
bottom suitably attached to the lower end of the paper wall
(R. 63-4, 66, 69, 455). These paper containers were nestable
and were arranged in stacks for shipment, handling and dis-
pensing (R. 64). The fact that they were waxed poses a prob-
lem because an undesirable taste could be imparted to the
product in the container (R. 66, 69) and the fact that they
were of two-piece construction presented leakage problems (R.
66).

With the advent of plastic as a packaging material in the
early 50’s, plastic containers were made by the “injection-
molded” process (PX-15; R. 70-2). Although this process was
relatively expensive, injection-molded food tubs, typified by
PX-15, were sold during the 50’s, primarily as a premium item
(R. 72).

In the mid-50’s, injection-molded drinking cups (PX-17)
were offered for sale by Crown Co. in relatively small commer-
cial quantities (R. 73). These injection-molded cups (PX-17)
were nestable and were arranged in stacks for shipment, han-
dling, and dispensing (R. 74). However these containers, as
made prior to the invention of the "213 patent, due to their
rigidity and breakability, required careful handling in shipment
and use (R. 74-5). The Crown cup (PX-17) has a stacking
device comprising a vertical thickened section in the sidewall,
which was not effective (R. 73). The Crown cup jammed, and
was withdrawn from the market (R. 74-5).

While the paper containers were made and priced to be high
volume, disposable items, the cost of the injection-molded plas-
tic containers confined their use primarily to premium or
specialty products—being intended for reuse rather than being
disposable (R. 72).

At or about this same time, other companies—for example,
Caine Company—were marketing and selling a thermoformed

A31

plastic cup of the type shown by PX-16 (R. 75). This Caine
cup (PX-16) has a stacking device comprised of a series of
vertical protuberances around the periphery of the sidewall of
the cup (R. 76). However the cups jammed or telescoped
when stacked (R. 76-7). Even after several changes in the
stacking device, Me nep mere yarket property und was with-
drawn from the market (R. 76-7).

This was the general status of the container field when ITW
became interested in designing, making, and commercially sell-
ing and all-plastic container (R. 63).

Prior to 1957, ITW was not in the plastic container field
(R. 82-3). However, in 1956, ITW became aware of and
interested in a technique for thermo-forming thin-sheet plastic
material which could be utilized for making containers (R.
82-3). ITW investigated the use of the Politis machine and its
related process, which had been developed and made the sub-
ject of patent applications, by a Mr. Charles Politis of Athens,
Greece—with the view of entering the market with a line of
plastic containers made by the Politis thermo-forming process
(R. 82-4).

In 1956, Mr. Politis gave ITW several samples of thermo-
formed plastic containers made on his machine (PX-18 through
PX-20), none of which had any type of stacking device (R.
82-6). In late 1956, ITW’s Donald Welshon sent Mr. Politis
a Continental Can thermo-formed cup which was unsatisfactory
because it jammed, but which did illustrate a more acceptable
wall thickness (R. 80; PX-166).

ITW, in 1956, agreed to take an option (R. 85-6). During
the option period, ITW investigated Mr. Politis’ equipment in
Greece and ITW’s Donald Welshon made several market sur-
veys which indicated that (1) there existed a substantial com-
mercial potential for marketing plastic containers, and (2)
ITW should first attempt to develop plastic drinking cups for the
vending industry, and, thereafter, should undertake to develop
plastic tubs for the dairy food industry (R. 87-91, 94). ITW

nm EEE

would have to be improved (R. 89, 93). It was also apparent
that a new cup had to be designed, because there was no
satisfactory plastic cup on the market (R. 87, 94, 100, 460).

In May or June, 1957, Bryant Edwards, after working on

to the upper end of the container, and a single continuous Z-

shaped stacking ring located either at the rim or in the sidewall
below the rim (PX-21, R. 102, 113, 454, 472-74). These
designs were disclosed to and discussed by Messrs. Welshon,
Black, Beart, Cathcart and Wiley who were present at an ITW
meeting held on June 12 or 13 (PX-21). Mr. Fred Wiley an
ITW consultant for thermo-forming machines and methods
made notes of the meeting and recorded the Edwards’ cup
designs and volumetric calculations for such cup designs (R.
102-05, 107, 111-12, 464-471, 1025-28, 1034-43).

Because of the “apparent” advantages of locating the stacking
ring at the rim (i.e., increased material for strength and quick
release at top of mold), Edwards made a mold drawing (PX-
22), with the stacking ring at the rim (R. 113-14, 115, 476,
477). He took the mold drawing (PX-22) to Greece, a mold
was constructed, and sample cups (PX-23) of the Edwards
first design were made on the Politis sample press (R. 115-17,
477-78, 1000). Some cups were also made on Politis ma-
chinery, but these cups were all scrapped (R. 480). The cups
made on the sample press were brought back to the United
States by Edwards in July, 1957, and were not submitted to
anyone outside of ITW (R. 115-17, 482, 1000) Cups (PX-
23, PX-24) made from this mold, however, jammed or stuck
together (PX-25; R. 119-20, 482-86). As a result, Edwards

A33

+ SH gt gba (R. 120-21,
6).

Edwards then returned to his earlier design (PX-21) with
the stacking ring located in the sidewall below the rim and
designed and entirely new mold (R. 121, 126). Edwards made
or had made several sketches and drawings in August of 1957
of the cup covered by the ’213 patent (PX-26, PX-27, PX-28;
R. 121, 487-88). In September, 1957, Edwards’ new nestable
cup (PX-29) was made on the Politis sample machine (PX-31;
R. 121-22, 487-91). During September, 1957, and the fol-
lowing few months, the cups (PX-29) were arranged in stacks
and the stackability of the new design was tested (R. 122-26,
490). The cups (PX-29) were drop tested in September, 1957,
and it was observed that the stacking rings gave these cups a
spring-like characteristic (R. 122-26, 490, 492).

By locating the stacking ring in the sidewall below the rim
it imparted, as contemplated by Edwards in 1957, the following
characteristics to the cup design:

(1) Guiding Action—the portion of the sidewall above
the stacking ring of a lower cup guides the lower
shoulder (outwardly projecting) of a stacking ring
of an upper cup into stacking relation with the upper
shoulder (inwardly projecting) of the lower cup (R.
127, 307, 491-92).

(2) Increased Stacking Area—the upwardly and inwardly
inclined section provides a wider stacking shoulder
or shelf to cause greater contact area between adjacent
stacking rings (R. 129, 492).

(3) Lateral or Side-to-Side Rigidity—the upper and
lower shoulders prevent the sidewalls of the cups from
being squashed or collapsed as a result of the cups
being gripped (R. 128, 310, 492). This is of parti-
cular importance in thin-wall plastic containers.

A34

(4) Concentricity—the side wall structure above and be-
low the stacking ring urges the stacking ring at all
times “into round”, thereby assuring better stacking of
adjacent stacking rings (R. 131, 313). Uniformity of
stacking action is also achieved.

(5) Resiliency—by virtue of the upwardly and inwardly
stacking ring is “resilient” so that it acts as a spring
which is able to withstand axial impact forces nor-
mally encountered during handling, storage, and ship-
ment of stacked cups (R. 132, 490, 492).

The subsequently developed cup (PX-48) embodied the de-
sign features disclosed by Edwards during the June, 1957 meet-
ing and, as defined by Claim 6, this cup further provides:

(6) Cam Action—by reason of the inclined shoulder
means, additional resilience optionally may be pro-
vided to further enhance the axial resiliency of a
stack of containers (R. 520-22).

The above-discussed characteristics (1) through (5) flow
from and are implicitly a part of Edwards’ nestable container
invention as embodied in Edwards’ original PX-29 cup, as dis-
closed in the Figures 1-5 cups of the °213 patent, and as found
in Foster Grant’s accused plastic cups. The above character-
istics (1) through (6) flow from and are implicitly part of
Edwards’ nestable container invention, as embodied in Edwards’
PX-48 cup, as disclosed in the Figures 6-8 cups of the ’213
patent, and as found in certain ones of Foster Grant’s accused
plastic cups.

Subsequently, Edwards designed, produced, and tested other
cups (PX-30, PX-32), which included the features of the earlier
PX-29 cup but were slightly modified (R. 133-34). The PX-30
and PX-32 cups were submitted to Automatic Canteen for
evaluation and testing (R. 136-38, 495). ~

A35

The first substantial order was placed by Automatic Canteen,
in December, 1957, for 1,000,000 plastic drinking cups (PX-
32; R. 138-39). Shipment to Automatic Canteen began in
Spring, 1958 with ITW’s production cups (PX-33) embodying
the sidewall continuous Z-shaped stacking ring (R. 142-43),
218). Several thousand of such cups were made and shipped
(R. 276). However, for the reasons discussed hereinafter, the
balance of this and successive orders from Automatic Canteen
were filled with cups embodying Edwards’ nestable container
invention, having an interrupted Z-shaped stacking ring below
the rim.

In accordance with its marketing plan, once ITW had de-
veloped and marketed a plastic drinking cup for the vending in-
dustry, ITW then embodied Edwards’ container invention in-
cluding the continuous Z-shaped stacking ring in an all-plastic
tub (PX-47, PX-48) for the dairy food industry (R. 160-66,
524-25). In 1958, ITW began to expand its commercial manu-
facture, and its first customer for its plastic food tubs was The
Borden Company, followed by many other dairies (R. 105-67,
525).

As stated, ITW delivered several thousand of Edwards’ all-
plastic container invention with the continuous Z-shaped stack-
ing ring (PX-33) to fill the Automatic Canteen order of
1,000,000 plastic drinking cups (R. 276, 503). However, as
the only production machine owned by ITW was a Politis ma-
chine made in Greece, and inasmuch as this Politis machine was
poorly constructed and lacked manufacturing precision, it did
not produce good copies of the Edwards container (R. 500-02,
504).

Moreover, field reports indicated that these plastic cups under
certain circumstances were not vending as rapidly as paper cups
and that upon occasion those plastic cups that were not prop-
erly made, caused jamming of the vending machines, thereby
shutting them down and requiring the attention of a serviceman
to return the machines to service (R. 143-45, 1066-68).

_ +. Faced with these problems Edwards had three alternatives
available to him: hand sort acceptable cups, redesign the ma-
chinery, or redesign the cups (R. 145-46, 507-08).

Edwards elected to redesign the cup, and to this end, in June,
1958 developed an improved cup having an interrupted Z-
shaped stacking ring which facilitated cup drop or separation
and which permitted greater variations in manufacturing toler:
ances than did the PX-33 cup (R. 146-51, 508, 518-19, 1064-
65). Subsequently, Edwards made several versions of this cup
(PX-35 through PX-41), out of which evolved ITW’s produc-
tion cup PX-41 (R. 146-51, 218, 508-11). Several hundred
thousand of these PX-41 cups, embodying Edwards’ °360 nest-
able container invention, were made and shipped to Automatic
Canteen (R. 152, 514, 1103).

At about this time, Edwards developed another improved cup
having an interrupted Z-shaped stacking facility with cams
(PX-42 through PX-46; R. 152, 156, 514-18). This cup per-
mitted even greater variations in manufacturing tolerances than
did the PX-41 cups (R. 152, 514-18). Consequently, ITW’s
molds were changed and the balance of the Automatic Canteen
order was filled by the PX-46 cups (R. 159). ITW has con-
tinued to make and sell plastic drinking cups of the PX-46 type,
because the expense involved in changing its vending cup molds
back to their original form has not been justified in view of the
satisfactory nature of the PX-46 cup design (R. 159-60, 218).

The PX-41 cup (embodying the nestable container invention
of Claim 1 of the *360 patent) is characterized as being a one-
piece nestable seamless container of thin-wall plastic construc-
tion and of a size to be gripped by one hand, having a recessed
bottom, a sidewall which tapers, upwardly and outwardly, a rim
at the upper end of the sidewall having an increased thickness
to lend lateral strength at the upper end of the container, and
a circumferentially interrupted Z-shaped stacking ring formed in
the sidewall below the rim (R. 150). This stacking ring, as

A37

.. contemplated. by Edwards in 1958, is further characterized as
_ providing:

(1) Free Cup Separation—the. interrupted shoulder con-
struction defines air passages between adjacent nested
of the lowermost cup from a stack. This feature was
of stacking ring (R. 148, 326-27, 512).

(2) Resiliency—the inherent flexibility of the thing plastic
material in concert with the shape of the stacking
ring and its integral relationship to the sidewall of the
cup imparts resiliency to the stacking ring, such that
it acts as a spring capable of withstanding axial im-
pact forces normally encountered during handling,
storage, and shipment (R. 149, 519-20).

(3) Easier Stripability—the interrupted shoulder construc-
tion in the stacking ring permits the cup to be more
readily stripped from a mold than the Edwards cup
having a continuous Z-shaped ring. This feature was
obtained without sacrificing the overlap produced
by the Z-shaped configuration (R. 149, 320-21,
512-13).

(4) Greater Radial Overlap—for the same ease or dif-
ficulty of stripping, the interrupted Z-shaped stack-
ing ring can provide greater radial overlap of the
contracting shoulder means than is available with a
continuous Z-shaped stacking ring (R. 147-48, 512).

(5) Guiding Action—the portion of the sidewall above
the stacking means of a lower cup guides the lower
shoulder (outwardly projecting) of a stacking ring of
an upper cup into stacking relation with the upper
shoulder (inwardly projecting) of the lower cup (R.
149, 511-12). The cocking of cups encountered =m
“rim stacking” is eliminated.

A38

_. (6). Increased Stacking Area—the upwardly and inwardly
inclined section provides a wider stacking shoulder
or shelf which causes greater contact area between
adjacent stacking rings (R. 147-49, 512).

(7) Lateral or Side-to-Side Rigidity—the upper and lower
shoulders prevent the side walls of the cups from
being squashed or collapsed as a result of the cups
being gripped (R. 324, 512). This is of particular
importance in thin-walled plastic containers.

(8) Concentricity—the side wall structure above and be-
low the stacking ring urges the stacking ring at all
times “into round”, thereby assuring better stacking
of adjacent stacking rings (R. 149, 512-13). Uni-
formity of stacking action is also achieved.’

Furthermore, even though the stacking ring was interrupted,

Edwards took advantage of the inherent resiliency of the thin-
wall material and the interrupted shape to produce a stacking
ring that was as resilient as the continuous Z-shaped stacking
ring (R. 149). Thus Edwards also achieved the advantages
of improved cup separability and improved stripability, without
impairing the resiliency of the stacking ring and without lessen-
ing the ability of the stacking ring to act as a shock absorber
(or spring) to protect a stack of cups from axial impact forces
normally received during handling and shipment (R. 149).

III. Commercial Application of Edwards’
Container Inventions.

Both of the Edwards ’213 and 360 container inventions are
used in one-piece, thin-wall plastic containers sold (1) to
vending companies, for example, for vending coffee and soft

1. The subsequently developed PX-46 cup (embodying the nes-
table container invention of claims 4, 8, 9 and 10) provides:

(9) Cam Action—by reason of the inclined cam surfaces,

additional resilience ionally may be added to provide a
resilient stack of cine TE 153-56, 514-18, 520-22).

A39

drinks (R. 177, 190-191), (2) to retail purchasers for over-the-
counter and home consumer usage (R. 177, 185-88), and (3)
to dairies for packaging dairy food products (R. 177, 188-90).
ITW and its domestic licensees make and sell such containers
in large quantities (PX-33, PX-41, PX-46, PX-48, PX-150,
PX-151, PX-i53, PX-154). In addition, Foster Grant itself
makes and sells such containers in large quantities (PX-61,
PX-62, PX-63, PX-74 and PX-75).

For the vending industry, the plastic cups are disposed in
stacked relation so as to be storable in a magazine (chute) of
a dispensing device in a vending machine (R. 179). The stacked
cups are delivered to vending machine operators who periodically
fill the vending machine with cups and the drinking product
(R. 179). The operator manually drops or places the stacked
cups in the dispensing magazine which feeds the cups to a
dispenser mechanism (R. 179). When the machine is activated
by a coin or otherwise, the mechanism segregates the lower-
most cup from the remainder of the stack, whereby under the
force of gravity the cup drops from its stacked position into a
filling station and is filled with a hot or cold beverage, for
example, coffee or a soft drink (R. 179). The cup is then
grasped by the purchaser and removed from the filling station
of the vending machine (R. 179).

For the over-the-counter and home consumer market, the
plastic cups are stored and shipped in stacked relation (R.
185-186). In such stacked relation, the cups are adapted to
be placed in a manual dispensing device (R. 186). Generally,
the lowermost cup in a stack is grasped by the user and physi-
cally separated from the stack (R .186). For those cups de-
signed to be used with a rigid plastic holder at fountains,
cafeterias and the like, the holder engages the uppermost cup
in a stack so that it can be physically removed from the stack
and used as desired (R. 186-58).

For the dairy market, economy of storage, shipping space,
and ultimate usage dictate that the plastic tubs be disposed in

‘A40

stacked relation, with freedom to be separated. The plastic tubs
arrive at the dairies in stacks which are manually dropped
or placed into chutes that guide the tubs into a dispenser
mechanism (R. 188). This mechanism permits separation of
the lowermost tub from the stack and thereafter, under the force
of gravity, the tub drops onto a conveyer which then conveys
the tub to a filling station where the tub is filled with the food
product (R. 188). Thereafter, the filled tub is conveyed to a
capper station where the tub is capped with a plastic lid (R.
188-89). Finally, the capped tub is conveyed to a cooler or to
a packaging station where the filled tub is manually or nic-
chancially placed in cartons or cases for shipment (R. 189-
90). The tub, filled with the food product, is usually trucked
to supermarkets and stored on shelves until purchased by the
housewife (R. 189-90).

Plastic containers that are tightly wedged or jammed together
cannot be separated and dispensed by the dispenser mechanism,
with the result in the dairies an attendant must clear the dis-
penser, and in the vending industry a service call is required to
clear the machine (R. 190-92). In the over-the-counter and
home consumer market, if two cups stick together, either two
cups will be dispensed at double cost, or service is delayed by
manual separation of the cups (R. 190).

In any event, regardicss of the final application and/or
usage, in accordance with Edwards ’213 and ’360 inventions,
the thin-walled plastic containers are maintained in stacked
relation throughout shipment, storage, and handling, thereby
permitting eventual easy and dependable dispensing and sepa-
ration of the containers (R. 192-94).

VI. Development of the Edwards
Self-Venting Package Invention.
As stated above, prior to ITW’s entry into the container field,
the container industry for many years had been making paper
tubs, either plan or wax-coated, for the dairy food industry

A4l

(PX-14, R. 69). These companies also sold a lid or closure,
made either from paper, metal or plastic, which was used to cap
the tub after it was filled with cottage cheese or other dairy
food products (R. 168).

When, pursuant to its market studies, ITW decided to ex-
pand its thermoforming operations into the dairy food market
in 1958-59 (R. 162), it began to make and sell an all-plastic
cottage cheese tub (PX-47); (R. 162-65). At that time, ITW
did not make any kind of lid and, therefore, its customer, the
Borden Company, purchased a plastic lid (PX-49) made by
Lily-Tulip Cup Corporation for use with plaintiff's cottage
cheese tub (R. 168-69, 525). A short time after the Borden
Company began packaging its cottage cheese in plaintiff's tubs
with Lily-Tulip’s lids, Borden received many complaints about
“popping” lids (R. 169-70). This was an unexpected circum-
stance because “popping lids” had not been encountered as a
problem in the use of sealed paper tubs. The popping was gen-
erally believed to result from the internal pressure of gas
generated by the cheese. It was also observed that, after filling
and capping at the dairy, the lids would pop off during handling,
shipment, or storage prior to purchase by, the consumer (R.
169-70, 525-27). It was observed that, since the filled packages
were stacked one on top of another, a bump or jarring force
caused one of the containers to bounce on top of another,
thereby causing a lid to pop off (R. 338-40, 345, 528, 937-
38). The “popping lids” obviously spoiled the sanitary con-
dition of the package and rendered the cottage cheese unsaleable
(R. 170).

ITW’s Bryant Edwards was assigned the task of solving the
“lid-popping” problem, which was attributed to either trapped
air or a pressure increase (R. 170-73, 339-40, 532, 534-35).?
The first thing Edwards did was to design a lid (PX-50, PX-52)
which would prevent air from being trapped in the package

1. Lat cw rygmctemungaely nelpaanpumcatben 5 wget liagy cel

ture, barometric pressure and/or gas generated by cottage cl
(R, 339-40, 534-35).

A42

during the capping operation (R. 173, 529). While the lid suc-
cessfully prevented “trapped air”, it did not stop the lid-popping
difficulty (R. 173, 530, 898-99).

Bryant Edwards then concluded that the solution to the
problem required a lid that normally would seal a plastic
package to prevent leakage of liquid and admission of air,
but which, in response to internal gas pressure, would permit
gas to escape from the package and then would promptly reseal
the package when the pressure was relieved—and would have
the ability to repeat this gas-venting action whenever necessary
(R. 173).

In October, 1959, Edwards developed a self-venting plastic
package which sealed the plastic package and preserved the
sanitary condition of the package and, at the same time, per-
mitted any gas under pressure in the package to vent to the at-
mosphere, and which thereafter resealed the container—all
without axial dislodgment of the lid (R. 173-74). Edwards was
able satisfactorily to accomplish this by a novel configuration of
the engaging areas of the tub and lid, notwithstanding the flexible
and delicate characteristic of these areas due to the thin-wall
plastic material. Edwards made or had made drawings of his
self-venting plastic lid invention, dated as early as October 29,
1959 (PX-52, PX-53, PX-55; R. 530-31). As early as October
26, 1959, Edwards made a sample of his self-venting plastic
lid invention (PX-51; R. 173-178, 420). On November 4,
1959, Edwards made a sample of another form of his plastic lid
invention (PX-54; R. 531-32). On December 16, 1959,
Edwards added a secondary venting feature to his self-venting
invention (PX-56; R. 194-96, 420).

Inasmuch as ITW did not have shallow-draw of lid printing
equipment, it had the Kleer-Plastics Co., on a subcontract basis,
make the lids in accordance with Edwards’ self-venting lid in-
vention (R. 536-38 ).*

1. ITW subsequently began to make its own lids (R. 536-38).

A43

When ITW’s customers-used Edwards’ inventive lids (OX-51
through 56) with ITW’s cottage cheese tubs (PX-47, PX-48),
they no longer encountered the “lid-popping” problem (R. 176,
536-37). This was and is attributable to Edwards’ self-venting
package invention, which (1) is embodied in Edwards’ PX-51
lid and PX-47 tub, (2) is disclosed and claimed in the °139
patent in suit, and (3) found in Foster Grant’s accused plastic
packages.

V. Commercial Success of Edwards’ Nestable Container and
Self-V enting Package Inventions.

The all-plastic containers and packages sold by ITW and its
domestic licensees have enjoyed commercial success. That the
ITW containers embody the Edwards nestable container and
self-venting package inventions is unrefuted in the record (R.
835-38; PX-150, PX-153, PX-157). It is apparent that the
commercial success is attributable to the Edwards’ nestable con-
tainer inventions and not to other factors.

With respect to ITW’s and its licensees’ plastic containers, in
each case it is Edwards’ container inventions which maintain the
cups in proper stacked relationship. If the cups are delivered
to the customer in a jammed or wedged condition, the user
incurs additional expense and aggravation (R. 190-92), and
if lids pop off the package, the product is unsanitary (R. 170).

These customers have a preference for the containers and
packages embodying Edwards’ container inventions and are
satisfied with their accomplishments and performance.

A. ‘The ’213 Patent.

ITW’s sales of its plastic containers (PX-33, PX-48, PX-150)
embodying the Edwards °213 container invention have been
significant. During the past 14 years, ITW has made and sold
in excess of 950,000,000 containers (PX-147A) under the '213
container invention.

A44

The sales by FTW’s domestic licensees (PX-151) have been
even more significant. Through September of 1972, the domes-
tic licensees have sold in excess of 2,600,000,000 containers
(PX-147A) embodying the ’213 invention (R. 300).

ITW’s domestic licensees have paid ITW over $1,234,000.00
in royalties for the ’213 container invention (PX-147A, PX-
151, R. 1309-12).

B. The’360 Invention.

ITW’s sales of containers embodying the ’360 invention have
been considerable. Since 1958, ITW has produced about
3,600,000,000 containers embodying the ’360 invention (PX-
148A, PX-153, R. 1312).

ITW’s domestic licensees have sold over 4,000,000 containers
embodying the ‘360 invention (PX-153, PX-154, PX-148A).

ITW’s d licensees have paid ITW a total of approxi-
mately $520,000.00 in royalties under the °360 invention
through September of 1972 (PX-148A, PX-153, PX-154).

C. The’139 Invention.

ITW has sold over 860,000,000 packages embodying the
"139 self-venting package invention (R. 1314-15, PX-149).

ITW’s licensees have sold over 366,000,000 packages and/or
lids embodying the ’139 invention (PX-149, R. 1315). ITW’s
licensees have paid over $381,000.00 in royalties to ITW under
the ’139 invention (R. 1315).

VI. Recognition of Validity of Plaintiff's
213,360, and ’139 Patents.

The validity of the °213 patent in suit was vigorously con-
tested in the /TW v. Continental Can action, No. 65 C 2179,
but was sustained by both this Court (273 F. Supp. 94) and the
Seventh Circuit Court of Appeals (397 F. 2d 517). Notwith-
standing the Continental Can decision, Sweetheart Plastics, Inc.

A45

again contested the validity of the ‘213 patent in the ITW v.
Sweetheart action. Again, the District ‘Court upheld the validity
of the °213 patent (306 F. Supp. 364) and the Seventh Circuit
Court of Appeals again affirmed (436 F. 2d 1180). Thus the
Seventh Circuit has twice held the °213 patent valid.
- The validity of the 360 patent was also in issue in the Sweet-
heart case. Its validity was upheld by both the District Court
and the Seventh Circuit Court of Appeals (436 F. 2d i180).

Moreover, both the °213 and °360 patents were again con-
tested in ITW v. Solo Cup Co., 332 (N. E. Il., 1973), C. A.
69 C 480 and were again held valid and infringed.

The ’139 patent was also in issue in the Continental Can case
and its validity was sustained by both the District Court and the
Seventh Circuit Court of Appeals.

VII. Foster Grant Infringes the’213 Patent.

. ITW charges that all of Foster Grant’s cups having con-

tinuous Z-shaped stacking rings, represented by the PX-61,
PX-62, and PX-63 cup groups, infringe one or more of the

asserted claims 1, 2, 3, 5, 6, 7, 8 and 9 of the '213 patent.’

- 1. ITW’'s infringement charge for the ’213 patent is as follows:
Foster Grant Cups Exhibits

Wilson-Dow 12 oz. (PX-61A-1, TDX-7) 1, 2,3, 5,6,7&9
Wilson-Dow 16 oz. (PX-61B-1, TDX-1) 1, 2,3, 5,6,7&9
Wilson-Dow 8 oz. (PX-61C-2, TDX-196) 1, 2,3,5,6,7&9
Wilson-Dow 32 oz. (PX-61D-2, TDX-199) 1, 2,3,5,6,7&9
Wilson-Fos. Gr. 32 oz. (PX-62A-1, TDX-14) 1,5,6&9
Wilson-Fos. Gr. 32 oz. (PX-62B-1, TDX-9) 1,5,6&9
Wilson-Fos. Gr. 16 oz. (PX-62C-1, TDX-3) 1,5,6&9
Wilson-Fos. Gr. 8 oz. (PX-62D-1,TDX-20) 1,5,6&9
Wilson-Fos. Gr. 8 oz. (PX-62E-2, TDX-226) 1,5,6&9

Foster Grant 12S (PX-63A-1, TDX-154) 1,5,6,8&9
Foster Grant 7S (PX-63B-1) 1,5,6,8&9
Foster Grant 8S (PX-63B-1, TDX-152) 1,5,6,8&9
Foster Grant 8ST (PX-63C-1, TDX-150) 1,5,6,8&9
Foster Grant 12ST (PX-63D-1, TDX-153) 1,5,6,8&9

(Continued on next page)

A46
A. The Wilson-Dow Cup and the PX-61 Cup Group.

"The Wilson-Dow cup is represented by the PX-61 cup

group (no longer in commercial production). This PX-61 cup
group, in turn, is represented by its “chairman”, the Wilson-
Dow 12-ounce cup (PX-61A-1). This cup “chairman” (PX
61A-1), like each member of this PX-61 cup group, has a
Z-shaped stacking ring in the lower part of the sidewall.’

ITW’s Edwards prepared claim chart PX-68 (in PX-72)
which shows how the elements of Claim 1 of the ‘213 patent
read on the Fig. 1 embodiment of the °213 patent. He further
prepared claim chart PX-69 (in PX-72) which demonstrates
how each of the elements of Claim 1 of the ’213 patent read on
the Wilson-Dow cup “chairman” (PX-61A-1) (R. 639-41).
This same claim chart, PX-69A, shows how the stacking ring
element of Ciaim 1 reads on the stacking ring embodied in the
Wilson-Dow cup “chairman” (PX-61A-1) (R. 640).

Edwards further recited how Claim 1 applies both struc-
turally and functionally to the Wilson-Dow cup “chairman”
(PX-61A-1) (R. 641-43). In this connection, because Edwards
did not have a stack of any of the Wilson-Dow cups, he relied
upon his experience in the thin-wall plastic cup field to con-
firm that the stacking ring in the Wilson-Dow cup “chairman”
performed (1) its intended shock absorbing function of pro-
(Continued from preceding page)

Foster Grant 16SO (PX-63F-1, TDX-158) 1,5,6,8&9
Foster Grant 16T (PX-63G-1, TDX-155) 1,5,6,8&9
Foster Grant 16S (PX-63E-1, TDX-156) 1,5,6,8&9
Foster Grant 24TA (PX-63H-1, TDX-160) 1,5,6,8&9
Foster Grant 32T (PX-63N-1, TDX-162) 1,5,6,8&9
Foster Grant 32S (PX-631-1, TDX-166) 1,5,6,8&9
Foster Grant 32SO (PX-63J-1, TDX-164) 1,5,6,8&9
Foster Grant 32SS (PX-63K-1, TDX-167) 1,5,6,8&9
Foster Grant 32SSO (PX-63L-1, TDX-163) 1,5,6,8&9
Foster Grant 32SSU. _ (PX-63M-1, TDX-165) 1,5,6,8&9

1. Three of the Wilson-Dow “chairmen” (PX-61A), which were
partially sectioned, are illustrated in drawing PX-64 in PX-67.

A47

tecting the stack from axial impact, and (2) its intended stack-
ing function of preventing jammed cups (R. 641-43). Edwards
also testified how each of the asserted claims reads on and is
infringed by the Wilson-Dow cup “chairman” (PX-61A-1) (R.
643-46). Trai

Despite the contrary testimony of Foster Grant’s expert wit-
ness, Mr. Johnson, the Court finds Edwards’ conclusions com-
pelling and adopts them.

Foster Grant's contentions that the Wilson-Dow cup group
(PX-61)} does not infringe Claims 1, 5, 6 and 9 are without
merit. With respect to the Wilson-Dow cup group (PX-61)
there is a real identity of means, operation, and result between
the asserted claims, and the Wilson-Dow cup group (PX-61)
infringes these asserted claims of the °213 patent.

B. The Wilson-Foster Grant Cup and the PX-62 Cup Group.

The Wilsor-Foster Grant cup is represented by the PX-62
cup group (no longer in commercial production). This PX-62
cup group, in turn, is represented by its “chairman”, the Wilson-
Foster Grant 32-ounce cup (PX-62A-1). This cup “chairman”
(PX-62A), like each member of the PX-62 cup group, has a
continucus Z-shaped stacking ring located immediately below
the rim in the sidewall.*

ITW’s Edwards prepared claim chart PX-70 (in PX-72)
which shows how the elements of Claim 1 of the '213 patent
read on the Wilson-Foster Grant cup “chairman” (PX-62A-1)
(R. 646-47). This claim chart demonstrates how the stacking
ring element of Claim 1 reads on the stacking ring embodied in
the Wilson-Foster Grant cup “chairman” (PX-62A-1) (R. 647-

1. Edwards also recited how each of the asserted claims applied
to the Wilson-Dow 16-ounce cup (PX-61B), the 8-ounce cup
(PX-61C), and the 32-ounce cup (PX-61D), the other members
of this cup group (R. 643-646).

2. Three of the Wilson-Foster Grant “chairman” (PX-62A-1),
a ee ee ee ee

—_— oN

48). Inthis connection, because Edwards did not have a stack of
these cups, he relied upon his experience in the plastic cup field
to confirm that the stacking ring in the Wilson-Foster Grant cup

“chairman” performed (1) its intended shock absorbing func-

tion of protecting the stack from axial impact, and (2) it in-
tended. stacking function of preventing jammed cups (R. 648

49). Edwards also testified how each of the asserted claims reads __

on and is infringed by the Wilson-Foster Grant cup “chairman”
(PX-62A-1) (R. 650-57).*

" Despite the contrary testimony of Foster Grant's expert wit-

ness, Johnson, the Court adopts the testimony.and conclusion
of Edwards. that the Wilson-Foster Grant cup group (PX-62)
infringes Claim 1 of the ’213 patent, and concludes further that
the Wilson-Foster Grant cup group (PX-62) infringes Claims
5, 6 and 9 of the ’213 patent.
' With respect to the Wilson-Foster Grant cup group (PX-62)
there is a real identity of means, operation and result between
the PX-62 group and the asserted claims of the ‘213 patent.
Clearly, the asserted claims of the °213 patent are infringed by
the PX-62 cup group.

Cc. The Foster “Grant Current Commercial Cup and the
PX-63 Cup Group.

Wie Site hiaik ciskik satan sek ta eameaiiagl ie
the PX-63 cup group. This PX-63 cup group, in turn, is rep-
resented -by its “chairman”, the Foster Grant 12S cup (PX-
63A-1). This cup chairman (PX-63A-1), like each member of
the PX-63 cup group, has a continuous Z-shaped stacking ring
located immediately below the rim in the sidewall.*

1. Edwards also recited how each of the asserted claims applies
to the Wilson-Foster Grant nce cup (PRO2D), the other 16-ounce
cup (PX-62C) and the 8-ounce cup (PX-62D), the other members

a th oom 650-57).

Three of the current commercial cups (PX-63A) which

Were partially sectioned shown in photograph PX-66B “(in
PX-6 -

(A49

-ITW’s Edwards prepared claim chart PX-71A (in PX-72)
which shows how the elements of Claim 1 of the ’213 patent
literally read on the Foster Grant current commercial cup
“chairman” (PX-63A) (R. 590-93). This claim chart PX-71
(in PX-72) specifically shows how the stacking ring element
embodied in the Foster Grant current commercial cup “chair-
man” (R. 593-619). In this connection, Edwards conducted
inking tests, statis load compression ‘tests, comparator load
tests, and drop tests on the chairman of this group (R. 600-
611, 658). He confirmed that the stacking ring had the claimed
characteristics and performed (1) its intended shock absorbing
function of protecting the stack from axial impact, and (2) its
eee Seay Sunation of poopetns femmes cage (R.
602-11).

Edwards also testified how each of the asserted claims reads
on and is infringed by Foster Grant’s cup “chairman” (PX-
63A) (R. 619-626).* More specifically, Edwards prepared
claim chart PX-71AA (in PX-72) to demonstrate how the
elements of Claim 6 of the '213 patent read on the Foster Grant
cup “chairman” (PX-63A) (R. 620-22). He explained how
the claimed camming element was embodied in the Foster
Grant cup “chairman” (R. 621-22).

It is evident from the ’213 patent and its file history that
Claim 1 defines Edwards’ container invention over a container
having a rim stacker (R. 1150-1155). In a rim stacker, the
rim structure itself comprises the upper shoulder and no shelf
or support structure is provided apart from, in addition to, and
spaced below the rim, as defined in Claim 1. In contrast to the
prior art containers having prior rim stackers, the Foster Grant
cup “chairman” (PX-63A) has its Z-shaped stacking ring pro-

2. weg nee ang rg By Bg = pcg
to Foster Grant’s current 8S cup (PX-63B), 8ST % Sie
the 12ST (PX-63D), the 16S cup (PX-63E),

(PX-63F), the 16T cup (PX-63G), the 24TA cup (PX-63H), the
32S cup px 631), mo 32SO cup Paget the 32SS ws

63K), the 32SSO cup (PX-63L), the 32SSU (PX-63M), and
the 42T cup (PX-63N) (R. 619-626).

4
i
4

ASO
ements det ether snetirensrytn te: dagger ety i028
below the rim.

The pertinent language of Claim 1 of the ‘213 patent applica
to Foster Grant’s current commercial cups, an illustration of

which is reproduced below (PX-63-A-5):
M

ALL PORTION |

aan

ySTACKING RING

Specifically, Claim 1 of the '213 patent calls for a “rim of pre-
determined axial extent which is of sufficient increased lateral
width . . . to lend required lateral strength to said open upper
end.” This language reads upon the crown or upper part of the
cup. Between the “rim” and an upper shoulder of the stacking
ring is a wall portion extending in the same general upwardly
direction as the side wall. The angle of the “wall portion” on
Foster Grant’s current commercial cups is 9°38” which is almost
identical to the side wall which is 9°30” (PX-63A-2, R. 2606).
Beneath the “rim” and the “wall portion” is the upper shoul-
has a “rim of predetermined axial extent” and “a stacking ring
Thus, each of Foster Grant’s current commercial accused cups
has a “rim of predetermined axial extent” and “a stacking ring
means . . . positioned below and spaced axially from said upper
rim .. . (and having) an axial extent greater than the axial
extent of the rim portion”, as called for by asserted Claim 1.

AS1.

. The. stacking ring in Foster Grant’s current.commercial cup
has the same means, identity, and result as the Edwards’ claimed .

Foster Grant relies on a statement in the specification of the
"360 patent to equate lip and rim. The statements in the speci-
fication of the "360 patent are irrelevant to. the claims in the
213 patent. The Court does not consider the lip to be the rim,
but rather to be a separate entity attached to the rim. Irrespec-
tive of the definition of rim used, the stacking ring in Foster
Grant's current commercial cups has an axial height greater
than the axial extent of the rim and infringes this element of
the ‘213 claims.

Further, the 213 claims call for the stacking ring means to
have an “axial extent greater than the axial extent of the rim
portion.” This element refers to “rim portion” and not to “rim”
or “upper rim” used in the earlier claim language. Thus, it
follows that the “rim portion” was intended to cover structure
other than “rim”—and it is reasonable to conclude that “rim
portion” embraces all of the portions associated with the rim,

namely, the downwardly extending flange or the undercurled lip.

Parenthetically, the rim element is defined as “a rim of pre-
determined axial extent which is of sufficient increased lateral
width . . . to lend required lateral strength to said open upper
end.” There is no reference in the claim to the axial extent
being predetermined to fit into the “mechanisms in the vending
machines”. The claim element simply requires that the “rim be
of predetermined axial extent which is of increased lateral
width . . . to lend required lateral strength to the open upper
end.” This language is in accordance with the definition of rim
in Claim 1.

Relying upon the prosecution histories of the various patent
applications relating to the °213 and °360 patents, Foster Grant |
develops a “file wrapper estoppel” argument. In support of its
estoppel argument, Foster Grant alludes to the original specifi-

' AS2

arr OES Sp AIP alatcata BN

the claims of the °213 patent which are in issue. .

Foster Grant also refers to the C. L. P. application (PX:7)
and to the rim stacking embodiments of Fig. 21. However, any
reference to this embodiment, which was specifically deleted by
ITW’s attorneys in accordance with the Rules of the Patent
Office, is irrelevant.

Similarly, Foster Grant’s analysis of the prosecution history
of the C. I. P. specification (PX-7) which matured into the "360
patent is irrelevant. The prosecution history leading to the
allowance of different claims in the "360 patent is also irrelevant
to the scope of the claims in the "213 patent.

Foster Grant also relies upon the prosecution history of the
'213 patent (PX-6) and suggests that Claim 1 was allowed only
because the pending claim was amended to add the “rim”
element and the “stacking ring means . . . positioned below and
spaced axially from said upper rim.” Actually, by the final
amendment, the claim was “amended” in a variety of ways, not
in the single way suggested by Foster Grant, and further, the
claim was amended to distinguish over all of the references
previously cited by the Patent Office, not to distinguish solely
over the Aldington patent as suggested by Foster Grant.

Under the remarks in the final amendment, ITW’s attorneys
flatly stated “This amendment is being submitted after careful
consideration of the newly cited patent to Aldington and after a
very careful review of all of the references of record in this
application.”

The Court finds no file wrapper estoppel which prevents the
asserted claims from being infringed by Foster Grant's current
commercial cups.

Foster Grant’s witness, Mr. Johnson’s contention is that the
Foster Grant cup “chairman” (PX-63A-1) does not have an
“intermediate section of the stacking means inclined inwardly
and upwardly” to provide a “Z” configuration (R. 2119-20).

AS3

This contention is apparently premised on Foster Grant's use of
an “S”-shaped stacking ring. However, the “S”-shaped stacking
ting does embody the “Z” characteristic (configuration) as e-
fined by the claim itself.

The pertinent claim language applies to Foster Grant's cur-
rent commercial cup. The intermediate section does have at its
lower extremity “internal shoulder means.” The intermediate sec-
tion is “inclined inwardly and upwardly . . . to provide a thin
wall resilient support. . . .”

The language of Claim 1, on its face, is broad enough to
cover either Z-shaped or S-shaped supports for the internal
shoulder means. The claim calls for the “support converging
toward the cup axis from bottom to top sufficiently to increase
lateral strength of the stacking ring means and to increase radial
extent of the internal shoulder means.” This claim language
responds to the intermediate support in Foster Grant's current
cup that must and does converge toward the cup axis to per-
form the desired function of increasing lateral strength and
radial extent. Foster Grant's current cup (PX-63) has an
S-shaped stacker embodying the Z-characteristic specifically de-
fined in Claim 1.

Further, the intermediate section of the Foster Grant current
commercial cup is generally or substantially “inclined inwardly

‘and upwardly toward the cup axis.” The intermediate section m

the stacking ring in the Foster Grant cup has, immediately
above the lower shoulder: first, a generally vertical portion;
then an inwardly and upwardly inclined portion; then a vertical
portion which joins the upper shoulder means,

Foster Grant contends that, under the patent in suit, the
intermediate section of the stacking ring must be “more resilient
than [that of] :he container” (R. 2132) or the claimed stacking
devices to “be more resilient than other stacking devices.” (R.
2132) There is nothing in Claim 1 requiring the intermediate
section to be “more resilient” than either the container or any

other stacking device.

AS4

Finally, the contention that the intermediate section is not

“inclined inwardly and upwardly” is without merit. The Foster
Grant cup “chairman” (PX-63A-1) has an intermediate section
“inclined inwardly and upwardly.”

Foster Grant's current commercial cup group (PX-63) in-
fringes Claim 1 of the ’213 patent.

Foster Grant contends that Claims 5, 6, 8 and 9 of the 213
patent are not infringed, because at least one of the shoulder
means is not “ada,ted for camming eagagement” and does not
“enhance axial resiliency to a stack. . . .” Foster Grant con-
tends that none of the Foster Grant current commercial cups
“had the characteristics, in compression, of the various ITW
containers. . . .” This is not the test. On the contrary, the test
eee ee
ment” and “axial resiliency”.

On this point, the evidence maine that the Foster
Grant current commercial cups had camming action, their stacks
compressed in response to axial forces, and were axially re-
silient (R. 2348, 2553-56, 2626-27, 2633). Moreover, in
Foster Grant’s patent (PX-98), it is admitted that when “nested
containers are compressed in an axial direction, an appreciable
amount of ‘give’ or resiliency is present due to the sliding of
adjacent containers” (Col. 4, 1. 39-41). Whether these Foster
Grant cups have more or less camming engagement or more or
less axial resilience than other cups is irrelevant.

In regard to Claims 8 and 9, Foster Grant challenges both
claims, on the ground that the stacking ring in the current
commercial cups cannot be “sinuous” (Claim 8) and its shoulder
be a “straight line” (Claim 9). This misconstrues the language
of Claim 9, since Claim 9 calls for the shoulder presenting a
“substantially straight line’, not e straight line. Both Claims 8
and 9 can be asserted without any incomsistency.

Further, the cross-section of the stacking ring in Foster Grant's
current commercial cups is “sinuous”, as called for by Claim 8,

ASS

70 thag naanaellneretemaleynpite a rmndibeanecss
Foster Grant's current commercial cup group (PX-63) in-
fringes Claims 5, 6, 8 and 9 of the ’213 patent, and there is a
real identity of means, operation, and result between the as-
serted claims of the °213 patent and the PX-63 cup group.

~VUl. Foster Grant Infringes
‘the’ 360 Patent.

ITW charges that all of Foster Grant's cups having interrupted
Z-shaped stacking rings, represented by the PX-74 and PX-75
cup groups, infringe one or more of the asserted Claims 1 and
3 of the °360 patent.

The Wilson-Champion cup is represented by the PX-74 cup
group (no longer in commercial production). This PX-74 cup
group, in turn, is represented by its “chairman”, the Wilson-
Champion 12-ounce cup (PX-74A). This cup “chairman”
(PX-74A, like each member of this PX-74 cup group, has an
interrupted Z-shaped stacking ring located immediately below
the upper margin in the sidewall.

ITW’s claim chart PX-79A (in PX-82) shows how the ele-
ments of Claim 1 of the 360 patent read on the Fig. 1 embodi-
ment in the "360 patent (R. 669-75). ITW further introduced
claim chart PX-80A (in PX-82) which demonstrates how the
elements of Claim 1 of the "360 patent apply to the Wilson-
Champion cup “chairman” (PX-74A) (R. 714-15). This same
clam chart, PX-80A, shows how the stacking ring element of
Claim 1 reads on the stacking ring embodied in the Wilson-
Champion cup “chairman” (PX-74A) (R. 715-16).*

\. ITW’s infringement charge for the °360 patent is as follows:

*360 Claims
WiChamp. 12 oz. = (PX-74-1, TDX-70) 1 and 3
WitChamp. 16 oz. (PX-74B-1, TDX-2) 1 and 3

(Continued on next page)

in SW BE pare BS tate he ain ta dy

AS

I find that each of the asserted claims reads on and is in-
fringed by the Wilson-Champion cup eremnaeedl (PX-74A)
(R. 716-19).

With respect to the Wilson-Champion cup group (PX-74),
there is an identity of means, operation and result between the
asserted claims of the "360 patent and the PX-74 cup group.
This aaseeted’ Galea of tho "700 pees oe Reps by Oe
PX-74 cup group. -

Foster Grant has asserted a Statute of Limitations defense
under 35 U. S. C. 286. ITW contends that this six-year Statute
of Limitations is aot applicabie, since TTW has asserted, by
the filing of its complaint in 1969, that the Wilson-Champion
cups were infringements. Although the complaint at that time
did not charge Foster Grant with infringement of the "360
patent, it did, based on the information known to [TW at that
time, charge Foster Grant with infringement of the ’213 patent.

Rule 15(c) of the Federal Rules of Civil Procsdure states
that an amended pleading “relates back to the date of the
original pleading” “whenever the claim or defense asserted in
the amended pleading arose out of the same conduct, trans-
action, or occurrence set forth or attempted to be set forth in
the original pleading.” This rule does not apply here. An al-
leged infringement of one patent is not the “same conduct,
transaction or occurrence” as the alleged infringement of another
patent. The statute of limitations applies to and bars ITW from
recovering for the infringement of Claims 1 and 3 of the '360
patent resulting from the manufacture and sale of the above-

described Wilson-Champion cups.

(Continued from preceding page)

Wil-Champ. 8 oz. (PX-74C-2, TDX-202) 1 and 3
Wil-Champ. 32 oz. (PX-74D-2, TDX-204) 1 and 3
Fos. Gr. 16 SWV (PX-75A-1, TDX-402) 1 and 3
Fos. Gr. 16 SU (PX-75B-1, TDX-159) 1 and 3
Fos. Gr. 20 PB (PX-75C-1, TDX-296) 1 and 3
Fos. Gr. 24 TB ~~ (PX-75D-1, TDX-161) 1 and 3

AS7

B. Sere Se Vee ae Oe Oe PKI

~ Cup Grou |

Tae: Siphtes Gemteumetionmmintal maptocepamenadig tha
PX-75 cup group. This PX-75 cup group, in turn, is represented
by its “chairman”, the Foster Grant 16SWV cup (PX-75A).
This cup “chairman” (PX-75A), like each member of the PX-
75 cup group, has an interrupted Z-shaped stacking ring lo-
cated immediately below the upper margin in the sidewall.

ITW’s Edwards prepared claim chart PX-81A (in PX-82)
which shows how the elements of Claim 1 of the ’360 patent
read on the Foster Grant current commercial 16SWV cup
“chairman” (PX-75A) (R. 685-86). This claim chart PX-81A
(in PX-82) shows how the stacking ring element applies to the
stacking ring element embodied in the Foster Grant current
commercial cup “chairman” (R. 685-91). Edwards further re-
cited how Claim 1 applies both structurally and functionally to
Foster Grant’s “chaitman” (R. 685-91). In this connection,
Edwards identified the interruptions in the interrupted stacking
ring in this “chairman” (PX-75A-4) (R. 692), and discussed
manometer air communication test he had conducted.”

He confirmed that the interrupted stacking ring in the Foster
Grant current commercial 16 SWV cup “chairman”: (1) per-
formed its intended shock absorbing and jab prevention func-
tion, and (2) provided air communication between adjacent
cups in accordance with the interrupted characteristics of the
"360 patent (PX-105) (R. 692-711). Edwards also testified

how each of the asserted claims reads on and is infringed by

1. Two sets of three current commercial 16 SWV (PX-
75-A) sectioned are identified as PX-77A sat C, photo
graphs respectively identified as PX-77B and D (in pke78).

2. On the 16 SWV cup (PX-75A), the 16 SU (PX-75B),
7 O27 7113" cup (PX-75C), and the 12 S cup (FA-65 ) (PX-105)

2 Saar

——_~ *
em

AS8

Foster Grant’s cup “chairman” (PX-75A-1) (R. 711-14).'
The Court concurs in and adopts these conclusions of Edwards.

The Foster Grant current commercial cup group (PX-75)
infringes claim 1 of the °360 patent. Dependent claim 3 reads on
and is infringed by the current commercial cup group (PX-75).

With respect to the Foster Grant current commercial cup
group (PX-75), there is a real identity of means, operation and
result between the asserted claims of the °360 patent and the
PX-75 cup group. The asserted claims of the "360 patent are
clearly infringed by the PX-75 cup group.

IX. Foster Grant Infringes the ’139 Patent.

ITW charges that all of Foster Grant’s packages (represented
by the Wilson-Dow cup “chairman” and associated lid, the
Wilson-Champion cup “chairman” and associated lid, the Wil-
son-Foster Grant cup “chairman” and associated lid, and the
Foster Grant current commercial cup “chairman” and associated
lids), infringe one or more of the asserted claims 1, 2, 6 and 7
of the °139 patent.’

The Wilson-Dow, Wilson-Champion, and Wilson-Foster
Grant packages are represented by their respective cup “chair-
men” (PX-61A, PX-74A, and PX-62A) and their associated
lids (PX-84 or 85). Because of the unavailability of lids, Ed-

1. Béwands sive recited how each of the ssested dialne sppis
to the Foster Grant current commercial 16 SU NS lage
the 20PB cup ((PX-75C-1), and the 24TB (PX-75D-1), the other
members of this cup group (R. 711-14).

2. The Wilson-Dow package comprises the Wilson-Dow
“chairman” (PX-61A) certo seeraw td lid rey, Boa by Px 84
The Wi pac comprises the
“chairman” (PX-74A), and associated lid id exemple y ried tr PX.8S.
The Wilson-Foster Grant package Wilson-Foster
Grant cup “chairman” (PX-62A) and associated lid exemplified by

PX-85. The Foster Grant current commercial oe
either the Foster Grant 12S cup “chairman” (PX Bh) oe the Rome

Grant 16SWV “chairman” (PX-75A), as used with one or
more of the following lids: L-142 (PX-86A), L-171 (PX-86B),
882-1 (PX-86C), L-131 (PX-86D), and L-161 (PX-86BE).

A59

wards relied upon the lid drawings PX-84 and 85 to make draw
ing of the above packages.

_ Foster Grant points out that there was some confusion as to
the specific lid, including dimensional details, that was used
with the Wilson-Dow, Wilson Champion, and Wilson-Foster
Grant packages.

Nevertheless, Thomas Eyles, Foster Grant’s designer, testified
that lids of the same configuration as that shown in PX-85 were
used in all of the early containers (PX-104B, pp. 110-11). It is
clear that the lids shown in PC-88, PA-SD and PX-50 conform
to that general configuration.

Edwards prepared claim chart PX-94 (in PX-97) which
shows how the elements of Claim 1 of the ’139 patent read on
the Fig. 1 embodiment of the "139 patent and on the Wilson-
Dow package (R. 782-74). Edwards further prepared claim
chart PX-95 (in PX-97) which shows how the elements of
Claim 1 of the "139 patent read on the Wilson-Champion and
Wilson-Foster Grant package (R. 789-91). These claims
charts PX-94 and 95 demonstrate how the sealing means por-
tions and integral combination holding and venting means por-
tion of Claim 1 read on the comparable structure in these
Wilson-Dow, Wilson-Champion, and Wilson-Foster Grant pack-
ages (R. 789-91). The Court adopts these conclusions and
finds that the Wilson-Dow package infringes asserted claims
1, 2, 6 and 7 of the *139 patent and that the Wilson-Champion
and Wilson-Foster Grant packages infringe claims 1, 2, and 6
of the "139 patent (R. 786-89, 792-94).

There is an identity of means, operation and result between
the asserted claims of the ’139 patent and the Wilson-Dow, Wil-
son-Champion and Wilson-Foster Grant package groups. The
asserted claims of the ’139 patent are infringed by the Wilson-
Dow, Wilson-Champion and Wilson-Foster Grant package
groups. }

The Foster Grant current commercial packages are repre-
sented by the Foster Grant current commercial 12S cup “chair-

&
F

oe

DATE a
ote

? Seer aioe oo

ee

A60

man” (PX-63A-1) and its associated lid and the Foster Grant
current commercial 16 SWV cup “chairman” (PX-75A-1),
(except 20 PB and 24TB), and its associated lid. The 12S and
16SWV cup “chairmen” (PX-63A-1 and PX-74A-1) with
their associated lids are deemed to be representative of the vari-
ous cups and associated lids within their respective groups.
Edwards prepared claim chart PX-96A (in PX-97) which
shows how the elements of Claim 1 of the ’139 patent read on
each of the Foster Grant current commercial packages (R. 761-
62). This claim chart PX-96A demonstrates how the sealing
means portions and integral combination holding and venting
means portion of Claim 1 read on the comparable structure in
these Foster Grant current commercial packages (R. 761-62).

Edwards further recited how Claim 1 applies both structurally
and functionally to the Foster Grant current commercial pack-
ages (R. 762-66). In this connection, Edwards testified that
his manometer test (PX-105) established that the accused pack-
ages would “seal, vent, and reseal” (R. 767-78). Edwards ex-
plained that when a lid was placed on the cup “chairman”, the
reading of the manometer increased, thereby indicating that the
package “sealed”. In response to the application of air to pack-
age, the manometer reading gradually increased until it reached
a predetermined level, which indicated “venting”. Thereafter
the manometer reached a final: value, which indicated that it
has “resealed”. (R. 767-78). Edwards also testified how the
asserted claims 1, 2 and 6 are infringed by the Foster Grant
current commercial packages (R. 780-82). The Court con-
curs in and adopts Edwards’ conclusions.

Foster Grant asserts that its package is designed to avoid
trapped air. This contention is not controlling as to whether
the Foster Grant package infringes the °139 claims.

The sole inquiry is whether the Foster Grant package em-
bodies the Edwards invention (e.g., sealing, venting, and re-
sealing). The fact that the accused structure performs functions

AGI

in addition to that performed by the patented structure will not
avoid infringement.

The Foster Grant package has the Edwards capability of
sealing, venting and resealing (R. 2561-62). Furthermore, in
Foster Grant’s patent (PX-98), it is admitted that the ribs 34
provide “for venting of the container during application of a
closure and for allowing gases to escape, if any are generated
by the contents during storage (Col. 4, Il. 19-22). Foster Grant
cannot now contend that only the first purpose (i.e., avoiding
trapped air) is achieved.

Foster Grant asserts that it does not infringe the asserted
claims because it neither makes, uses, nor sells “packages”. The
Court disagrees. Foster Grant is selling both cups and lids (both
imprinted with its customer’s name and cottage cheese designa-
tion) to its customers who, with the blessing of Foster Grant,
form the “packages” in the United States. Foster Grant manu-
factures its cups and lids for the specific purpose of selling them
to its customers. Foster Grant has no internal organization for
packing cottage cheese in its cups and lids, and thus manufac-
tures them “to order” for its customers (R. 2560-61). In addi-
tion, it provides the required customer setvice to ensure proper
use of the Foster Grant cups and lids for the packing of cottage
cheese (R. 1968, 2561). In every pertinent sense, Foster Grant
has contemplated the use of its products as a package and has
aided in the assembly.

Foster Grant’s accused packages in their intended environ-
ment of use, namely, for packaging cottage cheese, embody the
structure defined by the asserted claims and, thus, are infringing
devices. That Foster Grant’s accused packages were designed
for use with, and actually have been used for, packaging cottage
cheese and similar dairy products has been fully established in
the record (PX-98, Col 1, lines 26-28, R. 2561).

A further Foster Grant non-infringement position is that its
current commercial package does not have both “a portion offset
cadially outwardly . . .” (i.e., a groove) and “an integral combi-

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nation holding and venting means portion adapted to be asso-
ciated with said radially offset portion. . . .” Foster Grant admits
that its package has a “portion . . . offset radially outwardly . . .”
(i.e., a groove), but denies that it has the integral combination
holding and venting means portion that cooperates with “the
radially offset portion”.

This conclusion depends upon reading the “integral combina-
tion holding and venting means portion” solely on “a slot or
hole”. I conclude that the integral combination holding and
venting means portion directly reads on both “slot or hole” and
the inwardly extending portion (i.c., the barb) (R. 761-62).
The slots in the cup coact with, cooperate with, and are “asso-
ciated with” the groove in the cup.

Foster Grant concludes its non-infringement argument by
relying on alleged “new evidence”, and then seeks to avoid
infringement by again emphasizing that its packages are de-
signed to prevent air entrapment. The “new evidence” is not
persuasive. In any event, Foster Grant’s contention that its
packages “are designed to prevent air entrapment”, is not con-
trolling.

The Edwards invention was designed to prevent popping lids
by relieving internal pressure buildup. The defendant has es-
tablished reason to doubt that such pressure is caused by gasses
emanating from cottage cheese, as Edwards believed. The as-
serted claims do not require that the pressure buildup be due
to gas generation. The pressure relieving means is the invention
and the source of the pressure is not crucial to patent validity.
The important fact is that the packages do vent in the manner
specified by the °139 patent (R. 2561-62).

The Foster Grant current commercial packages infringe as-
serted claims 1, 2, and 6 of the °139 patent.

There is an identity of means, operation and result between
the asserted claims of the °139 patent and the Foster Grant
current commercial packages. The asserted claims of the "139

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_ patent are infringed by the Foster Grant current commercial

packages.

Foster Grant denies that the issues of infringement under 35
U. S. C. 271(b) and (c) are present in this case. The complaint
in this case alleges that Foster Grant “infringes” certain claims
of the "139 patent. This case is not limited to infringement
under 35 U. S. C. 271(a). Section 271 is entitled “Infringement
of patent” and includes four subsections. Consequently, ITW’s
charge of infringement is not limited to any particular subsec-
tion and subsections (a)-(d) have been adequately pleaded.

As has been discussed above, Foster Grant directly infringes
the ’139 patent under 35 U. S. C. 271(a). In addition, ITW
contends that Foster Grant is liable under 35 U. S. C. 271(b)
and (c). Foster Grant, in effect, denies that it sells packages
in the United States and relies on the doctrine set forth in Deep-
south Packaging Co. v. Litram Corp., 406 U. S. 518 (1972)
which establishes that there must be infringement in the United
States in order to find liability as a contributory infringer.

The Court finds from the evidence that Foster Grant does
sell its current commercial packages in the United States. No
evidence was presented to show that any sales, much less all
sales, were in foreign countries and Foster Grant has failed to
establish those facts that would bring this case within the scope
of the Deepsouth case, supra. At trial, it was implicit in all of
the testimony that the events testified to occurred in the United
States.

The evidence at trial established Foster Grant’s knowledge of
the "139 patent (PX-104B, pp. 2-23, 2-24, 2-47, R. 2964)
shortly after its issuance, and that Foster Grant’s current com-
mercial lids and containers are routinely purchased together by
the customer (R. 2560), and are imprinted with customer and
product identification (R. 2560). It was further established
that these lids and containers are assembled into packages con-
taining cottage cheese by Foster Grant’s customers, and Foster
Grant knew of these activities (R. 2561). Furthermore, it is

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clear that these packages vent after capping in the manner of
the °139 patent (R. 2561-62). It was also demonstrated that
the early forms of Foster Grant packages, Wilson-Dow, Wilson-
Champion packages, and Wilson-Foster Grant packages, sealed,
vented, and resealed as called for by the 139 patent (PX-104B,
pp. 76, 116, 2-27, rah

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385004_1236%3A2. Public record. Not legal advice.