Appeal from the District Court of the United States for the Northern District of Illinois, Eastern Division; John P. Barnes, Judge.
Before MAJOR, KERNER, and MINTON, Circuit Judges.
This is an appeal from a judgment, entered March 14, 1942, in a suit for patent infringement. At one time or another, 14 patents were involved, 10 of which were withdrawn by the plaintiff prior to trial. The following patents and claims remained in issue and were adjudicated:
Barbieri No. 1,610,192 applied for February 28, 1923, issued December 7, 1926, Conical Paper Cup and Process for Making the Same, claims 1, 2, 3, 4 and 5;
Holman No. 1,594,617 applied for September 15, 1924, issued August 3, 1926, Cup Formign Machine with Stacking Attachment, claims 1 and 2;
Smith & Bild No. 2,203,510, applied for December 13, 1934, issued June 4, 1940, Method and Machine for Making Paper Cups, claims 5, 6, 7, 9, 10, 11, 20, 23 and 24;
Amberg No. 2,203,513 applied for January 15, 1936, issued June 4, 1940, Apparatus for and Method of Making Containers, claims 4, 5, 8, 9, 10, 11, 13, 20, 40 and 41.
The lower court found all claims valid and infringed except Claim 1 of the Barbieri patent, which was held invalid, and Claims 5 and 7 of the Smith & Bild patent, which were held not to be infringed. The court also held that defendant was estopped to contest the validity of the Smith & Bild and Amberg patents. In the court below, as here, defendant relies upon invalidity and noninfringement.
Barbierei Patent No. 1,610,192.
This patent relates to the process of making conical paper cups. At the time of the claimed nvention, and long prior thereto, cups of the same general type had been utilized as drinking cups, dispensers for ice cream sodas and other purposes. Generally, such cups were made from paper coated on one side with paraffin. During the manufacturing process, the paraffin was softened by the use of heat, and upon cooling, served to hold the cups together wherever overlapping occurred, as at the seams.
In packing and shipping, paper cups were nested, one within the other. This is advantageous as it conserves packing and shipping space. It was found, however, that this desirable method of packing was impractical for the reason that the paraffin caused the nested cups to adhere one to the other. This caused inconvenience to the user and also a waste of cups. As a result, plaintiff, so it is contended, was unable to successfully compete with flat bottomed cups which were manufactured and sold by competitors. Thus, plaintiff's handicap was its inability to properly separate and dispense its conical paper cups. The problem was to find a means by which the cups would be separated when in nested position. Barbieri found, according to plaintiff's brief, that he could not engage in successful competition if he continued the use of paraffin coated paper; continued to use the same shape of blanks theretofore in use by Vortex and shown in the earlier Barbieri, Potts and Curtin patents, all of which were owned by Vortex, or without adopting better means than was theretofore in use by Vortex for assuring separation of nested cups.
It is now contended that Barbieri, by the disclosure of the patent in suit, solved the problem by providing a method whereby conical cups could be nested for use and shipment so that they would not adhere to each other and would, therefore, be readily dispensable.
Claims in suit 2, 3, 4 and 5 are set forth in a footnote.*fn1 On the question of validity, defendant cites Provandie Patent No. 1,125,171, Curtin Reissue Patent No. 15,381 and Carle Patent No. 1,598,710. The lower court distinguished such prior art patents thus: " * * * Each one of these claims calls for an element substantially as follows, - 'The outer convolution having near the point of the cone a margin free from cementitious material whereby said margin is free to spring outward from the cup.' This idea is not embodied in the cups of the prior art. * * * " Thus, it appears that the court relied upon the element providing for a projection at the tip of the cup. This seems to follow from the fact that Claim 1, which makes no mention of such projection, was held invalid.
It is pertinent to observe at this point that the District Court for the Eastern District of New York concluded the claims now in issue were invalid in view of the prior art. Dixie-Vortex Co. v. Imperial Paper Box Corp. et al., 22 F.Supp. 209. This judgment was affirmed by the Circuit Court of Appeals, Second Circuit, in a Per Curiam opinion.100 F.2d 1013. Thus, we are confronted with a situation wherein the usual presumption of validity which follows their allowance by the Patent Office, is reinforced by the judgment of the lower court. On the other hand, another District Court has held the claims invalid, which holding has been affirmed by a Court of Appeals.
While the court below, as stated, appears to have relied upon the projecting flap at or near the point of the cup to distinguish the claims in suit from the prior art, we are not certain, from plaintiff's argument, that it relies upon this narrow distinction. Plaintiff stresses the fact that its blank is made of paper which is water-proofed by being impregnated with a wax paraffin solution or some other water proofing agent, in contrast with the paraffin-coated paper of the prior art. This argument, however, carries little, if any, weight insofar as Claims 2, 3 and 4 are concerned because no mention is made in these claims of this now alleged essential element. Only Claim 5 refers to a "non-coated water proof paper." Carle discloses a cup made of plain paper which was neither coated nor impregnated. Plaintiff states in its brief: "In order to avoid the disadvantages of the Carle cups as well as the disadvantages of the paraffin coated Vortex cups, Mr. Barbieri selected a paper which was neither plain nor coated, - it was impregnated with wax. This impregnation provided a smooth surface which would not cause nested cups to stick together like Carle.* * * "
So the first step in the solution of the problem was the selection of impregnated paper, although, as stated, it is mentioned only in Claim 5. It is argued that after the selection of the impregnated paper, Barbieri "was faced with the problem of extruding glue, which would glue the nested cups together." In other words, the glue was bing placed so that when the blank was pressed into cup form, it would extend beyond the margin where it would be exposed and therefore cause the cups to stick together when nested. Barbieri, so it is claimed, remedied this defect by placing the glue so that it would not extend to the margin when the blank was pressed into cup form. Thus, the glue not extending entirely to the margin produced two effects - (1) there was no exposed glue, and (2) the edge of the margin was not entirely sealed, thereby attaining a separating value. The climax of this inventive process was reached when it was discovered that an unglued tab near the point of the cup had a tendency to spring outwardly from the body of the cup, thereby giving a separating effect to the nested cups. It may be that the size and form of this tab disclosed by Barbieri was an element in the improvement over Carle. It is our judgment, however, that such improvement was due more to a proper placing of the glue than to the form of the tab. It is apparent, so we think, that Carle and others of the prior art would have had an outward springing edge by applying the glue so that it would not extend to the margin of the form.We are unable to believe that Barbieri's positioning of the glue amounts to invention. It may be, as claimed, that the location of this outward springing margin at the tip of the cone was also an advantage. Again, however, this is dependent largely upon the positioning of the glue which, we think, should be discernible to one skilled in the art.
Provandie shows a cone-shaped cup having a free flexible tab that serves as a handle when the cup is filled, and h also suggests that it is "adapted to be laid against the side of the cup os that a plurality of cups may be nested." Obviously, the tab thus disclosed acts as a separating means when the cups are in nested form. It was largely upon this disclosure that Claims 2, 3 and 4 were held invalid in Dixie-Vortex Company v. Imperial Paper Box Company, supra. Referring to the tab which Provandie shows, the court, on page 211 of 22 F. Supp., said:
"From this it is apparent that the series of cups where intended to be nested, with the tab flat against the side of the cup, and the tab being of flexible, yet stiff paper, it would have a springiness and thus perform the alleged new function of the Barbieri patent; that is, of preventing the cups from sticking to each other.
"It is true that the tab or extension of Provandie is not at the tip of the cone, but is at some distance therefrom, approximately in the center of the cup. However, the result obtained would be the same as either position is alternative. * * * "
Curtin Reissue Patent, owned by the plaintiff, also is difficult to distinguish from the Barbieri patent in suit. In fact, Barbieri states: "This invention is for an improvement in cups of the type shown in the reissued Patent No. 15,381, granted June 22, 1922, to David F. Curtin. Cups of this type have hitherto been made of paper which is rendered waterproof by being coated with paraffin, wax or other suitable material. One objection to cups so made is that when packed in nested form the paraffin is apt to soften under the action of a warm climate and cause the cups to adhere so that the nest becomes a united mass. * * * " Thus, the most that Barbieri contended was that he had made an improvement over Curtin. It is also noticeable that the single objection made to the Curtin cup was its propensity to adhere, which was caused by the paraffin coating. We have pointed out heretofore the importance which Barbieri attached to the impregnated paper which he suggested, so as to obviate the paraffin coating.This is the predominant note running through his specifications, but, as stated, he made no mention of it in any of the claims in suit except Claim 5. Curtin shows a conical cup formed from a single piece of paper, including an extension which is described as lapping around the apex of the cup, the free end of which may be provided with an adhesive, if desired, to cause the said free end to adhere to the outer surface of the blank to hold the cup in formed position. In Imperial Paper Box Company case, supra, the court, in discussing Claim 5, on page 211 of 22 F. Supp., said: "Curtin reissue patent, No. 15381, shows every feature of this claim. * * * " We think this statement is substantially correct, except that Claim 5 provides for "non-coated water-proof paper," while Curtin does not. Curtin discloses the ...