Before Mayer, Chief Judge, Michel, and Rader, Circuit Judges.
The opinion of the court was delivered by: Rader, Circuit Judge.
Appealed from: U.S. District Court for the Northern District of Ohio Judge Kathleen M. O'Malley United States Court of Appeals for the Federal Circuit
In this patent infringement action, Weatherchem Corporation (Weatherchem) asserted that J.L. Clark, Inc. (Clark) infringed U.S. Patent Nos. 4,693,399 (the '399 patent) and 4,936,494 (the '494 patent). Clark counterclaimed for a declaratory judgment of invalidity, unenforceability, and noninfringement. After a bench trial, the district court entered judgment declaring both patents invalid, holding the '494 patent not infringed, and dismissing Weatherchem's claims for infringement. See 937 F. Supp. 1262, 1290 (N.D. Ohio 1996). The district court's opinion also implicitly denied Clark's counterclaims for a declaration of unenforceability for both patents, see id. at 1262, 1293-94, 1296, and for a declaration of noninfringement of the '399 patent, see id. at 1290-92. For the reasons set forth below, this court affirms-in-part, modifies-in-part, and vacates-in-part.
Weatherchem is the assignee of the '399 and '494 patents. Both patents claim inventions on two-flap, shake-and-spoon plastic caps. These plastic caps usually fit on containers for spices and other condiments. One flap covers a plurality of small holes for shaking the spice or other product from the container. The other flap covers a relatively large opening which allows a spoon to enter and remove product from the container. The `399 patent explains that prior-art cap designs had a spoon opening that covered less than half the mouth opening of the container, making it difficult to extract product with a normal-sized spoon. Thus, cap designs strive to achieve a wider spoon opening. Larger spoon openings in prior art designs, though, caused problems. In particular, a cap with a large spoon opening tends to take an oval shape when released from the mold. As the cap cools upon release from the mold, the substantial amount of plastic on the shake side shrinks at a different rate from the open spoon side. The result is some disfiguring. After disfiguring, these caps rarely achieve a good seal with the mouth of the container. Moreover, these disfigured oval flaps often pop open when the cap is screwed onto the container during manufacture.
The `399 patent includes several design enhancements to address these problems. For instance, the cap disclosed in the `399 patent includes a "wide internal sealing ledge which ensures that the closure will positively seal the mouth of a container, regardless of any expected degree of ovality." Col. 2, ll. 3-6. The cap further includes a "land area between the spoon and shake apertures [having] the same elevation as the sealing ledge." `399 patent, col. 2, ll. 6-7. This land area provides intermediate support for a safety-seal liner used in conjunction with the cap.
Claim 12 of the '399 patent reads:
"A two-mode dispensing cap for a container comprising an injection-molded thermoplastic one-piece body, the body having a generally circular end wall, the end wall having a spoon dispensing side and a shake dispensing side . . . a chordal land area between the spoon and shake sides, each of said sides having an associated flap hinged on said land . . . an internally threaded skirt depending from the perimeter of said end wall, an annular sealing ledge on the lower side of the end wall interior of said skirt, the land area having a lower surface generally coplanar with said sealing ledge and adapted to cooperate with said sealing ledge to support a sealing sheet received in said cap." (emphasis added).
For purposes of this opinion, claim 13 is substantially similar to claim 12, except that it replaces the portion emphasized in claim 12 above with the following: the sealing ledge having a flat surface extending radially a distance substantially equal to at least twice the nominal wall thickness of the cap.
Figures 1 and 2 of the '399 patent illustrate an embodiment of the claimed invention:
The '399 specification identifies feature 51 as an "annular sealing ledge" and contains the following description:
"As shown in FIG. 2, the lower or inside face of the end wall 13 includes an annular sealing ledge 51. The ledge 51 is generally planar and is relatively wide in the radial direction, preferably having a radial dimension generally equal to twice the nominal wall thickness of the cap 10. The relatively wide extent of the ledge 51 ensures that the cap 10 will produce a reliable seal on the mouth of a container on which it is assembled, despite any expected degree of ovality. A lower face 52 of the land area 16 includes a pair of ribs 53 parallel to the hinges 23, 36. Lower surfaces 54 of the ribs 53 are coplanar with the sealing ledge 51 and help support any paper, foil, or like sealing film stamped or otherwise set into the cap 10 prior to assembly with its container." Col. 6, ll. 9-23.
According to the district court, whereas prior art caps required extra steps to provide containers with safety-seal liners, the claimed invention, with its annular sealing ledge, allowed manufacturers to "simply insert a safety-seal liner into the cap, and screw the cap onto the container." 937 F. Supp. at 1271.
The `494 patent, filed more than ten months after the `399 patent issued, also discloses a two-flap, shake-and-spoon cap for condiment containers. The `494 cap differs from the `399 cap primarily in the way the cap forms a seal with the container. Figures 2 and 5 of the `494 patent show a cap with an annular sealing surface (36) inside the cap's skirt (11). This sealing surface engages and seals with the container's circular wall. Because the portion of the container's end wall (12) between the sealing surface (36) and the skirt (11) may deflect slightly when the cap is threaded tightly onto the container, the cap also includes a plurality of peripherally spaced, radially extending ribs (71). These ribs extend between the sealing surface and the skirt to resist deflection and prevent malfunction of the cap.
Claim 13 represents well the claims at issue:
"In combination, a container adapted to be filled with granular material and having a mouth with threads extending around said mouth substantially adjacent thereto, a dispensing cap for said container consisting of an injection-molded plastic one-piece body providing a circular end wall and a cylindrical skirt having thread means engaging the threads of said container, said end wall providing at least one opening therein through which contents of said container can be removed without removing said cap from said container, said body providing a hinged flap operable to close said opening, said end wall and flap providing latch means for holding said flap closed, said cap providing a sealing surface inwardly spaced from said cylindrical skirt engaging said mouth of said container and forming a seal therewith, the periphery of said end wall being subjected to a force substantially normal to said end wall when said cap is tightened onto said container tending to cause deflection of said end wall and tending to cause said latch means to malfunction, and a plurality of reinforcing ribs extending below said end wall radially between said sealing surface and said skirt, said reinforcing ribs being disposed on the inner periphery of the skirt at a multitude of relatively closely spaced locations, said sealing surface being a circumferentially continuous annulus spaced radially inward of the ribs and lying in a flat plane whereby said reinforcing ribs provide an anchoring action for said end wall and sealing surface by imparting the inherent stiffness of the cylindrical skirt, and indirectly the container mouth portion threaded onto it, to the end wall and sealing surface to resist deflection of said periphery of said end wall to prevent malfunction of said latch means."
The `399 patent is the result of a cap design project Weatherchem began in late 1984 for a company known as Durkee Foods. 937 F. Supp. at 1271. According to the district court, Weatherchem and Durkee exchanged designs on possible cap configurations for several weeks into early 1985. By February 8, 1985, Weatherchem had produced a drawing of a cap design entitled "Durkee Concept T2 Cap, Revision B." At trial, Mr. Hickman, a Weatherchem employee and co-inventor of the '399 patent, admitted that "the features of the patent claims can all be found in [the 2-8-85 drawing]."
The record shows that on February 19, Durkee issued a purchase order to Weatherchem for 500 caps "per your drawing Durkee #T-2 cap, Revision B dated 2-8-85." In response, Weatherchem issued an "Acceptance of Order" on May 13, 1985, noting it would charge Durkee $300 for the samples. The record also shows that on July 17, 1985, Durkee ordered 990 more "sample caps." Durkee evaluated these caps and notified Weatherchem on August 15, 1985 that "ovality of the bottom edge of the cap skirt is unacceptable." The next day, Weatherchem quoted to Durkee a firm price on a quantity of 500,000 caps. In a letter to Durkee dated August 23, 1985, Weatherchem outlined its plans to modify its mold to address the "ovality" problem and stated that it "expect[ed] to have all refinement work completed . . . by the week of September 16." On September 3, 1985, Durkee issued a purchase order for 275,000 caps at the quoted price "as per mold revised in accordance with our . . . letter of 8/15/85." The record shows that full production is about 440,000 caps per week.
Durkee wrote Weatherchem on October 11 to confirm further specific changes in the mold design. A few days later, Weatherchem sent Durkee an invoice for additional tool work on the mold. On October 16, Durkee responded, asserting that Weatherchem should bear the cost of the additional tool work because these modifications to the mold constitute "fine tuning" for "expected acceptable cap performance."
Thereafter, according to the district court findings, Weatherchem "continued to work out some `kinks' in the cap mold." See 937 F. Supp. at 1272. Only on January 3, 1986 did Weatherchem begin regular mass production of caps for Durkee. See id. Approximately ten documents in the record detail the final two-and-a-half months of adjustments to the design before Weatherchem began full production. According to the district court, these documents show "that none of the changes to the cap mold made after September 19, 1985 (at the latest) were directed to the problem of ovality. None of the changes were ever addressed specifically to the chordal land area or the annular sealing ledge portions of the cap." See id. at 1276.
Weatherchem filed a patent infringement action against Clark in the United States District Court for the Northern District of Ohio asserting infringement of claims 12 and 13 of the '399 patent, and claims 9, 13, and 14 of the '494 patent. In a counterclaim, Clark sought to show that the patents are ...