REYNOLDS METALS CO. v. CONTINENTAL GROUP, INC.
525 F.Supp. 950 (1981)
REYNOLDS METALS COMPANY, Plaintiff,
v.
The CONTINENTAL GROUP, INC., Defendant.
No. 76 C 4198.
United States District Court, N. D. Illinois, E. D.
July 6, 1981.
George M. Sirilla, John W. Malley, Allen Kirkpatrick, W. Warren Taltavull, Peter W. Malley, and Cushman, Darby & Cushman, Washington, D. C., John F. C. Glenn and Robert C. Lyne, Jr., Richmond, Va., Holland C. Capper, Chicago, Ill., for plaintiff.
James R. Sweeney, Ronald B. Coolley, Mason, Kolehmainen, Rathburn & Wyss, Chicago, Ill., John J. Kowalik, Glenview, Ill., for defendant.
FINDINGS OF FACT AND CONCLUSIONS OF LAWMEMORANDUM OPINIONROSZKOWSKI, District Judge.
This action was commenced in November, 1976 by Reynolds Metals Company charging The Continental Group with infringement of two U. S. Patents owned by Reynolds. The Continental Group filed a counterclaim alleging that both of Reynolds' patents are invalid because of an alleged prior patent owned by Continental and charging Reynolds with infringement of its patent. Reynolds, in turn, filed two counterclaims contending that Continental's patent is invalid and unenforceable and has not been infringed. Before the court is a ruling on the bench trial held in this case on April 21-25, 28-30, and May 5-6, 1980. For the reasons herein stated, this court finds in favor of plaintiff Reynolds.
THE PARTIES AND THEIR CONTENTIONSReynolds Metals Company, ("Reynolds"), plaintiff and counter-defendant, is a Delaware corporation with its principal place of business in Richmond, Virginia.
1. Any finding of fact which may be more properly termed a conclusion of law shall be deemed a conclusion of law.
2. Cudzik patent '752 was filed on November 24, 1975; Cudzik patent '753 was filed on July 26, 1974.
The claims of the Cudzik '752 patent asserted by Reynolds to be infringed by Continental's manufacture and sale of the Pontiac end are claims 1-3, 5-6, 8-13, 16-21, 24, 29 and 31. Of these claims, claims 1 and 18 are independent claims and the rest of the claims depend from one or the other of those two claims.
The claims of the Cudzik '753 patent asserted by Reynolds to be infringed by Continental's manufacture and sale of the Pontiac ends are claims 1-4, 7-8, 10-12 and 14-15. Of these claims, claims 1 and 10 are independent claims and the rest of the claims depend from one or the other of those two claims.
The first patent application filed by Reynolds relates to the Cudzik '753 patent and was filed September 28, 1972. It issued on September 14, 1974 as the '038 patent. A reissue application of the '038 patent was later filed under the provisions of 35 U.S.C. § 251 but was abandoned in favor of an application that was a continuation-in-part of the September 28, 1972 application. Seven additional applications, making a total of ten applications containing over two hundred claims, were filed eventually resulting in the '752 and '753 patents which issued on July 6, 1976.
The first end developed by Reynolds, the Montana end, is disclosed in the '038 and '753 patents. A Montana end, as disclosed in the Cudzik '753 and '038 patents, was manufactured by Reynolds and, although operative, was a commercial failure. As a result of the lack of commercial acceptance, production of the Montana end was halted.
The Montana end is disclosed and claimed in both the '753 patent and the earlier issued '038 patent. Figures 1-13 of the '753 patent are identical to Figures 1-13 of the '038 patent. Moreover, the written description up to column 8, line 58 of the '753 patent is identical to the disclosure of the '038 patent. The '753 patent issued on application Serial No. 492,033 which was related to the application for the '038 patent through a continuation-in-part application.
The second end developed by Reynolds in 1974 is disclosed in the Cudzik '752 patent and was named the Stay-On-Tab or SOT end. The SOT end also comprises only two elements, a tab and a panel defined by a score. These two elements are substantially identical to the elements of the Cudzik '038 and '753 patents. In addition, however, all the tabs of the SOT ends include a second piece of metal to meet Reynolds' interpretation of the non-detach legislation. This second piece of material is softer and more ductile than the material of the body of the tab and serves to hold the tab to the end if the tab body breaks.
The '752 and '753 patents each include claims, specifically claims 7 and 25-27 of the '752 patent and claims 9 and 16 of the '753 patent, setting forth this second piece of material, but, since the ends manufactured by Continental do not include a second piece of material, these claims are not alleged by Reynolds to be infringed.
The claims of the '752 patent are similar to those of the '753 patent. The claims set forth an easy opening end wall, including a rupturable score, defining most of the periphery of a tear panel, and a non-detachable tab with additional language generally defining the score configuration and the manner in which the tear panel opens.
3. Perry patent '976 was filed on August 9, 1976.
4.
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5. The words "end" or "end wall" are used in the industry to refer to the top end wall of the beverage can. The rest of the can is called the "can body." In the present case, the patented structure is the end of the can with the non-detachable opening device.
6. This device is commonly referred to as the ring pull tab which is shown in footnote 4, page 954 of this opinion.
7. Perry's application for his '976 patent was filed on August 9, 1976.
8. During the deposition of Fraze, it was stipulated by the attorney for Fraze and Dayton Reliable, and agreed to by Fraze, that the December 4, 1974 filing date for the Cudzik '752 (Stay-On-Tab) patent in suit preceded the earliest possible date (December 20-21, 1974) of any conception of Dayton Reliable's ECO end.
9. According to Continental, its decision to use the ECO end was made 1) because Dayton was an established supplier and had produced most of the tooling then being used by Continental; 2) because the ECO end could be made for commercial sale sooner; and 3) because Continental did not believe that it could make the two piece tab of the Reynolds' SOT end on the Continental tooling without substantial difficulty and delay.
10. The term "benchmark" as applicable in this context has been defined as "something that serves as a standard by which others may be measured." (Webster's New Collegiate Dictionary, 1979).
11. National Can Corporation, one of the major beverage can and end producers in this country, is paying royalties to Reynolds pursuant to a license under the Cudzik patents in suit for production of the Dayton Reliable/Fraze ECO end on Dayton Reliable tooling.
12. Reynolds offered Continental a license but Continental has refused to take one which ultimately led to this lawsuit.
13. Dayton Reliable's first customer for that tooling was Continental and it was used by Continental to produce the Pontiac ends accused herein. National Can Corporation, another customer of Dayton Reliable for similar tooling, took a license from Reynolds under the Cudzik patents in suit and has paid substantial royalties to Reynolds for its production of nondetachable easy-opening devices using such Dayton Reliable tooling.
14. Any conclusion of law which may be more properly termed a finding of fact shall be deemed a finding of fact.