SWYGERT, Chief Judge.
This is a patent infringement action against Maryland Cup Corporation and its subsidiaries, Sweetheart Cup Corporation and Sweetheart Plastics, Inc., brought by Illinois Tool Works, Inc., the assignee of United States Patents Nos. 3,139,213 and 3,091,360. It has been consolidated with the defendants' declaratory judgment action filed prior to the commencement of the infringement action by plaintiff. The district court found the patents valid and infringed by certain of defendants' accused containers and entered its final judgment permanently enjoining further infringement and ordering an accounting as to past infringement.
Both patents at issue relate to the design and manufacture of nestable, expendable, thinwall plastic containers of unitary construction whose principal use is in applications which require dependable automatic dispensing of such containers, singly and in an upright position, so as to be ready to receive their contents with a minimum of human and mechanical effort. The principal demand for such containers has been in the automatic beverage vending and dairy industries for use as drinking cups and cottage cheese tubs, although the containers have also found useful application in restaurants and luncheonettes. The qualitative demands and conditions of use in automatic machines dispensing hot beverages are difficult to meet, and both patents relate to attempts to produce a container which would prove satisfactory and economical in such applications. Briefly, the problems of this endeavor included the necessity for virtually failure-proof separation of the bottom cup from a nested stack of identical cups (because such machines are unattended), an extremely adverse environment characterized by considerable heat and humidity, and the danger of damage to or jamming of such cups when shipped in a nested stack as is necessary to render them both economical to distribute and ready for their intended use. Because the demands of such applications are great, a container which was successful for automatic hot beverage dispensing would be attractive for other, less demanding uses.
The greatest similarity disclosed by a comparison of the two patents is the analytical approach disclosed by their language. Basically, Bryant Edwards, who was the inventor and assignor of both patents, focused in both instances on the use of resilient, thinwall plastic construction and on the use of Z-shaped, undercut (or reverse tapered), circumferential deformations of the cup wall below the upper rim so as to provide a resiliently yieldable "stacking ring" to separate nested cups slightly and minimize contact between them to achieve easy separation
I. Validity of the '213 Patent.
The '213 patent which defendants challenge as invalid issued on June 30, 1964 with eleven claims. It has been challenged previously in another infringement action in which, after full consideration of both anticipation and obviousness defenses raised therein, the district court held the patent valid and we affirmed.
We note that the only new evidence now cited by defendants as supporting their assertion of the invalidity of the '213 patent is United States Patent No. 1,766,226 issued June 24, 1930 to H. Nias and W. Poster. The Nias patent relates to a pleated paper cup, the principal purpose of the design of which appears to have been an improvement in the effectiveness of the seal obtained when a discshaped cover was snapped down inside the container. The obvious effect of the insertion of the cover in such a container is substantially to distend and deform the container outwardly so as to grip the cover more positively than in the prior art. While Nias claimed that a part of his invention included the ability of the lid-restraining, circumferentially continuous ring located at the rim of the container to serve also as a stacking device to facilitate nested stacking, the nature of the design itself would render successful nesting and shipment logically impossible. As the district court said:
We concur in the district court's analysis and its determination that the defendants did not sustain their burden of presenting "persuasive new evidence"
II. Validity of the '360 Patent.
Edwards' '360 patent issued on May 28, 1963 with ten claims. The application from which the patent derived was filed October 29, 1958. Defendants challenge the validity of this patent on the grounds of anticipation and obviousness. Although the parties herein have treated the two defenses as if they represented opposite sides of the same coin, we shall separate them in recognition of their differences and in order to strive for greater clarity.
The defense of anticipation derives principally from 35 U.S.C. § 102(a) which provides:
It has been held repeatedly that the defense of anticipation "is strictly a technical defense and unless all of the same elements are found in exactly the same situation and united in the same way to
Conversely, the defense of obviousness raises the question of inventiveness and derives from 35 U.S.C. § 103. The obviousness test is somewhat broader in its restrictions on the issuance of valid patents, and prior art which does not render an invention anticipated may nonetheless make it obvious.
The Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), explained the analytical method to be utilized by courts confronted with the question of obviousness:
Application of the foregoing method convinces us that the '360 patent is valid and nonobvious from the state of the prior art.
A. The Prior Art.
Defendants cite three items, not of record reference in the '360 patent file, as constituting prior art which they contend establishes both that '360 was anticipated and obvious. As is apparent from the descriptions of the asserted prior art which follow, none of these items sufficiently approximates the '360 invention to satisfy the narrow anticipation defense. Moreover, none of them, independently or in combination, renders the invention obvious.
On this appeal defendants urge that the Caine cup, which antedated Edwards' '360 invention, renders '360 invalid. No patent for the Caine cup is of record in this proceeding, but examination of the specimen of Caine's container admitted as an exhibit in the district court reveals that it was a resilient thinwall plastic container of unitary construction displaying a flared rim, a recessed bottom and a circumferentially discontinuous, vertically walled stacking ring located below its rim. The stacking ring configuration of the Caine cup was not Zshaped,
Defendants also assert that United States Patent No. 3,083,888, which issued on April 2, 1963 to W. L. Miller renders the '360 patent invalid. It is undisputed that the Miller patent constitutes prior art as against the '360 patent. The Miller patent discloses a two-piece composite cup largely composed of paper with a separate plastic bottom which is united with the paper barrel (or sidewall) by some adhesive process. The plastic cup bottom disclosed by Miller included a circumferentially discontinuous stacking ring characterized by reverse tapered deformations of the partial sidewall of the plastic bottom in a Z-shaped configuration. We note that, while the introductory specifications of the Miller patent refer to the object of wedge-free nesting and state that the plastic cup bottom should be "preferably resiliently yieldable," the cup is so constructed that, at the point of joinder of the plastic bottom with the paper sidewall immediately adjacent the stacking ring, there must be one layer each of paper cup material, plastic and adhesive around the entire periphery of the container. It is also apparent that the design would necessitate a roughly vertical seam where the paper cup material is joined together so as to form the tapered sidewall from a flat sheet, thereby necessitating the presence of a five-layered seam at one point of the juncture of the bottom and the sidewall, the seam consisting of two layers of paper, two layers of adhesive, and one layer of plastic. Such a seam would necessarily impart increased rigidity to the entire cup, especially at the area immediately adjacent the stacking ring.
Finally, defendants assert that the so-called "Plaxall base" constitutes prior art as against the '360 invention. The Plaxall base was a thermoformed plastic base for an advertising display which was roughly pie-shaped with a Z-shaped, reverse tapered, circumferentially discontinuous ring located in its sidewall beneath the top, which was designed for the purpose of providing a snap-on connection with another part of the total display. It is apparent from the appearance, use, and construction of this base that it is not a cup and that it was not intended to stack in a compact, vertically nested configuration, nor did it do so. As the district court noted upon examination of a stack of such bases, "Rather than forming a compact, well spaced stack, a vertical aggregation of stands resembled a loose pile and could be easily jarred."
B. The Claims of the '360 Patent.
Of the ten allowed claims of the '360 patent, Claim 1 is the generic claim which sets out with greatest generality the distinguishing elements of Edwards' invention. The claim is set out in the margin.
C. Difference Between Prior Art and the Claims at Issue.
The Caine cup differs from the '360 invention essentially in that its stacking ring is not reverse tapered or undercut so as to give the stacking ring a Z-shaped configuration. This feature of '360 imparted additional resiliency to the cup unit as a whole which was necessary to achieve wedge-free nesting without damage from reasonably anticipated axial force such as dropping. We conclude that the structural differences between Caine and '360 are such as to lead to the Caine cup's tendency to jam together and its undisputedly short commercial life as established in the trial court, neither of which is true of the '360 cup.
The Miller invention also differs materially from the '360 invention. It is not a one-piece cup of thinwall plastic, but rather is a paper cup with a plastic bottom. As already noted, the structure of Miller's cup necessarily creates a reinforced band around the perimeter of the cup where the paper barrel or sidewall is adhesively connected to the plastic bottom closely adjacent to the stacking facility which is a part of the cup bottom. The stacking facility of the '360 invention is a circumferentially discontinuous, Z-shaped, integral deformation of the cup sidewall which allows the major part of the entire sidewall to distend and deform outwardly upon the application of great axial force to a stack of nested cups. Conversely, the structure of the Miller cup is such that the three-layered (paper-adhesive-plastic) circumferential juncture of the cup bottom with the separate sidewall and the five-layered seam occurring at one point of the juncture, all of which is placed immediately next to the stacking facility, cannot but impede the action of resilient deformation which all the witnesses have agreed is crucial to jam- or wedge-free nesting. Indeed, defendants' witness Davis conceded that the above described juncture did "provide a reinforcing band around the upper flange of the plastic bottom." The testimony of plaintiff's Edwards was unrebutted when he said that the
The differences between the Plaxall base and the '360 invention are obvious from our previous description of each and the observation of the district court in that regard so that further discussion here is unnecessary.
D. The Level of Ordinary Skill in the Art.
Defendants' witness Davis was possessed of a level of skill which certainly cannot be characterized as less than ordinary skill in the art of plastic cup and container design. We base this determination on several factors, chief among which are the fact that he was the inventor of another cup design patented in 1966 under United States Patent No. 3,262,626
We note that Davis was unable to produce a successful vending cup of the type here at issue for a considerable period after he was assigned the task of designing such a container even though the '360 design was incorporated into one of plaintiff's cups which was already on the market and widely advertised in trade journals contemporaneously with Davis' endeavors. While that fact alone seems sufficient to indicate that the '360 invention was not obvious from the prior art's teachings, we note further that, while the use of interrupted, reverse tapered stacking rings and unitary thinwall plastic construction were well-disclosed in the art long before Edwards invented the cup later patented under '360,
Defendants have stated (and plaintiff has conceded on oral argument) that if certain features of the Caine cup and the Miller cup were united in one structure the result would be the '360 container. But that merely begs the question of obviousness and invites us to participate
We are cognizant of the difficulties inherent in judicially testing the validity of "combination" patents, that is, those which relate to claimed inventions which combine old elements of an art often with only minor improvements to one such element or no elemental improvements at all. The Supreme Court has also been concerned with the analytical problems confronting courts in such instances as evidenced by the three major cases it has heard recently involving combination patents.
Finally, we are obligated by the apparent simplicity of the '360 invention to note its remarkable commercial success. We are impressed by the fact that Illinois Tool Works and its licensees under the '360 patent have manufactured and sold several billions of such cups, with ITW alone having made and sold approximately two billion four hundred million. In addition, more than a dozen United States and foreign manufacturers have obtained licenses from plaintiff to manufacture cups covered by the '360 patent. We do not believe that the tribute of the trade and the marketplace can be ignored when it is so overwhelming in scope and magnitude.
Accordingly we affirm the finding of the district court that United States Patent No. 3,091,360 is valid, unanticipated and nonobvious.
III. Infringement of the '360 Patent.
Defendants urge us to set aside the determination of the district court that their CVP-9 group of cups infringes the '360 patent, assuming its validity. They argue that, since the design is such that their cups may fail to function properly if the cups are nested in one of several possible degrees of rotation in relation to each other, they do not infringe. We are unconvinced. We agree with the district court that "the accused [CVP-9] devices embody each of the elements specified in the patent."
IV. Propriety of the Refusal to Retransfer.
Title 28 U.S.C. § 1404(a) provides for the transfer of a civil action to any district of proper venue "[f]or the convenience of parties and witnesses, in
The judgment of the district court is affirmed in all respects.
No. Patentee Date _________ __________________ __________________ 703,745 E. C. Seaman July 1, 1902 795,437 W. Geuder (Dec'd.) July 25, 1905 1,937,402 C. K. Cherry November 28, 1933 2,088,181 G. W. Swift July 27, 1937 2,208,431 A. J. Rochow July 16, 1940 2,420,215 L. M. Wiley May 6, 1947 2,530,124 R. J. Kieckhefer November 14, 1950 2,563,352 M. W. Morse August 7, 1951 2,606,586 D. W. Hill August 12, 1952 2,630,244 L. Brock March 3, 1953 2,717,619 K. Whitman September 13, 1955 2,805,790 R. E. Smucker September 10, 1957 2,816,697 W. E. Amberg December 17, 1957 2,905,350 B. Edwards September 22, 1959 2,907,491 P. C. Gunn October 6, 1959