J.T. Eaton & Company, Inc. v. Atlantic Paste & Glue Company

106 F.3d 1563, 1997 WL 55367
CourtCourt of Appeals for the Federal Circuit
DecidedApril 7, 1997
Docket95-1380
StatusPublished
Cited by97 cases

This text of 106 F.3d 1563 (J.T. Eaton & Company, Inc. v. Atlantic Paste & Glue Company) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
J.T. Eaton & Company, Inc. v. Atlantic Paste & Glue Company, 106 F.3d 1563, 1997 WL 55367 (Fed. Cir. 1997).

Opinions

CLEVENGER, Circuit Judge.

Atlantic Paste & Glue Company, Inc. (Atlantic) appeals the judgment of the United States District Court for the Eastern District of New York holding that J.T. Eaton & Company, Inc.’s (Eaton) patent for a mousetrap is not invalid and is infringed by Atlantic’s accused mousetraps.

For the reasons set forth below, we conclude that the district court misinterpreted claim 1 of Eaton’s patent. Consequently, we reverse the judgment that the patent is infringed, and we vacate the judgment that the patent is not invalid under 35 U.S.C. § 103 (1994). The case is remanded to the district court for further proceedings with regard to the validity issue.

I

This suit involves United States Patent No. 4,438,584 (the ’584 patent), issued on March 27, 1984, to Stanley Z. Baker and Benjamin H. Baker. The patent, assigned to Eaton, discloses a “Trap for Rats, Mice, and Other Vermin.” Claim 1, the patent’s only independent claim, reads, with emphasis added:

A commercial trap product for catching mice or rats comprised of a generally flat support formed of a non-porous, thin sheet material, said support having at least one positioning surface, at least one indented portion having a given depth below said positioning surface, and a relatively thick layer of pressure sensitive adhesive material contained within said indented portion having a thickness of at least 1/16 inch, a plastic flow temperature above 120°F. and an upper surface; said indented portion having a greater depth than the thickness of said layer of adhesive and said positioning surface being spaced above said adhesive layer upper surface.

Claim 1 thus recites a dishlike container holding a pressure sensitive adhesive material in which vermin become stuck, and thereby trapped. The commercial embodiments of the invention feature two plastic containers or traps, typically packaged together, one [1565]*1565on top of the other, face-to-face, capable of being hung in a vertical position at the point of sale.

After a bench trial, the district court issued findings of fact and conclusions of law in which it interpreted the limitation, “a plastic flow temperature above 120°F.” Based on its interpretation, Atlantic’s accused product was found to infringe claim 1. Additionally, the district court held claim 1 not invalid under § 103 for obviousness, or under 35 U.S.C. § 102(b) (1994) for having been on sale for more than one year before the filing date of the ’584 patent. For the reasons set forth in the opinion of the district court, we hold that, on the facts presented in this ease, claim 1 is not invalid under § 102(b), and we thus refer no further to that issue.

Whether claim 1 is infringed by Atlantic’s accused product, and whether Eaton’s commercially successful product is an embodiment of the invention claimed (the latter being germane in this case to the validity of the patent under § 103), depend on what is meant by “a plastic flow temperature above 120°F.” As we will explain below, the correct meaning of that term is established by reading the prosecution history of the ’584 patent. That is a legal exercise which we are obligated to conduct independently. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979, 34 USPQ2d 1321, 1329 (Fed.Cir.1995), aff'd, — U.S. —, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996).

II

The district court construed the limitation “a plastic flow temperature above 120°F,” with reference to the claimed adhesive, to mean:

[T]hat the adhesive has a flow characteristic which enables the trap product to be shipped and stored at the highest ambient temperature expected to be encountered in connection with such shipping and storage, namely 120°F, without the adhesive flowing from the support.
A pressure sensitive adhesive material in a trap for catching mice or rats, in accordance with the invention in Eaton’s ’584 patent, has a plastic flow temperature above 120°F if the adhesive passes the two tests established by Mr. Kenneth A. Nelson ..., namely (1) disposing a support, such as a tray, and the adhesive therein in an inverted horizontal orientation on an underlying substrate and exposing the support and adhesive to a temperature of 120°F for sixteen (16) hours, and (2) disposing a support, such as a tray, and the adhesive therein in a vertical orientation on an underlying substrate and exposing the support and adhesive to a temperature of 77°F for sixty-three (63) hours. An adhesive passes these tests and has a plastic flow temperature above 120°F if the adhesive does not flow from the support onto the underlying substrate during the test. These two tests are set forth in the file history of Eaton’s ’584 patent.

In addition, the district court cited another test to determine if an adhesive has a plastic flow temperature above 120°F. That test, devised by Findley Adhesives, Inc., called for heating the adhesive to 250°F for one-half hour, allowing the adhesive to set at room temperature for 24 hours, then disposing the adhesive in an inverted horizontal orientation at a temperature of 120°F for 16 hours. With regard to those tests, the district court held that:

The two tests devised by Mr. Nelson and the test procedure established by Findley Adhesives, Inq. are appropriate for determining that an adhesive has a plastic flow temperature of 120°F in accordance with the invention claimed in the ’584 patent.

Based on undisputed testimony offered by Eaton, Atlantic’s mousetraps—when subjected to these tests—were found to infringe claim 1. As we will explain below, however, these tests cannot, as a matter of law, be the measurement for determining if an adhesive meets the plastic flow temperature limitation of claim 1, because the tests do not measure plastic flow at 120°F in a vertical orientation, which is required when the claim is properly construed.

After a thorough analysis of the prior art, the district court found the “primary indicia of patentability ... lacking,” Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 [1566]*1566F.2d 281, 306, 227 USPQ 657, 675 (Fed.Cir.1985), for claim 1, and that the claim would have been obvious when viewed in the light of the prior art and the level of skill in the art. Nevertheless, the district court held the patent nonobvious because of the strong commercial success of Eaton’s commercial product. The finding of commercial success was based on Eaton’s $17 million of sales from 1979 through 1984, and its $4 million of annual sales from 1985 through 1989.

Ill

The ’584 patent emerged from claims originally set forth in Patent Application No. 338,-621, which is a continuation of Ser. No. 53,-381, filed on June 29, 1979. The examiner rejected the claims, inter alia, for failure to disclose the best mode of making the invention. The Nelson tests, used by the district court as the measurement of plastic flow temperature, assessed prior art adhesives and an adhesive which Nelson’s employer, Findley Adhesives, had been requested by Eaton to prepare that would meet the limitations of claim 1.

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106 F.3d 1563, 1997 WL 55367, Counsel Stack Legal Research, https://law.counselstack.com/opinion/jt-eaton-company-inc-v-atlantic-paste-glue-company-cafc-1997.