Protective Closures Co. v. Clover Industries, Inc.

129 F. Supp. 941, 104 U.S.P.Q. (BNA) 378, 1954 U.S. Dist. LEXIS 2305
CourtDistrict Court, W.D. New York
DecidedSeptember 3, 1954
DocketCiv. A. No. 5432
StatusPublished
Cited by2 cases

This text of 129 F. Supp. 941 (Protective Closures Co. v. Clover Industries, Inc.) is published on Counsel Stack Legal Research, covering District Court, W.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Protective Closures Co. v. Clover Industries, Inc., 129 F. Supp. 941, 104 U.S.P.Q. (BNA) 378, 1954 U.S. Dist. LEXIS 2305 (W.D.N.Y. 1954).

Opinion

KNIGHT, Chief Judge.

The complaint herein charges patent infringement. The answer denies validity, and to it is added a counter-claim for a declaratory judgment of invalidity. A supplemental complaint charges unfair competition. In its answer, defendant denies acts of unfair competition and alleges that the supplemental complaint fails to state a good cause of action.

The plaintiffs are Joseph R. Grenier and Ernest W, Dormeyer, Jr., joint patentees, and Protective Closures Company, Inc., claimed to be a licensee. The defendant is Clover Industries, Inc.

The patent in suit is No. 2,580,-762. The application was filed on April 28, 1950, and the patent issued January 1, 1952. Defendant admits that its closures “respond to the literalism of claim 1 of the patent.” Thus the sole issue is as to validity. The issue of unfair competition can only arise if the patent is held to be valid. Defendant’s denial of infringement is based on the proposition that there can be no infringement of an invalid patent.

The alleged invention relates to a closure used industrially, either as a cap or a plug, made of a plastic material and having such a shape that the closure when so used will fit and effectively close a range of sizes of parts, such as the ends of tubing or the like. It primarily is used as a temporary closure for [942]*942dust and moisture seals, shipping protectors for pipes and tubing ends arid to mask parts for paint spraying or electroplating.

The application for the patent as originally filed contained 8 claims, and all of these, except claims 6 and 8, were rejected by the patent examiner. Thereupon Claim 4 was amended and designated Claim 1, as amended, the patent was issued. The amendment added the last clause to old Claim 4 which read “and an integral annular bead projecting radially inwardly from said side wall closely adjacent the rim thereof.”

The entire Claim 1 reads:

“1. As an article of manufacture, a closure comprising in its unmounted condition a single polyethylene body having a circular end wall of substantially uniform wall thickness, an enlarging frusto-conical side wall projecting axially from the margin of said end wall, said side wall being of substantially uniform thickness of from .025 to .040 inch for at least the greater part of its distance from said end wall and the angularity of said side wall relative to the axis thereof being from 2.5° to 7.5° and the axial length of said side -wall being such that the internal diameter at the rim thereof is from %g to 3As inch greater than the internal diameter thereof across said end wall and forming inner and outer parallel frusto-conical working faces adapted to engage securely, respectively, with male and female generally cylindrical parts, an annular flange of substantially the same wall thickness as said side wall projecting radially outwardly from the rim of said side wall and an integral annular bead projecting radially inwardly from said side wall closely adjacent the rim thereof.”

It is the claim of the plaintiffs that all of the structural features are critical to the provisions of a closure which will have the advantages of the desirable characteristics of the patented closure. The closures are made of polyethylene, claimed to be essential as a material tough and flexible, that does not tend to bond to an engaged surface and maintains these characteristics at high and low temperature. The frusto-conical side-wall is stated to be between .025 to .040 of an inch in thickness with an angularity of 2.5° to 7.5° and of such height that the diameter at the rim will be Vie to inch greater than the internal diameter across the end wall; the external flange or rim limits the inward motion of the closure when the closure is used as a plug.

It is claimed that a greater thickness of the frusto-conical side wall would not permit the closure as a plug to be forced into a range of openings with the rim of the closure flush with the holes, and as caps the closure could not be bottomed on the ends of a range of male parts; that the cap or plug, as a partial mounting, would be more apt to be knocked off in handling; that any decreased thickness of the side-wall would render it likely to wrinkle axially and a too thin wall would render the wall less in stability and make it more difficult to apply and remove.

It is asserted that a taper in the side wall is essential as rendering the closure more adaptable to fit wider ranges of sizes of parts. As to the external annular flange, it is said that this is essential because, when the closure is used as a plug, this flange limits inward movement, and that when the closure is used as a cap it is helpful in holding the closure. The claim for the internal annular bead, which is adjacent to the rim, is that it is essential in that it insures an adequate seal with the “largest size of cylindrical projection which the cap is designed to accommodate”, and the other being that it greatly facilitates the molding of the closure.

The plaintiffs claim that Claim .1 is a combination claim and that its validity [943]*943does not depend upon novelty of any or all of its elements individually but rather upon the novelty of the combination. The defendant, however, asserts that the file wrapper shows a definite and binding disclaimer of subject matter originally sought to be included in the claims of the patent. It will be remembered that a number of the claims in the file wrapper were disallowed by the examiner and no appeal was taken by the plaintiffs. The claims disallowed are included as a part of the combination in the suit patent. The question of the effect of any disallowance should be passed upon at this point, because of its possible effect upon the question of validity of the patent in suit.

The defendant cites a number of cases in which the effect of a disclaimer is discussed. The substance of these holdings is that plaintiffs here abandon any claim theretofore made not claimed in Claim 1 in suit. Texas Co. v. Anderson-Priehard Refining Corp., 10 Cir., 122 F.2d 829. The answer is found in a number of decisions of the Courts.

In International Cellueotton Products Co. v. Sterilek Co., 94 F.2d 10, 12, the Court, speaking through Judge Learned Hand, said, in part:

“When an inventor consents to limit his monopoly, there is no reason in fact to impute to him the belief that his only patentable advance lies in the element so introduced. * * * Nor is there any reason to impose upon him the same consequence as though he had formally so conceded; it is enough that he has freed the art except as the claim reads, and that he has surrendered any power under the doctrine of equivalents to resume what he has given up. He has done nothing which need prevent him from insisting in support of the claim as allowed that his invention was broader than the examiner supposed; he is not confined to the examiner’s reasoning or committed to his mental processes.”

That was a suit for infringement of a patent. While the application was pending, the examiner cited a reference against the claims and to escape this the applicant amended his claim and made some change in the machine.

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129 F. Supp. 941, 104 U.S.P.Q. (BNA) 378, 1954 U.S. Dist. LEXIS 2305, Counsel Stack Legal Research, https://law.counselstack.com/opinion/protective-closures-co-v-clover-industries-inc-nywd-1954.