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ZELLER PLASTIK, KOEHN, GRABNER & CO. v. JOYCE MOLD

October 11, 1988

Zeller Plastik, Koehn, Grabner & Co., Plaintiff
v.
Joyce Molding Corp., Defendant/Counterclaim Plaintiff v. Zeller Plastik, Koehn, Grabner & Co. and Zeller Closures, Inc., Counterclaim Defendant



The opinion of the court was delivered by: ACKERMAN

 THE COURT: In this case, plaintiff, Zeller Plastik, Koehn, Grabner & Co. ("Zeller") seeks an order adjudging a patent it owns valid and enforceable, declaring that defendant, Joyce Molding Corp. ("Joyce") has infringed on the patent, enjoining defendant from further infringement, and ordering defendant to make an accounting of the damages arising out of the allegedly infringing activities.

 This matter is presently before the Court on request of plaintiff for preliminary injunctive relief. I note that with the consent of the parties, deposition testimony, affidavits, declarations and exhibits were submitted in lieu of live testimony.

 The original and amended complaints upon which this request is based were filed on January 12, 1988, and June 24, 1988, respectively. The essence of these complaints is plaintiff's allegation that defendant has infringed upon plaintiff's patent. In its answer, filed on March 3, 1988, defendant asserts five affirmative defenses and a four-count counterclaim.

 In its affirmative defenses, Joyce asserts, inter alia, that it has not infringed on plaintiff's patent, that the patent is invalid and unenforceable, and plaintiff lacks standing to bring the present action. In its counterclaims, defendant also asserts that it has not infringed upon the patent in question and that the patent is invalid and unenforceable as the inventor failed to disclose material prior art to the patent examiner. Finally, defendant claims that plaintiff has violated the antitrust laws, engaged in unfair competition, and interfered with defendant's prospective economic advantage.

 On March 24, 1988, Joyce filed its motion to add Zeller Closure, Inc. and Pittway Corporation as additional defendants on the counterclaims, pursuant to Federal Rule of Civil Procedure 13(h). On May 2, 1988, United States Magistrate Stanley R. Chesler granted Joyce's request to add Zeller Closures as a counterclaim defendant. Apparently Joyce withdrew its request to add Pittway at that time. On July 1, 1988, however, Joyce renewed its motion to add Pittway as a counterclaim defendant.

 Prior to this renewed motion, on May 26, 1988, plaintiff filed its request for preliminary injunctive relief. Hence, presently before me is Joyce's request to add a counterclaim defendant and plaintiff's request for injunctive relief.

 In order to evaluate these matters, I shall first review the relevant factual background of this case. Hence, pursuant to Federal Rule of Civil Procedure 52, I make the following factual findings based on the record before me:

 The patented invention at issue involves what has been referred to as "a snap hinge closure." The invention is more commonly known as the flip-top cap found on tubes of Colgate and Crest Toothpaste. On January 21, 1982, the inventor, Wilheim Weisinger, filed an application to receive a United States patent on this particular cap, for which he previously received a patent in Europe. On September 13, 1983, Weisinger received U. S. Patent No. 4,403,712 ('712) for this invention, whose object is to provide a "snap hinge which can be integrally made of plastic material and may constitute a part of a closure." See Patent No. 4,403,712, Column 2, Lines 7-10, attached as Exhibit 1 to defendant's response brief.

 In the patent, the inventor made the following 25 claims:

 "1. An integral snap hinge of plastic material, comprising:

 "two hinge members adapted to be folded about a main geometric axis and being flexibly interconnected by at least one connecting element, the hinge members being flexibly interconnected at at least one additional place along the main geometric axis;

 "film hinges having the connecting element interposed therebetween, the film hinges being divergent and at least one being inclined with respect to the main geometric axis; and

 "at least one component of the snap hinge being resilient to perform the snap action.

 "2. A snap hinge according to claim 1, wherein the connecting element has a relatively small, particularly pointed end.

 "3. A snap hinge according to claim 1, wherein at least one pair of connecting elements is provided.

 "4. A snap hinge according to claim 3, wherein the connecting elements of a pair have large ends facing each other.

 "5. A snap hinge according to claim 4, wherein the large ends of the connecting elements are separated from each other by an aperture.

 "6. A snap hinge according to claim 4, wherein the large ends of the connecting elements are interconnected by at least one bendable trough.

 "7. A snap hinge according to claim 1, wherein the connecting elements are springs shaped like troughs, which diverge in the direction of the geometric main axis.

 "8. A snap hinge according to claim 7, wherein the troughs are arcuate in cross-section.

 "9. A snap hinge according to claim 7, wherein the troughs are V-shaped or polygonal in cross-section.

 "10. A snap hinge according to claim 7, wherein the snap hinge is provided on an article which is adapted to be closed and the trough-shaped connecting elements protrude into the interior of the article when the latter is closed.

 "11. A snap hinge according to claim 7, wherein the snap hinge is provided on an article which is adapted to be closed and the trough-shaped connecting elements face outwardly when the article is closed.

 "12. A snap hinge according to claim 1, wherein the connecting elements are tensile elements which have a small to infinitely small elasticity in tension, and at least one of the hinge members is flexibly resilient, near the main geometric axis.

 "13. A snap hinge according to claim 12, wherein the connecting elements are flat.

 "15. A snap hinge according to claim 14, wherein the troughs are separated from each other and from the hinge members by ribs.

 "16. A snap hinge according to claim 15, wherein the troughs extend separately from each other to the small ends of the connecting elements.

 "17. A snap hinge according to claim 16, wherein the small ends of the connecting elements terminate in troughs.

 "18. A snap hinge according to claim 15, wherein the large ends of the connecting elements face each other and are provided with ribs, which extend transversely to the main geometric axis.

 "19. A container closure for sealing off the neck of a container, the closure comprising:

 "a body for connecting with the neck of the closure and having a dispensing opening for the dispensing of the contents of the container;

 "a lid for sealing off and permitting the opening of the dispensing opening in the body;

 "connecting means for hingedly connecting the lid to the body so that the lid may be shifted about a main geometric axis between the sealing off position and the opening position at which the dispensing opening is, respectively, sealed off and opened, the connecting means including a film hinge disposed along the main geometric axis about which the lid pivots between the sealing off position and the opening position;

 "a pair of opposed connecting elements interposed between the lid and the body on opposite sides of the film hinge, each connecting element having a relatively small substantially pointed end facing the end of the opposed connecting element;

 "divergent film hinges having a connecting element interposed therebetween hingedly connecting each connecting element to the lid and the body, the film hinges being divergent and inclined with respect to the main geometric axis;

 "the connecting elements being spring-like troughs symmetrical with respect to the main geometric axis, the troughs being resilient to bias the lid relative to the body at a location between the sealing off position and the opening position and having a dead center biasing position at one side of which the lid is biased to the sealing off position and at the other side of which the lid is biased to the opening position.

 "20. A closure according to claim 19, wherein the troughs are disposed inwardly of the lid and body when in the sealing off position.

 "21. A closure according to claim 19, wherein the troughs are disposed outwardly of the lid and body when in the sealing off position.

 "22. A closure according to claim 19, wherein, in section, each trough has a height and a width, the height being smaller than the width.

 "23. A closure according to claim 19, wherein the body and lid have circular cross-section and the film hinges connecting the connecting elements to the lid and body being disposed in the circles of the lid and body both in the sealing off position and opening position.

 "24. A container closure for sealing off the neck of a container, the closure comprising:

 "a body for connecting with the neck of the closure and having a dispensing opening for the dispensing of the contents of the container;

 "a lid for sealing off and permitting the opening of the dispensing opening in the body;

 "connecting means for hingedly connecting the lid to the body so that the lid may be shifted about a main geometric axis between the sealing off position and the opening position at which the dispensing opening is, respectively, sealed off and opened, the connecting means including a hinge film disposed along the main geometric axis about which the lid pivots between the sealing off position and the opening position;

 "a pair of opposed connecting elements interposed between the lid and the body on opposite sides of the film hinge, each connecting element having a relatively small substantially pointed end facing the end of the opposed connecting element;

 "divergent film hinges having a connecting element interposed therebetween hingedly connecting each connecting element to the lid and the body, the film hinges being divergent and inclined with respect to the main geometric axis;

 "the connecting elements being spring-like troughs symmetrical with respect to the main geometric axis, the troughs being resilient to bias the lid retention relative to the body to the opening position, the troughs biasing the lid to the opening position when in the sealing off position; and retention means overcoming the bias of the troughs when the lid is in the sealing off position releasably retaining the lid in the sealing off position and for permitting the lid to be manually released to the opening position.

 "25. A receptacal comprising:

 "a body;

 "a lid for closing and opening the body;

 "connecting means for hingedly connecting the lid to the body so that the lid may be shifted about a main geometric axis between the closing position and the opening position, the connecting means including a hinge film disposed along the main geometric axis about which the lid pivots between the closing position and the opening position;

 "a first pair of opposed connecting elements interposed between the lid and the body on opposite sides of the film hinge, each connecting element having a relatively small substantial pointed end facing the end of the opposed connecting element;

 "another pair of connecting elements interposed between the lid and the body and between the first pair and having relatively large ends facing each other;

 "divergent film hinges having a connecting element interposed therebetween hingedly connecting each connecting element to the lid and the body, such film hinges being divergent and inclined with respect to the main geometric axis;

 "the connecting elements being spring-like troughs symmetrical with respect to the main geometric axis, the troughs being resilient to bias the lid relative to the body at a location between the closing position and the opening position and having a dead center biasing position at one side of which the lid biased to the closing position and at the other side of which the lid is biased to the opening position."

 From the claims and the inventor's description, it appears that the invention involves a lid and base which are linked by a connecting element. I note that certain embodiments of the invention suggest that the inventor contemplated use of a distinct element that connected two portions of the lid to two portions of the base. Other embodiments suggest it is one element, half of which lies on the lid and half on the base.

 In any event, on the top and bottom of the connecting unitary, flexible element is a pair film hinges, one set links the lid to the element and one set links the element to the base. Deposition of Barry Wolf at 39, 57-58.

 The hinges diverge from the geometric axis about which the lid and base articulate and about which these objects are in circular movement in relation to each other. Id. at 43, 47-48.

 In other words, the hinges diverge or are inclined away from the plane upon which the lid sits when it is closed. In his deposition, Dr. Wolf stated that the use of divergent film hinges are a primary teaching of the Weisinger patent. In at least one embodiment, the bottom hinges are placed below the plane or axis described above such that they actually rest on the wall of the base.

 By agreement consumated on June 3, 1983, plaintiff became the owner and licensor of this patent. See plaintiff's answer to defendant's Interrogatory No. 5; affidavit of Jochen Koehn, notarized May 10, 1988, at Paragraph 2. Plaintiff has licensed many companies to manufacture and market the closure, including licensees in which plaintiff has an ownership interest. See deposition of Mr. Koehn at 40-55. Plaintiff has two licensees in North America, Zeller Closure, known until 1987 as DTC, which is located at the same address as Zeller Corporation, and Seaquest Division of Pittway Corp. Id. at 40, 44-45.

 These licensees pay yearly royalties to plaintiff, the patent owner. See affidavit of Eugene Dorsch, notarized May 10, 1988, at Paragraphs 1-3. Through the marketing efforts of these entities, approximately 200 million Weisinger closures were sold in the United States in 1987. Id. at Paragraphs 8-9. Projections reveal that sales are expected to double in 1988. Id. at Paragraph 8. I note, however, that "based on available U. S. Census Bureau statistics and projected sales figures, Zeller closures will supply less than one percent of the market in plastic dispensing closures in 1988." Affidavit of Eugene Dorsch, dated April 25, 1988, at Paragraph 7.

 By letter dated April 16, 1987, counsel for plaintiff advised defendant that "it has come to our attention that you are now manufacturing and selling snap hinge closures that are unquestionably an infringement of the rights and coverage granted by our client's patent." See letter from John Kurucz, Esq., to Joyce Molding Corp., dated April 16, 1987, attached as Exhibit 15 to defendant's response brief by letter dated June 8, 1987.

 Mr. Kurucz sent counsel for defendant a copy of photographs and an actual specimen of the accused cap. See Id. at Exhibit 17.

 In response, defendant's counsel informed plaintiff's counsel of its contention that the accused product "is an improvement" on defendant's own patented hinge, U.S. Patent No. 4,503,991, which defendant asserts "is based upon an entirely different principle from that which is alleged to be the basis of the closure set forth in the '712 patent." See Id. at Exhibit 18.

 For the record, I note that on January 6, 1984, Michael Joyce applied for a patent on his "two part snap hinge," which received its patent on March 12, 1985. This patent corresponds to an invention that

 
"relates to an improved biasing or snap hinge preferably made of two thermoplastic parts connected together by an integral hinge . . . .
 
"Integral hinges are well known in the art but such hinges have traditionally required a spring to produce the snap action. Applicant's hinge consists of two hinge members hinged together along a curved line . . .. When the hinge member is moved further [from either the first or second position], the energy is released thereby giving a biasing force and eliminating the need of the spring yet retaining its function . . . . The internal stress of the hinge functions as a spring, biasing in hinge members to one or other stable positions."

 See Patent No. 4,503,991, Column 1, Lines 6-59, attached as Exhibit 13 to defendant's response brief.

 The patent specifically cites and discusses the prior art embodied in Weisinger's patent. In this regard, the Joyce patent notes that the Weisinger patent "discloses a container and lid with an opening closed by a flap formed integrally with the remaining part of the lid. The lid is elastically deformable and is moved from a closed position to an open position in response to pressure on a minor portion of the lid. A disadvantage of this hinge is the added complexity, cost of manufacture and inherent lack of uniformity of function and reliability." See Id. Column 2, Lines 9-17.

 As an alternative, Joyce's patented closure states that it "offers an improved two part hinge . . . made of two parts integrally molded together which is simple in construction, economical to manufacture and simple and efficient to use." Id. at Column 2, Lines 22-25.

 The 19 claims of this invention are as follows:

 
"1. A hinge including a swingable portion, a reference portion, and a reduced connecting portion between said swingable portion and said reference portion, said reduced connecting portion being integral with said swingable portion and said reference portion and extending continuously between a first point and a second point in a manner such that said reduced connecting portion follows a path which is displaced from a straight line connecting said first and second points whereby upon swinging said swingable portion swings through an intermediate position such that on either side of said intermediate position said swingable portion is urged away from said intermediate position.
 
"2. The hinge of claim 1, wherein on one side of said intermediate position said swingable portion is urged into a first bowed configuration and on said other side of said intermediate position said swingable portion is urged into a second bowed configuration, said first and second bowed configurations comprising configurations bowed on opposite sides of the plane of said swingable portion.
 
"3. The hinge of claim 1, wherein said swingable portion, said reference portion and said reduced connecting portion comprise molded plastic.
 
"4. The hinge of claim 1, wherein said swingable portion comprises a closable portion for a container and said reference portion comprises at least a ...

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