Diamond International Corporation, a Corporation of Delaware, Appellee, v. Maryland Fresh Eggs, Inc., a Corporation of Maryland, Appellant, 523 F.2d 113 (4th Cir. 1975)

The subjects of this patent litigation are a 12-egg carton made of molded pulp and a like-shaped and purposed container made of foam polystyrene (plastic). As the assignee-owner of the patent covering the pulp carton, No. 2,990,094 issued June 27, 1961 to one Reifers (original application filed 1952), appellee Diamond International Corporation charged appellant Maryland Fresh Eggs, Inc. (MFE) with infringing its patent after notice thereof, by selling plastic cartons embodying the invention delineated in these letters patent and purchased from a manufacturer other than Diamond.¹  Concluding the patent to be invalid as lacking in novelty because anticipated in the prior art, 35 U.S.C. §§ 101 and 102(a),²  and lacking invention because of obviousness, 35 U.S.C. § 103,³  we reverse the District Court's judgment upholding the patent, Diamond International Corp. v. Maryland Fresh Eggs, Inc., 374 F. Supp. 1223 (D.C.Md.1974).⁴  We have no occasion, therefore, to look to infringement. Agrashell, Inc. v. Hammons Products Company, 413 F.2d 89, 93 (8 Cir. 1969).

Besides the patent drawing (see p. 116 Infra), a lay description of the carton is now offered with the hope of conveying at once a general understanding of the device in controversy. It consists of an oblong tray with an inverted dished cover or lid, hinged lengthwise along the top of the rear side of the tray; the tray is divided into 12 cellular sections, each to hold a single egg, with six sections in the front row and six in the row behind it (known as the 2 x 6 carton); extending along, upwards from, and hinged on the front edge of the tray is a flap or flange on which are two lugs or buttons projecting outwardly; the front or unhinged side of the cover has two small holes or apertures of a diameter approximating that of the lugs on the flange of the tray; as the cover is brought down, using the hinge on the rear side of the tray, the holes in the cover easily slip over the lugs, since the holes and the lugs are positioned to engage each other; this locks the cover and the tray together and thereby forms the latch constituting a principal feature of the inventiveness asserted for the patent; the other feature is the "plurality of spaced cell-forming partitions extending generally parallel to the said tray portion ends" tying partitions preventing the spreading of the front from the rear side of the carton and thus stabilizing the locking flap.

This is a product patent, embracing a combination of old elements with "improvements in a molded pulp egg carton and particularly to its integral means to releasably lock together the cover and bottom sections of the carton" to quote from the first sentence of the specifications. Its utility is conceded but its novelty denied by appellant-defendant, 35 U.S.C. §§ 101 and 102(a) Supra. Additionally, MFE asserts that its accused carton is not within the specifications and the claim of Reifers' (appellee Diamond-owned) patent because the latter is limited to a molded pulp carton, while MFE's is a plastic carton. In replication Diamond urges that the plastic is an equivalent of the molded pulp carton, and consequently is within the Reifers' patent coverage. However, we find it unnecessary to resolve this challenge since our view is that the patent fails for anticipation and obviousness.

Our holding observes the lesson of Graham v. John Deere Co., 383 U.S. 1, 17, 86 S. Ct. 684, 694, 15 L. Ed. 2d 545 (1966) for the ascertainment of obviousness:

"While the ultimate question of patent validity is one of law, A. & P. Tea Co. v. Supermarket Corp., supra, 340 U.S. at 155 (71 S. Ct. 127 at 131, 95 L. Ed. 163), the § 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved."

The Prior Art

To begin with, concededly the Reifers' carton was built upon the Cox Patent No. 2,771,233 (1956, issued on 1950 application), known as the Case Ace carton, (see juxtaposed drawings of the two on p. 116).

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Although Cox provided no latching between the tray and the cover, otherwise the form of the two products is not dissimilar. In its pretrial order the District Court finds that "the Only structural differences between the carton shown in the Reifers' patent in suit and the carton shown in the Cox '233 patent is the locking feature". (Accent added.) Moreover, Reifers was employed by Cox to put a latch on Cox's carton. Instead of a latch to keep the tray and cover together, Cox relied upon the friction between the front of the cover and the flap along the edge of the tray when the cover is hinged down over it. Thus plainly Reifers was anticipated by Cox in the configuration of the carton.

As to the Reifers' lock, it is apt to emphasize that Cox, like Reifers, provided a flap or flange along the top of the front wall of the tray and fitting under the front of the cover when the carton is closed. As confirmed by the drawings of Cox and Reifers, to supply the latch Reifers merely added to Cox two holes in the cover and two buttons on the flap. This type of latching, as patentee Reifers stated in a letter to Cox, was anticipated by use years before.

Convincing of this are the earlier uses of the lug-in-hole locking found on containers Other than egg cartons. Unlike the trial court we think these are apposite because it is the principle of the latch, not its vehicle of application, which is enlightening. Graham v. John Deere Co. (Calmar, Inc. v. Cook Chemical Co.), Supra, 383 U.S. 1, 35, 86 S. Ct. 684, 15 L. Ed. 2d 545. To be stressed in this review of carton history is that the focal point is the latch, for only the latch is now in issue. The conformation of the Reifers' carton including its partitions and reinforcing ties indisputably is that of the Cox '233 Case Ace, and so was anticipated by the latter.

Tuttle Patent No. 117,349 (1871) embodied an improved pasteboard packing box. It included projections placed on the box to extend through holes on the lid, as illustrated on p. 117. The patent describes the conception as follows:

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"What I claim as my present invention is

"The improved pasteboard packing-box, as provided with slots arranged through the sides or ends of its cover, as described, and with corresponding projections to enter such, arranged and formed on or from the body, as set forth".

Hooper British Patent No. 406,159 (1934), its drawing reproduced on p. 118 exhibits a box consisting of a tray and a hinged lid with a button and hole latch.

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The unit is described as:

"The side 8 of the lid 2 opposite to the hinge 3 is provided with a recess 9 which, when the box is closed, is sprung over the projecting head 7 so that the box is retained closed."3. A moulded box or case according to Claim 2 wherein the tongue or the loke is formed on a thickened portion of the wall of the body of the box and the catch or projection is engageable resiliently with a recess formed in the interior of the lid.

"4. A moulded box or case according to Claim 1 or 3 wherein the projection comprises the head of a rivet secured in a hole in said resilient tongue."

Hunziker Patent No. 1,354,042 (1920) (see p. 119) devises a cigarette case, made up of a tray, a lid, a flange forming the tray's front wall, a boss or lug on the flange and a notch or hole on the lid passing over the lug in the closed position.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLEThese are the related words of the patent:

"The edge flange 8 is formed with a notch 10, and the offset portion 9a of the edge flange 9 has an outwardly pressed boss 11 that is beveled on its upper side and terminates in a sharp shoulder. When the case is closed, the boss or lug 11 will cam itself into interlocking engagement with the notch 10, and to release the same from the said notch when it is desired to open the case, the flange 9 must be sprung inward by pressure from the fingers."

When considered with these products, a pertinent reference to the art prior is Koppelman No. 2,093,280 (September 14, 1937),⁵  copied on p. 120.

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It consists of a tray compartmentalized to provide pockets for eggs; a cover hinged on the rear side of the tray; a flap on the outer edge of the forward or front wall of the Cover (the Reifers' flange is hinged to the bottom tray); lugs on the flap or flange (as in Reifers); and apertures or holes in the front wall of the Tray (the Reifers' holes are in the cover). As the cover is brought over and upon the tray, the flap moves down into the tray, just inside the front wall of the tray. Thereupon the lugs or buttons fit into the apertures in the front wall of the tray. The eggs in the front row press against the flap, aiding the maintenance of the lugs or buttons in the apertures in the front wall of the tray.

True, the positions of the lugs and the holes are in an arrangement in reverse of Reifers with the lugs on the cover and holes in the tray but the employment of lugs and holes in this environment at once suggests the Reifers' latch. Even if Koppelman had never been made commercially, as appellee Diamond asserts, it may be considered as anticipation. Dashiell v. Grosvenor, 162 U.S. 425, 432, 16 S. Ct. 805, 40 L. Ed. 1025 (1896).Obviousness

While this array of prior art, we think, destroys the idea of novelty or invention in Reifers under 35 U.S.C. §§ 101 and 102(a), a complete appraisal of the Reifers' patent requires its evaluation under 35 U.S.C. § 103 for obviousness. To us the same array simultaneously also proves this infirmity. It is presently academic whether novelty and obviousness are questions of fact or of law, for in either event we think that on these issues the findings of the District Court on the facts are clearly erroneous and its conclusions on the law cannot stand.

We see Reifers as only an adaptation of the button and button-hole principle. It is transparently existent in Reifers' improvement of the Cox carton, for Reifers simply put two clasps of this design on Cox. Repeatedly does it appear in the non-egg uses just considered as well as in Koppelman. From his experience and awareness of the history of this locking contrivance the "person having ordinary skill in the art", 35 U.S.C. § 103, would recognize this bonding mechanism in Reifers.

This is true even in regard to Koppelman's reversal of the fastening elements. The statutory-skilled person would quickly grasp the similitude of the Reifers and Koppelman latches, since to arrive at the Reifers' concept would only require the transfer of the flap from the cover to the tray and the holes from the tray to the cover. (See drawing on p. 120).

Incidental Considerations

The evidence is greater than a mere preponderance and squarely rebuts the presumption of patent validity accorded by 35 U.S.C. § 282. Stukenborg v. Teledyne, Inc., 441 F.2d 1069, 1072 (9 Cir. 1971), Cert. denied 404 U.S. 852, 92 S. Ct. 90, 30 L. Ed. 2d 92. Its force and clarity overshadows the effect of long-felt want, licenses, commercial success, and other secondary factors in adjudging patentability.

In fine, continuing obedient to the precepts of Graham v. John Deere, supra, 383 U.S. 1, 86 S. Ct. 684, 15 L. Ed. 2d 545 (1966), we are required to reverse, at no moment, however, losing sight of the intense study, thought and industry of the District Judge.

Reversed.