The opinion of the court was delivered by: CAMPBELL
CAMPBELL, District Judge.
This is a suit for the alleged infringement of the four following enumerated patents:
(1) Patent No. 1,610,192, issued by United States Patent Office to Cesare Barbieri, assignor to the Tortex Manufacturing Company, for conical paper cup and process for making the same, granted December 7, 1926, on an application filed February 8, 1923.
(2) Patent No. 1,413,460, issued by the United States Patent Office to David F. Curtin, for sanitary paper cup, granted April 18, 1922, on an application filed December 5, 1919.
(3) Patent No. 1,792,724, issued by the United States Patent Office to Cesare Barbieri, assignor by mesne assignments to Vortex Cup Company, for paper-cup blank, granted February 17, 1931, on an application filed April 14, 1928.
(4) Patent No. 1,964,238, issued by the United States Patent Office to Andrew C. Wood, assignor to Vortex Cup Company, for cup for confections, granted June 26, 1934, on an application filed September 21, 1932.
The Vortex Cup Company was a corporation organized and existing under the laws of the state of Delaware, and thereafter changed its name to Dixie-Vortex Company, the plaintiff, as evidenced by a certificate of change of name made and filed in the office of the Secretary of State of the state of Delaware, on April 30, 1936.
Title to the patents in suit is in the plaintiff.
There are disclosed, in all of the patents in suit, conical paper cups, made from a single blank of simple quadrantal form, which may be cut with but small loss, from the basic paper stock. As the cups, for sanitary reasons, are destroyed after only one use, they must be relatively cheap.
Both for compactness for shipping and convenience in handling the packing of such cups in stacked or nested relation is desirable, as in use the cups are dispensed, either mechanically or manually, one at a time, from the form in which they are delivered to the customer. Means must be provided for preventing adjacent cups in the stack from adhering to each other.
Plaintiff has manufactured large quantities of conical paper cups, which have been used as drinking cups, and also in the dispensing of ice cream sodas and soft drinks. Lately a special and improved form of paper cup has been sold by the plaintiff for use in molding and packaging ice cream.
Conical paper cups provide an advantageous shape for molding, and a sanitary container from which the ice cream may be readily dispensed in identical portions, without being contacted by the hands of the vendor.
Defendants have interposed their answer, pleading the defenses of invalidity and noninfringement.
The defendant, Imperial Paper Box Corporation, is a New York corporation, the K. & W. Paper Novelty Corporation, is a New York corporation, the Sunny Paper Novelty Company was, at the time of the filing of the bill of complaint, a copartnership consisting of Rose Radin and Evelyn Sukoff, and now owned exclusively by Morris Lazow, Morris Sukoff, an individual, and Morris Lazow, an individual. All of defendants are inhabitants of the borough of Brooklyn, New York, in this district.
The jurisdiction of this court is not disputed.
The defendant Morris Sukoff is president of Imperial Paper Box Corporation, and was, prior to the issuance of the Wood patent, treasurer of K. & W. Paper Novelty Corporation. His daughter, the defendant Evelyn Sukoff, and the defendant Rose Radin, an employee of Imperial Paper Box Corporation, and a part-time employee of K. & W. Paper Novelty Corporation, were, at and prior to the time of the filing of the bill of complaint herein, copartners, under the name of Sunny Paper Novelty Company. The defendant Morris Lazow is president of K. & W. Paper Novelty Corporation, has acted as salesman for Sunny Paper Novelty Company, and now owns it exclusively, and has sold the alleged infringing paper cups.
The K. & W. Paper Novelty Corporation, formerly occupied the same address as Imperial Box Corporation on Newport street, borough of Brooklyn, New York, and now occupies the same address as Sunny Paper Novelty Company, at 505 Sackman street, borough of Brooklyn, New York.
Plaintiff's letters addressed to K. & W. Paper Novelty Corporation, Sunny Paper Novelty Company, Evelyn Sukoff, and Rose Radin (Plaintiff's Exhibits 23, 24, 25, and 26), all sent by registered mail, were receipted for by Rose Radin, acting for herself as to the letter addressed to her, and acting as agent for the other three enumerated defendants, as to the letters addressed to them, respectively.
Even if the Gobs cups (Plaintiff's Exhibit 5) or the cone cups (Plaintiff's Exhibit 6), which are stipulated as exemplary of the alleged infringing cups, be held to infringe, the evidence does not show infringement by the defendants Imperial Paper Box Corporation, nor Morris Sukoff, individually.
The claims in suit of each of the patents in suit are as follows: Barbieri patent, No. 1,610,192, claims 2, 3, 4, and 5; Curtin patent, No. 1,413,460, claim 5; Barbieri patent, No. 1,792,724, the single claim; Wood patent, No. 1,964,238, claims 2 and 3.
Plaintiff contends that the patents in suit have achieved great commercial success, which it attributes to the merit of the patents.
The evidence does not sustain that contention.
The plaintiff, under its former name, extensively engaged in the manufacture of conical paper cups.
The art of paper cups is much older than the alleged inventions of any of the patents in suit, and plaintiff does manufacture and sell annually, large numbers of conical paper cups.
Two of the patents in suit, namely, Barbieri, No. 1,792,724, and Wood, No. 1,964,238, were issued subsequent to 1930, but the evidence does not convince me that they have contributed to any substantial increase in sales by plaintiff of conical paper cups over the sales made by it in 1930.
As to the Barbieri patent, No. 1,610,192, and the Curtin patent, No. 1,413,460, it does not seem to me that the particular merits of the cups of those patents were responsible for the commercial success attained, but, on the contrary, it was due to the intensive work ...