E. I. Du Pont De Nemours & Company v. Berkley and Company, Inc., E. I. Du Pont De Nemours & Company v. Berkley and Company, Inc.

E. I. du Pont de Nemours & Company (DuPont) appeals from a judgment holding invalid its United States patent No. 3,063,189 (DuPont patent). Berkley & Company, Inc. (Berkley) appeals the dismissal of its antitrust counterclaim and denial of its motion for attorney’s fees and costs. We reverse the judgment of invalidity, remand for a new trial on that issue, and affirm the dismissal of the counterclaim. 1

Background

The patent in suit, like most patents, discloses a proposed solution for a problem. When colored fishing lines are used, to enable the fisherman to see them above water, the lines are thought to be visible underwater to the fish. 2 When transparent lines are used, to limit visibility to fish, the fisherman can’t see the lines resulting in tangled lines when several are used from one boat.

The solution proposed by Ed Keller, DuPont’s employee, was a fishing line containing fluorescent dye. The dye would be activated, i.e., the line would glow, in response to the ultraviolet component of daylight, making it “visible above water.” At the same time, because water would absorb the dye-activating ultraviolet component of daylight, the line would be “relatively invisible” below the water. Thus one line would have the characteristics of high visibility above water and low visibility below water. Keller filed a U.S. patent application on January 2, 1962. DuPont introduced its fluorescent dyed line to the marketplace in August, 1962. The DuPont patent issued on November 13, 1962 3 to DuPont, Keller’s assignee.

*1256 In November 1962, Berkley began making and selling a fluorescent fishing line, but ceased in 1963 when DuPont gave notice of infringement. Berkley’s subsequent efforts to produce a “High Visibility” line that would not infringe were unsuccessful, its use of anthanilic acid producing a line half as bright as DuPont’s. In December 1974, after unproductive licensing discussions with DuPont, Berkley again began making and selling a fluorescent fishing line.

On August 1, 1975, DuPont sued Berkley for willful infringement of claims 1, 2, 5, 6 and 8 of the DuPont patent. Berkley denied infringement throughout a three-year discovery period, asserting that its line contained an “optical brightener” in place of fluorescent dye. Two weeks before trial, Berkley admitted that claims 2, 5 and 6, if valid, were infringed by its product. DuPont thereupon deleted claims 1 and 8 from its charge of infringement.

For its defense, Berkley alleged (1) that the DuPont patent was invalid for lack of utility, novelty and nonobviousness, and (2) that the patent was rendered invalid by DuPont’s fraudulent conduct before the U.S. Patent and Trademark Office (PTO).

For its counterclaim, Berkley alleged that DuPont violated Section 2 of the Sherman Act by procuring the patent through fraud and by attempting to enforce the patent with knowledge of its invalidity. 4

Over Berkley’s objection, the trial court ordered a bifurcated trial, the first part to include the allegations that DuPont obtained the patent by fraud and enforced it believing it invalid. The second part, on the remaining elements of the antitrust claim, would be held if the jury found for Berkley on fraud or enforcement.

Following a three-week trial, the jury returned a general verdict for Berkley on DuPont’s infringement claim. The jury answered these, and only these, special interrogatories: 5

Q: Did plaintiff obtain the

[DuPont] patent from the patent office by fraud?

A: No.

Q: Did plaintiff assert its patent against Berkley knowing that it was invalid? A: No.

Q: Did you find for defendant solely because the patent was obvious?

A: No.

The court entered judgment, holding the DuPont patent invalid and dismissing the complaint and counterclaim. Both parties filed, and the court denied, motions for judgment notwithstanding the verdict or for a new trial.

Issues

Embittered in battle below, the parties request this court to resolve over 25 issues and subissues. The trial court is directly charged with 11 reversible errors. Couched in accusatory and turgid terminology, the briefs set forth numerous bits and pieces of conflicting testimony and documentary evidence, from which we are asked to draw a plethora of factual inferences. The effect is neither a prejudicing of this court, *1257 against either side, nor a simplifying clarification. The result is a necessarily extended opinion, based on a searching review of an entire 4000 page record, and in which the issues treated will appear in section headings. 6

OPINION

I. Validity

A. Requirement for Retrial

Absent error affecting the substantial rights of the parties, neither reversal nor a new trial is required. 28 U.S.C. § 2111 (1976); Fed.R.Civ.P. 61. 7 When the error misled the jury or had a probable effect on its verdict, reversal and a new trial are appropriate. International Merger & Acquisition Consultants, Inc. v. Armac Enterprises, Inc., 531 F.2d 821, 823 (7th Cir. 1976); Conway v. Chemical Leaman Tank Lines, Inc., 525 F.2d 927, 929-30 (5th Cir. 1976); Hoffman v. Sterling Drug, Inc., 485 F.2d 132, 140 (3d Cir. 1973); See Kotteakos v. United States, 328 U.S. 750, 764-65, 66 5. Ct. 1239, 1247-1248, 90 L.Ed. 1557 (1946).

Respecting the issue of patent validity under the statute, the court asked the jury to state only whether it found for Berkley “solely” on obviousness. The jury’s “No” answer means that there were six possible bases for its verdict: (1) the invention would have been obvious and was lacking in utility, (2) the invention would have been obvious and was lacking in novelty, (3) the invention would have been obvious and was lacking in both utility and novelty, (4) the invention would not have been obvious, but was lacking in utility, (5) the invention would not have been obvious, but was lacking in novelty, or (6) the invention would not have been obvious, but was lacking in novelty and utility.

If one or more substantial grounds for the verdict presented no jury question and should have been decided as a matter of law in DuPont’s favor, reversal and a new trial are required, notwithstanding the presence of other grounds that could have supported the verdict. Morrissey v. National Maritime Union, 544 F.2d 19, 26-27 (2d Cir. 1976); Albergo v. Reading Co., 372 F.2d 83, 85-86 (3d Cir. 1966), cert. denied, 386 U.S. 983, 87 S.Ct. 1284, 18 L.Ed.2d 232 (1967); Fatovic v. Nederlandsch-Ameridaansche Stoomvaart, 275 F.2d 188, 190 (2d Cir. 1960); North American Graphite Corp. v. Allan, 87 U.S.App.D.C. 154, 156, 184 F.2d 387, 389 (D.C. Cir. 1950); Traveler’s Insurance Co. v. Wilkes, 76 F.2d 701, 705 (5th Cir.), cert. denied, 296 U.S. 604, 56 S.Ct. 120, 80 L.Ed.2d 428 (1935); Patton v. Wells, 121 F. 337, 340 (8th Cir. 1903). See also Sunkist v. Winckler & Smith Co., 370 U.S. 19,29-30, 82 S.Ct. 1130, 1135-1136, 8 L.Ed.2d 305 (1962) (erroneous instruction); United Pilots Ass’n v. Halecki, 358 U.S. 613, 619, 79 S.Ct. 517, 520, 3 L.Ed.2d 541 (1959) (failure to submit jury question); Maryland v. Baldwin, 112 U.S. 490, 493, 5 S.Ct. 278, 279, 28 L.Ed. 822 (1884) (admission of evidence). The utility issue presented no jury question *1258 and should have been decided as-a matter of law in DuPont’s favor. Its submission to the jury, in the circumstances of this case, requires a retrial of the validity issue. 8

Berkley concentrated its briefs and oral argument on non-utility, fraud, knowing enforcement of an invalid patent, gross negligence, inequitable conduct, and anti-competitive intent, believing, says Berkley,that that evidence shows the patent invalid. Having viewed all of the evidence on validity most favorably to Berkley, and having given Berkley the benefit of every reasonable inference, Davis v. Burlington Northern, Inc., 541 F.2d 182, 186 (8th Cir.), cert. denied, 429 U.S. 1002, 97 S.Ct. 533, 50 L.Ed.2d 613 (1976), we cannot say on this record, and in view of the errors occurring below, that Berkley carried its burden of proving the DuPont patent invalid. 9 DuPont argues for a'judgment that its patent is valid. For the reasons discussed infra, we decline to enter that judgment on this appeal. To avoid a potential miscarriage of justice, Firemans Fund Insurance Co. v. Aalco Wrecking Co., Inc., 466 F.2d 179, 187 (8th Cir. 1972), we remand for retrial of the validity issue.

B. Utility

Though the trial court instructed the jury that an invention must “operate or function in the manner claimed,” and also that an invention “need not work perfectly in order to be useful,” the treatment of the utility issue at trial, beyond any error in instructions thereon, 10 was fatally flawed.

The complaint originally asserted infringement of five claims:

1. A fishing line, formed of a synthetic plastic material, which is oriented at least to a point such that a stretching of 100% would cause the line to break, which line contains a fluorescent dyestuff, which glows on being exposed to ultraviolet light, and which rapidly ceases to glow upon removal of ultraviolet light.

2. An oriented polyamide, monofilament fishing line containing a fluorescent dyestuff which glows when exposed to ultraviolet light, which line has been stretched from 4V2 to 6 times its original length.

5. The fishing line of claim 2 in which the fluorescent dyestuff is present in from 0.05 to 0.5 wt. percent of the fishing line and is intimately mixed throughout the thickness of the said fishing line.

6. The fishing line of claim 5 in which the polyamide contains polymerized ca-prolactam.

8. The fishing line of claim 1 in which the dyestuff is distributed throughout the plastic.

It is axiomatic that “one who appropriates the teachings of a patent may not deny the utility of the invention.” Tapco Products Co. v. Van Mark Products Corp., 446 F.2d 420, 428 (6th Cir.), cert. denied, 404 U.S. 986, 92 S.Ct. 451, 30 L.Ed.2d 370 (1971); Monogram Manufacturing Co. v. Glemby, 136 F.2d 961, 963 (2d Cir.),. cert. denied, 320 U.S. 778, 64 S.Ct. 93, 88 L.Ed. 467 (1943); Kansas City Southern Railway v. Silica Products Co., 48 F.2d 503, 505 (8th Cir.), cert. denied, 284 U.S. 626, 52 S.Ct. 11, 76 L.Ed. 533 (1931). Hence, the first flaw was the failure to recognize that Berkley’s admission, that its fishing line fell within *1259 the scope of claims 2, 5 and 6, is an admission of utility in the invention there claimed and that Berkley, as an infringer, was thereby estopped from asserting that those claims are invalid for lack of utility. 11

The second flaw was the failure to recognize that the presumption of utility created by issuance of the patent, 35 U.S.C. § 282, Dashiell v. Grosvenor, 162 U.S. 425, 432, 16 S.Ct. 805, 807, 40 L.Ed. 1025 (1896); Strong-Seott Manufacturing Co. v. Weller, 112 F.2d 389, 394 (8th Cir. 1940); Metropolitan Engineering Co. v. Coe, 64 App.D.C. 315, 317, 78 F.2d 199, 201 (D.C. Cir. 1935); Superior Hay Stacker Manufacturing Co. v. Dain Manufacturing Co., 208 F. 549, 557 (8th Cir. 1913), is strengthened when others, as Berkley did here, have copied the invention, Superior Hay Stacker Manufacturing Co. v. Dain Manufacturing Co., id. at 557, and when, as it did here in both DuPont’s and Berkley’s hands, the invention has achieved commercial success, Western Electric Co. v. LaRue, 139 U.S. 601, 608,11 S.Ct. 670, 672, 35 L.Ed. 294 (1891); Continental Can Co. v. Anchor Hocking Glass Corp., 362 F.2d 123, 124 (7th Cir. 1966); Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 298 F.Supp. 435, 442 (W.D.Mich.1969), aff’d, 430 F.2d 221 (6th Cir. 1970), cert. denied, 401 U.S. 939,91 S.Ct. 932, 28 L.Ed.2d 218 (1971).

Berkley, for the first time on appeal, says its non-utility position relates to the “ceases to glow” language of withdrawn claims 1 and 8. 12 The evidence respecting utility was insufficient, however, for any purpose.

The assertion of non-utility rests on the limited excitability of fluorescent dyes by the “visible” component of sunlight; hence, says Berkley, DuPont’s line does not entirely cease to glow as long as visible light is present. Berkley then defines relative invisibility under water as less visibility than non-fluorescent line, and says DuPont’s line fails that objective because sufficient visible light penetrates clear water to excite the fluorescent dye in the line. 13

Berkley introduced photographs taken in clear water (the Crystal River and the Bermuda Triangle), and purportedly showing DuPont’s line more visible than non-fluorescent lines at depths as great as 100 feet, 14 along with narrated movies of similar scenes. Berkley’s witness Lau said DuPont’s line “glows all the way down to the bottom. ... It glows like a light bulb.” Roberts said the DuPont line was visible underwater. 15

DuPont countered with the Johnson report, comparing the relative visibility of DuPont’s fluorescent line and a similar but non-fluorescent nylon monofilament line in six different types of water, and with witnesses Shields and Cullerton, who said DuPont’s line lost fluorescence inches below the surface of Lake McBride. Johnson’s *1260 tests showed that the depth at which fluorescent and non-fluorescent lines appear identical varies from 7" for turbid seawater to more than 400" for distilled water. Dr. Johnson testified that his test results were consistent with the visibility language in the DuPont patent, which nowhere asserts that the submerged line is less visible than some other line. DuPont also introduced the McNally report, stating that DuPont’s fluorescent line and a nonfluorescent line appeared identical at a depth of 5 feet in a lake “clearer than the average fishing lake.”

Non-utility of the invention is not established by the recitation in claims 1 and 8 that the dye “rapidly ceases to glow upon removal of ultraviolet light,” when the claims are read, as they must be read, in their entirety. 16 The claims and the patent nowhere mention visible light. Ultraviolet light is the sole glow-activating agent recited. One skilled in the art, reading the entire claim, and not charged with its infringement, would find the reasonable interpretation of the functional “ceases to glow” claim limitation to be that the glow produced by ultraviolet light rapidly ceases when that light is removed.

Perfection under all conditions is not required, 17 whether the patent does or does not suggest that the invention is imperfect or inoperable under certain conditions. See Conner v. Joris, supra note 17, at 946-48; 44 CCPA at 775-76; Plant Products Co. v. Charles Phillips Chemical Co., supra note 17, at 586. Dr. Johnson’s report showed the DuPont line no more visible than non-fluorescent line under some water conditions. Berkley did not challenge those test results, but relied on ex parte tests it conducted exclusively in crystal clear water. Assuming that Berkley’s evidence establishes what it claims, i. e., that DuPoint’s line is more visible than non-fluorescent line in crystal clear water, that evidence is insufficient as a matter of law to establish non-utility. At most, it might demonstrate that DuPont’s commercial embodiment of the invention does not work perfectly under a particular condition and is thus not a model of perfection.

It is instructive on the issue of utility that any imperfections respecting some continued glow under visible light in clear water did not deter Berkley from copying *1261 the invention and selling it for over Tk million dollars during 1976-1978. 18

Thus, the issue of whether the patent was invalid for lack of utility should not have gone to the jury and should have been decided as a matter of law in DuPont’s favor. Its submission, for any purpose, constituted prejudicial error.

C. Novelty

A patent is invalid under 35 U.S.C. §§ 102(a)-102(b) 19 if the claimed invention was “known or used by others” in this country prior to the patentee’s invention or was “in public use or on sale” in this country more than one year before the application for the patent was filed. The burden of proof of a prior use is satisfied only by evidence clear, cogent, and convincing. See The Barbed Wire Patent, 143 U.S. 275, 284, 12 S.Ct. 443, 447, 36 L.Ed. 154 (1892); Julian v. Drying Systems Co., 346 F.2d 336, 338 (7th Cir. 1965); McCullough Tool Co. v. Well Surveys, Inc., 343 F.2d 381, 394 (10th Cir. 1965), cert. denied, 383 U.S. 933, 86 S.Ct. 1061, 15 L.Ed.2d 851 (1966); Atlas v. Eastern Air Lines, Inc., 311 F.2d 156, 160 (1st Cir. 1962), cert. denied, 373 U.S. 904, 83 S.Ct. 1290, 10 L.Ed.2d 199 (1963).

Oral testimony alone has been held insufficient to prove a prior use, Zachos v. Sherwin-Williams. Co., 177 F.2d 762, 763 (5th Cir. 1949). The more widespread view, however, is that unsupported oral testimony can be sufficient but must be regarded with suspicion and subjected to close scrutiny. Miner v. T. H. Symington Co., 250 U.S. 383, 386, 39 S.Ct. 542, 543, 63 L.Ed. 1045 (1919); Deering v. Winona Harvester Works, 155 U.S. 286, 300, 15 S.Ct. 118, 123, 39 L.Ed. 153 (1894); Jones Knitting Corp. v. Morgan, 361 F.2d 451, 455 (3d Cir. 1966); Becker v. Electric Service Supplies Co., 98 F.2d 366, 368 (7th Cir. 1938); Farmhand, Inc. v. Lahman Manufacturing Co., 192 U.S. P.Q. 749, 755 (D.S.D.1976), aff’d, 568 F.2d 112 (8th Cir.), cert. denied, 436 U.S. 913, 98 S.Ct. 2254, 56 L.Ed.2d 414 (1978); See The Barbed Wire Patent, supra, at 284-85, 12 S.Ct. at 447; Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 60, 43 S.Ct. 322, 327, 67 L.Ed. 523 (1923). 20

(1) The McCoy Line

In 1964, DuPont learned of a chartreuse fluorescent “Glo-Line” being sold by John McCoy in Seattle. McCoy told Greenwood, a DuPont salesman sent to investigate, that DuPont’s 1949 records should contain inquiries from McCoy respecting fluorescent dyes useful in nylon. Greenwood found a sample of DuPont fluorescent dye, dated December 1949, in McCoy’s possession. Greenwood’s call reports reflect McCoy’s allegations of having dyed nylon for over 15 years. McCoy said he had dyed yarn for lures since 1924. In a 1964 letter, McCoy said he had processed his Glo-Line since *1262 1949. He said he made chartreuse fishing line “for the last two years or longer.” In 1965, McCoy said he used the 1949 dye on lines for tying nymphs. In 1975, McCoy gave a written statement that he had first sold fluorescent fishing line in late 1964.

Five witnesses (3 live, 2 by deposition) said they had seen or sold McCoy’s fluorescent chartreuse fishing line at least once in the mid-1950’s. Kawahara said he sold it in his Seattle store before the 1958 introduction of DuPont’s non-fluorescent line. Sev-ereid said he saw McCoy’s chartreuse line in Kawahara’s store before transferring to his new office in August 1958. Sivertsen said he saw McCoy’s chartreuse line before moving into his new store in 1957. Schalkle said he saw McCoy’s chartreuse line before his transfer to a new job in 1954. Earling said he saw McCoy’s chartreuse line about the time he was married in 1954.

Thus five witnesses claiming to have seen McCoy’s chartreuse fishing line testified from memory to events of twenty years past. Though accompanied by reference to concurrent events, their testimony was inconsistent with the evidence produced by McCoy, the alleged prior user, whose one consistent indication was that his earliest claimed use of chartreuse fishing line was after Keller’s invention, and who in 1964 possessed no chartreuse dye manufactured prior to 1963. Severeid, Sivertsen, Schalkle and Earling had no corroborating documentary or physical evidence. All five witnesses said they saw only McCoy’s chartreuse line, and though all said they saw it between 1954 and 1958, Berkley declined to review McCoy’s available and offered sales records for 1952 through 1958. McCoy identified a 1964 invoice (two years after the DuPont patent issued) as representing one pf his first sales of fluorescent line. McCoy’s 1954 ad did not mention fluorescent fishing line, and his 1949 dye sample does not evidence use of fluorescent dye in a fishing line. The only physical evidence produced was a spool of line Kawahara said was one of the first he had purchased, and DuPont’s unchallenged tests proved that line had not been made prior to 1962. 21

Berkley thus failed as a matter of law to carry its burden of proving prior use by McCoy. The attempt rests solely on uncorroborated oral testimony concerning events of long ago, contradicted by McCoy himself and by unchallenged results of scientific tests. Judged by appropriate legal standards, that testimony had insufficient probative value to make out a case of prior use that a jury could have found clear and convincing. Thus prejudicial error occurred in the instruction to the jury that it could find the DuPont patent invalid as anticipated by the McCoy line.

(2) The Cohantic Line

A spool of “Cohantic” line was allegedly discovered by Berkley in a fishing line “morgue” of the Cortland Line Company in New York. Placed under a strong artificial ultraviolet light, the line gave off a faint glow, about 3% of that of DuPont’s patented line. The glow was a little more in portions of the spool that had been covered for years by a rubber band and thus protected from light and oxidation. The Co-hantic line did not glow in sunlight.

Berkley’s expert Stearns compared the glow of the Cohantic line to the inherent glow of a piece of undyed, relatively stiff, fishing leader of unknown composition. Finding a difference in spectra and intensity, Stearns concluded that the glow in the Cohantic line was caused by the presence of a “brightener,” by which he apparently meant a fluorescent dye.

DuPont’s expert Jenkins found that the glow spectra of the Cohantic line and the inherent glow of undyed line made of the same nylon were substantially identical.

DuPont’s request that we find fluorescent dye absent from the Cohantic line, and Berkley’s request that we find it present, *1263 are inappropriate at this stage. 22 The testimony is equivocal. Neither side conducted scientific tests for the presence of fluorescent dye, though DuPont says the amount, if any, would be too minuscule for scientific testing. That Stearns’ comparison line was not of the same nylon, while Jenkins’ was, that many materials (assertedly including fingernails), inherently fluoresce under strong artificial ultraviolet light, and that a protected line portion glowed more than an unprotected portion, were matters for the jury, in its evaluation of the credibility and reliability of the witnesses and their testimony.

The trial court correctly submitted the evidence of the Cohantic line to the jury. The absence of indication that the jury found the patent invalid because of the Cohantic line, the gaps and conflicts in the Cohantic line evidence, and the prejudicial errors in submission of the non-utility and McCoy line matters, all preclude a sustaining here of the jury’s invalidity verdict on the basis of the Cohantic line evidence.

D. Obviousness

As this court noted in Woodstream Corp. v. Herter’s, Inc., 446 F.2d 1143, 1149 (8th Cir. 1971), application of 35 U.S.C. § 103 23 , i.e., determination of the obviousness issue, is governed by the principles articulated by the Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 694, 15 L.Ed.2d 545 (1966):

While the ultimate question of patent validity is one of law, [Great] A. & P. Tea Co. v. Supermarket Equipment Corp., [340 U.S. 147, 155, 71 S.Ct. 127, 95 L.Ed. 162, 1955 (1950)] . . . 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. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

Though the ultimate question of obviousness is subject to evaluation on appeal, Flour City Architectural Met. v. Alpana Aluminum Products, Inc., 454 F.2d 98, 106 (8th Cir. 1972); see Sakraida v. Ag Pro, Inc., 425 U.S. 273, 280, 96 S.Ct. 1532, 1536, 47 L.Ed.2d 784 (1976); Graham v. John Deere Co., supra at 17, 86 S.Ct. at 693, we decline an independent evaluation on the present record. In the ordinary case, the appellate court has the benefit of the fact-finder’s conclusion that the invention would or would not have been obvious, and the facts and reasons underlying the conclusion. Here the jury announced no conclusion, either way. There are no findings of fact, and the trial court said it was making no determination of the question.

Even in non-jury cases, where the trial court made no findings or conclusions on obviousness, appellate courts have declined *1264 the initial determination of that question. As was said in Cloud v. Standard Packaging Corp., 376 F.2d 384, 391 (7th Cir. 1966):

But, in general, and we think in this case as well, it is sounder procedure for the initial determination to be made in the trial court. That court has advantages not only in determining credibility of those it sees and hears, but it has much greater flexibility, where it deems it desirable, to call counsel before it for colloquy, or to order supplementation of the evidence. And where the determination of this type of issue is first made in the court of appeals, there is no court where the parties can obtain review as a matter of right.

We refrain, therefore, from attempting to decide the matter at this stage, and direct further proceedings in the district court to determine the challenge to all these patents for obviousness under 35 U.S.C.A. § 103. [Footnote omitted.]

See also Kockum Industries, Inc. v. Salem Equipment, Inc., 467 F.2d 61, 64 (9th Cir. 1972), cert. denied, 411 U.S. 964, 93 S.Ct. 2140, 36 L.Ed.2d 684 (1973); Sutherland Paper Co. v. Grant Paper Box Co., 183 F.2d 926, 935-36 (3d Cir.), cert. denied, <