Briggs v. M & J Diesel Locomotive Filter Corp.

• Decision Date: 05 April 1965
• Docket Number: No. 14683-14685.,14683-14685.
• Citation: 342 F.2d 573
• Parties: Southwick W. BRIGGS and Stone Filter Company, Incorporated, Plaintiffs-Appellees, v. M & J DIESEL LOCOMOTIVE FILTER CORP., Defendant-Appellant. Southwick W. BRIGGS and Stone Filter Company, Incorporated, Plaintiffs-Appellees, v. SUPERIOR DIESEL FILTER COMPANY, Barbara A. Giacobbe (nee Bair), Clara A. Bair, Irwin R. Bair and Dorothy Bair Nichols, Defendants-Appellants. Southwick W. BRIGGS and Stone Filter Company, Incorporated, Plaintiffs-Appellees, v. ALLIED FILTER ENGINEERING, INC., Defendant-Appellant.
• Court: U.S. Court of Appeals — Seventh Circuit

342 F.2d 573 (1965)

Southwick W. BRIGGS and Stone Filter Company, Incorporated, Plaintiffs-Appellees, v. M & J DIESEL LOCOMOTIVE FILTER CORP., Defendant-Appellant.

Southwick W. BRIGGS and Stone Filter Company, Incorporated, Plaintiffs-Appellees, v. SUPERIOR DIESEL FILTER COMPANY, Barbara A. Giacobbe (nee Bair), Clara A. Bair, Irwin R. Bair and Dorothy Bair Nichols, Defendants-Appellants.

Southwick W. BRIGGS and Stone Filter Company, Incorporated, Plaintiffs-Appellees, v. ALLIED FILTER ENGINEERING, INC., Defendant-Appellant.

Nos. 14683-14685.

United States Court of Appeals Seventh Circuit.

March 10, 1965.

Rehearing Denied April 5, 1965.

Edwin A. Rothschild, Edward W. Osann, Jr., James M. Goff, Phillip H. Mayer, Richard Harris and Gerald J. Sherman, Chicago, Ill., Sonnenschein, Levinson, Carlin, Nath & Rosenthal, Wolfe, Hubbard, Voit & Osann, Chicago, Ill., of counsel, for appellants.

Walther E. Wyss, Robert L. Rohrback, and M. Hudson Rathburn, Chicago, Ill., Mason Kolehmainen, Rathburn & Wyss, Chicago, Ill., of counsel, for appellees.

Before DUFFY, CASTLE and SWYGERT, Circuit Judges.

CASTLE, Circuit Judge.

Southwick W. Briggs and Stone Filter Company, Incorporated, (Stone) plaintiffs-appellees, the owner and licensee, respectively, of Briggs Patents Nos. 2,395,449 and 2,919,807¹ brought suits in the District Court charging each of the defendants-appellants² with infringement of certain claims of the patents³ and seeking injunctive relief and damages. The defendants denied infringement and asserted invalidity of the patents. The three actions were consolidated for trial.

Following a trial before the court without a jury, the District Court filed a memorandum of decision incorporating its findings of fact and conclusions of law. The court held the patent claims in suit valid and infringed and entered judgment orders granting injunctive relief against infringement of the designated claims of the '807 patent and decreeing that damages would be assessed for infringement of all of the claims in suit in an amount to be determined at a further hearing. The defendants appealed.

The main issues presented by the defendants' contentions on appeal are:

(1) Whether the District Court erred in finding and concluding that the claims in suit of the \'807 patent (a) were valid as meeting the definiteness requirements of Section 112 of the Patent Act; (b) were not anticipated in the prior art; and (c) were infringed by the accused device.

(2) Whether the court erred in finding and concluding that the claims in suit of the \'449 patent (a) were not anticipated in the prior art; (b) were not invalid for double patenting; and (c) were infringed by the accused device.

Insofar as the detailed findings of the court concern factual issues such as the use made of prior art, the nature of the improvement made over prior art, the characteristics and operational functions of the patented structure and the accused device, and the method employed in the production of the accused device, Rule 52(a) of the Federal Rules of Civil Procedure (28 U.S.C.A.) applies. The court heard the testimony of expert witnesses in connection with these matters. The scope of our review of such findings is therefore limited to a determination of whether or not they are "clearly erroneous". Armour & Co. v. Wilson & Co., 7 Cir., 274 F.2d 143, 156; Minnesota Mining and Mfg. Co. v. Technical Tape Corp., 7 Cir., 309 F.2d 55, 57; Aerosol Research Company v. Scovill Manufacturing Co., 7 Cir., 334 F.2d 751, 753. If they find support in the evidence we are bound thereby and there remains but the question of whether or not the court applied the correct legal criteria in reaching the ultimate conclusions it did.

The record discloses that the accused device is a pleated paper filter designed and used for filtering the lubricating oil in diesel locomotives. It is about thirty inches in length and employs corrugated, resin impregnated, radially pleated, paper wrapped around a perforated center tube or core of metal. The corrugations or ribs extend radially of the core to form well defined grooves. The outer edges of the pleats are bonded with a thermosetting adhesive to an outer permeable perforated paper cover. The inner edges contact each other and the core. In the manufacture of the filter at the Allied plant the resin impregnated, corrugated filter paper is fed from rolls to a Chandler pleater, a commercial paper pleating machine. The pleated paper is passed through a curing oven which cures or sets the resin in the paper and it is then cut. A flat, perforated cover sheet is coated with thermosetting adhesive and placed over the edges of the pleats. This assembly is then placed under a flat heated platen which presses the cover sheet against the pleated paper while heating and setting the adhesive so as to bond the cover sheet to the pleated paper. The assembly is then folded around a center tube, adhesive is applied to the overlapping portions of the cover sheet, and the unit is then passed through a rigid side-seam sealer tube containing a heating element to set the adhesive of the cover seam to form a tubular assembly. End caps are then affixed.

The '807 patent is addressed to what is described therein as the problem encountered in filters utilizing pleated filter paper produced by commercial paper pleating machines. The patent recites that substantially all such machines produce variations in the depths of the pleats, although the pleats projecting in the same direction have peaks lying substantially in a single plane. The problem encountered is described as the tendency of adjacent pleats to stick together with the consequence that effective filter surface diminishes to a point where it is inadequate to cope with the conditions for which the filter was designed. The claims in suit read:

"4. A filter comprising a permeable impregnated paper filter element having axial pleats with walls of unequal depths defining a plurality of inner and outer peaks, said outer peaks being spaced apart and lying substantially in a cylinder, a substantially uniformly permeable core disposed within said element for engagement with said inner peaks, an annular cover member permeable substantially throughout its length embracing said outer peaks throughout their length, and an adhesive bonding said cover member to said outer peaks.

* * * * * *

"6. A filter as set forth in claim 4 wherein said adhesive is thermosetting.

* * * * * *

"8. A filter as set forth in claim 4 wherein said walls are under stress.

"9. A filter as set forth in claim 4 wherein said inner peaks engage said core and certain of said walls are bowed.

"10. A method of maintaining adjacent pleats of an annular filter element in spaced relationship comprising circumscribing said element with a cover member and simultaneously shrinking said cover member about and bonding it to peripheral portions of said pleats.

"11. A method as set forth in claim 10 wherein said shrinking and bonding are effected at a superatmospheric temperature."

Claims 10 and 11 of the '807 patent are directed to a method of making filters using a simultaneous shrinking and bonding process to maintain adjacent pleats of an annular filter element in spaced relationship. Claims 4, 6, 8 and 9 are directed to the filters manufactured by this method using a paper filter element having axial pleats with walls of unequal depths.

The '449 patent relates to a filter element for use in tubular filters for oil and other liquids. The filter element is of material, folded or pleated, and having grooves extending radially of the pleats to provide passage for the flow of the liquid being filtered even though the pleats or folds are in contact with each other. It thus insures effective use of the maximum area of filtering surface. Claims 9, 10, 11 and 12 of the '449 patent are directed to a filter element in the form of a tubular body comprising a web of grooved or ribbed filter material, including cellulosic filter material or cellulosic wadding, folded to extend back and forth between the inner and outer peripheral surfaces of the tubular body, with the folds of the web at the inner surface of the tubular body being juxtaposed and in contact with each other. The grooves in the material or the space formed by the contacting ribbing provide a passage for the flow of liquid between the contacting pleats or folds.

The District Court found, in substance, that the invention of the '807 patent is the securing of the outer peaks of the pleats to the cover by adhesive bonding, where the walls of the pleats are of such unequal length that the shorter pleats would not ordinarily engage the cover, by shrinking the cover about the pleats while bonding it and thereby bringing the cover and its adhesive layer against the outer peaks of the shorter pleats while bowing or stressing the longer pleats, thus achieving the desired bonding of all pleats and the elimination of the problem incident to pleat collapse — the tendency of adjacent paper pleats to stick together.

The District Court found, in substance, that the novel element of the '449 patent is the use of grooves, or ribbing to form grooves, in folded or pleated filter material which permit fluid flow in the areas of contact which otherwise would have stopped or impeded utilization of such areas for effective filtering.

Defendants assail the court's findings and conclusions with respect to the '449 patent and concerning its infringement by defendants' filters on the grounds that grooves formed by ribbing were obvious in view of prior art disclosures anticipating the passage function of such grooves; that the claims in suit are invalid for double patenting for the reason that Briggs' earlier but copending Patent No. 2,321,985 disclosed "well defined" grooves or channels in filter material, including cellulose wadding; that lack of utility or usefulness is established by lack of commercialization of the design;...