Interdynamics, Inc. v. Firma Wolf

• Decision Date: 22 January 1980
• Docket Number: Civ. No. 78-647.
• Citation: 493 F. Supp. 22
• Parties: INTERDYNAMICS, INC., et al., Plaintiffs. v. FIRMA WOLF et al., Defendants.
• Court: U.S. District Court — District of New Jersey

493 F. Supp. 22

INTERDYNAMICS, INC., et al., Plaintiffs. v. FIRMA WOLF et al., Defendants.

Civ. No. 78-647.

United States District Court, D. New Jersey.

January 22, 1980.

Pitney, Hardin & Kipp, Newark, N. J., for plaintiffs.

Kirsten, Friedman & Cherin, Newark, N. J., for defendant Trans Tech, Inc.

OPINION

BIUNNO, District Judge.

The complaint here was filed March 30, 1978, based on a claim of infringement of U.S. Patent 3,757,087, issued September 4, 1973 to Domenic Paul Edmund Barnard (hereafter, the Barnard patent or the '087 patent), and assigned to Smiths Industries, Limited (of London, England). Interdynamics holds the rights to the patent for the U.S.

The defendants are Firma Wolf, a Dutch corporation based in Rotterdam, Arend Wolf, an individual who is a resident and citizen of Holland, and Trans Tech, Inc., a New Jersey corporation based in Saddle river.

The Barnard patent covers a device designed to be attached to the inner surface of the rear window of an automobile, so constructed that by the application of voltage from the electrical system a current will flow and generate heat. This heat has the useful function of defrosting or defogging the rear window of the car under conditions of snow, ice or condensation.

Although nothing in the disclosure or claims so restricts it, the record is clear that the Barnard device is mainly intended for what may be called the "after market", i. e., to supply a device for rear window defrosting and defogging to the owners of cars purchased without such a feature. In principle, it could presumably be used as a means to provide original equipment by the auto manufacturer, but this does not appear to be its actual market.

Some brief history, noted in the record, may be observed as a matter of judicial notice. This history indicates that until relatively recent times, the manufacturers of the typical passenger car did not provide means for keeping the rear window clear of accumulations of ice, snow or condensation. In the post-war period, some manufacturers did offer, as an extra option, a rear-window defroster that made use of a fan to blow warm air along the inside surface, either employing a heating element within the blower (as in the common hair dryer) or else picking up air warmed by the car's heater and circulating it in concentrated fashion along the inner surface of the rear window. Such blower systems were also available on the accessories market, for installation by a mechanically apt owner or by a neighborhood service station.

Sometime around the later 1960's or very early 1970's manufacturers began offering electrically heated rear windshields to achieve the same purpose. So far as is known, such devices have always been, and are today, offered as optional extras. At the start, the approach used was to embed the thin heater wires within the glass of the rear window itself. Possibly due to the cost involved, the modern method is to apply stripes of electrically conducting paint to the inner surface of the rear window, probably by some glazing or bonding system, but in any event terminating in a wire connection running to a switch and then to the electrical supply (battery) of the car to provide the energy.

As the disclosure in the Barnard patent explains, devices had been made and marketed as automobile accessories which consisted of a pair of flexible, clear plastic sheets sandwiched together with a heating element between. Such devices could be attached to a rear window, as by rubber suction cups, and the terminals connected to a switch and the electrical supply. These devices suffered from various disadvantages, claimed to be overcome by the Barnard patent, such as discoloration of the plastic sheet, or the accumulation of dust and grime on the inaccessible surfaces of the rear window and the plastic sheet which faced each other, and the like.

The novel feature of the Barnard patent, as the court reads its scope, is the providing of an intermediate and partially discardable device which can be employed to attach an electrical heating element to the inner surface of the rear window itself, in a fashion such that when the application is completed the only material attached to the glass is the heating element. The end result is thus much the same as the painted electrically conductive stripes furnished as an optional extra by automobile manufacturers.

The Barnard device accomplishes this by sandwiching the complete heating element, in the physical dimensions and array intended, between two removable sheets. One sheet is a protective cover only lightly attached which can be stripped away without disturbing the arrangement of the heater stripes on the second sheet. The heater stripes themselves, which appear to be a thin aluminum or alloy foil, are provided with an adhesive coating that from observation is "pressure sensitive", in that upon being applied to the rear window, will stick to it with more adhesion (i. e., more strongly) than the temporary bond between the stripes and the second or mounting sheet. The testimony also is that this adhesive, in addition to being pressure sensitive for the initial application, is also "thermosetting", in that it is cured or hardened by the application of heat when current is passed through the stripes.

Thus, the design is that the protective sheet is first removed. Then the exposed surface is applied to the inner surface of the rear window with suitable rubbing or other pressure to cause the heater element stripes to adhere to the glass. Then the second or mounting sheet is stripped away, leaving the heater element, in its original configuration, attached to the rear window. After attaching wire connections to the switch and battery, the heater is ready for use.

At the time the complaint was filed, Trans Tech was marketing a competing product manufactured by Wolf in Holland and shipped here. That product simulated the Barnard product in that it was composed of a like "sandwich" consisting of a mounting sheet and protective sheet, with heater elements between. There the simulation ended because the Wolf product was made up of a pair of heater element stripes in a continuous roll, and not as a pre-arrayed, configurated rectangular defroster ready for application. A user of the Wolf device would be obliged, in effect, to assemble the complete configuration by applying a number of pairs of heater stripes to the rear window after cutting the roll to the requisite length, and then connecting the ends of the horizontally arrayed stripes with vertical conductors eventually leading to connectors for attachment to wires running to the switch and battery.

Trans Tech did not file an answer to the complaint. Instead, after some motions by the Wolf defendants to dismiss for lack of jurisdiction, the court was presented with a consent judgment, stipulated to by plaintiffs and by Trans Tech, conceding both validity and infringement and for entry of permanent injunction. This was filed September 6, 1978.

Thereafter Trans Tech began marketing a new product. An order to show cause to hold Trans Tech in contempt for violation of the permanent injunction was issued and a hearing thereon was held. Because of doubt in the court's mind whether the issue could be decided properly on a summary contempt proceeding, in view of differences between the admittedly infringing Wolf product and the new Trans Tech product, provision was made for discovery and plenary hearing and the issue was tried in full on the question whether the new Trans Tech product infringed any claim of the Barnard patent.¹

After full review of the testimony, exhibits and briefs submitted, the court concludes that the new Trans Tech product does not infringe any claim of the Barnard patent and that its conduct is not a violation of the permanent injunction entered by consent.

This finding and conclusion rests on the court's view that the scope of the claims of the Barnard patent is extremely narrow. The meaning of the English words in the claims cannot be read so broadly as to embrace within the patent monopoly anything already in the public domain. Old articles and known applications cannot achieve patent protection merely because of the addition of a novel and useful feature or variation. Only the novel and useful added feature or variation can come within a claim read in the context of the state of the art.²

The Barnard patent cannot be...