Airtex Corp. v. Shelley Radiant Ceiling Co., s. 75-1643
| Decision Date | 27 May 1976 |
| Docket Number | 75-1644,Nos. 75-1643,s. 75-1643 |
| Citation | 190 USPQ 6,536 F.2d 145 |
| Parties | AIRTEX CORPORATION, Plaintiff-Appellant and Cross-Appellee, v. SHELLEY RADIANT CEILING COMPANY, Defendant-Appellee and Cross-Appellant. |
| Court | U.S. Court of Appeals — Seventh Circuit |
George N. Hibben, Chicago, Ill., for Airtex.
William A. Marshall, Chicago, Ill., for Shelley Radiant.
Before CASTLE, Senior Circuit Judge, TONE, Circuit Judge, and WARREN, District Judge. *
Plaintiff Airtex Corporation (hereinafter "Airtex"), owner of U.S. Patent No. 3,698,475 relating to radiant heating and cooling panels, appeals from the judgment of the district court holding the patent invalid. Plaintiff also appeals the district court's award of expenses under Fed.R.Civ.P. 37 to defendant Shelley Radiant Ceiling Company (hereinafter "Shelley") for plaintiff's failure to answer certain of defendant's interrogatories. Defendant cross-appeals the district court's refusal to award full attorney fees under 35 U.S.C. § 285 and the district court's holding that plaintiff was not guilty of unfair competition in sending notices of infringement to several of defendant's customers.
The parties are competing manufacturers of radiant heating and cooling ceiling panels. Each ceiling panel consists of copper tubing bent into a serpentine shape and metallurgically bonded by soldering to the unexposed side of a thin flat aluminum sheet. Several panels are fitted together and installed as a ceiling in a room with the copper tubing interconnecting to form an integrated network. By circulating heated or cooled water through the copper tubing, the room in which the panels are installed can be either heated or cooled, respectively, by means of radiant energy.
Heating and cooling through radiant energy is accomplished by the transfer of energy from warmer objects to cooler objects. When used to cool a room, cooled water is circulated through the copper tubing of the panels. The water cools the tubing and in turn the aluminum panels to which the tubing is attached. The cooled aluminum panels in turn absorb the radiant energy, i. e. the warmth, from objects in the room. Conversely, when used to heat a room, heated water is circulated through the tubing which in turn warms the aluminum sheet. The warmth from the aluminum is then radiated into the room and transferred to less warm objects.
The concept of radiant heating and cooling predated the creation of the patented panel involved in this appeal. Long before copper tubing was metallurgically bonded to aluminum sheets, it was mechanically attached by way of metal clips or snaps. The capacity of these standard "snap-on" panels to cool a room was, however, quite limited. Because the mechanical bond between the tubing and the aluminum sheet was not sufficiently uniform and strong enough, energy was lost due to the uneven contact between the tubing and aluminum. This insufficient contact did not harm the panel's capacity to heat since the problem could be overcome by simply increasing the temperature of the water circulated through the tubing. However, when used to cool, the answer to the problem was not as simple; the temperature of the water could not be further lowered to compensate since once the temperature dipped below the dew point of the air around the panel, condensation would occur and the panels would drip. Thus, the "snap-on" panel's commercial marketability was hindered by its limited cooling capacity.
Airtex manufactured and marketed these standards "snap-on" panels pursuant to the Baran patent (U.S. Patent No. 2,818,235) which it had previously acquired. Airtex, recognizing the limited marketability of the standard "snap-on" panel, desired to market a better panel the cooling capacity of which would be as sufficient as the heating capacity of the standard panels.
Beginning in the mid-1950's, Airtex sought to develop a "high performance" panel, i. e. a panel that would overcome this cooling limitation. 1 To achieve this goal, Airtex immediately realized that the tubing and sheet would have to be joined in a manner that would achieve the greatest possible uniform contact between them. In its search for a high performance panel, Airtex solicited the aid of, among others, Edward G. Beck, Jr., an engineer employed by the Stolle Corporation, and the Kawneer Corporation, manufacturer of standard "snap-on" panels for Airtex.
During 1961 and 1962, upon the request of Airtex, Beck developed and produced sample panels comprised of two aluminum sheets joined together with the water passages integrally formed in one sheet. Despite satisfactory performance tests, this project was abandoned by Airtex when corrosion problems occurred in the water passages of the panels. Beck continued, however, to experiment in developing a high performance panel that would overcome the corrosion problem.
Meanwhile, some time in 1960 or 1961, Airtex turned to Kawneer Corporation for assistance in the attainment of its quest for a high performance panel. At that time Kawneer was a manufacturer of standard "snap-on" panels for Airtex. Airtex requested Kawneer to develop a high performance tube-on-sheet radiant panel. Over the period encompassing the years 1961 to 1964, Kawneer developed a high performance panel in which copper tubing was adhesively secured to an aluminum sheet by an epoxy resin. These resin-bond panels performed satisfactorily in heating and cooling tests. Airtex found the panel to be feasible but nevertheless hesitated to commit itself and accept these panels as the answer to its search.
Contemporaneous with the developments at Kawneer, Beck pursued his work toward development of a high performance panel using a metallurgical bond to join the two components of the panels. To avoid the corrosion problem encountered by another in "all-aluminum" tube-on-sheet panels, Beck substituted copper tubing for the aluminum tubing. Encountering his own problems in soldering the two metals together, Beck experimented with various thicknesses of aluminum and copper tubing, types of flux, solder compositions, and alloy-plated aluminum sheets. Finally, some time between late 1964 and the middle of 1965, Beck reduced to practice a high performance tube-on-sheet radiant panel composed of copper tubing soldered to a sheet of aluminum.
Three separate patents in connection with this panel were issued to Beck: one for the process, one for the apparatus, and one for the product itself. 2 Of these three, only the product patent is in suit and before us on appeal. The Beck product patent is entitled "Flat Sheet of Metal Having an Elongated Member Secured Thereto" and describes a radiant panel composed of the following preferred embodiments: a flat sheet of aluminum of a thickness of 0.040 of an inch and copper tubing having an 0.50 of an inch inside diameter and a wall thickness of 0.028 of an inch. The solder used in joining these two elements is described as consisting of a composition of 91 percent tin and 9 percent zinc using a flux under the trade-name ALCOA No. 62. The patent states that the assembled panel "will possess" an "excellent joint bond" from the mechanical standpoint and the heat transfer standpoint. That patent further states that the aluminum sheet will retain its high degree of flatness without distortion.
The Beck patent, therefore, attempts to cover not only a functional relationship of parts but also an esthetic aspect since a flat appearance is essential for commercial acceptance of the panels for use as a ceiling. As Airtex points out, not only must there be a strong solder bond to insure a long life for the panels, but the thin aluminum sheet must also be flat when the ceiling is installed and remain flat during the operation of the ceiling heating and cooling system.
Subsequent to the issuance of the Beck patent, Shelley developed, manufactured, and began marketing a radiant heating and cooling ceiling panel of its own. Shelley's panel also consisted of copper tubing metallurgically bonded to a flat thin aluminum sheet as was Beck's panel. Prior to this and contemporaneous with its marketing of the soldered tube-on-sheet panel, Shelley also marketed a standard "snap-on" panel.
Learning of Shelley's marketing of both panels, Airtex mailed notices of infringement to sixteen of Shelley's customers and thereafter filed suit for infringement of both the Beck and Baran patents.
Shelley defended the suit on the ground that the Beck patent was invalid due to obviousness under 35 U.S.C. § 103. Shelley further maintained that the Beck panel had been placed "on sale" more than one year before the patent was applied for in violation of 35 U.S.C. § 102(b). Finally, Shelley argued the Beck patent was invalid under 35 U.S.C. § 112 for lack of specificity of its claims. With regard to Airtex's charge that it infringed the Baran patent, Shelley denied infringement and contended that the Baran patent was nevertheless unenforcible because of Airtex's "unclean hands."
Shelley also pleaded three counterclaims. The first counterclaim charged Airtex with unfair competition. The second charged price discrimination under 15 U.S.C. § 13, and the third charged antitrust violations under 15 U.S.C. §§ 15 and 26. Airtex denied all three charges in its reply.
The third counterclaim was severed before trial and the second counterclaim was dismissed with prejudice during trial after Shelley sought its voluntary dismissal.
After a seven-day trial, the district court held the Beck patent invalid due to obviousness, lack of specificity, and prior sale of the panels. The court further held that Shelley had infringed the Baran patent but that any infringement was de minimis and did not warrant an award of attorney fees. With respect to Shelley's remaining counterclaim charging Airtex with unfair...
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