Glaros v. HH Robertson Co.

• Citation: 600 F. Supp. 342
• Decision Date: 14 November 1984
• Docket Number: No. 79 C 1803.,79 C 1803.
• Parties: Emanuel M. GLAROS, Plaintiff, v. H.H. ROBERTSON COMPANY, a Pennsylvania corporation, and Inryco, Inc., a Delaware corporation, Defendants.
• Court: U.S. District Court — Northern District of Illinois

600 F. Supp. 342

Emanuel M. GLAROS, Plaintiff, v. H.H. ROBERTSON COMPANY, a Pennsylvania corporation, and Inryco, Inc., a Delaware corporation, Defendants.

No. 79 C 1803.

United States District Court, N.D. Illinois, E.D.

November 14, 1984.

William J. Harte, Lawrence Stanner, Chicago, Ill., for plaintiff.

William Marshall, Nate Scarpelli, Merriam, Marshall & Bicknell, William Marshall Lee, William Marshall Lee, Jr., Lee & Smith, Chicago, Ill., for defendants.

MEMORANDUM OPINION AND ORDER

WILLIAM T. HART, District Judge.

Plaintiff Emanuel M. Glaros filed this action against defendants H.H. Robertson Company ("Robertson") and Inryco, Inc. ("Inryco"), alleging that they had willfully infringed U.S. patent No. 3,535,844 issued to him on October 27, 1970 (the "Glaros patent") covering a type of structural panel (the "Glaros panel") used in the construction of steel frame buildings. The defendants have responded by denying the charge of infringement and asserting that the Glaros patent is invalid. During the pendency of this action before Judge Roszkowski, the defendants moved for summary judgment, arguing that the prior art anticipated the Glaros patent, 35 U.S.C. § 102, and, alternatively, rendered it obvious. 35 U.S.C. § 103. Judge Roszkowski denied the motion, as questions of fact existed regarding the scope and content of the prior art, which could only be resolved with the aid of expert testimony. Glaros v. H.H. Robertson Co., 79 C 1803, Slip at p. 5 (N.D.Ill. Sept. 17, 1981). After further discovery and the entry of a final pretrial order on April 22, 1982, the case was set for trial before Judge Roszkowski.

After transfer to this Court's trial calender, the parties requested further discovery. Discovery reopened for a short period on September 14, 1983, pursuant to an agreed schedule. The parties supplemented the pretrial order and the case was returned to the trial calendar on December 23, 1982. On February 22, 1984, the defendants filed a renewed motion for summary judgment on the issue of obviousness, based on the deposition testimony of plaintiff's expert, Dr. Larry D. Luttrell. That motion is the matter currently before the Court.

In light of the parties' varying views on the application of the standards for summary judgment contained in Fed.R. Civ.P. 56 to the issue of obviousness, some preliminary discussion is in order. The United States Court of Appeals for the Federal Circuit has repeatedly accepted the propriety of granting summary judgment on the issue of obviousness. E.g., Peterson Mfg. Co. v. Central Purchasing, Inc., 740 F.2d 1541, 1546 (Fed.Cir.1984); Union Carbide Corp. v. American Can Co., 724 F.2d 1567, 1571 (Fed.Cir.1984). Whether an invention is or is not obvious in light of the prior art is a legal question to be determined by the Court. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1535 (Fed. Cir.1983).

This legal determination is based upon the subsidiary factual inquiries identified in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966).

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.

383 U.S. at 17, 18, 86 S.Ct. at 693, 694. The Federal Circuit has repeatedly reaffirmed the necessity of pursuing these factual inquiries to provide a basis for determining obviousness. See, e.g., Jones v. Hardy, 727 F.2d 1524, 1528 (Fed.Cir.1984). The Federal Circuit has also repeatedly emphasized the importance of the inquiry into secondary considerations, such as the commercial success of the invention and the prior failure of others, as the strongest precaution against judging an invention from the perspective of 20/20 hindsight. See, e.g., Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1549 (Fed.Cir.1983); W.L. Gore & Associates, Ltd. v. Garlock, Inc., 721 F.2d 1540, 1553 and 1555 (Fed.Cir. 1983).

Glaros has chosen to rely almost exclusively upon such secondary considerations in his opposition to the defendants' motion. Since Glaros does not take issue with the defendant's presentation of the remaining three predicate inquiries (with one important exception discussed below), the defendants' evidence on these issues is uncontroverted.¹ Glaros does present the opinion of Dr. Luttrell that the Glaros patent was not obvious in light of the then available prior art. But this conclusory opinion as to the legal issue to be decided sheds no light on the underlying factual issues, and so cannot create a material issue of fact precluding summary judgment. Peterson Mfg., 740 F.2d at 1547-48. See also Union Carbide, 724 F.2d at 1573. Therefore, the Court turns to these factual inquiries, allowing the plaintiff the benefit of all favorable inferences, as must be done on a motion for summary judgment. The uncontroverted evidence presented by the parties on these issues reveals the following.

THE GLAROS PATENT

The Glaros patent contains three claims relevant to this action. First, the Glaros patent claims a unitized structural panel composed of two sheets of some rigid material (normally sheet metal) or "skins," forming "a box-like configuration" and filled with an insulating material, or "insulant," which adheres to these exterior skins (see Figure 1). Both side edges of each panel must form a weathertight interlocking joint when combined with adjoining panels. To provide such an interlock, the Glaros panel utilizes a "double tongue and groove" joint in which each side edge contains both a "tongue" and a "groove" that engage the corresponding tongue and groove of the adjoining panel. The Glaros tongue is a "boxed tongue." Rather than a tongue made solely of a single thickness of the sheet metal by making a single bend in the skin, this boxed tongue is made with a double bend, so that it consists of two thicknesses of the sheet metal skin reenforced by the insulant enclosed within the "box." This claim, Claim No. 1, comprises the basic invention. By virtue of its unitized construction this panel allows for one step installation onto the supporting framework of a building. Its double tongue and groove interlocking joint forms a weathertight joint between panels.

The Glaros patent lists as its second claim a panel with a particular version of this double tongue and groove interlock. In this version, the front and back skins are "offset" so that the tongue on each side edge protrudes beyond the sides of the groove on that same side (see Figures 2 and 3). The purpose of this modification is twofold. First, a fastener, such as a bolt or screw, may be inserted through the back skin and the elongated tongue that results from the offset. When interlocked with the corresponding groove of the panel that has been fastened to the building's frame, the protruding tongue of the adjoining panel hides the fastener, providing a smooth front. Second, and perhaps more important, the offset eliminates any direct contact between the front and back sheets of the structural panel, improving the insulating properties of the panel. Since the front and back sheets of the panel are ordinarily made from some type of sheet metal, which freely conducts heat or cold, any direct contact allows heat or cold to pass more easily through a wall of panels.

The third relevant claim of the Glaros patent is a panel, as described in Claim No. 1 and filled with rigid foam insulant. Use of rigid foam insulant allows one step fabrication of the Glaros panel by applying liquid insulant to the metal skins. The liquid then expands to fill the interior of the panel.

THE PRIOR ART

The defendants rest their obviousness argument on two alternative panel designs, which became part of the prior art in 1936 and 1947, respectively. They suggest that either of these panels, when modified to account for subsequent advances in metalforming technology and the invention of rigid foam insulants, rendered the Glaros patent obvious. The later of these enhancements in the art occurred in 1963; roughly five years prior to the date Glaros "invented" his panels.

The first panel design is disclosed in U.S. Patent 2,047,154 issued during 1936 to Carl J. Pimsner (alternatively the "Pimsner patent" or the "Pimsner panel"). Pimsner's panel was designed to insulate devices such as industrial ovens, driers or refrigerators which maintain a high temperature differential between their interior and exterior.² The Pimsner patent discloses a panel composed of two sheet metal skins joined by narrow metal cross members to form a box-like configuration filled with a loose insulant such as rock wool or fiberglass. The Pimsner panel side edges are formed in an offset double tongue and grove interlock configuration (see Figure 4). The tongue portions of the Pimsner panel interlock are not "boxed tongues" as are Glaros', but rather tongues composed of a single thickness of sheet metals. The front and back skins of the Pimsner panel are also offset to provide both a space through which a fastener may be inserted and a gap to prevent direct heat exchange between the front and back skins. However, the offset is created by recessing rather than protruding the tongue of each side edge.

The second panel noted by the defendants is the Fenestra Type C Building Panel (the "Fenestra panel"). This unpatented design became part of the prior art when produced and marketed by the Detroit Steel Products Company in 1947. The Fenestra panel consists of two sheet metal skins formed into a box-like...