689 F.2d 334 (2nd Cir. 1982), 168, Shackelton v. J. Kaufman Iron Works, Inc.

Docket Nº:168, 434, Dockets 81-7319, 81-7347.
Citation:689 F.2d 334
Party Name:217 U.S.P.Q. 98 Cecil SHACKELTON, Carlos M. Quinones, Vivian M. Williams, Richard H. Williams, Jr., Alfred C. Williams and Raymond A. Williams, Plaintiffs-Appellants-Cross Appellees, v. J. KAUFMAN IRON WORKS, INC., and Windor Security Systems, Inc., Defendants-Appellees-Cross Appellants.
Case Date:September 14, 1982
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

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689 F.2d 334 (2nd Cir. 1982)

217 U.S.P.Q. 98

Cecil SHACKELTON, Carlos M. Quinones, Vivian M. Williams,

Richard H. Williams, Jr., Alfred C. Williams and

Raymond A. Williams,

Plaintiffs-Appellants-Cross Appellees,


J. KAUFMAN IRON WORKS, INC., and Windor Security Systems,

Inc., Defendants-Appellees-Cross Appellants.

Nos. 168, 434, Dockets 81-7319, 81-7347.

United States Court of Appeals, Second Circuit

September 14, 1982

Argued Nov. 4, 1981.

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James Reisman, Barry A. Cooper, Rackman & Reisman, New York City, for plaintiffs-appellants-cross appellees.

Robert W. Fiddler, Fiddler & Levine, New York City, for defendants-appellees-cross appellants.

Before WATERMAN, OAKES and MESKILL, Circuit Judges.

WATERMAN, Circuit Judge:

Plaintiffs-appellants (hereinafter plaintiffs or appellants) appeal from a final judgment entered in the United States District Court for the Southern District of New York, after a five day trial before Judge Thomas P. Griesa sitting without a jury. The trial judge dictated his decision, including findings of fact and conclusions of law, and ruled that appellants' patent in suit, No. 3,506,056, issued on April 14, 1970, was invalid for obviousness under 35 U.S.C. § 103. The lower court, having held the patent at issue to be invalid, declined to rule on plaintiffs' cause of action for patent infringement, which cause was dismissed. Defendants-appellees (hereinafter defendants or appellees) cross-appeal from that portion of the judgment which dismissed their counterclaim for breach of contract, which action sought repayment of royalties previously paid under an exclusive licensing agreement.

For the reasons expressed below, we hold the patent valid. Accordingly, the district court's judgment below is reversed and the cause is remanded for a finding as to the issue of infringement. We affirm that part of the lower court's judgment which dismissed the counterclaim for breach of contract.

I. The "Burglar Proof Window Grill"

Appellants' invention, the patent validity of which is in dispute, is encaptioned a "burglar proof window grill" on the patent. The invention is in the form of a slidable gate which is installed into windows in apartments and other similar residences. The purpose of the grille mechanism is to prevent illegal entry into an apartment through the window while also providing for quick egress in case of an emergency.

The trial judge notes the following background with reference to the need for such a window grille:

For some years prior to the issuance of the patent there had been a problem about security gates placed in buildings, particularly inside of doors and windows opening onto fire escapes. In view of the ever-increasing burglaries in New York City and other metropolitan areas, there was an increasing use of security gates, including gates located in doorways and windows opening onto fire escapes. It appears that most of these gates were locked with padlocks. These padlocked gates were apparently reasonably satisfactory in keeping out burglars, but they had a great disadvantage in hindering the

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egress of building occupants at times of emergency, particularly during fires. The record shows vividly that these padlocked gates were responsible for the deaths of many persons because in the panic and confusion attending a fire, the padlocks could not be opened, or the key would be lost, or some other problem would arise which made these padlocked gates barriers to the exit from the fire-stricken structure.

The State of New York responded to the grim problem of people, safe from burglars, but in danger of perishing from smoke and flames by being trapped behind a padlocked burglar-safe window. It prohibited the use of padlocked security gates in fire escape doors and windows. The gates continued to be sold, however, and were particularly popular in crime-ridden areas where occupants attached the devices themselves, in violation of the law. The lower court noted that appellees, long-time manufacturers of security gates and doors, continued to manufacture and sell such padlocked gates knowing that many would be used not for the protection of business store fronts but for apartment use.

In the 1960's New York City officials sought to stimulate ironworking and construction firms to find an alternative to the padlock gate which was resulting in the deaths of many people.

Two firemen, Cecil Shackelton and Richard H. Williams, and a "fire buff," Carlos Quinones, who had first-hand knowledge of the problem, took up the challenge and used their expertise in an attempt to develop a gate whose design characteristics would have the two-fold objective of providing protection against burglars seeking entry from the outside, and of permitting quick egress from the inside in the event of a fire. In 1967 appellants 1 developed the gate which is the basis of the present suit. They filed a patent application May 31, 1967 and began exhibiting their prototype to the New York City Fire Department and other city agencies for approval. At that time the New York Multiple Dwelling Law did not permit any gates or grilles to be placed in a window leading to a fire escape. Appellants hoped that city approval would pave the way for an amendment to the state law. When appellants' design met with praise from various city agencies, procedures were undertaken to obtain an amendment to section 53 of the New York Multiple Dwelling Law which would permit approved devices. Such an amendment was enacted on March 29, 1968. On July 25, 1968 the New York City Board of Standards and Appeals approved the gate.

In anticipation of such approval appellants in the meantime had approached appellees and had shown them the prototype. Appellees, who had been working on their own design, were favorably impressed by the prototype. Appellees abandoned their own efforts to design a new gate and entered into an exclusive licensing agreement with appellants, which agreement was dated July 21, 1968. The appellee manufacturers agreed to pay the appellant inventors a ten per cent royalty and guaranteed payment of minimum royalties of $20,000 per year. The agreement was to last for the life of any patent which might be granted but could be terminated upon sixty days' written notice by either party. The agreement noted a patent application was pending.

The burglar-proof window grille, as designed by the appellants, was essentially a basic slidable gate, commonly known as a lazy tongs gate, with close mesh grill-work similar to that found on other such security gates. The grille's locking device, however, did not involve a padlock. The gate edge contained two clasps which fitted into a latch post when closed. The latch bar is lowered by a handle which engages and locks the hasp, much like the mechanism of a gymnasium locker. The handle has a cover fitted over it. The close mesh of the gate and the cover over the handle, in conjunction with a plate at the closing edge of the gate, prevents an intruder from reaching in from the outside and opening the closed gate. When someone inside the

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apartment wishes to open the gate, the cover over the handle is lifted and...

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