B. & M. CORP. v. Koolvent Aluminum Awning Corp. of Ind.

• Citation: 257 F.2d 264
• Decision Date: 10 July 1958
• Docket Number: No. 12263.,12263.
• Parties: B. & M. CORPORATION, Plaintiff-Appellant, v. KOOLVENT ALUMINUM AWNING CORPORATION OF INDIANA, Defendant-Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals (7th Circuit)

257 F.2d 264 (1958)

B. & M. CORPORATION, Plaintiff-Appellant, v. KOOLVENT ALUMINUM AWNING CORPORATION OF INDIANA, Defendant-Appellee.

No. 12263.

United States Court of Appeals Seventh Circuit.

July 10, 1958.

Charles C. Baker, Harvey A. Grabill, Henry W. Blue, Jr., Indianapolis, Ind., Robert F. Davis, Ellsworth H. Mosher, Washington, D. C., for appellant.

William H. Parmelee, Elmer S. Utzler, Coleman Harrison, Pittsburgh, Pa., George O. Chambers, Shine & Chambers, Anderson, Ind., for appellee.

Before DUFFY, Chief Judge, and SCHNACKENBERG and PARKINSON, Circuit Judges.

PARKINSON, Circuit Judge.

This is a patent infringement suit. The patent in question, No. 2,542,919, is owned by plaintiff. It was issued February 20, 1951 on application of Dewey J. Freeman filed June 13, 1946 and will be hereinafter referred to as the Freeman patent.

The complaint sought damages for infringement and to enjoin defendant from further infringement. The defendant, inter alia, pleaded invalidity as a defense. Trial was to the court.

The District Court made extensive findings of fact and stated its conclusions of law thereon in addition to handing down a written opinion. The opinion is reported at 156 F.Supp. 691.

Judgment was entered for the defendant on the findings and conclusions that claims 1 through 10 of the Freeman patent, the only ones involved and relied upon by plaintiff, were invalid by reason of anticipation and lack of invention and, therefore, not infringed. This appeal followed.

Metal awnings of the general type here involved first came into use prior to World War II. They were then constructed of sheet steel with the "covering or roof of the awning" comprised of a number of laterally spaced plates having side flanges. The plates are in two alternating sets. The lower members are called "pans" and the upper members are called "covers". The covers with their flanges extending downward cover the area between the pans, the flanges of which extend upward. They were assembled by bolting the pans and covers together with brackets so that air and some light could pass between the flanges.

One Houseman obtained a patent on this type awning. It was later reissued and he sold manufacturing rights thereunder. About this time the name "KoolVent" was adopted.

One Babin, a predecessor of plaintiff, obtained from Houseman all manufacturing and selling rights in Louisiana. Others obtained similar rights in other states throughout the country.

Freeman was a roofer and sheet metal worker and worked with Babin on KoolVent installations prior to World War II. In making these installations it was customary to drill holes through the pans and covers and through the supporting cross members and pass bolts through these holes and thus fasten them together. This was the method in general use in the industry at that time.

During World War II, when the supply of steel became short, Babin and Freeman left the sheet metal awning business. Babin returned to the business in 1945. Freeman never returned actively but continued to be interested in the manufacture and installation aspect. He devised the construction embodied in the patent in suit. He discussed the possibility of its manufacture with Babin, who still had rights under the Houseman patent, and together they approached patent attorneys in the latter part of 1945.

Freeman filed application for the patent in suit in the Patent Office in early 1946. He assigned a part interest to Mr. Babin and Mr. Melancon, an associate of Babin's. The patent issued on February 20, 1951 and eventually all rights thereto were assigned to plaintiff.

The patent in suit provided for a clip which held the pans and covers forming the roof in place on the supporting cross members without the necessity of nuts and bolts and changing the configuration of the pan and cover flanges so they could be held in place by such clips.

In 1948 Babin and his associates circularized the industry suggesting adoption of the construction embodied in the applied for patent and offering to supply, for a price, what Babin called "patent pending clips" for such construction.

The defendant adopted the Freeman construction and has continued to use it up to the present time with the exception of a short period during 1954. At one time in 1954 the plaintiff accused the defendant of infringement. The defendant then changed to another type of clip. The evidence as to why the defendant returned to the type of clip used by plaintiff is in conflict. However, defendant did so and there is no question that defendant has infringed the patent in suit if it be a valid patent.

Defendant, under its defense of invalidity, submitted to the court below a series of prior art patents¹ and contended that these made disclosures additional to and beyond those the Patent Office had seen and considered when it granted the Freeman patent. With this the plaintiff disagreed.

Accordingly the plaintiff asserts in its brief that "the issue is whether or not the improvement over the Houseman construction that is shown and claimed in the Freeman patent is anticipated by these additional patents", or "this case turns upon the one question of whether or not the Freeman patent No. 2,542,919 (Claims 1 to 10, inclusive) is invalid by reason of anticipation by the prior art."

The District Court found that Braunstein, Bloss et al., Bloss, Tapman, Doe and Huntington in general and Bloss et al. specifically anticipated Freeman; that Bloss et al. has a clip fastener for a nonventilated roof which avoids the use of screws, bolts and equivalent fasteners the same as Freeman; that the vertical portion or shank of Bloss et al. is not as long as would be necessary for a ventilated roof but performs the same function; that the top laterally extending wings of the Bloss et al. clip overhang the side flanges of the under members just like the Freeman clip; that the Bloss et al. cover has downwardly-turned sides with inward turned lips that hook under the ends of the top laterally extending wings of the...