Taussig v. JACK & JILL ONE HOUR CLEANERS, ETC.

• Decision Date: 13 September 1978
• Docket Number: Civ. A. No. C76-159A.
• Citation: 462 F. Supp. 1026,200 USPQ 579
• Parties: Frederick TAUSSIG, Plaintiffs, v. JACK & JILL ONE HOUR CLEANERS, NO. 12, INC., et al., Defendants.
• Court: U.S. District Court — Northern District of Ohio

462 F. Supp. 1026

200 USPQ 579

Frederick TAUSSIG, Plaintiffs, v. JACK & JILL ONE HOUR CLEANERS, NO. 12, INC., et al., Defendants.

Civ. A. No. C76-159A.

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

September 13, 1978.

Carl A. Rankin, Cleveland, Ohio, Edward H. Renner, St. Louis, Mo., for plaintiffs.

Alfred D. Lobo, Cleveland, Ohio, for defendants.

MEMORANDUM OPINION AND ORDER

CONTIE, District Judge.

This is an action for alleged infringement of a United States patent. The Court having duly heard testimony and received exhibits, the following shall constitute the Court's findings of fact and conclusions of law as required by Rule 52, Federal Rules of Civil Procedure.

THE PARTIES

Plaintiff Frederick Taussig initiated this action to redress the alleged infringement of United States Letters Patent No. 3,733,267 (hereinafter the 267 patent). Said patent was issued to Gordon W. Haase on May 15, 1973, based upon an application filed April 17, 1970. Plaintiff Taussig is the owner of the 267 patent by assignment from the inventor Haase. At trial and pursuant to stipulation of the parties, Kleen-Rite/Arundale, Inc., was joined as a party plaintiff. Kleen-Rite is a Wisconsin corporation and plaintiff Taussig's exclusive licensee.

Originally plaintiff brought the within action solely against defendant Jack and Jill One Hour Cleaners No. 12, Inc. By an amended complaint filed July 16, 1976, Robert F. Giles was added as a party defendant. It appears that Jack and Jill One Hour Cleaners No. 12, Inc., is a defunct corporation and that defendant Giles is now doing business as Jack and Jill One Hour Cleaners. Defendant D. C. Filter and Chemical Inc. (hereinafter D. C. Filter) was subsequently granted leave to intervene in this action as a party defendant. D. C. Filter is a corporation duly organized under the laws of the State of Ohio with its principal place of business located in Sandusky, Ohio.

PLEADINGS

Essentially, plaintiffs assert that defendants are directly infringing the 267 patent by practicing a process for cleaning and reconstituting dry cleaning fluids which embodies every element of the patent invention. They also allege that defendant D. C. Filter has contributorily infringed the 267 patent by selling apparatus for use in practicing the patent process to defendant Jack and Jill One Hour Cleaners in violation of 35 U.S.C. § 271(c). Plaintiffs further assert that defendant D. C. Filter has actively induced infringement of the 267 patent by selling filters especially adapted for use in the patent process, by selling equipment designed to practice said process, and by advertising that its filters and equipment are substitutes for that of plaintiff and successfully practice the process of the 267 patent, in violation of 35 U.S.C. § 271(b).

The allegations of contributory infringement and inducement of infringement are not contained in plaintiff's complaint, and the Court, in its Order of August 1, 1977, denied their motion for leave to amend the complaint accordingly. In their Post Trial Brief, plaintiffs request, pursuant to Rule 15(b), Federal Rules of Civil Procedure, leave to amend the pleadings to conform to the proofs offered at trial. Upon consideration, the Court hereby grants plaintiffs leave to amend their complaint to allege contributory infringement and inducement to infringe within fifteen (15) days of the date of this Order.

Relief in the form of a permanent injunction and damages is sought by plaintiffs herein.

Defendants essentially deny the allegations of the complaint, and assert that the 267 patent is invalid and unenforceable. They allege that the process patented was anticipated by the prior art, and was in public use or on sale in the United States more than one year prior to the date of the application for the patent, in violation of 35 U.S.C. § 102(b). Further, defendants contend that the alleged invention of the 267 patent was obvious at the time thereof to a person having ordinary skill in the art to which the subject matter pertains within the meaning of 35 U.S.C. § 103. Additionally, they allege that the claims of the 267 patent are ambiguous and indefinite, and thus fail to clearly disclose and define the alleged invention within the meaning of 35 U.S.C. § 112. Further, defendants assert that plaintiffs procured the 267 patent by a lack of candor and fraudulent misconduct in the proceedings before the U.S. Patent and Trademark Office. Thus, in their counterclaim, defendants request a judgment declaring that the 267 patent is void and unenforceable, and that they have not infringed same.

By Order of July 27, 1977, the Court granted defendants' motion for a separate trial of the following issues: (a) infringement, (b) offer for sale, and sale, more than one year prior to April, 1970 filing date of the Haase patent application which issued as U.S. Patent No. 3,733,267, (c) prior public use more than one year prior to April 17, 1970, and (d) anticipation. As stated above, trial before this court was held on those issues as scheduled. Trial of the remaining issues raised by defendants was reserved until a future date.^*

JURISDICTION

The Court has jurisdiction of this action pursuant to 28 U.S.C. § 1338.

FINDINGS OF FACT

In approximately 1965 or 1966, Gordon W. Haase, a resident of Madison, Wisconsin, left his employer the Dairy Equipment Company with the idea of entering the air filtration business. Apparently by accident he attended the National Institute of Dry Cleaners Exhibition at McCormick Place in Chicago, Illinois. At that exhibition, Haase observed dry cleaning equipment utilizing a small filter to filter solvents. The display was by Frigidaire, a division of General Motors, and the filter consisted of a perforated metal cannister similar to an oil cartridge. Haase was of the opinion that the filter did not work due to the absence of flow rate ability. The constant and continuous flow of fluid through the filter is essential to the filtration of the solvents.

Upon his return to Madison, Haase attempted to do research in the area of dry cleaning filtration. His efforts, however, proved futile. Nevertheless after some contemplation, Haase built a carbon filter cartridge consisting of a perforated steel cylindrical shell with a granular carbon core. The cartridge was somewhat larger than the General Motors A/C cartridge and was put into a cannister. It was built to be piped into a regular coin operated dry cleaning machine. Haase, in fact, tested this carbon cartridge in a Chicago coin operated dry cleaning establishment. In terms of loads of clothes cleaned, Haase's carbon filter cartridge ran twice as long as the Frigidaire cartridge before losing its effectiveness or becoming plugged up and preventing the free flow of solvent. In performing these tests, Haase checked both color and flow rate. However, he was not satisfied with this improvement since the cost of operating the cartridges was too high.

In early 1966, Haase built a cartridge with only carbon impregnated paper and without a granular carbon core. Inside the cartridge was a core of perforated steel surrounded by the pleated carbon paper and an outer shell of pleated white filter paper. The test results received from this cartridge were better, and so Haase built a few more and attempted to sell them. The price of the carbon impregnated paper sold by the C. H. Dexter Company, however, became prohibitive for Haase. He felt it was not economically feasible to continue making the all paper cartridges and thus discontinued so doing.

Persisting in his endeavor, Haase proceeded to redesign his dry cleaning filter cartridge. His next cartridge consisted of a core of perforated steel surrounded by a filter bag containing granular carbon, another steel shell, and finally an outer enclosure of pleated filter paper. The filter bag, however, plugged much too quickly to be effective. Haase thus eliminated the filter bag and obtained perforated steel with finer holes. He was still not satisfied with the results obtained, however.

As stated above, Haase had been testing his filter cartridges in a coin operated dry cleaning establishment. He finally visited a commercial cleaner and found that the dry cleaning fluid was distilled after filtration in order to obtain a reconstituted solvent of sufficient quality for reuse in the cleaning process. Haase had learned that carbon removed only color from the dry cleaning solvents. Distillation was still necessary to remove nonvolatile residue or fatty acids from the dry cleaning solvents. Commercial dry cleaners, and generally not coin operated cleaning establishments, used the distillation process to clean the solvents for reuse. Distillation was, however, an undesirable process. It was not only expensive, but also was only approximately ninety percent effective in reconstituting the dry cleaning fluids. Moreover, distillation was a source of pollution and a health hazard; it also required additional labor.

The commercial dry cleaners visited by Haase were using an Olsen filter. This filter had a screen that held diatomaceous earth and activated carbon. This filter did not, however, effectively remove fatty acids from the dry cleaning solvents. Thus, as stated above, the commercial dry cleaners had to use a still in addition to the filter to satisfactorily clean the fluids.

Apparently during 1966, Haase learned a new filtering method. He heard that another individual was using powdered attapulgite clay and testing it in place of diatomaceous earth. Haase thereupon decided to test attapulgite clay for the removal of fatty acids from dry cleaning solvent. He had at some time prior thereto set as his goal the development of a no-still process for reconstituting dry cleaning solvent. In other words, Haase was determined to discover or invent a filtration process which satisfactorily cleaned dry cleaning fluids without the need for distillation so that the solvents could...