United States Pipe & Fdry. Co. v. James B. Clow & Sons, Inc.

• Decision Date: 19 February 1962
• Docket Number: Civ. A. No. 9813.
• Citation: 205 F. Supp. 140
• Court: U.S. District Court — Northern District of Alabama
• Parties: UNITED STATES PIPE AND FOUNDRY COMPANY, a corporation, Plaintiff, v. JAMES B. CLOW & SONS, INC., a corporation, Defendant.

205 F. Supp. 140

UNITED STATES PIPE AND FOUNDRY COMPANY, a corporation, Plaintiff, v. JAMES B. CLOW & SONS, INC., a corporation, Defendant.

Civ. A. No. 9813.

United States District Court N. D. Alabama, S. D.

February 19, 1962.

Hugh P. Carter of Jennings, Carter & Thompson, and Peyton N. Finch, Jr., Birmingham, Ala., for plaintiff.

Lange, Simpson, Robinson & Somerville, Birmingham, Ala., MacLeish, Spray, Price & Underwood, and Byrom, Hume, Groen & Clement, Chicago, Ill., for defendant.

GROOMS, District Judge.

This cause coming on to be heard on the testimony and exhibits of plaintiff's and defendant's witnesses, and on the arguments and briefs of plaintiff's and defendant's counsel; and the Court, being fully advised, enters the following findings of fact and conclusions of law:

FINDINGS OF FACT

1. This is a suit brought under the Patent Laws of the United States by the plaintiff, United States Pipe and Foundry Company, a corporation organized and existing under the laws of New Jersey, having its principal place of business in Birmingham, Alabama, against the defendant, James B. Clow & Sons, Inc., a corporation organized and existing under the laws of Delaware, having its principal offices in Chicago, Illinois, and a place of business in Birmingham, Alabama, for the infringement of United States Letters Patent No. 2,953,398, issued on September 20, 1960, on an application filed May 28, 1956, in the names of Lawrence T. Haugen and Carl A. Henrikson, assignors to the plaintiff of the entire right, title and interest in said application and patent. Plaintiff now owns, and has since its issuance been the owner of, said Letters Patent.

2. The patent in suit (No. 2,953,398) relates to pipe joints of the character used for connecting together sections of pipes, either of the bell-and-spigot type, or the plain-end type wherein a sleeve-type coupling is utilized. The invention is applicable to pipes made of metal, ceramic material, concrete, cement-asbestos, plastic, or other compositions.

3. The patent in suit discloses a joint by which pipe in size at least up to 24 inches in inside diameter may be connected to withstand pressure up to bursting strength of the pipe without machining either the bell or spigot, and by merely pushing the end of the spigot into the bell. It is especially adapted for joining pipes in which a wide range of dimensional tolerances must be accepted. The utility of the patent in suit is such that it permits the pipe to deflect in the joints after the two pieces are assembled without damage to or overstressing the gasket and without breaking the seal to the degree required in practice. The joint disclosed by this patent can be assembled with pipes positioned up to a 5 degree angle out of axial alignment to each other, without displacing the gasket; consequently, it is not necessary to prealign the pipes with any degree of accuracy. This also permits use in a curved ditch.

4. The plaintiff and the defendant are major producers of cast iron pressure pipe, and as such are competitors in the sale of same. Prior to the patent in suit both plaintiff and defendant were making and selling commercially pipe joints for joining cast iron pressure pipe known in the trade as (1) mechanical joint type, (2) flange type, (3) bell-and-spigot type, and (4) roll-on type. As shown by plaintiff's exhibit 7, the joint disclosed by the patent in suit, and referred to as push-on type, is equal or superior to the types of joint set out above in all respects except resistance to separation. The economy of manufacture, the elimination of numerous accessories, and the ease of installation by unskilled labor, all demonstrated in plaintiff's exhibit 7, have sky-rocketed sales of cast iron pressure pipe incorporating the joint of the patent in suit to a point far exceeding the combined sales of all other types of joints.

5. The plaintiff has commercialized the joint of the patent in suit under the trademark "Tyton Joint" and the joint actually commercialized is made in accordance with the form of joint shown, described and claimed in the patent, specifically Figures 1 to 4, inclusive, thereof.

6. The patent in suit shows, in Figure 6, a form of joint in which instead of having a metal ring or protuberance indicated at 9 in Figure 2 and formed of metal inside the bell, has a groove indicated at 10 in Figure 6 into which a corresponding bead formed on the gasket is adapted to seat.

7. Both of the species of the invention shown in Figures 1 to 4, inclusive, on the one hand, and that shown in Figure 6, on the other hand, operate in substantially identical manner, with substantially identical means, to achieve substantially identical results, among which may be mentioned the fact that the ridge or bead 9 in the form of Figures 1 to 4, and groove 10 and ridge 37 on the gasket in the form of Figure 6, both serve the function of holding the respective gaskets against internal movement when the spigots indicated at 2 in the drawings are pushed home in making up the joints.

8. The joint of the patent in suit, namely, the form of Figures 1 to 4 and the form of Figure 6, both seal the pipes against leakage by the rubber in the sealing part numbered, respectively, 12 in Figures 1 to 4, and 13 in Figure 6, being placed under radial compressive force upon insertion of the spigot.

9. While the application resulting in the issuance of the patent in suit was pending, the applicants Haugen and Henrikson filed in the United States Patent Office, on April 1, 1957, an application identified as Serial No. 649,746, as a continuation-in-part of the application resulting in the patent in suit. Application Serial No. 649,746 disclosed a joint for pipes and differed from the application resulting in the patent in suit in that it specifically claimed a joint in which the rubber forming the gasket was the same hardness throughout.

10. As shown by the file wrapper of the patent in suit, page 146, the Examiner required the applicants to abandon application Serial No. 649,746, for the reason that the Examiner considered the application resulting in the patent in suit to contain a disclosure of a gasket of single hardness and thereby sufficient to support claims broad enough to cover joints in which the gaskets thereof were of either single or dual hardness. The Board of Appeals of the Patent Office concurred in this holding. The Court specifically finds that the application of the patent in suit disclosed a pipe joint in which the gasket was of a single hardness rubber.

11. The defendant's joint that is accused by the plaintiff is sold under its proprietary name "Bell-Tite" and is the subject of Patent No. 2,898,131, issued on August 4, 1959 on application filed February 4, 1958, by Ralph W. Kurtz, assignor to defendant. The defendant has manufactured and marketed pipe having the Bell-Tite joint from the Spring of 1957 through September 20, 1960 (date of issue of patent in suit) and up to about November, 1960. The defendant's pipe joint during this time, and referred to hereinafter as the "old Bell-Tite", was manufactured in accordance with and in the form typified by plaintiff's exhibit 3 and Figure 1 of plaintiff's exhibit 22.

12. In about November, 1960, after this suit was filed, the defendant removed the annular ledge of metal inward of the bell having a radial face confronting the lip, and commenced to manufacture and offer for sale pipe embodying joints with a relatively open and unobstructed bell (which will hereinafter be referred to as the "new Bell-Tite"), and shown in plaintiff's exhibit 4 and Figure 2 of plaintiff's exhibit 22.

13. In both the old Bell-Tite and the new Bell-Tite joints the defendant has always used a gasket of single or monolithic hardness throughout its structure in sizes up to and including 12 inches in diameter; in both the old and the new Bell-Tite joints in sizes above 12 inches in diameter the defendant has always used gaskets therefor in which the heel or anchoring part was of harder rubber than the inner or sealing part. However, no material change was made in the gaskets for use in given sizes of the new Bell-Tite compared with those used in the old Bell-Tite; in fact, the gaskets are interchangeable, size for size, as between the old Bell-Tite and the new Bell-Tite joints. The gaskets employed by defendant in its Bell-Tite joints are material parts thereof and none of them are staple articles of commerce suitable for substantial non-infringing use.

14. After thorough examination of the physical models of the new and old Bell-Tite joints of the defendant, and after consideration of the testimony of experts on both sides, the Court concludes that the elimination of the annular ledge above referred to is the only difference between the old and the new Bell-Tite joints of the defendant, and that this elimination has no effect upon the operation, function, results obtained, or the overall efficacy of the joints manufactured and sold by the defendant. The Court further finds:

(a) That both the old and the new Bell-Tite joints are capable of sufficient deflection after assembly to perform the job at hand;

(b) That both the old and new Bell-Tite joints are capable of assembly under the degree of deflection required to do the job;

(c) That the gasket is anchored by the coaction of the rib on the front or anchoring part of the gasket with axial walls of the grooves therefor in the bells in both the old and new Bell-Tite joints in a manner adequate to assure that the gaskets do not slip inwardly of the grooves even upon insertion of the largest diameter spigot into the smallest diameter bell, throughout the permissive range of tolerances for as-cast, cast iron pressure pipe;

(d) In both the old and new Bell-Tite joints no machining of either the spigot or the bell parts is required to make a commercially practical and entirely satisfactory pipe joint for all sizes up to and including 24 inch diameter;

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