Amerace Corp. v. Ferro Corp.

• Decision Date: 07 January 1982
• Docket Number: Civ. A. No. CA-3-79-1184-D.
• Citation: Amerace Corp. v. Ferro Corp., 532 F.Supp. 1188, 213 USPQ 1099 (N.D. Tex. 1982)
• Parties: AMERACE CORPORATION, Plaintiff, v. FERRO CORPORATION, Defendant.
• Court: U.S. District Court — Northern District of Texas

532 F. Supp. 1188

213 USPQ 1099

AMERACE CORPORATION, Plaintiff, v. FERRO CORPORATION, Defendant.

Civ. A. No. CA-3-79-1184-D.

United States District Court, N. D. Texas, Dallas Division.

January 7, 1982.

COPYRIGHT MATERIAL OMITTED

Ronald A. Sandler, Epton, Mullin, Segal & Druth, Ltd., Chicago, Ill., B. Thomas McElroy, McElroy & Boyd, Dallas, Tex., for plaintiff.

Eben G. Crawford, Squire, Sanders & Dempsey, Cleveland, Ohio, V. Brian Medlock, Richards, Harris & Medlock, Dallas, Tex., for defendant.

FINDINGS OF FACT AND CONCLUSIONS OF LAW

ROBERT M. HILL, District Judge.

This cause came on for consideration before the Court without a jury on the liability issue only, the Honorable Robert M. Hill, United States District Judge, presiding. After considering all the evidence and the arguments of counsel the Court makes the following findings of fact and conclusions of law.

Findings of Fact

1. The plaintiff, Amerace Corporation (Amerace), is a corporation organized under the laws of the State of Delaware and has its principal place of business in New York City, New York.

2. The defendant, Ferro Corporation (Ferro), is a corporation organized under the laws of the State of Ohio and has its principal place of business in Cleveland, Ohio. Ferro has a regular and established place of business in the Northern District of Texas.

3. This is an action for infringement of U.S. patent No. 3,332,327 ('327 patent), and specifically claims 1 and 13 of the '327 patent. The subject of the '327 patent is a pavement marker. Amerace is the owner of the '327 patent and it asserts that by manufacturing and selling pavement markers pursuant to Ferro's U.S. patent No. 4,076,383 ('383 patent), Ferro infringed the '327 patent both literally and under the doctrine of equivalents. Amerace seeks an injunction against further infringement at this time. Ferro denies infringement and counterclaims that in the event infringement is found, the '327 patent is invalid because it fails to adequately describe or claim the invention under 35 U.S.C. § 111 and § 112.

4. The subject of the '327 patent is a pavement marker which reflects a portion of a vehicle's headlight illumination back to the operator of the vehicle. The marker functions primarily at nighttime.

5. The essence of the Amerace marker, as determined in Amerace Esna Corp. v. Highway Safety Devices, Incorp., 330 F.Supp. 313 (N.D.Tex.1971), is a reflector system which resists optical deterioration arising out of the accumulation of light transmission impeding film from dirt, oil, etc., as well as mechanical abrasion by passing roadway traffic. This is accomplished by a plastic shell with a reflector system on the inside face together with an angle of the front face which is small enough to permit adequate wiping of the reflector's front face by contact with the tires of oncoming vehicles yet large enough to reduce optical deterioration of the front face resulting from abrasion of the face by contact with vehicle tires. To obtain optimum results with respect to optical effectiveness and adequate wiping, the front face should be angled at approximately 30°.

The reflective function of the marker is achieved by means of "cube corner" type reflector elements located on the inside face of the shell. Incident light, such as that from an approaching vehicle, is refracted at the inclined front face of the marker, and then reflected from the element's three faces thereby leaving the marker in a direction opposite from and generally parallel to its direction of incidence. This is known as "retroreflection." Figure 1 illustrates how triple mirror reflectors retroreflect incident light:

When a ray of incident light strikes one of three adjoining reflective faces (A) arranged at right angles to each other ...

then to the third face (C) ...

the ray is reflected to the second face (B) ...

and returned to its source in a direction parallel to its original or direction of incidence.

6. Claim 1 of the '327 patent defines the basic structure of the marker as having a base to be affixed to the roadway with a body of light transmitting synthetic resin having reflective elements. The reflective elements have certain structural details for receiving incident light emanating from the source, e.g., headlights of a vehicle, and reflecting the light back toward the source so that the reflected light is generally parallel to the incident light. Claim 1 further specifies that the obverse or front face of the reflector body is positioned at a minimum angle of 15° relative to the associated base and roadway to maintain adequate optical effectiveness of the marker while allowing wiping of the front face by contact with the tire of an oncoming vehicle. The reflecting elements in Claim 1 are referred to as cube corner type reflecting elements and those elements are described as having three planar surfaces arranged mutually at right angles and meeting at a common point or apex remote from the obverse face to form a cube corner. An axis passes through the cube corner of each reflector element, the reflector elements being oriented such that each cube corner axis makes an acute angle with the normal (an imaginary line which is perpendicular to the front face) to the obverse face to align the cube corners to reflect the refracted light generally parallel to the direction of incident light. No specific shape or size is ascribed to the face of the reflector elements.

7. Claim 13 of the '327 patent specifies inter alia that the marker has a unitary molded shell of light transmitting synthetic resin of which the reflector portion is formed as a part thereof. The claim includes the limitation that there is a light reflecting material on at least the reflector portion and a filler material inside the shell. Claim 13 specifies a preferred front face angle of about 30° and a reflecting system which consists of a plurality or array of light reflecting elements each having three planar surfaces arranged mutually at right angles and meeting at a common point remote from the obverse face to form a cube corner. The axis which passes through the cube corner of each reflecting element is at an angle with the normal to the obverse face to allow the reflecting elements to receive light emanating in a generally horizontal direction from the oncoming vehicle and to reflect such light generally parallel to the direction of incidence.

8. On February 1, 1967, the Patent Examiner "rejected as indefinite" certain claims of the '327 patent application, which read in relevant part:

a triple mirror reflex reflecting system in said reverse light receiving and reflecting face.

Claim 5 of the patent application was accordingly amended and accepted by the Patent Examiner, and became Claim 1 of the '327 patent. The amendment specified:

a reflex reflecting system including a plurality of retrodirective reflector elements of the cube corner type in said reverse face for receiving light emanating from the vehicle and incident upon said obverse face in a generally horizontal direction of incidence and reflecting such light to return the light generally parallel to the direction of incidence.

Similarly, the Patent Examiner rejected the description in claim 5 of the patent application, which recited:

said acute angle being great enough to reduce optical deterioration of said obverse face arising out of contact with the oncoming vehicle while being small enough to allow adequate wiping of said obverse face by such contact ....

The Patent Examiner rejected this proposal because "the angle designated ... is recited in terms of desired result and is objectionable." The inventor, Sidney Heenan, thereafter substituted the objectionable description with the following one:

said obverse face making an acute angle of at least 15° with the base to rise above the roadway surface upon which the pavement marker is to be installed for maintaining adequate optical effectiveness of the pavement marker during service while allowing wiping of said obverse face by contact with the oncoming vehicle....

9. The '327 patent was issued on July 25, 1967. Several years later, this Court determined in a patent infringement suit brought by Amerace against a different defendant that the '327 patent is not obvious and is valid. Amerace Esna Corp. v. Highway Safety Devices, Incorp., 330 F.Supp. 313 (N.D.Tex.1971).

10. After receiving its own patents, Ferro in 1979 began manufacturing and selling reflective pavement markers.

11. Amerace charges that the Ferro markers literally infringe Claim 1 and Claim 13 of the '327 patent. Claim 1 specifies:

In a pavement marker for providing a marking on a generally horizontally directed roadway surface, the marking being visible from an oncoming vehicle on the roadway:

a generally horizontal base adapted for engagement with said roadway surface;

a body of light transmitting synthetic resin having an outer surface including an obverse light receiving and refracting face and an inner surface including a reverse light receiving and reflecting face;

a reflex reflecting system including a plurality of retrodirective reflector elements of the cube corner type in said reverse face for receiving light emanating from the vehicle and incident upon said obverse face in a generally horizontal direction of incidence and reflecting such light to return the light generally parallel to the direction of incidence;

said obverse face making an acute angle of at least 15° with the base to rise above the roadway surface upon which the pavement marker is to be installed for maintaining adequate optical effectiveness of the pavement marker during service while allowing wiping of said obverse face by contact with the oncoming vehicle; and

each of said reflector elements having three planar surfaces arranged mutually at right angles and meeting at a common point remote from said obverse face to form a cube corner, and an axis passing through the cube corner of

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