American Saint Gobain Corp. v. Armstrong Glass Co.

• Decision Date: 07 December 1970
• Docket Number: 20229.,No. 20194,20194
• Citation: 434 F.2d 1216
• Parties: AMERICAN SAINT GOBAIN CORPORATION, Plaintiff-Appellee, v. ARMSTRONG GLASS CO., Inc., Defendant-Appellant. AMERICAN SAINT GOBAIN CORPORATION, Plaintiff-Cross Appellant, v. ARMSTRONG GLASS CO., Inc., Defendant-Cross Appellee.
• Court: U.S. Court of Appeals — Sixth Circuit

434 F.2d 1216 (1970)

AMERICAN SAINT GOBAIN CORPORATION, Plaintiff-Appellee, v. ARMSTRONG GLASS CO., Inc., Defendant-Appellant.

AMERICAN SAINT GOBAIN CORPORATION, Plaintiff-Cross Appellant, v. ARMSTRONG GLASS CO., Inc., Defendant-Cross Appellee.

Nos. 20194, 20229.

United States Court of Appeals, Sixth Circuit.

December 7, 1970.

Berg A. Terzian, New York City, Robert J. Kadel, Pennie, Edmonds, Morton, Taylor & Adams, New York City, on the brief; Ernest F. Smith, Hunter, Smith, Davis, Norris, Waddey & Treadway, Kingsport, Tenn., Satterlee, Warfield & Stephens, New York City, of counsel, for American Saint Gobain Corporation.

Edwin M. Ludeka, Knoxville, Tenn., Paul E. Hodges, Knoxville, Tenn., Ferdinand Powell, Johnson City, Tenn., on the brief; Anderson, Luedeka, Fitch, Even & Tabin, Chicago, Ill., Epps, Powell, Weller, Taylor & Miller, Johnson City, Tenn., of counsel, for Armstrong Glass Co.

Before WEICK, EDWARDS and CELEBREZZE, Circuit Judges.

WEICK, Circuit Judge.

Armstrong Glass Co., Inc. (Armstrong) has appealed from an order of the District Court adjudging it guilty of contempt of court for violating the injunctive provisions of a consent judgment which was entered in a patent infringement action and which assessed a remedial fine against it in the amount of $48,722.

American Saint Gobain Corporation (American) was the assignee of the Bundy patent, U.S. Patent No. 3,273,706, on a pallet-like package for containing glass sheets stacked vertically, side by side, to form a bundle. An end cap with a lower transverse crossrail is provided at each end of the stacked glass sheets, and steel bands are installed around the two end caps, bringing them into pressure contact with the ends of the bundle and forming a strong, rigid, cubical package. The transverse crossrails support the bundle and make possible the use of a forklift for lifting and transporting the package.

American and Armstrong were competitors. American sued Armstrong in the District Court for infringement of the Bundy patent, seeking injunction, damages and other equitable relief.

The parties entered into a written stipulation whereby it was agreed that the Bundy patent, owned by American, was valid and was infringed by Armstrong, and that a consent judgment should be entered by the Court permanently enjoining Armstrong from further infringing the patent by making, using or selling glass pallet packages such as described and claimed in the patent. American waived any claim for damages for past infringements. The District Court entered the consent judgment pursuant to the stipulation.

Several months later American filed a petition in the District Court charging that Armstrong, in violation of the injunction, had continued to infringe the Bundy patent, and prayed for an order requiring Armstrong to show cause why it should not be adjudged guilty of contempt of court and required to pay damages amounting to not less than a reasonable royalty. An order to show cause was issued by the Court and served on Armstrong.

Armstrong filed an answer alleging that the glass pallet package which it was making and using did not come within the scope of the claim of the Bundy patent. An evidentiary hearing was conducted in the District Court. Armstrong's Vice President Silvers testified:

"Q. Would you answer the question, now, which I asked before, namely, the only modification that you made of the device which you agreed to be an infringement was that you added this chipboard or insulating board and inserted it between the rail and the bottom edge of the glass sheets?

* * * * * *

"A. It would be correct to say the only modification we made was to elevate the glass sheets above the rail on a suitable bottom."

The "suitable bottom" was a wooden board; Armstrong also inserted another wooden board on one side of the package, naming it a gate.

There was evidence that the use of cushioning material between contacting glass and wood surfaces was an old and obvious expedient in the art and that fiberboard material and cardboard or corrugated paperboard had been used interchangeably.

The use by Armstrong of two nonfunctioning wooden boards added nothing to the Bundy invention which the patent examiner found resided "in a package of a bundle or bundles of upright glass sheets held together by means of pressure contacting end caps and straps only...