Blumcraft of Pittsburgh v. Citizens & South. Nat. Bank of SC

• Decision Date: 23 May 1968
• Docket Number: Civ. A. No. 4168.
• Citation: 286 F. Supp. 448
• Court: U.S. District Court — District of South Carolina
• Parties: BLUMCRAFT OF PITTSBURGH, a Partnership consisting of Hyman Blum, Max Blum, Louis Blum and Harry P. Blum, Plaintiff, v. CITIZENS AND SOUTHERN NATIONAL BANK OF SOUTH CAROLINA, Daniel Construction Company, Inc., and Colonial Iron Works, Inc., Defendants.

286 F. Supp. 448

BLUMCRAFT OF PITTSBURGH, a Partnership consisting of Hyman Blum, Max Blum, Louis Blum and Harry P. Blum, Plaintiff, v. CITIZENS AND SOUTHERN NATIONAL BANK OF SOUTH CAROLINA, Daniel Construction Company, Inc., and Colonial Iron Works, Inc., Defendants.

Civ. A. No. 4168.

United States District Court D. South Carolina, Greenville Division.

May 23, 1968.

COPYRIGHT MATERIAL OMITTED

Ralph Bailey, Jr., Greenville, S. C., James C. McConnon, and Henry N. Paul, Jr., Philadelphia, Pa., for plaintiff.

Donald L. Ferguson and W. Francis Marion, Greenville, S. C., and Warren N. Williams and Gordon D. Schmidt, Kansas City, Mo., for defendants.

ORDER

SIMONS, District Judge.

Plaintiff, Blumcraft of Pittsburgh, a partnership, manufactures architectural metal products such as railing components. This action was brought against defendants under the patent laws of the United States for alleged infringement of U. S. Patents No. D-171,963¹ dated April 20, 1954, and No. 2,905,445² dated September 22, 1959, both relating to a railing structure, although to two different railings. Defendants denied infringement and counterclaimed for a judgment that both patents are invalid and not infringed.

Defendant Citizens and Southern National Bank of South Carolina, (C & S), is a corporation doing banking business in South Carolina and has a branch in Greenville. Defendant Daniel Construction Company (Daniel), a corporation having a place of business in Greenville, is a large general contractor. Defendant Colonial Iron Works, Inc., (Colonial), is a corporation having its principal place of business in Columbia where it does subcontracting and fabricating in the miscellaneous iron field.

The railing structure alleged to infringe the two patents in suit was fabricated by Colonial and erected by Daniel in the bank building of C & S in Greenville. The railing components identified as "Clean Line" rail parts were manufactured by and purchased from Architectural Art Mfg., Inc., of Wichita, Kansas. Architectural Arts has controlled and conducted the defense of this suit, but is not a party to this action for the reasons stated in this court's previous order.³

Plaintiff's complaint alleges that the defendant, C & S, has been and still is infringing these patents by using ornamental rails embodying each of the patented inventions and that the defendant, Daniel, has infringed these patents by making, selling and using the ornamental rails embodying the patented inventions, and further alleges that the defendants jointly infringed these patents by making, selling and/or using ornamental rails embodying the patented inventions.

Plaintiff further alleges that the aforesaid infringement was done wilfully and deliberately with the intention to deprive the plaintiff of its rights with respect to the patented inventions. Plaintiff was by order filed June 21, 1966, allowed to amend its complaint so as to add Colonial as a party-defendant.

Defendants' answer in substance denies that the plaintiff's patents are valid, and further denies any infringement. Defendants further ask by way of counterclaim for a declaratory judgment that both the design and mechanical patents be declared invalid and void, and that the defendants do not and have not infringed or threatened to infringe any of the claims of the patents in suit.

By reply plaintiff alleges that the patents are valid and that the counterclaim fails to state a claim upon which relief can be granted, and further that the counterclaim states no issue other than those dealt with in the complaint and answer.

This suit is brought under the provisions of 35 U.S.C.A. § 271 et seq.,⁴ alleging infringement by the defendants of the invention of a design patent and a mechanical patent.

The defendants' contention that the patent is invalid is based on 35 U.S.C.A. § 102⁵ and 35 U.S.C.A. § 103.⁶ Plaintiff's complaint was filed September 27, 1962, and the case was heard without a jury at Greenville, South Carolina on May 17, 1967. There are essentially four issues: (1) The validity of U. S. Patent No. D-171,963; (2) the validity of U. S. Patent No. 2,905,445; (3) the infringement by defendants of U. S. Patent No. D-171,963; and (4) the infringement of U. S. Patent No. 2,905,445.

Plaintiff has submitted photographs and drawings of railings installed by the defendants at the Citizens and Southern National Bank building in Greenville, South Carolina, together with various other exhibits, in support of its contentions. The defendants have likewise submitted numerous exhibits, drawings and photographs.

FINDINGS OF FACT

The plaintiff is a partnership consisting of Hyman Blum, Max Blum, Louis Blum and Harry P. Blum, all of whom are citizens of the United States and residents of Pittsburgh, Pennsylvania. The firm has its principal place of business at 460 Melwood Street, Pittsburgh, Pennsylvania 15213.

The defendants, C & S, Daniel, and Colonial, are corporations having places of business within the District of South Carolina. The acts complained of by the plaintiff occurred within the District of South Carolina.

There is no issue as to jurisdiction since this action arises under the patent laws of the United States and jurisdiction is conferred by 35 U.S.C.A. § 281 and 28 U.S.C.A. § 1338 as to plaintiff's complaint, and 28 U.S.C.A. §§ 2201 and 2202 as to defendants' counterclaim. Venue is based upon 28 U.S.C.A. § 1400.

In 1958 Lockwood-Greene Engineers, Inc., an architectural and engineering firm having offices in Spartanburg, South Carolina, was retained by C & S to design a new bank facility for construction in Greenville, South Carolina. Lewis S. Booth who testified for the defendants in the trial was in charge of the design of the bank building. The building was constructed by Daniel during 1960 in accordance with specifications and drawings issued by Lockwood-Greene. The specifications called for Blumcraft rails to be used throughout the building with the exception of one overlook rail which was to be a welded galvanized pipe and wire mesh. With the exception of the overlook rail, the specifications of Lockwood-Greene provided that "all descriptions in this specification and details shown on the plans are based on design and catalog numbers that appear in the catalog of Blumcraft of Pittsburgh, Pennsylvania for the purpose of quality and design control. Other manufacturers' items similar in design and quality, in the opinion of the architect, will be considered for substitution in lieu of that specified in details in the drawings."

All of the rails except the one for the balcony were specified to be of the "in line" type wherein the handrails and intermediate rails were in substantially the same vertical plane as the supporting posts. The balcony railing was specified to be of the "offset" type with the handrails and intermediate rails located to one side of a vertical plane composed of the supporting posts, and with the "offset" rails carried on the post by brackets secured to the post. Colonial bid on the miscellaneous iron for the bank building which included the handrails and was awarded the subcontract by Daniel. After the award of the subcontract to Colonial and during construction of the bank building, C & S, the owner, asked the contractor Daniel to take steps to reduce the overall cost of the project. Colonial was asked to reduce the miscellaneous iron cost, if possible; and the use of Architectural Art Mfg., Inc.'s "clean line" handrails was suggested in lieu of the specified rails of Blumcraft referred to in the specifications. Lockwood-Greene approved the substitution of the Architectural Arts "clean line" handrails on the main staircase "c" of the bank building. Daniel later obtained approval of Lockwood-Greene to use Architectural Arts "clean line" handrails on the patio overlook as a substitute for the welded pipe and wire mesh railing in the original specifications. Neither Daniel nor Colonial requested any change in connection with the Blumcraft hand railing originally specified for the patio balcony railing.

Neither the handrail shown and described in Patents No. D-171,963, nor No. 2,905,445 was specified in the original specifications of the Citizens and Southern National Bank building in Greenville, and no bid based on such rail was ever made by Colonial in connection with such building. The railings were composed of parts manufactured by Architectural Arts Manufacturing Company of Witchita, Kansas. They were purchased from defendant Colonial, installed by the defendant Daniel, and have been used by the defendant C & S in its Greenville building. The patents in suit had been issued and were in effect during the period of construction, and continue to be valid unless proved invalid by the defendants in the present suit.

The defendants contend that both patents are invalid due to the state of the prior art, and that the patents were obvious, which in itself invalidate the patents.

There was a vast change in architecture to the modern or contemporary style following the turn of the century and there existed a need for railings compatible with the modern design and made up of standard component parts, which could be made available from stock and readily adapted by an architect to suit the exigencies of a particular building structure.

Many railings were designed on a job-by-job basis, and many persons attempted to produce something harmonious or compatible with the modern design of buildings. Despite much effort this need persisted and no railing manufacturers were offering for sale a commercially usable railing system in which a plurality of handrails are disposed away from the supporting post, producing a "floating" visual effect.

Louis Blum, a partner in the Blumcraft firm, in 1952 conceived the railing design in suit to be used as a stairway railing in a private residence. He spent two months working on the design, made rough sketches, had a model built, and...