Briggs v. Wix Corporation

• Decision Date: 25 July 1969
• Docket Number: 65-C-1683-65-C-1685.,Civ. A. No. 65-C-1307,65-C-1308
• Citation: 308 F. Supp. 162
• Parties: Southwick W. BRIGGS and Stone Filter Company, Inc., Plaintiffs, v. WIX CORPORATION, Western Auto Supply Company, Montgomery Ward & Company and Sears, Roebuck & Company, and Fram Corporation, Defendants.
• Court: U.S. District Court — Northern District of Illinois

308 F. Supp. 162

Southwick W. BRIGGS and Stone Filter Company, Inc., Plaintiffs, v. WIX CORPORATION, Western Auto Supply Company, Montgomery Ward & Company and Sears, Roebuck & Company, and Fram Corporation, Defendants.

Civ. A. Nos. 65-C-1307, 65-C-1308, 65-C-1683-65-C-1685.

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

July 25, 1969.

Walther E. Wyss, Robert L. Rohrback, Mason, Kolehmainen, Rathburn & Wyss, Chicago, Ill., for plaintiffs.

Halfpenny, Hahn & Ryan, Chicago, Ill., and W. R. Hulbert, Fish, Richardson & Neave, Boston, Mass., for defendant Fram Corp.

Charles B. Cannon, Chicago, Ill., for Wix Corp., Western Auto Supply, Montgomery Ward & Co. & Sears Roebuck (In 65 C 1308, 1683-1685).

Edward W. Osann, Jr., Wolfe, Hubbard, Voit & Osann, Chicago, Ill., for Gould Natl. Batteries (65 C 2073).

Prangley, Baird, Clayton, Miller & Vogel, Chicago, Ill., for Montgomery Ward in No. 65 C 1684.

Nathan N. Kraus, Arnstein, Gluck, Weitzenfeld & Minow, Chicago, Ill., for Sears Roebuck & Co. in 65 C 1685.

James W. Dent, Washington, D. C., for Wix Corp. in 65 C 1308.

FINDINGS OF FACT, CONCLUSIONS OF LAW, MEMORANDUM, ORDER AND JUDGMENT.

CAMPBELL, Chief Judge.

This is a patent infringement action. Plaintiffs originally filed six separate actions against the named defendants¹ accusing each of them with infringement of claims Nos. '9, 10 and 11 of patent No. 2,395,449. (Hereinafter referred to as '449), which was originally issued to plaintiff Southwick W. Briggs ("Briggs") on February 26, 1946. One of the original six cases has since been settled. (Briggs v. Gould-National Batteries, Inc., 65-C-2073). The patent in issue expired on February 26, 1963. After disposing of pretrial motions, including motions by certain defendants to transfer individual cases to other districts pursuant to 28 U.S.C. § 1404(a) which were denied, Briggs v. Fram Corporation, 272 F.Supp. 185 (1967) and Briggs v. Gould-National Batteries, Inc., 272 F.Supp. 186 (1967), the cases were ordered consolidated. Prior to trial and in accordance with the General Order of this court, the parties filed a stipulation of uncontested facts as well as a stipulation of agreed issues. All of the facts so stipulated I hereby adopt as findings of fact. Excellent and thorough pretrial and post trial briefs were also filed by all of the parties for which I am indebted to counsel.

Patent '449 was the subject of previous litigation in this court and in our court of appeals. Judge Julius J. Hoffman of this court upheld the validity of patent '449 in that litigation. Briggs v. M & J Diesel Locomotive Filter Corp., 228 F.Supp. 26 (1964). That decision was affirmed by the Seventh Circuit Court of Appeals. 342 F.2d 573 (1965).

The patent in question is an oil filter. Plaintiff Briggs holds title to the patent. Plaintiff Stone Filter Company ("Stone Filter") is the exclusive licensee. Defendants Fram Corporation ("Fram") and Wix Corporation ("Wix") are manufacturers of the accused devices. Defendants Sears, Roebuck and Co., Montgomery Ward & Co. and Western Auto Supply are retailers. Much of the relevant history of this patent and the inventor's background in this field is ably set forth by Judge Hoffman in his opinion in the M & J Case supra. (228 F.Supp. at 32-34). The issues to be resolved are clearly defined in the agreed statement of contested issues and in the defendants' additional statement of contested issues. They are:

1. Whether or not claims 9, 10 and 11 of U. S. patent No. 2,395,449 are valid;

2. Whether or not claims 9, 10 and 11 of U. S. patent No. 2,395,449 are infringed by the accused structures;

3. Whether or not recovery should be barred by laches.

4. Whether or not there was a failure to mark the number of the '449 patent which would bar recovery of damages.

In their pretrial and post trial statements and briefs, all of the defendants except Fram² agree that if patent '449 is valid and enforceable it has been infringed by the accused structures. I should state at the outset that the evidence clearly established that the filters manufactured by Fram also infringe, if the patent is valid and enforceable.

The defendants also raise additional issues other than those agreed to and listed above. These essentially relate to:

1. Whether Briggs informed the patent office of certain prior art;

2. Whether certain prior art was disclosed to Judge Hoffman in the M and J case;

3. Whether plaintiffs failed to disclose to the court in the M and J case the alleged widespead manufacture and sale of filters and filter elements embodying substantially the same constructions that are charged with infringement of claims 9, 10, and 11 of patent '449;

4. Whether patent '449 is unenforceable due to abandonment by plaintiffs of the right to enforce it;

5. Whether defendants are entitled to recover their costs and attorneys fees incurred in defense of these actions; and

6. Whether defendants are entitled to an accounting for damages suffered by them in connection with the defense of these actions.

I find that patent '449 is invalid. Accordingly, it is necessary to consider, other than the agreed issues, only the last three stated additional issues.

I am somewhat relieved that it is unnecessary for me to reach the delicate issues raised by (2) and (3) above — concerning what if anything was improperly kept from Judge Hoffman in his trial of the prior case. In this regard, I should first relate a brief summary of the history of this litigation. This cause was originally assigned to the calendar of Judge Hoffman as related to the prior cases. Judge Hoffman refused this designation because the prior cases were no longer pending and were therefore not related within the meaning of our local Rule 10. These cases were thereupon transferred by Judge Hoffman to the Executive Committee for reassignment according to the rules. My name was then drawn and the cases assigned to my calendar. I, of course, had to proceed without knowledge of what transpired before Judge Hoffman in the other earlier cases on the same patent. Although I willingly accepted the reassignment of these cases as proper under our rules, I can only consider the limited relation of these serious charges to the remaining issues now before me.

THE PATENT CLAIMS IN ISSUE

The application for the patent in suit was filed on March 31, 1942 and the patent was granted on February 26, 1946. The patented filter did not gain much acceptance until early 1960 and the filters were not marked until that time. Thereafter, and until the patent expired on February 26, 1963, all of the filters produced and marketed by these plaintiffs were marked.

Claims 9, 10, and 11 of patent '449 read:

"9. A filter element in the form of a tubular body comprising a web of filter material folded to extend back and forth between the inner and outer peripheral surfaces of the tubular body with the folds of the web at the inner surface of the tubular body being juxtaposed and in contact with each other, and well defined grooves formed in the web at the contacting surfaces of the inner folds, said grooves extending in a generally radial direction with respect to the tubular body to provide passages between the contacting surfaces and thereby permit the free flow of a fluid between such surfaces.

10. A filter element in the form of a tubular body comprising an elongated web of filter material folded to extend back and forth between the inner and outer peripheral surfaces of the tubular body with the folds thereof extending longitudinally of the tubular body and the folds of the web at the inner surface of the tubular body being juxtaposed and in contact with each other, and well defined grooves formed upon the surface of the filter material which is exposed to and in communication with the bore of the tubular body, said grooves extending lengthwise of the elongated web and providing flow passages between the contacting inner folds.

11. A filter element in the form of a tubular body comprising an elongated web of ribbed cellulosic filter material folded to extend back and forth between the inner and outer peripheral surfaces of the tubular body with the folds thereof extending longitudinally of the tubular body and the ribs extending in a generally radial direction with respect to the tubular body, the folds of the webs at the inner surface of the tubular body being juxtaposed and in contact with each other."

THE PRIOR LITIGATION

The M and J cases³ were filed by plaintiffs in July, 1962 and involved diesel locomotive filters. Those cases charged infringement of patent No. 2,919,807 as well as No. '449. As plaintiffs state in their post trial brief, that litigation primarily involved No. 2,919,807 (hereinafter referred to as '807). Emphasis was placed on '807 because '449 had only about 8 months of life remaining. Plaintiffs allege that early in the M and J suit, however, they "learned from their counsel that many of the automobile oil filters then on the market infringed Patent '449." (The source and timing of their knowledge is discredited by the evidence.) For various reasons (dubious excuses) plaintiffs now state that it was impossible to bring the various infringers of '449 into that case. Without these many alleged infringers, however, and with No. '449 taking what plaintiffs themselves here describe as a minor role in the trial, plaintiffs obtained a favorable judgment as to the validity of '449.

In this case, '449 is the only patent in dispute; the defendants are substantial infringers if the patent is held valid; and, as the volume and quality of the briefs alone will attest, the history and merits of the patent have been exhaustively developed. This service and attention was not afforded Judge Hoffman when he considered the validity of '449. In this case defendants introduced an abundance of evidence on the issues of validity and enforceability and also raised and argued additional defenses either not raised in the previous...