Brunswick Corp. v. Filters, Inc.(Louisiana)
| Citation | 569 F. Supp. 1368,219 USPQ 891 |
| Decision Date | 09 August 1983 |
| Docket Number | C. A. No. H-81-903. |
| Parties | BRUNSWICK CORPORATION, Plaintiff, v. FILTERS, INC. (LOUISIANA) Filters, Inc. (Texas), and Filterspun, Inc., Defendants. |
| Court | U.S. District Court — Southern District of Texas |
Guy L. McClung, Fulbright & Jaworski, Jefferson D. Giller, Fulbright & Jaworski, Houston, Tex., John G. Heimovics, Skokie, Ill., for plaintiff.
Ely Silverman and Elsie Silverman, Silverman & Silverman, Amarillo, Tex., K. Allan Davis, Houston, Tex., for defendants.
FINDINGS OF FACT AND CONCLUSIONS OF LAW
Plaintiff, Brunswick Corporation ("Brunswick") brought this suit against defendants Filters, Inc. (Louisiana), Filters, Inc. (Texas) and Filterspun, Inc. for infringement of United States Patent No. 3,624,779 (the "'779 Patent"). Brunswick alleges that defendants' willfully and deliberately infringed the '779 Patent and that defendants' conduct throughout this litigation has been so extraordinary and exceptional as to warrant both an award of treble damages and attorneys' fees. Defendants deny infringement and claim that the accused filter units do not infringe it; and that the patent is invalid.
After severing the damage issues, this cause was tried to the Court without a jury from November 30, 1982 until December 21, 1982. At the conclusion of the evidence, the Court made some preliminary observations, requested additional briefing by the parties in the form of proposed findings of fact and conclusions of law and took the case under advisement. Pursuant to Rule 52(a), Fed.R.Civ.P., the Court now renders its Findings of Fact and Conclusions of Law detailing the reasons for its conclusion that the '779 Patent is valid and that defendants willfully and deliberately infringed the '779 Patent. The Court finds also that this is an exceptional case. Additionally, the following Findings of Fact and Conclusions of Law reflect the Court's conclusion that defendants have failed to prove any of their counterclaims and, accordingly, Brunswick should prevail in all respects.
1. Plaintiff Brunswick Corporation is a Delaware corporation having its principal place of business in Skokie, Illinois. Admission of Fact.
2. Defendant Filters, Inc. (Louisiana) was a Louisiana corporation having its principal place of business in Lake Charles, Louisiana. Filters, Inc. (Louisiana) became the successor corporation to Lake Charles Filter Service, Inc. in 1974. Testimony of Kenneth R. Thomas. (Hereinafter Testimony of Thomas.)
3. Defendant Filterspun, Inc. ("Filterspun") was a Texas corporation having a principal place of business in Amarillo, Texas. It was acquired by Filters, Inc. (Louisiana) in 1979. Testimony of Thomas.
4. Defendant Filters, Inc. (Texas), is a Texas corporation having a principal place of business in Houston, Texas. Defendant Filters, Inc. (Texas) exists today and is the successor corporation to both Filterspun, Inc. and Filters, Inc. (Louisiana). It was incorporated after the filing of this lawsuit. Testimony of Thomas.
5. Defendants have a regular and established place of business in this judicial district and have sold products alleged to infringe the '779 Patent within this judicial district. Admission of Fact.
6. The '779 Patent issued on November 30, 1971, naming Charles A. Miller, Jr., Robert Miller, Jr. and Joseph B. Masachi as the inventors. Brunswick is now the owner of all rights, title and interest in the '779 Patent. The '779 Patent resulted from a continuation application which relates back to the filing date of the parent application, Serial Number 743485, filed with the United States Patent and Trademark Office on July 9, 1968. Admission of Fact; Plaintiff's Exhibits 1, 114 and 115.
7. The claim of United States Patent 3,624,779 reads as follows:
Plaintiff's Exhibits 1 and 17.
8. The patent in suit is directed to a filter unit used in industries requiring precision filtration. These filter units are utilized in industries that manufacture or process foods, pharmaceuticals, chemicals, steel, automobiles and aircraft, to name a few, in literally thousands of applications. The filter units consist generally of a rigid tubular perforated core which is wrapped with a filter material such as cotton or yarn. Testimony of Raymond C. Clark ("Testimony of Clark"); Plaintiff's Exhibit 6.
9. Industries which require precision filtration have employed specialized housings to hold and mount filter units since the turn of the century. The filter units are placed inside the vessel and mounted on a separator plate that divides the vessel compartment into two separate chambers. The contaminated fluid to be filtered enters the vessel on the topside of the plate where the filter or filters are stationed, then migrates through the filter material and perforated core and then through the cap, seat or thimble to the other side of the separator plate and out of the vessel. Testimony of Clark; Plaintiff's Exhibit 146.
10. To insure that no contaminated or unfiltered fluid is allowed to exit the vessel, the filter is anchored in the vessel on the separator plate with the use of devices variously referred to as seats, pedestals, cups or thimbles. The seats upon which the filters are positioned have an upper edge which contacts the filter material of the filter unit. That contact serves both to support the filter unit and to provide a seal between the filter unit and the exit port of the seal. This seal is necessary to prevent unwanted fluid by-pass. The use of these seats to seal and mount filter units on a separator plate within a filter vessel originated in the 1930's. Testimony of Clark; Plaintiff's Exhibits 146 and 205.
11. Since the inception of the use of seats as a standard sealing/support means, the industry has encountered a plethora of problems in trying to properly mount and seal filter units. Major problems occurred whenever the person installing a new filter, usually a lower-level, relatively unskilled employee, failed to properly align the replacement filter on the seat so that the desired knife-edge seal between the filter medium and upper edge of the seat existed. This misalignment spawned reduced filtration efficiency, contamination of the fluid on the downstream side of the filter and possible damage to the filter unit itself or its host engine or machine. Testimony of Clark; Plaintiff's Exhibit 146, P-16.
12. The industries which employed various precision filtration procedures had invested heavily in filter housings of fairly standard dimensions. The industries half billion dollar investment in standard housings made major modifications to these housings to correct the problems created by misalignment impractical. On the other hand, changes to the filter cartridges themselves were thought to be equally impractical because of the uniform dimensions of the housings. In summation, changes to either the filter unit or housing potentially could have rendered obsolete millions of dollars worth of equipment. Testimony of Clark.
13. Early efforts to find a solution to the filter misalignment enigma and its attendant complications centered on the use of various tube guides or posts. The tube guides turned out not to be the panacea the industry initially expected. Indeed, a new generation of problems was born by their use. Testimony of Clark; Plaintiff's Exhibits 48, 148, 148, P-1-6.
14. Other attempted solutions, such as threaded shafts with mated threaded handles, did not always yield the desired results of precise mounting and alignment or eliminate the problems associated with unwanted bypass. Testimony of Clark; Plaintiff's Exhibits 194, 197, 146, P-24-25.
15. Charles Miller, Jr., Joseph Masachi and Robert Miller, Jr., inventors of the patent in suit, attempted to solve the problem posed by inventing what became United States Patent No. 3,319,793 ("'793 Patent"). That patent claimed:
To continue reading
Request your trial