Cheney Co. v. Cunningham

• Decision Date: 14 January 1941
• Docket Number: Civil Action No. 215.
• Citation: 37 F. Supp. 224
• Parties: CHENEY CO. v. CUNNINGHAM et al.
• Court: U.S. District Court — Western District of Pennsylvania

37 F. Supp. 224

CHENEY CO. v. CUNNINGHAM et al.

Civil Action No. 215.

District Court, W. D. Pennsylvania.

January 14, 1941.

Richard E. Marine, of Pittsburgh, Pa., and Emery, Booth, Holcombe & Miller, of Washington, D. C., for plaintiff.

Christy, Parmalee & Wharton, of Pittsburgh, Pa., for defendants.

SCHOONMAKER, District Judge.

This is a patent suit against Cunningham and Friedberg, then partners doing business as Roof Specialties Company. Since the suit started, a corporation by the same name has succeeded to the business of the partnership, and has been joined as a defendant. The suit involves a charge of infringement by defendants of four patents owned by plaintiff, i. e., Nos. 1,715,000; 1,728,955; 1,939,619; and 1,871,585, relating to metal roof flashings.

Defendants have filed a counterclaim, charging plaintiff with unfair competition in trade through the misuse of patent threats and other trade practices intended to discourage customers from the purchase of defendants' roof flashings.

The patents in suit all relate to interlocking through-wall flashings for use in masonry buildings, designed to provide a metallic flashing extending through the masonry wall, to intercept and cut off the downward flow or seepage of water infiltration in the wall, and at the same time to provide a mechanically-keyed bond between the flashing and the masonry above and below it so as to prevent the movement of the masonry in any direction.

It is old in the art to use metal flashings which do not employ any means to key the masonry to the flashings; and such flashings are still in use. Architects and builders are not in uniform agreement as to the necessity or desirability of this keying.

The prior art also discloses through-wall sheet metal flashings with corrugations to prevent shifting of overlying masonry. See White Patent No. 423,888, granted March 18, 1890. Likewise, it was known in the prior art to interlock these flashings to mortar by Z-shaped pieces haphazardly soldered on the top and bottom of the sheet (Test. McSteen, Rec. pg. 95). Brown Patent No. 689,281, granted December 17, 1901, shows sheet metal with dovetail-shaped corrugations to interlock with the masonry. A similar structure is shown in the Schlafly Patent No. 840,016, granted January 1, 1907. Structures having dovetail ridges and grooves to interlock with masonry were described for commercial use in Sweet's Architectural Catalog, 1916 (Defts Ex. 8, prior art).

With this brief statement, we proceed now to consider each of plaintiff's patents.

Patent No. 1,715,000.

The patent was granted May 28, 1929. Plaintiff relies on claims 1 and 2, which read as follows:

"1. A flashing comprising a continuous strip of sheet material, embodying therein a plurality of dove-tail shaped grooves and ridges, the opposite sides of a groove on one face of the material tapering longitudinally of the groove in the opposite direction to that in which the opposite sides of another groove on the same face of the material tapers.

"2. A building construction comprising superposed courses of masonry, a layer of binding material for said courses, and a section of sheet metal flashing embedded within said binding material, said section embodying therein a plurality of grooves and ridges each having sides inclined to the face of the material and also tapering longitudinally thereof in opposite directions on both sides thereof respectively whereby the masonry is bonded together in all directions."

In the file-wrapper history of this patent, it appears that Cheney made fourteen claims, all of which were rejected on prior-cited patents. After amendments to claims 7 and 9, they were allowed as claims 1 and 2 above quoted. In this situation, Cheney must be held to have narrowed his form of construction to that described in his amended claims. That was the conclusion of the Circuit Court of Appeals of the First Circuit in E. Van Noorden Co. v. Cheney Co., 75 F.2d 298, in construing the very patent here in suit. That court said, 75 F.2d page 302: "Cheney has chosen the form in which his patented flashing must be constructed by his amendment to claim 9, and has abandoned all broader claims." That view is amply supported by Supreme Court decisions, among which we may note: I. T. S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429, 443, 47 S.Ct. 136; 71 L.Ed. 335; Shepard v. Carrigan, 116 U.S. 593, 597, 598, 6 S.Ct. 493, 29 L.Ed. 723; Hubbell v. United States, 179 U.S. 77, 83, 85, 21 S.Ct. 24, 45 L.Ed. 95; Morgan Envelope Co. v. Albany Perforated Wrapping Paper Co., 152 U.S. 425, 429, 14 S.Ct. 627, 38 L.Ed. 500; Weber Electric Co. v. E. H. Freeman Electric Co., 256 U.S. 668, 677, 41 S.Ct. 600, 65 L.Ed. 1162.

Comparing now the accused structures with the claims of this patent in suit, we find that both are flashings comprising a continuous strip of sheet metal, but there the similarity ceases. The accused structures do not have the plurality of dovetail-shaped grooves and ridges of the patent claim. A "dovetail", as we understand it, is a structure in form of a tenon having oppositely-flared edges similar in shape to the tail of a bird. The accused structure does not have that dovetail arrangement. It comprises a series or succession of teeth. The slope of each tooth begins at the base of the adjacent tooth. There is no separation between the teeth. They all slope in the same direction. There is no area such as the groove of the plaintiff's patent with an overhanging lip at each boundary. In our view, the dovetail and saw-tooth are not functional equivalents. The dovetail formation presents teeth pointing in opposite directions, so that the course of masonry is held from shifting in either longitudinal direction entirely by these alternately pointed teeth or ribs. In the saw-tooth formation, the teeth all point in one direction, and would therefore only lock against movement of the masonry to the left. There are means in defendants' structures for the preventing of the movement of masonry in both directions; and they are the beads or ridges in defendants' structures located in the metal between the saw-teeth.

The dovetail formation, however, is not new with Cheney. Such formation is shown in the Brown Patent No. 689,281; and the Cheney claim is limited to a dovetail formation of particular type, i. e., dovetail ridges and grooves tapering horizontally in opposite directions. We do not find this formation, or its equivalent, in defendants' accused structure. In defendants' structure, all teeth intermediate the two end teeth, and are inclined in the same direction and to the same degree. There is not present the splaying or reverse widening of alternate panels, as shown by Cheney. In defendants' structure, also, we find small beads diagonally across the sheet; and we find no counterpart of it in the Cheney claim.

We therefore conclude that defendants have not infringed claim 1 of the Cheney patent. Claim 2 of this Cheney patent is not for the flashing itself, but is for a building construction itself, comprising superposed courses of masonry having embodied in it sheet-metal flashings of the characteristics disclosed in claim 1 of the patent. This claim is undoubtedly for an exhausted combination of masonry and a metal flashing, which the plaintiff may not reclaim by inserting only a new kind of flashing. See Lincoln Engineering Co. v. Stewart-Warner Corporation, 303 U.S. 545, 58 S.Ct. 662, 82 L.Ed. 1008; Bassick Mfg. Co. v. R. M. Hollingshead Co., 298 U.S. 415, 56 S.Ct. 787, 80 L.Ed. 1251. It is therefore invalid. In any event, it is not infringed by defendants, because they do not have the type of flashing there specified.

Patent No. 1,728,955.

Claims 1 and 2 of this patent are in suit. They are as follows:

"1. A flashing consisting of a continuous strip of sheet metal bent to form dovetail shaped corrugations and a flange projecting laterally from the face of said strip at a side thereof, said corrugations being flattened against the face of said strip and extending transversely across said flange and reinforcing the latter.

"2. A flashing consisting of a continuous strip of sheet metal bent to form dovetail shaped grooves and ridges and a flange projecting laterally from a face of said strip at a side thereof, said ridges being flattened against the face of said strip and forming plaits extending transversely across said flange whereby the latter is enforced."

These claims are directed to the structure shown in Patent No. 1,715,000 hereinbefore discussed, with the added feature that the ribs and grooves on one edge of the sheet are pressed down, so that when a projecting edge of the flashing is pressed down against the wall, it will lie closely to the wall. We can see no invention in this added feature. It is but the exercise of mechanical expedient known to the ordinary sheet-metal worker. In addition to that, this very feature was disclosed in Patent No. 1,715,000 in figure 3 at the points "C" and "c" and in the specifications, page 1, line 97, where it is stated: "At certain locations upon the wall, particularly at points below the roof, as for example, at C, it is desirable to have the flashing extend upwardly from the layer of mortar in which it is embedded against the inner surface of the wall, and this is accomplished by flattening the opposite ridges of the flashing and bending the strip longitudinally thereof to form an upwardly extending flange c, * * *."

The courts have held the mere thinning of metal to facilitate bending is a simple mechanical expedient, and not subject to patent. See Williams v. Allied Metal Products Corp., 6 Cir., 107 F.2d 309, 310. The prior art discloses the use of this expedient. See Defendants' Exh. 8, "Practical Sheet Metal Work and Demonstrated Patterns" published in 1910, page 39; also "Galvanized Iron for Roofs and Roof Drainage," published by American Rolling Mill Company in 1920, page 20.

The prior-art patents also make the...