Elgen Manufacturing Corp. v. Grant Wilson Inc.

• Decision Date: 14 February 1961
• Docket Number: No. 13031.,13031.
• Citation: 285 F.2d 476
• Parties: ELGEN MANUFACTURING CORPORATION, Plaintiff-Appellee, v. GRANT WILSON INCORPORATED, Defendant-Appellant.
• Court: U.S. Court of Appeals — Seventh Circuit

285 F.2d 476 (1961)

ELGEN MANUFACTURING CORPORATION, Plaintiff-Appellee, v. GRANT WILSON INCORPORATED, Defendant-Appellant.

No. 13031.

United States Court of Appeals Seventh Circuit.

January 18, 1961.

Rehearing Denied February 14, 1961.

John Rex Allen, Stanley C. Dalton and Hofgren, Brady, Wegner, Allen & Stellman, Chicago, Ill., for appellant.

Charles J. Merriam and Norman M. Shapiro, Merriam, Smith & Marshall, Chicago, Ill., of counsel, for appellee.

Before DUFFY, SCHNACKENBERG and KNOCH, Circuit Judges.

DUFFY, Circuit Judge.

This is a suit for alleged infringement of two patents. One is Goldsmith Patent No. 2,777,573, applied for September 13, 1955 (a division of original application dated January 4, 1954) and issued January 15, 1957. Claim 1 is charged to be infringed. This patent is called the "product patent", and is directed to a coil of flexible duct connector material.

The second patent is Goldsmith Patent No. 2,825,384, entitled "Method and apparatus for securing metal strips to fabric." Application was filed January 4, 1954, and the patent was issued March 4, 1958. This patent is directed to the method of making a coil of flexible duct connector material and the apparatus used in practicing the method. Claims 7, 8, 14, 15, 17, 18 and 19 are charged to be infringed. Defendant denies infringement of this patent.

In sum, the claimed inventions in suit relate to a prefabricated coil product for use in making duct connections in heating and ventilating systems and a machine and method for making same.

In the air heating and ventilating industry it is common practice to have a series of connected metal air ducts which extend from the blower unit of a furnace or ventilating unit to a desired air outlet. If these ducts are rigidly attached to each other, noise and vibration will result. For some time past it was the standard practice to place a flexible duct connector between the ducts in order to reduce vibration and other noises.

The flexible duct connector usually was made from a strip of fabric of either canvas or asbestos. Prior devices were customarily made by sheet-metal workers. The practice was to cut two strips from metal stock and then cut a strip of canvas or asbestos of the same length. One edge of each metal strip was bent in a metal-bending machine. An edge of the fabric was inserted in each of the bent-over channels, and in a series of steps, the fabric was secured to the metal. There was thus formed metal strips of equal length separated by fabric of the same length which fabric was joined with the metal strips at their inside marginal edges.

There were several advantages in having Goldsmith's prefabricated product in a coiled form. A strip of duct material fifty or one hundred feet in length, if coiled, could be stored easily in a limited space. It could be more easily handled. The exact length of connector could be cut from the coil thus eliminating waste.

An existing type of roll-forming machine was obtained by Goldsmith. He modified the machine in various particulars. One modification permitted the simultaneous handling of two strips of sheet metal. The modifications included the adaptation of a roll-forming machine so that for the first time, fabric was attached simultaneously to one edge only of each metal strip, while the strips were being moved in parallel relationship with each other and with the other longitudinal edge of each metal strip clear of the roll-formers. During the trial, this was referred to as a "dangling edge."

Goldsmith discovered that if he produced prefabricated material in a long, flat piece, and then attempted to coil the material, the product buckled and wrinkled severely, so much so the product would be unmerchantable. Goldsmith was not a trained engineer, but he did discover that if the prefabricated product were drawn under tension from the forming machine on to a coiling reel, a coil of material could be produced which was unwrinkled. Claim 8 of Patent No. 2,825,384 claims an apparatus as recited in Claim 7 in which a constant torque is applied to the coiling reel. In a machine built under the teachings of Patent No. 2,825,384, the coiling reel is provided with a variable speed reducing device so that the coiling reel at all times rotates at a speed which prevents a sag in the material coming to the reel.

After completing his machine and having successfully made a coil of unwrinkled material, Goldsmith sought financial backing. One of the first whom he approached was defendant. A sample of Goldsmith's pre-formed connector duct material was left with defendant, but the latter advised there would be no market for such a product.

In the latter part of 1953, Goldsmith obtained backing from the plaintiff herein, and production of the duct material was commenced. In less than a year, plaintiff sold more than $164,000 of the coiled connector duct material which was sold under the name of "Silent Duct", plaintiff's trademark for the coiled duct material product made under the Goldsmith patents. In the following 4¾ years, the plaintiff sold over $1,600,000 of the coiled material.

In 1954, after defendant learned of the marketing of plaintiff's "Silent Duct" it began a research program to find a different method to make a pre-formed connector duct material. It tried to stitch the metal strips to the fabric tape, but this failed. It tried the use of pressure-sensitive adhesive to join the fabric to the metal strips, but this was unsuccessful. Defendant then asked assistance from a Mr. Samson who was defendant's expert at the trial, and while defendant claims it did not seek to duplicate plaintiff's product, the first letter from Mr. Samson listed as the subject thereof, "Silent Duct."

In the District Court, one of the disputed facts was whether Samson's work for defendant was with full knowledge of plaintiff's product, "Silent Duct." Although the trial court did not think the matter was of great importance, it did find Samson's work in producing "Vibra-Stop" for defendant was with full knowledge of plaintiff's "Silent Duct."

The District Court held the claims in issue in Goldsmith Patent No. 2,825,384 (machine and method patent) to be valid and infringed. It also held Claim 1 of Goldsmith Patent No. 2,777,573 (product patent) to be valid and infringed. Largely because defendant brought its product on the market only after advice of counsel, ...