Elgen Manufacturing Corporation v. Ventfabrics, Inc.

• Decision Date: 06 March 1963
• Docket Number: 13793.,No. 13792,13792
• Citation: 314 F.2d 440
• Parties: ELGEN MANUFACTURING CORPORATION, Plaintiff-Appellant, v. VENTFABRICS, INC., Defendant-Appellee. ELGEN MANUFACTURING CORPORATION, Plaintiff-Appellee, v. VENTFABRICS, INC., Defendant-Appellant.
• Court: U.S. Court of Appeals — Seventh Circuit

314 F.2d 440 (1963)

ELGEN MANUFACTURING CORPORATION, Plaintiff-Appellant, v. VENTFABRICS, INC., Defendant-Appellee.

ELGEN MANUFACTURING CORPORATION, Plaintiff-Appellee, v. VENTFABRICS, INC., Defendant-Appellant.

Nos. 13792, 13793.

United States Court of Appeals Seventh Circuit.

March 6, 1963.

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

Edward H. Hatton, Chicago, Ill., John H. Sutherland, Rose N. Perotti, St. Louis, Mo., Howard R. Barron, Chicago, Ill., for Ventfabrics.

Before DUFFY, SCHNACKENBERG and KNOCH, Circuit Judges.

DUFFY, Circuit Judge.

Appeal No. 13792.

In this suit, plaintiff claimed infringement of United States Letters Patent Nos. 2,777,573 and 2,825,384. By stipulation, the suit was dismissed as to Patent No. 2,777,573.¹

Plaintiff is the owner of Goldsmith Patent No. 2,825,384 which was issued March 4, 1958. This patent was held valid and infringed (Claims 7, 8, 14, 15, 17, 18 and 19, inclusive) in Elgen Manufacturing Corporation v. Grant Wilson, Incorporated, and the findings, conclusions and judgment of the District Court were sustained by this Court in Elgen Manufacturing Corporation v. Grant Wilson, Incorporated, 7 Cir., 285 F.2d 476 (1961). For convenience, that case will sometimes be referred to as the "Grant Wilson" case.

In the case at bar, Claims 1, 7, 8, 11, 12, 14, 15 and 19 of Patent No. 2,825,384 were in issue. The trial court found and concluded that all of such claims were valid, but also found and concluded that they had not been infringed by defendant herein.

Claims 1, 7 an 8 are apparatus claims while Claims 11, 12, 14, 15 and 19 are method claims. On this appeal, plaintiff presents only the question of infringement of method Claims 12, 14 and 15. Plaintiff has expressly waived any appeal as to Claims 1, 7, 8, 11 and 19.

This Court, in the Grant Wilson case, held that Claims 14 and 15 were valid and infringed. However, Claim 12² which is here at issue, was not at issue in the Grant Wilson case.

Goldsmith Patent No. 2,825,384 is directed to a method of making a coil of flexible duct connector material and the apparatus used in practicing the method.

In the air-heating and ventilating industries, 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. It became standard practice to place a flexible duct connector between the ducts in order to reduce vibration and other noises.

The flexible duct connector was usually made from a strip of fabric of either canvas or asbestos. Sheet metal workers usually 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 on a metal-bending machine. An edge of the fabric was inserted in each of the bent-over channels and in a series of steps, was secured to the metal.

There were several advantages in having Goldsmith's prefabricated product in a coiled form. It could be stored in a limited space; it was easily handled and the exact length of the connector could be cut from the coil thus eliminating waste.

Goldsmith discovered if he produced prefabricated material in a long flat piece and then endeavored to coil the material, the product buckled and wrinkled severely so that much of the product would be unmerchantable. He discovered that if the prefabricated product were drawn under tension from a forming machine on to a coiling reel, a coil of product could be produced which would be unwrinkled.

We pointed out in our Grant Wilson decision, that the tension on the material and the constant torque applied resulted in the unforeseeable result of no buckling of material or wrinkling of fabric because the tension applied caused the outermost metal strip to travel at a slightly faster speed than the other. We held the claims there in issue to be valid.

Goldsmith developed a machine for making coiled prefabricated flexible duct connector product in which the two metal strips overlapped each other in the coil. He modified an existing roll-making machine to permit the simultaneous handling of two strips of sheet metal. The modifications also included 1) the adaptation of roll-forming machinery so that fabric was attached simultaneously to one edge only of each metal strip while the strips were being moved in parallel relationship; 2) the combination therewith of a crimping roller; 3) the further combination therewith of a coiler which pulled the outer metal strip faster than the inner metal strip through the roll-former. Goldsmith's combination was an integrated machine.

To support its position that Claims 12, 14 and 15 of the patent in suit were infringed, plaintiff argues that in both the patent disclosure and in the defendant's method, two continuous strips of metal are moved in parallel relationship; that in each method the edge of the strips which is to be positioned on the outside of the fabric is then progressively turned in through 180°; that when each of the edges has been turned to form a trough and the strips are in an overlapped position, in both methods the fabric is introduced from above. With respect to the patent disclosure this is done when the edges are at 90° while in the defendant's method, at 135°. Plaintiff says that the patent disclosure and defendant each coil continuously. Plaintiff insists the only difference is that defendant opened up one strip of metal immediately before coiling so that the metal strips did not overlap in the coil.

Plaintiff further argues that method claims are completely independent from the form of apparatus used; that infringement of a method claim is not avoided by utilizing an apparatus differing from the apparatus illustrated in the patent. Plaintiff cites Smith v. Snow, 294 U.S. 1, 11, 20, 55 S.Ct. 279, 79 L.Ed. 721 and quotes therefrom (page 20, 55 S.Ct. page 287): "Respondents do not avoid infringement of the method by varying the details of the apparatus by which they make use of it."

Since the issuance of the Goldsmith patent in suit, defendant has sold a coiled prefabricated duct product. In manufacturing this product, defendant uses three separate machines: 1) the Maplewood machine. This was a standard roll-forming machine which had been on the market prior to 1953. It was used to simultaneously roll-form the edges of two strips of sheet metal. 2) a Johnson machine. This was a special machine built by Johnson for defendant in two hours' time, and was used to crimp the sheet metal to the canvas. 3) a coiler which was built for defendant by Einer Gustafson.

In the Maplewood machine, a U-shaped cavity is formed in the edges of the two metal strips. As they emerge from the machine, the two metal strips are accumulated in long lengths and meander across the floor. The metal strips bend around a curve, one end of which is the exit from the Maplewood machine and the other is the entrance to the Johnson machine. In the curve, the strips cross over each other and reverse direction. In the Johnson machine, power-driven crimping rolls pull the metal strips from the floor, past a device which "humps" the fabric strip and slides it sidewise into the U-shaped cavities in the metal strip and thereafter the cavities are clamped down on the edges of the fabric. As the material emerges from the Johnson machine, it is positioned through a guide which positions the metal strips in a non-overlapping relationship as they approach the coiler where the material is wound into a coil with the metal strips in non-overlapping relationship.

The District Court held Claim 12 to be valid. In many respects, Claims 12 and 14 are similar. In view of our decision in the Grant Wilson case, defendant does not, on this appeal, argue invalidity of Claim 12. We approve the holding of the District Court that Claim 12 of the patent in suit is valid.

The District Court found that defendant's operation did not infringe Claims 12, 14 and 15 of the Goldsmith Patent in suit. The question of infringement or non-infringement is one of fact. Becker v. Webcor, Inc., 7 Cir., 1961, 289 F.2d 357, 360; Hazeltine Research, Inc. v. Admiral Corp., 7 Cir., 183 F.2d 953, 955.

Included in Findings of Fact (30) and (41) are: "(30) Defendant's * * * overall operation is neither the same as, nor the equivalent of, the * * * method defined by claims * * * 14, 15 * * * of the Goldsmith patent. * *" "(41) * * * Defendant's operation * * * is neither the same as, nor the equivalent of, the method as defined in claims 11 and 12 of the Goldsmith patent." Also, in Conclusion of Law (3): "Claims * * * 12, 14, 15 * * * are not infringed by defendant."

Apparently the trial judge made no attempt to rigidly classify his holding of non-infringement of Claims 12, 14 and 15 as findings of fact, mixed findings of fact and law, or conclusions of law, for in Conclusion of Law (25), he stated: "Any conclusion of law entered herein which may be construed in whole or in part as a finding of fact shall be so deemed and treated as if set forth under Findings of Fact herein."

In Independent Pneumatic Tool Co. v. Chicago Pneumatic Tool Co., 194 F.2d 945, we said at page 947: "Of course, in determining whether an accused device infringes a valid patent, resort...