Filterite Corporation v. Tate Engineering, Inc.

• Decision Date: 30 September 1970
• Docket Number: Civ. No. 19366.
• Citation: 318 F. Supp. 584
• Parties: FILTERITE CORPORATION, a body corporate of the State of Maryland v. TATE ENGINEERING, INC., and the Carborundum Company.
• Court: U.S. District Court — District of Maryland

318 F. Supp. 584

FILTERITE CORPORATION, a body corporate of the State of Maryland

v.

TATE ENGINEERING, INC., and the Carborundum Company.

Civ. No. 19366.

United States District Court, D. Maryland.

September 30, 1970.

Z. Townsend Parks, Parks, Parks & Schneider, Baltimore, Md., and Harry John Staas and Allen D. Brufsky, Brufsky, Staas, Breiner & Halsey, Washington, D. C., for plaintiff.

John W. Avirett, 2nd, Piper & Marbury, Baltimore, Md., and William H. Webb, William H. Logsdon, Webb, Burden, Robinson & Webb, Pittsburgh, Pa., for defendants.

FRANK A. KAUFMAN, District Judge.

This is an action for alleged infringement of United States Letters Patent No. 3,356,226, issued December 5, 1967, on an application filed on December 29, 1964 by Charles A. Miller, Jr., Joseph B. Masaschi and Robert W. Miller, Jr.

Plaintiff, Filterite Corporation (Filterite), the assignee of the patentees under an assignment dated March 20, 1968, is a Maryland corporation with its principal place of business at Timonium, Maryland, at which it is engaged in the manufacture and sale of filters and filter equipment. The original defendant, Tate Engineering, Inc. (Tate), is a Maryland corporation, having an established place of business in Baltimore, Maryland, operating, inter alia, as an independent distributor for products, including filters and filtration equipment, manufactured by the Carborundum Company and its predecessor, Commercial Filters Corporation. Carborundum Company (Carborundum), the intervenor-defendant, is a Delaware corporation, having a place of business at Niagara Falls, New York. Carborundum is engaged in the manufacture and sale of a wide variety of products, including filtering media, filters, and filtration equipment. Commercial Filters Corporation (CFC), formerly a New York corporation doing business in Indiana and elsewhere in the United States, was merged into Carborundum on or about April 1, 1968. Since that date, Carborundum has engaged in the manufacture and sale of filters, including the accused filters—the so-called "Honeycomb filters"—formerly manufactured and sold by CFC.

Carborundum or its predecessor CFC have made and sold the Honeycomb filter since prior to December 5, 1967. Tate has sold the Honeycomb filter within the District of Maryland since prior to December 5, 1967.

Carborundum filed a counterclaim herein charging infringement by Filterite of United States Letters Patent No. 3,398,905, relating to certain "Apparatus for Making Filter Tubes." Carborundum subsequently voluntarily dismissed said claim with prejudice.

FINDINGS OF FACT

Technology of the Industry

The patent in the instant suit relates to a "single helically¹ wound filter unit," and contains only the following single claim:

A single helically wound filter unit, comprising in combination:

(a) an elongated rigid perforated tubular core;

(b) at least two filter tubular elements independently helically wound from fiber strands on said core, the helical windings of each of said strands being spaced apart to form channels extending through the filter tube element perpendicular to the core, said strands having independent fibers extending radially outwardly from the surface thereof and extending axially and circumferentially of the filter elements over the said channels with each layer of winding and outwardly beyond the ends of the said filter tube elements;

(c) at least one of the ends of each of the filter tube elements being in abutted relationship with an end of an adjacent filter tube element, the ends of the fibers extending beyond the ends of each of the abutting filter tube elements being engaged and secured by the windings on the adjacent filter tube element to form a filtering area between the abutted ends thereof.

By 1964, the technology of the industry had progressed to the stage at which it was well known how to manufacture an adequate individual filter tube with a maximum length of ten inches. For a number of years prior to 1964, both Carborundum and its predecessor CFC, and Filterite had produced such a filter. Filters of this type are manufactured by winding rovings of textile or synthetic material in a helical pattern, in successive layers, about a perforated core from one end to the other as the core is rotated. The core is usually of a rigid nature. The helical wrapping causes the formation of a number of diamond-shaped openings extending from the core to the outer diameter of the filter tube. The rovings are fed from a supply bobbin to a rotating mandrel. During this wrapping, the roving in each layer about the core is napped by a "napping brush" which releases some fibers from the roving and lays the fibers across the rovings and the diamond-shaped openings.² This process is continued until a desired external diameter of wound roving is achieved. The diamond-shaped openings form filtering areas.

While the within dispute is set against the background of the above-discussed procedures and technology, it centers upon the method employed in the coupling together of two or more of the filter tubes. For many years, there was a demand for filter tubes of a length longer than ten inches. However, the available machinery and techniques did not initially lend themselves to making a single tube of longer length. During World War II, CFC received many requests for filters longer than ten inches in length, and achieved that result by either gluing two or more filters together or by providing several small filters for stacking end to end with spacers between them. However, inherent in those methods was leakage, slippage or lack of provision of a filtering area at the point where the ends of the filters were either in contact with each other or were separated by spacers.³

In 1947 or 1948, CFC attempted to make a single filter tube that was longer than ten inches, and at that time developed a machine which utilized a single roving in making such a long tube in one continuous section. That machine produced filters 36 inches in length. However, those filters did not prove to be successful in operation, and such operation was soon discontinued.

Subsequently, in the early 1950's, James V. Piacitelli, then an employee of CFC, engaged in experimental winding and developed a machine for simultaneously winding two filters on a single mandrel. That machine operated by having two roving guides operating in unison, each supplying the roving to a different filter. Mr. Piacitelli observed that that process could, and in fact did once, result in the rovings of the separate filters beginning to interwind and overlap at the adjacent ends of the two filter sections. However, Mr. Piacitelli did not continue with work in that area since the purpose of his experimentation was to wind two independent filter tubes on one mandrel, and not to link together two or more filter tubes. CFC began to use machines similar to the one Mr. Piacitelli had developed, but in order to prevent such interwind, established a fixed linkage between the guides on the mandrel and a spacer between the filter tubes. Observations similar to those of Mr. Piacitelli, concerning the interwinding of two filters on a single mandrel, were made by several persons at CFC. However, there is evidence that at least some persons at CFC considered such interwinding to be undesirable. Throughout the 1950's, CFC sporadically experimented with and tested filter tubes longer than ten inches in length, but none proved to be successful.

In either 1961 or 1962, Mr. Piacitelli, continuing his experimentation at CFC, developed a machine for making a unitary, solid filter comprised of several filter tubes, with those tubes being linked by an interwinding of rovings at their adjacent ends. The individual tubes were placed on a single mandrel and were spaced so that there would be about a one-half inch gap between each tube between each tube before the winding began. As the winding of the roving progressed, the length of the tubes increased slightly (called the growth phenomena), so that there was about a one-fourth inch interwind on the completed tube. Several persons at CFC witnessed the operation.

Mr. Piacitelli did not conduct tests on those connected tubes except to give them a "twist test" which proved the integrity of the interwound joint between the ends of the filter tubes.

Neither Mr. Piacitelli nor anyone else at CFC continued with the production of such interwound filters until mid-1963, when the project was again started up. At that time, Mr. Piacitelli began to make changes in the machine he had made in 1961 or 1962. As a result, preparation for commercial production of such filter tubes at CFC began, perhaps as early as the latter part of 1964. While there is some conflict in the testimony, this Court finds that such production did not commence, and indeed was not scheduled to commence, at CFC until after CFC learned from its customers of the availability of unitary tubes manufactured by Filterite with lengths in excess of ten inches and until after application had been filed for the patent in suit herein.

The Patented Filters

In 1963-64, Messrs. Miller, Miller and Masaschi succeeded in producing a single, unitary filter and successfully applied for a patent on December 29, 1964.⁴ That patent, here in suit, relates to a method of joining or coupling two or more filter sections together so as to provide a continuous filtering area with no leakage or slippage. The patent teaches that that result is achieved by napping the rovings so that the abutted ends of the two filter sections are tied together by the fibers of each section extending over the abutment and by those fibers being held in place by the roving of the adjacent section, and that the fibers from the two sections are joined in such a random pattern as to form a filtering area in the space between the abutted ends of the two filter sections. The patent in suit states:

They the fibers extend beyond the end where

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