Frommelt Industries v. WB McGuire Co.

• Decision Date: 09 January 1981
• Docket Number: No. 80-CV-652.,80-CV-652.
• Citation: 504 F. Supp. 1180,212 USPQ 449
• Parties: FROMMELT INDUSTRIES, INC., (by change of name from Dubuque Awning & Tent Co.), an Iowa Corporation, Plaintiff, v. W. B. McGUIRE CO., INC., a New York Corporation, Defendant.
• Court: U.S. District Court — Northern District of New York

504 F. Supp. 1180

212 USPQ 449

FROMMELT INDUSTRIES, INC., (by change of name from Dubuque Awning & Tent Co.), an Iowa Corporation, Plaintiff, v. W. B. McGUIRE CO., INC., a New York Corporation, Defendant.

No. 80-CV-652.

United States District Court, N. D. New York.

January 9, 1981.

Lloyd C. Root, Chicago, Ill., for plaintiff.

John J. Dee, Bond, Schoeneck & King, Syracuse, N.Y., for defendant.

MEMORANDUM-DECISION AND ORDER

McCURN, District Judge.

Plaintiff, Frommelt Industries, Inc., commenced this action on August 8, 1980, against W. B. McGuire Co., Inc., for alleged patent infringement and unfair competition with respect to a fabric-covered, foam pad structure known as "Armor Pleat" which is fastened on either side of a loading dock portal to create an environmental seal between the rear end of a truck and the building while a truck is being loaded or unloaded. Frommelt Industries, Inc. ("Frommelt") is an Iowa corporation having its principal place of business in Dubuque, Iowa. Defendant, W. B. McGuire Co., Inc. ("McGuire") is a New York corporation having its principal place of business in Hudson, New York. This Court has personal jurisdiction over the parties. Subject matter jurisdiction exists under 28 U.S.C. § 1338 and, since there is diversity of citizenship, under 28 U.S.C. § 1332.

This action is now before the Court on Frommelt's motion for a preliminary injunction enjoining McGuire from manufacturing and selling its allegedly similar foam pad covers, known as "Durapleat," and from representing that it is licensed or otherwise authorized to manufacture and sell loading dock pad structures embodying the claims in Frommelt's patent on Armor Pleat. Frommelt does not seek preliminary relief on its claim of unfair competition.

McGuire, while not contesting the validity of Frommelt's patent No. 3,181,205 on the Armor Pleat product, opposes the motion for a preliminary injunction on the following grounds: (1) Frommelt has failed to demonstrate that it will suffer irreparable injury in the event that preliminary relief is not granted; (2) Frommelt has not demonstrated that the accused product is either a literal infringement or the mere equivalent of the invention claimed in its '205 patent, and, therefore, has failed to establish a probability of success on the merits, and (3) the likelihood of Frommelt's ultimate success on the merits of its patent infringement claim is sufficiently diminished by application of the doctrine of file wrapper estoppel and by the evidence regarding the existence of a license in McGuire to manufacture and sell the product claimed in '205 so as to defeat plaintiff's motion for preliminary relief. The Court having heard the testimony of the parties' witnesses at a hearing on September 17, 1980, and having considered the affidavits, exhibits and memoranda filed by the parties, denies plaintiff's motion for a preliminary injunction on the grounds that plaintiff has failed to demonstrate its claim of infringement by evidence of sufficient weight to show a likelihood of success on the merits, and that, in any event, plaintiff has failed to make the requisite showing of irreparable harm.

The '205 patent, entitled, "Pad Structures," was issued on May 4, 1965, to Dubuque Awning & Tent Co., as assignee of the inventors, Cyril P. Frommelt and Sylvan J. Frommelt. By change of name, Dubuque Awning & Tent Co., became Frommelt Industries, Inc., the plaintiff in this action. There is no question that Frommelt is the owner of the '205 patent.

The inventions described in the '205 patent are embodied in Frommelt's Armor Pleat product. Claim (1) of the patent claims a vertical pad structure which is mounted on a rigid backing member and secured to either side of a loading dock doorway to close off the space normally found between the sides of the doorway and the rear end of a truck body during the loading cycle. The vertical pads are comprised of an elongated body of a cellular, resilient, compressible polymer, such as foamed polyether, which is commonly rectangular in cross-section and covered with a fabric on the three exposed sides which overlaps the rigid backing member and is secured thereto.

With these vertical, compressible pads mounted on either side of a loading dock doorway, a truck can be backed snugly against the pad structures to create a seal that prevents the exchange of air outside the building with the air inside either the truck body or the building itself while the truck is being loaded or unloaded. During the loading cycle, however, it is normal for the truck body to move up and down several inches due not only to weight of the material being loaded or removed but also to the use of fork lift trucks which enter the truck body to load or remove the materials. In the absence of some protective covering over the pad structures, this up and down movement of the truck body against the now-compressed foam pad abrades the pad, thereby shortening its useful life. This abrasive effect is heightened by the up and down movement of hinges and sharp corners which, projecting from the rear of the truck body, tend to snag and tear the pad structures.

Plaintiff has solved this problem and has been able to extend the useful life of its pad structures by providing, on the compressed, flat surface of the pad, a series of overlapping flaps or pleats (resembling shingles) which are attached to the pads' cover sheet only along their upper edges. Consequently, as the truck body moves up and down during the loading cycle, the flaps themselves absorb and respond to the vertical movement of the truck and any protruding sharp edges or hinges are also caught by the flaps which, being capable of a certain vertical mobility, eliminate the abrasion that would otherwise occur directly on the cover sheet. The invention claimed in claim (1) of the '205 patent thus describes an elongated compressible pad mounted on a rigid backing member, with "a cover sheet on said body and extending over said flat face and opposite sides of said body," "and a plurality of flaps of wear-resistent, flexible material attached to said cover sheet on said flat face, said flaps being arranged in a row extending longitudinally of said elongated body...."

Like Frommelt, defendant McGuire has been manufacturing and selling loading dock pads for many years. On August 3, 1977, patent No. 4,038,792 (" '792") entitled, "Wear Protector for Truck Dock Door Seal" was issued to McGuire, as assignee of the inventors, Winston B. McGuire and Stanley Makas. Patent '792 describes a door seal comprised of material-covered compressible pads arranged on the opposite sides and over the top of a loading dock door to provide an environmental seal during the loading cycle. The invention claimed in '792 is a device for reducing the abrasive wear on the covered pads that occurs, as described above, during loading and unloading. The claimed device consists of a facing strip composed of a tough, flexible transparent polymeric sheet material which is hung loosely over and substantially covers the length and width of the covered pad, being...