Hartford-Empire Co. v. Swindell Bros.
| Decision Date | 30 January 1937 |
| Docket Number | No. 2278.,2278. |
| Citation | 18 F. Supp. 191 |
| Parties | HARTFORD-EMPIRE CO. v. SWINDELL BROS., Inc. (AMSLER-MORTON CO., Intervener). |
| Court | U.S. District Court — District of Maryland |
Edwin F. Samuels, of Baltimore, Md., Wm. J. Belknap, of Detroit, Mich., and Robson D. Brown and Sidney F. Parham, both of Hartford, Conn., for plaintiff.
Cook & Markell, of Baltimore, Md., Wm. B. Jaspert, of Pittsburgh, Pa., and Lawrence C. Kingsland, of St. Louis, Mo., for defendant.
The three patents involved in this equity suit all relate to the annealing of glassware, and more particularly hollow glassware, such as bottles. Annealing is a process of heating and cooling. The pleadings in fact present for consideration six of the plaintiff's patents but counsel have agreed to rest the case upon three and to limit the number of claims in each to those hereinafter enumerated. The three patents and the particular claims thereunder for consideration are as follows: Mulholland reissue, No. 17,263, April 9, 1929, claims Nos. 2, 7, 44, 49, 50, and 52 to be taken as typical; Ingle No. 1,583,046, May 4, 1926, claim 5; Mulholland No. 1,840,463, January 12, 1932, claims 1 to 5, inclusive, with claim 5 typical.
The plaintiff is a Connecticut corporation which designs, builds and licenses the use of lehrs for the annealing of glassware. The defendant, Swindell Bros., Inc., is a Maryland corporation with plant in Baltimore City, manufacturing glass bottles. It uses three of the plaintiff's lehrs under license agreement and it also owns and uses two lehrs designed and made by the Amsler-Morton Company, a Pennsylvania corporation, which has been permitted to intervene in the case and as maker of the alleged infringing machine, has assumed the burden of the defense of this patent infringement suit for injunction and accounting.
The emphasis of the defense is placed on the point that the intervenor's apparatus does not infringe that of the plaintiff, but if infringement should be found, then the invalidity of the plaintiff's patents in view of the prior art is advanced as a further defense. As to the latter, the plaintiff replies that the defendant (and consequently the intervenor also) is as licensee of the plaintiff's apparatus, and by virtue of a special stipulation in the license agreement, estopped to deny the validity of the plaintiff's patents; but the intervenor says this position is not tenable because the alleged infringing device is entirely outside the scope of the patent agreement and therefore the estoppel does not arise. It may be said at once that it will not be necessary to adjudicate this issue in this case because I have reached the conclusion that there is no infringement. In passing it may, however, be pointed out there is substantial support for the intervenor's position in the very persuasive reasoning of Judge Dennison in the case of Indiana Mfg. Co. v. Nichols & Shepard Co. (C.C.) 190 F. 579, which was adopted and applied by Judge Sanborn in the later case of Symington Co. v. National Malleable Castings Co. (D. C.) 257 F. 564. See, also, International Burr Corp. v. Wood Grinding Service (C. C.A.2) 34 F.(2d) 905; Eskimo Pie Corp. v. National Ice Cream Co. (C.C.A.) 26 F.(2d) 901; Paramount, etc., Co. v. Moorhead, etc., Co. (D.C.) 251 F. 897, 902, affirmed (C.C.A.) 260 F. 841; Good Humor Corp. v. Bluebird Ice Cream (D.C.) 1 F. Supp. 850, affirmed (C.C.A.) 66 F.(2d) 1013; and Tate v. B. & O. R. Co. (C. C.A.4) 229 F. 141. And it is not denied by plaintiff's counsel that Swindell as the defendant in this case may refer to the prior art for the construction of the scope of the plaintiff's patents in support of defendant's claim of noninfringement. Westinghouse E. & Mfg. Co. v. Formica Insulation Co., 266 U.S. 342, 45 S.Ct. 117, 69 L.Ed. 316.
The intervenor for itself and for the defendant raises the defense of laches on the part of the plaintiff in the institution of the suit. It is pointed out that the Amsler-Morton Company's apparatus has been extensively in use in its present form since early in 1927; that the plaintiff became substantially advised as to its structure and operation at least as early as 1928 and thereafter on July 26, 1928, filed its application for its reissue patent No. 17,263, for the purpose of more clearly, in one or more of the claims, covering the Amsler-Morton lehr without successful defense based on a prior use by the Amsler-Morton Company in a lehr built for Frey & Son in 1919; and that the reissue patent as applied for was issued on April 9, 1929, and shortly thereafter the plaintiff charged the defendant with infringement under the reissue patent, which was denied by the Amsler-Morton Company's patent counsel in an extended letter giving the reasons for the denial. It is said the issue between the plaintiff and the Amsler-Morton Company was thus definitely joined on the question of patent infringement but nevertheless no suit has yet been brought by the plaintiff directly against the Amsler-Morton Company up to the present time. The plaintiff, however, takes the position that the defense of laches is a personal one to the defendant, Swindell, and therefore any delay in suit by the plaintiff against the Amsler-Morton Company is not properly in issue in the case. See Chandler & Price Co. v. Brandtjen & Kluge, Inc., 296 U.S. 53, 56 S.Ct. 6, 80 L.Ed. 39. And as to Swindell, it is pointed out by the plaintiff that the former acquired the alleged infringing apparatus only in April, 1931, and that suit was instituted here on July 30, 1934. Plaintiff's counsel offers an explanation and excuse for such delay as occurred by reason of lack of full and precise information as to the Amsler-Morton apparatus until 1930, and lack of reasonable opportunity to sooner sue due to other patent litigation. The theory of the intervenor here is that the plaintiff's long delay and failure even up to the present time in suing the intervenor operates as an implied license to it which it can validly pass on to Swindell. It is certainly doubtful whether laches alone without some positive element of estoppel, such as change in position, would be so operative. The plaintiff's excuses for delay in suing the Amsler-Morton Company are not impressive, but it would seem that even if laches were sufficient in this case to preclude an accounting as against Swindell, it would not be sufficient to deprive the plaintiff of its right to an injunction if otherwise existent. See Menendez v. Holt, 128 U.S. 514, 524, 9 S. Ct. 143, 32 L.Ed. 526; Denominational Env. Co. v. Duplex Env. Co. (C.C.A.4) 80 F.(2d) 186, 193; A. R. Mosler & Co. v. Lurie (C.C.A.2) 209 F. 364. It is, however, unnecessary to determine this issue of laches in this case in view of the conclusion already announced with regard to infringement.
Before detailed consideration of the plaintiff's several patents, and comparison of its apparatus with the alleged infringing apparatus of the Amsler-Morton Company (hereinafter some times for brevity called "Amco"), it is desirable to state very briefly, but sufficiently for the purpose of understanding the patents in the case, the essentials of the manufacture of glassware. The art is indeed a very old one. It was practiced to some extent by the Egyptians, more largely by the Romans, quite extensively in the Middle Ages in Western Europe, and also in this country during the Colonial period, and at all times subsequent thereto. Very briefly, the raw materials for glass making are melted in a large furnace or retort at a very high heat (about 2,500 degrees Fahrenheit) and the portions of the viscous mass are poured into molds or form-shaping machines at a temperature of about 1,800 degrees. From these molds the glassware thus formed, still in a plastic state, is transferred either manually or by an automatic conveyor a short distance into a tunnel-like structure called a lehr, about 60 to 70 feet in length, which is heated at the receiving end to a temperature of approximately 1,000 degrees, with a temperature gradient in the end. The glassware is transported slowly through the lehr on an automatic conveyor belt. The function of the lehr is to first reheat the glass and then gradually and uniformly cool it. This is called annealing. Plaintiff's patents all relate to the structure of the lehr made by it with one or more claims also for the method of annealing involved.
When the hollow glassware, in bottle shape for instance, is removed from the shaping molds the outside, which is in contact with the mold, is somewhat cooler than the inside and therefore the relatively greater contraction of the glass on the outside sets up strains and stresses which, if the glassware were allowed immediately thereafter to cool at the normal factory temperature, would cause it to at once break as a result of its own internal forces or to readily break thereafter upon slight pressure. To obviate this it is necessary that the glassware should be quickly placed in the lehr where for a certain period of time it will be again subjected to a relatively high temperature sufficient to renew its plasticity, and then it is allowed to cool in the slowly decreasing temperature until the whole of the glass article has become permanently set by uniform and gradual cooling. The range of temperature which must be maintained during this annealing stage in the manufacture of glassware is from 1,000 degrees F. to approximately 750 degrees. It is essential, therefore, that this temperature be maintained in the lehr during the annealing stage. It is called the critical range of temperature. The linear extent of the lehr in which this critical range of temperature must be maintained depends upon the amount and thickness of the glassware and is, of course, also affected by the rate of forward progress of the glassware through the lehr. After the glass has successfully passed the annealing stage the remaining function of the lehr is merely to gradually reduce the...
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Hartford-Empire Co. v. Swindell Bros.
...should be narrowly construed and that, when so construed, they were not infringed by the lehr of defendants. See Hartford-Empire Co. v. Swindell Bros., D. C., 18 F.Supp. 191. Annealing is a process of controlled heating and cooling of newly made glassware to eliminate or minimize strains in......