Hirs v. Detroit Filter Corporation, 19466.

• Decision Date: 16 April 1970
• Docket Number: No. 19466.,19466.
• Citation: 424 F.2d 1040
• Parties: Gene HIRS, Hydromation Engineering Company, a Michigan Corporation, and Moore Filtration Company, a Michigan Corporation, Plaintiffs-Appellants, v. DETROIT FILTER CORPORATION, Defendant-Appellee.
• Court: U.S. Court of Appeals — Sixth Circuit

424 F.2d 1040 (1970)

Gene HIRS, Hydromation Engineering Company, a Michigan Corporation, and Moore Filtration Company, a Michigan Corporation, Plaintiffs-Appellants, v. DETROIT FILTER CORPORATION, Defendant-Appellee.

No. 19466.

United States Court of Appeals, Sixth Circuit.

April 16, 1970.

H. P. Settle, Jr., Southfield, Mich., for plaintiffs-appellants; Settle, Batchelder & Oltman, Southfield, Mich., on brief.

Don K. Harness, Detroit, Mich., for defendant-appellee; Harness, Dickey & Pierce, Detroit, Mich., on brief.

Before PHILLIPS, Chief Judge, and CELEBREZZE and PECK, Circuit Judges.

JOHN W. PECK, Circuit Judge.

This is the third suit between these parties. Appellants are the owner and licensees of United States Letters Patent Nos. 2,867,325 and 2,867,326, covering generally an industrial filter designed to filter dirty liquids. In the first action between these parties the District Court found that a filter manufactured and sold by appellee infringed the above patents. Pursuant to that finding, the District Court, on November 22, 1965, enjoined the appellee from:

"Manufacturing, using and/or selling filter apparatus embodying the invention described in claim 11 of United States Patent No. 2,867,325 and claims 6 and 7 of United States Patent No. 2,867,326."

The second action arose shortly thereafter when appellee changed slightly the design of its filter and continued to manufacture and sell its filter as modified; upon application by appellants, appellee was found to be in contempt of the injunction. The parties then entered into a licensing agreement whereby appellee was permitted to continue to manufacture and sell its earlier enjoined filter, but in 1966 appellee again changed the design of its filter, producing what it called a "new Series D" filter, and refused to pay any more royalties under the licensing agreement. Appellants thereupon brought this third action seeking to have appellee held in contempt for violation of the November 22, 1965 injunction. Following an evidentiary hearing the District Court held for the appellee.

The primary issue here is whether the District Court applied the correct legal standard to the evidence adduced at the contempt proceedings. Appellants contend that the only proper test of whether there has been contempt of a patent injunction is whether the presently accused device is the equivalent of the device originally found to have infringed the patent. Appellants rely in particular on the decision of this Court in Field Body Corp. v. Highland Body Mfg. Co., 13 F.2d 626 (6th Cir. 1926), wherein it was stated:

"The relation of the Morrison patent to other structures and the validity of certain of its claims are argued by counsel for appellant as though the adjudication of validity and infringement were under review. We are not concerned with the prior art, nor with an original interpretation of the claims of the patent. It suffices here that in an action between the parties the patent was held infringed by appellant\'s original structure. The question, then, is whether the modified structure is the equivalent of the original in its relation to the patent in suit." 13 F.2d at 627.

In the present case the District Court, in holding for the appellee, stated:

"There is clearly no literal infringement of Plaintiff\'s claims, nor is there equivalence between the two structures, accused and accusing, or in their operation."

Appellants contend that this language shows that the District Court applied an improper legal standard to the evidence in that it considered the question of infringement as well as the question of equivalence.

Under the circumstances of this case, however, we do not consider the approach taken by the District Court to have been...