Holmes v. Atlas Garage Door Co.
| Decision Date | 26 December 1945 |
| Docket Number | No. 2559-Y.,2559-Y. |
| Citation | 63 F. Supp. 692 |
| Parties | HOLMES v. ATLAS GARAGE DOOR CO. et al. |
| Court | U.S. District Court — Southern District of California |
Lyon & Lyon, by Reginald E. Caughey, all of Los Angeles, Cal., for plaintiff.
Carlos G. Stratton, of Los Angeles, Cal., for defendants.
By a decree entered on October 19, 1943, I found that Letters Patent No. 2228314, issued on January 14, 1941, to Verne L. Holmes, the plaintiff, and relating to a balanced door construction, were valid and that the defendants had infringed Claims 1 to 5, inclusive, and Claims 10 to 12, inclusive. The opinion in the case is Holmes v. Atlas Garage Door Co., D.C.Calif., 1943, 54 F.Supp. 368.
An appeal from the interlocutory decree filed October 22, 1943, was dismissed in the Circuit Court of Appeals for the Ninth Circuit on July 20, 1944, 144 F.2d 250, the mandate being spread on the minutes of this Court on September 5, 1944.
On May 14, 1945, a writ of perpetual injunction was issued enjoining the defendants or their agents from "manufacturing and causing to be manufactured, selling or offering for sale, using or causing to be used or otherwise disposing of any devices" embodying the invention, and particularly Claims 1 to 5, inclusive, and 10 to 12, inclusive, of the letters patent.
On June 15, 1944, the plaintiff entered into a license agreement with the defendant Atlas Garage Door Company, — a corporation controlled by the individual defendants Leon A. Wilson and Robert A. Wilson, the former being the President of the company, — whereby it granted them a license to manufacture the patented article throughout the States of California, Oregon, Washington, Montana, Wyoming, Nevada, New Mexico, Colorado, Texas and the northern portion of Idaho north of 44 degrees latitude. The license agreement referred to the Letters Patent, and described specifically the essential features of the patented article.
The paragraphs describing two of them are here given because they affect the present proceeding:
The license agreement has since been canceled, the cancellation becoming effective on October 5, 1945.
On November 16, 1945, the plaintiff petitioned for an Order to Show Cause why both the corporate and individual defendants should not be found guilty of contempt for violating the terms of the permanent injunction.
That civil contempt is the proper remedy for a violation of an injunction in a patent suit is not disputed. Nor is there any doubt about the extensive powers of the Court to punish the contemnor, in such proceeding, and to award to the patentee damages for infringement from the effective date of the injunction, as well as profits. See Leman v. Krentler-Arnold Co., 1932, 284 U.S. 448, 52 S.Ct. 238, 76 L.Ed. 389; Monroe Body Co. v. Herzog, 6 Cir., 1926, 13 F.2d 705; John B. Stetson Co. v. Stephen L. Stetson Co., 2 Cir., 1942, 133 F.2d 129.
The matter was heard on affidavits presented by both sides, supplemented by depositions. Two accused devices are involved, and counsel for both sides demonstrated their methods of operation in court.
The first accused device was palpably an infringement of the patented article as it contained means of securing pivotal action, — thus achieving the adjustability which I found to be the essential element of the invention.
The defendants sought to avoid pivotal action between the two members of the arm,—the bracket and the sleeve, — of the overhead hardware by a tack weld covering only a small portion of the pivotal area. This had the effect of immobilizing the two members. The tack weld could be readily broken by removing the nut from the bolt and prying between the bracket and the sleeve to exert a force on the weld or by the use of a chisel. Should the weld be broken, the bracket and associated sleeve would become adjustable and the weld, even if not chiseled off, but merely broken, would not interfere with the pivotal action. In addition to this, the extremity of the leg of the bracket extending from the door is rounded so as to facilitate pivotal movement, when the weld is broken.
I am of the view that this was obviously a clumsy subterfuge to avoid the effect of the decree. It is quite apparent that the small size of the weld is a direct invitation to any one possessing any mechanical skill to break it and achieve any pivotal adjustment that might be necessary in a particular installation. So that even if we take at its face value the defendant Leon A. Wilson's denial that he suggested to the purchasers the purpose of the weld and the manner of achieving a different result, the method adopted speaks for itself, "saute aux yeux", — as the French would say. For it could have no other object.
However, several considerations stand in the way of finding the defendants guilty of contempt for this action.
There is no evidence before the Court that devices containing this weld were sold in commercial quantities. So far as the record shows, the only sales were the two sales made to persons sent by the plaintiff. And they may have been old devices on hand, antedating the injunction. Of course, this, of itself, would merely affect the extent of the relief to be granted. It is referred to in order to express the view that the broad, summary powers of the Court to punish as contempt a violation of its decrees should not be used, except when there is flagrant violation.
The important fact, however, which calls for denial of relief, is the existence of the license. The license not only referred to the patent, but specifically set forth the elements of the invention which the licensee was authorized to manufacture and sell in certain territories....
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...Cir., 1937, 90 F.2d 468, 472; American Foundry & Mfg. Co. v. Josam Mfg. Co., 8 Cir., 1935, 79 F.2d 116, 117; Holmes v. Atlas Garage Door Co., D.C.S.D.Cal.1945, 63 F.Supp. 692, 695; Smith, Kline & French Laboratories v. Pro-Medico Laboratories, D.C. E.D.N.Y.1944, 58 F.Supp. 234, 235; Otis El......