Indecor, Inc. v. Fox-Wells & Co., Inc.
| Decision Date | 03 September 1986 |
| Docket Number | No. 83-5739 (PKL).,83-5739 (PKL). |
| Citation | 642 F. Supp. 1473 |
| Parties | INDECOR, INC., Plaintiff, v. FOX-WELLS & CO., INC., Defendant. |
| Court | U.S. District Court — Southern District of New York |
COPYRIGHT MATERIAL OMITTED
Dressler, Goldsmith, Shore, Sutker & Milnamow, Ltd., Chicago, Ill. (John P. Milnamow, Henry S. Kaplan, of counsel), Patterson, Belknap, Webb & Tyler, New York City (David F. Dobbins, Linda Novak, of counsel), for plaintiff.
Fiddler & Levine, New York City (Alan H. Levine, Robert W. Fiddler, of counsel), for defendant.
This is an action by Indecor, Inc. ("Indecor") against Fox-Wells & Co., Inc. ("Fox-Wells") for infringement of claims 1-2 and 4-15 of United States Patent No. 4,377,195 ('195 Patent) entitled "Private Cubicle Enclosure." Indecor markets its product under the name KOMPLETE KUBE. Fox-Wells markets its product under the name TOTAL CUBE. Indecor seeks an injunction, damages and an award of costs and attorneys' fees. Jurisdiction for this action arises in this Court under the Patent Laws of the United States, 35 U.S.C. §§ 101 et seq., and upon 28 U.S.C. § 1338. Venue is proper in this district pursuant to 28 U.S.C. § 1400(b).
As defined in the Pre-Trial Order, the issues to be tried with respect to liability are the following:
This matter was tried to the Court without a jury on March 10 and 11, 1986 and May 1, 7, 8 and 9, 1986 on liability issues only. A trial on damages will take place subsequently. The following shall constitute the Court's findings of fact and conclusions of law pursuant to Fed.R.Civ.P. 52(a).
The '195 Patent was issued in the name of Hans Jack Weil on March 22, 1983. Indecor is the exclusive licensee under the '195 Patent pursuant to a license agreement dated June 1, 1983. Indecor is an Illinois corporation, with its principal place of business at 5009 North Winthrop, Chicago, Illinois. Mr. Weil founded Indecor in 1950 and is its president. Fox-Wells is a New York corporation having a regular and established place of business at 58 West 40th Street, New York, New York.
It is common practice in non-private hospital rooms to use curtains drawn around each individual bed to provide privacy for the patient. Usually, the curtain is made of a lower opaque portion to provide privacy, and an upper mesh portion to provide for the transmission of light and air into the private space. Along the top margin are eyelets or grommets to facilitate the support of the curtain. Conventionally, such a curtain is made of initially separate opaque and mesh fabrics which are sewn together. The standard cubicle curtain has a fabric portion made of jean cloth, usually 38 inches wide. Several sections are sewn together to make the width for the finished cubicle curtain. The nylon mesh portion was then sewn to the top of the jean cloth sections.
For safety reasons, a hospital cubicle curtain must be flame resistant. The jean cloth is usually treated to make it flame resistant. For the purposes of this action, the terms "flame resistant," "flame retardant," and "fire retardant" are used inter-changeably. As a practical matter, this means that the curtain fabric must pass certain recognized tests, such as those prescribed by the National Fire Protection Association, and identified as the NFPA 701 small scale and NFPA 701 large scale tests. In conducting these tests, a sample of fabric is brought into contact with a flame, and the flame is then removed. To pass the test, the fabric must not burn for more than a specified period after the flame is removed. Any material which breaks away or drips from the test specimen must not burn after reaching the floor of the testing chamber. The vertical spread of burning, i.e., the "char length" must not exceed a certain length.
Other cubicle curtain constructions that were known before the '195 Patent are shown in Boerner U.S. Patent No. 3,321,003 and Tames U.S. Patent No. 3,438,422. These patents were called to the attention of the Examiner in the specification of the '195 Patent application. The Boerner patent discloses a hanging drapery assembly for use in hospital rooms which has upper and lower sections attached to each other. The Tames patent discloses a ventilating curtain for hospital rooms which employs a complicated and costly construction to provide an upper portion with ventilating openings which do not become clogged with airborne cotton lint normally present in the atmosphere of hospital rooms. This patent contemplates the attachment of the lower and upper portions.
Private cubicle enclosure curtains that were known before the '195 Patent had many problems and disadvantages that were overcome by the Weil invention. Because the upper and lower portions of the prior art cubicle enclosure curtains were made of different materials, the two portions had different wear, maintenance and laundering characteristics. Also, the upper and lower portions were not uniform in color. For example, it was common for the nylon upper mesh portion to become brittle and prematurely wear out after repeated laudering. The nylon, which originally was white, tended to yellow after time. Since the manufacture of the prior art cubicle enclosure curtain involved sewing together several fabric sections for the lower portion, and then sewing the lower fabric portion to the upper mesh portion, the construction of the prior art curtain was labor intensive and costly. The multiple seams this process entailed caused problems such as puckering, breaking and they provided a site for the accumulation of bacteria. Cubicle curtains for use in hospital areas where there was frequent spillage of blood and other solutions were made with an impervious plastic sheet material called Staph Check.
Before the '195 Patent, it was also known to make fabrics with an open lacelike portion at one end and a more closely woven portion at the opposite end. U.S. Patent No. 2,125,422 and No. 2,037,629 to Bosworth and to Holgate disclose such fabrics. These patents were called to the attention of the Examiner in the application for the '195 Patent. The Holgate patent, No. 2,037,629, shows a curtain for home window use made of an integrally woven fabric having adjacent tightly and loosely woven sections, the loosely woven section serving the purpose of passing light and air. Similar woven constructions were described in two patents issued to Fischel, U.S. Patent No. 2,149,011 and U.S. Patent No. 2,416,438 and cited by the Examiner in the Official Action issued December 4, 1981. These Fischel patents do not suggest, however, the use of such woven fabrics as private cubicle enclosure curtains.
French Patent No. 1,366,224, issued June 1, 1964, introduced by Fox-Wells, discloses a window blind made of a fabric with alternating horizontal bands formed by tight weave and open weave. The fabric is made of fiberglass, an inherently flame resistant yarn. This patent does not suggest or disclose an integrally knit cubicle curtain for hospital use.
As part of its business, Indecor sold cubicle curtains to hospitals. Also, Indecor made draperies of VEREL and fiberglass fire resistant material. As a result of his experience in the cubicle enclosure business, Mr. Weil conceived of making an integral private cubicle enclosure curtain in the early 1970's in order to overcome the problems associated with the sewn multiple-section cubicle enclosure products that were then on the market.
Mr. Weil first experimented with the Staph Check material, which was sufficiently opaque to provide privacy to the bedridden patient. Since Staph Check was essentially impervious, Mr. Weil machine perforated the material to create openings for the transmission of air. Then, a 22" wide section of perforated Staph Check material was sewn to an unperforated 72" wide section of Staph Check material, to obtain a product that was comprised of the same color and material throughout. The perforated portion of the Staph Check material had adequate air transmission properties, but the perforations did not permit sufficient ventilating air to pass through. A private cubicle enclosure requires material with a minimum width of eight-to-nine feet. Since Staph Check was available only in a 72" width, further experimentation with the Staph Check material was discontinued.
Mr. Weil next experimented with opaque woven materials by perforating such material to provide for the passage of air. This was unsatisfactory since the perforations caused the woven material to fray around the perforations. Mr. Weil unsuccessfully expended a considerable amount of time and funds to develop a chemical to coat the fabric and bond the frayed fibers around the perforations. The chemical which prevented fraying at the perforations made the fabric too stiff. Also, the only looms available to weave material in a width suitable for a cubicle enclosure curtain were high volume production looms, which were not practical for the manufacture of such fabric.
In 1978, while...
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