Interdynamics, Inc. v. Firma Wolf

• Decision Date: 23 July 1981
• Docket Number: No. 80-2254,80-2254
• Citation: 210 USPQ 868,653 F.2d 93
• Parties: INTERDYNAMICS, INC., and Smiths Industries, Limited, Appellants, v. FIRMA WOLF, Arend Wolf, and Trans Tech, Inc.
• Court: U.S. Court of Appeals — Third Circuit

Page 93

653 F.2d 93

210 U.S.P.Q. 868

INTERDYNAMICS, INC., and Smiths Industries, Limited, Appellants, v. FIRMA WOLF, Arend Wolf, and Trans Tech, Inc.

No. 80-2254.

United States Court of Appeals Third Circuit.

Argued March 23, 1981.

Decided June 30, 1981.

Rehearing and Rehearing En Banc Denied July 23, 1981.

S. Joseph Fortunato, Pitney, Hardin & Kipp, Newark, N. J., for appellants; Albert E. Fey (Argued), George M. Dentes, Fish & Neave, New York City, Henry R. Lerner, Levisohn, Niner & Lerner, New York City, of counsel.

Lloyd McAulay (Argued), McAulay, Fields, Fisher, Goldstein & Nissen, New York City, for appellees; Harold Friedman, Kirsten, Friedman & Cherin, Newark, N. J., of counsel.

Before HUNTER, SLOVITER and WISDOM, ^* Circuit Judges.

OPINION OF THE COURT

SLOVITER, Circuit Judge.

Interdynamics, Inc. and Smith Industries, Ltd. appeal from an order of the district court holding that the sale by defendant Trans Tech, Inc. of an automobile rear-window defroster kit was not a contempt of a consent decree entered in a prior infringement action between the same parties. As part of that consent decree appellees admitted the validity of the patent on which suit was brought and admitted that they had sold a defroster kit that infringed that patent. When Interdynamics applied for a contempt order based on Trans Tech's subsequent sale of a modified kit, the district court found that the new kit did not infringe the patent and refused to find a contempt. Because the district court applied an incorrect legal standard in deciding the question of contempt, we reverse and remand, 493 F.Supp. 22.

I.

Appellant Smiths Industries, a British corporation, owns a patent (Barnard U. S. Patent No. 3,757,087) for an automobile rear-window defroster. Appellant Interdynamics, Inc. is the United States licensee for the patent, markets the kit described in the patent, and has the right to sue for its infringement. This kit consists of a grid of metal heating strips sandwiched between a backing sheet and a top sheet of plastic. Installation of the defroster simply entails peeling off the backing sheet and placing the exposed strips and adhesive surface of the top sheet against the car window. The adhesive that covers the surface of the heating strips which contacts the glass is stronger than the adhesive attaching them to the top sheet on which they lie. Thus, when pressure is applied to the top sheet over the heating strips, the strips adhere to the window and the top sheet can be peeled away. This process leaves only the grid of heating strips on the surface of the window. This grid is then connected to the automobile's electrical system and heat can be generated by passing electricity through the heating elements.

Appellee Firma Wolf, a Dutch corporation owned by appellee Arend Wolf, developed a similar kit in Europe and sold it in the United States through appellee Trans Tech. The Wolf product differed from the Interdynamics kit in that the Interdynamics kit contains a single set of sheets supporting a full pre-arrayed grid of heating strips, while the Wolf product contained four sets of sheets. Each set in the Wolf product consisted of a backing sheet and a top sheet, between which were sandwiched two parallel heating strips also containing adhesives of different strengths. The sheets were long and narrow, and were packaged in coils. Installation of each set was performed as in the Interdynamics kit, except the four sets of heating strips had to be linked together as well as to the electrical system.

In March 1978 Interdynamics and Smiths filed an infringement action against Trans Tech, Arend Wolf, and Firma Wolf. At Trans Tech's instigation, a settlement was reached providing for a consent decree which was entered in that action on September 6, 1978. That decree provided in part:

2. Barnard United States patent 3,757,087 for HEATING ELEMENTS, owned by plaintiff Smiths Industries, Limited and solely licensed to plaintiff Interdynamics, Inc., is both good and valid in law and is enforceable;

3. Defendant Trans Tech, Inc. has infringed Barnard United States patent 3,757,087 by using and selling rear window defrosters identified with the trademark "JUSTLIKE" and manufactured by defendant Firma Wolf under the direction and control of defendant Arend Wolf.

Trans Tech agreed that it and those in privity with it should be permanently enjoined from infringing any claim of the patent. Pursuant to the settlement agreement, Interdynamics waived damages and gave Trans Tech the right to dismantle kits remaining in its inventory.

Soon after entry of the consent decree, Trans Tech began to market a modified version of the Wolf product, referred to by the parties as the Trans Tech product. In this product, the four coils did not contain separate top and backing sheets but were instead constructed in continuous rolls, much like rolls of conventional adhesive tape. The smooth back of each layer of plastic sheet served as the protective surface for the heating strips and adhesive surface in the layer above. Thus the need for a separate covering sheet was eliminated. The Trans Tech product was otherwise identical to the Wolf product.

In November 1978 Interdynamics applied for an order to show cause why Trans Tech should not be held in contempt for violating the consent decree and moved for an injunction against sale of the Trans Tech product. After a hearing later that month, the court stated that it would not reconsider whether the Wolf product was within the patent or whether the patent was valid. However, it concluded that it could not decide whether the Trans Tech product was a contempt until it had held a full trial on whether the Trans Tech product infringed the patent. ¹ The court scheduled a new hearing on the question of infringement, albeit emphasizing that these proceedings were a continuation of the prior action and not a new action for infringement.

Following the hearing on infringement, the court found that the Trans Tech product did not infringe the patent and was thus not a violation of the consent decree. The court stated that while it would not reconsider whether the Wolf product infringed the patent, which question had been determined in the consent decree, "it is clear that the Wolf product represented the outer boundary of infringement." The Trans Tech product, it found, differed significantly from that which the "patent can legitimately assert to fall within the scope of its claims." The Trans Tech product used heating strips "not in final configuration" and not "mounted between two sheets having different characteristics." The court stated that "(t)o argue that this product infringes the Barnard patent would amount to arguing that resistance wire and adhesive infringe," and concluded that the Trans Tech product neither infringed the patent nor violated the permanent injunction.

On appeal, Interdynamics contends that the district court erred in analyzing the question of contempt in this case as one of infringement in which the challenged Trans Tech product was compared with the claims of the patent. Interdynamics argues that the proper analysis of a claim of renewed infringement after entry of a consent decree requires, instead, comparison of the new product with the product previously admitted to be infringing. Only if the two are more than "merely colorably different" is there any need for further inquiry. Interdynamics argues also that assuming arguendo the question of infringement is relevant, then the Trans Tech product is infringing. Trans Tech and the other appellees respond that the district court properly undertook to determine whether the Trans Tech product infringes the Barnard patent. Because it does not infringe, they conclude, it cannot constitute a contempt of an injunction against infringement.

II.

This court has not previously considered what course should be followed by a court which has entered a consent decree in an infringement action, after which the infringer begins to sell a modified version of the infringing product. Analysis must proceed along the path provided by established legal principles. In the first place a consent decree, although negotiated by the parties, is a judicial act. United States v. Swift & Co., 286 U.S. 106, 52 S.Ct. 460, 76 L.Ed. 999 (1932). Such a decree possesses the same force with regard to res judicata and collateral estoppel as a judgment entered after a trial on the merits. See generally, Harding v. Harding, 198 U.S. 317, 25 S.Ct. 679, 49 L.Ed. 1066 (1905); Burgess v. Seligman, 107 U.S. 20, 2 S.Ct. 10, 27 L.Ed. 359 (1882). In patent cases as well, consent decrees entered in settlement of an infringement action are entitled to res judicata effect. See Brunswick Corp. v. Chrysler Corp., 408 F.2d 335, 337-38 (7th Cir. 1969); Siebring v. Hansen, 346 F.2d 474, 477 (8th Cir.), cert. denied, 382 U.S. 943, 86 S.Ct. 400, 15 L.Ed.2d 352 (1965).

This leads, then, to the second step which is that a party violating a consent decree may be subject to the powers by which a court protects its judgments, including most notably the power of contempt under 18 U.S.C. § 401 (1976). This section provides:

A court of the United States shall have power to punish by fine or imprisonment, at its direction, such contempt of its authority, and none other, as

....

(3) Disobedience or resistance to its lawful writ, process, order, rule, decree, or command.

See United States v. Armour & Co., 402 U.S. 673, 91 S.Ct. 1752, 29 L.Ed.2d 256 (1971); McCullough Tool Co. v. Well Surveys, Inc., 395 F.2d 230 (10th Cir.), cert. denied, 393 U.S. 925, 89 S.Ct. 257, 21 L.Ed.2d 261 (1968) (patent infringement decree); Siebring v. Hansen, 346 F.2d at 477 (patent infringement decree). Since failure to obey a court judgment is an indirect contempt, notice by an order to show cause and a plenary hearing are appropriate. See, e. g., Leman v. Krentler-Arnold Hinge Last Co., 284 U.S. 448, 52 S.Ct....