Interspiro USA, Inc. v. Figgie Intern., Inc., Civ. A. No. 88-267-RRM.
| Decision Date | 16 March 1993 |
| Docket Number | Civ. A. No. 88-267-RRM. |
| Citation | 815 F. Supp. 1488 |
| Court | U.S. District Court — District of Delaware |
| Parties | INTERSPIRO USA, INC., n.k.a. Pharos Protection USA, Inc. and Pharos Tech USA, Inc., Plaintiff, v. FIGGIE INTERNATIONAL, INC., Defendant. |
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Jeffrey B. Bove, Connolly, Bove, Lodge and Hutz, Wilmington, DE, Mari G. Shaw, Martin J. Black, Dechert Price and Rhoads, Dale M. Heist, Albert J. Marcellino, Woodcock, Washburn and Kurtz, Philadelphia, PA, for plaintiff.
Donald F. Parsons, Jr., Morris, Nichols, Arsht & Tunnell, Wilmington, DE, Regan J. Fay, John A. Wasleff, John S. Cipolla, Jones, Day, Reavis and Pogue, Cleveland, OH, for defendant.
This is a patent case. The dispute arises out of an agreement, entered into by one of the plaintiffs, Interspiro USA, Inc. ("Interspiro") (n.k.a. Pharos Protection USA, Inc.) and defendant, Figgie International, Inc. ("Figgie"), settling a patent infringement lawsuit brought by Pharos. Pharos had claimed that Figgie infringed Pharos' patents for types of breathing regulators, U.S. Patent Nos. 4,361,145 ("'145 patent") and 3,716,053 ("'053 Patent"), most commonly used in the protective masks worn by firefighters, by manufacturing and selling a regulator known as the "Donning Switch." Figgie had asserted defenses of non-infringement and invalidity of the patents.
The parties' Settlement Agreement required, inter alia, Figgie to pay royalties for sales of certain regulators, including the Donning Switch. Sometime after the Court approved the Settlement Agreement, Figgie began to manufacture and sell another regulator, the "E-Z Flo Regulator," without paying royalties pursuant to the Settlement Agreement. The plaintiffs Pharos Protection USA, Inc. and Pharos Tech USA, Inc. (collectively, "Pharos"), who had since acquired Interspiro's rights under the Settlement Agreement, now claim that Figgie's manufacture and sale of the E-Z Flo, in addition to other practices allegedly depriving Pharos of its fair share of royalties, violates the Settlement Agreement, and have moved to enforce the Settlement Agreement. Docket Item ("D.I.") 91. Pharos' claims relate only to the '145 patent, as the '053 had expired prior to the events culminating in Pharos' motion. Pharos seeks damages for Figgie's breaches as well as attorneys' fees arising from Figgie's "bad faith."
From May 19, 1992, to May 21, 1992, the Court held a hearing on Pharos' motion. D.I.s 219-221. This is the Court's decision on the Motion to Enforce the Settlement Agreement.
Because firefighters work in highly dangerous environments, they use and carry a panoply of safety equipment. Among the most important is the Self Contained Breathing Apparatus (SCBA), a breathing device which protects firefighters from toxic fumes and supplies them with oxygen. SCBAs basically consist of a mask, an oxygen tank, and a regulator. The regulator, which is attached to the mask, is, essentially, a sophisticated valve. It allows a firefighter to inhale oxygen from the tank and also to exhale waste gases, and therefore is somewhat similar to the regulators SCUBA (an acronym for self-contained underwater breathing apparatus) divers use to obtain oxygen.
When the regulator valve opens to allow oxygen to enter the mask from a pressurized tank (the resulting rush of air is called "free flow"), the inside of the mask becomes temporarily pressurized. A pressurized mask is said to have "positive pressure" (also known as "gauge pressure" or "safety pressure"). Because at positive pressure the air pressure is greater inside the mask than outside, air from outside cannot flow into the mask. Conversely, when a mask does not maintain positive pressure, ambient air is free to leak into the mask, perhaps through leaks, cracks or gaps. Positive pressure inside the mask thus protects a firefighter from the dangerous fumes common in the firefighter's working environment.
The first SCBAs were equipped with regulators and masks which did not continuously maintain positive pressure inside of the mask. Instead, they maintained positive pressure only when the wearer inhaled and the regulator allowed pressurized oxygen to enter the mask; any increase in pressure was temporary. When the wearer was not inhaling (or exhaling), the inside of the mask was not pressurized, and the wearer was exposed to airborne toxins.
In 1971, Interspiro introduced its first SCBAs which could continuously maintain positive pressure. Interspiro patented at least one such device in 1973. Others received patents for SCBAs that maintained continuous positive pressure; for example, Dragerwerk AG received a German patent for such a device ("Drager Patent") in 1977. In such "positive pressure" masks, oxygen flows continuously into the mask, except during a brief period of exhalation. Positive pressure is nevertheless always maintained in the mask, as during exhalation it is the user's lungs, rather than the oxygen tank, that pressurizes the mask by forcing air into it.
While the introduction of continuous positive pressure was an important safety advance, a significant problem remained. Many of the positive pressure masks required that the positive pressure feature be turned on manually. Consequently, in stressful situations, a firefighter could forget to activate the positive pressure feature. Thinking positive pressure to have been established in the mask, the firefighter could unfortunately enter an environment where he might be susceptible to colorless, tasteless, and perhaps deadly fumes leaking into his mask.
In 1980 or earlier, two inventors, Ekstrom and Wettengren, found a solution to the problem. They designed a regulator that allowed the SCBA to supply positive pressure automatically upon the wearer's initial inhalation after putting on the mask. Turning off positive pressure — necessary to conserve the oxygen when the SCBA is not in use — remained a manual operation (pressing a button on the regulator). The automatic-on/manual-off function was made possible by employing a "detent mechanism" — which will be described in detail below — in the regulator. A user's initial inhalation would overcome the force holding the detent, and hence the regulator, in the off mode. The masks would then have positive pressure. Only by pressing a switch could the detent be restored to a position in which it would hold the regulator in the off position. A...
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