Jenn-Air Corporation v. Modern Maid Company

• Decision Date: 03 October 1980
• Docket Number: Civ. A. No. 80-122.
• Citation: 499 F. Supp. 320
• Parties: JENN-AIR CORPORATION, a Delaware Corporation, Plaintiff, v. MODERN MAID COMPANY, a Delaware Corporation, Defendant.
• Court: U.S. District Court — District of Delaware

499 F. Supp. 320

JENN-AIR CORPORATION, a Delaware Corporation, Plaintiff, v. MODERN MAID COMPANY, a Delaware Corporation, Defendant.

Civ. A. No. 80-122.

United States District Court, D. Delaware.

October 3, 1980.

COPYRIGHT MATERIAL OMITTED

Jeffrey M. Weiner of Bayard, Brill & Handelman, P.A., Wilmington, Del., William A. Marshall and Alvin D. Shulman of Merriam, Marshall & Bicknell, Chicago, Ill., and J. Raymond Curtin, Syracuse, N. Y., of counsel, for plaintiff.

Arthur G. Connolly and Arthur G. Connolly, Jr., of Connolly, Bove & Lodge, Wilmington, Del., and Richard M. Beck, Wilmington, Del., of counsel, for defendant.

OPINION

LATCHUM, Chief Judge.

This is a patent infringement suit brought by Jenn-Air Corporation ("Jenn-Air") against Modern Maid Company ("Modern Maid") charging the latter with infringement of Jenn-Air's U.S. Patent No. 3,367,320 ("'320 patent") entitled "Self-Ventilating Cooking Range."¹ The alleged infringing device is a built-in ventilator, marketed as a Wisp-Air Vent System, which is incorporated in Modern Maid's Model KET 595 cooking range.² The case is presently before the Court on Jenn-Air's motions (1) for a preliminary injunction³ and (2) for judgment on the pleadings with respect to certain claims allegedly contained in Modern Maid's Second Counterclaim.⁴ These motions will be considered seriatim.

I. Motion for Preliminary Injunction

The standard for granting a preliminary injunction against infringement in a patent suit is an unusually high one. While the requisite showing on the merits in other types of cases is the probability of success, the party seeking preliminarily to enjoin infringement must demonstrate "beyond question" that the patent is valid, that the patent is infringed and that the party seeking such relief has valid title to the patent. Mayview Corp. v. Rodstein, 480 F.2d 714 (C.A.9, 1973); Eli Lilly & Co. v. Generix Drug Sales, Inc., 460 F.2d 1096 (C.A.5, 1972); Carter-Wallace, Inc. v. Davis-Edwards Pharmacal Corp., 443 F.2d 867 (C.A.2, 1971); Simson Bros. v. Blancard & Co., 22 F.2d 498, 499 (C.A.2, 1927); Zenith Laboratories Inc. v. Eli Lilly & Co., 460 F.Supp. 812 (D.N.J.1978); Heyman Mfg. Co. v. Electrix Corp., 200 F.Supp. 217 (D.R.I. 1961). In other respects, the standard for granting a preliminary injunction against infringement in a patent suit is the same as that applicable to other types of cases. The party seeking an interlocutory injunction thus must also show that it will be irreparably injured pendente lite if relief is not granted and, in addition, if relevant, the Court must also consider the possibility of harm to other persons from the grant or denial of the injunction, and the public interest. Eli Lilly & Co. v. Premo Pharmaceutical Laboratories, Inc. 630 F.2d 120 (C.A.3, 1980); Mayview Corp. v. Rodstein, supra; Eli Lilly & Co. v. Generix Drug Sales, Inc., supra; Zenith Laboratories, Inc. v. Eli Lilly & Co., supra.

A. The Probability of Success on the Merits

The Court finds that Jenn-Air's probability of success on the merits is problematic at best and certainly not "beyond question." While there is competent and uncontradicted evidence demonstrating Jenn-Air's ownership of the '320 patent,⁵ Jenn-Air has failed to show that the patent is "beyond question" valid and infringed.

1. Validity

Although in most patent suits the Court will start its analysis with the presumption that the patent is valid and place the burden of demonstrated invalidity by clear and convincing proof upon the party asserting invalidity, 35 U.S.C. § 282; Aluminum Co. of America v. Amerola Products Corp., 552 F.2d 1020, 1024 (C.A.3, 1977); Universal Athletic Sales Co. v. American Gym, Recreational & Athletic Equipment Corp., 546 F.2d 530, 540 (C.A.3, 1976), cert. den., 430 U.S. 984, 97 S.Ct. 1681, 52 L.Ed.2d 378 (1977) this is not true where interlocutory equitable relief is requested. Where a preliminary injunction is sought against infringement "the presumption of validity is too slim a reed" upon which to support a finding of validity. Mayview Corp. v. Rodstein, supra, 480 F.2d at 718. Hence, the burden is upon the party seeking pendente lite relief to produce independent evidence in support of validity, such as a prior adjudication of validity rendered on relevant grounds, public acquiescence in a situation where one would normally expect a challenge to or infringement of an invalid patent, or conclusive direct technical evidence. Eli Lilly & Co. v. Premo Pharmaceutical Laboratories, Inc., supra, 630 F.2d at 136, n.73; Mayview Corp. v. Rodstein, supra, 480 F.2d at 717; Carter-Wallace, Inc. v. Davis-Edwards Pharmacal Corp., supra, 443 F.2d at 871-74; Rosenberg v. Groov-Pin Corp., 81 F.2d 46 (C.A.2, 1936); Zenith Laboratories, Inc. v. Eli Lilly & Co., supra, 460 F.Supp. at 820-21. The rationale behind this rule was first enunciated in an oft-quoted passage written by Judge Learned Hand in Rosenberg v. Groov-Pin Corp., supra, 81 F.2d at 47:

The doctrine that in the absence of long acquiescence or adjudication a preliminary injunction in a patent suit will not go, is at first blush anomalous in the light of the presumption of validity which courts generally grant to a patent once issued. * * * The theory is * * * practical. Examiners have neither the time nor the assistance to exhaust the prior art; nothing is more common in a suit for infringement than to find that all the important references are turned-up for the first time by the industry of a defendant whose interest animates his search. It is a reasonable caution not to tie the hands of a whole art until there is at least the added assurance which comes from such an incentive.

The validity of the '320 patent in suit has not been determined by any prior adjudication. To demonstrate validity, therefore, Jenn-Air relies upon public acquiescence and direct technical evidence. Modern Maid, on the other hand, argues with some force that the indicia of public acquiescence do not, in this case, support the inference that the technical community has closely examined the '320 patent and judged it valid. Modern Maid further contends that the '320 patent is, in fact, invalid because it is merely an obvious modification of prior art, 35 U.S.C. § 103, and has presented direct technical evidence supporting that contention.

(a) Industry acquiescence

Courts have relied upon acquiescence by the industry as evidence of validity on the basis of the rationale that the failure of others in the industry to infringe the patent or to challenge it in court raises an inference that those who are skilled in the relevant art and who have an economic incentive to challenge the patent have examined it and determined that it is valid. Carter-Wallace, Inc. v. Davis-Edwards Pharmacal Corp., supra, 443 F.2d at 872-73; Rosenberg v. Groov-Pin Corp., supra, 81 F.2d at 48; Zenith Laboratories, Inc. v. Eli Lilly & Co., supra, 460 F.Supp. at 821-22. This inference may be supported or rebutted by other circumstantial evidence. For example, the long-standing commercial success of the patented product, the presence of fierce competition in the industry, and the fact that a patent was the product of an industry-wide search for a solution to an unmet need have all been found to reinforce the inference of validity raised by acquiescence. Zenith Laboratories v. Eli Lilly & Co., supra; Eli Lilly & Co. v. Generix Drug Sales, Inc., 324 F.Supp. 715 (S.D. Fla.1971), aff'd in part and vac. in part, 460 F.2d 1096 (C.A.5, 1972); Norwich Pharmacal Co. v. Veterinary Corp. of America, 296 F.Supp. 937 (M.D.Ga.1968). However, evidence that acquiescence could have been caused by factors other than belief in validity will rebut the inference of validity and, in that case, acquiescence cannot be used to establish validity "beyond question." Carter-Wallace, Inc. v. Davis-Edwards Pharmacal Corp., supra, 443 F.2d at 873.

The Court finds that Jenn-Air has failed to meet its burden of showing industry acquiescence that would raise a controlling inference that others in the industry had examined the '320 patent and determined it to be valid. First, the Court finds that Jenn-Air has failed to produce any evidence on the present record from which the Court could conclude that no other competitors have entered the market with ranges incorporating the self-ventilating feature described by the '320 patent.⁶ However, even if the Court assumes that the industry has acquiesced and that, from February, 1968, when the patent was issued,⁷ until Modern Maid entered the market in 1980, no other competitors had sold ranges incorporating a self-ventilating feature similar to the one claimed in the '320 patent, the Court is still unable to find that the assumed acquiescence raised an inference that experts in the industry had examined the patent and determined that it was valid. Rather, the Court, on the basis of the evidence before it, has concluded that it is as likely as not that the assumed acquiescence was due to factors unrelated to the validity of the '320 patent.

First, the existence of other patents covering various features of the Jenn-Air product into which the feature described by the '320 patent is incorporated makes it impossible to infer the validity of the '320 patent from the assumed industry acquiescence. The '320 patent describes a feature which may be incorporated into electric ranges so as to make those ranges "self-ventilating," employing a down-draft ventilating system which by means of a fan draws cooking odors, smoke and vapors through an elongate air inlet opening in the range top, thus creating a zone of low pressure immediately above the surface of the range top and extending adjacent to the area immediately above the series of aligned cooking elements (e. g., a line of burners, an electric grill, etc.) so as to effect a more efficient capture of the cooking odors, smoke and vapors than would conventional overhead hood-type ventilating systems.⁸ Jenn-Air...