Jenn-Air Corporation v. Penn Ventilator Co.

• Decision Date: 27 June 1972
• Docket Number: No. 71-1446,71-1447.,71-1446
• Citation: 464 F.2d 48
• Parties: JENN-AIR CORPORATION, Plaintiff-Appellant, v. PENN VENTILATOR CO., Inc., Defendant-Appellee Cross-Appellant.
• Court: U.S. Court of Appeals — Third Circuit

464 F.2d 48 (1972)

JENN-AIR CORPORATION, Plaintiff-Appellant, v. PENN VENTILATOR CO., Inc., Defendant-Appellee Cross-Appellant.

Nos. 71-1446, 71-1447.

United States Court of Appeals, Third Circuit.

Argued April 14, 1972.

Decided June 27, 1972.

C. Frederick Leydig, Wolf, Hubbard, Leydig, Voit & Osann, Chicago, Ill., for appellant in No. 71-1446 and appellee in No. 71-1447.

Dana M. Raymond, Brumbaugh, Graves, Donohue & Raymond, New York City, for appellant in No. 71-1447 and appellee in No. 71-1446.

Before McLAUGHLIN, VAN DUSEN and ALDISERT, Circuit Judges.

OPINION OF THE COURT

McLAUGHLIN, Circuit Judge.

This is a patent infringement suit involving three of plaintiff's power ventilator patents. There was a fourth patent which plaintiff had originally claimed defendant had infringed. Plaintiff withdrew that charge prior to trial and at plaintiff's request, the district judge dismissed it with prejudice at the opening of the trial herein.

Application for his first patent was made by Mr. Jenn, its inventor, July 2, 1945. The patent, 2,458,607, hereafter called '607, was allowed Mr. Jenn April 10, 1951. He assigned it to his plaintiff corporation December 1, 1967. The patent expired April 10, 1968, a year prior to the trial of this appeal. In its suit, plaintiff seeks damages for infringement of its '607 patent by defendant up to six years prior to its present action. Plaintiff corporation has been producing Mr. Jenn's '607 ventilator since 1947. Defendant and others have been making and marketing what is substantially the Jenn exhauster since about 1955. The trial judge sharply and accurately found that the placing of the '607 ventilating device produced a novel result which was non obvious. He soundly held that the placement of the exhauster on a building external wall "* * * had special advantages not found in prior art ventilators, especially in connection with their use in restaurants, including inter alia placement of noise outside the room ventilated, ease of installation, lower cost and greater resistance to the elements." We thoroughly agree with those findings. It is not contested that '607 has had and continues to have fine commercial success.

We also agree that defendant's various models of its so called "Wall Domex" are and have been flagrantly, since defendant has been putting them on the market, as the district court found, "* * * mechanically and functionally the same as plaintiff's '607 in every material respect."

Defendant still formally asserts that it did not infringe on the '607 patent claims. We find no merit whatsoever in defendant's contention as here presented. Turning from that, defendant contends that the Jenn-Air Corporation is barred by its laches from collecting damages from the infringer defendant. The latter pins its hopes on what it states, are non contested facts that Jenn-Air delayed at least nine years in filing suit against defendant for the latter's glaring misuse of plaintiff's '607 patent. There is nothing in this record to warrant a ruling of actual prejudice to this defendant from any delay in plaintiff starting its lawsuit against this defendant for its unconscionable infringement of plaintiff's '607 patent through the years. There was some delay in starting that cause but there was no harm to defendant in that, all that happened to it was its continuance of counterfeiting and selling its infringing product. As we held in Sobosle v. United States Steel Corporation, 359 F.2d 7, 12 (1966) "Laches, of course, requires more than lapse of time; as an equitable defense it is determined in the light of all the existing circumstances and requires that the delay be unreasonable and cause prejudice to the adversary." In Holmberg v. Armbrecht, 327 U.S. 392, 396, 66 S.Ct. 582, 584, 90 L.Ed. 743 (1946), Mr. Justice Frankfurter for the Court held that in a question as to whether there should be equitable intervention against a plaintiff such as here "* * * that which is decisive for the chancellor's intervention, namely, whether the plaintiff has inexcusably slept on his rights so as to make a decree against the defendant unfair." In the earlier decision of Russell v. Todd, 309 U.S. 280, 287, 60 S.Ct. 527, 84 L.Ed. 754 (1939) the Court there held that in the type of problem before us, plaintiff's delay must be unexcused and prejudicial to defendant.

There can be no mistake about the above governing law on this question. The delay must be prejudicial to the defendant. The fact which defendant wholly overlooks is that plaintiff was protecting its '607 patent in a suit against another infringer from November 1963 to April 18, 1966. Plaintiff in December 1967 applied to bring its '607 patent into this litigation. Under these facts, it is sound law as plaintiff urges that it is not necessarily bound to take on more than one infringer at a time.¹ As we have seen, plaintiff was busy with its action against another infringer from 1963 to April 18, 1966. In December 1967 it did proceed against defendant. Again, as stated by plaintiff, there is no delay of nine years or even four years by plaintiff sleeping on its rights. There is nothing factual in the trial transcript pointing to any prejudice whatsoever to defendant, actually during the entire time it was busily engaged in turning out infringements of the Jenn-Air invention. To be successful in its theory that plaintiff, owner of this most worthwhile help to the entire ventilator industry, must lose out in its court ruled proper claim, defendant must show, as it alleges, that there had been nine years of unexcused delay by plaintiff in its cause against the defendant and that defendant had been prejudiced thereby. We have seen the delay was not nine years or as much as six years. We have also seen that although defendant said it had been prejudiced there is nothing in the record indicating that this was a fact. To the contrary, defendant never even tried to prove that. What it did was assert that plaintiff must affirmatively prove that its delay, if any, in pursuing defendant for its infringement damages did not prejudice defendant. That is not the law; it is the defendant who must prove that there was unexcused delay on the part of the plaintiff and that defendant was prejudiced as a result. There has been no proof of either in this appeal. In that situation plaintiff's '607 claim against defendant is not barred by laches.

In strong addition to the above conclusion with reference to the laches contention, that defense appeared in defendant's answer to plaintiff's second and supplemental complaint. Plaintiff served demands for answers to its interrogatories calling for defendant's reasons justifying that defense. The interrogatories were never disputed by defendant but the latter simply refused to answer them. Plaintiff endeavored to obtain an order that defendant either support its laches defense or that the said defense be stricken. The court noted during the trial that "Now the effect of that (defendant not answering the interrogatories) was really to preclude effective discovery on that issue by the plaintiff." (Emphasis supplied). Plaintiff's motion was not passed upon until after the trial had taken place and during the drafting of the opinion. The motion was then denied. The court held that plaintiff had not been prejudiced by defendant's refusal to answer the interrogatories; that plaintiff could have and did obtain whatever information it desired by its own advices and that defendant had brought in a new attorney a month before trial time. There had been an attorney representing defendant in this matter for over four years prior to that new lawyer's appearance in the litigation.

We find that the defendant's proposition that plaintiff is deprived of its claim of damages for infringement by defendant of its '607 patent through its laches is without merit. We further must conclude under the facts before us that defendant's refusal to answer plaintiff's interrogatories regarding the basis of defendant's defense of laches was completely improper and of serious consequences to plaintiff's presentation of its case.

The judgment of the district court as to plaintiff's claim for damages against defendant for infringement of its '607 patent will be reversed and this branch of the instant suit will be retried with respect to the amount of damages sustained by the plaintiff.

Plaintiff's remaining patents in this suit are 3,085,647 ('647) and 3,110,357 ('357). Both these patents were applied for by Mr. Jenn and William E. Morrison, the '647 on November 7, 1960 and the '357 on...