Kalkowski v. Ronco, Inc.

• Court: U.S. District Court — Northern District of Illinois
• Writing for the Court: Dressler, Goldsmith, Clement & Gordon, Chicago, Ill., for defendant
• Citation: Kalkowski v. Ronco, Inc., 424 F.Supp. 343 (N.D. Ill. 1976)
• Decision Date: 03 December 1976
• Docket Number: No. 71 C 743.,71 C 743.
• Parties: Kurt Ulrich KALKOWSKI, Plaintiff, v. RONCO, INC., Defendant.

424 F. Supp. 343

Kurt Ulrich KALKOWSKI, Plaintiff, v. RONCO, INC., Defendant.

No. 71 C 743.

United States District Court, N. D. Illinois, E. D.

December 3, 1976.

COPYRIGHT MATERIAL OMITTED

Hume, Clement, Brinks, Willian, Olds & Cook, Ltd., Chicago, Ill., for plaintiff.

Dressler, Goldsmith, Clement & Gordon, Chicago, Ill., for defendant.

MEMORANDUM

LEIGHTON, District Judge.

This is a patent infringement suit filed pursuant to the patent laws of the United States by Kurt Ulrich Kalkowski against Ronco, Inc. He asserts that jurisdiction is conferred on this court by 28 U.S.C. § 1338(a); and that under 28 U.S.C. § 1400(b), venue over the controversy lies in this district. In a one-count complaint, Kalkowski alleges ownership of United States Patent No. 3,452,895 and its infringement by Ronco through the making, using and selling of the device embodied in the patent. Ronco, in an answer which has been amended, concedes jurisdiction, admits venue, denies the allegations of infringement, and asserts that the patent issued to Kalkowski is not valid. And in two counterclaims, it seeks a judgment declaring the patent invalid, that there has been no infringement, that Kalkowski wrongfully used the number of his patent and thus engaged in false marking of his commercial product.

Trial by jury has been waived and evidence has been heard by the court. It consists of Kalkowski's testimony, that of three witnesses for Ronco, designations of excerpts from depositions, and 129 exhibits offered by and received from both sides. In addition, the parties have stipulated to certain uncontested facts. They agree that the principal issue to be resolved is whether United States Patent No. 3,452,895 is valid. They also agree that a subsidiary issue is whether Kalkowski has wrongfully used the number of his patent and thus engaged in false marking of his commercial product. The issues arise from the following facts.

I

Kurt Ulrich Kalkowski is a German citizen who lives near Cologne in West Germany. Since July 1, 1969 when it was issued, he has been the owner of United States Patent No. 3,452,895. Defendant-Counterclaimant Ronco, Inc. is a corporation organized under the laws of Illinois where it has an established place of business within the jurisdiction of this court.

In 1966, some time during the Christmas season, Kalkowski's wife was injured in her kitchen by hot grease that splattered from a frying pan and damaged the retina of her right eye. This unfortunate incident led Kalkowski to become interested in the problems presented by the splattering of hot grease from frying pans and like kitchen utensils. As a result, he began studying the phenomenon in order to find a solution. At the time, he did not know there were utensils which had been developed to deal with the mundane difficulties to which his attention had been attracted. At first, he thought that a solid lid, one that could be placed over the utensil was the solution. His wife, however, pointed out that a solid lid would cause steaming and prevent frying. Further, she told Kalkowski that a lid would prevent one using the utensil from seeing the food being prepared. For these reasons, Kalkowski concluded that his initial, but simple, suggestion was not the answer.

Consequently, he embarked on an intensive study of the causes and nature of hot grease splattering from frying pans and like kitchen utensils. In the process, he learned that there were several patented products developed by others who had been attracted to the same problem. These products and their patents disclose that the phenomenon of hot splattering grease had preoccupied a long list of inventors. For example, on June 7, 1933, Esten U. Roland of Shiloh, Ohio, applied for a patent on an invention he described as a frying pan cover, "cheap to manufacture * * *" because he said that "meat cooked in an open pan will spatter grease over the stove and upon the cook." He was successful. United States Patent No. 2,002,237 was issued to him on May 21, 1935.

On February 21, 1950, Vern R. Drum of Detroit, Michigan, obtained Patent No. 2,498,534 for an invention he called "a spatter shield to be used in connection with frying pans or similar cooking utensils." His description of the invention disclosed three basic elements: "an outer ring, a handle portion, and an inner shield which could be made from wire mesh * * *." Drum specified that the central wire mesh shield portion of his invention was to be made slightly arcuate; that is, it was to have a domed or bowed formation by which it presented a concave surface to the interior of the utensil when the lid is placed in position. This contrasted with a planar or level surface for utensils of this kind.

John B. Smith of Oakland, California in 1953 obtained United States Patent No. 2,636,636 and Aniela Drakoff of Hartford, Connecticut in 1955 obtained Patent No. 2,802,513, both recognizing an equivalency in generally planar or level and arcuate or domed shaped anti-spattering devices designed to cover frying pans and like cooking utensils. Drakoff's patent, and No. 2,760,762 issued to Richard B. Cronheim of St. Louis, Missouri on August 8, 1956, teach that one of the functions of a generally flat anti-splattering utensil is its use as a device with cooking vessels of various diameters and sizes. Drakoff's description of her 1955 invention, and the drawings she furnished the patent office, show that the use of a generally flat mesh in an anti-splattering device was an equivalent and alternative configuration to the somewhat domed shaped mesh she proposed.

From their respective patents, it appears that Smith, Cronheim and Drakoff all claimed that they had invented an anti-splashing device, one which they said could intercept droplets of grease from hot frying pans while permitting steam to escape in the process of cooking food. Collectively, these patents speak of the advantages of heat reflection from cooking utensils and the utility of an anti-splattering device that could be used with multiple-size frying pans. Drum and Drakoff both gave specifications of inventions which declared the desirability of using mesh that minimizes the splattering of hot grease from frying pans while allowing steam to escape.

In his patent application, Kalkowski asserted that the object of his invention was "* * * to provide a utensil with which one can prevent the sprays from frying vessels and the undesirable and dangerous consequences resulting therefrom without influencing the actual frying process, * * *" and that "the utensil is to be economical in manufacture and simple in use." With regard to the material out of which the invented utensil was to be made, Kalkowski stated that "the cover plate could actually be any plate which is provided with holes or apertures over substantially all its area. According to a preferred embodiment of the invention, however, the cover plate consists of a wire mesh which is fixed to a rigid frame." His invention, according to Kalkowski, was a kitchen utensil that could "* * * be placed over the top of a heating vessel such as a frying pan, cooking pot, casserole or the like which contains water from the food cooked therein * * *." On July 1, 1969, Patent No. 3,452,895 was issued to him; and the references made by the Patent Office were to the patents issued to Roland, Drum and Drakoff, and Patent No. 2,384,452, issued to George P. Christopher of Seattle, Washington on May 9, 1954. Claim 1 of Kalkowski's patent described a device which incorporated three basic elements: a mesh, a frame, and a handle.

Before the patent issued, in fact, late in 1967, Kalkowski began selling a utensil manufactured along the lines described in the patent application. He had succeeded in obtaining two utensil manufacturing companies to make and supply him with a quantity that enabled him to display his invention and attract attention to its features. During the same week he obtained the patent, and through a West German representative, Kalkowski entered into negotiations with a Chicago-based company, Business Builders International, Inc., and ultimately signed an agreement by which it was given exclusive rights to represent him in the distribution of his invention in all parts of the world, except Europe. This arrangement was successful. BBI, as the company came to be known to Kalkowski, marketed the utensil, packaged it for American consumption, advertised it in television commercials, gave it the name "Handi-Screen," and described it as a splatter shield that "* * * protects against burning from splattering fat, and keeps stove, kitchen walls and floors free of messy grease by trapping spatterings while allowing steam to escape." In the period between the exclusive arrangement and the trial of this case, BBI sold approximately 2,700,000 Handi-Screens for an approximate dollar volume of $9,000,000.

During the month of June 1970, Ronco became interested in manufacturing an anti-splattering device. In fact, it wanted to copy Kalkowski's Handi-Screen in the form it was being distributed by BBI in the United States. Through one of its executives, Ronco consulted two firms of patent attorneys, one composed of the lawyers who represent it in these proceedings. Either at Ronco's suggestion, or that of someone in the law firm, a Handi-Screen was purchased and examined by the attorneys. One firm, the lawyers that now represent Ronco, concluded and advised it that Kalkowski's patent did not "cover the Handi-Screen product as presently manufactured and that you are free to copy it if you wish to do so." The attorneys gave as their reason the fact that, in their considered judgment, the product and the claims of Kalkowski's patent did not conform.

The other firm reached the same conclusion and gave Ronco the same advice. They expanded their reasoning to include the fact that when Kalkowski applied for his patent, he filed nine claims which the Patent Office rejected...