Kawneer Co. v. Pittsburgh Plate Glass Co.

• Decision Date: 30 December 1952
• Docket Number: No. 1376.,1376.
• Citation: 109 F. Supp. 228
• Parties: KAWNEER CO. v. PITTSBURGH PLATE GLASS CO.
• Court: U.S. District Court — Western District of Michigan

109 F. Supp. 228

KAWNEER CO. v. PITTSBURGH PLATE GLASS CO.

No. 1376.

United States District Court W. D. Michigan, S. D.

December 30, 1952.

Loftus, Lucas & Hammand, Clarence J. Loftus, William E. Lucas, Chicago, Ill., Uhl, Bryant, Slawson & Wheeler, Marshall M. Uhl, Grand Rapids, Mich., for plaintiff.

McCobb, Heaney & Dunn, Edward C. McCobb, Stephen F. Dunn, Grand Rapids, Mich., Leland Hazard, Olen E. Bee, Oscar L. Spencer and Elmer S. Utzler, Pittsburgh, Pa., for defendant.

STARR, District Judge.

Plaintiff The Kawneer Company, a Michigan corporation, assignee and owner of U. S. Letters Patent No. 2,463,284 issued March 1, 1949, for a "glass setting means," filed complaint alleging infringement by defendant The Pittsburgh Plate Glass Company, a Pennsylvania corporation. It asked damages, injunction against further infringement, costs of suit, and attorney fees. Defendant answered denying infringement, alleging invalidity of patent, and by counterclaim asked for a declaratory judgment, 28 U.S.C.A. §§ 2201, 2202, determining that its glass setting does not infringe "any claims" of the patent, and determining that the patent is invalid.

In response to the defendant's motion for a more definite statement as to the claims of the patent alleged to be infringed, the plaintiff had specified claim 2, and it later advised the defendant that it would also rely on claims 4 and 7. In the course of the trial plaintiff moved to strike defendant's counterclaim as to all claims of the patent except 2, 4, and 7, on the ground that, having specified only these three claims as infringed, there was no actual controversy as to other claims. This motion, which was renewed at the conclusion of the trial, presented the question as to whether the defendant by its counterclaim for a declaratory judgment could raise the issues of validity and infringement as to all nine claims of the patent where, subsequent to the filing of its complaint generally alleging infringement, the plaintiff had sought to limit its charge of infringement and the scope of the litigation by specifying that it would rely on only three claims. In its opinion denying the plaintiff's motion to strike the court held that the complaint generally alleging infringement, the defendant's answer and counterclaim denying infringement and alleging invalidity, and the plaintiff's reply denying invalidity, created an "actual controversy" within the meaning of the declaratory judgments act as to the validity and infringement of all claims of the patent. See Kawneer Co. v. Pittsburgh Plate Glass Co., D.C., 103 F.Supp. 671. Therefore, the issues of validity and infringement as to all nine claims of the patent are now before the court for determination on the merits.

In support of its claim of invalidity of patent because of prior art anticipation and lack of invention, defendant cites the following patents and publications, none of which were cited as references in the Patent Office record of the prosecution of the application for the patent in suit: James P. Murnane, No. 1,003,195 issued Sept. 12, 1911; Daniel J. Murnane 1,008,984 issued Nov. 14, 1911; Reuter 1,589,560 issued June 22, 1926; Nelson 1,649,915 issued Nov. 22, 1927; Young 1,689,611 issued Oct. 30, 1928; Reuter 1,699,021 issued Jan. 15, 1929; Schlacks 1,724,374 issued Aug. 13, 1929; Toney 2,015,769 issued Oct. 1, 1935; Peterson 2,185,735 issued Jan. 2, 1940; Toney 2,268,269 issued Dec. 30, 1941; and Toney 2,475,682 issued July 12, 1949, on application filed May 26, 1945; "Pencil Points" November, 1940 (page 733); "New Pencil Points" February, 1943 (pages 1 and 29 to 41, inclusive); and "New Pencil Points" August, 1944 (pages 39, 40, 41, 58 and 59), all published by Reinhold Publishing Co., New York; "Architectural Record" October, 1942 (pages 71 to 78, inclusive), and "Architectural Record" February, 1945 (pages 104 and 105), both published by F. W. Dodge Corp., East Stroudsburg, Pa.; "Reports on Two Architectural Competitions," 1943, published and copyrighted by plaintiff; "Store Design" January, 1945, published and copyrighted by defendant.

The patent in suit relates to a flush-glazing, glass-setting means intended principally for store fronts, whereby plates of glass of greater width than the store-front openings are set in recessed, U-shaped, metal, longitudinally extending channels, thereby creating the appearance of continuous side walls or ceilings and affording full vision of the entire store when viewed from the outside. Claims 2, 4, 7, and 9, which are reasonably illustrative of all claims, provide as follows:

"2. In a metal plate glass setting for store fronts for firmly but resiliently holding large plates of glass in a U-shaped longitudinally extending recess in store fronts to create the appearance of a continuous uninterrupted wall or ceiling surface from outside the store after the plate of glass is installed, the combination of a metal main sash member having a base and spaced apart inside and outside walls perpendicular to the base at its opposite edges, each perpendicular wall extending away from the base substantially the same distance, a plate glass engaging flange extending from the inside perpendicular wall to the glass, a closure member having a relatively broad flat surface positioned with its exterior surface in a plane substantially with the inside glass engaging flange and extending continuously from the glass to the edge of the outside perpendicular wall of the main sash member, said flat closure member having a leg extending toward the base, fastening means mounted in the main sash member for engaging said leg to yieldably secure said flat closure member in place and for resiliently holding a plate of glass against the plate glass engaging flange extending from the inside perpendicular wall, said fastening means including a lug and a screw for mounting said lug in position within said main sash member, part of said lug engaging the base of the main sash member while another part holds the glass against the glass engaging flange extending from the inside perpendicular wall."

"4. In a metal plate glass setting for store fronts for firmly but resiliently holding large plates of glass in a U-shaped longitudinally extending recess in store fronts to create the appearance of a continuous uninterrupted wall or ceiling surface from outside the store after the plate of glass is installed, the combination of a metal main sash member having a base and spaced apart inside and outside walls perpendicular to the base at its opposite edges, each perpendicular wall extending away from the base substantially the same distance, a plate glass engaging flange extending from the inside perpendicular wall to the glass, a closure member having a relatively broad flat surface positioned with its exterior surface in a plane substantially with the inside glass engaging flange and extending continuously from the glass to the edge of the outside perpendicular wall of the main sash member, said flat closure member having a leg extending toward the base, fastening means mounted in the main sash member engaging said leg to yieldably secure said flat closure member in place and for resiliently holding a plate of glass against the plate glass engaging flange extending from the inside perpendicular wall, said last named means including a screw tightening device and a clip."

"7. In a hollow metal plate glass setting for store fronts of the character described, the subcombination of a main metal housing and sash member having a metal base and spaced apart inside and outside metal walls extending perpendicular in substantially the same plane of termination, a metal plate glass engaging flange integrally formed on the inside perpendicular wall and extending at an angle from said perpendicular wall, a relatively broad metal closure member having a flat exterior surface in a plane substantially with the inside glass engaging flange and extending continuously from the glass to the edge of the outside perpendicular wall of the main sash member to provide a continuous space beneath the flange, closure and glass for housing glass clamping means, and means on the closure member for engagement by a closure fastening means."

"9. In a hollow metal plate glass setting for store fronts for firmly holding large plates of glass in a U-shaped longitudinally extending recess in store fronts to create the appearance of a continuous non-interrupted wall or ceiling surface from outside the store front after the plate of glass is installed, the subcombination of a main metal sash member having a base, an inside metal wall extending perpendicular to the base and away from the base substantially the same depth as the recess, a flange on the inside perpendicular metal wall and extending outwardly at an angle therefrom, a metal closure member having a relatively broad flat surface positioned with its exterior surface in a plane substantially with the inside glass engaging flange and extending continuously from the glass to the outer edge of the recess and providing a continuous space beneath the flange closure and glass for housing glass clamping means, and means on the closure member for engagement by a closure fastening means."

The application for the patent in suit was filed March 23, 1946, by Morris Ketchum, Jr., an architect of New York City, who had been retained by the plaintiff in 1943 and who had continued with plaintiff as a consultant on store-front design and development. This patent application contained nine claims. In September, 1947, claims 1 to 7 were rejected as unpatentable over Barclay 2,335,991 and Keil 1,907,117, and claims 8 and 9 were rejected as fully met by Zand 1,991,832. In view of these rejections, Ketchum canceled the nine claims in his application and in March, 1948, through substituted counsel, submitted four new claims numbered 10 to 13. On the request of Ketchum and on the representation that the...