King-Seeley Thermos Co. v. Reynolds Products, Inc.

• Decision Date: 25 September 1970
• Docket Number: No. 66 C 1389.,66 C 1389.
• Citation: 322 F. Supp. 713
• Parties: KING-SEELEY THERMOS CO., Plaintiff, v. REYNOLDS PRODUCTS, INC., Defendant.
• Court: U.S. District Court — Northern District of Illinois

322 F. Supp. 713

KING-SEELEY THERMOS CO., Plaintiff, v. REYNOLDS PRODUCTS, INC., Defendant.

No. 66 C 1389.

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

September 25, 1970.

William R. McNair, Hofgren, Wegner, Allen, Stellman & McCord, Chicago, Ill., Don K. Harness, Cyrus Minkler, Harness, Dickey & Pierce, Detroit, Mich., for plaintiff.

Ronald A. Sandler, Curtis F. Prangley, Mark H. Clayton, Prangley, Clayton, Mullin, Dithmar & Vogel, Chicago, Ill., for defendant.

FINDINGS OF FACT AND CONCLUSIONS OF LAW

NAPOLI, District Judge.

This cause coming on for trial, the Court having heard the evidence, having considered the memoranda of counsel for the parties and being fully advised in the premises, now finds:

This is an action for patent infringement by King-Seeley Thermos Co., Plaintiff, against Reynolds Products, Inc., Defendant. Plaintiff is a Delaware corporation having its principal office at Ann Arbor, Michigan, and its Queen Products Division is engaged in the manufacture and sale of flake or chip ice producing machines. Defendant, Reynolds Products, Inc., is an Illinois corporation having its principal office at Rolling Meadows, Illinois, and is engaged in the business of manufacturing chip or chunk ice producing machines. Plaintiff charges that Defendant's ice making machines Models 200, 300, 400 and 500 series infringe claim 5 of United States Letters Patent No. 2,753,694 (hereinafter referred to as "the '694 patent"), and claim 9 of United States Letters Patent No. 3,034,311 (hereinafter referred to as "the '311 patent").

Defendant for its answer denied infringement of the patent claims in suit and alleges that the patent claims in suit are invalid on several grounds. Defendant also alleges that Plaintiff is guilty of "unclean hands" and should be precluded from enforcing its rights in the '694 patent because of certain false representations or misrepresentations made in prior litigation involving the '694 patent.

Claim 5 of the '694 patent reads as follows:

"5. An ice chip producing machine comprising an elongated freezing chamber having an open end, means for supplying water to the inside of said freezing chamber,

means for cooling at least a portion of said freezing chamber to freeze ice on the inside surface thereof,

an ice conveying auger rotatably mounted in the freezing chamber with its spiral edge disposed in closely spaced relation to the inside wall of said chamber,

means for constantly rotating the auger to cause said spiral edge to shear off ice frozen on the inside wall of the chamber constantly to deliver ice to said open end of the freezing chamber,

and an ice disintegrating and removing member having a beveled ice engaging surface with the lower end of said surface being disposed substantially adjacent to the end of said auger and said lower end of the beveled portion being constituted as a narrow splitting element extending generally outwardly of the axis of rotation of the auger, said disintegrating and removing member serving to break up said ice and discharge the same with rotation of the auger."

Claim 9 of the '311 patent reads as follows:

"9. In an ice making machine comprising a

cylindrical freezing chamber,

means for cooling the freezing chamber,

means for supplying water to the freezing chamber,

means for including a spiral flight for advancing ice axially of the chamber,

the improvement comprising closure means for the end of the chamber towards which the ice is advanced defining substantially axially extending aperture means for effecting concomitant compression and axial discharge of ice outwardly of the freezing chamber,

the aperture means defined by said closure means being generally axially aligned with the freezing chamber and having a radial cross-sectional area relatively smaller than the radial cross-sectional area of the freezing chamber adjacent the terminal end of the flight to effect compression of the ice upon movement thereof axially of said closure member."

FINDINGS OF FACT

1. This action was filed on July 27, 1966 against Defendant charging infringement of the '694 patent and the '311 patent. Prior to trial it was stipulated that only claim 5 of the '694 patent and claim 9 of the '311 patent would be litigated.

2. The '694 patent was duly and legally issued to Plaintiff's predecessor, Queen Stove Works, Inc., on July 10, 1956 as the assignee of Fay A. Trow and Marcus Nelson, applicants of patent application Serial No. 310,016 filed in the United States Patent Office on September 17, 1952. Plaintiff is the owner of the '694 patent and entitled to bring this action for its infringement and to all rights of recovery for infringement thereof. Plaintiff and its predecessor are hereinafter referred to as "Plaintiff".

3. The '311 patent was duly and legally issued to Plaintiff on May 15, 1962 as the assignee of Marcus Nelson, applicant of patent application Serial No. 81,761 filed in the United States Patent Office on January 10, 1961, as a continuation-in-part of applicant's patent application Serial No. 697,681 filed November 20, 1957. Plaintiff is the owner of the '311 patent and is entitled to bring this action for its infringement and to all rights of recovery for infringement thereof.

4. Defendant is an Illinois corporation having its principal place of business in Rolling Meadows, Illinois, and has manufactured and/or sold within this district and within the six years next preceding the filing of the complaint, ice making machines which are identified as its Models 200, 300, 400 and 500 series machines. All of these machines manufactured and/or sold by Defendant are charged by Plaintiff to infringe claim 5 of the '694 patent and claim 9 of the '311 patent. Plaintiff on June 13, 1963, gave Defendant written notice of its claim of infringement of the '694 and '311 patents on account of the manufacture, use and/or sale by Defendant of ice making machines.

5. For the purpose of determining whether or not claim 5 of the '694 patent and claim 9 of the '311 patent are infringed by Defendant's various ice making machines, it has been stipulated by the parties that all of Defendant's 200 series machines, except for the first 552 of such machines, 300 series machines, 400 series machines and 500 series machines, except for 138 of such latter machines, can be considered by the Court as having the same construction. The first 552 of the 200 series machines of Defendant differ from the remaining machines insofar as the configuration of the extruding heads and cutters used therein are concerned. The 138 series 500 machines of Defendant differ from the remaining 500 series machines insofar as the dimensions of the root diameter of the auger used in such machines is concerned.

6. Flake, chip or chunk ice made by machines involved in this litigation is individual, relatively small pieces of ice which will not weld or mat together when stored in a storage bin and which can be easily scooped, handled, molded and pyramided and can be produced at relatively low cost. Due to its method of manufacture such ice is not completely dry and free of water as is cube ice which because of its method of manufacture is solidly frozen and contains no water.

7. In 1951 Plaintiff was manufacturing and selling machines for producing ice cubes and it was aware of a demand and need by its customers for relatively inexpensive machines which could manufacture low cost flake, chip or crushed ice on the premises of the customer. At that time a machine developed by Messrs. Nitsch and Hamner was submitted to Plaintiff as a salable flake ice making machine. This machine is generally depicted in United States Letters Patent No. 2,597,515 which issued to Nitsch on his foregoing machine. The Nitsch machine which was sent to Plaintiff had a triangular shape metal splitter finger mounted thereon outside of the freezing cylinder and above the auger flight which is not shown in the Nitsch patent. The splitter finger was put on the machine to cause ice conveyed from the cylinder to fall off the machine without being subjected to any compression or restriction and there was no difference in the quality of ice made in the Nitsch machine with or without the splitter finger.

8. Plaintiff's engineers experimented with the Nitsch machine in an effort to produce satisfactory flake ice but could not do so under varying conditions to which such machines would be subjected in use throughout the country. If Plaintiff attempted to get satisfactory hard ice from the Nitsch-Hamner machine the machine froze up and became inoperative and then if an adjustment was made in the machine to try to prevent such freeze ups the ice became slushy and unusable. The Nitsch machine was therefore not a machine which produced commercially acceptable or usable flake ice and it was not until the development of the '694 patent machines having a breaker head in the freezing chamber disclosed in the '694 patent that Plaintiff was able to produce commercially usable and salable flake ice in a cylinder and auger type ice making machine.

9. Both Plaintiff's patented commercial ice making machines and Defendant's accused commercial ice making machines were operated and made ice in courtroom demonstrations. These demonstrations clearly established that Plaintiff's and Defendant's commercial machines with a breaker head in the freezing cylinder produced commercially satisfactory ice which would not weld together in a storage bin while the same machines operated without a breaker head, and thus similar to the Nitsch machine, made ice which would not be commercially satisfactory flake, chip or chunk ice.

10. Plaintiff's machines covered by the '694 patent have been highly successful and produce commercially usable and acceptable flake ice at a cost of less than one tenth the cost of crushed ice purchased from commercial ice companies. During the period June 1952 through the year 1968, Plaintiff has sold over 210,000 devices...