Kiwi Coders Corporation v. Acro Tool & Die Works
| Decision Date | 13 January 1958 |
| Docket Number | No. 12091.,12091. |
| Citation | 250 F.2d 562 |
| Parties | KIWI CODERS CORPORATION and James G. McKay, Plaintiffs-Appellees, v. ACRO TOOL & DIE WORKS and Alfred J. Farkas, Defendants-Appellants. |
| Court | U.S. Court of Appeals — Seventh Circuit |
Clarence E. Threedy, Edward C. Threedy, Chicago, Ill., for defendants-appellants.
I. Irving Silverman, Louis Swidler, Myron C. Cass, Chicago, Ill., for plaintiffs-appellees.
Before LINDLEY, SCHNACKENBERG and HASTINGS, Circuit Judges.
This is an appeal from a judgment of the district court holding defendants guilty of civil contempt for continued infringement of two patents in violation of an injunction entered by that court on April 1, 1955 in a consent decree.
The plaintiffs below (appellees) were Kiwi Coders Corporation (hereinafter called Kiwi) and its president, James G. McKay, and the defendants below (appellants) were Alfred J. Farkas doing business as Acro Tool & Die Works (hereinafter called Acro). The cause in which the consent decree was entered will be referred to as the "original action" and was instituted by these plaintiffs herein against these same defendants. The original action and the instant contempt proceeding were both heard by the same trial judge.
The two patents involved were No. 2,562,627, an adjustable inking device with an inking wheel, and No. 2,634,676, a dating device for printing characters on moving packages, hereinafter to be designated as No. 627 and No. 676, respectively. The defendants' accused device in the contempt proceeding is known as Model 6000, and has an inking wheel and dating device. Claims 3 and 4 of No. 627 and Claims 1 and 3 of No. 676 are in issue.
The original action was filed August 22, 1951 and charged infringement of these two patents and proceeded for about four years during which time various pleadings, briefs and depositions of defendant, Farkas, were filed, and two pre-trial conferences were held. At the time of the entry of the consent decree the parties entered into a settlement agreement stipulating that plaintiffs' two patents were valid and infringed by defendants' device then accused, that an injunction enjoining further infringement would issue, that damages and profits arising out of the alleged infringement would be waived and that defendants would not manufacture or sell apparatus comprising infringements of these patents except under license or agreement from plaintiffs, but providing that defendants would be permitted to sell devices then on hand and make up devices out of parts then in stock for a period of six months but not later than October 1, 1955.
Pursuant to this agreement and stipulation a final judgment was entered in the original action with the written consent and agreement of all parties, waiving the right to any appeal, wherein it was decreed that the patents were valid, that the claims of the patents were infringed by defendants' accused devices, and further that defendants were enjoined from "* * * making, using and/or selling or offering for sale apparatus coming within the scope of the said Letters Patent No. 2,562,627 and * * * 2,634,676." Subsequently, defendants began the manufacture and sale of their accused device Model 6000 and this became the subject of the instant petition for contempt of court for alleged violation of the foregoing injunction.
The ultimate contested issue is whether or not the district court erred in finding that defendants' accused Model 6000 infringed the claims in issue and in concluding therefrom that defendants were guilty of civil contempt of court for violation of the injunction in the original action.
Both patents relate to the construction of a device for automatically applying numbers to a moving line of packages by printing the numbers upon the packages. Such a device is customarily used to print on containers or wrappers information as to date, price, name, flavor, weight or other data, in code, leading to various controls of the packaged items by all of their handlers. Both patents evolved out of the same application. The first, No. 627, concerns an inking wheel one of whose objects, as set forth in the specification: "* * * is to provide a novel inking arrangement in which the rate of ink dispensation is readily adjustable; in which a large quantity of ink can be held in the roller of the inking device so that the same will operate for a long time without the need of adding ink; in which the pressure of the roller is easily adjusted and the roller itself capable of quick removal or replacement; and in which the printing type is clean at all times."
The second patent, No. 676, covers a revolving dating wheel which has among its objectives, as stated in the specification: "* * * to provide a device of the character described which will include a revolving dating wheel carrying all the possible combinations of numbers which can be used and same being adjustable in a simple and expeditious manner * * * and which same may be removably attached in a sturdy manner to any conveyor, wrapping machine, carton forming machine, or any other place where cartons, labels, boxes, or cases pass on a conveyor." The second patent is a division of the first, with the same original filing date of December 2, 1947, the division application having been filed on July 3, 1951, with exactly the same drawings in three sheets and much of the same textual description. Both are illustrated and described as parts of a single machine.
In the contempt proceeding the trial court had before it the pleadings; six briefs (three filed by each party); seven affidavits filed by plaintiffs; five affidavits filed by defendants; numerous exhibits, including an accused code dater Model 6000 manufactured by Acro, a disassembled numberer from such model, a commercial code dater manufactured by Kiwi, two models of defendants' inking wheel with a segment cut from one, (both parties used foam rubber for their inking wheels), a sectional model of defendants' dating device, various sectional drawings of the devices and some of their component parts, photographs, and reproductions of printed advertisements, trade journal articles and instruction sheets for use of the accused device; the settlement agreement in the original action; and reproductions of the original letters patent. The court heard no oral testimony and denied defendants' petition to take the depositions of plaintiff McKay and defendant Farkas. There were several hearings and oral arguments on the briefs and on various motions filed by defendants. The defendants' accused device in the original infringement action was not in evidence in the contempt proceeding.
The contempt petition was filed October 29, 1956 and was heard entirely on the documentary evidence outlined above by the court without a jury. On June 28, 1957 the court made its findings that slight differences between the accused device and the patented device "do not in fact represent such significant modification as to avoid infringement," and that defendants "are guilty of civil contempt of Court for deliberate violation of the injunction heretofore issued by making, using or causing to be used, and selling a code dater identified as Acro Code Dater, Model 6000, which is so constructed as to constitute a substantial equivalent and colorable imitation of the invention shown or illustrated in the aforesaid Letters Patent, and an infringement of the claims of said patents, and which is the equivalent and mere colorable variation, differing only in trivial detail, of the device previously adjudged to infringe."
The court rendered judgment on its findings and awarded plaintiffs the profits that defendants realized from their acts of infringement, together with compensation to plaintiffs for their expenses, costs and attorneys fees incident to bringing the contempt proceeding, and appointed a special master to ascertain the amounts comprising such award.
At the outset, we are called upon to determine whether defendants' accused Model 6000 did in fact infringe the claims of the two patents in issue. Resort must be had, therefore, to the claims themselves.
Claims 3 and 4 of No. 627 read as follows:
In the drawings in evidence the patented inking wheel (No. 627) is shown to be a preferred embodiment of the structure. It describes a mounting shaft which carries a sleeve rotatable thereon, on...
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