Koehring Company v. National Automatic Tool Co.

• Decision Date: 20 July 1966
• Docket Number: Civ. A. No. IP 60-C-285.
• Citation: 257 F. Supp. 282
• Parties: KOEHRING COMPANY, Plaintiff, v. NATIONAL AUTOMATIC TOOL COMPANY, Inc., Defendant.
• Court: U.S. District Court — Southern District of Indiana

257 F. Supp. 282

KOEHRING COMPANY, Plaintiff, v. NATIONAL AUTOMATIC TOOL COMPANY, Inc., Defendant.

Civ. A. No. IP 60-C-285.

United States District Court S. D. Indiana, Indianapolis Division.

July 20, 1966.

COPYRIGHT MATERIAL OMITTED

William A. Denny, Milwaukee, Wis., Wolfe, Hubbard, Voit & Osann, Chicago, Ill., Lockwood, Woodard, Smith & Weikart, Indianapolis, Ind., for plaintiff.

Bair, Freeman & Molinare, Chicago, Ill., Barnes, Hickam, Pantzer & Boyd, Indianapolis, Ind., for defendant.

OPINION

DILLIN, District Judge.

This action was commenced October 24, 1960, by the filing of a complaint asserting four claims seeking compensatory and injunctive relief for the alleged infringement of certain patents, and seeking an assignment of patents. On August 24, 1961, plaintiff added two additional claims charging defendant with unfair competition and conspiracy. Jurisdiction admittedly exists in this court pursuant to 28 U.S.C. §§ 1332 and 1338. The Court having previously heard the evidence, and having considered the post-trial briefs of the parties, now enters its findings of fact and conclusions of law pursuant to Rule 52 (a), F.R.Civ.P.

I. BACKGROUND OF THE CONTROVERSY

Plaintiff Koehring Company (hereinafter "Koehring") is a Wisconsin corporation having its principal office in Milwaukee. It manufactures and sells machinery. The Hydraulic Press Manufacturing Company (hereinafter "HPM") was an Ohio corporation which also manufactured and sold machinery, including plastics injection molding machines, which it commenced manufacturing in about 1934. It was merged into Koehring June 30, 1956, and has since continued as an unincorporated division of Koehring. Defendant National Automatic Tool Company (hereinafter "NATCO") is an Indiana corporation having its principal place of business at Richmond, Indiana. It has been a machinery manufacturer for many years, and more recently a manufacturer of plastics injection molding machines in competition with plaintiff.

Plastics injection molding machines make molded plastic articles by melting thermoplastic material and injecting it into a mold. Such machines had been manufactured for more than twenty years when NATCO entered the field in 1955. The machines being manufactured at that time had major components functionally similar to the machines of Koehring and NATCO which are here involved.

During 1954 and 1955, HPM was in a chaotic condition. Although operating at a profit, it was undercapitalized and its 1954 machines were late in production and had encountered operating difficulties. Its board chairman and president were in a battle for control, and its secretary-treasurer, vice-president of manufacturing, vice-president in charge of sales, and director of engineering all left the company. It was known to the employees that the company was being offered for sale, with possible liquidation to follow.

Two of the second echelon company executives, Russell W. Powell, sales manager, and Richard M. Norman, chief engineer of the machinery division, decided to join the exodus as a team. They hoped to find employment with a company not in the molding machinery line, but which was interested in diversifying; they believed they had a chance to better themselves, and to produce a better machine, by starting from scratch with a new company. NATCO was such a company, and after they were brought together by a mutual contact, NATCO hired them to design and sell molding machines.

Powell and Norman resigned effective April 29, and commenced work at NATCO on May 2, 1955. Meanwhile, Kenneth Sherer, an HPM design supervisor working under Norman, advised Norman of his own desire to leave HPM and was hired by Norman for NATCO. He reported May 15, 1955. These three did the original NATCO design work, and were joined October 17, 1955 by Theodore D. Rhoads,¹ another HPM designer solicited for NATCO by Powell.

Powell, Norman and Sherer had each signed employment contracts with HPM.² The factual issues in this action involve, in large part, the extent to which they violated such agreements, if at all, and the extent to which such violations, if any, may be charged to NATCO, as sole defendant.

II. FIRST CAUSE OF ACTION— THE HUELSKAMP PATENT

United States Letters Patent No. 2,821,750 issued February 4, 1958 on the application of Donald E. Huelskamp, filed November 24, 1954. Plaintiff is the owner of such patent, which relates to an apparatus and method for effecting accurate alignment between the sprue bushing hole in the die head of an injection molding machine and the injection nozzle. Plaintiff charges the defendant with infringement of this patent; the defendant denies infringement, and pleads invalidity of the patent.

In a plastics injection molding machine, the die head on that part of the machine which contains the injection mechanism contains a hole into which is fitted a die ring. A bushing, pierced by another hole (sprue) through which the plastic moves from the injection nozzle into the mold, is then fitted into such ring. It is necessary for the injection nozzle to meet the sprue with precision. Prior to Huelskamp, alignment of the sprue bushing with the injection nozzle was generally obtained by moving the injection assembly and its nozzle with respect to the base of the machine, upon which was mounted the die head and sprue bushing. These parts are massive, and it was sometimes difficult and time consuming to fit them together.

Huelskamp aligned the bore of the sprue bushing with the nozzle, without moving the injection assembly. He provided a die ring positionable on the die head by use of a die ring centering tool (die ring gauge locater), which placed the centerline of the bore of the die ring in coaxial relation with the centerline of the nozzle. The sprue bushing, with its centered bore, was then substituted for the locater in the die ring. In his apparatus and method the die ring was first attached loosely to an oversize counter-bore in the die head by cap screws set in holes having clearance to enable the locater and ring to be shifted during alignment. When the locater and ring were in proper position the screws were tightened temporarily. The placement was then made permanent by affixing the die ring to the die head with pins, whereupon the sprue bushing was substituted for the locater.

Huelskamp attempted to describe the foregoing in his patent application. Neither his drawings nor specifications disclosed the clearance around the cap screws; on the contrary, they were illustrated as being in a fixed position during alignment. The Patent Office examiner denied the application as inoperable. On April 8, 1957 the applicant filed an amendment, including a new drawing, disclosing and illustrating for the first time the adjustability of the die ring and its locater relative to the screws. It was disallowed as containing new matter, but is significant in that it clearly shows what Huelskamp thought he had invented.

The patent is entitled "Nozzle Locating Device." The description in the specification is as follows: "The device 28 includes generally a die ring 36 and a die ring gauge locater 37." This, then, was the contemplated apparatus. The method of alignment is set out as follows: "The engagement of the die ring gauge locater 37 with the injection nozzle 29 and the die ring 36 causes the center line 59 of the inner peripheral wall 44 of the die ring 36 to lie on the axis 51 of the injection nozzle 29." The die ring gauge locater was considered an integral part of the apparatus throughout the prosecution of the patent. Unaccountably, however, after an office interview as to which no record was made, the examiner approved the five claims in issue, omitting all reference to the die ring gauge locater in apparatus claims 1-4.

We hold claims 1-4 to be invalid. The device is inoperable as illustrated because of the failure to disclose that the die ring is shiftable in relation to the cap screws. Moreover, absent the die ring gauge locater from such claims, there is no means disclosed for accomplishing or maintaining the desired alignment. The apparatus is incomplete. For the die ring to be shiftable, even if the discrepancy regarding the cap screws be overlooked, is not enough. The center of the ring must be precisely aligned with the center of the injection nozzle, and claims 1-4 omit means for so doing.

It is the claim which measures the grant to the patentee, and it must particularly point out and distinctly claim an identifiable discovery or invention; an unambiguous claim which overclaims the invention by omitting an essential element described in the specifications (or not described at all) is invalid. Graver Tank & Mfg. Co. v. Linde Air Products Co., 336 U.S. 271, 69 S.Ct. 535, 93 L.Ed. 672.

An adjustable die ring or die holder was not novel per se in 1954, but had been disclosed at least as early as U.S. Patent No. 893,939 (Royle), issued July 21, 1908, and again in U.S. Patent No. 1,180,399 (Houben), issued April 25, 1916, neither of which patents was considered by the Patent Office in connection with the Huelskamp patent. Therefore, if claims 1-4 of the patent as issued are to be construed as granting a monopoly on the concept of an adjustable die ring, without more, they would further be invalid for want of invention. 35 U.S.C. § 102(a).

The fifth claim of the patent is valid. It was infringed by NATCO, prior to issuance, in NATCO's first eleven molding machines. Huelskamp's idea was known to Powell, Norman and Sherer prior to issuance of the patent, and they deliberately appropriated such conception and incorporated it into the offending NATCO machines. Plaintiff is entitled to damages from the defendant for such infringement, the actual damages to be measured by the profit made from the sale of the infringing machines, as determined by an accounting, or by a reasonable royalty, whichever is the greater. 35 U.S.C. § 284.

After issuance of the...