KOOL VENT METAL A. CORP. v. AMERICAN BEAUTY VAA CO.

• Decision Date: 18 March 1954
• Docket Number: Civ. No. 6839.
• Citation: 119 F. Supp. 802
• Parties: KOOL VENT METAL AWNING CORP. OF AMERICA v. AMERICAN BEAUTY VENTILATED ALUMINUM AWNING CO.
• Court: U.S. District Court — Northern District of Ohio

119 F. Supp. 802

KOOL VENT METAL AWNING CORP. OF AMERICA v. AMERICAN BEAUTY VENTILATED ALUMINUM AWNING CO.

Civ. No. 6839.

United States District Court N. D. Ohio, W. D.

March 18, 1954.

Harry O. Ernsberger, Toledo, Ohio, William H. Parmelee, Coleman Harrison, Pittsburgh, Pa., Francis W. McCauley, Detroit, Mich., for plaintiff.

Freeman Crampton, Toledo, Ohio, for defendant.

KLOEB, District Judge.

This is a suit for infringement of Letters Patent Re-Issue No. 20,975 granted January 10, 1939, being a reissue of original Letters Patent No. 2,098,705, applied for November 25, 1935, and granted November 9, 1937, for a functional invention relating to a metal awning, it being alleged that claims 16, 17 and 18 of the re-issue patent are being infringed, and also for infringement of United States Letters Patent Design No. 154,550, granted July 19, 1949. The functional patent expires in November of this year.

About the year 1944, Meyer Harrison and Samuel B. Korman purchased the re-issue patent from George Alfred Houseman, the patentee, with the right to operate in thirty-eight states of the Union, paying to Mr. Houseman the sum of $95,000 for such rights. Shortly thereafter, about the end of 1944, or the early part of 1945, the Kool Vent Metal Awning Corporation of America was chartered in the State of Pennsylvania, was assigned the interest of Messrs. Harrison and Korman in the patent, and has since operated as a licensing and manufacturing corporation, with nineteen licenses presently issued in the thirty-eight states wherein it has the privilege to operate, and with certain foreign licenses extant in Canada. Australia and some other countries. The corporation also manufactures its products in the State of Texas. Since the close of the war in 1945, the corporation and its licensees have sold approximately $100,000,000 worth of Kool Vent aluminum awnings, the awnings being adapted to windows, porches, patios, doorways, store fronts, etc. The record indicates considerable competition in the field since the organization of the corporation, with but one known alleged infringer in the person of the defendant.

It is conceded that claims 17 and 18 of the re-issue patent are dependent upon claim 16, and defendant concedes infringement of claims 17 and 18 if they are held valid and if claim 16 be held valid and infringed.

Claim 16 reads as follows:

"16. An awning adapted to be fastened to a wall or the like support, including a curtain comprising a series of spaced overlapping parallel vertical depending plates, angling outwardly from the awning toward the wall at not more than ninety degrees."

The awning of this re-issue patent is of the sheet metal type, being made from an assembly of sheet metal plates supported on a metal frame. The alleged infringing awning is of similar type.

The canopy of the design patent in suit is of the conical, half-round type. The alleged infringing canopy is of similar type. Because the chief concern of the litigants has centered about claim 16 of the functional patent, which encompasses the louvers that extend around the sides of the awning, we shall undertake a determination of the issues thereon first before taking up the issues involved in the design patent.

Defendant American Beauty Ventilated Aluminum Awning Company is a successor to the Thabet Manufacturing Company. Prior to the Fall of 1949, the Thabet Company was engaged in the manufacture of metal tiles for bathrooms, etc., and late in that year began the manufacture of metal awnings. Early in 1950, it was succeeded by the American Beauty Ventilated Aluminum Awning Company, the defendant herein. Mr. Glenn Thomas is President and chief stockholder of both of these companies.

The defendant denies infringement of both patents and, in addition thereto:

1. Questions the validity of both patents for anticipation and on the ground that they represent merely the skill of the calling and not invention over the art;

2. Claims that the re-issue patent is being misused and that, therefore, plaintiff comes with unclean hands; and

3. Claims that plaintiff is estopped to assert infringement of the re-issue patent.

Infringement of the Re-Issue Patent.

This patent discloses an awning designed to protect an opening, such as a window, from direct light of the sun, from rain and snow, and at the same time to permit diffused or reflected light to that opening and to permit air to flow freely from underneath the awning. The end curtain construction is the subject of claim 16 in the suit.

The defendant's awning, like the design patent in suit, is adapted to be attached to the wall of a building over the windows or doors thereof, and it is also provided with end curtains which, like those of the patent in suit, are angled outwardly from the awning toward the building or wall of the building. Plaintiff's Exhibit 5 is a sample of the defendant's design, and Plaintiff's Exhibits 10 to 15 are photographs of one of defendant's awnings now in use.

Plaintiff offered a Mr. Edward R. Hughes as an expert engineer to define and point out the functions of the louvers or end curtains and the novelty in the manufacture and placement thereof. (R, pp. 46 to 83, both incls.) Defendant offered no witness other than Mr. Glenn Thomas, President of defendant company, who testified mainly as to the facts surrounding the organization and the work of Thabet and American Beauty companies and their contacts by way of correspondence with plaintiff company late in 1949, and early in 1950. In other words, the testimony of Mr. Thomas was directed only to the denial of infringement and did not touch on the question of validity. (R, pp. 120 to 145, both incls.)

We are of the opinion, from a study of the record of this case, and particularly of the exhibits offered therein, that, assuming the validity of the re-issue patent, claim 16 thereof is infringed, and that the awning of the defendant structurally and functionally meets the requirements of claim 16 and infringes thereon. We are also of the opinion that the defendant infringes claim 17 and claim 18.

Validity of the Re-Issue Patent.

It is defendant's contention that the patent is invalid because of prior publications and inventions and also because it exhibits merely the skill of the calling and not invention over the art.

Defendant offered no testimony in support of the claimed invalidity of plaintiff's re-issue patent, but did offer its Exhibit E, which is a folio containing eight patents. The first two of these, Bauschard No. 1,926,609, and Lamborn No. 302,916, are relied upon to show anticipation and non-invention, and the remainder of the patents, to-wit, Pancoast No. 547,356, Burnett No. 1,127,858, Gebhardt No. 1,323,978, Bauer No. 1,354,374, Hawley No. 2,117,320, and Matthews No. 21,053, are relied upon to show the state of the prior art. Defendant offered no testimony explanatory of these patents nor for the purpose of comparing any of these patents with claim 16 of the patent in suit. In its brief, it seems to place chief reliance upon Bauschard No. 1,926,609, which is a patent on an awning of the rigid type and which utilizes a solid sheet of metal with vents cut therein for the side curtains. It appears to us that Bauschard is in no sense the equivalent of the re-issue patent and certainly not so in a functional sense.

The seven additional citations all appear to be too remote to the patent in suit to be given serious consideration.

Section 282 of Title 35, which became effective January 1, 1953, reads as follows:

"A patent shall be presumed valid. The burden of establishing invalidity of a patent shall rest on a party asserting it."

The above enactment is but a restatement in statutory form of a principle established and followed by the Courts over a period of many years.

In Walker On Patents, Deller's Edition, Volume Two, § 276, at page 1273, we find the following:

"A presumption of validity follows from the issuance of a patent, and the burden is on the person alleging invalidity to establish it. (Radio Corporation v. Radio Engineering Laboratories, 1934, 293 U. S. 1, 7, 55 S.Ct. 928 79 L.Ed. 163; Morgan v. Daniels, 1894, 153 U.S. 120, 123, 14 S.Ct. 772 38 L.Ed. 657; Cantrell v. Wallick, 1886, 117 U.S. 689, 695, 6 S.Ct. 970 29 L.Ed. 1017; Coffin v. Ogden, 1874, 18 Wall. (85 U.S.) 120, 124, 21 L.Ed. 821; Wilson & Willard Mfg. Co. v. Bole, 9 Cir., 1915 227 F. 607, 609; Schumacher v. Buttonlath Mfg. Co., 9 Cir., 1920 292 F. 522, 533; Chester N. Weaver, Inc. v. American Chain Co., 9 Cir., 1925 9 F. 2d 372, 380; Bankers' Utilities Co. v. Pacific National Bank, 9 Cir., 1927 18 F.2d 16, 18; Stoody Co. v. Mills Alloys, 9 Cir., 1933 67 F. 2d 807, 812; Reinharts, Inc. v. Caterpillar Tractor Co., 9 Cir., 1936 85 F.2d 628.)

"The presumption can be overcome only by clear and satisfactory proof. (Sodemann Heat & Power Co. v. Kauffman, 8 Cir., 1921 275 F. 593, 596; Wisconsin Alumni Research Foundation v. George A. Breon & Co., Inc., 8 Cir., 1936 85 F.2d 166, 167.)"

In the 1953 Cumulative Supplement to Walker On Patents, Deller's Edition, page 1272, we find the following:

"The issuance of a patent by the Patent Office gives rise to a presumption of validity. (Second Circuit: Schick v. Dictograph, 1937, 89 F.2d 643; Fourth Circuit: Murdock v. Murdock, 1949, 176 F. 2d 434; Baker-Cammack Hosiery Mills v. Davis, 1950, 181 F.2d 550; Fifth Circuit: Novadel-Agene Corp. v. Penn, 1941, 119 F.2d 764; Robertson Rock Bit. Co. v. Hughes, 1949, 176 F.2d 783; Sixth Circuit: Electric Vacuum Cleaner v. P. A. Geier, 1941, 118 F.2d 221; Merco Nordstrom Valve Co. v. W. M. Acker Corp., 1942, 131 F.2d 277; Seventh Circuit: Simmons Co. v. Superior, 1939, 107 F. 2d 536; Murdock v. Vaughan, 1942, 131 F.2d 258; Smith v. Dental Products, 1944, 140 F.2d 140; Customs Undergarment Corp. v. R. H. Macy & Co., 2 Cir., 1944 140 F. 2d 197; Bank v. Rauland, 7 Cir., 1944 146 F.2d 19; Lewyt Corp. v. Health-Mor, 7 Cir., 1950 181 F.2d 855;

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