Lam, Inc. v. Johns-Manville Corp., JOHNS-MANVILLE
| Citation | 668 F.2d 462,213 USPQ 1061 |
| Decision Date | 12 January 1982 |
| Docket Number | JOHNS-MANVILLE,No. 80-1060,80-1060 |
| Parties | LAM, INC., Plaintiff-Appellee, v.CORPORATION and Johns-Manville Sales Corporation, Defendants-Appellants. |
| Court | United States Courts of Appeals. United States Court of Appeals (10th Circuit) |
Charles F. Brega, Denver, Colo. (J. Stephen McGuire also of Roath & Brega, Denver, Colo., Dudley R. Dobie, Jr. of Fulbright & Jaworski, Houston, Tex., and Robert M. Krone, Denver, Colo., with him on the brief), for defendants-appellants.
Charles E. Pfund of Dike, Bronstein, Roberts, Cushman & Pfund, Boston, Mass. (Donald E. Phillipson of Davis, Graham & Stubbs, Denver, Colo., with him on the brief), for plaintiff-appellee.
Before HOLLOWAY, LOGAN and SEYMOUR, Circuit Judges.
Defendants Johns-Manville Corporation and Johns-Manville Sales Corporation (collectively, J-M) appeal from a trial court judgment that they infringed a patent held by Lam, Inc. The court awarded Lam treble damages and attorneys' fees, and enjoined J-M from subsequent infringement.
Lam's patent, No. 3,950,638, issued on April 13, 1976, is for a lighting fixture (luminaire) that permits indoor use of a high intensity discharge (HID) lamp in rooms of average ceiling height. The first of the patent's two independent claims-for a luminaire with a fluted reflective bowl-is not at issue here. The second independent claim, number four of the patent, reads as follows:
"A luminaire for a high intensity lighting device said luminaire comprising: an upwardly opening reflective bowl, terminating in a substantially circular outer lip, the diameter of said reflective bowl being greater on the outer lip than at the lower end; a base integrally disposed on the lower end of said bowl; means for holding a high intensity lighting device substantially axially within said bowl and arranged so that the radiation which is emitted substantially below the horizontal plane of said outer lip will be reflected over said outer lip and means to hold said bowl in a fixed spatial relationship relative to said lighting device, the optical shape of said bowl being an elliptical surface of revolution, one focus of which is disposed at said source and the second focus being disposed at a point over said outer lip of said bowl."
The trial court found infringement of that claim and of claims eight and nine, dependent on claim number four:
In general, the patent claims describe a fixture intended to permit indoor use of an HID lamp by placing it in an upwardly opening luminaire having an elliptically surfaced bowl. The bowl is designed to reflect light beams out to a focal point just over the lip of the bowl, thereby dispersing the beams as closely to the horizontal as possible. As part of the fixture, a refractor may be placed at the base of the bowl, which will bend downward beams back up and out. The shape of the bowl prevents trapping and inefficiency by reflecting nearly all beams out of the bowl after a single reflection.
The principal dispute focuses upon the reflector's elliptical surface. As perhaps its main argument, J-M contends that its own reflector, otherwise nearly identical, does not infringe because the surface of its bowl is parabolic, or at least "closely approximates a parabolic surface."
It is useful, here, to discuss the nature of the HID lamp and Lam's development of the fixture for the HID lamp. Most indoor commercial lighting today uses fluorescent lamps. Fluorescent lamps, as well as the incandescent bulbs they have generally replaced, have been used both as direct lights (downlights) and indirect lights (uplights). HID lamps have been in general use since the 1930s and, due to recent improvements, can now serve general lighting needs. HID lamps produce extremely bright light, thus requiring considerably fewer fixtures. 1 They are also much more efficient than fluorescent or incandescent light sources, consuming only about one-tenth the energy to light the same area. To date, the HID lamps have been widely used outdoors, but because of their extreme brightness and resulting glare they have not been used indoors except in factories, gymnasiums, and other areas with high ceilings.
Beginning in 1971, Lam tried to develop a method for utilizing HID lamps in rooms with conventional ceilings. After its early efforts using direct and indirect fixtures failed, Lam hired a consulting firm headed by Thomas M. Lemons. That firm experimented with both direct and indirect fixtures. Mounting the lamp in an indirect During this time, J-M's research unit was also attempting to develop an indirect fixture that would permit use of HID lamps in conventional rooms. J-M aimed its efforts principally at floor and wall-mounted units, although J-M made some attempt to design a ceiling fixture. The record is contradictory as to why J-M failed to develop an acceptable ceiling fixture; the experimental units' unattractive appearance may have been as important as the technological problems encountered in avoiding unacceptable glare. Whatever the reason, one of J-M's designers testified that it is "highly desirable" yet "rather difficult" to illuminate the ceiling directly above and still achieve a wide angle of light disbursement. 4 App. V, 661.
fixture blocks direct glare from below; however, if the indirect fixture allows light rays to shine directly to the ceiling, an HID lamp will produce an objectionable bright spot. Eventually, the consultants placed the lamp in an indirect fixture and pointed it downward, then used a bowl to reflect the light beams back up and out, nearly horizontally. As finally worked out, the lamp uniformly illuminates a wide area of the ceiling; from there, the beams reflect down toward the floor, almost as if the ceiling were a light source. The elliptical surface refocuses the light at a point just above the lip of the bowl, producing a wider angle of distribution than if the beams emerged further above the bowl. The LUXXtra fixture that Lam developed contains a bowl that is 8 inches high, 201/2 inches wide at the base, and 241/4 inches wide at the rim. 2 The refractor is placed on the bottom of the bowl. The bowl's shape lets most light beams emerge after only a single reflection and thereby avoids trapping of the beams. As a consequence, the LUXXtra luminaire is very efficient, using over seventy percent of the light emitted by the HID lamp. The final design followed many earlier efforts, and it was late 1972 before Lam was satisfied with the product. Lam applied for its patent in late 1973. 3
Soon after the Lam patent was issued for the LUXXtra fixture in April 1976, the Broward County, Florida school board issued specifications for remodeling, including relighting, five elementary schools. The specifications called for Lam's LUXXtra fixtures and described the fixture's efficiency and light distribution pattern. The blueprints accompanying the specifications showed the size and shape of the LUXXtra reflector and its mounting. One of J-M's sales representatives had previously discussed the job with the lighting engineer who developed the specifications. Immediately after the County issued the specifications, J-M sent one of its salesmen to Florida to discuss the specifications with the engineer. They met on May 4, 1976, and the next day, through that salesman, J-M's designers had a copy of the blueprint as well as a Lam brochure that in some detail showed the size and shape of the bowl, use of a refractor on the bottom of the bowl, placement of the lamp vertically within the bowl, and use of an integral auxiliary light source to function until the lamp heats up and becomes effective. Neither the specifications nor the brochure referred to a specific The J-M engineer who was given the blueprint and the Lam brochure, according to his own testimony, was told to design a fixture "similar to the Lam LUXXtra." He completed the design the very next day. The drawing went to production on May 7, and by May 14 J-M had calculated its costs and a selling price and was prepared to bid on the Broward County job. On May 16 J-M tested its luminaire, which J-M designated the CLASSPAK fixture, and the next day J-M's director of research took it to Florida for demonstration. On May 18 the lighting engineer recommended to the County that it add CLASSPAK to the specifications, which it did. In June the local Florida electrical contractors bid on the school job. Immediately before the contractors submitted their final bids, J-M several times lowered its bid to electrical suppliers, and the winning contractor based its bid on the CLASSPAK fixture. About two weeks later, Lam's attorney gave J-M notice of probable patent infringement. J-M responded by denying infringement and stating that at no time had it been provided with a diagrammatic representation of the LUXXtra fixture. Apparently the J-M official who sent the letter was unaware that J-M possessed the Broward County blueprint and the Lam brochure. The instant suit soon followed.
shape for the reflector surface. On its cover the brochure stated, "patented optical system," and inside stated, "patents pending."
On appeal J-M contends that (1) the Lam patent is invalid because it was anticipated by prior art, it was obvious, and the subject matter was in public use or for sale for more than one year before the patent application was filed; (2) the patent is unenforceable because of Lam's bad faith misrepresentations to the patent office, including failure to bring to its attention relevant prior art; (3) J-M did not infringe either literally or under the equivalents...
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