Manville Boiler Co. v. Columbia Boiler Co. of Pottstown

• Decision Date: 25 July 1959
• Docket Number: No. 7768.,7768.
• Citation: 269 F.2d 600
• Parties: MANVILLE BOILER COMPANY, Incorporated, Appellant, v. COLUMBIA BOILER COMPANY OF POTTSTOWN, Incorporated, and Columbia Boiler Company, Incorporated, Appellees.
• Court: U.S. Court of Appeals — Fourth Circuit

269 F.2d 600 (1959)

MANVILLE BOILER COMPANY, Incorporated, Appellant, v. COLUMBIA BOILER COMPANY OF POTTSTOWN, Incorporated, and Columbia Boiler Company, Incorporated, Appellees.

No. 7768.

United States Court of Appeals Fourth Circuit.

Argued January 16, 1959.

Decided July 25, 1959.

Stanton T. Lawrence, Jr., New York City (Richard H. Catlett, Jr., and Christian, Barton, Parker & Boyd, Richmond, Va., on brief), for appellant.

Zachary T. Wobensmith, 2nd, Philadelphia, Pa. (Wirt P. Marks, Jr., Richmond, Va., on brief), for appellees.

Before SOBELOFF, Chief Judge, HAYNSWORTH, Circuit Judge, and BOREMAN, District Judge.

HAYNSWORTH, Circuit Judge.

This is a patent case involving the usual defenses of invalidity and noninfringement. Upon proof that was largely documentary or undisputed, the District Judge was persuaded that both defenses were meritorious and he filed appropriate findings of fact and conclusions of law. We take a different view.

The patent involved, Mandelburg No. 2,633,107 issued in 1953, covers a modification of the Stauffer design for domestic boilers so as to permit the use of a circular rather than an oval stack outlet and to provide a variable, automatic damper permitting flue gases to be drawn off through the stack without passing around the uppermost wet baffle when the internal boiler pressures are excessive.

In 1938 Stauffer Patent No. 2,119,606 was issued covering a design of a boiler, which is illustrated by the figure in the margin.

In boilers of this design, water is circulated between inner and outer shells of the boiler. Integral with the inner shell are four water containing baffles so disposed that flue gases rising from the combustion chamber follow a serpentine pattern around and over the baffles before being discharged through the stack. Each of these baffles is connected to each side of the inner shell of the boiler, so that there is a water connection at each side of each baffle as well as a water connection at the rear of the baffle. Above the topmost gas passage and the stack outlet, there is another space for water, or for water containing elements, to provide domestic hot water. The efficiency of the Stauffer boiler is influenced by the size and proportion of the flue gas passages. If the uppermost passage is unduly large, a loss of efficiency is experienced, and Stauffer's design, for domestic boilers, did not provide sufficient vertical space for a circular stack outlet eight inches in diameter. To provide a stack outlet of sufficient cross-sectional dimension, therefore, an oval shaped stack outlet was provided. Since the chimneys in substantially every home are equipped with circular flues, adapters were required to connect the oval stack outlet of the boiler to the circular flue of the chimney. The testimony indicates that the oval shaped outlet is somewhat more efficient than the circular shaped outlet, for it is a less radical departure from the shape of the uppermost gas passage, but the use of adapters to accommodate the oval opening to the circular chimney flue was expensive and troublesome.

The predecessor of Columbia Boiler Co. of Pottstown, Inc. (Columbia) in 1936 began the manufacture of domestic boilers of the Stauffer design. A witness, who had served Columbia as plant manager, testified that during the period 1936-1941 Columbia had attempted to modify the Stauffer design so as to permit the use of a circular stack outlet. These attempts were directed to enlargement and modification of the space above the topmost baffle to give greater vertical height to the stack outlet without lowering its lower edge. Columbia's experimental modifications of the design to permit the use of a circular stack outlet resulted in such a decrease in efficiency, however, that they were not adopted. Apparently, it did not realize that its purpose might be achieved by altering the baffle, the lower boundary of the limited space, rather than the upper boundary, and Columbia continued to use the oval stack outlet until 1953, when, after issuance of the Mandelburg Patent, Columbia modified its design in accordance with the teaching of the patent.¹ After commencement of this suit, it made a slight further modification in this design, but it has equipped its boilers with circular stack outlets since 1953.

Benedict W. Mandelburg controlled Columbia Boiler Sales Co. of New York, which from 1939 to 1948 was a principal sales outlet for Columbia, purchasing and reselling boilers manufactured by Columbia of the tubeless Stauffer design as well as tubular boilers for residential use. This association was severed in 1948, and in 1951 Mandelburg applied for a patent upon what he claimed to be a substantial improvement in the Stauffer design.

Mandelburg undertook to provide space for a circular stack outlet by disconnecting the uppermost wet baffle from the inner shell of the boiler at the rear, leaving the water connections at the side unaffected. The rear of this baffle was cut off and sealed so as to provide a space between the rear of the baffle and the inner shell, permitting the lowering of the bottom of the stack opening to a position approximating the level of the bottom of the uppermost wet baffle, or even lower. To direct the flue gases around and over the uppermost wet baffle, he interposed a dry baffle connecting the lower rear edge of the uppermost wet baffle to the inner shell of the boiler at a point below the new stack opening. He further disclosed that this dry baffle might be equipped with an automatic damper, permitting flue gases to pass directly to the stack after completing the second passage when internal pressures were excessive. Insofar as it is relevant to our inquiry, what he did is illustrated by the figure in the margin.

Claim 1 of the Mandelburg Patent is in the following language:

"1. A boiler construction comprising inner and outer shells spaced apart to provide a water space therebetween, said inner shell having substantially horizontally-extending, water-carrying heating sections vertically spaced from one another and interconnected through said water space, said heating sections being arranged to provide for the normal serpentine flow of heating gases around and between the heating sections, a cylindrical integral stack outlet structure extending between the inner and outer shells and lying in an elevated location adjacent the uppermost heating section and bridging spaces lying above and below the uppermost heating section, and transversely-extending, downwardly and rearwardly inclined baffle means in the interior of the boiler extending from the uppermost heating section to the wall of the inner shell adjacent to and below the lower part of the stack outlet structure."

The difficulty and expense in the installation of boilers with oval shaped stack outlets were, perhaps, not so great that their avoidance could be classified as a major contribution to the heating industry. Their avoidance was desirable, however, which clearly appears from Columbia's own unsuccessful efforts to accomplish it, its adoption in 1953 of the circular stack outlet and its urgent insistence here that it has a right to continue to sell boilers incorporating substantially the improvement disclosed by Mandelburg. Columbia and one other manufacturer of boilers of the Stauffer design were the only manufacturers offering boilers with oval shaped stack outlets, and their modification of their design to facilitate installation and to reduce its cost would seem obviously desirable. Though the testimony indicates Columbia sought the solution of the problem, it did not find it for more than seventeen years and then only after the Mandelburg Patent had been issued. After Mandelburg pointed the way, the solution may seem simple and obvious, but it hardly can be said to have been obvious in a legal sense when Columbia's skilled craftsmen could not provide the answer, though the desirability of improvement had been recognized for many years. As Judge Sobeloff said in S. H. Kress & Company v. Aghnides, 4 Cir., 246 F.2d 718, 723:

"The usual defense that the result would have been obvious to one skilled in the art cannot avail the defendant here. Obviousness does not mean that one skilled in the art can perceive the solution after it has been found and pointed out by someone else; the test of obviousness is as of an earlier time, when the search

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