Met-Coil Systems Corp. v. Korners Unlimited, Inc.

• Decision Date: 07 February 1986
• Docket Number: Civ. A. No. 85-370.
• Citation: 628 F. Supp. 130
• Parties: MET-COIL SYSTEMS CORPORATION, Plaintiff, v. KORNERS UNLIMITED, INC. and Ductmate Industries, Inc., Defendants.
• Court: U.S. District Court — Eastern District of Pennsylvania

628 F. Supp. 130

MET-COIL SYSTEMS CORPORATION, Plaintiff, v. KORNERS UNLIMITED, INC. and Ductmate Industries, Inc., Defendants.

Civ. A. No. 85-370.

United States District Court, W.D. Pennsylvania.

February 7, 1986.

Richard W. Hosking, Kirkpatrick & Lockhart, Pittsburgh, Pa., for plaintiff.

Stanley J. Price, Jr., John C. Brosky, Price & Adams, Ltd., Pittsburgh, Pa., for Korners.

Melvin L. Moser, Buchanan & Ingersoll, P.C., Pittsburgh, Pa., for Ductmate.

MEMORANDUM OPINION

TEITELBAUM, District Judge.

Met-Coil Systems Corporation (Met-Coil) is the owner of a patent relating to a system or method of connecting sections of metal ducts. These ducts are normally used in buildings as part of the heating and air conditioning systems. Under Met-Coil's system the ends of the metal duct sections are bent to form integral flanges, specially shaped corner pieces are snapped in place and the sections then bolted together. According to Met-Coil's affidavit the essential parts of this system are the integral flanges and the special corner pieces.

Met-Coil, through a subsidiary and through a licensee,¹ manufactures and sells roll-forming machines. These machines bend the ends of the metal duct sections to form the integral flanges. Met-Coil does not actually form the ducts or form the integral flanges itself. Rather, it is the purchasers of Met-Coil's roll-forming machines who actually bend the metal to form the ducts and the integral flanges.

Met-Coil, through another subsidiary and through its licensee, also manufactures and sells special corner pieces for use with the integral flanges.

Korners Unlimited, Inc. (Korners) manufactures and sells corner pieces, which it refers to as "C" corners. "C" corners are specifically made for use with the Met-Coil integral flange and are sold only to purchasers of Met-Coil's roll-forming machines.

Met-Coil alleges Korner's manufacture and sale of "C" corners infringes its patent. Korners moves for summary judgment.

The elements of infringement are set forth in 35 U.S.C. § 271 which states the following:

271. INFRINGEMENT OF PATENT.

(a) Except as otherwise provided in this title, whoever without authority makes, uses or sells any patented invention, within the United States during the term of the patent therefor, infringes the patent.

(b) Whoever actively induces infringement of a patent shall be liable as an infringer.

(c) Whoever sells a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.

Korners first contends it is not a direct infringer of Met-Coil's patented system of connecting sections of metal ducts. Although it opposes Korner's motion for summary judgment, Met-Coil does not assert that Korner's manufacture and sale of "C" corners directly infringes its patent.

Korners next contends it cannot be held liable for contributing to infringement or inducing infringement because there is no direct infringement. There can be no contributory infringement unless there is direct infringement. Deepsouth Packing Co., Inc. v. Laitram Corp., 406 U.S. 518, 526, 92 S.Ct. 1700, 1706, 32 L.Ed.2d 273 reh. denied, 409 U.S. 902, 93 S.Ct. 94, 34 L.Ed.2d 165 (1972). Similarly, there can be no inducement of infringement without direct infringement. 35 U.S.C. § 271(b). There is no direct infringement, Korners argues, because those to whom Korners sells its "C" corners are the purchasers of Met-Coil's roll-forming machines and, by selling the roll-forming machines, Met-Coil grants these purchasers an implied license to practice Met-Coil's patented duct connecting system.

Met-Coil, on the other hand, contends its sale of roll-forming machines does not confer an implied license to purchase "C" corners from Korners.

United States v. Univis Lens Co., 316 U.S. 241, 62 S.Ct. 1088, 86 L.Ed. 1408 (1942) limits a patent owner's efforts to control his invention after the sale of an essential element. Univis owned a patent covering multifocal eyeglass lenses. Univis manufactured blank lenses and sold them to designated licensees. These licensees then ground and polished the blank lenses. The court stated:

But in any case it is plain that where the sale of the blank is by the patentee or his licensee—here the Lens Company—to a finisher, the only use to which it could be put and the only object of the sale is to enable the latter to grind and polish it for use as a lens by the prospective wearer. An incident to the purchase of any article, whether patented or unpatented, is the right to use and sell it, and upon familiar principles the authorized sale of an article which is capable of use only in practicing the patent is a relinquishment of the patent monopoly with respect to the article sold. Sale of a lens blank by the patentee or by his licensee is thus in itself both a complete transfer of ownership of the blank, which is within the protection of the patent law, and a license to practice the final stage of the patent procedure.

316 U.S. at 249, 62 S.Ct. at 1093 (citations omitted). The court went on:

Where one has sold an uncompleted article which, because it embodies essential features of his patented invention, is within the protection of his patent, and has destined the article to be finished by the purchaser in conformity to the patent, he has sold his invention so far as it is or may be embodied in that particular article.

316 U.S. at 250-51, 62 S.Ct. at 1093-94.

Medeco Security Locks, Inc. v. Lock Technology Corp., 199 U.S.P.Q. 519 (S.D. N.Y.1976) reaches the same result. Medeco manufactured and sold patented...