Mueller v. Campbell

• Decision Date: 22 April 1946
• Docket Number: Civil Action No. 279.
• Citation: 68 F. Supp. 475
• Parties: MUELLER et al. v. CAMPBELL et al.
• Court: U.S. District Court — Southern District of Ohio

68 F. Supp. 475

MUELLER et al. v. CAMPBELL et al.

Civil Action No. 279.

District Court, S. D. Ohio, W. D.

April 22, 1946.

F. O. Richey and H. F. McNenny, of Richey & Watts, all of Cleveland, Ohio, and Joseph D. Chamberlain, of Dayton, Ohio, for plaintiffs.

John J. Mahoney, of Corbett, Mahoney & Miller, all of Columbus, Ohio, for defendants.

NEVIN, District Judge.

On September 10, 1945, plaintiffs filed a "Motion for Rule to Show Cause why Defendant, Harold C. Campbell, should not be attached, and/or fined for Contempt of Court."

In their motion, plaintiffs "move this court for a rule upon the defendant, Harold C. Campbell, to show cause why he should not be attached and/or fined for contempt for violation of the judgment and injunction heretofore entered and granted in this cause."

On September 21, 1945, plaintiffs filed a "Motion for Rule to Show Cause Why Defendant, H. D. Thomas, doing business as The Thomas Company, should not be attached and/or fined for contempt of court."

In the above motion plaintiffs "move this court for a rule upon the defendant, H. D. Thomas, doing business as The Thomas Company, to show cause why he should not be attached and/or fined for contempt for violation of the judgment and injunction heretofore entered and granted in this cause."

In each of the foregoing motions plaintiffs have set forth the grounds upon which the respective motion is based. These grounds are substantially the same in both motions. It is unnecessary to repeat the details here. It is sufficient to say that plaintiffs' claim that defendants and each of them have violated an order of this Court theretofore entered in the form of a perpetual injunction on August 1, 1945.

This perpetual injunction conformed to a judgment and interlocutory injunction entered in this case on July 30, 1945. The interlocutory judgment and the perpetual injunction both were based on the decision, findings and conclusions of this Court rendered on June 23, 1945, 68 F.Supp. 464, in a patent suit wherein plaintiffs charged defendants with infringement of Hunt Patent No. 2,300,157, and particularly of Claims 2, 3, 7, 10, 12, 14, 16, 17 and 19 thereof, therein in issue. With and in support of their respective motions plaintiffs filed the affidavits of several persons.

On September 11, 1945, on plaintiffs' motion and accompanying affidavits, the Court entered a "Rule to Show Cause" directed to defendant, Harold C. Campbell and on September 26, 1945, on plaintiffs' motion and accompanying affidavits, a similar "Rule to Show Cause" was entered as to the defendant, H. D. Thomas, doing business as The Thomas Company.

In each and both instances, the defendants were ordered to be and appear before the Court on November 5, 1945, at 10:30 A.M., (continued by agreement to December 5, 1945) "to show cause, if any he has, why he should not be punished for contempt of court in violating the order of injunction contained in the judgment entered by this Court in the above cause on July 30, 1945."

Defendants and each of them were enjoined inter alia "from directly or indirectly infringing upon the said Letters Patent by making, selling or using poultry picking machines exemplified by Plaintiffs' Exhibit 16, or equivalents thereof, from advertising or from in any way infringing upon or contributing to the infringement of any of said claims 2, 3, 7, 10, 12, 14, 17 and 19 of said Letters Patent."

On November 10, 1945, defendants filed their answer to the respective Rules to Show Cause in which they "deny that they have violated the injunction issued out of this Court on August 1, 1945, conforming to the interlocutory injunction entered in this case on July 30, 1945, and move that the said motions for rules to show cause be discharged at plaintiffs' costs, for the reasons set forth in the attached affidavits of Heyward D. Thomas and Harold C. Campbell, and the accompanying brief filed herein on behalf of defendants."

Since the decision of the Court and the issuance of the injunction defendants have proceeded to manufacture and sell what they call "modified structures."

In their Brief (pp. 49, 50) counsel for defendants say: "The defendants in this case are not charged with violation of the injunction by making, selling or using the precise device held to be an infringement by the Court. The controversy now before the Court relates to modified structures which have been made by the defendants. The modified structures are not the same as that held to be an infringement by the Court at the trial."

Defendants further assert (Br. pp. 50, 51) that: "By the overwhelming weight of authority in the Federal Courts where such a situation as herein described arises where the question of infringement and validity of the modified structures is in question the courts will not decide the matter on contempt proceedings. The defendants having made a change which they believe avoids the Hunt patent and having acted honestly and on advice of counsel are entitled to their day in court. They should not be held for contempt in such a situation on ex parte affidavits. The motions for contempt should therefore be discharged and the plaintiffs left to their right to file a supplemental bill herein, or to file a new suit in order to test out the question of validity and infringement of the modified structures." (Citing) Enterprise Manufacturing Co. of Pennsylvania v. Sargent et al., C.C., 48 F. 453, 454; Crown Cork & Seal Co. of Baltimore City v. American Cork Specialty Co., et al., 2 Cir., 211 F. 650 at 653; Temple Pump Co. v. Goss Pump & Rubber Bucket Mfg. Co., C.C., 31 F. 292, 293; Otis Elevator Co. v. 570 Building Corp., et al. (Staley Elevator Co. Inc., Intervener), D.C., 26 F.Supp. 900 at 901; Westinghouse Air Brake Co. v. Christensen Engineering Co., C.C.N.Y., 126 F. 764 at 765.

But, as reference to them will disclose, even in the authorities just cited, the rule for which defendants contend does not prevail, where "the change was plainly a mere colorable equivalent," Crown Cork & Seal Co. of Baltimore City v. American Cork Specialty Co., supra; Otis Elevator Co., v. 570 Building Corp. et al., supra; nor where the infringement by the new device is clear "on the face of the matter." Radio Corporation v. Cable Tube Corp., 2 Cir., 66 F.2d 778, 783.

However, further discussion of this subject is of no present importance because as plaintiffs point out, whatever the rule may be elsewhere, there is no doubt that in this (Sixth) Circuit, the rule is that it is proper to consider the modified structure in Contempt Proceedings.

In Field Body Corp. v. Highland Body Manufacturing Co., 6 Cir., 13 F.2d 626, the Court (Page 627) say: "This is an appeal from an order adjudging appellant in contempt of court for violating an injunction against infringement of patent * * *. We are not concerned with the prior art, nor with an original interpretation of the claims of the patent. It suffices here that in an action between the parties the patent was held infringed by appellant's original structure. The question, then, is whether the modified structure is the equivalent of the original in its relation to the patent in suit. Appellant contends that it is materially different." * * *

In Wadsworth Electric Manufacturing Co. Inc., v. Westinghouse Electric & Mfg. Co., 6 Cir., 71 F.2d 850 the court states (Page 851): "The question in proceedings for contempt for violation of an injunction against infringement is not one which relates to or involves the original interpretation of the claims of the patent. Field Body Corporation v. Highland Body Mfg. Co., 6 Cir., 13 F.2d 626. It suffices that in an action between the parties the patent was held valid and infringed, and the question is only whether the modified structure is equivalent to the original in relation to the patent in suit."

Defendants further submit that plaintiffs' contention that defendants' modified structures are the equivalent of the device which was held to infringe in the original patent suit cannot be sustained because of "file wrapper estoppel."

It is their position that Hunt's patent covers only "hollow fingers" whereas, defendants assert, in their present "modified structures" they employ or use "solid" fingers. As to this defendants (Br. Pp. 10 et seq.) say: "An examination of the file wrapper of the Hunt patent shows that when Hunt filed his application it contained original claims which would have read upon defendants' modified structures if such claims had been allowed by the Patent Office," but that some of his original claims were rejected and that amendments were thereafter filed so that "It is clear from this file wrapper history that Hunt attempted to obtain claims which would have read on a chicken picker machine having solid fingers or upon a finger per se which would be solid, but he could not obtain these claims because they were met by the prior art," and defendants submit that "Hunt cannot now read that limitation out of his claims to broaden his patent and then hold the defendants who are using the prior art solid finger structure for infringement."

However, claims 3, 14, 17 and 19 (of Hunt Patent No. 2,300,157 in suit) do not recite the hollow feature which is found in some of the other claims.

Plaintiffs' position with respect to this particular question is set forth in their brief (Pp. 17 et seq.) as follows: "A patent claim must be interpreted in the light of the specification, Hawkinson v. Wilcoxen, 6 Cir., 149 F.2d 471, 475, where Judge Hicks, speaking for the Court, said: `The claims of a patent are always to be interpreted in the light of its specifications and drawings. This canon of construction is as old as the patent law itself * * *.'

"The specification of the patent in suit says as follows (p. 2, first column, ls. 62-67): `Also, it has been found that a solid finger of the kind described will remove feathers satisfactorily, but the operation is further speeded up if a...