Norvell v. McGRAW-EDISON COMPANY
| Decision Date | 29 July 1970 |
| Docket Number | Civ. A. No. 65-C-205. |
| Citation | 316 F. Supp. 198 |
| Parties | Edmund C. NORVELL, Jr., Plaintiff, and Burgess Vibrocrafters, Inc., Involuntary Plaintiff, v. McGRAW-EDISON COMPANY, Defendant. |
| Court | U.S. District Court — Eastern District of Wisconsin |
Ira Milton Jones, and James R. Custin, Milwaukee, Wis., for plaintiff; Donald R. Fraser, Toledo, Ohio, of counsel.
Howard H. Darbo, Arlington Heights, Ill., for involuntary plaintiff.
Charles A. Prudell, Elm Grove, Wis., for defendant; James Van Santen, and Charles Lind, Chicago, Ill., of counsel.
FINDINGS OF FACT, CONCLUSIONS OF LAW, AND ORDER FOR JUDGMENT
1. This court has jurisdiction of the subject matter, including the counterclaim of defendant, and of the parties. This action arises under the patent laws of the United States, 35 U.S.C., and the antitrust laws of the United States, 15 U.S.C., and this court has jurisdiction pursuant to 28 U.S.C. §§ 1338(a) and 1400(b), also under 28 U.S.C. § 1332 and the declaratory judgment law, 28 U.S.C. § 2201.
2. The original plaintiff, Edmund C. Norvell, Jr. ("Norvell"), of Bloomington, Minnesota, granted to Burgess Vibrocrafters Incorporated ("B.V.I."), an Illinois corporation doing business at Grayslake, Illinois, an exclusive license under U. S. Patent No. 3,069,092 issued to Norvell as patentee. B.V.I. was ordered by this court to join as an involuntary plaintiff upon motion of the defendant.
3. The defendant, McGraw-Edison Company ("McGraw-Edison"), is a Delaware corporation having a regular and established place of doing business in Milwaukee, Wisconsin, and having its headquarters in Elgin, Illinois.
4. The patent in suit No. 3,069,092 ("092") relates to a method of forming a dispersion of vaporized liquid insecticide (claim 1) and a so-called insecticide fogger (claim 2) and was issued December 18, 1962, on the basis of a continuation-in-part application Serial No. 168,004 filed January 15, 1962. This application amended and replaced an original application Serial No. 59,713 filed September 30, 1960 (parent application). The patent, Exhibit No. 1, is reproduced as "Appendix A" to this opinion.
5. Patent 092 discloses an insecticide fogger wherein a conventional B.V.I. paint sprayer is used to force liquid insecticide from a jar reservoir by a pumping action through an atomizing nozzle in spray form. A cylindrical heated barrel forming a vaporizer is attached to the paint sprayer.
6. The patent discloses two separate species. In the species of Figures 1-3, the barrel is mounted on the nozzle by a bracket, and a substantial axial space exists between the front end of the nozzle and the rear end of the barrel so that the spray discharged from the atomizing nozzle will aspirate air into the barrel to provide an air liquid mixture. That species was the only species disclosed in the original parent application.
7. In the species of Figures 4-7, an annular flange is added to the paint sprayer and the barrel is provided with mounting prongs to mechanically and electrically connect the elements in assembly with one another, thereby leaving an annular space between the external surface of the barrel and the annular flange, through which annular space air is aspirated for mixture with the spray prior to entry into the barrel. That species conforms to the B.V.I. commercial structure and was added to the disclosure in the continuation-in-part application filed February 15, 1962.
8. The patent in suit contains two claims, claim 1 being directed to a method of forming a dispersion of vaporized liquid insecticide and claim 2 being directed to an insecticide fogging device.
9. McGraw-Edison was originally charged with infringing both claims 1 and 2. Issue was joined on the complaint as well as on a counterclaim seeking a declaration of noninfringement and invalidity as to both claims.
10. The plaintiff attempted withdrawal of method claim 1, which procedure was the subject matter of some debate at the trial, and the court invited counsel for the defendant to submit a proposed order of dismissal. The plaintiff would not approve an order as presented, and separate briefs directed to that issue were submitted.
11. For purposes of these findings of fact and conclusions of law and this decision, both claims 1 and 2 are considered in the case under the defendant's counterclaim.
12. The two claims of the patent in suit read as follows:
13. The issues are as to the validity and infringement of claims 1 and 2 and also alleged violation of the antitrust laws by the plaintiffs.
The Accused Device
14. McGraw-Edison manufactures an insecticide fogger wherein an atomized spray of liquid insecticide is directed towards the interior of a heating tube. The McGraw-Edison fogger provides a nozzle which is located just inside of the heating barrel. Further, the McGraw-Edison fogger utilizes a motor-powered fan to forcibly pump a stream of air into the heating tube so that the insecticide fog is ejected from the outlet end of the heating tube.
15. Method claim 1 specifies that the air passing through the barrel is determined "solely by the aspirating action of said atomized spray." Plaintiffs' engineering expert Oberto stated: "to me this means that if any outside source of air such as a fan is used to force air through the barrel, this claim is not infringed." That is the very limitation by means of which method claim 1 was amended to distinguish over the Austrain reference patent 175,972 cited by the United States Patent Office.
16. It was also represented in open court that the plaintiff and the involuntary plaintiff were willing to dismiss the suit with prejudice with respect to method claim 1.
17. As part of his early experimentation, Norvell made an insecticide sprayer with a nozzle inside of the barrel but Norvell found such device unsatisfactory because it dripped and there was a little vapor and some spray went through. In completing his alleged invention, Norvell moved the nozzle back to establish an axial spacing relationship between the nozzle and the barrel.
18. In the patent in suit, column 2, line 37 et seq., is described "a substantial space" which exists between the front end of atomizing nozzle 14 and the rear end of the barrel 17. That "space" was labeled on plaintiff's Exhibit 1 by Norvell and is also labeled by legend in the file wrapper as admitted by plaintiffs' patent expert Kohls. Norvell admitted he had no geometric terms he could apply to such "space." The parent application, as originally filed, September 30, 1960, makes no reference to the word "annular" or the word "embracive" or the term "annular embracive passageway" in connection with that space or any other part of the structure of operation of the Figure 1 species.
19. Kohls admitted that Figure 1 of the patent in suit was newly added by a continuation-in-part application except space embracing the cone of discharging spray which is no different than the open space in the prior art patent of Tomasovich 2.
20. Everything in the patent specification following line 11 of column 3 of the patent in suit was newly added by a continuation-in-part application except for the paragraph appearing in column 5 between lines 22 and 25. The figures shown in Figures 4-7 of the drawings were also newly added in the continuation-in-part application.
21. In the newly-added material, several references are made to features which are "annular" such as "an annular space defined by forwardly extending annular collar 58," column 3, lines 35 et seq., and to the operation of such device calling for air to be "aspirated to the aforesaid zone through the annular space between the outer surface of the casing 60 and the inner surface of the annular collar 58."
22. Both the inventor Norvell and the plaintiffs' patent expert Kohls admitted that the "annular space" through which the air is aspirated is the annular space between the collar 58 and the rear end portion of the barrel as labeled by legend by Norvell on Figure 4 of plaintiffs' Exhibit 1 and as labeled by legend by Kohls on defendant's Exhibit 46 which is attached as "Appendix B."
23. Norvell and plaintiffs' patent expert Kohls both agreed that the word "annular" is commonly understood to describe a ring-shaped member having inner and outer confines. Plaintiffs' patent expert Kohls admitted that for all practical purposes, most of the air, apart from possible leakage, in the patented invention in suit comes through the "annular space" identified on defendant's Exhibit 46 ("Appendix B").
24. Plaintiffs' patent expert...
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