SCHLEGEL MANUFACTURING CO. v. King Aluminum Corp.
| Decision Date | 04 September 1974 |
| Docket Number | No. 3706.,3706. |
| Citation | 381 F. Supp. 649 |
| Parties | The SCHLEGEL MANUFACTURING COMPANY, Plaintiff, v. KING ALUMINUM CORPORATION and USM Corporation, Defendants. |
| Court | U.S. District Court — Southern District of Ohio |
James M. Wetzel and Robert M. Ward, Wetzel, Greenawalt & Fitzgibbon, Chicago, Ill., George W. Shaw, Cumpston, Shaw & Stephens, Rochester, N.Y., Richard H. Evans, Wood, Herron & Evans, Cincinnati, Ohio, for plaintiff.
George N. Hibben and Albert W. Bicknell, Hibben, Noyes & Bicknell, Chicago, Ill., Lawrence B. Biebel, Biebel, French & Bugg, Dayton, Ohio, for defendants.
FINDINGS OF FACT, CONCLUSIONS OF LAW AND ORDER
This cause of action has been tried to the Court as a result of the motion of plaintiff to have the defendants adjudged in civil contempt for violating the terms of a decree previously rendered by this Court. A concise history of this litigation is stated in this Court's opinion printed as Schlegel Manufacturing Co. v. King Aluminum Corp., 369 F. Supp. 650 (S.D.O.1973). Accordingly, the Court now states its findings of fact and conclusions of law, F.R.Civ.P. 52.
1. Plaintiff, The Schlegel Manufacturing Company, is a corporation of the State of New York and has its principal place of business at 1555 Jefferson Road, Rochester, New York 14622.
2. Defendant, USM Corporation, is a corporation of the State of New Jersey and has its principal place of business in Boston, Massachusetts.
3. This action arises under the patent laws of the United States of America, more particularly 35 U.S.C. §§ 271, 281.
4. Jurisdiction is conferred upon this Court by 28 U.S.C. § 1338.
5. Venue is proper in this Court, 28 U.S.C. § 1400(b).
6. This is a motion for contempt. On February 22, 1972 this Court entered its final judgment in the above entitled patent infringement action which, inter alia, held United States Letters Patent No. 3,175,256, the patent in suit, valid in law.
7. The Court further held that the defendant, USM, had infringed the patent by the making and selling of its Series 892 and 893 pile weatherstripping having a flexible, impervious barrier in the pile.
8. The Court enjoined the defendant "From the unauthorized making, using or selling or inducing others to use pile weatherstripping having a flexible, impervious barrier, as represented by USM's series 892 and 893."
9. Since February 22, 1972 the Bailey Division of USM has produced and sold pile weatherstripping having a flexible impervious barrier in the pile and bearing parts numbers XXXXX-XXX and XXXXX-XXX and which is referred to as "New Structure-USM."
10. Sales of the "New Structure-USM" pile weatherstripping were made to Teller-Norrab, Inc. of Canton, Ohio and Thermal Industries of Pittsburgh, Pennsylvania.
11. These USM products were sold under the name "Twin-Fin."
12. On May 11, 1973 Schlegel filed its motion for contempt charging USM with the willful and deliberate violation of the injunction of this Court because of the making and selling of the "New Structure-USM."
13. As USM sought to stay the contempt motion, a hearing was had on October 16, 1973 from which an order was issued denying the motion to stay and setting a hearing date on the motion for contempt. (Order of December 11, 1973 at 5-6).
14. In late 1972, Schlegel advised USM that its new "Twin-Fin" construction constituted a violation of the settlement and might be in contempt.
15. At a meeting in Boston, Massachusetts arranged between the parties on May 8, 1973 to resolve this new issue, USM advised that it had that day filed an action entitled USM Corp. v. The Schlegel Mfg. Co., Civil Action No. 73-544, in the United States District Court for the District of South Carolina seeking a declaratory judgment of non-infringement for its new "Twin-Fin" construction and of invalidity of the Horton Patent, United States Patent No. 3,175,256.
16. Schlegel sought to stay the South Carolina action at the same time that USM sought to stay this action. The South Carolina action has been stayed pending a determination in this suit.
17. On January 10, 1974 USM answered Schlegel's motion for contempt, denying contempt, and denying infringement of the patent in suit.
18. As an affirmative defense USM asserted that there was no infringement because of the doctrine of file wrapper estoppel.
19. Further, USM asserted its Johnson et al. United States Patent No. 3,745,053 as covering the "New Structure-USM" and as a defense to the accusation of infringement.
20. USM sought to attack collaterally the previous judgment by attacking the validity of the patent and by attacking the settlement documents from which the judgment evolved.
21. By the order of December 11, 1973 this Court had ruled that the single issue to be determined at the trial was whether the "New Structure-USM" infringes or interferes with the valid patent of Schlegel and that the collateral matters of validity and misuse could not be raised. The Court additionally ruled that, if necessary for a full and proper decision herein, the validity of USM's Johnson et al. United States Patent No. 3,745,053 could be raised and determined at trial. (Order of December 11, 1973 at 5, 6).
22. The series 892 "Enjoined Structure-USM" is made up of a base strip, spaced bodies of pile fibers with a pile free gap there between, and a barrier strip extending longitudinally with the base strip and projecting laterally to the base strip. In the "Enjoined Structure-USM" the barrier strip is fixed at one edge in the gap by bonding the barrier strip only along its edge to the base strip.
23. The USM enjoined structure used the same elements to accomplish the same purpose in the same way as the patented structure and is an infringement of the Horton patent.
24. The "New Structure-USM" includes precisely the same elements as both the patented structure and the "Enjoined Structure-USM", i. e., a base strip, spaced bodies of pile fibers with a pile free gap there between and a barrier strip extending longitudinally with the base strip and projecting laterally to the base strip.
25. The only difference between "Enjoined Structure-USM" and the "New Structure-USM" is that in the latter, the means of barrier strip attachment is "slightly altered" to bond the barrier strip to the pile rather than to the base.
26. The Horton patent teaches that the barrier strip may be bonded to the base strip and to the pile fibers.
27. USM's witness, Mr. Johnson, testified that the old, "Enjoined Structure-USM" was changed to the accused "New Structure-USM" by slightly altering the means of fin attachment from bonding solely to the base strip to bonding solely to the pile fibers.
28. Indeed, Johnson argued to a successful conclusion that these two structures were equivalent, both commercially and functionally.
29. Based on actual testing, Schlegel's technical expert, Mr. Lind, found the "Enjoined Structure-USM" to be the functional equivalent of the "New Structure-USM."
30. Further, the ultimate test of infringement which is met here is whether the accused device does the same work in substantially the same way to accomplish the same result. See, Graver Tank and Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 608, 70 S.Ct. 854, 94 L.Ed. 1097 (1950), USM's witness, Mr. Johnson, so testified.
31. The only evidence of opinions sought by defendant on the question of infringement of plaintiff's patent came from Mr. Johnson, a layman in USM's employ.
32. On May 5, 1970 Johnson, who is not an attorney, wrote to the USM Patent Department and gave the opinion that in the Horton patent, the claims are limited to the central fin being "attached" to the base strip and asked whether his proposed construction of bonding the fin to the pile would "subvert the Schlegel patent . . .?"
33. USM produced no evidence of any response to Johnson's quaere.
34. Johnson later opined to outsiders that this slight alteration of bonding the fin to the pile avoided patent infringement.
35. Although there was much reference at trial to legal opinions having been given to USM, USM's counsel admitted at trial there was no evidence of any written opinions, and no one was called upon to testify as having given an opinion.
36. The opinions of laymen on matters of law are entitled to little weight and do not rebut competent evidence to the contrary, in this case.
37. The "New Structure-USM" is equivalent to the "Enjoined Structure-USM" and also comes within the claims of Horton.
38. For USM to have proceeded to this infringing structure without a legal opinion and while its lawyers were entering into the present injunction constitutes willful behavior.
39. The doctrine of file wrapper estoppel says that where a claim has been amended to avoid a rejection over the prior art, the patentee is thereafter estopped from recapturing by way of equivalents that which was abandoned from the claim by the amendment. See, e. g., Kolene Corp. v. Motor City Metal Treating, Inc., 440 F.2d 77 (6th Cir. 1971); Eimco Corp. v. Peterson Filters and Engineering Co., 406 F.2d 431, 438 (10th Cir. 1968).
40. The doctrine of file wrapper estoppel is applicable only when the doctrine of equivalents is resorted to for proving infringement. If literal infringement is made out, file wrapper estoppel need have no application. Kolene Corp. v. Motor City Metal Treating, Inc., 440 F.2d 77, 82 (6th Cir. 1971). There is literal infringement here and no available file wrapper estoppel defense.
41. Additionally, in this contempt case, the equivalency test is between the "Enjoined Structure USM" and the "New Structure-USM", and not between the new, accused device and the claims of the patent in suit. Cf. Panduit Corp. v. Stahlin Bros. Works, Inc., 338 F.Supp. 1240, 1241 (W.D.Mich. 1972), aff'd, 476 F.2d 1286 (6th Cir. 1973). Hence, for that further reason, the doctrine of file wrapper estoppel has no application here.
42. There was no change in the scope of claims...
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