Seb S.A. v. Montgomery Ward & Co., Inc., No. 99 Civ. 9284(BDP).

CourtUnited States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
Writing for the CourtBarrington D. Parker, Jr.
Citation77 F.Supp.2d 399
PartiesSEB S.A., Plaintiff, v. MONTGOMERY WARD & CO., INC., Global-Tech Appliances, Inc., and Pentalpha Enterprises Ltd., Defendants.
Docket NumberNo. 99 Civ. 9284(BDP).
Decision Date23 November 1999
77 F.Supp.2d 399
SEB S.A., Plaintiff,
v.
MONTGOMERY WARD & CO., INC., Global-Tech Appliances, Inc., and Pentalpha Enterprises Ltd., Defendants.
No. 99 Civ. 9284(BDP).
United States District Court, S.D. New York.
November 23, 1999.

Page 400

Norman Zivin, Cooper & Dunham, New York City, NY, for plaintiff.

William Dunnegan, Perkins & Dunnegan, New York City, NY, for defendants.

FINDINGS OF FACT AND CONCLUSIONS OF LAW

BARRINGTON D. PARKER, Jr., District Judge.


Plaintiff, SEB S.A. ("SEB") commenced this action against Montgomery Ward & Co., Inc., Global-Tech Appliances, Inc., and Pentalpha Enterprises Ltd., claiming that a deep fryer, marketed by Montgomery Ward and manufactured by Global-Tech, infringes United States Patent No. 4,995,312 (the "'312 Patent"). See 35 U.S.C. § 271.

SEB moved by Order to Show Cause on September 10, 1999 for a preliminary injunction. Montgomery Ward appeared and opposed the motion, while Global-Tech and Pentalpha challenged the existence of personal jurisdiction in this Court. The application for the preliminary injunction was combined with the Markman hearing. See Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed.Cir. 1995), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). The Court invited additional submissions by the parties and heard arguments of counsel on October 14, 1999. Subsequently, Pentalpha has appeared in this action.

The relevant facts are not substantially in dispute, although their legal consequences are contested. The essential controversy in this litigation is whether the '312 Patent permits the deep fryer's inner pan to be stabilized by a screw. This Court concludes that it does and, consequently, construes the claims at issue, makes the following Findings of Fact and Conclusions of Law pursuant to Fed. R.Civ.P. 65(d), and grants interlocutory relief.

FINDINGS OF FACT

1. Plaintiff SEB S.A. is a French company doing business in this District through its affiliate T-Fal Corporation ("T-Fal"). Through T-Fal, SEB sells a number of consumer appliances, including the deep fryer at issue in this lawsuit, to retailers throughout the United States including those in this District. Montgomery Ward has sold a very similar deep fryer under the Admiral brand. The Admiral fryer is "the accused product".

2. Pentalpha is a corporation based in Hong Kong. Pentalpha is engaged in the manufacture and sale of small household appliances, including deep-fat fryers. Pentalpha manufactured and sold the accused product to Montgomery Ward.

3. Global-Tech is a corporation with its principal place of business in Hong Kong. Global-Tech and Pentalpha are affiliated Hong Kong corporations.

4. Montgomery Ward is a national chain of retail stores that imports and sells consumer appliances, including deep fryers. Montgomery Ward competes with SEB's customers throughout the United States including those in the State of New York and the Southern District of New York.

5. The appliance subject to the '312 Patent is the SEB "supercool" safety fryer invented around 1988. The '312 Patent was issued in February 1991 and was subsequently assigned to SEB. SEB has not granted licenses under this Patent, apparently preferring to maintain exclusive rights to sell the product.

6. The SEB "supercool" deep fryer solved a problem which existed prior to its invention. Previously, deep fryers generally had metal or aluminum outer walls, which, when touched by a user, could

Page 401

cause burns as a consequence of the high temperatures achieved during use and, in addition, experienced substantial heat losses while in operation. Moreover, these models had the aesthetic disadvantages associated with the use of high heat resistant metals. One solution to these problems had been to construct the entire wall or skirt from a plastic material able to withstand extreme temperatures. The drawback of this approach, however, was that the use of heat resistant plastics tended to make products prohibitively expensive for household use.

7. The "supercool" deep fryer was designed to remedy these deficiencies by allowing the use of standard, comparatively low-cost, plastic materials. The SEB fryer, in substance, addressed these problems by eliminating "thermal bridges" between the metal pan and the plastic outer skirt of the fryer. The absence of thermal bridges means the existence of an insulating gap between the inner metal frying pan and the outer decorative plastic skirt.

8. The SEB deep fryer employs a ring made of heat resistance plastic to hold the metal pan in place and the metal pan is suspended from the ring which, in turn, is attached to the top of the plastic skirt. This assembly permits the skirt to be insulated from heat at the point of contact and also permits the minimal use of expensive heat-resistant plastics.

9. In addition, the metal pan is stabilized by a pin attached to the bottom of the pan which extends through an insulated shaft in the base of the housing. Because of the heat-resistant insulated shaft, the pan does not establish a thermal bridge between the metal pan and the skirt. The controversy in this litigation boils down to whether claim 1 permits the use of this pin.

10. The SEB "supercool" deep fryer has achieved substantial commercial success in the United States. It is sold in mass merchandise stores such as Wal-Mart and K-Mart and speciality shops such as Zabar's and Fortunoff. Sales have been high.

11. The '312 Patent has 13 claims, including 1 independent claim, which is claim 1.

12. Claim 1 of the '312 Patent recites:

An electrical deep fryer comprising a metal pan having a wall, and an electric heating resister that heats said wall directly by conductive heating to a temperature higher than 150~C., said pan being surrounded by a plastic skirt, wherein said skirt is of plastic material which does not continuously withstand a temperature of 150~c., said skirt entirely surrounding the lateral wall and said base of the pan being separated from said wall and said base by an air space of sufficient width to limit the temperature of the skirt to a value which is compatible with the thermal resistance of the plastic material of the skirt, said skirt being completely free with respect to the pan with the exception of a ring which joins only the top edge of the skirt to the top edge of the pan and to which the latter is attached, said ring being of heat-insulating material which is continuously resistant to the temperature of the top edge of the pan.

13. The specification of the '312 Patent describes the metal pan spaced from the plastic skirt with at least three points of contact between the metal pan and the plastic skirt: a heating element, a thermostat, and the stabilizing connection at the bottom. Those elements are discussed in the text and shown in the drawings.

14. Claim 8 of the '312 Patent, which relates to independent claim 1, recites, in part, "the base of the pan has a vertical rod engaged in an opening formed in the base of the outer skirt and separated from the rod by a sleeve of heat-insulating material which affords resistance to the temperature of said rod."

15. The prosecution history of the '312 Patent shows that the phrase "completely free with respect to the pan" in claim 1

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means that the skirt is thermally insulated from the pan with an air gap, not that it is free from any other contacts with the pan:

... the skirt 3 is practically free with respect to the pan 1 or in other words that no thermal bridge is created between the pan and the skirt....

16. In connection with the prosecution of the '312 Patent, SEB did not change the original language of the claims in any material respect. In the prosecution history, SEB distinguished the "cool wall" invention from a cited Onishi patent, which shows the use of the adiabatic (insulating) material between the pan and the skirt. That discussion had essentially nothing to do with the presence or absence of a thermally insignificant stabilizing element.

17. At some point in 1997 SEB learned that Sunbeam Products Inc. was advertising and selling deep-fat fryers which SEB believed infringed the '312 Patent. Consequently, in March 1998, SEB sued Sunbeam for patent infringement in the United States District Court for the District of New Jersey.

18. Following the filing of that suit, SEB amended its complaint to name Pentalpha and Global-Tech as additional...

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5 practice notes
  • Rosco, Inc. v. Mirror Lite Co., No. CV-96-5658 (CPS).
    • United States
    • United States District Courts. 2nd Circuit. United States District Court (Eastern District of New York)
    • 17 juin 2009
    ...Page 341 found when all the elements of the patent claims are found in the accused device. SEB S.A. v. Montgomery Ward & Co., Inc., 77 F.Supp.2d 399 Thus, the question is whether mirrors 1, 2 and 5 contain the limitations imposed by claim 1 of the '984 patent, specifically whether the m......
  • Outside the Box Innovations, LLC v. Travel Caddy, Inc., No. 2009–1171.
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • 21 septembre 2012
    ...in SEB v. Montgomery Ward, had explained that “[t]he application for the preliminary injunction was combined with the Markman hearing.” 77 F.Supp.2d 399, 400 (S.D.N.Y.1999), aff'd,243 F.3d 566 (Fed.Cir.2000) (Table). My colleagues' equivocal ruling today simply creates conflict with precede......
  • Seb, S.A. v. Montgomery Ward & Co., Inc., No. 99 Civ. 9284(SCR).
    • United States
    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • 9 janvier 2006
    ...motion, Judge Parker held that Defendants'"use and sale [of the original fryer] in the United States" infringed SEB's patent. 77 F.Supp.2d 399, 403 (S.D.N.Y.1999). On appeal, the Federal Circuit affirmed the preliminary injunction. 243 F.3d 566, 2000 WL 1673667 (Fed.Cir. Nov.6, 20......
  • Seb S.A. v. Montgomery Ward & Co., Inc., No. 2009-1099.
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • 5 février 2010
    ...to prove at trial that Pentalpha's deep fryers infringe at least claim 1 of the '312 patent. SEB S.A. v. Montgomery Ward & Co., 77 F.Supp.2d 399 (S.D.N.Y.1999) ("Preliminary Injunction Opinion"). This court affirmed the preliminary injunction order without opinion. SEB, S.A. v......
  • Request a trial to view additional results
5 cases
  • Rosco, Inc. v. Mirror Lite Co., No. CV-96-5658 (CPS).
    • United States
    • United States District Courts. 2nd Circuit. United States District Court (Eastern District of New York)
    • 17 juin 2009
    ...Page 341 found when all the elements of the patent claims are found in the accused device. SEB S.A. v. Montgomery Ward & Co., Inc., 77 F.Supp.2d 399 Thus, the question is whether mirrors 1, 2 and 5 contain the limitations imposed by claim 1 of the '984 patent, specifically whether the m......
  • Outside the Box Innovations, LLC v. Travel Caddy, Inc., No. 2009–1171.
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • 21 septembre 2012
    ...in SEB v. Montgomery Ward, had explained that “[t]he application for the preliminary injunction was combined with the Markman hearing.” 77 F.Supp.2d 399, 400 (S.D.N.Y.1999), aff'd,243 F.3d 566 (Fed.Cir.2000) (Table). My colleagues' equivocal ruling today simply creates conflict with precede......
  • Seb, S.A. v. Montgomery Ward & Co., Inc., No. 99 Civ. 9284(SCR).
    • United States
    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • 9 janvier 2006
    ...motion, Judge Parker held that Defendants'"use and sale [of the original fryer] in the United States" infringed SEB's patent. 77 F.Supp.2d 399, 403 (S.D.N.Y.1999). On appeal, the Federal Circuit affirmed the preliminary injunction. 243 F.3d 566, 2000 WL 1673667 (Fed.Cir. Nov.6, 20......
  • Seb S.A. v. Montgomery Ward & Co., Inc., No. 2009-1099.
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • 5 février 2010
    ...to prove at trial that Pentalpha's deep fryers infringe at least claim 1 of the '312 patent. SEB S.A. v. Montgomery Ward & Co., 77 F.Supp.2d 399 (S.D.N.Y.1999) ("Preliminary Injunction Opinion"). This court affirmed the preliminary injunction order without opinion. SEB, S.A. v......
  • Request a trial to view additional results

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