Shumaker v. Groboski Industries, Inc.

• Decision Date: 03 December 1965
• Docket Number: No. 14948.,14948.
• Citation: 352 F.2d 837
• Parties: Hugh W. SHUMAKER, Louis L. Borick and Superior Industries, Inc., Plaintiffs-Appellants, v. GROBOSKI INDUSTRIES, INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Seventh Circuit

352 F.2d 837 (1965)

Hugh W. SHUMAKER, Louis L. Borick and Superior Industries, Inc., Plaintiffs-Appellants, v. GROBOSKI INDUSTRIES, INC., Defendant-Appellee.

No. 14948.

United States Court of Appeals Seventh Circuit.

November 1, 1965.

Rehearing Denied December 3, 1965.

Max R. Kraus, Chicago, Ill., Francis A. Utecht, Los Angeles, Cal., for appellants, Benjamin F. Berry, Seattle, Wash., of counsel.

James R. Knight, Chicago, Ill., for appellee.

Before HASTINGS, Chief Judge, and KNOCH and KILEY, Circuit Judges.

KNOCH, Circuit Judge.

This appeal has been taken from the United States District Court's denial of a motion to hold defendant-appellee, Groboski Industries, Inc., in civil contempt of an injunction relating to infringement of a patent.

The plaintiffs-appellants are Hugh W. Shumaker, the inventor, patentee and owner of the patent in suit, Louis L. Borick and Superior Industries, Inc., his sole and exclusive licensees, who manufacture and sell the patented product paying royalties to the inventor.

In Shumaker v. Gem Manufacturing Co., 7 Cir., 1962, 311 F.2d 273, this Court affirmed a judgment of the United States District Court holding the Shumaker patent, No. 2,933,344, valid and infringed.

As we there described it:

"The patent is directed to a pair of wind deflectors attached to the rear corner posts of a station wagon to break up the vacuum formed during forward movement of the vehicle. The vacuum created at the blunt end during forward movement of a station wagon draws road dust, dirt, grime, snow and other foreign material onto the rear window, obscuring rear vision and creating a driving hazard."

The invention satisfied a long felt want and met with prompt commercial success.

Plaintiffs-appellants brought suit against Groboski Industries, Inc., charging infringement of the same patent. A consent judgment was entered February 6, 1964, holding the Shumaker patent No. 2,933,344 valid and infringed and enjoining Groboski Industries from infringing the patent. This consent judgment was approved for Groboski Industries, Inc., an Illinois corporation, by John Groboski, its president. The Illinois corporation was later dissolved and Groboski Industries, Inc., a Pennsylvania corporation, was formed. John Groboski is its president. It is agreed that the Court has jurisdiction over both corporations and Mr. Groboski.

Plaintiffs charge that the Illinois corporation sold the accused deflectors before its dissolution in August, 1964, and that the Pennsylvania corporation continued such sales. Plaintiffs contend that these deflectors infringe Claim 1 of the Shumaker patent under the doctrine of equivalents. The enjoined deflectors sold by the defendant at the time of the original suit which terminated in the consent judgment are described as "Chinese" copies of the plaintiffs' device.

Groboski Industries contends that it has avoided infringement by substituting for the "link extending between a respective corner post and deflector" of the patent, a pair of spaced mounting brackets, achieving the same result (adjustability) but by different means. See #25 and #26 following

Defendant argues that all the claims of the patent in suit call for a link in attaching the wind deflector to the vehicle and that defendant's new accused device has no link, thus omitting an element of the patent.

The change does not alter the function of the deflector. The brackets perform the identical function as the link in the enjoined deflector: they permit adjustment.

Defendant asserts that during the prosecution of the patent application, the patentee cancelled claims for a broad disclosure of means, which would have read on the accused device, and accepted claims with a limitation of link attachment means. Defendant contends, and the District Court agreed, that plaintiffs are subject to file wrapper estoppel and may not resort to the doctrine of equivalents.

The District Court's findings of fact on the issue of file wrapper estoppel are based on documentary evidence. We are in as good a position to consider this evidence as the District Judge, and his findings do not attain to that degree of finality under the Federal Rules of Civil Procedure, Rule 52(a), as findings which resolve issues of credibility in...