State Industries, Inc. v. A.O. Smith Corp.
| Citation | 751 F.2d 1226,224 USPQ 418 |
| Decision Date | 03 January 1985 |
| Docket Number | No. 84-590,84-590 |
| Parties | STATE INDUSTRIES, INC., Appellee, v. A.O. SMITH CORPORATION, Appellant. Appeal |
| Court | United States Courts of Appeals. United States Court of Appeals for the Federal Circuit |
Glenn O. Starke, Andrus, Sceales, Starke & Sawall, Milwaukee, Wis., argued, for appellant. With him on the brief was Gary A. Essmann, Milwaukee, Wis.
Paul R. Puerner, Michael, Best & Friedrick, Milwaukee, Wis., argued, for appellee. With him on the brief was Glenn A. Buse, Milwaukee, Wis.
Before RICH, BALDWIN and KASHIWA, Circuit Judges.
This appeal is from the October 5, 1983, Order of the United States District Court for the Middle District of Tennessee, Nashville Division, 221 USPQ 958 (1983). The court, sitting without a jury, held appellee's Lindahl patent No. 4,263,879 ('879), issued April 28, 1981, for "Water Heater," valid and willfully infringed. We affirm the holdings of validity and infringement, and reverse the holding that infringement was willful.
State Industries, Inc. (State), which manufactures and sells industrial water heaters under its SANDBLASTER mark, sued its competitor A.O. Smith Corporation (Smith), which manufactures and sells a similar water heater under its LIME TAMER mark. The patent in suit is for a water heater designed to reduce sediment buildup, i.e., minerals such as lime, in the water heater tank. Sediment buildup reduces efficiency and eventually may cause tank failure.
The preferred embodiment of the invention is shown in Figs. 1 and 2 of the patent, reproduced below:
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
Fig. 1 is a sectional elevation of the water heater and Fig. 2 is a section on the line 2-2 of Fig. 1 showing the agitator assembly mounted in the bottom portion of the tank 22. Flue tubes 20 conduct hot gas from burner 15 through the water. The agitator assembly 28 includes a ring-shaped tubular member 30 positioned in the bottom of the tank closely adjacent to its side wall 10 and a secondary tubular member 32, connected to the ring-shaped member 30, which extends horizontally toward the center of the tank. Tubular member 30 has several small holes 34 and several venturi fittings 46 all directed toward the center of the tank at a level closely adjacent to the bottom of the tank. These openings are positioned so that the streams of water flowing from them are directed over and adjacent to the bottom of the tank.
The secondary tubular member 32 has several small holes 35 and, near its inner end an upwardly directed venturi fitting 47, which enhance the desired stirring action and help suspend the sediment in the center of the tank.
Thus, when hot water is withdrawn through outlet 42 at the top of the tank, cold water simultaneously flows into, and out of the openings in, the agitator assembly. The combined action of the water flowing from the openings in that assembly stirs up and suspends sediment which has settled to the bottom of the tank and ultimately carries it upward and out through the hot water outlet 42.
The '879 patent contains eight claims of which only claims 7 and 8 are relied on. Claim 7, directed to the water heater structure, is exemplary. It reads (paragraphing added):
7. A water heater comprising:
a water tight tank means adapted to contain water under pressure;
a source of heat for heating water inside said tank means;
the relationship of the aggregate size of the small openings in said otherwise imperforate tubular member to the size of said tubular member itself is such that the velocity of the water flowing into said tank means through said plurality of openings in said tubular member is greater than the velocity of water flowing into said tubular member from the source of cold water under pressure to thereby create the desired stirring action in the bottom portion of said tank means.
Claim 8 is directed to a method of heating and circulating water in the tank of claim 7.
The district court held that '879 patent valid and infringed by Smith's LIME TAMER water heater, which is illustrated in Smith's Cook patent No. 4,257,355, of which Figs. 2 and 4 are reproduced below.
Cold water is introduced into the tank through inlet tube 16, located in the bottom of the tank and discharging downwardly against the lower head 3 of the tank through openings 23. Fig. 4, which is an enlarged cross-section of inlet tube 16, shows the openings 23 located at about a 45? angle to the tank bottom 3. In addition, water is discharged upwardly along the central axis of the tank through a In reaching its determination of infringement, the district court found as fact:
single upwardly-facing opening 24. The holes 23 and 24 are so located as to "agitate sediment in the bottom of the tank and prevent build up of sediment deposits on the inner surface of the lower head of the tank," to quote from Smith's patent.
44. It is the finding of this Court that the multiple streams of water flowing from the openings in the Lime Tamer inlet tube are directed over and adjacent the bottom of the tank to produce the desired stirring action as defined in claims 7 and 8 of the '879 patent-in-suit.
89. Other than for the configuration of the inlet tube, the patented Sandblaster water heater and the accused Lime Tamer water heater are very similar. They both operate in the same manner to produce the same results and thus, the Lime Tamer heater is a substantial copy of the Sandblaster heater.
With respect to the district court's holding of willful infringement it found as fact:
128. Defendant Smith, upon the appearance of the Sandblaster water heater on the market, initiated a crash program to develop a Sandblaster equivalent resulting in the manufacture and sale of the accused Lime Tamer water heater * * *. Defendant, Smith, proceeded with the manufacture and sale of the accused Lime Tamer water heater after receiving notice of infringement from State without obtaining an opinion of counsel regarding infringement or validity of the '879 patent-in-suit * * *.
Smith argues before us, as it did below, that the '879 patent is invalid under 35 U.S.C. Sec. 102(b) because of a sale of a heater embodying the claimed invention more than one year before the filing of the application for the patent in suit, notwithstanding the holding below that the patent is entitled to the filing date of a parent application which matured into State's patent No. 4,157,077 ('077), which was within the one-year period of the statute.
Did the District Court err in holding:
1. The invention defined in claims 7 and 8 of the '879 patent would not have been obvious from the prior art.
2. The '879 patent is entitled to the filing date of application serial No. 854,721 (now State's '077 patent), of which it is stated to be a continuation-in-part.
3. Smith has infringed claims 7 and 8.
4. Smith's infringement was willful.
OPINIONSmith contends that the district court incorrectly determined the scope and content of the prior art and the differences between the claimed invention and the prior art.
Our review of the trial court's fact findings mandated by 35 U.S.C. Sec. 103, however, is limited to determining whether they were clearly erroneous in light of the evidence. Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1444, 223 USPQ 603, 606 (Fed.Cir.1984).
With respect to Smith's criticism of the district court's analysis of the prior art, Smith relies primarily on the Smith B-97 water heater, sold from 1959 to 1962, and the National Steel Construction Company (National) water heater, which were not before the Patent and Trademark Office during prosecution of the application for the '879 patent.
The construction of the B-97 water heater is illustrated in Smith's exhibit 106, below.
This heater has a 5 1/8 inch long cold water inlet tube with 8 openings directed upward at an angle of 15? or 20?. The most inward pair of holes is only 4 inches from the tank wall.
Smith argues that the trial court ignored the testimony of its expert, Robert Cook that: "The size and position of the openings [provided] * * * agitation action to aid in dislodging and removing sediment or lime build-up on the lower head of the tank." This is simply reargument of an assertion with respect to which the district court stated, in part:
61. The inlet tube of the B-97 heater does not direct multiple streams of water over and adjacent the bottom of the tank to create a stirring action in the lower portion of the tank to thereby prevent sediment build-up across the bottom...
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