Thabet Mfg. Co. v. Kool Vent Metal Awning Corp.

• Decision Date: 07 October 1955
• Docket Number: No. 12251.,12251.
• Citation: 226 F.2d 207
• Parties: THABET MANUFACTURING COMPANY, d.b.a. American Beauty Ventilated Aluminum Awning Company, Appellant, v. KOOL VENT METAL AWNING CORPORATION OF AMERICA, Appellee.
• Court: U.S. Court of Appeals — Sixth Circuit

226 F.2d 207 (1955)

THABET MANUFACTURING COMPANY, d.b.a. American Beauty Ventilated Aluminum Awning Company, Appellant, v. KOOL VENT METAL AWNING CORPORATION OF AMERICA, Appellee.

No. 12251.

United States Court of Appeals Sixth Circuit.

October 7, 1955.

Lawrence H. Cohn, St. Louis, Mo. (Ira R. Cole, Toledo, Ohio, Terry & Cohn, St. Louis, Mo., of counsel), for appellant.

William H. Parmelee, Pittsburgh, Pa. (Harry O. Ernsberger, Toledo, Ohio, Francis W. McCauley, Detroit, Mich., of counsel), for appellee.

Before SIMONS, Chief Judge, and ALLEN and MILLER, Circuit Judges.

SHACKELFORD MILLER, Jr., Circuit Judge.

The appellee, Kool Vent Metal Awning Corporation of America, filed this action in the District Court seeking an injunction against the appellant and an accounting for alleged infringement of two patents relating to metal awnings. The appellant pleaded invalidity of the patents and non-infringement. Other defenses were raised in the District Court but are not involved in this appeal. The District Judge found the patents valid and infringed, and this appeal followed.

One of the patents involved is Houseman, Reissue No. 20,975, January 10, 1939, with the following Patent Office history: In 1935, George A. Houseman filed application for Letters Patent covering a metal awning, and on November 9, 1937, original Letters Patent No. 2,098,705 was granted. After issuance of the patent, Houseman made application for re-issue which would allow certain additional claims relating to side curtains. On January 10, 1939, Letters Patent Re-issue No. 20,975 was granted. In 1944, Meyer Harrison and Samuel Korman acquired from Houseman a grant of the entire right, title and interest of the patent for 38 States of the United States and its territories. On or about January 1, 1945, the appellee corporation was chartered in Pennsylvania and Harrison and Korman assigned to it the rights which they acquired from Houseman.

The other patent involved is Design Patent No. 154,550 issued on July 19, 1949 to the appellee as the assignee of Harrison and Korman.

The appellant formerly operated under the name of Thabet Manufacturing Company but has been doing business as the American Beauty Ventilated Aluminum Awning Company, incorporated under the laws of Ohio, with a regular and established place of business in Toledo, Ohio, where the acts of infringement complained of occurred.

The Houseman patent discloses a metal awning having a sloping roof formed of a series of spaced lower channels with upturned flanges with a series of upper channels having downturned flanges, the upper ones spanning and covering the space between the lower ones. The respective channels are spaced so that air may escape between the channel elements. In addition the patent discloses triangular end curtains at each end of the awning. These end curtains are comprised of parallel vertical plates or panels that are attached to the roof and end frame at each end of the awning. They are angled outwardly toward the building to which the awning is attached at an angle of less than 90° — as shown in the patent this angle may be estimated at around 30°. The parallel plates or panels overlap one another to the extent that direct rays of sun or wind-driven rain cannot pass through between them to enter the window or doorway over which the awning is placed. The end plates or panels of the patent are also provided with flanges along their vertical edges designed to prevent the flow of water from wind-driven rain inwardly through the awning, and they are provided with portions referred to as roof extensions

Only Claims 16, 17 and 18 of the Houseman re-issue patent, which deal with the end curtain construction of the awning, are involved in this litigation. These claims read as follows:

"16. An awning adapted to be fastened to a wall or the like support, including a curtain comprising a series of spaced overlapping parallel vertical depending plates, angling outwardly from the awning toward the wall at not more than ninety degrees.

"17. The device as claimed in claim 16 wherein the said vertical plates are provided with flanges on the vertical edges to obstruct the flow of water in a parallel direction.

"18. The device as claimed in claim 16, wherein the said vertical plates are provided with roof extensions adapted to join to the main roof of the awning."

Appellant concedes that if claim 16 is valid and infringed claims 17 and 18 are also valid and infringed.

Appellant's awning which appellee claims infringes the re-issue patent also has a metal roof made of a lower series of channels and an upper series of channels. These plates or channels are joined tightly together so that there is no ventilation through the roof structure as there is in the Houseman awning. The end curtains, which are here involved, are formed of parallel vertical panels or plates angled outwardly from the awning toward the wall. However, they are latterly spaced apart so that the rays of the sun coming in a direction perpendicular to the side curtains will pass through the separations and into the space below the awning. The spaces between the plates are approximately one inch wide, varying from about 1 inch to 1 1/8 inches.

With respect to infringement, appellant contends that while it has the same series of plates in the end curtain that Houseman has it has separated these plates so that if one stands directly in front of a side curtain, but not in front of the awning, he can look directly between the plates. Accordingly, the plates are not overlapping. Since claim 16 of the Houseman re-issue patent recites "Overlapping, parallel, vertical, depending plates" there is no infringement. Appellee contends that the term "overlapping" is to be construed with reference to the function of the plates, and that if the plates overlapped in a direction to prevent direct sunlight from entering the window the invention is present and the terms of the claim are satisfied.

The District Judge found that the function of the end curtain was to admit diffused light and air while preventing direct rays of sun or wind-driven rain from passing through the parallel plates to enter the window or doorway over which the awning was placed, and that the term "overlapping" as used in claim 16 meant overlapping in that sense. With respect to the parallel, vertical panels or plates in the appellant's awning, he made the following finding of fact: "They are so spaced that for the purpose of protecting the window or door opening they fully serve the same function and purpose as the corresponding panels or plates of the patent in suit. They are the full counterpart and equivalent of the patented end curtain for all useful purposes. They overlap in the functional sense and in an actual sense from the standpoint of protecting the window or opening in front of which the awning is placed. These plates or panels have edge flanges and roof extensions corresponding in purpose and effect to the flanges and roof extensions of the Houseman panels." Such a finding supported his ruling of infringement, under the well settled rule that "one thing is substantially the same as another if it performs substantially the same function in substantially the same way to obtain the same result," and that such a situation, although involving some change in form and position, constitutes an infringement. Machine Co. v. Murphy, 97 U.S. 120, 125, 24 L.Ed. 935; E. H. Bardes Range & Foundry Co. v. American Engineering Co., 6 Cir., 109 F.2d 696, 698.

Appellant contends that the construction given to the patent by the District Judge is not the correct one, and is not authorized by its file-wrapper history. It relies upon the rule of patent construction that a claim in a patent as allowed must be read and interpreted not only in the light of the specification, but also with reference to its file-wrapper history. Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217-218, 61 S.Ct. 235, 85 L.Ed. 132; Midland Steel Products Co. v. Clark Equipment Co., 6 Cir., 174 F.2d 541, 545, Whitman v. Andrus, 6 Cir., 194 F.2d 270, 275.

In the Oath accompanying the Petition for Reissue and setting forth the reasons why he deemed his original patent inadequate, Houseman stated: "1. The omission from the specification and description to bring out the fact that applicant's awning shuts out all direct rays of light." He also referred to the fact that the essential feature in ventilated awning structure is means to permit the escape of hot air "while not permitting any of the direct rays of light to penetrate through." (Emphasis added.)

The Patent Examiner said: "Claims 16-19 directed to the curtain are rejected as contrary to applicant's oath, page 2, lines 2 and 7 thereof, relating to direct rays of light. It is evident that awning according to the oath is to shut off direct rays from the sun while the curtain being a part of the awning, admits such direct rays."

Houseman answered this contention with the following statement: "Applicant's oath, page 2, lines 2 to 7, goes into detail somewhat in speaking about cutting out the direct rays of light `through the roof of an awning.' Applicant also wants to call the Examiner's attention to that where the plates of the curtain angle outwardly toward a wall or the like, no direct rays of light could come through the side curtains at all as the direct rays of light would be coming from a direction opposite the wall or perpendicular to the side of the awning. In both of which cases the direct rays of light would be entirely stopped by the plates 11." (Emphasis added.)

It appears to us from the foregoing exchange of views that Houseman's own interpretation of "overlapping" parallel vertical depending plates...