Torin Corp. v. Philips Industries, Inc.
| Decision Date | 11 September 1985 |
| Docket Number | No. C-3-80-021.,C-3-80-021. |
| Citation | 625 F. Supp. 1077 |
| Parties | TORIN CORPORATION, Plaintiff, v. PHILIPS INDUSTRIES, INC., Defendant. |
| Court | U.S. District Court — Southern District of Ohio |
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William S. Rambo, Columbus, Ohio, Theodore R. Paulding, Hartford, Connecticut, for plaintiff.
Nathaniel R. French, Harold H. Croghan, Dayton, Ohio, for defendant.
FINDINGS OF FACT AND CONCLUSIONS OF LAW ON PLAINTIFF'S CLAIM OF INFRINGEMENT AND DEFENDANT'S CLAIM OF INVALIDITY; PATENT IN SUIT HELD INVALID AND NOT INFRINGED; CONFERENCE CALL SCHEDULED TO SET TRIAL DATE ON DEFENDANT'S COUNTERCLAIMS
Plaintiff Torin Corporation brought this action against Defendant Philips Industries, Inc., alleging that the Lau Preferred Line Propellers, which are manufactured and sold by Defendant, infringed the United States Letters Patent No. 3,147,811. Defendant answered denying that it had infringed and raising certain defenses or claims of invalidity. Furthermore, Defendant counterclaimed charging Plaintiff with patent misuse, unfair competition, violations of the antitrust laws and violations of the Lanham Act, 15 U.S.C. § 1125. At Plaintiff's request, the Court bifurcated the issues raised by the Plaintiff's complaint and Defendant's counterclaim. Thus, trial of this case was limited to the issues of validity and infringement of the patent in suit, as well as on the question of whether Defendant is entitled to an award of attorney's fees under the exceptional case provision of 356 U.S.C. § 285. The Court heard the parties' evidence on these issues without intervention of a jury. Now, the Court, pursuant to Rule 52, Fed.R.Civ.P., makes its findings of fact and sets forth its conclusions of law.
(1) Plaintiff, Torin Corporation (formerly the Torrington Manufacturing Company) is a corporation organized and existing under the laws of Connecticut, and has its general corporate offices in Torrington, Connecticut.
(2) Defendant, Philips Industries, Inc., is a corporation organized and existing under the laws of the State of Ohio and has a regular and established place of business at its Lau Division at 2027 Home Avenue, Dayton, Ohio.
(3) For many years, the Defendant and the Plaintiff have manufactured and sold fan assemblies of the general type disclosed by the patent in suit. The fan assemblies are used in heating, refrigerating, air conditioning systems, and other air moving systems (the HVAC market).
(4) Fan assemblies of this general type have a sheet metal spider which consists of a central hub and arms radiating from the central hub. An apperature is centrally located in the hub. A drive shaft is attached to the hole in the hub. A fan blade is attached to each radial arm of the spider.
(5) The patent in suit, United States Letters Patent No. 3,147,811, entitled "Fan Assembly" ("Klonoski patent"), was issued to Stanley W. Klonoski on September 8, 1964. The general object of the Klonoski patent is "to provide a one-piece spider of sheet metal which is substantially lighter and yet more rigid than similar spiders of known construction, and which exhibits vibration characteristics superior to those of spiders heretofore provided." Pl. Ex. 1. Plaintiff has been at all times and still is the owner of the Klonoski patent.
(6) Prior to 1962 and 1976, respectively, Plaintiff and Defendant sold fan assemblies which incorporated flat spiders. The spiders were manufactured with relatively heavy gauge sheet metal. The radial arms of these spiders were twisted to support the fan blades, which were attached to each arm, at the proper angle for the rotational axis of the fan.
(7) Prior to the spring of 1961, Plaintiff experienced problems with its flat spiders. They had the tendency to vibrate at high speeds, and as a result, there was a breakage problem with the arms of the flat spiders. To resolve these problems, Mr. Kenneth A. Merz, the director of engineering in the late 1960's for Plaintiff's Air Moving Division, charged Klonoski with the task of developing a new spider. Klonoski's primary task was to develop a spider that would not have the same breakage problem as the spiders Plaintiff was then using. Additionally, Klonoski's charge was the development of a spider which could be produced at lesser cost and which would have a higher resonant frequency.
(8) At the time the project was given to him, Klonoski was aware that it was well known art in sheet metal fabrication that the only way to reduce costs would be to incorporate less sheet metal into each spider. This would require the use of a lighter gauge of sheet metal. Merz explained to Klonoski that the only way to achieve a greater resonant frequency in the spiders was to make the new ones stiffer than the flat ones then in use. Additionally, Klonoski knew that the only way to stiffen lighter gauge metal was to emboss it. Klonoski had ready access to, and used, handbook or textbook teachings in order to calculate the stiffness of any cross-section of a spider he would consider using. Klonoski also had available to him Plaintiff's O series fans, small, one-piece fans which have a channel embossed down the center of the arm blade. See Def. Ex. VVVV.
(9) By May 4, 1961, Klonoski had reduced a fan to practice, in accordance with the patent in suit. The fan ("Klonoski fan") was constructed with a spider and a number of fan blades equal to the number of radial arms on the spider. The spider was constructed with a lighter gauge of sheet metal than Plaintiffs previously used, flat spiders. A center channel is embossed on each radial arm for added strength, using the same engineering principles as an I-beam. The central hub on the larger, nine inch and twelve inch Klonoski fans is conically raised.
(10) In May, 1961, a prototype of the Klonoski fan had been constructed. For practical purposes, this prototype was indistinguishable from Plaintiff's N series fans which were in use at the time of trial. A sample of the Klonoski fan was shown to Mr. Theodore R. Paulding, Plaintiff's counsel, in May, 1961. Also in May, 1961, a sample of the Klonoski fan was shown to Plaintiff's sales representatives at its annual sales meeting. The majority of these sales representatives are independent, manufacturer's representatives rather than employees of Plaintiff.
(11) In June, 1961, Merz conducted a patentability search in Plaintiff's own files with regard to the Klonoski fan. As a result of this search, Merz sent a letter to Plaintiff's counsel, Paulding, on June 30, 1961. In that letter, Merz brought to Paulding's attention the following patents which were discovered during the course of his search of Plaintiff's files:
Merz concluded his letter of June 30, 1961, by stating:
Def. Ex. R.
(12) Subsequently, on July 12, 1961, Merz and Paulding met and discussed the possibility that the open ends on the channel portions of the radial arms of the Klonoski spider offered advantages over prior art, particularly Jacobs. As a result, tests were conducted by Plaintiff's personnel in July, 1961, to determine whether the open end of the spider arms had a significant effect on the performance of the tested Klonoski fans. These tests demonstrated that the open-ended spiders did not effect performance. After these tests, Plaintiff conducted no further testing or experimentation on the Klonoski fan.
(13) During the second half of 1961, Merz and Paulding discussed the patentability of the Klonoski fan on a number of occasions. As a result of these discussions, a decision was made to conduct a limited, Patent Office search. Nothing pertinent was found in the course of this search, and no further search was ordered. Additionally, through their correspondence, Merz was able to overcome Paulding's initial reluctance regarding the advisability of applying for a utility patent for the Klonoski fan. Initially, Paulding had favored applying for a design patent rather than a utility patent. Merz convinced Paulding that there were some distinctions between the Klonoski fan and Jacobs. Also, Paulding was persuaded that the anticipated commercial importance of the Klonoski fan militated in favor of such an application.
(14) In November, 1961, Plaintiff decided to build tooling for the commercial production of the Klonoski fan. Production tooling was expected to be ready by January 15, 1962; however, it was not actually ready until April 15, 1962.
(15) On November 28, 1961, Plaintiff addressed Field Sales Memo # 319 (Def. Ex. GGG) to its sales representatives in which the advantages of the Klonoski fans were trumpeted. The memo stated that the fans would be ready for production by January 15, 1962, and it offered photographs of the new spider so that the sales representatives could "understand and describe it sufficiently." However, sales representatives were asked not to order samples until they could be produced off of the production tools, after January 15, 1962. The memo concluded:
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