E. Van Noorden Co. v. Cheney Co.
| Decision Date | 27 February 1935 |
| Docket Number | No. 2948.,2948. |
| Citation | 75 F.2d 298 |
| Parties | E. VAN NOORDEN CO. et al. v. CHENEY CO. |
| Court | U.S. Court of Appeals — First Circuit |
George P. Dike, of Boston, Mass. (Cedric W. Porter, of Boston, Mass., on the brief), for appellants.
Charles F. Miller, Jr., of Washington, D. C. (Everett S. Emery and Emery, Booth, Varney & Townsend, all of Boston, Mass., and Emery, Booth, Varney & Holcombe, of Washington, D. C., on the brief), for appellee.
Before BINGHAM, WILSON, and MORTON, Circuit Judges.
This is a consolidated appeal from interlocutory decrees by the District Court of Massachusetts ordering permanent injunctions and an accounting in a bill in equity involving the validity and infringement of certain patents for metal flashings used in building construction.
It was stipulated that the plaintiff is the sole owner of certain letters patent covering what is termed "interlocking through wall flashings," No. 1,715,000, granted to Allan Cheney May 28, 1929, and No. 1,860,240, issued to Edmund H. Friedrich, granted May 24, 1932.
The type of flashing covered by the Cheney patent was designed to be used in walls of buildings between the courses of brick to prevent water seeping down through the walls and into the inside of the building, and also to prevent a movement of the masonry in any direction.
This flashing is constructed of some thin metal, such as copper, pressed into the form of a series of alternating transverse ridges, or ribs, and grooves, and respectively of approximately three-eighths of an inch in height and depth, the side walls of each rib being inclined inward at an acute angle so as to present in a cross section a dovetail effect, the side walls of each alternate rib and groove tapering longitudinally in opposite directions; or it may be constructed so that the sides of each alternate groove on one side of the flashing will taper longitudinally in opposite directions, while the sides of each alternate rib remain parallel; and on the other side of the flashing the sides of each rib will taper longitudinally in opposite directions, while the sides of each alternate groove remain parallel.
A perspective of the different faces of the Cheney flashing is represented by the following sketches:
and the end or cross section is represented by the following, showing the dovetail effect:
It is designed to be placed in walls between a course of brick, so that the alternate ribs and grooves run transversely of, or across, the wall, and are bedded in mortar; and it is claimed that it will gradually carry off through the outside wall any moisture collected from above this particular course of masonry, and it is further claimed that it not only binds the masonry from any vertical and lateral, but also from any longitudinal movement.
The Friedrich patent covers a metal flashing designed for use under copings, either at the edge of a roof or on top of parapet walls, and for waterproofing the joint where the wall joins the roof. It is not designed or adapted for drainage through the outside wall of any moisture collecting between the several courses of a brick wall, because of the single uninterrupted rib running lengthwise of the wall. As a "through wall flashing" it is designed for use only where each side of the wall is exposed to the weather, as in case of a parapet wall, and any collection of moisture within can be taken care of on both sides. The particular advance claimed for it over the prior art is its interlocking effect and the flexibility of its edges. It consists, according to the drawings and specifications, of a sheet of thin metal, such as copper, which is pressed so as to form a single continuous longitudinal flat rib several inches wide and extending the full length of the metal sheet with edges of the rib inclined inward at an acute angle, the sheet being of sufficient width and flexibility so that workmen in installing it can bend the edges to conform to the edges of the wall, or in joining it to the roof, and leave the rib extending longitudinally of the wall and approximately in the center thereof. Neither the drawings, the specifications, nor the claims contemplate any depressions across or interruption of the continuity of the rib, and therefore it does not appear, when constructed according to the specifications or claims, to be adapted to prevent some of the moisture collecting between courses of a brick wall from seeping through the inside wall of a building.
The alleged infringing device manufactured by the Van Noorden Company also consists of thin sheet metal, such as copper, pressed so as to form a single flat rib in the center, running longitudinally of the sheet, which may be several feet in length; the top of the rib being about the width of an ordinary brick, and about three-eighths of an inch in height. At intervals of about the length of the brick in common use, a transverse depression is made in the rib so that the bottom of the depression is nearly in the same horizontal plane as the bottom of the flashing, which permits any moisture collecting on either side of the rib venting through the outside wall rather than through the inside wall of the building. The edges of the rib as manufactured by the Van Noorden Company are also inclined inward at an acute angle so that the end or transverse section of the rib presents a dovetail effect; each section defined by the several depressions tapers slightly downward, or vertically, from the middle toward the edge of the depression, in contrast with the ribs of the Cheney device, which taper in the same horizontal plane; but whether the vertical tapering of the several sections of the Van Noorden flashing is by design or as a result of the force applied to create the depression does not clearly appear. A rough representation of the top and cross section view of the flashing manufactured by the Van Noorden Company is as follows:
The entire face of the metal sheet out of which it is constructed, though it does not show in the above drawings, is also pressed or crimped, into alternate transverse smaller ribs and grooves, providing an effect similar to the familiar domestic article known as a washboard, and tends to bind the mortar more firmly to the flashing.
It is designed to be placed longitudinally along any course of masonry, such as brick walls, and when bedded in the mortar also performs the function of preventing the seepage of any accumulated moisture from above into and discoloring the inside walls of the building, since the edges of the flashing may be turned up or down as circumstances may require. While the rib running longitudinally of the wall prevents any lateral movement of the masonry, and the dovetail construction of the rib tends to prevent any vertical movement, it is difficult to see how the vertical tapering of each section toward the depression, or the depression itself, the sides of which form an obtuse angle with the face of the flashing, and have rounded edges, would in any appreciable degree counteract any force sufficient to cause a longitudinal movement of the masonry, if it became loose, or that they were designed for any purpose except to permit and aid the gradual removal of any moisture entering the wall from above through the outside wall.
It is claimed in the plaintiff's bill that the defendant's construction infringed patent No. 1,715,000, or the Cheney patent, and also patent No. 1,860,240, which is the Friedrich patent, and owned by the plaintiff.
The District Court found that the Cheney patent was a pioneer patent, and that the flashing constructed by the defendant performed the same function in substantially the same manner and therefore was an equivalent, and so infringed. It also held that it infringed the Friedrich patent.
The primary defense to the Cheney patent was that the Van Noorden flashing did not infringe, as it did not perform the same function in substantially the same manner, and also that neither the Cheney patent nor the Friedrich patent disclosed any invention. The Van Noorden Company admitted, however, that if the Friedrich patent was valid, its form of flashing infringed.
Without determining whether the Cheney patent disclosed invention and is not a mechanical adaptation of the prior art, or whether it can be classed as a pioneer patent, we do not think the Van Noorden flashing is an infringement of the Cheney flashing patent when the latter is construed as limited by the amendment to his original claim 9. Because one device performs the same function does not alone render it an equivalent and establish infringement. It must be performed in substantially the same manner. While an inventor who discovers the first solution of a problem in the mechanical arts and obtains a patent for the same is entitled to a broad construction of his claim, it does not mean that other inventive geniuses are prevented from solving the same problem in a simpler or more effective manner by another method.
The idea of a "through wall interlocking flashing" did not originate in the mind of Cheney. One James White in 1890 invented a flashing (patent No. 423,888) "for walls and chimneys." His first claim is: (Italics supplied.)
White, in describing his patent, added that "to prevent the displacement of the brick wall on the flashing-plate, the latter may be roughened by corrugations, as shown in Fig. 5" of the drawings accompanying his application, which showed alternate, but not tapering, ridges and grooves.
One John E. Davison also invented a through wall flashing device, as appears in patent No. 1,699,181, issued to him in 1926.
Cheney, while he, no doubt, improved on...
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