Vulcan, Inc. v. Fordees Corp.

• Citation: 450 F. Supp. 36
• Decision Date: 16 February 1978
• Docket Number: No. C 75-54 Y.,C 75-54 Y.
• Parties: VULCAN, INC., Plaintiff, v. FORDEES CORPORATION, Defendant.
• Court: U.S. District Court — Northern District of Ohio

450 F. Supp. 36

VULCAN, INC., Plaintiff, v. FORDEES CORPORATION, Defendant.

No. C 75-54 Y.

United States District Court, N. D. Ohio, E. D.

February 16, 1978.

Paul A. Weick, Akron, Ohio, Arland T. Stein, Pittsburgh, Pa., for plaintiff.

Edward D. Crocker, Cleveland, Ohio, C. A. Covington, Jr., Youngstown, Ohio, Thomas H. Murray, Lawrence G. Zurawsky, Pittsburgh, Pa., for defendant.

MEMORANDUM OPINION AND ORDER WITH FINDINGS OF FACT AND CONCLUSIONS OF LAW

LAMBROS, District Judge.

INTRODUCTION

The essence of this action is patent infringement. The patent in issue is U.S. Patent No. 3,166,154, granted January 19, 1965 (the "Titzel patent"). The accused devices are portable work towers ("reline towers") manufactured by Fordees Corporation ("Fordees"). This action involves both the questions of validity and infringement of the Titzel patent. Plaintiff has asserted that a prior consent judgment is dispositive of the issue of validity. Further, contending that later Fordees devices were equivalent to those previously declared infringing, plaintiff contends the prior judgment is also dispositive of the question of infringement.

While the issues relative to the consent judgment may be dispositive of this action, this cause came on to be heard not only upon those issues associated with the consent judgment, but also upon the issues of validity and infringement considered separate and apart from the consent judgment, solely as to the relationship of each of these issues to the question of liability in this action.

FINDINGS OF FACT

1. Plaintiff Vulcan, Inc. ("Vulcan") is a Pennsylvania corporation having its principal place of business at Latrobe, Pennsylvania. Plaintiff's Vulcan Engineering Division is by acquisition, merger and change of name successor to Titzel Engineering, Inc. ("Titzel Engineering").

2. Defendant Fordees Corporation is an Ohio corporation having its principal place of business at Leetonia, Ohio.

3. The Titzel patent was issued to Titzel Engineering as assignee of John M. Titzel. Titzel Engineering was plaintiff's predecessor in title. John M. Titzel is the originator of the subject matter described and claimed in U.S. Patent No. 3,166,154.

Nature of the patent.

4. Basic oxygen furnaces, used for the purpose of making steel, have refractory linings to retain molten metal and to insulate the vessel from overheating during processing. Over a period of use, these refractory linings are gradually eaten away. Every so often, such vessels must be taken out of service and the refractory lining replaced.

5. Before the concept of reline towers, relining of basic oxygen furnaces was done by use of scaffolding which was built up piece-by-piece. The process of relining then required one set of people building the scaffolding and another set of people to perform the actual relining. The scaffolding would be built up several feet, and then the refractory lining would be built up several feet. This procedure was repeated until the vessel was completely relined. Upon completion of the relining, the scaffolding was disassembled and removed from the vessel. This method of relining took several days, with concomitant loss of steel-producing capacity. The method required use of the overhead mill crane to lower refractory bricks to the workmen. The method involved lowering pallets of these bricks directly over the heads of workmen, with corollary potential danger.

6. The Titzel patent is for a portable work tower, called a "reline tower", for use in the rebuilding of refractory lining in basic oxygen furnaces. The patent contains four claims, three of which are dependent on Claim 1. Claim 1 is the only independent claim and the one charged to be infringed. Claim 1 defines the invention of the Titzel patent as follows:

1. A portable work tower particularly adapted for use in vessels having an opening smaller than the interior comprising an elongated tower means adapted to pass through the opening in said vessel and be normally free standing, said tower means including upper and lower portions having spaced apart vertically extending members at the corners of a quadrangle, said vertically extending members on the lower portion being provided with carrier means vertically movable thereon, base means on the lower portion adapted to engage the vessel bottom at spaced apart adjustable level points whereby the tower may be levelled and supported, a plurality of support arms spaced about said carrier means and pivoted thereon from a position parallel to the lower portion of the tower to a position transverse to the tower means to form a working platform, spaced cage guides within the upper and lower portions forming an inner cage guide extending from adjacent one end of the tower to the opposite end of said tower, cage means vertically movable on said cage guides within the upper and lower tower portions and lift means on the tower means selectively raising and lowering the cage means, said cage means being selectively coupled with said carrier means for raising and lowering said carrier means with said cage means.

7. The salient features of the Titzel patent are, in combination: (i) a radially foldable working platform formed by support arms mounted on a carrier means that can be moved vertically along vertically extending frame members and selectively locked at numerous locations and work levels; (ii) a guided cage inside the vertically extended members for carrying refractory brick and other materials in bulk into the vessel to the working platform through the interior of the tower, and (iii) selective coupling of the guided cage to the working platform to raise and lower the working platform to different elevations within the vessel by the same lift means used to raise and lower the cage without affecting the structural rigidity of the tower.

8. Reline towers of the sort set forth in the Titzel Patent substantially changed the practice in relining a basic oxygen furnace. They are integral, free-standing machines, which can be inserted through the narrow opening in a furnace vessel in one piece. They eliminate the danger to workmen from falling brick; they eliminate the need for workers to build and disassemble scaffolding; they eliminate the need for use of the overhead crane during the relining operation; and they reduce the time required to perform relining, with a concomitant increase in potential steel production.

9. The reline towers of the Titzel patent were quickly adopted and have achieved continuous wide-spread use since 1961.

10. The combination of elements in the Titzel structure produces a result of great practical value in relining basic oxygen furnaces.

11. The file history of the Titzel patent shows original rejection of claims which included base means for support and for adjustably positioning the tower vertically. After amendment of claims 1, 3, 5 and 7 to reflect base means on the tower adapted to engage the vessel bottom and provide support for the tower, Titzel's application for patent was still rejected. Titzel's application was granted only after Titzel amended his application by cancelling all claims and setting forth an entirely new set of claims.

Fordees' relationship with M&G.

12. Titzel Engineering, the predecessor to Vulcan, brought an action against M&G Industrial Associates, Inc. (M&G) and Robert N. Munroe (Munroe) on November 23, 1970. This action was brought in the United States District Court for the Western District of Pennsylvania as Civil Action No. 70-1333. The action was for infringement of the Titzel patent. Plaintiff in that action claimed infringement on the basis of the manufacture and sale of reline towers by M&G.

13. In early 1971 Mr. Munroe, of M&G, advised Mr. Sause, President of Fordees, of the Titzel patent. At that time Fordees, M&G and Titzel Engineering were all bidding against one another for a contract to provide a reline tower for the United States Steel Corporation (U.S. Steel). This reline tower was to be used at U.S. Steel's Gary Works (BOP No. 2).

14. Fordees' bid was accepted by U.S. Steel through a purchase order dated March 9, 1971. As a condition of the contract, Fordees agreed to hold U.S. Steel harmless from any infringement specifically by reason of the Titzel patent.

15. Prior to successfully bidding on the U.S. Steel contract, Fordees had never built a reline tower for a basic oxygen furnace. Fordees bid for the U.S. Steel contract largely on the basis of a drawing characterized as a "cartoon". This drawing could not have been used to build an actual reline tower.

16. After successfully bidding on the U.S. Steel contract, Fordees purchased the only set of engineering drawings M&G appears to have sold setting forth how to build an M&G reline tower. Fordees purchased these drawings with full knowledge that the reline tower set forth by the drawings was the subject of pending litigation against M&G for infringement of the Titzel patent. After purchasing the drawings, Fordees obtained additional engineering and technical assistance from M&G in relation to construction of the M&G reline tower.

17. M&G did not make reline towers, but subcontracted that work to others to build in accordance with engineering drawings M&G supplied. M&G's prime asset in relation to reline towers was its engineering drawings, which expressed the combined efforts of its engineers and in addition to fully detailing the reline tower, stated the details of the components to be made and the descriptions and suppliers of the components to be purchased.

18. Because of the patent infringement litigation on the Titzel patent, Fordees insisted upon and received from M&G, in addition to the M&G reline tower engineering drawings, an indemnity over the signature of Munroe.

19. Fordees received reproducible copies (mylars) of the engineering drawings of M&G to the reline tower shown in Plaintiff's Exhibit 55. Fordees' engineer, Mr. Hively, reviewed the drawings and...