Wahl v. Rexnord, Inc.

• Decision Date: 25 May 1979
• Docket Number: Civ. A. No. 76-791.
• Citation: 481 F. Supp. 573
• Parties: Eugene A. WAHL and Vibra Screw, Incorporated, Plaintiffs, v. REXNORD, INC., Defendant.
• Court: U.S. District Court — District of New Jersey

481 F. Supp. 573

Eugene A. WAHL and Vibra Screw, Incorporated, Plaintiffs, v. REXNORD, INC., Defendant.

Civ. A. No. 76-791.

United States District Court, D. New Jersey.

January 25, 1979.

On Motion for Reconsideration May 25, 1979.

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Freiden, Kirsten, Friedman & Cherin by Harold Friedman, Newark, N. J., and Ferrill & Logan by John W. Logan, Jr., and Robt. P. Seitter, Fort Washington, Pa., for plaintiffs.

Gaccione, Pomaco, Patton & Beck by John E. Patton, Belleville, N. J., and McWilliams & Mann by Thomas F. McWilliams, Chicago, Ill., for defendant.

OPINION

MEANOR, District Judge.

This is an action asserting infringement of United States Patents No. 3,261,508 ("508 Patent") and No. 3,173,583 ("583 Patent") and for an accounting for profits and damages arising therefrom.

Plaintiffs are Eugene A. Wahl and Vibra Screw, Inc. Wahl is president of Vibra Screw, Inc. and owner and patentee of the '583 Patent issued March 16, 1965 and the '508 Patent issued July 19, 1966. (Complaint ¶ 5.) Vibra Screw, Inc. is a corporation of New Jersey and is the exclusive United States licensee under the two patents. (Complaint ¶ 5; Admitted in ¶ 5 of the Answer.) By virtue of such licensee arrangement, it is alleged and uncontested that Wahl is receiving a royalty from Vibra Screw of 2½% of the net sales price of all patented devices sold by Vibra Screw.

Defendant Rexnord, Inc. is a corporation of Wisconsin.

Wahl charges, inter alia, that Rexnord, Inc. is making, using and offering for sale vibratory bin activators embodying the inventions described and claimed in the '508 and '583 Patents.¹ Rexnord counterclaimed for recovery of damages and other appropriate relief on account of alleged antitrust violations pursuant to 15 U.S.C. §§ 1 and 2. Defendant maintains that plaintiffs filed patent infringement claims in Idaho for no other purpose but to harass Rexnord and potential customers thereof in the sale of vibrating bin bottoms. Furthermore, defendant contends that Wahl and Vibra Screw engaged in a conspiracy in restraint of trade via the maintenance of unfounded patent infringement litigation, thereby promoting the sale of Wahl's bin activators and discouraging prospective purchasers from buying such equipment from others.

Wahl, on May 2, 1978, in response to Rexnord's counterclaims, moved for summary judgment with respect to the Sherman Act, §§ 1 and 2 violations. Rexnord responded with a summary judgment motion seeking a ruling that there was no patent infringement of the '508 patent `by the Rexnord vibratory bin activator. Rexnord asserts that there was double patenting between the '508 Patent and Wahl's design Patent No. 202,068 ("068 Patent"), thereby invalidating the '508 Patent. Finally, Wahl moved for a summary judgment to the effect that the '508 Patent was not invalid for double patenting.

This court has subject matter jurisdiction pursuant to 28 U.S.C. § 1338 and venue is proper in this court under 28 U.S.C. § 1400(b).

I. DEFENDANT'S MOTION FOR SUMMARY JUDGMENT WITH RESPECT TO THE ISSUE OF DOUBLE PATENTING IS GRANTED.

The defendant, Rexnord, argues that the '508 utility patent is invalid for double patenting in view of the '068 design patent. The material-receiving member of the bin promoter as shown in the design patent is the same as that shown in the '508 Patent. See diagrams of the '068 and '508 Patents, infra. Plaintiffs, on the other hand, maintain that the design patent does not show the internal configuration of the material-receiving member, and, therefore, it is inappropriate to conclude that the bin activator of the '068 design patent has a plurality of concave surfaces as called for by the claims of the '508 utility patent.

Patent '068 is a design patent and claims "the ornamental design for a storage bin flow promotor as shown and described." Such patent was issued on August 24, 1965 for a period of 14 years. Its exclusive licensee is plaintiff, Vibra Screw, Inc. The '068 design patent includes the following diagrams:²

The utility '508 Patent was subsequently issued to Eugene Wahl on July 19, 1966 for a term of 17 years. Its exclusive licensee is also Vibra Screw, Inc. The '508 Patent claims a vibratory storage bin activator apparatus with the emphasis primarily on the internal configuration of the interior surfaces and on the means for vibrating the material.³ In particular, the claims of the '508 Patent call for a plurality of concave surfaces for the bottom walls of the bin activator in order to promote the flow of material from the storage bin and to arrange for effecting a positive discharge of the material though an outlet opening. Such flow is insured via the vigorous vibrations of the gyrator at the bottom of the bin which agitates fibrous, sticky material, e. g., wet sand, clay, wood chips, etc., having the tendency to interrupt the continuous discharge of material from the storage bin. The utility patent includes the following diagrams:

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Under the judicially created doctrine of double patenting, a prior design patent can invalidate a latter issued utility patent. See Application of Thorington, 418 F.2d 528, 57 C.C.P.A. 759 (1969), cert. denied, 397 U.S. 1038, 90 S.Ct. 1356, 25 L.Ed.2d 649 (1970). The doctrine was created to prevent the extension, beyond its lawful limits, of the patent monopoly. See J. R. Clark Co. v. Jones & Laughlin Steel Corp., 288 F.2d 279 (7th Cir.), cert. denied, 368 U.S. 828, 82 S.Ct. 49, 7 L.Ed.2d 32 (1961). The patent laws, of course, provide that a design patent and a utility patent may well be issued on the same construction. See 35 U.S.C. § 101 (utility), § 171 (design).⁴ However, each such patent must claim a separate, distinct patentable invention. Ropat Corp. v. McGraw-Edison Co., 535 F.2d 378 (7th Cir. 1976); In re Barber, 81 F.2d 231 (Cust. & Pat.App.1936). More specifically, in the words of the Supreme Court, the later patent "must be something substantially different from that comprehended in the first patent. It must consist in something more than a mere distinction of the breadth or scope of the claims of each patent." Miller v. Eagle Mfg. Co., 151 U.S. 186, 198, 14 S.Ct. 310, 315, 38 L.Ed. 121 (1894).

The Ropat court, in particular, had occasion to deal with such a situation. There, the first-to-issue design patent claimed an ornamental design for a corn popper. The utility patent called for a corn popper primarily composed of a base and heating element. The dome cover was described as possessing a volume substantially greater than that of the pan so that the corn rises and fills as it is popped. Patentee Ropat brought suit against various defendants for infringement of the utility patent. The defendants raised the defense of "double patenting" and moved for summary judgment, arguing that both patents claimed the same invention and that the utility patent invention was inherently in the design patent.

The Seventh Circuit pointed out that when a double patenting situation involves a design and utility patent, it is not easy to compare utility word claims with design picture claims in determining whether the same invention is claimed. The mere use of the same design claimed in the design patent as the vehicle for describing the utility claimed in the utility patent is not dispositive when comparing such claims. 535 F.2d at 381; Anchor Hocking Corp. v. Eyelet Specialty Co., 377 F.Supp. 98, 101 (D.Del. 1974). The pertinent test, therefore, for determining whether the utility and design patent claim the same invention was set forth as follows:

. . . Double patenting exists if the feature in which the novel esthetic effect resides is the identical feature which produces the novel function so that a structure embodying the mechanical invention would of necessity embody the design, and vice versa.

535 F.2d at 381. See In re Hargraves, 53 F.2d 900 (Cust. & Pat.App.1931); Application of DuBois, 262 F.2d 88, 46 C.C.P.A. 744 (1958).

Thereupon, the Ropat court held that the "novel feature" constituting the design claimed in the design for the popcorn popper is the large flattop dome cover, the volume of which is greater than that of the cooking pan in the base. This novel design feature clearly produces the novel "pop-flip-serve" function which forms the essence of the utility patent claim. The patentee in Ropat insisted that the district court read into the design patent a feature not claimed or described, namely, a shallow cooking pan in the base. Since neither the cooking vessel nor its volume were claimed or disclosed in the design patent, one would not know whether the volume of the dome was greater than the cooking vessel. However, Judge Castle pointed out that a design patent and a utility patent need not claim every incidental feature of the other in order for both to claim the "same invention." Moreover, he stated:

A design patent is granted pursuant to 35 U.S.C. § 171 on an article of manufacture as well as for a distinctive design. Being a corn popper, the article of manufacture present in the design patent here must necessarily possess a cooking vessel and heating element in its base. . . . Regardless of the exact volume of the cooking pan in the popper claimed in the design patent, it readily appears from the design patent that its volume necessarily would be less than that of the dome.

535 F.2d at 382. (Emphasis supplied; citation omitted.) The Seventh Circuit thereupon found that a person following the design patent would clearly infringe Ropat's utility patent since it would be capable of functioning in the precise manner as claimed in the design patent and held the utility patent invalid for double patenting.

In the instant case, patentee Wahl argues that the two conditions of the relevant test as set forth by the Ropat court in order to find double patenting have not been met. First, a structure made in accordance with the claims of the utility...