Water Technologies Corp. v. Calco, Ltd.
| Decision Date | 22 October 1986 |
| Docket Number | No. 82 C 4330.,82 C 4330. |
| Citation | 658 F. Supp. 961 |
| Parties | WATER TECHNOLOGIES CORPORATION, Water Pollution Control Systems, Inc., Kansas State University Research Foundation, Aqua-Chem, Inc., Plaintiffs, v. CALCO, LTD. and William J. Gartner, Defendants. |
| Court | U.S. District Court — Northern District of Illinois |
COPYRIGHT MATERIAL OMITTED
COPYRIGHT MATERIAL OMITTED
Michael R. Dinnin, Robert A. Dunn, Harness, Dickey & Pierce, Birmingham, Mich., Wm. A. VanSanten, Chicago, Ill., for plaintiffs.
Robert E. Wagner, Daniel N. Christus, Wallenstein, Wagner, Hattis, Strampel & Aubel, Chicago, Ill., for defendants.
FINDINGS OF FACT AND CONCLUSIONS OF LAW
1. This action arises under the patent laws, Title 35 U.S.Code. Jurisdiction and venue are based on 28 U.S.Code, particularly, 28 U.S.C. §§ 1338 and 1400(b). Venue and jurisdiction are proper.
2. The United States patents involved in this civil action are (PTX-1 to 4):
Patent No. Title Inventor(s) Issue Date
4,187,183 Mixed Form Polyhalide Gary L. Hatch Feb. 5, 1980
("'183") Resins for
Disinfecting
Water
4,190,529 Mixed Form Polyhalide Gary L. Hatch Feb. 26, 1980
("'529") Resins for
Disinfecting
Water
3,817,860 Method of Disinfecting Jack L. Lambert June 18, 1974
("'860") Water Louis R. Fina
and Demand Bactericide
for Use
Therein
3,923,665 Demand Bactericide Jack L. Lambert Dec. 2, 1975
("'665") For Disinfecting Louis R. Fina
Water
and Process of
Preparation
3. These patents deal with bactericidal resin products (called demand bactericide resins) which relate to the disinfecting of water. The resins are also often referred to as triiodide resins (I-3) or as triiodide mixed with certain amounts of pentaiodide (I—5).
4. The defendants' products accused of infringement are resin containing products called Pocket Purifier straws. The Calco Pocket Purifier is referred to as a straw purifier product because, when used, it is inserted into water and the user sucks the water up through it like a straw. These products are sold through sporting goods stores.
5. Plaintiff Water Technologies Corporation (hereinafter "WTC") is a Delaware corporation, having a principal office at Ann Arbor, Michigan.
6. Plaintiff Water Pollution Control Systems, Inc. (hereinafter "WPCS") is a Texas corporation also having an office at Ann Arbor, Michigan, and it is a wholly owned subsidiary of WTC. Mr. L.L. Davis, one of the witnesses, is president of WPCS and also WTC.
7. Aqua-Chem, Inc. is a Delaware corporation having its principal offices at Milwaukee, Wisconsin. The two Aqua-Chem/Hatch patents involved in this litigation were assigned to Kansas State University Research Foundation as of an effective date of December 31, 1984.
8. Kansas State University Research Foundation (hereinafter "KSURF"), is a non-profit corporation of Kansas, and KSURF has its principal offices at Kansas State University, Manhattan, Kansas.
9. Defendant Calco, Ltd. (hereinafter "Calco") is an Illinois corporation having its principal place of business at Rosemont, Illinois.
10. Defendant William J. Gartner (hereinafter "Gartner") is an Illinois resident who resides in Bartlett, Illinois.
11. The demand bactericide resins and methods disclosed in the '860 and '665 patent inventions were developed by chemistry Professor Jack L. Lambert and microbiology Professor Louis R. Fina at Kansas State University in the late 1960's. The '183 and '529 patent inventions were improvements developed in 1974-75 by Dr. Gary L. Hatch of Aqua-Chem (who, prior to his employment at Aqua-Chem, had received his Ph.D. degree in chemistry at KSU).
12. In 1973, KSURF granted an exclusive license to Aqua-Chem under the '860 and '665 patents. Aqua-Chem subsequently granted an exclusive sublicense under all four patents for the defined field of products containing less than 100 cubic centimeters ("cc") of the resins, in September, 1977, to WPCS. WPCS later became a wholly owned subsidiary of Water Tech ("WTC"), whereas, in September, 1977, it was wholly owned by Walbro Corporation of Cass City, Michigan.
13. In 1981-82, when the activities of the defendants first became known to plaintiffs, WTC approached their licensor Aqua-Chem with a request that Aqua-Chem take necessary measures to stop the accused activities. In that Aqua-Chem declined to take measures to prevent it, WTC-WPCS withheld further royalties to Aqua-Chem and filed this civil action as exclusive licensee under the patents in early July, 1982, naming Aqua-Chem as an involuntary plaintiff and cross-defendant. Thereafter, in September of 1982, Aqua-Chem terminated the exclusive license to WPCS, i.e., a few months after the civil action was filed, and claimed the royalties unpaid under the agreement.
14. The cross claims formerly involved herein between Aqua-Chem and WTC/WPCS were settled by an agreement signed in May, 1985. The Aqua-Chem settlement agreement also terminated the former 1973 exclusive license from KSURF to Aqua-Chem, and, pursuant to the agreement, the two Aqua-Chem/Hatch patents '183 and '529 were assigned to KSURF (along with all rights for past infringements). Thus, as of the time of trial, KSURF was and is the owner of all four patents involved in this lawsuit, and KSURF gave notice to all parties that it had changed its capacity to voluntary plaintiff on or about May 30, 1985.
15. Aqua-Chem was dismissed from the lawsuit on the first day of trial, as a result of the settlement (order dated on or about June 14, 1985). Co-defendant Robert Kalnitz was also dismissed from the action by order of the court on or about June 21, 1985.
16. In this civil action, the defendants Gartner and Calco are charged with patent infringement and unfair competition, 28 U.S.C. § 1338.
17. KSURF, as owner of the four patents, is suing the defendants Calco and Gartner for infringement damages, and an injunction. WTC/WPCS is suing the defendants for infringement damages caused to it as exclusive licensee under all four patents prior to their license termination date of September, 1982, and for unfair competition.
18. The infringements are claimed to be in violation of 35 U.S.C. § 271(a) and § 271(b), which include direct infringement and active inducement of infringement.
19. The plaintiffs have charged defendants Calco and Gartner with infringement of the patents in suit by reason of the manufacture, use, and sale by the defendants of a straw purifier product, the Pocket Purifier, utilizing the patented resins and methods.
20. In late 1979 and early 1980, defendant Gartner did not know how to make the triiodide resins. He therefore made some contacts with the people at Aqua-Chem on the basis that he was doing some consulting work for Brunswick Corporation, a company not involved in this litigation, and that Brunswick would probably take a license for larger sized resin products. After one of Gartner's early telephone conversations (July 24, 1980) with Aqua-Chem, Gartner noted in his memo that "Mandy will tell me how to make it." "Mandy" was Armando Steinbruchel, president of Aqua-Chem.
21. Gartner knew at this time that the Aqua-Chem resins were exclusively licensed to WPCS for products of 100 cc or less size, that WPCS had a right of first refusal on any other licenses; and that Gartner himself had been refused a license. Nonetheless, he took the Aqua-Chem resin formula to Calco and licensed Calco (on September 24, 1980), to manufacture, use and sell the resin in the straw purifier product. He indicated to Calco that the formula was confidential. He also gave Calco an identification of the specific ingredients used by Aqua-Chem to make the resin. Gartner and Calco carried out these activities without advising Aqua-Chem or WPCS.
22. Prior to the time of the accused activities by defendants, the plaintiff WPCS had been operating since 1977 under its exclusive license from Aqua-Chem to manufacture and sell water purifiers (usually referred to as Walbro Water Purifiers or Water Tech Water Purifiers).
23. In 1979, the defendant Gartner (who is a chemist and runs one or two different chemical labs) entered into a consulting agreement with Brunswick Corporation. That consulting arrangement was ostensibly for the purpose of helping Brunswick to develop new products for sale in the water purification field. In connection with this consulting work, Brunswick put the defendant Gartner in touch with Aqua-Chem's personnel.
24. Later in August of 1979, through the auspices of Brunswick and Aqua-Chem, Gartner arranged for and held a meeting with the personnel of WTC/WPCS at their offices in Ann Arbor, Michigan.
25. During the August, 1979 meeting, WTC did not give Gartner any samples of the resin, nor did they give him any formulas or recipes to prepare the resin. However, WTC did give Gartner technical literature on their own water purifier products which utilized the patented triiodide resin.
26. Approximately 11 months after Gartner's visit to WTC in Ann Arbor, he filed his own patent application in July of 1980 to cover a water purifier device of the straw type. He claimed the device as being his own development. The device used a first section of the resin and another section of activated carbon, very similar to one of the devised he had learned about at WPCS.
27. In late July or August of 1980, defendant Gartner had further contacts with Aqua-Chem's employees Mandy Steinbruchel and Richard Geiger. In these discussions, Gartner learned the history of the resin developed at Kansas State University in the triiodide resin form, and he also learned that Aqua-Chem had discovered a new way to make the resins, and that Aqua-Chem had obtained patents on their product and method as well. Gartner then convinced...
To continue reading
Request your trial
-
Bausch & Lomb Inc. v. Alcon Laboratories, Inc.
...by the prior art to describe this invention, the Court denies entry of summary judgment on this issue"); Water Technologies Corp. v. Calco, Ltd., 658 F.Supp. 961, 972 (N.D.Ill.1986) (rejecting defendants' argument that patents did not comply with § 112, in part because "[d]efendants' expert......
-
Mas-Hamilton Group v. LaGard, Inc.
...of the descriptions and found the patent descriptions to be definite and allowed the patents thereafter." Water Tech. Corp. v. Calco Ltd., 658 F.Supp. 961, 972 (N.D.Ill.1986), aff'd in part, rev'd in part, 850 F.2d 660 (Fed.Cir.), cert. denied, 488 U.S. 968, 109 S.Ct. 498, 102 L.Ed.2d 534 6......
-
Water Technologies Corp. v. Calco, Ltd.
...Ltd. and William J. Gartner appeal from the judgment of the United States District Court for the Northern District of Illinois, 658 F.Supp. 961 (N.D.Ill.1986), 1 in favor of Water Technologies Corporation, its wholly owned subsidiary, Water Pollution Control Systems, Inc. (collectively WTC/......
-
Prima Tek II, L.L.C. v. Polypap Sarl
...to be definite [in accordance with the requirements of 35 U.S.C. § 112] and allowed the patents thereafter." Water Tech. Corp. v. Calco Ltd., 658 F.Supp. 961, 972 (N.D.Ill.1986). As with its other invalidity defenses, Defendants must present clear and convincing evidence of indefiniteness t......