Westinghouse Electric Corp. v. Bulldog Elec. Prod. Co.

• Decision Date: 04 August 1952
• Docket Number: Civ. A. No. 229-W.
• Citation: 106 F. Supp. 819
• Court: U.S. District Court — Northern District of West Virginia
• Parties: WESTINGHOUSE ELECTRIC CORP. v. BULLDOG ELECTRIC PRODUCTS CO.

106 F. Supp. 819

WESTINGHOUSE ELECTRIC CORP. v. BULLDOG ELECTRIC PRODUCTS CO.

Civ. A. No. 229-W.

United States District Court N. D. West Virginia.

August 4, 1952.

Carl S. Lloyd, Chicago, Ill., James M. Guiher, Clarksburg, W. Va., Ralph H. Swingle, East Pittsburgh, Pa., for plaintiff.

C. Lee Spillers, Goodwin, Nesbitt, Spillers & Mead, Wheeling, W. Va., S. Eugene Bychinsky, Detroit, Mich., Jacob L. Keidan, Butzel, Levin, Winston & Quint, Detroit, Mich., Cyrus G. Minkler, Arthur W. Dickey, Harness, Dickey & Pierce, Detroit, Mich., for defendant.

BAKER, District Judge.

This suit was brought by Westinghouse Electric Corporation against Bulldog Electric Products Company, charging the infringement of seven (7) patents owned by the plaintiff company. These patents are:

1. Re. 19,887, O. S. Jennings, dated March 10, 1936, original application filed April 20, 1929, for panel circuit breaker;

2. U. S. Patent No. 2,060,472 to Jerome Sandin, dated November 10, 1936, application filed April 22, 1927, for circuit breaker;

3. U. S. Patent No. 2,073,103 to C. H. Hodgkins, dated March 9, 1937, original application filed August 4, 1933, for circuit breaker;

4. U. S. Patent No. 2,190,517 to O. S. Jennings, dated February 13, 1940, original application filed December 17, 1936, for circuit breaker;

5. U. S. Patent Re. 21,429 to C. M. Petersen, dated April 16, 1940, original application filed November 23, 1934, for circuit control device;

6. U. S. Patent No. 2,329,362 to R. H. Swingle, dated September 14, 1943, application filed April 14, 1934, for circuit breaker 7. U. S. Patent No. 2,229,412 to O. S. Jennings, dated January 21, 1941, original application filed December 17, 1936, for circuit breaker.

The plaintiff is a Pennsylvania corporation. The defendant is a corporation organized and existing under the laws of the State of West Virginia, but having its principal place of business in Michigan. There is no doubt that this court has jurisdiction of the proceedings, Title 28, §§ 1400 and 1338(a), U.S.C.; in fact, such jurisdiction has never been questioned.

The commercial devices manufactured by the defendant and alleged to infringe upon the patents in suit are circuit breakers. Two types of circuit breakers are involved, and are made and marketed by the defendant under the names "Circuit Master" and "Pushmatic."

As every modern householder knows, an electric circuit is designed and intended to carry a predetermined load. If, for any one of several reasons, this load is increased beyond the intended maximum, a great deal of trouble will ensue. Electrical devices may be injured or destroyed, and the building in which the circuit is in use may be set afire. In the very beginning of the use of electricity, it became apparent that some safeguard must be provided against this danger. The commonest device consists of inserting in the circuit a piece of wire which has a relatively lower melting point than the wire comprising the rest of the circuit. When the overload occurs, this piece of wire becomes heated and melts, thus breaking the circuit. This is the ordinary and commonly used fuse plug. The fuse plug has some very definite advantages. It is sure, it has no mechanical parts to get out of order, it is easily calibrated for a given load, and it is cheap to manufacture. On the other hand, the fuse plug has definite disadvantages. In operation, it destroys itself and, once it functions, it must be replaced by a new plug. This necessitates the householder keeping a supply of extra plugs on hand. It is also easy for the householder, who finds himself with a blown fuse and no extra ones available, to circumvent the protection furnished as, for example, by putting a penny in the socket and screwing the burned-out fuse against the penny. This results in a complete circuit, which is entirely unprotected against overloads.

A circuit breaker is a device which will break a circuit when a predetermined overload occurs, but which can be manually reset to restore the circuit. After such manual resetting, the same protection exists as before the circuit was broken. Circuit breakers of this type have been in use for many years, and are old in the art relating to the protection of electric circuits. However, these early circuit breakers were all designed for the control of relatively heavy currents. They were used in factories, on trolley cars, etc. In order for a circuit breaker to be useful in a dwelling or small commercial building, several requirements must be met. The breaker must be simple to operate; that is, it must be such a device that the householder is required merely to move a handle in order to reset the circuit. It must be certain to interrupt a circuit which carries a dangerous overload. It must operate in such a manner as not to imperil the building. What at first glance may seem a paradox, it must not operate too quickly. When a large bank of electric lights is turned on, or when a motor is being started, there is an instant for which the circuit carries voltage which, if continued, would be a dangerous overload. This, however, lasts only for a moment. The circuit breaker must be able to carry this momentary overload without breaking the circuit and, lastly, it must be capable of manufacture at a price to compete commercially with the cheaper fuse plug.

The complaint in the suit was filed November 10, 1943. Defendant moved for summary judgment on January 10, 1944, on the ground of alleged misuse of the patents in suit by the plaintiff. This motion was heard, and was denied on May 23, 1944. Defendant's answer to the complaint was filed on July 1, 1944, denying infringement of the patents in suit and raising defenses of invalidity of the patents, and of unclean hands on the part of the plaintiff arising out of the alleged misuse of the patents in suit.

On March 2, 1945, at a hearing of motions respecting proceedings between the same parties in an action then pending in United States District Court for the Eastern District of New York, which proceedings seemed likely to settle questions raised in the motions presented, this Court, without objection by either party, ordered the proceedings in this suit to be stayed pending final determination of the action then pending in the United States District Court for the Eastern District of New York. On May 17, 1948, on motion of plaintiff that the action between the parties in the United States District Court for the Eastern District of New York had been finally determined, an order was entered dissolving the stay of proceedings previously ordered on May 2, 1945, in the instant suit.

On May 24, 1948, defendant filed a new motion for summary judgment of dismissal on the ground of alleged misuse of the patents in suit by plaintiff. This motion was granted, and on April 12, 1949, an order was entered dismissing plaintiff's complaint after full hearing and arguments and briefs on behalf of the respective parties and in view of recently announced decisions of the U. S. Supreme Court in United States v. Line Materials Co., 333 U.S. 287, 68 S.Ct. 550, 92 L.Ed. 701, and United States v. U. S. Gypsum Co., 333 U.S. 364, 68 S.Ct. 525, 92 L.Ed. 746, which the Court viewed as having changed the law applicable to the grounds of misuse of patents advanced by defendant. This decision is reported in 81 F.Supp. 987.

On May 6, 1949, plaintiff filed notice of appeal to the United States Court of Appeals for the Fourth Circuit from the summary judgment of dismissal, entered April 12, 1949. On January 4, 1950, the summary judgment of dismissal was reversed by the United States Court of Appeals for the Fourth Circuit, in a decision reported in 179 F.2d 139, and the case was thereafter remanded on February 20, 1950, to the Court for full trial upon the issues and determination of whether plaintiff is entitled to the relief prayed.

On June 29, 1950, defendant filed a motion under Rule 34, Federal Rules of Civil Procedure, 28 U.S.C.A. for production and inspection of documents in possession of plaintiff respecting the defense of the alleged misuse of the patents in suit, and also propounded interrogatories to the plaintiff respecting other issues in the case. Plaintiff opposed this motion and objected to certain of defendant's interrogatories.

On September 23, 1950, plaintiff filed a demand for trial pursuant to Rule 6(a) of Article 2 of the Rules of Practice for the Northern District of West Virginia, that it desired trial at the term of the Court commencing at Wheeling, West Virginia, on October 17, 1950.

On November 10, 1950, a hearing was had on defendant's motion to produce and inspect documents, and on plaintiff's objections to defendant's interrogatories, at which defendant's motion was denied and plaintiff's objections were sustained, and it was further ordered that the case be set down for trial on merits beginning on December 18, 1950. A severe snow storm intervening and interfering with travel and disposal of other business of the Court prior to the date set for the beginning of the trial, the case was reset for trial on the merits beginning on January 3, 1951, on which date the trial commenced and proceeded continuously thereafter until February 12, 1951, then the taking of evidence was completed—except for stipulated depositions in rebuttal on behalf of plaintiff, and an analysis of admitted evidence respecting prices bearing on defendant's defense respecting alleged misuse of patents, both of which were later filed — and time assigned for preparation of briefs by the respective parties.

All of the patents in suit, excepting Patent Re. 19,887 to Jennings, are directed to automatic electric circuit breaker constructions in which a switch capable of manual operation to open and close an electric circuit is provided with means for automatically opening the switch in the event the circuit is subjected to excess electric current of a predetermined value. These circuit breakers are...