Wolens v. F.W. Woolworth Co.

Decision Date10 March 1983
Docket Number82-1774,Nos. 82-1734,s. 82-1734
Citation218 USPQ 100,703 F.2d 983
PartiesJohn WOLENS, Plaintiff-Appellant, v. F.W. WOOLWORTH CO., J.C. Penney Company, Inc., and Wear-Ever Aluminum, Inc., Defendants-Appellees.
CourtU.S. Court of Appeals — Seventh Circuit

Raymond P. Niro, Hosier, Niro & Daleiden, Chicago, Ill., for plaintiff-appellant.

Herbert C. Brinkman, Wood, Herron & Evans, Cincinnati, Ohio, for defendants-appellees.

Before PELL and BAUER, Circuit Judges, and TIMBERS, Senior Circuit Judge. *

PELL, Circuit Judge.

Wolens appeals from the district court's judgment, following a full hearing, that two models of popcorn poppers manufactured by Wear-Ever Aluminum, Inc. and sold by the other named defendants do not infringe his patented hot-air popper. The defendants cross-appeal from the district court's holding that the Wolens patent was neither obvious nor anticipated by the prior art and is therefore valid.

A. The Plaintiff and His Patented Device

Wolens began designing a popcorn popper that would utilize hot air in 1971. Initially, Wolens experimented with a recirculating air flow system, one that would recapture the hot air used to pop the corn so that it could be reheated to pop more kernels. Wolens found this concept impractical and abandoned it in favor of a popper that depended upon "charging" hot air into a vessel containing unpopped kernels of corn. 1

On September 4, 1973, United States Letters Patent No. 3,756,139 for "Popcorn Popper" issued to Wolens (Wolens patent). Claim 1 of this patent reads as follows:

1. A device for popping kernels of popcorn comprising:

a receptacle for receiving corn which has been popped;

a popping vessel for receiving kernels of popcorn to be popped, said vessel being arranged within said receptacle; and

means for charging a stream of hot air vertically downward into said popping vessel, said stream of hot air heating kernels of popcorn to be popped in said popping vessel to popping temperature and directing corn which has been popped upward out of said popping vessel into said receptacle.

Dependent claims of the Wolens patent that are relevant to the instant appeal are as follows:

4. The device of claim 1 further including means for covering said receptacle to prevent popped corn from said popping vessel from passing outside said receptacle, said covering means being vented with respect to said receptacle to permit escape of air from said charging means.

6. The device of claim 5 wherein said charging means is supported by said covering means in a position above said receptacle and said popping vessel.

As the claims indicate, the Wolens device includes an inner container called a "popping vessel." This vessel, in which the unpopped corn is placed, is located within a "receptacle." A hot air blower, mounted above the popping vessel, charges a stream of hot air into the vessel. The kernels of corn are heated by this stream of air to popping temperature. As the corn pops, it is driven out of the popping vessel and into the receptacle. 2

During prosecution of the Wolens patent, the Examiner cited the following prior art references:

Gillitt Patent No. 1,206,693

Nelson Patent No. 2,606,134

Green Patent No. 2,922.355

Lindemann Patent No. 3,059,567

Gottlieb Patent No. 3,570,388

Wolens' attorney cited four additional prior art references to the Patent Office. The following three patents were not cited:

Pritchard Patent No. 1,648,005

Grant Patent No. 3,323,440

Wilsey Patent No. 2,241,754

The Patent Office allowed the Wolens patent on first action.

From 1972 through 1979, Wolens tried unsuccessfully to interest several appliance manufacturers in producing hot air popcorn poppers under his patent.

B. The Defendants and the Alleged Infringing Devices

The defendant Wear-Ever Aluminum Inc. (Wear-Ever) manufactures cooking utensils. In 1976, Wear-Ever accepted a proposal for development of a hot-air popcorn popper by Design & Development, Inc. Wear-Ever introduced the resulting device, its Model 72000 popcorn popper, at the January 1978 Housewares Trade Show. On December 18, 1979, United States Patent No. 4,178,843, disclosing the Model 72000 popper, was issued and assigned to Wear-Ever (Crabtree patent).

The Crabtree patent discloses a popper in which heated air is circulated horizontally in a cylindrical popping chamber. The air is introduced into the popping chamber through slanted vanes near the bottom of the chamber. A fluidized bed of swirling and circulating corn results. As the corn is popped, it is lifted upward by the moving air and the increasing volume of popped corn. It is discharged through an open chute at the top of the popping chamber into a container provided by the user. 3

The Wolens patent was not among the prior art references cited by the Examiner during the pendency of the Crabtree patent.

In January, 1981, Wear-Ever introduced its Model 73000 corn popper. This model had been designed to counter foreign and domestic competitors who had copied the Model 72000 popper at substantial cost savings. Although the Model 73000 popper differs from the Model 72000 in details of construction, the parties do not dispute the district court's finding that the Model 73000 popper functions in the same way as the Model 72000 device. 4

The other defendants in this action, F.W. Woolworth Co. and J.C. Penney Co., Inc., sell the Wear-Ever poppers.

C. Proceedings Below

In 1977 and 1978 Wolens tried to interest Wear-Ever in purchasing his patent. Wear-Ever declined. Wolens brought suit against the defendants, alleging patent infringement, in 1979. The defendants, in turn, challenged the validity of the Wolens patent on cross-appeal.

The suit was tried as to the Model 72000 popper between September 29, 1980 and October 7, 1980. The district court heard the testimony of fourteen witnesses, including four expert witnesses. The court also witnessed twenty-four physical demonstrations involving the actual operation of the Model 72000 and a Wolens prototype popper.

A reopened trial was held on November 4 and 5, 1981, to consider Wolens' allegations of infringement regarding the Model 73000 Wear-Ever popper. The court heard the testimony of three technical experts as well as that of other witnesses. Thirteen additional demonstrations were held.

The district court entered judgment for the defendants on the infringement claim and for the plaintiff on Wear-Ever's cross-appeal challenging the validity of the Wolens patent.


Wolens' appeal from the district court's holding that the two Wear-Ever poppers do not infringe his patent alleges several errors of law including, but not limited to, the assertion that the district court failed to apply the doctrine of equivalents. After setting forth the general rules applicable to an infringement action, we address those arguments that arguably pertain to literal infringement by Wear-Ever. 5 We then discuss Wolens' assertion that the district judge failed to apply the doctrine of equivalents.

A. General Rules Relevant to Infringement Actions

In a patent infringement action, the plaintiff has the burden of proving infringement. Price v. Kelly, 154 U.S. 669, 670, 14 S.Ct. 1208, 26 L.Ed. 634 (1881). The claims of a patent are what define the scope of the invention. E.g., Smith v. Snow, 294 U.S. 1, 11, 55 S.Ct. 279, 283, 79 L.Ed. 721 (1935). For infringement of a product patent to be found, each element of the claim must be found in the accused structure. E.g., Keating v. Stearnes Imperial Co., 347 F.2d 444, 445 (7th Cir.1965).

The question of infringement is generally a factual determination which will not be disturbed on appeal unless it is clearly erroneous. E.g., Ferment-Acid Corp. v. Miles Laboratories, Inc., 338 F.2d 586, 588 (7th Cir.1964). There is authority for the proposition that when the findings and conclusions of the trial judge regarding infringement are based wholly or primarily upon documentary and physical evidence the reviewing court is free to review the evidence de novo. Nasco Inc. v. Vision-Wrap, Inc., 352 F.2d 905, 908 (7th Cir.1965). This rule is inapplicable, however, when there is also substantial witness testimony introduced in connection with such exhibits; in such a case, the "clearly erroneous" standard applies. Reese v. Elkhart Welding & Boiler Works, Inc., 447 F.2d 517, 520-21 (7th Cir.1971).

The instant case involves a significant amount of witness testimony before the district court, including testimony by technical experts. Much of the physical evidence was introduced through or amplified by this testimony. Consistent with Reese, therefore, Wolens can succeed on appeal only if he demonstrates that the judgment below was clearly erroneous.

B. Literal Infringement

Wolens alleges that the district judge limited the Wolens patent to its drawings rather than its claims, failed to apply the rule of claim differentiation, failed to consider the infringing capability of the Wear-Ever poppers under all conditions of operation, and erroneously relied on the Wear-Ever patents rather than the actual poppers in determining whether infringement existed.

Initially, we note that there is absolutely no support in the record for Wolens' assertion that the court below relied upon the patents pertaining to the Wear-Ever poppers rather than the actual devices in making his determination. The two models of popcorn poppers were much in evidence at the trials; in fact, demonstrations utilizing the poppers were conducted and were relied upon in the district court's disposition of the case.

Second, we discuss the Supreme Court precedent relevant to the other arguments posed by Wolens. In Smith v. Snow, 294 U.S. 1, 55 S.Ct. 279, 79 L.Ed. 721 (1935), the Court considered whether the first claim of Smith's patent for an improved apparatus and method for the incubation of eggs was infringed. At issue was whether the claim required a particular arrangement...

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