Interdynamics, Inc., and Smiths Industries, Limited v. Firma Wolf, Arend Wolf, and Trans Tech, Inc. Appeal of Trans Tech, Inc

BECKER, Bеfore GARTH and Circuit FULLAM,* District Judges, Judge. OF OPINION THE COURT BECKER, Judge. Circuit case, involving patent This a for an auto- defroster, presents mobile rear-window interesting questions jurisdiction of federal question and one application law. The has a long case tortuous procedural history and is now before this for origi- Court the second time. The suit was nally brought by appellees Interdynam- ics, Inc., Industries, Limited Smiths (“Interdynamics”), alleging appellant Inc., infringed had a patent by Interdynamics. proceed- held The initial ing enjoining resulted in a consent decree Trans Tech from claim of infringing Interdynamics’ proceed- A patent. second began Interdynamics sought when contempt hold Trans Tech consent after Tech decree commenced mar- keting slightly different version of * Fullam, vania, designation. sitting by Honorable John P. United States Dis- Judge Pennsyl- trict Eastern District of showing that controversy” requirement to be under the decree adjudged product contempt pro- another judg reasonably feared reversed infringing. This Court Tech, Interdynamics, Inc. and that Interdynamies ceeding brought by ment for Trans (3d Cir.), cert. F.2d 93 ability Firma intention and it had the immediate denied, 102 S.Ct. 454 U.S. The third produce I”), (“Interdynamics L.Ed.2d 631 court, ap- the district is whether question contempt that, the context of holding equiva- “doctrine of patent-law plying should have proceeding, the district I, com- by Interdynamics prescribed lents” equivalents” the “doctrine applied the Trans finding that error in mitted clear al the new whether determined no more than was at issue “merely color- leged to be different colorably product previously different” from ably the consent decree. subject had been reached infringe. Court conceded presented questions Although each of the case so and remanded the merits conclude that difficulty, we is not without of judgment enter a might the district court appeal- is the district court the of Tech; Trans Tech Trans contempt against exists, and able, dispute justiciable that a mar product its second withdrew court is not of the district that the decision in develop product the began ket and erroneous. clearly appeal. present volved in the from the district appeal This arises proceeding History decision in a commenced and Factual Back-

court’s Procedural I. an order that applied for when ground require Interdynamics appear would 4, 1973, the United States September On not be why judgment “show cause a should 3,757,087 Patent No. awarded Patent Office Trans Tech’s new defrost- adjudging made” for an automobile (the patent”) “Barnard original pat- the er not an of pat- The Barnard defroster. rear-window the consent ent and not in violation of Smiths, a British com- assigned to ent was hearing, a the district court decree. After designated Inter- subsequently pany, which providing that Trans entered an order for the licensee its United States dynamics of rear-win- making, using, selling Tech’s to mar- right the latter the patent, granting exemplified by experi- the dow defrosters for in- and to sue product ket the the court sample mental submitted to the described This Court has fringement. contempt” original a civil “would be article as follows: рatented decree, Tech appealed. consent and Trans heat- grid of metal kit consists of [the] appeal questions. This raises three backing strips sandwiched between ing appealed first is whether Trans Tech has plastic. of Installa- top sheet and a sheet from a final order. Trans Tech contends simply peel- entails tion of the defroster in the the district court’s order was backing placing sheet and ing off declaratory judgment, nature of a which is and adhesive surface of exposed strips statute; appealable pursuant Interdy- window. against sheet the car top declaratory judgment namics asserts that a the surface of The adhesive that covers sought was neither nor obtained and that strips which contacts heating statutory provision provides no other a basis at- than the adhesive glass stronger question The second is whether appeal. top sheet on them to taching be- controversy” there exists an “actual pressure applied lie. when they the De- parties, required by tween the as strips, heating over the top to the sheet claratory Judgment Act: because Trans and the to the window strips adhere Tech has neither manufactured nor market- proc- This peeled away. top sheet can be Interdy- ed the final and because strips grid heating ess leaves brought has not or threatened to namics grid This of the window. on the surface bring contempt proceeding against n is then the automobile’s connected to Tech, the “actual satisfy Trans Tech must systеm Tech, and heat be gener- electrical can Defendant Trans Inc. and all by passing electricity through ated hereby those in with it are en- privity heating elements. joined from Bar- infringing claim of 3,757,087.... I, nard United States supra, 653 F.2d at Interdynamics Wolf, corporation Firma a Dutch owned Interdynamics, Wolf, Inc. v. Firma No. 78- developed Arend a similar defrost- (D.N.J. 6, 1978) (order Sept. entering (the er “Wolf product”) Europe kit in decree) consent (quoted part Interdy- marketed its version in the United States I, Interdy- namics through According Trans Tech. to the and, namics waived damages by signature Court in I: Lerner, Henry its counsel R. agreed The Wolf differed from the In- “the agreement settlement and consent terdynamics kit that the Interdynamics judgment does not bar Trans Inc. kit contains a set of single support- sheets manufacturing from rear window defrost- full pre-arrayed grid heating ers long they as do not infringe United strips, while the Wolf contained 3,757,087.” Patent Letter from States four sets sheets. Each set in the Wolf Lloyd MeAulay (June R. Henry Lerner a backing consisted of sheet and 14, 1978), App. 342-43. sheet, a top between which were sand- Shortly entry September after parallel heating strips wiched also decree, however, consent containing adhesives different began slightly market a different strengths. The sheets were long nar- row, and were in packaged (the coils. Instal- version of the Wolf “first product performed lation of each set was as in the Trans product”). kit, except Interdynamics the four sets of In product, the four coils did not heating strips to be together had linked contain separatе top backing and sheets as well as to the system. electrical but were instead in constructed continu- at

653 F.2d 95. rolls, ous much like rolls conventional 1978, In product March after tape. Wolf adhesive The smooth back of each appeared market, on the Interdy- American layer plastic pro- sheet served as the infringement namics and an Smiths filed heating tective surface for the and strips Tech, Wolf, action against Trans Firma layer adhesive surface in the above. 1978, 6, Arend Wolf. On September separate covering Thus the need for a parties, instigation, at Trans Tech’s entered sheet was Trans Tech eliminated. decree, into (in a consent which provided product was otherwise identical relevant part): Wolf product. 2. Barnard United States I, Interdynamics 95.1 supra, ELEMENTS, for HEATING 3.757.087 Interdynamics applied or- thereupon for an Industries, by plaintiff owned Smiths der to show cause Trans Tech why should plaintiff and solely Limited licensed to contempt violating not be held in for Inc., Interdynamics, is both and val- good decree; consent a show-cause order issued enforceable; id in law and is 2, from the court on November Defendant Trans Inc. in- 1978, ap- and commanded that Trans Tech fringed Barnard United States 9, 1978. pear before the court on November by using and selling rear win- 3.757.087 Upon contempt the conclusion dow defrosters identified with the trade- however, hearing, the district court decided mark “JUSTLIKE” and manufactured contempt that it not rule issue could on the

defendant Firma Wolf the di- under rection and until it had determined whether the first сontrol defendant Arend Wolf. Trans Tech product actually infringed colorfully jelly jelly Interdynam- The district court described the dif- and a roll.” sandwich product Wolf, 78-647, slip op. ference between the at 3 Wolf first ics Inc. v. Firma No. product (D.N.J. II”). 1981) (“Interdynamics Sept. “the as difference between 162 Air Mfg. Tank & Co. v. Linde hearing The court held a Graver patent.

Barnard 605, 608 infringement ultimately Products 339 U.S. S.Ct. focusing on [70 pat- (1950). ... infringement no Barnard 94 L.Ed. found 1097] ent. It therefore concluded that Trans product may the new in- ... Even if Tech had not violated the consent decree. fringe patent, long as it is more Interdynamics, Inc. v. Firma “colorably infringe- different” the than F.Supp. (D.N.J.1980). contempt ment should not amount to pro- nor should it be tested in and, on June Interdynamics appealed, ceedings. I, Interdynamics this Court reversed. held on that date that the dis- supra. We Applying those F.2d at 98-99. treating the con- trict court had erred issue, con- product to the doctrines tempt proceeding as a de novo product cluded that the first Trans Tech that, comparing proceeding and instead merely colorably different the first Trans Tech with the Bar- product; Wolf we therefore remanded nard have com- patent, the court should enter a might case so that the district court pared the first Trans Tech with the Trans Tech.2 contempt against adjudicated Wolf which had been F.2d at 99. decree) (pursuant infringe to the consent Upon learning of this Court’s decision patent. Any approach the Barnard other I, Tech withdrew the Interdynamics “depriv[e] plaintiff [Interdynamics] would first Trans Tech and devoted its prior of the benefit of the decree which energies developing type of rear-win- plaintiff right damages waived its dow defroster that would not violate the infringement” Trans Tech’s admitted August 1978 consent decree. On disregard “significant public would in- Trans Tech the district court for applied to represented by terest the doctrine of res require Interdynamics order would judicata I, Interdynamics .... appear why judge- and “show cause F.2d at 98. adjudging ment should not be made” I laid down two (the Tech’s new defroster “second Trans First, contempt proceeding rules. in a fol- product”) Tech not an of the decree, lowing appropriate a consent “the Barnard and not in violation of the inquiry product alleged is whether the new Lloyd consent decree. The affidavit of . contempt ‘merely colorably to be a is differ- McAulay, attorney, accompa- Trans Tech’s ent’ product previously from the conceded proposed This affidavit de- nied order. Second, infringe.” 653 F.2d at 98. scribed the second Trans Tech determining changes whether [i]n “experimental sample” of which was at- product merely made the new tached, [in are] modifica- and enumerated various colorably different and therefore a con- in the sample tions that would be made tempt, it necessary apply is the well-es- production. request before actual The for a tablished doctrine of equivalents. Sim- “Court determination on the issue of com- mons Co. v. A. Brandwein was framed pliance with Court order” 440, (7th Cir.1957). This doctrine form an for an order to application been Supreme dеscribed Court as cause, McAulay explained, show because follows: position having “Trans is in a to fill product two devices do the same work in orders for its the next few within

[I]f business,” substantially way, going McAulay the same and accom- weeks or out of result, H10, plish substantially they speedy the same Aff. at and a determination same, though are the even they give differ would Trans Tech a chance to retain name, form, shape. placed customers who had orders for the petitions rehearing 2. Trans Tech’s and rehearing July en banc on were denied A product by selling party permanent

first Trans Tech them under of a restraint instead, one, id. at second injunction takes a needless risk in adopt- 1i ing a course of which it action believes the requested The district court issued (no sincerely) matter how will not contra- 27, 1981, August show-cause order on judgment. prudent course, vene the 8,1981. hearing September held a In its opinion September disagreement the court when there is a on the described Trans Tech product: the second here, question as there is to apply for a consists of two of conductor rolls coat- construction judgment.

[it] ed pressure on one side with sensitive Interdynamics II, supra slip op. note at 5. adhesive, being the two rolls mounted on Trans Tech has appealed district [i.e., spindle] mandrel a shaft or to be court’s ruling that it would be in set in dispenser that will enable the if it marketed the prod- second Trans Tech user lay parallel strips out two above, uct. As we have noted conductor on the rear window surfаce. issues, before principal us three one of This eliminated system not the pro- which concerns whether we have an sheet, appeal- tective mounting but the sheet as well. The able dispenser mandrel are order. Interdynamics contends that thus relied on to enable the user lay ruling the district appealable court’s spaced, down parallel strips of conductor because it is neither a final order reviewa- just did, as the product just Wolf (1976) (amended ble under 28 U.S.C. 1291 § did. [first] 1982) interlocutory nor an order reviewable II, Interdynamics supra slip op. note at 4. under 28 (amended U.S.C. § Applying to the second Trans Tech 1982); nor, Interdynamics, claims did the the standards established this Court in district court suit brought entertain a under I, Interdynamics judge Act, the Declaratory Judgment 28 U.S.C. determined that new “the 2201 (Supp. IV on the § is no colorably more than different in com- hand, other asserts either that the district parison product,” with the Interdy- Wolf granted declaratory relief under sec- II, namics supra slip op. note or, alternative, tion 2201 in the explained that order effectively constitutes final decision use of two rolls adhesive coated [t]he under section 1291. conducter [sic], placed on a mandrel for ques- also has raised the mounting in a will dispenser, do the same tion jurisdic- whether the district court had work in substantially the same way to tion to rule on the Trans Tech prod- second accomplish result, i.e., the identical same uct, which, according Interdynamics, was to lay pair down a parallel of conductors still at too stage tentativе a to allow the predetermined

at a spacing, on the rear window, district requisite court to rectangular to build a find the case or array to serve as a element. heating controversy parties. between the Trans naturally Tech that the proposed claims Id. judge therefore ruled that “the formulated, sufficiently and the product, marketed, new if would parties battle sufficiently lines between the be a contempt injunc- in violation of the drawn, added). permit tion.” Id. (emphasis adjudication. of We elect up to take question first the whether the rejected The district court also Interdy- district appealable; court’s order we be- namics’ claim application that Trans Tech’s justiciability lieve that our of will discussion in effect sought impermissible an advisory proceed more if set within the opinion logically relating to a that had been neither our of marketed even framework established treatment nor manufactured. Ruled the court: appealability.3 April petition provides petition filing On Tech filed a of a in bank- Chapter stay” Bankruptcy ruptcy “operates under XI of federal as of “the commence- a 362(a)(1) continuation, (Supp. 1978) including 11 Law. ment the issuance or U.S.C. II or §

164 - legal proceedings any further before of Jurisdiction Appellate II. on Trans imposed sanctions would be proposition that It is a fundamental could be con- we whether that order doubt appellate jurisdiction existence “[t]he within the mean- a “final decision” sidered type given federal court over specific 1291. Nor do we believe ing of section authority expressly dependent upon case is interlocutory as an appealable the order is Government of Vir- conferred statute.” However, we 1292(a). section order under Hamilton, 530 gin Islands pat- unusual procedurally have before us Cir.1973). addressing the mer- (3d Before context, for the rea- its, therefore must determine whether ent case. In that by the district court judgment follow, issued sons that we will read appealable an order. constitutes granting essentially as declar- court’s order atory relief and therefore hold District A. Nature of the Court’s Order decision, a final see appealable order is 1980).4 The order from which Trans Tech IV (Supp. U.S.C. § reads, part: in relevant “Trans appeals now forty years This Court elaborated almost making, using, selling or of rear win Tech’s declaratory judgment ago the function of exemplified by experi dow defrosters patent-infringement in a context: which is to the sample mental Exhibit C Declaratory passage Prior to affidavit, be a con McAulay would civil Act, in a patentee Judgment injunction Septem this tempt of Court’s position oppressive to make use of his [i.e., ber the consent In decree].” monopoly carefully asserted while avoid- terdynamics, Inc. v. Firma No. 78-647 litigation alleged the test of with an (D.N.J. 2, 1981) (order Oct. Further, infringer. [Citations omitted.] holding contempt). Trans Tech in Appel time, own patentee might, good his jurisdiction late will not lie in this Court for an account- alleged infringer sue the unless the district court’s order constitutes ing, large damages after on aсcount of a decision,” appealable a “final under 28 possible infringement had accrued. The (1976) (amended 1982), U.S.C. or an § ini- order, alleged infringer could not take the interlocutory appealable under 28 litigation challenge tiative in the valid- (1976) (amended 1982). U.S.C. § ity scope the patent. actually The district court did not hold remedy In of a declarato- providing rather, Trans Tech in contempt; it declared ry judgment Congressional was the in- Trans Tech “would be” in tent avoid accrual avoidable dam- “to only if the thereafter company proceeded to ages rights to one not certain of his produce and manufacture the second Trans with- early adjudication Because the district court’s to afford him expressly contemplated order the initiation waiting adversary out until his should see employment process, judicial, thorizing argue appeal of a adminis- counsel suffices trative, proceeding against section-362(a) stay. or other the debtor to lift the We therefore that was or could have been commenced before jurisdiction from the bank- see no threat to our the commencement of the case under this title ruptcy proceedings. However, ....” sometime before June Tech, by president, applied its controversy In a case of actual within its bankruptcy court for authorization to em- ..., jurisdiction of the United ploy appoint Lloyd McAulay and Fred I. States, filing appropriate upon the of an represent Sonnenfeld to Trans Tech before this pleading, mаy rights declare the and other pending appeal, bankrupt- in the Court and the legal any party seeking relations of interested cy 21, granted application on June declaration, such whether or not further re- Transportation Technology In Re Inc. sought. Any lief is or could be such declara- Inc., (Bankr.D. t/a ‍‌​‌‌‌‌​‌‌‌​‌‌​‌​​‌​‌‌‌​​​​‌‌‌​​‌‌‌​​‌​​‌‌​​​‌​​‌‍Trans Tech No. 82-02571 tion shall have the force and effect of a final 21, 1982) (order authorizing appoint- N.J. June judgment be or decree and shall reviewable special debtor). ment of counsel to as such. produced bankruptcy during court’s order 1980). (Supp. 28 U.S.C. 2201 IV § argument 25, before us on June 1982. We bankruptcy judge’s believe that au- order

165 suit, begin fit damage after had ac- the Declaratory Judgment Act, 28 U.S.C. crued.” E. Edelmann Triple-A (1976 & Co. v. Supp. 1980). 2201-2202 & IV How- § Co., Cir., 1937, 852, 7 Specialty 88 ever, F.2d a court is not bound procedural 854. This court emphasized that labels attached to the proceeding by the Act should have a liberal interpretation, moving party.5 What Trans Tech really bearing in mind its remedial character judicial sought was declaration of wheth- legislative purpose. and the er it press could forward with its plans for [Citations second Trans Tech omitted.] proceed by way chose to of an order to show Dewey Almy & Chemical Co. v. American cause because it believed that it thereby Anode, Inc., 68, (3d Cir.), 137 F.2d 69-70 speedier ruling would obtain a denied, 761, 70, cert. 320 U.S. 64 88 S.Ct. previously assigned judge, who al- (1943). L.Ed. 454 also Wembley, See Inc. v. ready jurisdiction had supervise Cravats, Inc., 87, Superba (2d 315 F.2d 89 standing injunction he had pursuant issued Cir.1963) (expressing similar concerns and to the 1978 consent decree. Although emphasizing that “the declaratory remedy might have been wiser for Trans Tech to should be construed with liberality have sued for a declaratory judgment, we field as in general”). We therefore are unwilling say, on the facts of this recognize declaratory judgments play a case, that Trans Tech committed a fatal special cases, role in recogni and our procedural blunder. tion of this role has influenced our charac terization of the district court’s order. We thus proceeding find the below to understand, course, essentially

We have been a declaratory-judg- this latest ment suit. proceeding brought by Assuming for the moment Trans Tech in the district court arose in the the district court posture properly of an issued what we order requiring Interdynamics relief, declaratory to show characterized as why cause Trans Tech should hold that be held in the district court’s order is appeal- contempt, and we acknowledge that Trans able as a final or decree under Tech did expressly elect to sue under 2201 sections and 1291.6 regard willingness 5. We note in this Litigation, as In re Arthur Treacher’s Franchise requests 1150, some courts to treat for (3d 1982), various other 689 F.2d Cir. and Fire types declaratory-judgment of relief as suits. Myers, man’s Fund Insurance 439 F.2d Co. See, e.g., McClung, 294, 834, Katzenbach v. 379 U.S. (3d Cir.1971), which hold that civil- 85 S.Ct. 13 L.Ed.2d 290 contempt generally directly ap orders are not (“we may complaint and do consider this [for pealable. We also note that the district court injunctive application as an relief] for declar actually adjudicаte here did not Trans Tech in atory judgment under 28 U.S.C. 2201 and §§ rather, contempt; it declared that Trans Tech 2202”); States, Horne v. United 519 F.2d contempt only be” in “would if it continued to (5th 1975) (barring “seeking Cir. suit re [tax] prepare the second Trans Tech for requesting deficiency fund and also that the be market. Because the district court did not hold declaratory judgments declared void” because contempt Trans Tech in of the 1978 consent may “plaintiffs not issue in tax cases and re decree, we neither reach nor decide issue quest deficiency assessment be de involving appealability post-judgment civil- attempt clared void is an to have the Court orders, question which we discussed declaratory judgment”); issue a McLeod v. Pe in Halderman v. Pennhurst State School Hos & terson, (3d Cir.1960) 283 F.2d 187-88 (en pital, banc). (3d Cir.1982) 635-36 (finding petition corpus inap for writ of habeas propriate petitioner because was not in custo contempt adjudication, The lack of an actual dy, treating complaint requested but as if it had however, apposite Major does not make v. Or temporary restraining declaratory order and Co., Inc., thopedic Equipment 561 F.2d 1112 judgment); Hogan, F.Supp. Pavia v. (4th 1977), upon Cir. re (N.D.Ga.1974) (treating prisoner’s federal Major brought against lies. involved an action attempt to file civil action entitled “Motion alleging a manufacturer a distributor viola Dismiss Detainer-Warrant” as action under distributorship agreement. tions of the Rights petition declaratory Civil Act and enjoined district court had (OEC) the manufacturer relief under 28 U.S.C. § terminating distributorship from 6. Because we treat the district court’s order as later held the defendant manufacturer tempt. in con declaratory, distinguishable (Major) again we find such cases When the distributor be- 166 Controversy apply determining an Actual in

B. Existence of should whether relief grant declaratory in case: that the district Our conclusion In actions con- declaratory granted what was in effect a declara cerning patents, prerequi- there are two tory judgment does not end our examina contro- sites to establishment of an actual appellate jurisdic tion existence of of the First, must have versy. defendant tion, whether for we next must consider engaged giving in conduct rise to a rea- case for the proper awarding this was a plaintiff’s part apprehension sonable declaratory relief. contends an suit or that it will face court should not have ruled of one if it the threat commences on the as the second activity question. continues the in [Cita- “experimental new invention was Second, plaintiff tions omitted.] sample” and could not engender therefore actually produced the accused must present controversy” “actual between the engaged preparations article or have parties. Because “the Declaratory Judg production such that requirement ment Act of an ‘actual contro finding but for a in- versy’ is identical to the constitutional re fringes extraordinary or for and un- ‘controversies,’ quirement of ‘cases’ and contingencies, plaintiff foreseen Marshall, (3d Cutaiar v. 590 F.2d 527 begin production would and could im- Cir.1979), Interdynamics’ argument strikes mediately. jurisdic at the core of the district court’s Plastics, Inc. v. Illinois Tool Sweetheart tion under Article III of the United States Works, Inc., (1st 439 F.2d 875 Cir. Constitution.7 We therefore must decide 1971) [footnote omitted]. whether the district court exceeded au its added.)8 (Emphasis adopting For cases thority in adjudicating this case. see, approaches, e.g., Super similar Products opinion Seventh Circuit’s recent in Corp. v. D P Way Corp., 546 F.2d International Harvester Co. v. Deere & Plastics, (7th Cir.1976); Sweetheart Inc. v. (7th Cir.1980), 623 F.2d 1210-11 pro- Works, Inc., Illinois Tool 874- perhaps vides what is comprehen- the most (1st Cir.1971). appre This “reasonable sive formulation of the test that a court hension and immediate intention and abili- gan represent manufacturers, dispose pending other OEC would of the case was below. injunction, position, filed a motion for clarification of the We do not find ourselves in such a as whereupon Major’s currently the court determined that there are no matters before the dis- injunction. Major appeal- Major actions violated the trict court. therefore does not advance ed, Interdynamics’ but the Fourth Circuit found the district case. unappealable court’s order because that order Littleton, 488, 493, 7. See O’Shea v. 414 U.S. Major contempt neither held nor took 669, 675, (1974) (com- S.Ct. 38 L.Ed.2d 674 though Major other action even it did find that plaint satisfy requirement must “threshold im- injunction had violated the and the contract. posed by Art. Ill of that those the Constitution appealed “It therefore cannot be [the order] power who court, criminal, seek invоke the of federal courts either civil or allege controversy”); dispose case, must an actual case or and since it did not McCormack, 486, 517-18, Powell v. 395 U.S. order is not final.” 561 F.2d at 1115. (1969) (availa- 23 L.Ed.2d 491 Major inapposite S.Ct. We believe to be to the bility declaratory “depends present First, relief on whether case for several reasons. dispute parties”). there is a live between the Major purported nothing order issued to be standing more than a clarification of the in-

junction; express it lacked the invocation of We realize International Harvester va- contempt that we find in the case before us. cated the of the district court order because Second, immediately controversy after the district court had Seveñth Circuit found no actual Major, declaratory-judgment issued its order in OEC filed a motion to ac- could sustain injunction; dissolve the the motion had not tion. refer to this case because it enunci- We legal precepts. been considered the district court ates the relevant For the rea- appeal below, however, previous proceeding time the sons forth see infra note set 172-174, pages reached the Fourth Circuit. the Fourth we believe that Interna- being opinion distinguishable Circuit was asked to rule on an tional on its Harvester is facts advisory asserted to be while a motion that from the case before us.

167 test ty” comports uncertainty gave with the standards we of obligation which rise to recently Rengo Ltd. v. adopted Co. Mo controversy; (2) the the convenience of the 535, Inc., (3d lins Machine 657 F.2d 539 (3) parties; public interest in a settle- 1055, denied, Cir.), cert. 454 U.S. 102 S.Ct. uncertainty obligation; ment of the 600, (1981) 70 590 (holding L.Ed.2d that (4) availability and relative convenience potential infringer have immediate must in remedies,” Opera- of other Bituminous Coal invention, ability practice tention and to Association, tors' Inc. v. International Un- and quoting from the Circuit’s Seventh Su ion, Workers, United Mine supra, 585 F.2d per Corp. P Way Corp., Products v. D supra, (footnote omitted). at 596-97 Based on the 753-55, 546 requires F.2d at which also that us, record before we hold that the district moving party apprehen have “reasonable court did not abuse its discretion in deter- suit). of facing infringement sion” mining reasonably that Trans Tech feared approach We our inquiry with the another proceeding brought by recognition that 28 2201 has been U.S.C. § Interdynamics and that Trans Tech demon- interpreted as to granting the district court requisite strated the immediate intention the discretion whether declaratory to award ability produce the second Trans relief, Operators’ Bituminous Coal Associa tion, Union, Inc. v. International United Workers, 586, (3d Mine 585 F.2d 596 Cir. 1. Reasonable Apprehension. 1978); the district grant court’s decision to begin We one proposi- our discussion with such relief will not be reversed the ab tion that all apparently has united courts discretion,9 sence an abuse of Exxon question: considered the in order Commission, v. Corp. Federal Trade 588 ap- to demonstrate the requisite reasonable 895, (3d Cir.1978).10 F.2d 900 We therefore prehension a patent-infringement or con- must evaluate the propriеty declaratory tempt proceeding brought by Interdynam- against a background relief deference ics, prove Interdy- the district Tech need not court’s exercise of its discretion in balancing “(1) expressly such factors as namics has threatened to likeli take hood that Instead, the declaration will resolve legal against action Trans Tech.11 appear [Wjhere juris- 9. We realize that other circuits to have the district court has declined adopted slightly diction, merely different standards of review. we will not reverse because See, e.g., National Health Federation v. Wein differently, we would decide but decision Cir.1975) berger, 711, (7th (“A 518 F.2d 712 jurisdiction given will to decline be closer lth ough remedy discretionary with the normally scrutiny given than on an “abuse of court, may judgment trial exercise our own recognize that discretion” review. We other determining declaratory whether a suit for applied the error” courts have “mere stan- injunctive entertained.”); relief should be context, of review in this but the law of dard Corp. Corp., Broadview Chemical v. Loctite 417 contrary. this court is 998, denied, (2d Cir.1969), F.2d cert. (footnotes omitted). passage Id. We read this 1064, 1502, U.S. 90 S.Ct. 25 L.Ed.2d 686 emphasizing the existence of an abuse-of- (determination grant of trial court declarato discretion standard of review where district “ ry ‘may where, though relief ... be reversed deny, grant, than court has chosen to rather arbitrary capricious, it was nevertheless declaratory relief. Moore, ”) (quoting Moore’s erroneous’ 6A J. Federal Practice 57.08[2], (2d j| at 57-37 ed. See, e.g., v. Internatiоnal Harvester Co. Indeed, proposes Professor Moore Co., supra, 1211; Deere & Graf 623 F.2d at position appellate “sound ... court Corp. Hausermann, v. 602 F.2d 783-84 may substitute its Super Corp. 1979); P (7th Products v. D Cir. Moore, supra, lower 6A court.” J. at 57-37. Way Corp., supra, 753-55; Sher F.2d at Industries, Inc., Deknatel, wood Medical Inc. v. 10. Because we stressed in Exxon that “the De- (8th Cir.1975); Robin 512 F.2d 727-28 claratory ‍‌​‌‌‌‌​‌‌‌​‌‌​‌​​‌​‌‌‌​​​​‌‌‌​​‌‌‌​​‌​​‌‌​​​‌​​‌‍Judgment should Act ‘have liberal Tomecek, v. Products Co. interpretation,’ we deter- 588 F.2d at Plastics, (6th 1972); Inc. v. Illi Sweetheart Cir. mined that “the ambit of the district court’s Works, Inc., 874; Tool nois 439 F.2d at discretion is somewhat circumscribed and the Corp. Corp., su Broadview v. Loctite Chemical range correspondingly of our review is en- pra note 417 F.2d at 1000. larged” when the has denied de- relief, claratory id. justiciable patent.12 Budge make out a con- Interdynamics, Trans Tech can Inc. “ merely by showing indirect troversy ‘any Co., Inc., 25, (D.N.J. No. 75-1826 June Mfg. charge or covert or implicit contempt] or 1976) (order decree). [of entering consent any threat suit ... conduct or course or] [of produced When Trans Tech then the first any charge of action from which or threat product, Interdynamics again Trans Tech could be inferred.’ Robin Products Co. v. action, way took this time of an legal by Tomecek, 11, supra note 465 F.2d at 1195 cause why order to show Trans Tech should Chemicals, (quoting Goodrich-Guif Inc. v. contempt violating not be held in for Co., Phillips Petroleum signed part that consent decree had been (6th Moreover, Cir.1967)). we must stress proceeding. of the 1978 that, applying “in these rules to fact situa- for the third time Trans Tech now sеeks tions before them to determine whether or to manufacture and market a rear-window not there an ‘actual controversy’ courts defroster, Tech product a which Trans pragmatic judgment, should make a aware correctly, according to the district of the business realities that are involved.” feared — might merely be found to be color- Industries, Sherwood Medical Inc. v. Dekna- court — tel, Inc., ably previous prod- different supra note at F.2d 728. prior ucts.13 Based on Interdynamics’ long history litigation of this already course of conduct toward both Trans Tech has been set forth in almost tedious detail. Co., Budge Mfg. say we cannot either We need only recapitulate highlights. that Trans Tech feared Inter- unreasonably When attempted Trans Tech in 1978 to dynamics’ wrath or that the district court market Interdynamics Wolf granting committed reversible error patent Moreover, sued for infringement. what declaratory judg- we consider to be a Interdynamics already had sued another al- ment.14 leged Nor have we infringer any and had obtained a discovered case consent decree admitting infringement denying propriety against and ac- of such relief knowledging the of the validity Barnard a backdrop similarly ominous facts.15 finding sufficiently apprehen- Interdynamics 12. In “reasonable 15. relies on the Seventh Cir- legal proceedings, sion” of future several cases cuit’s decision in International Harvester v.Co. legal have by supra, noted the relevance of action taken Deere apprehension & found insufficient patentee against alleged infringers. other legal action to sustain Interna- See, Industries, e.g., Sherwood Medical seeking declaratory Inc. v. tional Harvester’s suit Deknatel, Inc., 728; supra note at product F.2d infringe that its did Plastics, Works, Sweetheart Inc. v. Illinois Tool by held defendant Deere. Harvester Inc., supra, 439 F.2d at 874. sought apprehension” to establish “reasonable by emphasizing (1) already parties had Corp. 13. Cf. Broadview Chemical v. Loctite engaged litigation involving the same Deere Corp., supra (reversing note 417 F.2d at 1000 patent, enjoined and Harvester had been from declaratory failure of district court to entertain infringing patent; (2) further Deere had finding “history litigation action and of fierce refused to confirm that the new de- parties” justicia- between the to be evidence of “partial drawing” tailed in a submitted to it controversy). ble infringe patent; Harvester did not Deere’s permit Deere stated that it would had Har- emphasize importance ongo- 14. We produce upon payment vester to its new device ing injunction stemming from the 1978 consent money. 623 F.2d at 1211-13. The district injunction decree. This allowed relief, granted declaratory proceed and the Sev- against to way time reversed, perceiving enth Circuit no con- contempt actual proceeding, of a which is more troversy. summary bring and less burdensome to than is Interdy- full-blown suit. Cf. findWe International Harvester to be distin- I, supra, (abbreviated First, guishable namics 653 F.2d at 97 -98 for several reasons. unlike contempt proceeding necessary designing nature of Trans Harvester was not its prevent patentee having expense subject ongoing from to bear new while to an in- reestablishing scope pat- junction; stayed of its the Seventh had Circuit congruence allegedly infringing prod- injunction against imposed by ent’s with Harvester uct). Thus, standing injunction suit, previous and the district court in the 623 F.2d at availability remedy Second, contempt concomitant of a 1211 n. do not see in we potent weapon history constitute Interdynamics. prior litiga- in the hands of International Harvester a parties tion between the as intense as that thus appre- Interdynamics I, We find the “reasonable decision in Court’s two-part hension” of our requirement test Trans Tech had accepted “substantial or- been satisfied. ders” the first Trans Tech McAulay Aff. “Much of this busi- H13. Immediate Intention and Ability. can ness be retained if Tech can immediately provide an alternate Although found which will permit the installation a rear reasonably feared a an window defroster as after market item.” infringement proceeding brought by Inter- But, Id. in order to accommodate these dynamics, we still must determine whether “ orders, Trans Tech the possessed ‘immediate in ” dispenser the has ability’ produce design improved, tention to be to the second fabricated, product the has to product,16 Tech be orders Rengo Co. v. Ltd. a Co., Inc., placed supplie[r] have to be with for the Molins Machine at supra, 657 F.2d tape component and ship- (quoting Superba Inc. Wembley, v. Cra ments to vats, heavy have be made. Yet the Inc., supra, 315 F.2d at This marketing season for Trans aas ability” “immediate intention and must defrosters, manufacturer rear window have at the existed time Trans Tech filed August through December. Every day its motion in the district court and must passes that from on in liekly here have been evident from papers the sub [sic] to mean lost business. mitted to that court. International Har Co., vester Co. v. Deere at supra, & concluded, Id. at McAulay 14.18 1i 1215.17 position having “Trans Tech is in a to fill orders for its next within the few to Tech submitted the district court or out going weeks of business.”19 Id. at the attorney, Lloyd affidavit its McAu- affidavit, We 10. believe that cou- f who lay, stressed Trans Tech’s to desire conduct, pled with Trans Tech’s prior amply proceed immediately with its plans the demonstrates an immediate intention to second Trans Tech product. McAulay dis- produce the second Trans Tech cussed the previous demise of Trans Tech’s to a attempts however, market rear-window Interdynamics, def- argues that, roster and stated the time of ability immediately this Trans Tech lacked the Third, Co., Inc., supra, which we in case the before us. Ltd v. Molins Machine the Seventh Circuit “of called some relevance” F.2d at 539. Other courts have taken the same pending litigation the See, existence between the position. e.g., Harvester International Co. relating parties infringement; to the first in- 1215; supra, v. Deere & 623 F.2d at Sweet deed, expressly the court relied on the fact that Works, Inc., Plastics, heart Inc. v. Illinois Tool prior pending “the still suit here is and the 75; supra, Wembley, 439 F.2d at v. Inc. 874 — injunction initially issued had been [sic] Cravats, Inc., Superba supra, F.2d at 89. stayed” distinguish in order to International Corp. Harvester from Broadview Chemical actually requires 17. International Harvester Corp., supra Loctite note in “ which the ‘this intention should be “evident” from grant Second a to Circuit reversed failure de- preparatory steps outlined in com- [the] claratory in relief an case. 623 Wembley, plaint.’ (quoting F.2d at 1215 F.2d at 1212. Trans Tech and Inc., Cravats, Superba Inc. v. 315 F.2d at engaged any litigation pending are not other 90) (emphasis added). Because Trans Tech ex- court; any before other nor were such pressed ability an its intention and affidavit proceedings pending when the district court application for to attached to its cause, an order show ruled on Trans Tech’s motion. We therefore do compliance we find substantial with the signifi- not believe that International Harvester Wembley require- and International Harvester cantly Interdynamics’ argument. advances quoted ment above. actually 16. Trans Tech does not claim begun produce proposed rear-win- August 18. The affidavit is dated held, however, dow defroster. We have manufacture, use, actual sale “[t]he or of an above, peti- filed As we noted a allegedly infringing device is a not condition bankruptcy April tion in on 1982. See precedent seeking declaratory a suit relief supra note 3. against patent.” Rengo the holder of the Co. mereially produced be- or sold. As such the defroster manufacture non-justiciable.” Brief for experi- Appel- cause in an issue is 11-12. stage. McAulay mental The affidavit itself lees at (the refеrred to “Exhibit C” second Trans court, displaying considerable sample,” an product) “experimental knowledge sophistication, engaged 17, and various McAulay Aff. at detailed colloquy extensive with counsel technical in the expected changes current version: rejected and emphatically Interdy- matters modified; (1) (2) would dispenser be argument. viewing namics’ Far from used, dual but tape probably “will be design “experimental” sample’s as too in- design single tape triple could entail permit adjudication, judge definite (3) tape’s tape”; ap- width would be product’s perfectly essence to be found of an inch and proximately one-sixteenth unambiguous: inch, sam- one-quarter of as on the going THE You’re to have a COURT: ple, employed apply the adhesive you’re going on which to mount mandrel tape to the would automobile window spacing, tape given two rolls have a color. Id. at 11A-D. red-brown 1fH go the mandrel will in some sort of holder However, “[a]part form the width of [sic] to enable the two to come out at stripes (and the tape coloring the addition of the and be in applied approximately the end above), tape mentioned to a identical parallel position spacing. at that product presently being as a manufactured MR. MC AULAY: That’s correct. sensing tape with recording tape for use on THE COURT: All right [sic]. tape recorders.” Id. at 11E. McAulay If Inc. Interdynamics, v. Firma No. 78- further stated that Trans Tech planned Hearing (“Hearing”) (D.N.J. Tr. of purchase from a tape manufacturеr 9, 1981), Sept. App. 365. who it usage made “for other and thus Throughout Tech is not one hundred fa- percent hearing on the show- miliar order, with the exact of constituents cause the court demonstrated its 11F, tape,” id. at but McAulay convey skepticism did about the importance of de- f “understanding] Tech’s the com- by Interdynamics of tails offered as evidence position tape. of that Id. at 11F-G. Ac- of the second Trans Tech product’s alleged- Tlf however, cording Interdynamics, ly First, these tentative and state.20 amorphous uncertainties placed Interdynamics’ and modifications the court dismissed conten- position court in the “rendering] sample tion the experimental provided that respect decision with to an experimental design no clue as to the ultimate of the that admittedly will com- dispenser not be that would house the mandrel.21 20. variety dispens- district court did not the fact discuss FEY: There are MR. tape sample that the in the used was of color I ers which have seen— Functionally they different from that intended to be used THE COURT: aren’t product; assume, however, final very shall different. utterly Hearing 7-8, the court App. deemed that incon- difference at 355-56. Counsel sequential. judge’s later confirmed the district analysis of the They MR. 21. MC AULAY: container will put THE [T]he COURT: want it [the probably tape] be dispenser, they modified. on a don’t have thing THE COURT: More the kind of at like the moment. mentioned, dispenser I right. for skotch MR. FEY: That’s tape? THE [sic] COURT: You know look what those MR. MC AULAY: It could well be. There like. problems angle problems there are are MR. I no FEY: have idea. things оf feed and like that. say you THE You can’t have COURT: no you up way you your THE COURT: If set it tape idea. Don’t use so much problems. wouldn’t you dispensers there be such It is a office? Don’t where feed, right? tape direct there is a roll of with a teeth cutoff with MR. MC correct. you dispense AULAY: That’s tape can where then 16-17, App. Id. 364-65. cut it off? Furthermore, noted, feature, dispenser yet, the court And as to this there actually is not an essential feature little uncertainty: either the against measured Barnard THE ... COURT: product.22 or the Wolf Nor did the court dispenser] going Is to dispense one [the potential find changes tape width23 stripes or two at the same time? be composition24 significant. dispense MR. MC AULAY: It will two Moreover, itself admitted stripes. Those are the present plans. only components two critical of the THE Spaced? COURT: Barnard were the method of main- MR. Spaced MC AULAY: from one taining “appropriate space relationships be- another. That spacing showing tween the conductors”25 and the use of stripes being dispensed, is embodied some of double-layer, kind “sandwich” de- in this that was submitted. accomplish vice to the packaging appli- THE COURT: The sample? Thus, cation of the electrical elements.26 MR. AULAY: MC Yes. all the changes experi- various between the Hearing at 356.27 App. mental the court model and the final one —the saw no tape ruling dual to an essential obstacle to its on the order to —related element patent, of the Barnard spacing. show cause. 25. 24. 23. MR. FEY: I Hearing addressed to a Hearing Hearing Minnesota isn’t which is an tiffs? appropriate space install it to obtain an tape conductors is an aluminum. heat. would infringement be or some other conducter much matters whether the foil is aluminum ance to electrical it? because Mr. something rather one-quarter proclaimed its tentative character.... Hearing App. THE COURT: MR. FEY: Because the MR. FEY: THE Now, suppose THE COURT: So we know what MR. FEY: That’s THE COURT: MR. MC AULAY: That’s correct. THE COURT: ... THE COURT: part in the with a a 16th of an inch wide at at at they COURT: 26-27, Mining generate 13-14, [Barnard] conducter (Mr. Fey diagram showing App. important inch wide in the [Trans Tech] Probably construction which enables the if McAulay ^[1978] they say App. App. this were They Why? would be in 355. It is a App. basic, relationships [W]e the aspect speaking) correct, your patent [the injunction, sold a [sic] 374-75. See also id. at 361-62. want it not, aspect array requisite in his [sic]. sample conducter are maintaining only single tape, of suitable resist- that of our invention your be roll (“The dispenser sample]; the user how to trouble.”). I [the of it. (“Our [as like the talking guilty There don’t think it a says affidavit between the of 16th inch Honor. is] Honor. opposed amount of tape] it? tentative [sic], is of ... If it is that has to plain- about noth- it is. to be is, 27. The court noted that the heating elements: penser Hearing what stripes maintenance of these lationships out a on which the two roles mounted. rill with two well. no one pulled would it? the Barnard if there were no [i.e., lay [i.e., wires] ed. strips, overlying those Something series of them in a row and he tool THE THE THE MR. FEY: No THE MR. FEY: No I submit it MR. FEY: If he didn’t roll it but had a MR. FEY: I think the THE COURT: ... If covering [sic]. sheet with two array the window] would not affect the dispenser at not flat, COURT: COURT: COURT: off, COURT: out accomplish 41-42, in the stripes The mandrill [sic] rolled, You that can be of wires on the it wouldn’t be an parallel strips] on it. not patent would can [electrical] App. covering application you No contempt. infringement. You can do the same on I’m not just any Something stripes it, that end result appropriately spaced contempt. space and have it come off was.”). can or the Wolf be an talking stacked, 389-90. pulled then another— [Trans Tech] answer to that [sic] material of put on design that. Even with- with elements— window]. of the conductor is this little tube covering spacing off and discard- it, about it on the in a equivalent that can be just then another material box, product], [i.e., lay- separate sold a mand- [sic] the dis- of the is That’s layer. thing glass with that sort [the are off re- [to if not spirit, fits the the dis Tech’s situation within say We either that cannot letter, Rengo.29 the finding error court committed clear trict to be suffi the second Trans Tech do by Interdynamics us The cited to cases Interdy- the developed or that court abused ciently a different conclusion. compel deci- heavily the recent relied on namics has dispute. the adjudicating its discretion in Deere Harvester Co. sion in International us, say, the facts before that Nor can we International a suit which & Trans Tech has as a matter of law to failed a declara- (“Harvester”) sought Harvester ability “immediately” demonstrate its its corn head” ‍‌​‌‌‌‌​‌‌‌​‌‌​‌​​‌​‌‌‌​​​​‌‌‌​​‌‌‌​​‌​​‌‌​​​‌​​‌‍tory that “CX-41 device. produce market Deere. held infringe did not litigation revеals that history held The Seventh Circuit 623 F.2d at 1210. experience had considerable ac- could not maintain Harvester defrosters; with in dealing rear-window an “im- tion it had failed to show because deed, of a the facts “establish existence produce ability” mediate intention directed to enterprise specifically business F.2d at 1215-17.30 the CX-41. 623 a potentially and sale of manufacture key to International We believe infringing product,” Super Corp. Products language: following in the Harvester lies supra, 546 753.28 Way Corp., v. D P F.2d at will is not that the CX—41 Our concern Rengo passing We note in our decision in that be- but rather produced, never be Co., Inc., supra, Ltd. v. Machine Co. Molins of its relatively early stage cause of the “had company in which we held that a is before which development, design done no more than advertise and solicit design us not be the may now change its orders new instant order For and marketed. ultimately produced begun apparatus yet had not the man [but] this to be in a case such as decision equipment,” ufacture or sale opinion, advisory than an anything other challenge validity at could prod- must establish plaintiff is the same patent. believe uct competitor’s presented We that Trans that, “[b]y Rengo spaced dispenser emphasized in adver- with all. no It is less We convenient, talking soliciting orders, tising what we Molins manifested but that’s are about. the ac- intention’ to manufacture ‘definite Hearing App. Although 657 F.2d at 539. cused device.” yet solicited had not advertised or by Super brought 28. Products involved a suit proposed product, the affida- ordеrs for its new plaintiff Super to invalidate Products defendant company vit of its counsel established that Way’s patent relating D P to “a for machine outstanding previous had orders for a cleaning that includes a self- industrial vacuum fol- removed from the market which had been cleaning filtration device.” 546 F.2d at 750. I, lowing Court’s decision in this By complaint, Super the time filed its Prod- every make and that Tech would developed general design ucts had “a for an orders a few weeks effort to fill those manufacturing within plans with nine industrial vacuum cleaner for product. the second Trans company 752. The al- models.” F.2d at 10, McAulay 12-15. We view See Aff. ready process building parts was “in for outstanding as of these orders the existence machine,” offering “description” was significant. prospective machine and its variants customers, “actively soliciting or- and was pri- decision based its 30. The Seventh Circuit D P ders.” Id. The district court invalidated inability perceive any marily “reasona- on its Way’s patent, firmed, the Seventh af- and Circuit infringe- apprehension” of an ble Harvester argument rejecting defendant’s suit, 15, supra note reached the and ment see considering plaintiff “merely was the advisabil- only ability” question intention “immediate ity commencing production of its industrial basis the conclusion alternative “an complaint time the vacuum cleaner at the filed,” Thus, I,” 623 F.2d at 1215. reached in Part Although Super 546 F.2d at Prod- 753. two-part latter of the of this element discussion arguably produc- was closer to the actual ucts dictum, pure unneces- test be considered could Teсh, stage read tion than was Trans do not pursue sary holding. not We need to the opinion as, requiring a Seventh Circuit’s the finding however, distinguish In- approach, in order to enough not that Trans Tech was close case before us. Harvester from the ternational requisite to demonstrate the ty” “immediate abili- begin production. future produced which will be if adjudication a decla- not seek an with respect to a noninfringement ration of is obtained. complicated piece of machinery; it has brought F.2d at 1216. Harvester’s before the CX-41 was a Court some strips big, complex Development machine.31 in- of an adhesive-coated conductor wound stages: volved three “basic design, testing, spindle around a dispens- contained in a production, including tooling.” revised er. As the district court opined: “This is 623 F.2d at 1215. of May As primitive about as type object as I can suit, date on which Harvester filed its imagine. This is not like a harvesting ma- CX-41 gone through had design stage 19, Hearing chine.” App. 367. Because and had entered the experimental stage. primitiveness of the design, the court gear Id. One already case had been sub- found far less danger than there inwas jected to 1500 hours of laboratory testing, International Harvester that the prod- final but yet perform Harvester had similar uct would differ significantly from the ex- tests on two to five more gear cases. Id. perimental model.32 We agree. Furthermore, the complete CX-41 had yet been field-tested in the United States. Second, because of the difference in com- 623 F.2d at 1216. The testing stage was plexity between the CX-41 and the second expected to continue into and Har- Trans Tech product, production actual vester generally required a full-season test the final model was much less imminent in sending before the model produc- into the International Harvester than in the case at stage. tion May Id. as of 1979: bar. Harvester’s complaint, filed on May production built, CX-41 had been [n]o “ 25, 1979, alleged that the company ‘pres- although a complete experimental model ently plans begin production of the CX- constructed; had been no production 1981,’ 41 in early 623 F.2d at almost made; parts had been had [Harvester] years two after the commencement of the provided no description of the CX-41 to lawsuit. hand, on the other its dealers or customers nor begun had it expressed its begin production intention to orders; efforts to solicit no maintenance filing within weeks of suit several if it were manuals, operator’s manuals or advertis- judicial to receive clearance of its ing materials compiled; had been McAulay See Aff. at

tooling was in its early stages. Id. Third, the Seventh Circuit noted that yet

The case Harvester had not solicited orders before us is far different from International Harvester. Trans Tech does for its CX-41. 623 F.2d at 1216. As we gear relates to the drive and tion which achieved a result and effect for support corn-harvesting practitioners for a long row unit. In art had stri- essence, comprised a row unit is of two deck ven. plates passage with a restricted therebet- International Harvester Co. v. Deere & ween, gathering F.Supp. (C.D.Ill.1979), chains and two harvest- 412-13 vacated and gathering opposed remanded, (7th Cir.1980). rolls. The chains are 623 F.2d 1207 parallel to each other on either side of the THE COURT: [International Harvester] passage plates. They restricted between the good doesn’t bind me. I don’t think it’s law. function to draw the stalks of com into and case, may It have been suitable in that de- along length passage. the of that The har- pending complexity on the This [of CX-41]. vesting opposed rolls are likewise on either product] quite second Trans Tech is [the passage. They side of the function to draw primitively simple. through passage the stalks downward the to against plates draw the ears of corn the saying design] ... I’m the alternatives [in thereby snap to and remove the from ears the very, very very simple. are It few and isn’t processing by stalk for the com combine. lay array difficult the whole of to out choices art, All of such mechanism is old in the is and rule one one. That wouldn’t be the gears the use of drive and drive trains to machinery piece harvesting a case with of operate gathering the chains and the rolls. permutation where the combination and patent was held valid reason of the maybe astronomical. rearranged fact that the inventors had essen- Hearing App. 392-93. 44— tially old elements in a non-obvious combina- decree) applied the doc discussed, however, al- the consent Trans Tech “ These orders had two devices do ready equivalents; had orders on file. trine ‘[I]f the first Trans Tech substantiаlly submitted for the same been the work in same it Tech believed that product, but Trans substantially the same way, accomplish by providing would be able to fill orders same, dif result, though are the even they ” product Tech as a suitable the second Trans name, shape,’ Interdy in form or ferent 10,13. McAulay Aff. at alternative. See HI II, slip op. (quot note supra namics Tech’s There is no reason to doubt Trans I, 653 F.2d at Interdynamics supra, belief. to determine that the proceeded The court “will do the product reasons, second we deem Inter- For all of these way the same to substantially to same work in inapposite Harvester the set national as the the identical same result” Wembley, Superba accomplish facts us. Inc. before Cravats, Inc., therefore, Plas- supra, product; and Sweetheart the former Wolf tics, Works, Inc., supra, v. Illinois Tool Inc. different” from colorably “no more than distinguishable.33 We thus similarly II, are supra, note Interdynamics the latter. court did not abuse its find that the district finding, on this slip op. at 5. Based determining discretion in that there was an “making, us judge ruled that district controversy” parties “actual between the selling” of the second Trans Tech ing, or entertaining essentially and in Trans Tech’s contempt would be a civil action. declaratory Inc. v. Fir injunction. Interdynamics, 2, 1981) (D.N.J. ma No. 78-647 Oct. Colorably Differ- Merely III. The Merits: Tech in (order holding Trans judgment ent? contempt). above, court, The district as we noted strongly criticizes the reached the merits of Trans Tech’s motion court, by the district approach adopted pro- question and ruled on the whether (1) the second Trans Tech claiming that duction of the second Trans Tech be in product can neither would violate the 1978 consent decree. Ad- the Barnard infringe consent decree nor hering expounded by to the rules this Court the Barnard does not I, patent because in 653 F.2d at 98- employing dispenser kit a device claim a defroster compared court element; (2) the (the subject heating with the to feed out the original Wolf machinery Wembley sought or in- ei- Sweetheart did not retool its 33. Plaintiff in regular product invalidating partic- ther defendant’s on clude the new containers its “ id.; moreover, declaring plaintiffs ‘pro- line, expressly ular necktie or viewed the infringe posed’ cups necktie did not defendant’s fail-back which it intended as a patent. By relating at 88. the time it filed produce only pending 315 F.2d case if it lost a suit, plaintiff produced single sample had designs, at 875. The First to other tie, for its which it had submitted to defendant plans to be therefore held Sweetheart’s Circuit acknowledgment non-infringement. contingent adjudication. Id. The court too “[tjhis F.2d at 89. The Second Circuit held that fact that related also based its decision single quite compari- act ... insubstantial litigation place in Seventh Circuit had taken steps actually son with the taken certain of expedient tap the be more and that “it would supporting jurisdiction the cases ....” [i.e., expertise acquired of these two courts already far F.2d at 90. Trans Tech has exerted court in Seventh and the district Chica- Circuit greater Wembley; effort than did it is now compelling go] an- rather than a second time trying produce for the third time and market patents interpret with the same other simple product, it will be able to manu- Indeed, Id. respect to similar containers.” relatively quickly. facture expressed Chicago had its will- court in pattern repeated attempts to This of several adjudicate Id. ingness Unlike the matter. new, design product non-infringing is also Sweetheart, forum to Trans Tech has no other Plastics, Inc. v. Illinois from Sweetheart absent Moreover, repair. Trans Tech has can which it Works, Inc., supra, plaintiff Tool in which energy preparing a more time and devoted merely expired patents and resurrected several production than had Sweet- new device plastic cups made a sale” of 100 based “token heart. designs. at 872. one of three 439 F.2d

175 instructed, trial court of applying precisely erred doctrine as we and we will not equivalents without claims referring to the relitigation now allow of the questions of (3) enumerated in the Barnard patent; Interdynamics law decided in I. file-wrapper estoppel34 pre-' doctrine of prevail Trans Tech can in this only action application eludes equiva- doctrine of by showing that the district court commit- lents; (4) ruling the court erred in on ted reversible in finding error the second contempt question comparing without Trans Tech product “merely colorably dif- the second Tech product to the Bar- ferent” from the product. Wolf patent nard because the consent hearing At the judge, before thе district enjoined Trans Tech only infringing “from counsel for Trans Tech elaborated various any patent claim of Barnard United States differences between the second Trans Tech 3,757,087.” addition, In Trans Tech insists product product: (1) and the Wolf the Wolf that its new rear-window defroster is more sheet, product had a cover whereas new than colorably different from the Wolf not; (2) Trans Tech invention did the Wolf product. product utilized a backer or transfer sheet Tech, however, totally ig absent from the second Trans Tech product; impact nored the of our Interdy decision in (3) the Wolf two layers bore I, supra. panel liberty namics This is not at adhesive, layer one on either surface of the to overrule the decision of the prior panel; element, heating but the second Trans rather, I Interdynamics binding upon us had adhesive on one surface of both as precedent a matter of and as the 61, heating strip. Hearing App. 409. law of the case.35 Interdynamics required I Moreover, argued, the new def- court, in a proceeding, install, 61-63, roster was easier id. to compare at issue with the 409-11, App. expensive and less to manu- device, Wolf patented not with the facture, 65, 413, App. id. at than was the and to evaluate any differences between court, however, the two inventions Wolf The district by applying the doctrine equivalents. The district court here did merely found these asserted differences col- file-wrapper estoppel pro- ap- The doctrine of detachable sheet were eliminаted from the patentee vides that plication. where a abandons or re- Trans Tech claims that this file- narrowly rejec- drafts a claim more to avoid wrapper history preempts the doctrine of art, prior tion on the basis of then the sub- I, equivalents su- enunciated in originally stance of the claim as drafted that pra, 98-99, scope 653 F.2d at and limits the thereby recaptured excluded cannot be consisting products the Barnard by equivalents. resort to the doctrine [Ci- heating elements sandwiched between two tations omitted.] sheets. theory The doctrine is based on the that the of this former decision “[A] [be- prior public art is either in the domain or and, the law of the case once the law already patented, comes] patentee may so that court, by appellate is settled it is part By a case not claim it as of his invention. redrafting abandoning settled for that tribunal as well as for the trial a claim in the face * * * prior rejection, court, patentee of a art is con- save for new or facts. different ceding may that he has not appeal invented what he A second not be used to raise disclaims, thereby and therefore will not be questions already put in the same case at rest assert, date, heard to at a later what he by upon prior appeal.” the same court disclaimed as his invention. Lehigh Navigation Antonioli v. Coal & 451 Sons, Corp. Inc., Trio Process v. L. Goldstein’s denied, 1171, (3d Cir.1971), cert. ‍‌​‌‌‌‌​‌‌‌​‌‌​‌​​‌​‌‌‌​​​​‌‌‌​​‌‌‌​​‌​​‌‌​​​‌​​‌‍F.2d 406 1178 denied, 66, (3d Cir.), cert. 75 409 U.S. 906, 1608, U.S. 92 S.Ct. 31 L.Ed.2d 816 319, (1972). 93 S.Ct. 34 L.Ed.2d 262 It States, (quoting A.S. Kreider Co. v. United appears that the inventor of the device describ (3d Cir.1940), on other rev’d F.2d patent originally applied ed in the Barnard had grounds, 313 U.S. 61 S.Ct. 85 L.Ed. heating for a on a defroster kit with omitted); also Unit (1941)) (footnote see elements, adhesives, sheet, mounting but Bag Paper Corp., ed States v. American & protective without kind of cover or sheet (3d (“inasmuch Cir.1979) 1067 n. 3 F.2d that would make a “sandwich.” The Patent prior panel stands as the determination Interdynamics, claim, rejected see Office case, panel present the law of this ... F.Supp. Inc. v. Firma at 25 2 n. it”). bound (D.N.J.1980), whereupon single the claims for a 176 finding must exist before we will reverse equivalents the doctrine of

orable under I, clearly this in erroneous. Id. prescribed by Court of fact as 653 F.2d 98-99. review, of Applying scope this reviewing finding equiva of In court com conclude that the district cannot this must ac infringement, or Court lence finding reversible error mitted court’s the district determination un cept “merely to be second clearly it erroneous. Minnesota Min less from, essentially colorably different” or In Manufacturing Co. v. Berwick to, Both the Wolf equivalent dustries, Inc., 330, (3d 532 F.2d 332-33 Cir. conducting strips utilize twin of products Corp. Devex v. Motors See General lay the user to tape; both devices enable 347, (3d Cir.1981) (two Corp., 667 F.2d 359 elements, at array heating of parallel out a 988, 456 102 cases), granted, cert. U.S. interval; both sets of heat spatial a fixed 2267, (1982), 1283 cert. 73 L.Ed.2d S.Ct. of to the rear windows ing elements adhere denied, 2270, 102 73 456 U.S. S.Ct. pressure-sensi automobiles means of a by Products, Inc. (1982); L.Ed.2d 1285 Hadco coating. The Wolf tive adhesive Co., (3d F.2d 464 v. Frank Dini 401 heating ele protects the adhesive-coated Cir.1968). pro The has Supreme Court sheets; separate top ments with and bottom claimed that lay those protective function served finding of is a determi- equivalence [a] in the second Trans approximated ers is any other issue nation of fact .... Like backing product by the low-adhesive fact, requires a of final determination mounted on the mandrel. of the conductor balancing credibility, persuasiveness of short, then, say In we cannot the dis It weight of evidence. is to be decid- either finding equivalence trict court’s of ed the trial court and that court’s “no credibility lacks hue of or bears decision, of general principles ap- under evi relationship supporting to the rational review, pellate not be disturbed should data,” Dinan, supra, Krasnov v. dentiary unless erroneous. clearly at 1302. 465 F.2d Co., Graver Tank Inc. v. Linde Air Mfg. & of dis- We will affirm Co., 605, 609-10, Products 339 70 U.S. S.Ct. trict court. 854, 857, (1950).36 94 L.Ed. 1097 has is the This Court held that “[i]t FULLAM, Judge, Sitting by Des- District ac responsibility appellate of an court to ignation, dissenting: cept the ultimate factual determination of I dissent. respectfully unless that determination fact-finder convenience, in- the various devices For (1) completely either devoid of minimum litigation may be referred volved evidentiary support displaying some hue of (the protected by device “plaintiff’s” relation credibility, or bears no rational device, (the original, patent); “Dl” ship evidentiary to the data.” supporting (the “D2” Dinan, infringe patent); (3d Krasnov v. 465 F.2d conceded prod- first alternate version of defendant’s Cir.1972). One of these two conditions categories finding purport fac- recognize equivalence to exclude certain 36. We findings obligation probably of a cat- Court falls within that ever-troublesome tual findings egory “questions Appeals accept fact” a district court’s known as of ultimate clearly not divide and thus “a mixture of fact and erroneous. It does constitutes unless Minerals, legal particular, precept,” categories; does Inc. v. C.A. Universal facts into (3d Cir.1981). Hughes findings that deal & of fact into those not divide held, however, recently Supreme Court that deal with with “ultimate” those questions “subsidiary” of review for the standard facts. questions applies fact of ultimate Swint, as well 456 U.S. Pullman-Standard fact: (1982). 72 L.Ed.2d S.Ct. finding equiva- Thus, recategorization broadly requires [Fed.R.Civ.P.] finding fact” will clearly of “ultimate findings lence as of fact not be set aside unless scope review. exceptions alter our erroneous. It does not make uct, subject Dl, the of the earlier appeal tion from and that its marketing by the Court); (the and “D3” second alternate ver- defendant was contumacious. put defendant, sion by forward the the sub- My review of the record of proceedings in

ject present proceeding). of the the district court after the remand convinc- es me that the district court The 1978 consent decree misconstrued conclusively es- portions certain panel opinion, partic- of the tablished, parties, (1) as between these ularly footnote No. believed that plaintiff’s enforceable; is valid and virtually any rear-window defroster kit (2) infringed that Dl the patent. The by marketed the defendant would viоlate enjoined defendant was permanently from injunction. the As noted the earlier Dl, marketing other device which panel, a new product may prove, after full- would infringe any of the claims of the review, infringe scale the patent, but if it patent. is more than colorably different When the defendant attempted to market originally infringing device, contempt pro- D2, plaintiff sought adjudication ceedings are not a permissible procedural defendant was violating injunction, the making vehicle for the infringement deter- hence contempt. The district court was mination. if Conversely, the two devices issues, confronted with closely related are merely different, colorably it is unnec- procedural one and one substantive: wheth- essary parse claims of the er, as a matter of procedure, the issues before rendering adjudication. a contempt presented properly could be resolved in a But this does not mean that equivalence is contempt proceeding, ple- rather than in a to be determined without reference to the action; nary infringement and, whether de- patent, or that a may defendant be held in marketing fendant’s of D2 did violate the marketing product which injunctive reversing decree. In the district plainly infringe does not the patent. court’s determination that the defendant It should be noted the Interdynamics was not in contempt, (as this court ruled I opinion invokes the controlling precedent circuit, matter of first impression in this of Graver Tank Mfg. & Co. v. Linde Air but firmly basis of prece- established Co., Products Supreme in which the dent) that procedural both the and substan- Court stated: tive merged single, decisive, issues into a “What constitutes equivalency must be question: Was D2 merely colorably differ- against determined the context of the And, ent from Dl? as the court further art, patent, prior particular and the noted, the doctrine equivalents is proper- Equivalence, circumstances of the case. invoked, ly in answering question (“In- law, in the patent prisoner is not the of a terdynamics I”). formula and is not an absolute to be Thus, this court held that the district (339 considered a vacuum .... U.S. court had erred when it undertook pains- p. pp. 856-57). S.Ct. taking comparison between D2 and the Moreover, panel opinion ap- cites with plaintiff’s Rather, patent. claims Hansen, (8th proval Siebring v. 346 F.2d 474 district court merely compared should Cir.1965) in which the court stated: D2 with comparison, Dl. Such applying “Having determined that the trial Supreme Court’s formulation of the properly offending court ruled that Doctrine Equivalents (“If two devices do Siebring only colorably feeders were dif- the same work in substantially same enjoined ferent from feeders and the way, and accomplish substantially the same patent, Hansen it follows that the three result, they same, are though even they offending feeders hereinabove referred to name, differ form or shape”), Graver infringed patent. the Hansen Tank Mfg. & Co. v. Linde Air Products not, record, adju- required was on this 605, 608, U.S. 70 S.Ct. 94 L.Ed. in this con- dicate the issue led to the inexorably (346 conclusion ... .” F.2d at tempt proceeding p. that D2 merely a colorable differentia- case, employ upper, protective, D2 not the trial court’s did the present

In colorably result accomplished that D3 is different the same “finding” layer, but in the record as follows: appears rolling up from Dl the sheet. The device merely consideration, D3, does not use now under “The did do what Wolf [Dl] spacing all. The of the heat- any sheets at Interdynamics patent [plaintiff’s de- means of a lays only paral- ing It down two elements is achieved does. vice] time, lel, at a not the While it accom- spaced strips mandrel-type dispenser. parties result, complete array. agreed similar name- plishes substantially a infringement, and the consent strips heating this was an parallel down ly, laying provides. so judgment it spacing, at a predetermined element totally result a [D2], achieves that plainly “Trans Tech’s next which sheet, Moreover, arguable it is eliminated the cover also laid down method. different time, parallel, spaced strips at a represent improve- that D3 a decided may as did the Wolf ment, and in application, both in ease of appeals by applying ruled that the doc- flexibility. increased equivalents, trine of it was not more than “finding” district court’s Because the colorably prod- different than the Wolf upon over-expansive an squarely based uct, and so its sale and use was a con- it reading opinion, of this court’s earlier permanent injunction, of the with- tempt law, subject ple- to constitutes an error of to it regard infringed any out whether And, in this court. if it be nary rеview the 087 patent. claim of fact, finding my a view it is deemed test, binding “Applying that which Indeed, in the district clearly erroneous. here, proposed new is no court, attempt argue did not to plaintiff compari- more than different colorably Dl, substantially identical to that D3 was son with the Wolf The use of that D3 was not sufficient- contending only conductor, two rolls of adhesive-coated exploration of the ly permit concrete placed mounting on a mandrel for in a issue. equivalency dispenser, will do the same work in sub- an entry I remand for the would way accomplish the same stantially determining order that defendant’s new results, i.e., lay identical same down injunctive conductors, product does not fall within parallel pair predeter- window, consent decree.1 provisions spacing, mined the rear rectangular array build a to serve as

heating 327-328). element.” (App. ‍‌​‌‌‌‌​‌‌‌​‌‌​‌​​‌​‌‌‌​​​​‌‌‌​​‌‌‌​​‌​​‌‌​​​‌​​‌‍in Inter- view, my opinion

In this court’s I does not

dynamics that the mean defend- precluded marketing any

ant is from device at a lays parallel heating strips down device,

predetermined Plaintiff’s spacing. D2,

and Dl and in that the are all similar

spacing is the con- accomplished by affixing strips

ductor to a sheet. Plaintiff’s device “sandwich,” upper

and Dl both used a

layer upon of which is removed installation. injunctive majority its decree. When

1. The concluded that we have D3 would violate plaintiff, jurisdiction appeal in favor of the over this because the dis- the court decided entry modifying injunction to cover trict court’s order amounted to the of a was either device, modify refusing declaratory judgment, appealable it so as to under the new final device. The net effect of I have some diffi- exclude the new U.S.C. 2201 and 1291. §§ culty declaratory judgment procedural implications course of that a with the of that is, injunction my jurisdic- holding, plainly would violate but I believe we conduct enjoin- view, 1292(a)(1). indistinguishable from a tion under 28 The district U.S.C. § marketing court was asked to decide whether that conduct.

Case Details

Case Name: Interdynamics, Inc., and Smiths Industries, Limited v. Firma Wolf, Arend Wolf, and Trans Tech, Inc. Appeal of Trans Tech, Inc

Court Name: Court of Appeals for the Third Circuit

Date Published: Feb 2, 1983

Citation: 698 F.2d 157

Docket Number: 82-5044

Court Abbreviation: 3rd Cir.