The Schlegel Manufacturing Company v. Usm Corporation

The SCHLEGEL MANUFACTURING

COMPANY, Plaintiff-Appellee, CORPORATION,

Defendant-Appellant.

No. 74-2256. Appeals,

United Court of States Sixth Circuit.

Argued April 1975. Sept.

Decided April

Certiorari Denied 96 S.Ct. 1509. Beibel, Beibel, French & Lawrence B. Hibben, Ohio, George N.

Bugg, Dayton, Ill., Bicknell, Hibben, Chicago, Noyes & defendant-appellant. for Wood, Evans, Herron & Richard H. Ohio, Evans, Cincinnati, George W. Stephens, Shaw, Cumpston, Shaw & Wetzel, Rochester, Y., James M. Rob N. Ward, Ill., plaintiff for Chicago, ert M. appellee. PHILLIPS, Judge, Before Chief ALLEN,

WEICK, Judge, and Circuit Judge.* District PER CURIAM. adjudication of

This case involves an the terms contempt the violation of for infringe- of a consent decree in a decree ex- ment action. The consent valid, pressly was stated that guilty of in- and that defendants was fringement. Further adjudication of enjoined. On motion held that infringed patent could contempt proceeding raised in the assert- patent, and that the contemnor’s agree defense, ed invalid. as a * Allen, Ken- Honorable District Charles M. United States for the Western tucky, sitting by designation. judicata weath- is res on filed on a new embodiment validity, company erstripping and that the con- that the follow the issue of through development on We affirm commercial temnor’s invalid. product. application this was filed judgment of the District Court. 26, 1972, May and issued U. S. grew out of an consent decree 3,745,053 Patent et al. No. to Johnson 23, 1969, by Schlegel action filed on June (hereinafter patent) July Johnson (hereinafter Manufacturing Company Weatherstripping which con- Schlegel) against King Aluminum Com- patent pro- formed was to the Johnson pany infringement for S. Patent U. by during pend- duced and USM the sold 3,175,256 (hereinafter No. to Horton ency application after its al- and patent). Discovery Horton lowance. USM, revealed that which manufactured through the weatherstripping accused its Schlegel became aware the Johnson Division, Bailey was an indemnitor embodiment and notified the King patent infringe- for Aluminum new infringed patent form the Horton ment. and that the awas viola- After was injunction the action tion of pursuant entered filed, were insti- negotiations settlement responded consent decree. USM ultimately agreed tuted by and the filing a declaratory judgment action among compromise. themselves for invalidity patent the Horton private negotiations brought These the District Court for South Carolina. to the attention of the court on Febru- On May 11, Schlegel filed a mo ary join when USM moved to tion contempt for with the District Court a party and entered into an defendant Ohio, the Southern District of agreed stipulation settling litigation. court which had entered the con On that same date the District Court sent published opinion decree. aIn granted joinder judg- and final entered Ohio stay refused to ment. provided The court’s decree that: contempt proceedings in deference 3,175,256 3. Said Patent # Letters judgment South Carolina declaratory ac good valid in law. and tion. Schlegel King Mfg. Co. Alumi num (S.D.Ohio F.Supp. Defendants, 4. Each KING January On 1974 the South ALUMINUM CORPORATION and Carolina District Court ordered that the CORPORATION, USM Division, Bailey its action pending before that court be individually infringed stayed pending outcome con making said Letters Patent and/or tempt proceedings. selling pile weatherstripping having a impervious pile

flexible barrier After hearing a full on the represented series 892 USM’s motion the District Court held that the and 893 inventions embodying manufacture of USM’s new embodiment disclosed claimed therein. violated the terms of the decree. USM was held contempt, in willful an account- Defendants, 5. Each of its ing ordered, patent and the Johnson agents, servants, privies, employees, was held invalid. The District Court’s hereby per- successors assigns, are findings reported at 381 manently enjoined and restrained: (S.D.Ohio 1974). present appeal The From making the unauthorized or from that decision. using selling or inducing or others pile use having weatherstripping The I. Invention flexible, impervious pile in the barrier as represented by series 892 USM’s patent Horton a flexible discloses and joints weatherstrip which is used to seal between or engineers doors windows and their sur- early February 1972 USM rounding upstanding frames. Flexible application recommended that decree, final consent see base Brunswick to a textile pile fibers are secured Chrysler Corp., is se- 408 F.2d 335 barrier impervious strip, and infringe adjudication and an pile to the center of the along cured inferred, in ment and need is described strip. base This barrier Kraly v. National Distillers & Chem. as follows: claim 1 of the Horton Corp., 502 F.2d 1366 flexible impervious, strip a barrier clearly This is a consent decree that edge to at one sheet material fixed states that is valid gap, to strip said base in said infringed. Warner v. Tennessee long- extend from and project laterally Cir.), Prod. cert. strip to seal and itudinally of base said denied, support said fiber bodies. (1932). L.Ed. 548 is described The accused device principal issue then is not whether type of Johnson as a similar judicata applies res in the traditional impervious barrier. with an weatherstrip sense, the case considering the facts of at- However, is not the Johnson barrier doctrine, requirements and the It is attached strip. tached to the base policy but rather whether the entire themselves adhesively to the fibers judicata by public res is overridden spaced is edge the bottom of the barrier purging interest in an invalid strip. a from the base short distance government-created its status as a mo nopoly. judicata recognize that res II. Res Judicata doctrine, wholly is not a inflexible for In action public policy may that in rare instances which sought to introduce evidence USM rejection principle. mandate the of that patent was would show that the Horton Moore, IB J. Federal Practice 0.405[11] H held that the invalid. The District Court (2d 1974); Addressograph-Multi ed. judicata of prior res consent decree was 483, graph Corp. Cooper, v. 156 485 was fore that issue and that the issue (2d contempt proceeding. 369 closed in the policy Public considerations in appeal F.Supp. at 652. On this litigation long recognized by have been public policy interests contends that the Supreme In Court. Mercoid v. Adkins, Lear, 395 v. discussed Inc. Co., Mid-Continent Investment 320 U.S. 1902, 653, 610 23 L.Ed.2d U.S. (1969), 89 S.Ct. 661, 670-71, 268, 64 88 S.Ct. L.Ed. 376 invalidity finding renders a (1944),the question Court considered policies of important more than the judicata of res respect with to certain ju finality by the doctrine of res served been, defenses not, might have but were dicata.1 by parties privy advanced to a first present squarely action fits within suit. the earlier suit the judi- the rules res defining the bounds of held to be valid. The Court determined by cata. As stated finding that this judicata was not res reality part “indeed this is in a of” the misuse counterclaim for dam- litigation. first at 652. The 369 ages been, not, that could have but was than a represents consent decree more litigated in first action. The Court agreement parties, mere or between stated: stipulated The District dismissal. signed it “Courts of agreement, equity may, Court and fre- received do, both to judg- quently go farther as a final much ordered it entered therefore, give We, not faced with relief in furtherance ment. are and withhold characterizing public they the difficulties in the de- interest than prejudice go private or a only cree as a dismissal without accustomed to when “ generally, Note, Infringement Litigation,” 1. 74 See ‘To bind or not Decrees in Patent bind’; Merger (1974). Bar Colum.L.Rev. 1322 Treatment of Consent

779 what Virginian Ry. usually prac will interests are involved.” better 40, tice System inquiring fully Co. v. Federation No. 300 into the 592, 515, 552, 330, of this 81 L.Ed. U.S. S.Ct. at U.S. [57 public S.Ct. at important “Where an in- 789]. prejudiced,” terest would be the rea- Sears, Co., v. Roebuck & Co. Stiffel denying injunctive sons relief 376 225, 229-31, U.S. S.Ct. “may compelling.” v. Harrisonville (1964); Compco L.Ed.2d 661 Corp. v. Mfg. W. Dickey Clay S. 289 U.S. Day-Brite Inc., Lighting, 376 U.S. 1208], 77 L.Ed. S.Ct. [53 (1964). 11 L.Ed.2d 669 at 64 S.Ct. policies applied These further It was concluded that: Lear, Adkins, supra, Inc. v. where the abrogated doctrine of licensee governed case is then estoppel. policies” The “federal principle that Lear where the second cause have been considered this court with upon action between the respect judgment royalties, different claim the see Troxel Co. judicata Bicycle Co., Schwinn res not as to issues 489 F.2d 968 might “only denied, have but been tendered cert. 416 U.S. points (1974); those matters in issue or con- S.Ct. 40 L.Ed.2d 290 Troxel troverted, upon Bicycle determination Co. Schwinn which the ren- finding 1972); or verdict was F.2d 1253 Atlas Chemi Sac, Indus., Products, cal County dered.” Cromwell v. Inc. v. Moraine 351, 94 (6th 353 L.Ed. F.2d 1 U.S. And have noted Cir. We [24 195]. Place, that Russell v. 94 “One of in Lear primary goals U.S. 606 [24 was to 214], 671, L.Ed. 320 at ‘unmuzzle’ so that an U.S. 64 S.Ct. licensees early adjudication invalidity at in could ure to public interest.” Atlas Chem public patents interest in was also Indus., ical Products, Inc. v. Moraine su involved in Sinclair & v. In Carroll Co. pra, 509 Blonder-Tongue F.2d 6. See 327, 330, Corp., terchemical 325 U.S. 65 Laboratories, University Inc. v. of Illi 1143, (1945), S.Ct. 89 L.Ed. 1644 where Foundation, 313, nois 402 91 U.S. encouraged inquiry a full into 1434, 28 (1971).2 L.Ed.2d 788 patent validity, admonishing that: In the present case we are asked to among tendency There has been a extend Lear further to follow the infringe- the lower federal courts in Seventh Circuit’s decision in Kraly v. dispose ment suits to of them where National Distillers Corp., and Chemical possible ground non-infringe- on the 502 (7th F.2d 1366 Kraly, Cir. In going question ment without into 502 1369, F.2d at applied the court validity patent. of the Irvin v. policies of Lear adjudi- to consent decree Co., Cir., Buick Motor 8 88 F.2d cations of validity, concluding that: 951; Spark Plug Aero Co. v. B. G. Cir., 290; Corp., 2 130 F.2d Franklin v. Distillers, National licensee, is Corp., Cir., Masonite 2 F.2d 800. not estopped 132 from challenging the va- however, It has come recognized, lidity to be patent, though even pri- a that of or questions, validity the two consent incorporated decree greater public importance, understanding Cover not challenge the va- Schwartz, Cir., v. lidity 2 133 F.2d As Stevens points the Forms, Court in this case followed out in Business [Busi- public policy Sign other circuits the Lear con- land-Akron Co. v. Golden State Advertis range appli- ing (9th wide Cir.), siderations have found a 427 cert. de nied, concepts cation to law. traditional 404 U.S. 92 S.Ct. 30 L.Ed.2d See, g., Dynamics Corp. Symbolic (1971) (no-contest e. Coastal v. clauses settlement agreements Inc., Displays, 1972) (as- invalidated). 469 F.2d 79 doctrine); signor estopped Massillon-Cleve- infringe lowing litigated issue of fully a Service, v. Finishing Inc. ness Forms inquiry ment is not a “de novo 70], “A Cir., F.2d con- Carson, infringement, the earlier since determi trary not reconciled result could validity nation of the judicial public with ‘the interest a infringe charge all the to a defenses a invalidity of determination of ” res ment related thereto are which are at 75. patent.’ worthless judicata . .” We are aware . explicitly rejected

The Seventh Circuit sug no court entertained the which has District Court in the holding of the gestion abrogates the that Lear doctrine present case, stating as follows: a re judicata fully litigated of res after agree cannot with the Schlegel seem to logical be the sult. This would court that [Ransburg Electro-Coating denying judicata extension of res effect Inc., Spiller Spiller, & to a court has consent decree. 1973)] supports F.2d 974 proposition previously, recognized such difference party that “once a enters a see Warner v. Tennessee Products consent accepting (6th Cir.), denied, supra, F.2d 642 cert. particular of a patent, party 53 S.Ct. L.Ed. estopped raising from the validity is- (1932). judi though degree Even sue in subsequent litigation regarding cial involvement different between the same parties and pat- the same result, we litigated decree and ent.” Id. at 653. While it is true that prepared judicial are not to find that in Ransburg court this reasoned that so in a consent decree is involvement “the Lear case did not signify that inconsequential justify different something public called ‘federal policy treatment. We stated in Wadsworth patents’ could used to undo the Westinghouse Electric Elec Co. effects of a valid lawsuit settlement 851-52 tric & contract,” id., reasoning ap- as follows: plied only portion to that of the settle- upon every pro- Were permissible it ment involving infringement. past challenge ceeding again 502 F.2d at 1369. claims, re- validity the the and to of The Seventh subsequently Circuit has re- decided, open already prac- such issues holding affirmed this in Crane Co. v. subversive, tice if not indeed would be 1086, F.2d Aeroquip (7th 504 1092 Corp., destructive, wholly plenary- of the 1974), Cir. stating that the “Defendant de- power court its to enforce was within rights validity its to test aft- crees, reopen questions of valid- and to er entering into consent judgment the contempt ity upon appeal an from a validity.” order to invite all would be defeated litigants patent suits disagree with the respectfully Sev orders, by defy injunctional to and enth interpretation Circuit’s of Lear. In adjudi- such seek review of defiance to agreement so holding we are with the open to cated otherwise issues not Circuit, Second see Broadview Chemical them. 1391, Corp. Corp., v. Loctite (2d In 1973), Eighth 1395 Cir. and the 286 U.S. v. Cir United Swift & States cuit, 106, 460, 462, 115, 76 L.Ed. ex rel. United States Shell Oil (1932), “We Cardozo said: F.2d 1001 — 02 Mr. Justice Co. v. Corp., Barco (8th reject a 1970). argument Cir. the . . that Schnitger also v. upon is Corp., 462 F.2d 628 decree to Canoga entered Electronics (9th judi- not as a 1972); Cir. treated as a contract and see Herbert Rosen but 446 cial act.” thal Jewelry Kalpakian, v. (9th F.2d Cir. 739-40 Lear, we Looking to the rationale of significant In a difference note that there is Hirs v. Filter Detroit 1970), F.2d this court between of a consent decree the effect estoppel. licensee contempt proceeding stated that a fol- and the doctrine of The parties patent suit are enti- Contempt III. hearing tled a and the to full fair The that USM has Court held merits of the case up until time injunction permanent violated the by issued

consent decree is entered. The doctrine February that court on estoppel of licensee closed the doors of injunc- is in contempt. permanent The the courts a large group parties to tion was reaffirmed and ordered to be who had sufficient interest continued. was ordered to account to challenge validity. By giving its res profits all for derived from its sales of judicata decrees, effect to consent we do contemptuous construction. not close the doors courts to liti- We the findings conclude that of in- gation on patent validity, the issue of fringement clearly are not erroneous and except parties as to privies, or their and findings require these affirmance of only they after opportunity have had the contempt. decision on the issue of to litigate fully. parties the issue Third Court in number of decisions are not affected by the consent decree. clearly applicable established See, g., Annot., e. 4 A.L.R.Fed. rule in for vio- (1970); Volk, Boutell against injunction infringe- lation of an patent. ment of a public requires interest an Body Body Corp. Highland Field monopo stripped its invalid ly, Mfg. Co., possible. early a date as we held: given res When a is consent decree to be relation the Morrison effect, judicata encouraged litigants are validity other structures litigate validity rather the issue certain of argued by its claims are foreclosing than a consent themselves appellant though counsel for ad- they given decree. If a second were judication validity validity, change litigate the issue under review. We not con- might accept a alleged infringers well art, cerned with nor with an license under a consent decree and fore- original interpretation of the claims of go an attack on until favored It suffices here that in an stronger position, or until financial action between threatened other manufacturers who by appellant’s orig- infringed was held royalties. giving res paying By were not then, question, inal structure. The judicata effect to consent decrees this whether the modified structure is the protects public court interest in that equivalent original in its rela- ju alleged of a infringer deprived tion the patent in suit. post dicial be used to device could The Court further held: pone of delay adjudication and final question (Id. The is one of fact. at validity. Blonder-Tongue Laborato 627) ries, v. of Foun University Inc. Illinois 334-48, 91 dation, supra, 402 Mfg. Elec. Wadsworth Co. v. West 1434; Lear, Adkins, S.Ct. supra, v. Inc. 850 inghouse Co., 71 F.2d Mfg. Elec. & 1902; 683, 395 U.S. at 89 S.Ct. Troxel (6th Simons, 1934),Judge Cir. who wrote Co., Bicycle supra, Mfg. v. Co. Schwinn opinion Court, the for the followed Field 1257; Ransburg 465 F.2d at also Body and stated: Spiller Spil v. & Electro-Coating question proceedings in for con 974, (7th Cir. ler, Inc., 489 F.2d 978 tempt injunction for violation an 1973). against infringement is one which We, therefore, District hold that the relates to or original involves the in ruling in that the doc- was correct terpretation of the claims of pat the judicata barred USM from trine of res ent. Body Corporation Field v. High reviving the issue of the relitigating and Body Co., 13 F.2d Mfg. land (C.C 626 validity .A.6) suffices that in an It action be- 782 Sachs, Mfg. Wadsworth Electric was held Co. v. patent the

tween 552, 294 U.S. 55 79 L.Ed. question infringed, and valid and Thus, points there are two focal structure modified only whether is to the presently issue in relation before court: original to the equivalent is (1) the proceeding equivalency of the modified “The in suit. patent to the contempt) ‘is a structures previously to the structures (for punishment for its is infringing, (2) and held and the relation- proceeding, new and distinct equities ship of the new devices to the valid independent quite found claim. decree Filter Hirs v. Detroit case on which ” (6th 424 F.2d 1041 Cir. Corp., v. Mfg. Co. & ed.’ Bullock Electric (1241-1242) 129 Co., & Electric Westinghouse the rule Were (C.C.A.6). 106 F. otherwise, the District Court opinion In our permissible it were and excluding evidence offered did not err in contempt to upon every proceeding a collat designed as validity of the challenge the again decree. eral attack on the consent already claims, reopen issues to and Reference is made sub decided, practice would such through findings Court’s of fact Nos. wholly destruc versive, if not indeed F.Supp. at 652-53. reported at 381 court tive, plenary power reopen decrees, to and its enforce to consistently We have held appeal upon an questions of the issue infringement is factual and would be contempt order from a findings of fact of the trier of the litigants invite all defeated 52(a), governed by facts are Rule Fed.R. injunctional defy infringement suits See, Civ.P. e. Fastening g., Olympic seek orders, defiance such Textron, Inc., 504 F.2d Systems, Inc. v. not other issues adjudicated review of 1974); (6th Cir. Schnadig Corp. it clear think open them. We wise v. Gaines by this presented only issue 1974); Tappan Co. General the defendant’s is whether appeal Motors infringe the structures modified claims, 1967); Plywood Corp. v. United States manufacture whether their F.2d Plywood General injunction, violates the writ court be upon that issue neither compel the sustain- These authorities need consider low nor this court ing findings factual Corporation prior art. Field Body Weinman, they supported Compa Manufacturing Highland Body this case. overwhelming evidence in (851 852) ny, supra. — Bros. Fibre reject In Panduit Corp. v. the contention that the Stahlin (W.D.Mich. Works, Inc., infringement provisions of the consent (6th Cir. , aff’d, 1972) decree vague. Paragraph 4 of the , held: 1973) the Court found “by making and/or selling pile weatherstripping hav applied standard ing flexible, impervious barrier in the proceedings following adjudication represented by USM’s Series 892 validity and and 893 embodying the inventions abundantly clear. In such (Empha disclosed and claimed therein.” the question is the accused whether added). sis equivalent original structure is to the patent The specifications describe the in patent relation to the in suit. Field flexible, Horton weatherstrip having Body Corporation Highland Body impervious barrier. It is also described F.2d 626 Mfg. in USM’s Series 892 and 893. Wadsworth v. West Electric Co. The description of the barrier strip inghouse Electric & shown in USM’s Series 892 and 1934), 893 cer- denied certiorari tainly anticipa- does not Johnson was obvious and make the provisions vague, by patent. ted The Johnson nor does it convert the degree patent was into a also held unenforceable and meaningless ges- ture, which invalid because before the will be the of misconduct result if USM’s upheld. F.Supp. contentions are Patent Office. 381 at 653. The agree patent We Johnson was found that USM’s issue, conduct was willful in that the reach the contempt, court could and we agree. validity, issue of and that the court’s finding is likewise a factual finding validity provi- and it conclusion as to under the should not be overturned because it supported by sions of 35 103 is substantial ev- U.S.C. 102 and §§ idence and clearly is not correct. erroneous. 52(a) Rule Fed.R.Civ.P. however, agree, We do not with the appeal essence this very involves a holding of the District Court that important principle, namely, whether patent Johnson and was unenforceable sanctity should be accorded to a consent invalid because misconduct in the Pat- decree of a Federal patent-in- Court in a ent holding Office. This was based on

fringement case. patent’s the Johnson description of the patent specification, Horton in the where The importance encouraging it is stated that in Horton “the barrier settlement patent-infringement litiga strip . . . secured to the base [is] tion, which all frequently too complex, . .” The Johnson disclosure does long-drawn-out, carried on through all not inform the Patent Office that in the Courts, and even in juris different patent specification text of the Horton it dictions, cannot be patent-infringement case filed had to be every overstated. If is expressly strip stated that barrier may pressed contact into with the tried the Courts clogged. would be fibers “to cause more or less adherence problem is discussed in an excel- of the fibers thereto . . .” Al- opinion lent by written though misrepresentation or an omission Edward Weinfeld in Wallace Clark & Co. before the Patent Office Inc. v. Industries, Acheson Inc., 394 may misconduct, constitute see Charles F.Supp. 393 (S.D.N.Y.1975). C., Pfizer & Co. v. F. T. ought to do nothing here to make the facts in the settlement of patent-infringement present case not rise do to that level. A action futile, consent decree a prior full disclosure was made as meaningless gesture which will discour- art, e., patent. i. Horton No age such settlements in the future. patent art was hidden. The Horton was suppressed nor was the cita- USM Validity IV. Patent Johnson tion to it casual. The Horton was extensively discussed as the most rele- By pre-trial the Dis order vant art in technology this area of and trict Court warned that “the was noted the Patent Office as the patent on modified [the Johnson] [the] first of record. weatherstripping may placed form of judgment adjudicated of the District Court is in issue and if that should be in affirmed and the cause is remanded for necessary proper to a full decision case, hereby accounting and other relief to which this in plaintiff according may be entitled. plan structed to the trial Costs on appeal this ly.” against at 652. At trial are taxed USM Cor- poration. as a defense asserted the Johnson therefore, contempt. was, in issue It PHILLIPS, Judge (concurring Chief required the District part dissenting part). inquire relationship fully into the I, I parts concur in II and IV of Johnson to the Horton majority I opinion. agree

From it clear do not this examination became with newly weatherstripping, without accused remand the case would III. I part all of regard the proceed- scope to the and content of for further Court District to the patent. the claims of the Horton from I dissent Accordingly, ings. F.Supp. long at 653. It has been ruled to affirm. decision then, that question, is whether the “[t]he the that respectfully submitted It is equivalent modified of structure is the evi- sufficient contain record does not original the in its relation to the can decree from which the dence suit,” Body Corp. Highland in Field attri- the breadth to have be construed Co., Body Mfg. (6th Cir. Court buted to it the 1926). However, rejected this court has de- If the consent majority opinion. the proposition only the proper that “the test interpretation, given a broad cree is such contempt of whether there has been patent injunction of a a might receive the owner present is whether the by the granted greater than monopoly ly equivalent accused device is the the of raise a serious This could Patent Office. originally infringed device found to have question policy. public of patent.” Hirs v. Detroit Filter in- with therefore, I would remand 1970). 424 F.2d affirming structions, on than rather “[wjhere In that case we also that held would contempt. procedure issue of injunction prohibits infringe further a make enable the District Court spe ment of the invention embodied in meaning of proper determination specific cific patents, claims one of proper determi- decree and the consent presented issues to the District Court It infringement. nation on issue pres in a action is whether the on re- may be that the District ently infringes accused device ultimate the same mand would reach also, claims” 424 F.2d at 1041. See contempt. My on the issue of conclusion Westing Wadsworth Electric Co. v. the Dis- permit proposed remand would house Electric & Judge accomplish this result trict findings procedure proper rather than in which I submit to be inconsistent determining the difficulty I have in decree respects,1 and on a consent some its scope of the consent decree because meaning clear to me. whose is not vague terms are as to the limits of states finding prohibited conduct. in Court held The District infringed pat- that that the determination No. 41 fact selling pile “by making ent and/or equivalency on the contempt rested flexible, having and the im- weatherstripping devices the series 892 and 893 specific F.Supp. findings Yet at states there are no Finding of fact No. supporting finding ele- enjoined the same an ultimate of literal in- “used structure that fringement. Finding negatives any purpose accomplish in the in- No. 25 the same ments to Finding infringement way patented . .” ference of in No. literal structure same as the substantially thing finding 24. The repeats nearest to a literal Finding No. 30 also Finding infringement infringement expressed in No. the tests of test. These are same equivalents. where it is stated See Acme that “The Horton the doctrine of under strip may Highway D. S. Brown teaches that the barrier bonded Products strip How- base and to the fibers.” With 850-51 deference, ever, expressly utmost I disclaimed submit that this statement District Court equivalents infringement, is not relevant infringement to the issue of but the doctrine of under 653, stating only is relevant Finding to the issue of No. estoppel wrapper Johnson of file that “The doctrine Further, equiva- impressed wrap- I only am applicable the file the doctrine when per estoppel strong infringement. proving defense is this case and lents is resorted to However, should have been since here considered. . There is literal expressly estoppel held wrapper defense.” this de- available file no available, may Therefore, Finding have fense is not I do not believe even if the District may Finding No. 42 under is decisive. No. 42 that there was believed findings finding wrapper estoppel, gave close to a but equivalents, his of file he doctrine phrased estoppel.” “equitable it is infringement. terms of of literal label pervious represent- determine what pile parties barrier in the intended when embody- they language ed series 892 and 893 chose the USM’s the de- ing the inventions and claimed cree. relating disclosed Evidence ne- gotiations, patent].” agreement the Horton The decree the settlement [in then purchase proceeds enjoin agreement to and restrain “the is therefore ad- missible for making using selling purpose unauthorized or or the narrow of defin- ing or inducing delineating others meaning to use weather- of the stripping ambiguous injunctive represented by ... portion of the de- series cree. USM’s 892 and 893.” lan- Artvale, Cf. Rugby Inc. v. Fabrics guage could be construed to have Corp., supra, three F.2d at 284. (1) distinct meanings: It could be read I would remand the case to the Dis- to mean enjoined that from trict Court for further making weatherstripping “constructed that issue. On I remand would direct specifically according to” their old em- the District Court to consider the evi- (This bodiments pro- construction would dence previously rejected as to the degree protection vide a lesser than meaning injunctive of the language in patent claims.); (2) that of the it could the consent decree. prohibit infringement read to further If the decree pro- should found to patent; (3) of the it could be taken hibit specific manufacture of weath- prohibition against as a broad all similar erstripping specifically “constructed ac- types of irrespective weatherstripping, of cording to” series 892 and then the infringement. court should determine if the accused The District Court refused to hear ex- weatherstripping is substantially identi- trinsic meaning evidence as to the cal to series 892 and 893. In making this injunctive language, stating: scope determination the the and content of

We are going put anything pri- not to weatherstripping art would be rele- or to vant in this case. magnitude determine what [the decree] departure We start from Entry that was from design of the en- joined agreed upon by you goes . structure beyond . . It was the decree. signed by For upon agreement example, me a change superficial- of the parties. ly appears slight Now we start to be may from there. I be substan- tially am not anything prior interested in different in view the weather- stripping prior time. art. If the consent decree should be found particular I would hold that under the prohibit further of the circumstances of case the District this patent, Horton I would direct the Dis- refusing Court erred in to consider the trict Court first to determine if there is excluded evidence. It has been held literal infringement by comparing the agree “A represents consent decree accused device to claims. If the Horton ment which the court can there infringement, is no literal Dis- contract,” Artvale, expand or Inc. v. trict Court should whether determine Rugby Fabrics there is under the doctrine (2d 1962); v. Arm United States equivalents. On the issue of the doc- 673, 681-82, 91 S.Ct. our & trine equivalents, history (1971). agree I 29 L.Ed.2d 256 prosecution of application be- majority opinion with the as to the dan fore the Patent particu- Office would be gers sanctity of encroachment on the larly relevant on the issue of whether However, construing decrees. certain claim limitations have created a meaning the consent in the wrapper file estoppel. case, present may refer the court make ence to other material to ascertain the If the consent decree should be deter- meaning ambiguous terms in the mined any to be broader than of is not to decree. The role of the court foregoing interpretations then the Dis- decree, “expand or contract” the but trict Court should consider what conduct injunc- by the prohibited specifically tion, violated has and whether USM ac- of the injunction by the manufacture

cused device.

In the decree’s usual case a consent most, coextensive

prohibition, at will be by the protection

with afforded Violation

claims by comparing is to be determined newly accused with device theories of according the usual

claims re-emphasize I

infringement. reading the decree expansive

more patentee operate upon a

might to bestow obtain greater monopoly than he could

from the Patent Office. should

If on remand the District a violation of

find that there been injunctive provisions of the consent

decree, would be then determination holder

made as whether presumed to patent,

Johnson was enti- be valid under 35 § U.S.C. If on rely upon good faith.

tled to it in should deter-

remand any factors of

mine that there are such

mitigation, then could consideration

given supplemental to the issuance of a

injunction, rather cita- than a appropriate accounting,

tion and as an

remedy. LIFE IN

STANDARD & ACCIDENT COMPANY, Appellant, SURANCE

COMMISSIONER INTERNAL OF REVENUE, Appellee.

No. 75-1075. Appeals,

United States Court of Tenth Circuit.

Nov.

Rehearing Denied Jan.

Case Details

Case Name: The Schlegel Manufacturing Company v. Usm Corporation

Court Name: Court of Appeals for the Sixth Circuit

Date Published: Apr 5, 1976

Citation: 525 F.2d 775

Docket Number: 74--2256

Court Abbreviation: 6th Cir.