MATTHEWS et al. v. KOOLVENT METAL AWNING CO., 158 F.2d 37

HUTCHESON, Circuit Judge. Appealing from a decree adjudging the patent valid but not infringed, plaintiffs are here querying, “What shall it profit a patentee that his patent is declared valid if his claims are so precisely read, the rarfge of equivalence so narrowly confined, that piracy is rewarded for the cunningness of its dissimulation and the patentee is robbed of the fruits of his invention?”.

Complaining of the decree as another in that long and growing list of. judgments in patent infringement suits which, finding the patent valid but not infringed, keep the promise of the patent to the ear while they break it to the hope, they insist: that such a decree, while correct in cases of patents for narrow improvements, is unjust here for the claims of the patent describe an invention of marked novelty and utility, and must be read in the light of the fact that they do; and that in finding noninfringement, the district judge, misled by mere appearance, has accorded to nonfunctional differences in form and arrangement a significance and weight to which they are not entitled.

Calling attention to the claims made for defendant’s awning in its advertising circular of greater coolness and free circulation of air in contrast to the efforts, made on the trial, to minimize “free open space for heat to escape”, on which in its selling literature it places so much emphasis, and to magnify the rain resisting and what it calls the chimney effect of its so called pan and cover structure, appellants urge upon us that defendant should not be permitted in selling its awning to claim all the distinctive features of Matthews’ invention and then escape in court the consequences of the infringement by putting forward, as functional and substantial, immaterial differences in form.

To support the defense of anticipation, only two patents were introduced from the prior art. One-of these dealt with old style shuttered window blinds, the other with an improvement in ventilation, and it is quite plain that neither anticipated Matthews’ awning. The evidence without substantial conflict establishes that Matthews was the inventor of the awning patented to him; that it was a real invention having both novelty and utility; and that while its field was small, in its field the patent was in its nature primary and not a mere combination for a narrow improvement.

Designed to furnish shade from the sun without, as the awnings then in use did, confining pockets of hot air and thus to an extent neutralizing the benefits of the shade, the invention was an answer to weather conditions prevailing through the long hot southern summers. It met a need long felt but never supplied until Matthews came along.

That there was a need and that Matthews’ invention met it is testified to not only by the large and growing volume of sales made by licensees under this patent, hut also by the flattery of defendant’s imitation, an imitation made more pointed and significant by the interference in the Patent Office resulting in Matthews’ favor, in which claims three, four and five of Matthews’ patent were actually claimed by Houseman as his own invention.

Under these circumstances, more was required of Houseman and of defendant, his licensee, to escape the charge of infringement than merely giving different names and forms to members of his device which performed the same function as the equivalent members in plaintiffs’ awning.

It is, of course, not meant to say that the patent Matthews applied for and got on aerated awnings, which while protecting from sun and rain would at the same time afford a free circulation of air, is so broad as to completely monopolize the whole field of such awnings and prevent anyone from entering it with devices which really operate differently, that is, produce a new result other than convenience and economy.

It is meant to say, though, that it certainly is not keeping faith with the promise of the patent to permit defendant or any other person to avoid a charge of pirating the invention by a device as transparent as the one here of putting flanges on the slats of his awning, and of calling these members covers and pans instead of slats as Matthews’ patent calls them. • In his application for patent, Matthews, stating that his invention relates to a new and improved awning which shall possess certain advantages over known forms of awning structures, proceeds with clarity and distinctness to describe it and to make clear its essential significance and scope.

Then after describing the awning adequately in the specifications and in drawings, and showing that the essence of his invention is to arrange the members constituting the awning so that, while obstructing the entrance of the sun and rain, they will permit a free circulation of the air, he sets out the ten claims of the patent, five of which, three, four and five, and nine and ten are claimed as infringed. The first three claim the drainage feature of the awning.

They cover any awning structure in which an upper and lower series of parallel staggered slats are fastened in right angular relation with two spaced end rails so 'that the upper and lower form horizontal longitudinal drains. Means are provided for mounting the awning with the slats placed lengthwise so that rain water will discharge along the lower edge of the awning. Claim four additionally requires that the awning be inclined downwardly to permit drainage far removed from the wall, and claim five calls for trough shaped slats in the lower series which are fastened in concave position with the end rails.

Claims nine and ten do not include the drainage features. What Houseman, the licensor, and defendant have done in constructing the infringing device so as to give it the appearance of noninfringement is merely to provide the slats with flanges while calling them pans and covers instead of slats. They have done this in the belief that since the upper and lower flanges do not meet but have air spaces between them, the selling claims that they furnish as free circulation of the air as Matthews’ patent does, will find support.

They have done it, too, believing that, since they call these members pans and covers instead of slats, and the flanges have made this'awning somewhat more rain resisting, and by a demonstration they can create an appearance of a part of the heated air escaping funnel or chimneywise, up and out instead of laterally, as it does in the Matthews’ awning, their device will not be held to infringe. We think it plain that defendant’s device infringes the Matthews’ patent, and that its use without plaintiffs’ permission and consent ought to be enjoined.

Much has been made of the fact that Houseman, himself, has a patent. It is even claimed that the grant of the patent to Houseman raises a presumption of noninfringement. It is well settled that the grant of the later patent to Houseman does not license him to use plaintiffs’ awning if Matthews’ patent was valid. In addition, this suit is not between the owner of the two patents. It is between the claims of Matthews’ patent and the user of a claimed infringing device.

The fact that Houseman’s patent was granted and that there were patentable differences between Matthews’ and Houseman’s would not in anywise tend to prove noninfringement by the defendant in this case. The device patented to Houseman may be an improvement on Matthews’ earlier patent, but this would not allow a .licensee under him to infringe on Matthews.

What is determinative here is whether the device claimed to be infringing comes functionally within the claims of the Matthews’ patent, that is, whether it does “the same.work in substantially the same manner and accomplishes substantially the same result although it may differ in name, form or shape”. We think it clear that it does. In addition to other points in support of the judgment, appellee insists that the proceedings in the Patent Office have limited Matthews and estopped him from claiming what his patent gives him. We see no basis for the claim.

There is nothing in the file wrapper showing any abandonment by Matthews of any part of the claims which were granted to him, nothing which would constitute a limitation of them. Neither is there any merit in appellee’s claim that the Matthews’ patent is invalid because of prior public use.

The district judge correctly disposed of this contention, and we approve the disposition he made. ' We are not concerned here with determining whether defendant’s device, which plaintiffs charge is an infringement of the Matthews’ patent, is exactly the same in appearance or in form, but merely whether it is substantially the same in function. In short, the decisive question here is, reading the claims of plaintiffs’ patent on the Koolvent awning and interpreting them fairly in accordance with their plan intent and coverage, does defendant’s device infringe? We think it does.

The doctrine of equivalency has never been a mere dry bones doctrine. Put forward to do justice and prevent defrauding by dissimulation and deceit, it should be, it has been, applied to give its equitable purpose effect. Not at all recondite or difficult of understanding or application, it is the mere expression and application of the view that like things are alike and that they are not made unlike by formal and nonsubstantial changes, no matter how cunningly contrived the dissimulation, how clever the changes in form.

We think it clear that defendant’s device is substantially identical in function with, and is an infringement of, claims three, four, five, nine and ten of the Matthews’ patent. The judgment is reversed, and the cause is remanded for further proceedings consistent herewith. Grinnell Washing Machine v. E. E. Johnson Co., 247 U.S. 426, 38 S.Ct. 547, 62 L.Ed. 1196; Butex Gas Co. v. Southern Steel Co., 123 F.2d 954, 955; Edward v. Johnston Formation, D.C., 44 F.2d 607, affirmed 5 Cir., 56 F.2d 49 ; Hughes v. Magnolia, 5 Cir., 88 F.2d 817; Eastman Oil Well v. Sperry Sun, 5 Cir., 131 F.2d 884; Railroad Supply Co. v.

Elyria, 244 U.S. 285, 37 S.Ct. 502, 61 L.Ed. 1136; White v. Gage, 5 Cir., 128 F.2d 500. “Authorities concur that the substantial equivalent ■ of a thing, in the sense of the patent law, is the same as the thing itself; so that if two devices do the same work in substantially the same manner, and accomplish substantially the same result, they are the same, even though they differ in name, form, or shape. Curtis, Patents (4th ed.) sect. 310.” Machine Co. v.

Murphy, 97 U.S. 120, at page 125, 24 L.Ed. 935. “WHY KOOLVENT AWNINGS ARE COOLER AND PERMANENT” “This illustration shows the scientific construction of KOOLVENT Ventilated Metal Awnings and how it aids the free circulation of air through the patented vents and louvers which carry off the solar heat-as it is produced. Constructed of a series of separated rust resisting special paint grip metal sheets with edges formed at right angles, and which overlap yet leave free open space for heat to escape.

KOOLVENT Awnings screen out the direct sun rays, yet admit an abundance of indirect light without retarding the free passage of heat-laden air. This freedom from ‘heat pockets’ noticeably reduces temperatures.” Here appears drawing of awning “The usual and well known awning is objectionable, especially in warm climates for the reason that the body of air entrapped beneath the awning will become heated by the sun’s rays and this heat will be transmitted to the interior of the Hülding, and as a result the purpose for which awnings are used is largely defeated.

It is the purpose of the present invention to devise a practical awning which gball be immeasurably cooler than awnings now in use for it provides means whereby the air underneath the awning will be permitted to escape freely throughout the full of the area of the awning. This useful purpose is accomplished without impairing the utility of the awning as a sun shade and also as a protection against rain.”