464 F.

2d 48
174 U.S.P.Q. 419

JENN-AIR CORPORATION, Plaintiff-Appellant,

v.
PENN VENTILATOR CO., Inc., Defendant-Appellee CrossAppellant.
Nos. 71-1446, 71-1447.

United States Court of Appeals,

Third Circuit.
Argued April 14, 1972.
Decided June 27, 1972.

C. Frederick Leydig, Wolf, Hubbard, Leydig, Voit & Osann, Chicago, Ill.,
for appellant in No. 71-1446 and appellee in No. 71-1447.
Dana M. Raymond, Brumbaugh, Graves, Donohue & Raymond, New
York City, for appellant in No. 71-1447 and appellee in No. 71-1446.
Before McLAUGHLIN, VAN DUSEN and ALDISERT, Circuit Judges.
OPINION OF THE COURT
McLAUGHLIN, Circuit Judge.

This is a patent infringement suit involving three of plaintiff's power ventilator

patents. There was a fourth patent which plaintiff had originally claimed
defendant had infringed. Plaintiff withdrew that charge prior to trial and at
plaintiff's request, the district judge dismissed it with prejudice at the opening
of the trial herein.

Application for his first patent was made by Mr. Jenn, its inventor, July 2,
1945. The patent, 2,458,607, hereafter called '607, was allowed Mr. Jenn April
10, 1951. He assigned it to his plaintiff corporation December 1, 1967. The
patent expired April 10, 1968, a year prior to the trial of this appeal. In its suit,

plaintiff seeks damages for infringement of its '607 patent by defendant up to

six years prior to its present action. Plaintiff corporation has been producing
Mr. Jenn's '607 ventilator since 1947. Defendant and others have been making
and marketing what is substantially the Jenn exhauster since about 1955. The
trial judge sharply and accurately found that the placing of the '607 ventilating
device produced a novel result which was non obvious. He soundly held that
the placement of the exhauster on a building external wall "* * * had special
advantages not found in prior art ventilators, especially in connection with their
use in restaurants, including inter alia placement of noise outside the room
ventilated, ease of installation, lower cost and greater resistance to the
elements." We thoroughly agree with those findings. It is not contested that '607
has had and continues to have fine commercial success.
3

We also agree that defendant's various models of its so called "Wall Domex"
are and have been flagrantly, since defendant has been putting them on the
market, as the district court found, "* * * mechanically and functionally the
same as plaintiff's '607 in every material respect."

Defendant still formally asserts that it did not infringe on the '607 patent
claims. We find no merit whatsoever in defendant's contention as here
presented. Turning from that, defendant contends that the Jenn-Air Corporation
is barred by its laches from collecting damages from the infringer defendant.
The latter pins its hopes on what it states, are non contested facts that Jenn-Air
delayed at least nine years in filing suit against defendant for the latter's glaring
misuse of plaintiff's '607 patent. There is nothing in this record to warrant a
ruling of actual prejudice to this defendant from any delay in plaintiff starting
its lawsuit against this defendant for its unconscionable infringement of
plaintiff's '607 patent through the years. There was some delay in starting that
cause but there was no harm to defendant in that, all that happened to it was its
continuance of counterfeiting and selling its infringing product. As we held in
Sobosle v. United States Steel Corporation, 359 F.2d 7, 12 (1966) "Laches, of
course, requires more than lapse of time; as an equitable defense it is
determined in the light of all the existing circumstances and requires that the
delay be unreasonable and cause prejudice to the adversary." In Holmberg v.
Armbrecht, 327 U.S. 392, 396, 66 S.Ct. 582, 584, 90 L.Ed. 743 (1946), Mr.
Justice Frankfurter for the Court held that in a question as to whether there
should be equitable intervention against a plaintiff such as here "* * * that
which is decisive for the chancellor's intervention, namely, whether the
plaintiff has inexcusably slept on his rights so as to make a decree against the
defendant unfair." In the earlier decision of Russell v. Todd, 309 U.S. 280, 287,
60 S.Ct. 527, 84 L.Ed. 754 (1939) the Court there held that in the type of
problem before us, plaintiff's delay must be unexcused and prejudicial to

defendant.
5

There can be no mistake about the above governing law on this question. The
delay must be prejudicial to the defendant. The fact which defendant wholly
overlooks is that plaintiff was protecting its '607 patent in a suit against another
infringer from November 1963 to April 18, 1966. Plaintiff in December 1967
applied to bring its '607 patent into this litigation. Under these facts, it is sound
law as plaintiff urges that it is not necessarily bound to take on more than one
infringer at a time.1 As we have seen, plaintiff was busy with its action against
another infringer from 1963 to April 18, 1966. In December 1967 it did proceed
against defendant. Again, as stated by plaintiff, there is no delay of nine years
or even four years by plaintiff sleeping on its rights. There is nothing factual in
the trial transcript pointing to any prejudice whatsoever to defendant, actually
during the entire time it was busily engaged in turning out infringements of the
Jenn-Air invention. To be successful in its theory that plaintiff, owner of this
most worthwhile help to the entire ventilator industry, must lose out in its court
ruled proper claim, defendant must show, as it alleges, that there had been nine
years of unexcused delay by plaintiff in its cause against the defendant and that
defendant had been prejudiced thereby. We have seen the delay was not nine
years or as much as six years. We have also seen that although defendant said it
had been prejudiced there is nothing in the record indicating that this was a fact.
To the contrary, defendant never even tried to prove that. What it did was assert
that plaintiff must affirmatively prove that its delay, if any, in pursuing
defendant for its infringement damages did not prejudice defendant. That is not
the law; it is the defendant who must prove that there was unexcused delay on
the part of the plaintiff and that defendant was prejudiced as a result. There has
been no proof of either in this appeal. In that situation plaintiff's '607 claim
against defendant is not barred by laches.

In strong addition to the above conclusion with reference to the laches

contention, that defense appeared in defendant's answer to plaintiff's second and
supplemental complaint. Plaintiff served demands for answers to its
interrogatories calling for defendant's reasons justifying that defense. The
interrogatories were never disputed by defendant but the latter simply refused
to answer them. Plaintiff endeavored to obtain an order that defendant either
support its laches defense or that the said defense be stricken. The court noted
during the trial that "Now the effect of that (defendant not answering the
interrogatories) was really to preclude effective discovery on that issue by the
plaintiff." (Emphasis supplied). Plaintiff's motion was not passed upon until
after the trial had taken place and during the drafting of the opinion. The
motion was then denied. The court held that plaintiff had not been prejudiced
by defendant's refusal to answer the interrogatories; that plaintiff could have

and did obtain whatever information it desired by its own advices and that
defendant had brought in a new attorney a month before trial time. There had
been an attorney representing defendant in this matter for over four years prior
to that new lawyer's appearance in the litigation.
7

We find that the defendant's proposition that plaintiff is deprived of its claim of
damages for infringement by defendant of its '607 patent through its laches is
without merit. We further must conclude under the facts before us that
defendant's refusal to answer plaintiff's interrogatories regarding the basis of
defendant's defense of laches was completely improper and of serious
consequences to plaintiff's presentation of its case.

The judgment of the district court as to plaintiff's claim for damages against
defendant for infringement of its '607 patent will be reversed and this branch of
the instant suit will be retried with respect to the amount of damages sustained
by the plaintiff.

Plaintiff's remaining patents in this suit are 3,085,647 ('647) and 3,110,357
('357). Both these patents were applied for by Mr. Jenn and William E.
Morrison, the '647 on November 7, 1960 and the '357 on November 12, 1963.
The patents are each titled "Acoustic Curb." The '647 patent was assigned to
plaintiff before it was issued. The '357 patent was assigned to plaintiff after it
had been issued. These patents dealt with reduction of noise produced by the
ventilator setup. The district court held that the two patents had been infringed
by defendant but that they "* * * are non-inventive and obvious." It was also
held that "As a matter of acoustics generally, there is no significant difference
between plaintiff's '357 and '647 patents and the disclosures in Solzman, Tutt
and Kurth taken as a whole. As an acoustical device per se, plaintiff's patents
are obvious and non-inventive over the disclosures in Tutt, Solzman and
Kurth." The opinion below states the "Trane Catalog, Defendant's bulletin SC88 "Sound advice for Effective Sound Control" and "Defendant's bulletin SCE89 entitled "Extruded Aluminum Sonotrol Curb," call for the conclusion that
said two patents are non-inventive and obvious." Finally it was held that
"Assuming plaintiff's patent ('647 and '357) were valid, we would find that
defendant is guilty of infringement * * *."

10

The key to these two patents is of course the Supreme Court's Graham v. John
Deere Co., et al., 383 U.S. 1, 13, 86 S.Ct. 684, 691, 15 L.Ed.2d 545 which
quotes Section 103 of the 1952 Patent Act as providing that a patent may not be
obtained "* * * if the differences between the subject matter sought to be
patented and the prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made to a person having

ordinary skill in the art to which said subject matter pertains. Patentability shall
not be negatived by the manner in which the invention was made." (Emphasis
supplied).
11

In that all important opinion by Mr. Justice Clark, pp. 35 and 36, 86 S.Ct. p.
702 and 703, he notes that "These legal inferences or subtests do focus
attention on economic and motivational rather than technical, issues and are,
therefore, more susceptible of judicial treatment than are the highly technical
facts often present in patent litigtaion. * * * Such inquiries may lend a helping
hand to the judiciary which, as Mr. Justice Frankfurter observed, is most illfitted to discharge the technological duties cast upon it by patent legislation.
Marconi Wireless Telegraph Co. of America v. United States, 320 U.S. 1, 60,
63 S.Ct. 1393, 87 L.Ed. 1731 (1943). They may also serve to 'guard against
slipping into use of hindsight.' (Monroe Auto Equipment Co. v. Heckethorn
Mfg. and Supply Co., 332 F.2d 406, 412 (6 Cir. 1964) and to resist the
temptation to read into the prior art the teachings of the invention in issue." (p.
36, 86 S.Ct. p. 703). (Emphasis supplied).

12

It cannot be denied that at the time when plaintiff's '647 and '357 patents were
granted, the ventilator industry had been for many years unsuccessfully
endeavoring to sizably reduce the noise of power roof exhausters. '647 has two
baffles and '357 has one. The sole so called prior art produced by defendant,
having a baffle, is Trane catalog which used that baffle parallel to the air flow.
It is not denied that the plaintiff's construction of its baffles and its placing
them transverse to the air flow together with the entire other independent
building of its curbs admittedly made the '647s and '357s ten times more
effective than any of the exhibits offered by defendant. It should be again
mentioned that the Trane catalog baffle was the only item that apparently could
be presented which suggested a baffle. In Trane that called for the baffle's
installation, as we have noted, parallel to the exhauster's air flow. There were
only two witnesses on behalf of defendant re '647 and '357, one of these was
defendant's vice president who added nothing to the vital sound control feature
of the '647 and '357 patents. The other defense witness was called as an expert
in the field. He, Mr. Ostergaard, consulted by Princeton University on the noise
situation as to power exhausters, suggested an acoustically lined duct (he did
not remember its length) with an elbow section connecting with the exhauster
and either tearing the classroom ceiling to conceal the duct and run the duct
across that ceiling or waterproof the duct so that it could be run across the roof.
Mr. Ostergaard acknowledged the disadvantages of his solutions but saw no
alternatives. He knew of plaintiff's patented curb but brushed it aside as too
new and downgraded it generally. Returning to the Deere law, there is nothing
in the material cited by the defendant and relied upon by the trial court, to

justify the defense contention that '647 and '357 were obvious and noninventive. From all of the facts before us it is apparent that the true test of
obviousness i.e. whether "the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in the art to
which said subject matter pertains. Patentability will not be negatived by the
manner in which the invention was made. Sec. 103 Patent Act, 1952, 35
U.S.C.A. Sec. 103 (1964 ed)." The record does not justify the conclusion that
the decried patents of plaintiff which the defense expert had no use for are
obvious and non-inventive. Ostergaard was not just "* * * a person having
ordinary skill in the art to which said subject matter pertains." This was the one
expert who clearly put forth the defense view of plaintiff's patents. He
proclaimed them not obvious and non-inventive. Under oath that they were
simply not worth having, not as we have stated, because the plaintiff's patents
were obvious, non-inventive, but because they were no good, had not been
proven of any value. Yet it was those three authentic patents that proved of
amazing value to the whole power ventilator industry.
13

It seems to us that unfortunately the erroneous desperate effort of defendant to

avoid its liability for infringement of all three, that as to '647 and '357, it
succeeded in the district court on the mock up of obviousness and noninventive. Yet the defendant did infringe those two patents as it did the '607. It
follows that the '647 and '357 judgments should be and will be reversed.

14

Plaintiff, also in this litigation, sues defendant for unfair competition and libel.
The court finds that plaintiff makes out a substantial case on unfair competition
against the defendant. We also find that this matter did not receive enough
attention in the trial below, undoubtedly because plaintiff's patents were the
outstanding issue. Therefore that phase of the appeal will be remanded to the
district court for retrial on the merits, including proof of plaintiff's claim for
damages arising out of said claim of unfair competition.

15

The majority of the court finds that plaintiff's libel suit against defendant is
barred by the applicable statute of limitations. I dissent from that view.

In an opinion by Judge Learned Hand for the Second Circuit, Clair et al. v.
Kastar, Inc., 148 F.2d 644, 646 (1945), the situation was much the same as in
this appeal. The Court held that "The defense of laches is without merit." There
the plaintiffs sued an alleged infringer and as the Court said "* * * were not
obliged * * * to sue everyone whom they might afterwards seek to bring within

their patent." The plaintiffs patentees lost that case at the trial level, appealed
and after that claim had been settled started suit against related infringers. As
Judge Hand held "While a patentee is getting his patent sustained he is not
bound to assert his claims to their fullest scope by suing every conceivable
infringer." See also Montgomery Ward & Co. v. Clair, 123 F.2d 878 (8 Cir.
1941) which was followed by the Second Circuit Clair opinion, supra