H.H. Robertson Co. v. Bargar Metal Fabricating Co.

666 F. Supp. 1027, 2 U.S.P.Q. 2d (BNA) 1804, 1987 U.S. Dist. LEXIS 13206
CourtDistrict Court, N.D. Ohio
DecidedJanuary 15, 1987
DocketNo. C80-1166
StatusPublished

This text of 666 F. Supp. 1027 (H.H. Robertson Co. v. Bargar Metal Fabricating Co.) is published on Counsel Stack Legal Research, covering District Court, N.D. Ohio primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
H.H. Robertson Co. v. Bargar Metal Fabricating Co., 666 F. Supp. 1027, 2 U.S.P.Q. 2d (BNA) 1804, 1987 U.S. Dist. LEXIS 13206 (N.D. Ohio 1987).

Opinion

MEMORANDUM OPINION

DOWD, District Judge.

INTRODUCTION

By virtue of the plaintiffs objections to the August 22, 1986 report and recommendation of Magistrate Charles Laurie, the Court has before it for resolution the issue of the extent to which an intervening defendant in a patent action may be subjected to discovery in the accounting phase of the litigation to determine if the intervenor is engaging in infringement conduct for which it is liable in damages in a case where the original defendant, but not the intervenor, has been found to have infringed upon the plaintiffs valid patent.

The Court has concluded that the issue is novel in that no precedent is cited by either the plaintiff or the intervenor which is dis-positive of the issue.

HISTORY OF THE CASE

This action involves U.S. Patent No. 3,721,051 issued to Frank W. Fork (Fork patent) on March 20, 1973. The Fork patent, which has since been assigned to H.H. Robertson Company (Robertson), teaches a bottomless sub-assembly for producing an under-floor electrical cable trench. The structure is used in commercial buildings to provide a ubiquitous and flexible system for distributing electrical power and communication cables throughout the floors in the building.

The plaintiff, Robertson, is a Pennsylvania corporation with its principal place of business at Pittsburgh, Pennsylvania. Robertson has long been a leader in developing electrified floor structures for commercial buildings and has marketed a series of structures over the years. Robertson is the owner of the Fork patent as Fork’s assignee.

The original defendant in this action, Bargar Metal Fabricating Company (Bar-gar), is an Ohio corporation having its principal place of business at Cleveland, Ohio. Bargar’s Conduflor Division manufactured and sold the products alleged to infringe upon the Fork patent. On June 8, 1983, Bargar filed for protection under Chapter XI of the Bankruptcy Act in the United States District Court for the Northern District of Ohio. The automatic stay provisions of § 362 of the Bankruptcy Code were modified by an October 2,1983, Court order to allow Robertson to prosecute this action.

On December 1, 1983, Conduflor Corporation (Conduflor) purchased the assets of Bargar’s Conduflor Division from the bankruptcy trustee.1 The bankruptcy court approved the sale and Conduflor became the owner of the goodwill and other business assets of the Bargar Conduflor Division. At the time of the sale, Conduflor knew of this pending lawsuit.

Conduflor is a Michigan Corporation with a place of business at the premises of Bar-gar in Cleveland, Ohio. Conduflor is completely separate from Bargar and has different shareholders, directors, and officers. On January 25, 1984, the Court granted Conduflor leave to intervene as a party to this action.

The case with respect to the issue of validity of patent '051 was tried before the [1029]*1029Court in a bench trial on March 1 through March 7,1984. Following a briefing schedule, the Court published a 63-page Memorandum Opinion on November 20, 1984 finding that the Fork patent was valid and infringed by Bargar’s conduct.

The Court referred to Conduflor in relevant portions of the memorandum opinion of November 20, 1984 as follows:

at page 3,
The bankruptcy court approved the sale and Conduflor became the owner of the goodwill and other business assets of the Bargar Conduflor Division. At the time of the sale, Conduflor knew of this pending lawsuit.
Conduflor is a Michigan Corporation with a place of business at the premises of Bargar in Cleveland, Ohio. Conduflor is completely separate from Bargar and has different shareholders, directors, and officers. On January 25,1984, the Court granted Conduflor leave to intervene as a party to this action.
Bargar engaged in all of the conduct giving rise to this action. Nonetheless, Conduflor took an active role in the trial of this matter. For purposes of this opinion, when the Court refers to the conduct of the defendants, the Court will refer to Bargar’s conduct. When the Court refers to the contentions raised by the parties, the Court’s references will be to the defendants....
at page 57,
... A review of the pleadings in this case indicates that Robertson has not made any claims of infringement or contributory infringement against Conduflor. Conduflor’s liability, if any, arises solely as the owner of the former Bargar Con-duflor division.
The parties have devoted considerable attention to the effect of the Sixth Circuit’s decision in Vulcan, Inc. v. Fordees Corp., 658 F.2d 1106 (6th Cir.1981), cert. denied 456 U.S. 908, 102 S.Ct. 1752, 72 L.Ed.2d 162 (1982). In that case, the Court held a successor in interest bound by doctrines of res judicata to a prior entry of judgment against its successor on patent validity and infringement issues. Under Vulcan, a successor in interest is bound by any judgment entered against its predecessor holding a patent valid or infringed. As this case does not involve an effort by the patent holder to bind Conduflor by a previous judgment entered against Bargar, the Court has no occasion to comment upon the question of whether the Vulcan decision precludes Conduflor from ever again challenging the validity of the Fork patent or the question of whether the accused structures infringe upon the patent.
A more difficult issue is whether this Court should enter judgment against Conduflor, as well as against Bargar. As noted earlier, the Vulcan decision does not control this issue. As the parties have not briefed the question in any other context, the Court will defer decision on this issue until a later date.... at page 62,
For the foregoing reasons, the Court concludes that the Fork patent is valid and infringed by Bargar’s conduct. Further, the Court concludes that judgment should be entered in favor of Robertson and against the defendants on the counterclaim. ...

By its order published on October 10, 1985, the Court reviewing the status of the case and the objection, of Conduflor to discovery by the plaintiff with respect to Con-duflor’s alleged infringement or contributory infringement declared as follows:

In the Court’s view, Conduflor is bound by the Court’s determination that the plaintiff’s patent is valid and that it was infringed by Bargar. Conduflor participated in the trial as an intervening party in which those decisions were reached by the Court. By the act of intervention in this case, Conduflor is also liable in this action for any infringements of the plaintiff’s patent in which it engaged. See Holstensson v. Webcor, Inc., 150 F.Supp. 441, 448 (N.D.Ill.1957).
To summarize, it is evident that the issue of infringement by Conduflor as the purchaser of the business of Bargar was not before the Court when the trial on the issue of patent validity and in[1030]*1030fringement was tried to the Court in March of 1984.

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Bluebook (online)
666 F. Supp. 1027, 2 U.S.P.Q. 2d (BNA) 1804, 1987 U.S. Dist. LEXIS 13206, Counsel Stack Legal Research, https://law.counselstack.com/opinion/hh-robertson-co-v-bargar-metal-fabricating-co-ohnd-1987.