Jenn-Air Corp. v. Penn Ventilator Co., Inc.

394 F. Supp. 665, 185 U.S.P.Q. (BNA) 410, 1975 U.S. Dist. LEXIS 13590
CourtDistrict Court, E.D. Pennsylvania
DecidedFebruary 28, 1975
DocketCiv. A. 38930
StatusPublished
Cited by12 cases

This text of 394 F. Supp. 665 (Jenn-Air Corp. v. Penn Ventilator Co., Inc.) is published on Counsel Stack Legal Research, covering District Court, E.D. Pennsylvania primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Jenn-Air Corp. v. Penn Ventilator Co., Inc., 394 F. Supp. 665, 185 U.S.P.Q. (BNA) 410, 1975 U.S. Dist. LEXIS 13590 (E.D. Pa. 1975).

Opinion

*667 OPINION

BECHTLE, District Judge.

I. Introduction

This is an accounting action to assess damages against Penn Ventilator Company, Inc. (hereinafter “Penn”), for Penn’s infringement of Jenn-Air Corporation’s (hereinafter “Jenn-Air”) U. S. Patent No. 2,548,607 claiming a centrifugal sidewall exhauster; U. S. Patent No. 3,110,357 claiming the combination of a roof exhauster and sound control curb having a single, horizontal baffle; and, U. S. Patent No. 3,085,647 claiming a sound control curb having multiple, horizontal baffles. The action is before this Court for a determination of damages pursuant to the mandate of the Court of Appeals for the Third Circuit. 1 The Court of Appeals reversed the District Court's dismissal of Jenn-Air’s complaint for patent infringement and unfair competition and directed that the instant action be retried with respect to the amount of damages sustained by the plaintiff. This Opinion contains the Court’s findings of fact and conclusions of law with respect to the issues raised in the present proceedings.

II. Findings of Fact as to Damages

(1) U. S. Patent No. 2,548,607 (“607 patent”) was issued to Louis J. Jenn on April 10, 1951. The 607 patent, which claims a centrifugal sidewall exhauster, was assigned to plaintiff corporation by Mr. Jenn by an assignment dated December 1, 1967. The accounting period for the 607 patent extends from May 10, 1962, to April 10, 1968, the date on which the above patent expired.

(2) U. S. Patent No. 3,085,647 (“647 patent”) was issued on April 16, 1963, to plaintiff, which was at that time named Jenn-Air Products Company. The 647 patent claims a sound control curb having multiple, horizontal baffles. The accounting period for the above patent extends from April 16, 1963, the date of the issuance of the 647 patent, to September' 7, 1972, the date on which the injunction barring further infringement of the 647 patent was issued.

(3) U. S. Patent No. 3,110, 357 (“357 patent”) was issued to Jenn-Air Products Company on November 12, 1963. Plaintiff has been the owner of 357 patent, which claims a roof exhauster in combination with a sound control curb having a single, horizontal baffle, since the issuance of said patent. The accounting period for the 357 patent extends from November 12, 1963 to September 7, 1972, the date on which the injunction restraining further infringement of the 357 patent was issued.

(4) The infringing centrifugal sidewall exhausters manufactured and sold by Penn in violation of plaintiff’s rights under the 607 patent were called “Wall Mounted Domex” exhausters. The total sales of infringing “Wall Mounted Domex” exhausters over the accounting period amounted to $1,233,740, which figure includes $66,886 worth of accessories sold with the wall domex units, $85,454 in commissions, and $80,113 in freight charges paid by Penn.

(5) The infringing sound control curbs manufactured and sold by Penn were called the “Ultra Sonotrol Curbs.” The manufacture and sale of the “Ultra Sonotrol Curbs” by Penn infringed the single-baffle structure of the plaintiff’s 357 patent and the multi-baffle structure of the plaintiff’s 647 patent. Penn’s sales of all infringing “Ultra Sonotrol Curbs” (single and multi-baffle) during the accounting period amounted to $642,-046. The above figure includes $44,471 in commissions and $41,691 in freight paid by Penn.

(a) Penn’s sales of “Ultra Sonotrol Curbs” of the design adjudged to in *668 fringe plaintiff’s 647 patent amounted to $504,462, which figure includes $34,-800 in commissions and $32,800 in freight paid by Penn.

(6) Penn’s sales of roof exhausters (sold in connection with and for the purpose of mounting on the “Ultra Sonotrol Curbs” sold by Penn) amounted to $1,113,912, which figure includes $60,-901 worth of accessories sold with the roof exhausters, $79,936 in commissions, and $68,377 in freight paid by Penn.

(7) Penn’s total sales of non-infringing power ventilating equipment on orders including one or more infringing wall domex units or “Ultra Sonotrol Curbs” were within the range of $4 million to $5.5 million. The sales of the non-infringing products were made to the same customers — as part of the same orders — who purchased the infringing items.

(8) Penn’s infringement of the 357 patent consisted of the sale of sound control curbs and the roof exhausters. The acoustic curb and roof exhauster described in plaintiff’s patent 357 comprise a matched set of interacting components designed, sold, and installed as one integral unit. Because the 357 patent clearly claims the combination of the roof exhauster and acoustic curb, and in light of the fact that the roof exhauster and acoustic curb were sold as one operative unit, the royalty base under the 357 patent would necessarily have included both the roof exhauster and acoustic curb.

(9) The general and customary practice of purchasers of ventilating equipment is to purchase all of the required power-driven ventilating equipment and related products from a single manufacturer. The equipment needed for a given job site is customarily specified on one order and the order or contract is awarded to a single manufacturer who has the capability of supplying all of the ventilating equipment and accessory products specified for installation at that job site.

(10) Because of Penn’s ability to bid on those orders calling for the infringing products, it was able to sell non-infringing products to the customer who specified and thereafter contracted to purchase the infringing items. The fact that a licensee would be able to sell the related non-infringing products would be a significant consideration in the hypothetical negotiation between a willing licensor and a willing licensee.

(11) Jenn-Air is entitled to damages for infringement of the 607, 357 and 647 patents measured by a reasonable royalty on the net selling price of the infringing items.

(12) On April 13, 1966, Jenn-Air and Greenheek Fan and Ventilator Company entered into a license agreement whereby Greenheek agreed to pay Jenn-Air a royalty of 4% of net sales of wall ex-hausters sold by Greenheek under the 607 patent. The license agreement providing for a royalty of 4% of net sales was consummated in connection with the settlement of a patent infringement suit instituted by Jenn-Air against Greenheek in 1963. Royalties were paid to Jenn-Air based on sales of the licensed product until 1968, at which time the 607 patent expired.

(13) The license agreement between Jenn-Air and Greenheek provided for a royalty of 4% of the net sales of the wall exhausters covered by the 607 patent. The term “net sales” was defined in such agreement as the price F.O.B. Greenheck’s plant, less trade or quantity discounts. The term “F.O.B. plant” meant the price of the finished product as it rested on the manufacturer’s loading dock, exclusive of freight charges.

(14) In the normal course of negotiations between a willing licensor and prospective licensee, the term “net selling price” is defined by the parties involved in the particular negotiations.

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Cite This Page — Counsel Stack

Bluebook (online)
394 F. Supp. 665, 185 U.S.P.Q. (BNA) 410, 1975 U.S. Dist. LEXIS 13590, Counsel Stack Legal Research, https://law.counselstack.com/opinion/jenn-air-corp-v-penn-ventilator-co-inc-paed-1975.