Ransburg Electro-Coating Corp. v. Proctor Electric Co.

242 F. Supp. 28, 145 U.S.P.Q. (BNA) 529, 1965 U.S. Dist. LEXIS 9697
CourtDistrict Court, D. Maryland
DecidedMay 19, 1965
DocketCiv. A. No. 10181
StatusPublished
Cited by7 cases

This text of 242 F. Supp. 28 (Ransburg Electro-Coating Corp. v. Proctor Electric Co.) is published on Counsel Stack Legal Research, covering District Court, D. Maryland primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Ransburg Electro-Coating Corp. v. Proctor Electric Co., 242 F. Supp. 28, 145 U.S.P.Q. (BNA) 529, 1965 U.S. Dist. LEXIS 9697 (D. Md. 1965).

Opinion

R. DORSEY WATKINS, District Judge.

Plaintiff has filed a petition to have defendant Ionic Electrostatic Corporation (hereinafter “defendant”; Proctor is not herein involved) adjudicated to be in contempt of an order passed by this court on May 7, 1962, and for an awarding of damages, including actual damages, expenses and attorney’s fees, for such alleged contempt. Subsequently the petition was amended to request trebling of actual damages for alleged willful and wanton violation of the injunction. Defendant has responded, denying any violation of the injunction and claiming that all its conduct was in good faith, and at least part thereof taken upon advice of counsel.

[29]*29Six days were spent in the hearing of testimony, and numerous exhibits were filed. Thereafter time was allowed for the filing of briefs, followed by a full day of oral argument.

Background.

On March 15, 1962 this court rendered its opinion in Ransburg Electro-Coating Corporation v. Proctor Electric Company, Inc. and Ionic Electrostatic Corporation, D.Md.1962, 203 F.Supp. 235, affirmed 4 Cir. 1963, 317 F.2d 302, upholding the validity of the five patents of plaintiff in suit, and finding infringement by defendants of certain designated claims thereof. While a full understanding of the issues presently involved would certainly, if not requiring, be aided by, a reading and study of that opinion, it may suffice to say that the patents in question related to electrostatic spray-coating systems.1 Early in the opinion the court referred to plaintiff’s contentions, which it upheld, that the patents in suit disclosed methods and apparatus in which “the paint is made the electrode and electrostatically atomized, or that at least the paint is charged and atomized at the point of highest field intensity, is at the moment of atomization given a ‘built-in’ charge, and that the electrostatic field thereupon disperses the particles, and deposits them upon the work.”2 With respect to the scope of the patents, and infringement, defendants contended, but the court found to the contrary, that “the patents, if valid, are limited to those applications in which electrostatic forces are the sole source of atomization, dispersion and deposition. Otherwise stated, defendants claim that no infringement occurs if, specifically, centrifugal force plays any part, no matter how small, in either and/or atomization, dispersion or deposition.”3

In connection with defendants’ contention of file wrapper estoppel the court said: 4

“The court is of the opinion that the minimum clearly allowable to plaintiffs as the result of the Patent Office prosecution is that plaintiff’s patents cover any case in which the paint, as presented to the field (by gravity, or centrifugal force) is then atomized under circumstances in which electrostatic forces either predominate, or form a significant factor.”

In its opinion, the court requested counsel to submit an appropriate decree. Drafts were presented by both sides. In addition to the normal differences in language of two persons expressing the the same general idea, there was a material difference in the substantive approach to the drafting of the injunctive provisions. Plaintiff in effect sought to embody by reference the patents in suit, and the court’s opinion with respect thereto. Defendants insisted that under F.R.Civ.P. 65(d), the injunctive portion of the decree must “describe in reasonable detail, and not by reference to the complaint or other document, the act or acts sought to be restrained * * * With this the court ultimately agreed.

Further difficulty was experienced in framing the language of the injunctive paragraph, in that all the devices currently used by plaintiff’s licensees under the patents, and all the accused devices, used metal atomizing “heads” which were directly charged. Defendants sought to have the “process” portions of the injunction limited (among other things) to any process in which an electrical potential is created at the edge of the atomizing head by applying voltage “directly” to [30]*30said atomizing head. The court refused to embody this limitation.5

The resultant paragraph 19 of the decree reads as follows:

“19. Defendant, Ionic, including its officers, agents, servants, employees and attorneys, and those persons in active concert or participation with them, and each of them, is enjoined from:
“(a) Making, using or selling the apparatus described, respectively, in this cause as ‘Model 12/ ‘Model 50’ and ‘Model M-50,’ or equivalents thereof, during the life of any of United States Letters Patent No. 2,685,536, No. 2,794,417, No. 2,893,893 and No. 2,893,894, and making, using or selling the apparatus described, respectively, in this cause as ‘Model 50’ and ‘Model M-50’, or equivalents thereof, during the life of United States Letters Patent No. Re. 24,602.
“(b) Practicing the electrostatic spray coating process which is performed in the use of the apparatus described, respectively, in this cause as ‘Model 12,’ ‘Model 50,’ and ‘Model M-50’ or equivalents, including any process, (1) in which liquid coating material is advanced in a thin film to the edge of an atomizing head, an electrical potential is created at said edge by applying voltage to said atomizing head, said electrical potential being sufficient to create an electrostatic field between said atomizing head and the objects to be coated of sufficient strength to atomize, disperse and deposit the liquid coating material on the articles to be coated ; or, (2) any process in which liquid coating material is advanced in a thin film to the edge of an atomizing head, an electrical potential is created at said edge by applying voltage to said atomizing head, said electrical potential being sufficient to create an electrostatic field between said atomizing head and the objects to be coated of sufficient strength to disperse and deposit the liquid coating material on articles to be coated and atomizing liquid coating material at the point of highest concentration of the lines of force in the electrostatic field, during the life of any United States Letters Patent No. 2,685,536, No. 2,794,417, No. 2,893,893 and No. 2,893,894.
“(c) Actively inducing others to perform, or contributing to the performance by others of, any of the acts enjoined in subparagraphs (a) and (b) immediately above.” 6

The decree of the court, including the injunctive provisions of paragraph 19, was appealed and was affirmed in Ransburg Electro-Coating Corp. v. Proctor Electric Company, Inc. and Ionic Electrostatic Corporation, 4 Cir. 1963, 317 F.2d 302.

Defendant, while admitting that the provisions of the decree are binding, and that the question of validity, both of the patents in suit and of the injunctive provisions of the decree therein, may not be raised by collateral attack, does in substance question the propriety of the injunctive provisions, and, on the matter of damages, seeks to show that the ac[31]

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242 F. Supp. 28, 145 U.S.P.Q. (BNA) 529, 1965 U.S. Dist. LEXIS 9697, Counsel Stack Legal Research, https://law.counselstack.com/opinion/ransburg-electro-coating-corp-v-proctor-electric-co-mdd-1965.