The opinion of the court was delivered by: Miner, District Judge.
This matter having been fully tried before the Court, and the
Court having read the pleadings filed herein by the respective
parties, and the Court having heard and examined all the
testimony, documents and exhibits presented by the respective
parties and admitted into evidence, and the Court having read,
heard and considered the briefs, memoranda and oral arguments
submitted by counsel in support of their respective positions,
and the Court being fully advised, the Court hereby enters its
Findings of Fact and Conclusions of Law as follows:
I. The Parties, The Pleadings, and Preliminary Matters.
1. North Star Ice Equipment Company is a Washington corporation
with its principal place of business in Seattle, Washington, and
is engaged in the manufacture and sale of North Star Ice Makers
for the production of ice in flake form.
3. This suit was instituted by North Star for a declaratory
judgment that Akshun's patent 2,659,212 is invalid and not
infringed by North Star's ice removal tool, method of removing
ice and ice machine combination, and that Akshun's patent
2,683,357 is invalid and not infringed by North Star's ice
machine overflow trough. Plaintiff further seeks to restrain
defendants from suing, threatening to sue, or sending threats of
suits or notices to plaintiff and customers or prospective
customers of plaintiff charging infringement of the said patents.
Finally, plaintiff requests damages allegedly sustained by reason
of the said threats of suit.
4. Defendant Kent filed a counterclaim seeking to restrain
plaintiff North Star from threatening purchasers and prospective
purchasers of this defendants' machines with suit for
infringement of plaintiff's patent 2,735,275, and for damages. On
the first day of trial, the court granted this defendant leave to
amend its prayer for injunction to refer to the specific number
of this patent.
5. Akshun Manufacturing Company on February 14, 1957, filed
suit in the Northern District of Wisconsin against Tillman
Produce Company, Civil Action 2918, charging infringement of
patents 2,659,212 and 2,683,357 by Tillman's use of an ice making
machine manufactured by North Star Ice Equipment Company.
6. A bona fide controversy exists between the parties.
II. Lees Patent 2,659,212 In Suit
A. The Scope and Limitations of the Patent
7. On September 8, 1950, application for patent 2,659,212,
naming Gerald M. Lees as inventor, was filed in the Patent
Office. The application disclosed and claimed a particular knife
for removing a thin sheet of ice in flakes from the freezing
surface on the inside of an upright drum-type ice making machine.
The knives are carried on an arm revolving slowly around the
freezing surface. Each knife has a horizontal leading portion
with an edge adapted to score and form a groove in the ice. A
plurality of knives, one above the other, are present to score
the ice into a plurality of parallel spaced grooves. Each knife
also has a trailing portion riding in the groove previously
formed by the leading portion. The trailing portion is tilted
downwardly at an angle to the direction of movement to force the
scored ice downwardly, breaking the bond between the ice and the
freezing surface and thus completing the ice removal process.
8. The file wrapper of the Lees patent shows that the
application filed in the Patent Office on September 8, 1950,
contained eleven claims. Claims 1, 2 and 3 claimed ice removal
knives, describing the leading portion with its scoring or
groove-forming function and the trailing portion with its angle
to direction of movement to force the ice downward. Claims 4 and
5 of the original application were directed to the method of
removing ice from a surface to which it is frozen by initially
scoring the ice followed by the forcing of the ice downward by
pressure applied to the ice along the score lines or grooves.
Claims 6, 7 and 8 were directed to combinations of elements
constituting flake ice making machines, including ice removal
blades. Claims 9, 10 and 11 claimed mechanisms for scoring and
On July 19, 1951, as shown by the file wrapper, Lees added a
new claim 13 to his application for patent 2,659,212. Claim 13
was broader than the original claims in that it omitted the
leading part of the blade and its scoring or groove-forming
function. Claim 13 claimed only the trailing part of the knife
which is at an angle to the direction of movement of the knives,
and would, had it been allowed, read on wedge-type one-part ice
10. On February 11, 1953, new claims 14, 15, 16 and 17 were
rejected as unpatentable over the Taylor patent disclosure, and
combination claims 18, 19, 20 and 21 were allowed. The
combination claims describe the machines for making flake ice in
general terms, but describe the blades which are part of the