The opinion of the court was delivered by: ABRUZZO
This is a suit based upon United States letters patent No. 1,834.070, issued December 1, 1931, for what is known as an "instantaneous" or "tankless" water heater.
The plaintiff Parkinson Heater Corporation is the owner of the patent in suit, and the plaintiff Parkinson Heating Appliances, Inc., is the exclusive licensee under the patent in suit in certain territory, particularly that territory embraced by the Eastern District of New York.
The plaintiffs claim that A. Goldenstein, Inc., has infringed upon the United States letters patent as aforesaid by making and selling water heaters that are covered by these letters patent.
The plaintiffs, in their brief, have said that in order to succeed they must show the following:
"1. The existence of the Parkinson Heater Corporation;
"2. The existence of the Parkinson Heating Appliances, Inc.;
"3. Title to the patent in suit in one of the plaintiffs;
"4. An interest in the patent in suit in the other plaintiff;
"5. The existence of the defendant; and
"6. Infringement of the patent by the defendant.
"Failure on the part of plaintiffs to show (1), (3), (5) and (6) above entitled the defendant to a decree in its favor. If these four allegations are proven, the defendant must prove, if it be entitled to a decree.
"7. That the patent in suit is invalid."
As to "1. The existence of the Parkinson Heater Corporation," this has been completely established and the Court so finds. As to "2. The existence of the Parkinson Heating Appliances, Inc.," the court finds that this also has been established. It will readily be seen from a copy of the patent in suit that title to this patent is in the plaintiff Parkinson Heater Corporation, and the court so finds. That the Parkinson Heating Appliances, Inc., is shown to be a proper party plaintiff due to its exclusive license has amply been proved under item numbered 4 on page numbered 3 of plaintiffs' brief. The corporate existence of the defendant is not disputed under item numbered 5 on page numbered 3 of plaintiffs' brief, and that existence is so found by the court. The only question left open is whether or not there has been an infringement of the patent in suit and whether or not the patent is valid. The court will take up these issues in their inverse order.
The patent is for an "instantaneous" or "tankless" water heater for heating domestic hot water as the same passes through the heater in full flow, thereby eliminating the use of a storage tank. Before the work of John J. Parkinson, the patentee of the patent in suit, it was the practice to provide a large hot water storage tank and a hot water heater connected to the storage tank. This water circulated slowly, by gravity, from the bottom of the storage tank through the heater and back to the storage tank. Plaintiffs' Exhibit No. 9 is a fair illustration of this type of model.
Parkinson felt that he could heat water without the use of a storage tank or a separate heater. In an earlier patent No. 1,552,641 (Pl. Ex. No. 13), Parkinson discloses a "partition tube" hot water heater. In that particular patent, the heater is disclosed as a series of parallel tubes, in each tube of which there is a partition which divides or splits the tube; this partition stopping just prior to the end of the tube. In operation several of these units were inserted in a boiler and connected in series (Figs. 3 and 5 of patent Pl. Ex. No. 13) and to a preheater at the side of the boiler. The water entered one side of the T-fitting tubes, passed along that part of the partition, and then came out the other side of the T-fitting tubes. These were installed by cutting a number of holes in the boiler (Pl. Ex. Nos. 9 and 14).
This method was found to be impractical by those skilled in the art and no sales of any consequence were made. The lack of sales was caused by serious defects in that model. It was expensive to install and required too many units spread out across the top of the boiler. The units carrying cold water cooled the surface of the water in the boiler, the steam in the boiler condensed, and made it impossible to get up engough steam to heat the building in cold weather. However, it had an important bearing on the art because it eventually caused Parkinson to have the patent in suit issued.
The patent in suit is a simple contrivance. It is for a tankless water heater that eliminates the use of a hot water storage tank (Pl. Ex. No. 1). This patent has two types of heater, the P-type ...