Grigoleit Company v. Whirlpool Corporation
Filing
Filed opinion of the court by Judge Easterbrook. AFFIRMED. Frank H. Easterbrook, Circuit Judge; Ann Claire Williams, Circuit Judge and Diane S. Sykes, Circuit Judge. [6613119-1] [6613119] [14-1663]
Case: 14-1663
Document: 40
Filed: 10/16/2014
Pages: 4
In the
United States Court of Appeals
For the Seventh Circuit
____________________
No. 14-‐‑1663
THE GRIGOLEIT COMPANY,
Plaintiff-‐‑Appellant,
v.
WHIRLPOOL CORPORATION,
Defendant-‐‑Appellee.
____________________
Appeal from the United States District Court
for the Central District of Illinois.
No. 05-‐‑CV-‐‑2126 — Colin S. Bruce, Judge.
____________________
ARGUED SEPTEMBER 29, 2014 — DECIDED OCTOBER 16, 2014
____________________
Before EASTERBROOK, WILLIAMS, and SYKES, Circuit Judges.
EASTERBROOK, Circuit Judge. For many years Whirlpool
purchased injection-‐‑molded plastic knobs and decorative
metal stampings from Grigoleit. In 1992 Whirlpool told
Grigoleit that it would replace its products with those made
by Phillips Plastics. After concluding that Phillips was using
a method protected by its patents, Grigoleit demanded that
Whirlpool switch back. In 1993 they struck a bargain: Grigo-‐‑
leit would license Whirlpool and Phillips to practice the pa-‐‑
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No. 14-‐‑1663
tents, and instead of royalties Grigoleit would get some of
Whirlpool’s business. Paragraph 3 of the contract says:
Whirlpool shall not be obligated to pay Grigoleit any monies as
royalties … so long as Whirlpool continues to purchase from
Grigoleit Whirlpool’s requirement for present styling of knobs
for the “Estate” and “Roper” brand lines of automatic clothes
washers and dryers and so long as … Whirlpool continues to
give serious consideration to Grigoleit [for other product lines
when Grigoleit can provide] more than parity in technology,
quality, service, delivery and price in comparison with other
qualified suppliers[.]
The agreement expired, with the patents, in 2003.
From 1993 through 2003 Whirlpool bought all knobs for
the Estate and Roper lines from Grigoleit. But it bought
some knobs for other lines from Grigoleit’s competitors, and
Grigoleit concluded that it had not received the “serious
consideration” to which ¶3 entitled it. That dispute was arbi-‐‑
trated, as the contract provided. The arbitrator concluded
that Whirlpool had failed to consider Grigoleit’s parts for
some lines of washers and dryers “and therefore is liable for
payment of money royalties or damages as the courts may
determine.” In this suit under the diversity jurisdiction,
Grigoleit demanded damages calculated by a contract meas-‐‑
ure: the profit it would have made had Whirlpool purchased
its requirements of knobs exclusively from Grigoleit. The
district court held, however, that Whirlpool had not prom-‐‑
ised to give Grigoleit’s knobs serious consideration; instead
it had promised to pay royalties if it failed to do so. 2010 U.S.
Dist. LEXIS 45524 (C.D. Ill. May 10, 2010). Unfortunately, the
contract failed to specify the royalty Whirlpool would owe if
it did not meet the conditions for a royalty-‐‑free license. The
court concluded that a reasonable royalty falls in the range
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of 1¢ to 12¢ per part and scheduled proceedings to produce a
definitive royalty. 2014 U.S. Dist. LEXIS 686 (C.D. Ill. Jan. 3,
2014). The parties then agreed that royalties computed under
the district court’s approach come to $140,000, but Grigoleit
reserved its right to contest the two rulings on appeal.
Grigoleit’s principal argument in this court is that, once
Whirlpool took advantage of the royalty-‐‑free license under
¶3, it became bound for the duration of the contract to give
Grigoleit “serious consideration” for all of its requirements
for parts that Grigoleit could supply. Paragraph 3’s language
forecloses that contention. It says, twice, that Whirlpool gets
a royalty-‐‑free license “so long as” it purchases Grigoleit’s
knobs for two product lines and gives it “serious considera-‐‑
tion” for the rest. The phrase “so long as” permitted Whirl-‐‑
pool to change how it performed, getting a royalty-‐‑free li-‐‑
cense in some periods and paying royalties in others. Whirl-‐‑
pool failed to keep its promise; for some periods it neither
gave Grigoleit “serious consideration” nor paid royalties.
This allowed Grigoleit to seek compensation, which it has
done. But what it is entitled to are “royalties” rather than
contract damages under a theory that once Whirlpool took a
royalty-‐‑free license for any period it was bound to meet the
conditions of ¶3 until the patents expired.
Grigoleit protests that the district court’s approach treats
the contract as an option, held by Whirlpool, rather than as
bilateral and binding. Grigoleit accuses the district judge of
ignoring ¶1, which grants Whirlpool a non-‐‑exclusive license
and releases it from liability for pre-‐‑agreement infringement.
But the district court did not ignore Grigoleit’s promises; in-‐‑
stead it read the contract as including Whirlpool’s promise
to pay royalties—without any need for Grigoleit to show
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No. 14-‐‑1663
that its patents were valid and infringed—unless it met the
conditions in ¶3. That’s a substantial promise by Whirlpool.
Paragraph 7, which says that the contract terminates if
Whirlpool stops buying Grigoleit’s products for the Roper
and Estate lines, does not imply that Whirlpool must give
“serious consideration” to Grigoleit’s parts for all lines, in-‐‑
definitely, once it buys even one of Grigoleit’s knobs; instead
it reinforces the inference that the contract continues, but
Whirlpool must pay royalties, if it stops giving “serious con-‐‑
sideration” to Grigoleit’s offerings for other lines.
Nonetheless, Grigoleit contends that even if Whirlpool
was entitled to change its mind and shift from buying knobs
to paying royalties, the amount it owes still should be calcu-‐‑
lated under the lost-‐‑profits method of contract law. The
main reason that it gives for this contention is that during
their negotiations the parties decided not to set a per-‐‑piece
royalty. Only a contract measure of damages then is possi-‐‑
ble, the argument concludes. Yet ¶9 of the contract is an in-‐‑
tegration or entire-‐‑agreement clause, in which Grigoleit and
Whirlpool disclaim any understandings that do not appear
in the contract’s final text. What the text tells us is that
Whirlpool owes “royalties,” and lost profits differ from roy-‐‑
alties. The caption on the contract is “LICENSE
AGREEMENT” and the heading on ¶3 is “Royalties”. The
district court therefore was not obliged to treat ¶3 as a re-‐‑
quirements contract; the deal is a patent license.
AFFIRMED
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