Freedman Seating Co. v. American Seating Co.

• Decision Date: 11 August 2005
• Docket Number: No. 04-1216.,No. 04-1248.,04-1216.,04-1248.
• Citation: 420 F.3d 1350
• Parties: FREEDMAN SEATING COMPANY, Plaintiff-Cross Appellant, v. AMERICAN SEATING COMPANY and Hi-Tech Seating Products, Inc (doing business as Kustom Fit), Defendants-Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

420 F.3d 1350

FREEDMAN SEATING COMPANY, Plaintiff-Cross Appellant, v. AMERICAN SEATING COMPANY and Hi-Tech Seating Products, Inc (doing business as Kustom Fit), Defendants-Appellants.

No. 04-1216.

No. 04-1248.

United States Court of Appeals, Federal Circuit.

August 11, 2005.

Richard D. Harris, Greenberg Traurig, LLP, of Chicago, Illinois, argued for plaintiff-cross appellant. With him on the brief were Herbert H. Finn and Jeffrey P. Dunning.

Todd R. Dickinson, Fisher & Dickinson, of Ada, Michigan, argued for defendants-appellants. Of counsel on the brief were Conrad J. Clark and Christopher W. Brody, Clark & Brody, of Washington, DC.

Before MAYER, Circuit Judge, PLAGER, Senior Circuit Judge, and SCHALL, Circuit Judge.

SCHALL, Circuit Judge.

This is a patent infringement case. Freedman Seating Company ("Freedman") sued American Seating Company and Hi-Tech Seating Products (doing business as Kustom Fit) (collectively, "American Seating") in the United States District Court for the Central District of California for infringement of U.S. Patent No. 5,492,389 (issued Feb. 20, 1996) ("the '389 patent") and for unfair competition in violation of the Lanham Act, 15 U.S.C. § 1125 (2000). The district court granted summary judgment in favor of Freedman both on the issue of infringement under the doctrine of equivalents and on American Seating's counterclaim of invalidity by reason of obviousness. Freedman Seating Co. v. Am. Seating Co., No. CV-02-5347 (C.D.Cal. Oct. 24, 2003) ("Summary Judgment I"). The court granted summary judgment in favor of American Seating, however, on Freedman's Lanham Act claim. Id. After American Seating filed a motion for reconsideration, the district court also granted summary judgment in favor of Freedman on American Seating's affirmative defense of unenforceability based upon inequitable conduct. Freedman Seating Co. v. Am. Seating Co., No. CV-02-5347 (C.D.Cal. Nov. 18, 2003) ("Summary Judgment II"). A jury trial subsequently was held to determine damages, the jury ultimately awarding Freedman $163,155.20 in lost profits from American Seating Company and $14,800.00 in royalties from Kustom Fit. Freedman Seating Co. v. Am. Seating Co., No. CV-02-5347 (C.D.Cal. Jan. 12, 2004) ("Judgment on Jury Verdict").

American Seating now appeals all aspects of the district court's summary judgment decision that were unfavorable to it. Freedman, in turn, cross-appeals the district court's ruling allowing American Seating to invoke the advice of counsel defense to Freedman's charge of willful infringement, the jury's finding of no willful infringement and its calculation of damages, and the district court's refusal to award costs and prejudgment interest.¹ Because we conclude that the judgment of infringement under the doctrine of equivalents has the effect of vitiating a limitation of the claims of the '389 patent, we reverse the judgment and remand the case to the district court with instructions to enter judgment of non-infringement in favor of American Seating. Because we conclude that genuine issues of material fact remain as to obviousness, we also reverse the district court's grant of summary judgment of validity and remand for further proceedings. We do not reach the other issues raised on appeal.

BACKGROUND

I.

A.

Freedman manufactures seats used in public transportation vehicles. Its product line includes stowable seats, which are seats that have the ability to fold away in order to create more interior space in a vehicle. They are particularly useful for accommodating passengers with wheelchairs, but may be used whenever more interior space is needed.

Freedman also owns the '389 patent, titled "Stowable Seat." The figures shown below are representative of the stowable seat claimed in the '389 patent.

NOTE: IMAGE IS ELECTRONICALLY NON-TRANSFERABLE.

Figure 1 shows the stowable seat (10) in the horizontal (or deployed) position, while figure 2 shows the stowable seat in the vertical (or stowed) position. Moving the seat from its horizontal to vertical position involves "folding the seatback (16) flat against the seatbase (14), unlocking the seatbase from its horizontally deployed position and raising the seatbase to its vertically stowed position where it is locked in place." '389 patent, col. 1, ll. 19-24 (numerals added).

As shown by figure 1, the invention of the '389 patent does not use an aisle leg to support the seat when in the horizontal position. See id. col. 1, ll. 8-14; col. 3, ll. 32-34. Rather, the invention is based on a cantilever design, which uses a diagonal truss (18), also referred to as a support member, to support the aisle-end of the seat when in the horizontal position. This design, according to the '389 patent, avoids difficulties attendant with stowing and deploying seats that have a separate aisle leg. Id. col. 1, ll. 25-35.

In addition to providing aisle support, the diagonal truss allows for translational movement of the seatbase between the horizontal and vertical positions. This is due to the truss having a fixed end that is attached to the seat's frame (12) at a pivot point (54), and a movable end (56) that is "slidably mounted" in a runner track (58). Id. col. 3, ll. 40-47. When stowing the seat, the movable end of the diagonal truss slides on the runner track toward the middle of the seatbase, while the fixed end of the diagonal truss rotates upward until the seat is in the vertical position. Similarly, when the seat is deployed again, the movable end of the diagonal truss slides toward the aisle end of the seatbase, while the fixed end rotates downward until the seat is in the horizontal position. This folding mechanism created by the slidably mounted moveable end is known in the field of mechanical engineering as a "slider crank," which is a particular type of "four bar mechanism."

Claim 1 is representative of the claims asserted against American Seating; it reads:

A stowable seat for mounting to support member of a vehicle wherein a space may be selectively provided for positioning an article adjacent to the stowable seat, when stowed the seat comprising:

a frame attached to a support member;

a cantilevered seatbase having a free end, a pivotable end including a pivot mounted thereto for rotatably associating said pivotable end with said frame and for providing said seatbase with a range of motion extending from a horizontally deployed position to a vertically stowed position, a support member for supporting said seatbase in said deployed position including a moveable end slidably mounted to said seatbase and a fixed end journalled with said frame, and a first lock near said free end for releasably locking said movable end to maintain said seatbase in said deployed position; and

a seatback having a pivot for rotatably associating said seatback with said seatbase and for providing said seatback with a range of motion extending from an unfolded position to a folded position, said range of motion of said seatback being perpendicular to said range of motion of said seatbase, said seatback in said unfolded position adapted to be a predetermined angle with respect to said seatbase in said deployed position to provide seating and said seatback in said folded position adapted to be adjacent said seatbase for stowing to provide the space for the article.

(Emphasis added).

B.

American Seating Company and Kustom Fit also manufacture and market seating products for the transportation industry. One particular seat is the Horizon EZ Fold ("EZ Fold"), which is a stowable seat manufactured by Kustom Fit and sold by American Seating Company. The EZ Fold is in many respects similar, if not identical, to the invention claimed in the '389 patent. Most notably, neither device has an aisle leg. However, and important to this case, the two products use different types of support structures in lieu of the aisle leg. The invention claimed in the '389 patent, of course, uses the slider crank, which is described in part by the "slidably mounted" limitation. The EZ Fold, on the other hand, uses what is known as a "fourth link."

Like the slider crank, the fourth link is also a specific type of four bar mechanism. However, the two mechanisms differ in that, where the moveable end of the '389 patent's support member is slidably mounted to the seatbase, the moveable end of the EZ Fold's support member is rotatably mounted to the seatbase. Therefore, the moveable end of the EZ Fold's support member does not slide or otherwise move along the seatbase. Rather, its only range of motion consists of rotation throughout its revolute joints. That said, the EZ Fold's fourth link mechanism still provides the seatbase with fluid translational motion, and thereby allows the seat to fold between the deployed and stowed positions. It does this through an extra set of revolute joints located in the midsection of its support member ("mid-joints"). These mid-joints are shown below in two representative illustrations of the EZ Fold product.

NOTE: IMAGE IS ELECTRONICALLY NON-TRANSFERABLE.

The illustration on the left shows the seat in the fully deployed position, and the illustration on the right shows the device in transition between the deployed and stowed positions.

II.

On July 5, 2002, Freedman sued both American Seating Company and Kustom Fit for patent infringement and unfair competition under the Lanham Act. With respect to the claim for patent infringement, Freedman alleged that American Seating Company's EZ Fold infringed the '389 patent. Freedman alleged that Kustom Fit also infringed as a result of its role in developing and manufacturing the EZ Fold for American Seating Company. In response to Freedman's complaint, American Seating denied Freedman's allegations of patent infringement and unfair competition, and also asserted a counterclaim of patent invalidity by reason of obviousness. After some discovery, American Seating requested leave to amend its answer. The...