Hickory Springs Mfg. Co. v. Fredman Bros. Furniture Co., Inc.

• Decision Date: 05 March 1975
• Docket Number: Nos. 73--1170,73--1171,s. 73--1170
• Citation: 509 F.2d 55
• Parties: HICKORY SPRINGS MANUFACTURING COMPANY, Plaintiff-Appellant, v. FREDMAN BROTHERS FURNITURE COMPANY, INC., and Harry Fredman, Defendants-Appellees. HICKORY SPRINGS MANUFACTURING COMPANY, Plaintiff-Cross-Appellee, v. Harry FREDMAN, Defendant-Cross-Appellant.
• Court: U.S. Court of Appeals — Seventh Circuit

Page 55

509 F.2d 55

184 U.S.P.Q. 459

HICKORY SPRINGS MANUFACTURING COMPANY, Plaintiff-Appellant, v. FREDMAN BROTHERS FURNITURE COMPANY, INC., and Harry Fredman,

Defendants-Appellees.

HICKORY SPRINGS MANUFACTURING COMPANY, Plaintiff-Cross-Appellee, v. Harry FREDMAN, Defendant-Cross-Appellant.

Nos. 73--1170, 73--1171.

United States Court of Appeals,

Seventh Circuit.

Argued Jan. 8, 1974.

Decided Jan. 14, 1975.

Rehearing and Rehearing En Banc

Denied March 5, 1975.

Ronald B. Schertz and Tim Swain, II, Peoria, Ill., Dalbert U. Shefte, Charlotte, N.C., for Hickory Springs Mfg.

Lyle W. Allen, Peoria, Ill., Harvey B. Jacobson, Jr., Washington, D.C., for Fredman Brothers Furniture Co.

Before CASTLE, Senior Circuit Judge, PELL, Circuit Judge, and GRANT, Senior District Judge. ^*

PELL, Circuit Judge.

In May 1970, Hickory Springs Manufacturing Company (Hickory Springs), a manufacturer of furniture hardware, introduced to its customers a metal bed device called the 'Hi-Co Slatless' rails. The next month, Harry Fredman of Fredman Brothers Furniture Company, Inc., wrote Hickory Springs and one of its customers warning them that the Hi-Co Slatless bed rails infringed Fredman's Patent No. 3,118,151. ¹ Hickory Springs thereupon filed the present declaratory judgment action, ² seeking a declaration of the invalidity of Fredman's patent or, if it was found valid, of its noninfringement by the Hi-Co Slatless rails. Plaintiff also alleged a cause of action for unfair competition. Harry Fredman and his company (hereinafter referred to collectively as 'Fredman') answered and counterclaimed for infringement.

While the cause was before the district court, ³ this court issued its opinion in Fredman v. Harris-Hub Co., Inc., 7 Cir., 442 F.2d 210 (1971). This court there construed claim 3 of Fredman Patent No. 3,118,151 'as an anti-spread device contemplating a slatless assembly for beds with end board notch separations equal to the width of the springs.' We upheld the district court's finding of invalidity, noting that prior art had anticipated the device described in claim 3. 442 F.2d at 214--215. The Harris-Hub panel also affirmed the district court's conclusion that defendant's accused device was not the 'equivalent' of the innovation revealed in claim 4 ⁴ of the Fredman patent and, hence, did not infringe that claim. The Harris-Hub accused device merely 'interconnect(ed) the centers of two conventional metal side rails with a strap that applies sufficient tension to bow the rails inwardly against the bedding.' 442 F.2d at 213. In contrast, the 'substance of (Fredman's) invention (in claim 4) includes an original design for side rails.' Id. at 216.

'(Their) horizontal flange(s) (flare) into the vertical at (their) ends . . . (Fredman's) contribution to the art was predicated on an assumption that the portion of the rail which provides both clamping pressure from the vertical flange and adequate support from the horizontal flange 'will not flex.' . . . The benefits of parallelism are described in the specifications and, in large part, constitute the objective achieved by the special design of the rails. . . .' Id. at 215.

Relying on our Harris-Hub decision, Hickory Springs moved for summary judgment on the issues of the invalidity of claim 3 of the Fredman patent and the noninfringement of claim 4. The district court granted summary judgment on the claim 3 point only. 330 F.Supp. 978, 981 (S.D.Ill.1971); see Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971).

Meanwhile, in an effort to rectify Harris-Hub's 'emasculation' of their patent, Fredman had sought and obtained a reissuance of the original patent. Fredman U.S. Reissue Patent No. Re. 27,182. After the pleadings were appropriately amended, Hickory Springs moved for summary judgment, asserting the invalidity of reissue claims 3, 4, 6, 7 and 8 and of original patent claim 4. The district court granted the motion as to all the claims except original and reissue claims 4. (The two were substantially the same. See 338 F.Supp. 636 (S.D.Ill.1972).

During the course of the trial, the court ruled that claim 4 was valid as a matter of law. Therefore, the primary issue left for the jury was whether the accused Hi-Co Slatless bed rails infringed claim 4 of the Fredman patent. The jury found infringement and awarded damages in an amount equal to 2% of the dollar sales of the infringement device. Accordingly, the court entered judgment for $17,983.17 and permanently enjoined Hickory Springs from infringing claim 4. Hickory Springs moved unsuccessfully for a judgment n.o.v. or, in the alternative, for a new trial. It appeals that denial. Fredman cross-appeals the court's decision as to the invalidity of the reissue claims.

I

Hickory Springs proffers two arguments: (1) because the evidence did not warrant a finding of infringement, the district court erred in denying plaintiff's post-trial motion for judgment n.o.v., or, alternatively, (2) because of 'the prejudicial exclusion of evidence and the prejudicial and improper instructions to the jury, as well as the improper granting of summary judgment of validity,' the cause should be remanded for a new trial.

A

The determination of infringement is normally considered a question of fact. Graver Tank & Mfg. Co., Inc. v. Linde Air Products Co., 339 U.S. 605, 609--611, 70 S.Ct. 854, 94 L.Ed. 1097 (1950); Independent Pneumatic Tool Co. v. Chicago Pneumatic Tool Co., 194 F.2d 945, 947 (7th Cir. 1952). Further, if a jury has made the crucial findings,

'a motion for . . . judgment n.o.v. is properly denied where the evidence is such that reasonable men in a fair and impartial exercise of their judgment may draw different conclusions therefrom. . . . Thus, the propriety of such denials turns on the determination of whether under the facts, as disclosed by the record, there was sufficient evidence to warrant the submission of the case to the trier of fact. . . . In making this determination, we are obliged to view all the evidence, together with all reasonable inferences to be drawn therefrom, in the light most favorable to (the party prevailing below.)' Hannigan v. Sears, Roebuck & Co., 410 F.2d 285, 287--288 (7th Cir.), cert. denied, 396 U.S. 902, 90 S.Ct. 214, 24 L.Ed.2d 178 (1969).

See also Valdes v. Karoll's, Inc., 277 F.2d 637, 638 (7th Cir. 1960); Lambie v. Tibbits, 267 F.2d 902, 903 (7th Cir. 1959). Cf. Panther Pumps & Equipment Co., Inc. v. Hydrocraft, Inc., 468 F.2d 225, 227--228 (7th Cir. 1972), cert. denied, 411 U.S. 965, 93 S.Ct. 2143, 36 L.Ed.2d 685 (1973).

Recognizing the limited standard of review usually applicable to findings of infringement and the heavy burden an appellant must carry to overturn a jury's determination, Hickory Springs claims that it comes within an exception to these rules. It relies on cases such as Sterner Lighting, Inc. v. Allied Elec. Supply, Inc., 431 F.2d 539, 543 (5th Cir. 1970), cert. denied, 401 U.S. 909, 91 S.Ct. 869, 27 L.Ed.2d 807 (1971), and Foster Cathead Co. v. Hasha, 382 F.2d 761, 766 (5th Cir. 1967), cert. denied, 390 U.S. 906, 86 S.Ct. 819, 19 L.Ed.2d 872 (1968), which hold that an appellate court may consider infringement directly where the finding hinges on the construction of the patent (a question of law) or where the evidence at trial consisted of exhibits, documents, and uncontradicted testimony.

We are unpersuaded that we should exercise an enlarged scope of review here. The parties at trial did disagree with each other in regard to two basic matters at least: whether the end portions of the Hi-Co Slatless rails embody the end plate deflection required by claim 4; and whether the major angle iron portions of the accused rails bow as conventional rails do or whether they may more accurately be described as achieving a high degree of parallelism. ⁵ To differentiate among the exhibited bed rails on the bases of their varied propensities for bowing along their lengths and for deflecting laterally in their end pieces is not the simple task that Hickory Springs implies it is. The characteristics are relative, not absolute. The witnesses at trial and the parties on appeal offered differing opinions as to the import of the construction of the Hi-Co Slatless, whether it embodies the features claimed in Fredman's patent. For example, Hickory Springs minimized the engineering differences between the end portion of a conventional rail and that of the accused rail, whereas Fredman considered those variations to be significant indicia of the supposedly different functions each type of rail performs. ⁶ We also note that at oral argument before this court, the parties could not agree whether a key bed assembly exhibit shown to us had been set up in such a way as to disclose its true nature.

In sum, we find this to be an inappropriate case for an appellate court to substitute its findings for those of the jury. Cf. Reese v. Elkhart Welding & Boiler Works, Inc., 447 F.2d 517 (7th Cir. 1971); Kennatrack Corp. v. Stanley Works, 314 F.2d 164 (7th Cir. 1963). Contrast Deep Welding, Inc. v. Sciaky Bros., Inc., 417 F.2d 1227 (7th Cir. 1969), cert. denied, 397 U.S. 1037, 90 S.Ct. 1354, 25 L.Ed.2d 648 (1970). We cannot say that the jury was unreasonable in concluding as it did in light of the evidence presented to it. ⁷

We therefore turn to Hickory Springs' second argument, namely, that trial errors in effect ensured that the jury would find infringement.

B

The task of conducting an error-free jury trial in a patent case is not an easy one. Panther Pumps, supra. The highly technical and frequently obscure words utilized in connection with a patent and the devices supposedly embodying its claims combined with the language of patent law, itself often precisely cognizable only to those in this specialized profession, pose a challenging and difficult feat for the trial judge who must guide the presentation of the law and evidence...