578 F.2d 74 (5th Cir. 1978), 75-2170, Steelcase, Inc. v. Delwood Furniture Co., Inc.

Docket Nº:75-2170, 76-3061.
Citation:578 F.2d 74
Party Name:199 U.S.P.Q. 69 STEELCASE, INC., a corporation, Plaintiff-Appellant Cross-Appellee, v. DELWOOD FURNITURE CO., INC., a corporation, Defendant-Appellee Cross-Appellant. STEELCASE, INC., a corporation, Plaintiff-Appellant, v. DELWOOD FURNITURE COMPANY, INC., a corporation, Defendant-Appellee.
Case Date:August 08, 1978
Court:United States Courts of Appeals, Court of Appeals for the Fifth Circuit
 
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578 F.2d 74 (5th Cir. 1978)

199 U.S.P.Q. 69

STEELCASE, INC., a corporation, Plaintiff-Appellant Cross-Appellee,

v.

DELWOOD FURNITURE CO., INC., a corporation,

Defendant-Appellee Cross-Appellant.

STEELCASE, INC., a corporation, Plaintiff-Appellant,

v.

DELWOOD FURNITURE COMPANY, INC., a corporation, Defendant-Appellee.

Nos. 75-2170, 76-3061.

United States Court of Appeals, Fifth Circuit

August 8, 1978

Page 75

[Copyrighted Material Omitted]

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James A. Mitchell, Lloyd A. Heneveld, Grand Rapids, Mich., for plaintiff-appellant in Nos. 75-2170 and 76-3061.

W. J. Sullivan, Jr., Birmingham, Ala., for plaintiff-appellant in No. 75-2170.

Hugh P. Carter, Birmingham, Ala., Garrett R. Tucker, Jr., Alan D. Rosenthal, Houston, Tex., for defendant-appellee in Nos. 75-2170 and 76-3061.

Frank B. Pugsley, Houston, Tex., for defendant-appellee in No. 76-3061.

Appeals from the United States District Court for the Northern District of Alabama.

Before SKELTON [*], Senior Judge, and FAY and RUBIN, Circuit Judges.

ALVIN B. RUBIN, Circuit Judge:

A chair manufacturer who deliberately copied the highly successful chair being marketed by a competitor justifies his actions on the basis that the patents for the chair he copied were invalid. National policy encourages competition on the theory that the battle of the marketplace benefits consumers. Because every patent creates a monopoly, Congress has balanced the encouragement of inventions with its devotion to competition, 1 and exacted standards for patent validity that deny patent protection even to some successful and innovative ideas. Thus, patentability requires that an invention be useful and novel, as defined in 35 U.S.C. §§ 101 and 102, and nonobvious. 35 U.S.C. § 103. Graham v. John Deere Co., 1966, 383 U.S. 1, 12, 86 S.Ct. 684, 691, 15 L.Ed.2d 545; Gaddis v. Calgon Corp., 5 Cir. 1975, 506 F.2d 880. The trial court found the patents invalid for their failure to meet the standard of nonobviousness. Finding his fact findings supported by the record and his legal conclusions correct, we affirm.

I.

Steelcase obtained a design patent (843) 2 and a utility patent (499) 3 covering shell type office chairs consisting of a three-dimensional molded plastic shell with integral seat and back, reminiscent of an egg or claim shell, mounted on a pedestal type base. Steelcase marketed this as its 451 series. The chair was lower priced than competitive models and found a ready market. Indeed, it was perhaps the most successful model ever offered on the American market. Delwood Furniture noted Steelcase's success and copied the chair.

The asserted patentable distinction between the Steelcase 451 chair and prior shell chairs is that the 451 chair consists of two independent shells, the inner one providing support and the outer one designed for appearance or decorative effect. Although the two separate chairs appear to the user to be a single unit, they are attached to form what Steelcase calls a "chair within a chair." The inner chair is a structurally complete shell chair designed with sufficient thickness and rigidity to bear the entire load of the body of the user. It could, by itself, serve adequately as a chair. This shell is placed inside a non-load bearing decorative exterior shell having sufficient

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thickness and rigidity only to hold a desired configuration.

Because the outer chair carries no load, the designers can sculpture it so as to make it aesthetically pleasing, without regard to strength or conformity to the user's anatomy. The chair can be provided with arms, each arm being a continuous member connected at the back and seat of the chair in a concealed manner by notching the structural shell and by wrapping the arm members around to the rear of the structural shell and attaching it. (The arms are discussed more fully in Part V dealing with the design patent). Virtually every reader of this opinion will have seen one of these chairs in offices of contemporary design.

In the first trial, completed in July, 1974, the design patent (843) was held invalid as an obvious alteration, modification or combination of prior art. The trial court discussed each of the eighteen claims in the utility patent (499) and held eleven either invalid or not infringed but found seven claims valid and infringed. After a supplemental hearing in which the district court found no patent misuse, both parties appealed.

Delwood then discovered a Belgian patent that it contended was relevant and obtained permission to move for a rehearing before the district court. That court granted a rehearing limited to consideration of issues raised by discovery of the Belgian patent; it then reversed its earlier findings with respect to the seven claims in the utility patent and held them invalid as obvious. Although these claims of the utility patent were not anticipated by the express claims of the Belgian patent, the district court held, "(t)he process for manufacture, as reflected in the Belgian patent . . ." made obvious the development of the claims in the utility patent. It reached this conclusion by considering what was implicit in the claims of the Belgian patent although only explicit claims could be considered on the question of anticipation. See Reeves Bros., Inc. v. U. S. Laminating Corp., E.D.Pa.1968, 282 F.Supp. 118, 136...

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