Arbrook, Inc. v. American Hospital Supply Corp.

Decision Date15 May 1981
Docket NumberNo. 79-2652,79-2652
PartiesARBROOK, INC. and John J. Nappi, Plaintiffs-Appellants, v. AMERICAN HOSPITAL SUPPLY CORPORATION, Defendant-Appellee, Tackmer Corporation, Intervenor-Appellee.
CourtU.S. Court of Appeals — Fifth Circuit

Charles S. Cotropia, Dallas, Tex., Don K. Harness, Birmingham, Mich., for plaintiffs-appellants.

Storey, Armstrong, Steger & Martin, John K. DeLay, Jr., Dallas, Tex., Dawson, Tilton, Fallon & Lungmus, John B. Lungmus, Chicago, Ill., Owen, Wickersham & Erickson, Robert E. Wickersham, San Francisco, Cal., Whann, Whann & Cleverger, Welton B. Whann, San Diego, Cal., for American Hospital Supply Corp. and Tackmer Corp.

Appeal from the United States District Court for the Northern District of Texas.

Before WISDOM, POLITZ and SAM D. JOHNSON, Circuit Judges.

WISDOM, Circuit Judge:

This is a patent infringement suit. We affirm the district court's conclusion that the patents sued on are invalid, but we reverse the award of attorney's fees to the defendants.

The subject of this suit is a device called a tacky mat stack. This is a type of doormat used at entrances to hospital surgical rooms and other rooms where the entrance must be clean. Because it is tacky (slightly sticky), the mat removes dirt and bacteria from the soles of shoes and the wheels of carts. These tacky mats are made and sold in stacks, not as single sheets. The layers of the stack stick together in ordinary use, but when the top mat becomes dirty it may be peeled off to expose a fresh tacky mat.

The defendants in this case are Tackmer Corp. and American Hospital Supply Co., the manufacturer and seller, respectively, of the tacky mat stacks alleged to infringe the plaintiffs' patents. Tackmer is conducting the defense of the case and has agreed to indemnify American Hospital Supply against any liability. The plaintiffs are John J. Nappi, the holder of the patents in suit, and Arbrook, Inc., Nappi's exclusive licensee. Arbrook and Tackmer compete to supply tacky mat stacks to the hospital industry. Their products are substantially identical, except that Arbrook's mat stacks are meant to fit into a permanent metal frame while Tackmer's are designed to be used directly on the floor without any frame. Nevertheless, Tackmer's customers often insert Tackmer mat stacks into Arbrook permanent frames.

The plaintiffs allege infringement of four patent claims from two patents. The first patent, No. 3,083,393 ("the 393 patent"), entitled "Shoe Sole Cleaner", was issued to Nappi on April 2, 1963, from an application filed on November 24, 1961. The second patent, No. 3,665,543 ("the 543 patent"), entitled "Tacky Mat Stack", is an improvement patent on the 393 patent. It was issued to Nappi on May 30, 1972, on an application filed on November 19, 1970. The plaintiffs sue on Claim 2 of the 393 patent and Claims 10, 11, and 12 of the 543 patent. The parties and the district court bring forth a shower of theories and countertheories as to why these claims are valid or invalid. Fortunately, it is not necessary to address all of these to conclude that the district court was correct in finding all four claims invalid.

A. The 393 Patent. The district court found, among other things, that Claim 2 of the 393 patent was anticipated by a shoe-cleaning device built and sold by John A. Carrier Co. and used by the Massachusetts Institute of Technology from 1957 to 1961. The Carrier design, like those now used by Tackmer and Arbrook, involved an expanse of tacky material placed like a doormat at the entrance to the "clean" environment. Unlike later designs, it did not use mat stacks or single-sheet mats, but instead used a long, broad tape of tacky material extended in a housing between two rollers on either side of the entranceway. The rollers kept tension on the tape, and an electric motor advanced the tape to expose a fresh segment every time someone walked on the tape.

If the Carrier machine anticipates the invention sought to be patented in the 393 patent, it renders the patent invalid. In that case the patent is void under 35 U.S.C. § 102(a) (1976) because the invention was known or used by others in this country before its invention by Nappi, the patentee; alternatively, it is void under id. § 102(b) because the invention was in public use or on sale in this country more than one year before Nappi's application for the patent. 1

Before we may judge whether the Carrier machine anticipates the 393 patent, we must ascertain what the scope of that patent is. Although the 393 patent contains only two claims, it is a broad patent, seemingly attempting to preempt the field of sticky doormats as shoe-sole-cleaning devices. The preferred form of the invention, described and illustrated in the patent, embodies the same basic design actually marketed by Arbrook: a replaceable tacky mat stack resting on a hard base and contained in a fixed frame. There are obvious differences between that design and the Carrier machine. The language of the claims in the 393 patent, however, is much more general and more inclusive. Claim 2, the claim under suit, reads:

Apparatus for cleaning the soles of shoes while the shoes are being worn, comprising a housing supportable upon a walking surface, a substantially flat supporting surface therein, of sufficient expanse to permit both of the shoes of an adult person to be comfortably planted thereon, means for temporarily holding a sheet of pressure sensitive adhesive in place, face-up upon said support, to cover said support, a sheet of pressure sensitive adhesive in place upon said support, and an opening in said holding exposing substantially the expanse of the supported active surface of the adhesive to the tread of the user, said temporary holding means being operative evenly over substantially the entire surface of the sheet being held.

The patent makes it clear that this breadth of language is intentional, reciting that "(s)ince it is obvious that many modifications can be made, while preserving the spirit of the invention, I intend to have my invention interpreted as broadly as indicated by the scope of the claims ...."

In deciding whether a patented invention has been anticipated, the courts must look to the claims of the patent and not to a particular commercial embodiment of them, for "the claims measure the invention". General Electric Co. v. Wabash Appliance Corp., 1938, 304 U.S. 364, 368-69, 58 S.Ct. 899, 901-902, 82 L.Ed. 1402, 1405-06; Rosen v. Lawson-Hemphill, Inc., 1 Cir. 1976, 549 F.2d 205, 210. This is only fair: since the patentee's right to exclude others from the use of his invention depends on the scope of his claims, he must be prepared to defend those claims, as written, against charges of anticipation. It is often said, therefore, that prior art that would infringe a patent claim, had it come later than the patent, anticipates the patent when it precedes it. E. g., American Fruit Growers, Inc. v. Brogdex Co., 1931, 283 U.S. 1, 14, 51 S.Ct. 328, 331, 75 L.Ed. 801, 808; Imperial Stone Cutters, Inc. v. Schwartz, 8 Cir. 1966 370 F.2d 425, 429; Chemical Construction Corp. v. Jones & Laughlin Steel Corp., 3 Cir. 1962, 311 F.2d 367, 373. A patent claim is anticipated when all of its claimed elements (or their equivalents) are found in a single unit of prior art. Steelcase, Inc. v. Delwood Furniture Co., 5 Cir. 1978, 578 F.2d 74, 78-79, cert. denied, 440 U.S. 960, 99 S.Ct. 1503, 59 L.Ed.2d 774 (1979); American Seating Co. v. National Seating Co., 6 Cir. 1978, 586 F.2d 611, cert. denied, 441 U.S. 907, 99 S.Ct. 1999, 60 L.Ed.2d 377 (1979); Paeco, Inc. v. Applied Moldings, Inc., 3 Cir. 1977, 562 F.2d 870, 875; Shanklin Corp. v. Springfield Photo Mount Co., 1 Cir. 1975, 521 F.2d 609, 616, cert. denied, 424 U.S. 914, 96 S.Ct. 1112, 47 L.Ed.2d 318 (1978); Greening Nursery Co. v. J & R Tool & Manufacturing Co., 8 Cir. 1967, 376 F.2d 738; Edward M. Marshall, C.C.P.A.1978, 578 F.2d 301; General Electric Co. v. United States, Ct.Cl. 1978, 572 F.2d 745, 768.

A comparison of the elements of Claim 2 with the features of the Carrier machine makes it plain that the Carrier machine anticipated Nappi's invention point by point. Here are the components of the claim:

- A housing supportable upon a walking surface. The Carrier machine features such a housing around its tacky tape;

- A substantially flat supporting surface, large enough to place both shoes on comfortably. The Carrier machine has such a surface;

- Means for temporarily holding a sheet of pressure sensitive adhesive in place. Carrier's rollers accomplish this by keeping tension on the tacky tape;

- A sheet of pressure sensitive adhesive. The tape fills the role in the Carrier device; and

- An opening in the housing exposing substantially all of the active surface of the adhesive. This feature too, Carrier shares.

Arbrook and Nappi contend that the Carrier machine is greatly inferior to a mat stack design as a shoe cleaner. This may well be true; indeed, if it were not so, the patent would be vulnerable to attack under 35 U.S.C. § 112 (1976), which requires that an application for a patent shall specify the best mode of carrying out the invention. Nevertheless, when a patent applicant writes his patent claims broadly enough to include a previously existing device, he must accept the consequences if the device is found to anticipate the claim.

B. The 543 Patent: Claims 10 and 11. Although the 393 patent teaches the use of a tacky mat stack to clean shoe soles, it says little about the composition or construction of the adhesive sheets comprising those stacks. The 543 patent, an improvement patent, addresses that problem directly. Claim 10 of that patent, translated into English, describes the use of a "flexible support film", made of a substance impermeable to adhesives, as the base or backing of the individual sheets. This allows the sheets to be stacked directly on one another without the need for...

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