645 F.2d 273 (5th Cir. 1981), 79-2652, Arbrook, Inc. v. American Hospital Supply Corp.

Docket Nº:79-2652.
Citation:645 F.2d 273
Party Name:210 U.S.P.Q. 84 ARBROOK, INC. and John J. Nappi, Plaintiffs-Appellants, v. AMERICAN HOSPITAL SUPPLY CORPORATION, Defendant-Appellee, Tackmer Corporation, Intervenor-Appellee.
Case Date:May 15, 1981
Court:United States Courts of Appeals, Court of Appeals for the Fifth Circuit

Page 273

645 F.2d 273 (5th Cir. 1981)

210 U.S.P.Q. 84

ARBROOK, INC. and John J. Nappi, Plaintiffs-Appellants,



Tackmer Corporation, Intervenor-Appellee.

No. 79-2652.

United States Court of Appeals, Fifth Circuit

May 15, 1981

Page 274

[Copyrighted Material Omitted]

Page 275

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.

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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...

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