776 F.2d 1007 (Fed. Cir. 1985), 84-866, CPG Products Corp. v. Pegasus Luggage, Inc.

• Citation: 776 F.2d 1007
• Docket Number: 84-866,84-880 and 84-972.
• Date: 17 October 1985
• Parties: 227 U.S.P.Q. 497 CPG PRODUCTS CORPORATION, Appellee, v. PEGASUS LUGGAGE, INC., Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1007

776 F.2d 1007 (Fed. Cir. 1985)

227 U.S.P.Q. 497

CPG PRODUCTS CORPORATION, Appellee,

v.

PEGASUS LUGGAGE, INC., Appellant.

Nos. 84-866, 84-880 and 84-972.

United States Court of Appeals, Federal Circuit

October 17, 1985

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[Copyrighted Material Omitted]

Page 1009

Harold James, James & Franklin, New York City, argued for appellant. With him on brief were Myron Amer and Richard N. Friedman.

Steven B. Pokotilow, Blum, Kaplan, Friedman, Silberman & Beran, New York City, argued for appellee. With him on brief were Harold I. Kaplan, L. MeRoy Lillehaugen and Peter D. Aufrichtig.

Before MARKEY, Chief Judge, and FRIEDMAN and RICH, Circuit Judges.

MARKEY, Chief Judge.

In appeal No. 84-866, Pegasus Luggage, Inc. (Pegasus) appeals from the portion of the judgment of the United States District Court for the Southern District of Florida, Miami Division, holding it liable for infringement of claims 3-5 of United States Patent No. 3,730,308 (the '308 patent), of Lark Luggage Corporation (Lark), a division of CPG Products Corporation (CPG), and further enjoining Pegasus from acts of unfair competition under the Lanham Act Sec. 43(a), 15 U.S.C. Sec. 1125(a) (1983). See 221 USPQ 766 (S.D.Fla.1983).

In appeal No. 84-880, Pegasus appeals from a denial of its Rule 60(b), Fed.R.Civ.P., motion for relief from final judgment.

In appeal No. 84-972, CPG cross-appeals from the portion of the judgment denying its claims for (a) increased patent infringement damages under 35 U.S.C. Sec. 284, and (b) attorney fees under 35 U.S.C. Sec. 285.

The foregoing appeals were consolidated in response to an April 18, 1984 motion of CPG.

We affirm in Appeal Nos. 84-866 and 84-880, and reverse and remand in Appeal No. 84-972.

ISSUE

Whether the district court erred in entering the decision and judgments appealed from.

OPINION

1. Appeal Nos. 84-866 and 84-880

   The findings and conclusions entered by the district court respecting patent infringement form such a fully adequate and compelling basis for affirmance as to place on the borders of frivolity the appeals from the patent infringement portion of the judgment and the decision denying Pegasus' Rule 60(b) motion.

   Respecting patent infringement, Pegasus asserts that: (a) the named inventor (Pelavin) was not the true inventor; (b) the patent does not disclose the "best mode"; (c) claims 2 & 3 are anticipated by United States Patent No. 3,071,220 to O'Neil (O'Neil patent), and the other claims "are obvious thereover" [sic, "in view of the O'Neil patent"]; (d) its luggage does not infringe the claims in suit; and (e) the royalty rate is unsupported.

   Respecting unfair competition under Sec. 43(a), Pegasus argues (f) that Lark's case was not proven.

   (a) Inventorship

   Pegasus raised this issue for the first time in its Rule 60(b) motion for relief from judgment, asserting that Pelavin received the suggestion to use Pellon in luggage from the Pellon Company, and that the district court confused "entrepreneurship with inventorship," citing Morgan v. Hirsch, 728 F.2d 1449, 221 USPQ 193 (Fed.Cir.1984).

   In its Rule 60(b) motion, Pegasus alleged "surprise", "newly discovered evidence" and "misrepresentation or other misconduct of an adverse party." It offered, however, nothing in support of those allegations save the naked assertions of counsel. Before us, Pegasus points to nothing in the record to indicate that the district court in any manner abused its discretion in denying the motion. See Smith International,

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   Inc. v. Hughes Tool Co., 759 F.2d 1572, 1579, 225 USPQ 889, 895-94 (Fed.Cir.1985). Pegasus' present attempt to litigate an issue it failed to raise at trial is improper and unavailing.

   (b) Best Mode

   Similarly, Pegasus first raised this issue in its post-trial motions for new trial under Rule 59, Fed.R.Civ.P., the denials of which are not before us. In support of its notion that this court should hear and determine whether Pelavin disclosed the "best mode", Pegasus asserts that the district court determined that issue on its merits in denying the Rule 59 motions. The assertion is groundless. The district court carefully considered Pegasus' motion, CPG's response, and counsel's memoranda, in determining that a new trial was not required. That action does not constitute consideration and determination of the "best mode" issue on its merits sufficient to render it available to Pegasus on appeal. If the rule were otherwise, appellants could create "appealable" substantive issues by merely listing them in post-judgment motions for new trial.

   Pegasus improperly asserts before us the very allegations--none made at trial--which formed the basis of its Rule 59 motions. In sum, there was and is no basis for Pegasus' presentation of its "best mode" proposition to this court. Cf. Minnesota Mining & Mfg. Co. v. Eco Chemical, Inc., 757 F.2d 1256, 1265-66, 225 USPQ 350, 357 (Fed.Cir.1985).

   (c) Anticipation/Obviousness

   The district court found that the O'Neil patent "does not contain any disclosure of the use of Pellon or Pellon-like materials as an interlining or stiffening layer in the walls of a luggage construction." Pegasus points to no error in that finding. Nor has it shown error in the district court's view that the O'Neil patent "reinforces the conclusion of patentability reached by the Examiner". Utterly unconvincing is Pegasus' argument that the "resilient tips" disclosed in the O'Neil patent either anticipate or would have rendered obvious the construction set forth in any of the claims in suit.

   (d) Infringement

   Pegasus says its use of adhesive precludes a finding of literal infringement. It argues that because the '308 patent issued following Pelavin's assertion that he did not use adhesive to secure the multi-layer construction of the luggage wall, infringement is avoided if any adhesive be used for any purpose. Pegasus invokes the recognized rule of law that a prosecution history estoppel precludes a patentee's claiming in litigation what it voluntarily gave up in prosecution. That rule is not applicable to the present facts, where no such prosecution history estoppel exists.

   The district court found that Pegasus also does not use adhesive to secure its multi-layer construction; it uses adhesive only in its manufacturing process (to align the layers until it secures them, as Lark does, by mechanical stitching). The district court said that such use was "of such minor consequence and inconsequential effect," as not to preclude its finding that literal infringement had been properly shown. Pegasus has shown no error in that finding; nor has it even attempted to controvert the district court's alternative finding of infringement under the doctrine of equivalents.

   (e) Reasonable Royalty

   Pegasus says that the district court's ruling on a royalty rate was "premature" because Pegasus "was not prepared to, and made no attempt to, deal with the issue of damages" at trial. But CPG did "deal with the issue" at trial, presenting evidence that it would not voluntarily grant a license for less than a 20% royalty. CPG's evidence cannot be "undealt" by Pegasus' omission, however bitterly that omission may now be rued. It is not among the purposes of the appellate process to re-write the scenario produced by an appellant at trial. Nor is it among the

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   roles of this court to entertain such efforts at re-writing.

   Pegasus incorrectly says that "the facts of record are inadequate to support the determination of any royalty rate." It is not, however, the royalty rate but Pegasus' protestation that is unsupported by the record. Similarly, Pegasus has shown no basis for concluding that the district court abused its discretion in awarding pre-judgment interest.

   (f) Unfair Competition

   (i) Section 43(a)

   Pegasus suggests that the district court should have entered findings and conclusions different from those it did enter in respect of the count for unfair competition under Sec. 43(a). ¹ Whether we might, were we sitting at trial, have reached different findings and conclusions is not, however, the test. ² See The American Original Corp. v. Jenkins, 774 F.2d 459, 462 (Fed.Cir.1985), citing Anderson v. City of Bessemer City, --- U.S. ----, 105 S.Ct. 1504, 1511, 84 L.Ed.2d 518 (1985).

   In deciding pendent Sec. 43(a) matters, over which this court's jurisdictional statute, 28 U.S.C. Sec. 1295(a)(1), does not grant exclusive subject matter jurisdiction, we apply the discernable, established law of the regional circuit court of appeals (here the Eleventh), having a proper regard for the duty of the district court to follow that law in cases not appealable to this court. See Bandag, Inc. v. Al Bolser's Tire Stores, 750 F.2d 903, 909, 223 USPQ 982, 986 (Fed.Cir.1984); Atari, Inc. v. JS & A Group, Inc., 747 F.2d 1422, 1439-40, 223 USPQ 1074, 1086-87 (Fed.Cir.1984).

   Under the substantive law of the Eleventh Circuit, analysis of trade dress infringement under Sec. 43(a) of the Lanham Act involves a close, factual evaluation of "the total image of a product and may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques." John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980, 219 USPQ 515, 528 (11th Cir.1983), citing Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 831, 215 USPQ 745 (11th Cir.1982). As is evident from the total record, the district court considered the total image of the Lark luggage in light of the legal principles ennunciated in Harland and Original Appalachian Artworks.

   The Eleventh Circuit in Harland did not require that a plaintiff establish non-functionality of all features in common relied on; it required plaintiff to establish that the features of the trade dress are "primarily non-functional". (Emphasis added.) 711 F.2d at 982, 219 USPQ at 529. As stated in Harland, "[i]f ... all of the features of Harland's...