Allen Archery, Inc. v. Browning Mfg. Co.

• Decision Date: 23 April 1987
• Docket Number: 86-1230 and 86-1237,Nos. 86-1168,s. 86-1168
• Citation: 2 U.S.P.Q.2d 1490,819 F.2d 1087
• Parties: , 2 U.S.P.Q.2d 1490 ALLEN ARCHERY, INC., Appellee/Cross-Appellant, v. BROWNING MANUFACTURING CO., Browning and Bingham Projects, Inc., Appellants/Cross-Appellees, and Elmont L. Bingham, Joyce M. Bingham, Appellants. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 1087

819 F.2d 1087

55 USLW 2615, 2 U.S.P.Q.2d 1490

ALLEN ARCHERY, INC., Appellee/Cross-Appellant, v. BROWNING MANUFACTURING CO., Browning and Bingham Projects Inc., Appellants/Cross-Appellees and Elmont L. Bingham, Joyce M. Bingham, Appellants.

Appeal Nos. 86-1168, 86-1230 and 86-1237.

United States Court of Appeals Federal Circuit.

April 23, 1987.

Thomas J. Rossa and David V. Trask, Trask, Britt & Rossa, Salt Lake City, Utah, argued, for appellants/cross-appellees.

Harlan P. Huebner, Los Angeles, Cal., argued, for appellee/cross-appellant. With him on the brief, were D.A.N. Chase, Linde Thomson Fairchild Langworthy Kohn & Van Dyke, P.C., Overland Park, Kan., and Robert R. Mallinckrodt, Mallinckrodt & Mallinckrodt, Salt Lake City, Utah.

Before FRIEDMAN and DAVIS, Circuit Judges, and BENNETT, Senior Circuit Judge.

FRIEDMAN, Circuit Judge.

These are cross-appeals from two judgments of the United States District Court for the District of Utah. The first judgment rejected the contention that the patentee had engaged in inequitable conduct before the Patent and Trademark Office. 226 U.S.P.Q. 315 (1985). The second judgment held that the patent was valid and infringed, rejected claims of patent misuse and antitrust violations, declined to increase the damages or award attorney fees, and held that there had been a breach of a valid patent license agreement. (The second opinion of the district court has not been published.) We affirm both judgments.

I

A. This case involves claims 7, 8, 10, and 14 of U.S. Patent No. 3,486,495 for a bow, issued to H.W. Allen and owned by Allen Archery, Inc. The bow as depicted in the Allen patent is shown below:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The district court described the invention the Allen patent covers as follows:

The Allen Patent relates to an archery bow known in the archery industry and to archers as a "compound bow." The bow comprises a handle section and a pair of limbs secured to the handle section, a pair of eccentric pulley members being respectively mounted on the ends of the limbs. A bowstring is trained around the pulley members to present a central stretch and a pair of end stretches (three line lacing). The central stretch includes a nocking point for receiving the slotted tail or nock of an arrow. The pulley members may be either oval shaped or round, but in either case they are mounted off center....

In operating the bow ..., the archer pulls the central stretch away from the handle at the nocking point. This causes the pulley members to rotate, and as the archer continues to draw the bowstring, the force required to draw the bowstring increases and reaches a maximum or peak value at an intermediate position of the nocking point between the rest position and the drawn position. As the archer then continues to pull the bowstring to the drawn position, the force decreases and the holding force at the drawn position is much less than the maximum force at the intermediate position.

Findings 11 and 12, Findings of Fact and Conclusions of Law, dated November 12, 1985.

The court found that, relative to prior art bows, the Allen bow "casts or throws an arrow at much greater speed with increased striking power for hunting and further reduces the holding force at full draw, improves the sighting and steadies the archer's aim." Finding 25. The court characterized the Allen bow as "a pioneer invention which performs a function not performed by any earlier invention. It is a significant step in the progress of the art of bows as distinguished from a mere improvement." Finding 57.

The Allen patent issued in December 1969. It contained 14 claims.

B. Allen Archery filed complaints against the appellants/cross-appellees Browning, Browning Manufacturing, Bingham Projects, Elmont L. Bingham, and Joyce M. Bingham (referred to individually and collectively as Browning), in November 1977. Allen Archery filed two suits that charge patent infringement and, in the suit against Browning Manufacturing Company, breach of a patent licensing agreement. Browning countered with a suit seeking a declaratory judgment that the Allen patent was invalid and unenforceable and that Browning had not infringed it. The district court consolidated the three cases.

Prior to filing those complaints in the Utah District Court, Allen Archery in February 1976 had filed a suit in the United States District Court for the Central District of California charging Jennings Compound Bow, et alia, with infringing the Allen patent. With the agreement of the parties, the district court in the present case stayed proceedings until the Jennings case was decided.

In June 1974, prior to the initiation of the above suits, Allen Archery filed with the United States Patent and Trademark Office a voluntary disclaimer of claims 1, 2, and 11 of the Allen patent. After trial, the district court in the Jennings case held that claims 3 through 6, and 12 and 13 of the Allen patent were invalid as anticipated by, and obvious in view of, certain other patents. The court further held, however, that claims 7, 8, 10, and 14 of the Allen patent were valid and infringed. Allen Archery, Inc. v. Jennings Compound Bow, Inc., 211 U.S.P.Q. 206, 215 (C.D.Cal.1981). The Court of Appeals for the Ninth Circuit affirmed. 686 F.2d 780, 216 U.S.P.Q. 585 (9th Cir.1982). Claim 9 apparently was not involved in Jennings, and it is not at issue here.

In June 1983, Allen Archery disclaimed the six claims that the California court had held invalid in Jennings.

C. The present case then proceeded to trial before the Utah district court. The court bifurcated the case. It first tried the issue whether the Allen patent was unenforceable because the patentee and his lawyer had engaged in inequitable conduct before the Patent and Trademark Office by failing during the prosecution of the patent application to disclose certain prior art references. The court held that the patentee and his counsel had not engaged in inequitable conduct and dismissed Browning's defense upon that contention. 226 U.S.P.Q. 315.

The court then tried the remaining issues in the case. In an opinion accompanied by detailed findings of fact and brief conclusions of law, the court held that: (1) claims 7, 8, 10, and 14 of the Allen patent were valid and enforceable; (2) Browning had infringed those claims; (3) the case was not exceptional and Browning's infringement was not willful, so Allen Archery was not

entitled to increased damages or attorney fees; (4) Allen Archery had not misused the patent nor violated the antitrust laws as Browning alleged; and (5) Allen Archery and Browning Manufacturing Company had entered into an enforceable patent licensing agreement for nine months in 1977, Browning Manufacturing had breached that agreement, and Allen Archery was entitled to recover the royalties specified in that agreement.

II VALIDITY

A. Collateral Estoppel--the Jennings Case.

Allen Archery points out that claims 7, 8, 10, and 14 were upheld in the Jennings case and urges that "absent additional material evidence of invalidity not considered in Jennings or a showing that the Jennings litigation was in some way defective or incomplete, the prior adjudication of validity of claims 7, 8, 10, and 14 should be determinative of the validity issues here." It relies upon Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788, 169 U.S.P.Q. 513 (1971), which

held that where a patent has been declared invalid in a proceeding in which the "patentee has had a full and fair chance to litigate the validity of his patent" (402 U.S. at 333, 91 S.Ct. at 1445, 169 USPQ at 521), the patentee is collaterally estopped from relitigating the validity of the patent.

Mississippi Chem. Corp. v. Swift Agricultural Chems. Corp., 717 F.2d 1374, 1376, 219 U.S.P.Q. 577, 579 (Fed.Cir.1983). According to Allen Archery, the Blonder-Tongue doctrine should estop Browning from attacking the validity of claims 7, 8, 10, and 14 of the Allen patent.

The Blonder-Tongue rule, however, "is of necessity a one-way street," 4 D. Chisum, Patents Sec. 19.02[e], at 19-31 (1986), and does not bar someone charged with infringement from challenging the validity of patent claims that were upheld in a prior infringement suit to which it was not a party:

Some litigants--those who never appeared in a prior action--may not be collaterally estopped without litigating the issue. They have never had a chance to present their evidence and arguments on the claim. Due process prohibits estopping them despite one or more existing adjudications of the identical issue which stand squarely against their position.

Blonder-Tongue, 402 U.S. at 329, 91 S.Ct. at 1443, 169 U.S.P.Q. at 520; see also Stevenson v. Sears Roebuck & Co., 713 F.2d 705, 710, 218 U.S.P.Q. 969, 974 (Fed.Cir.1983).

"Alternatively, Allen urges that this court should at least give the prior adjudication in Jennings great weight and affirm the district court's findings and conclusions as consistent with the Jennings decision." The statutory presumption of patent validity (35 U.S.C. Sec. 282 (1982)), however, "is not augmented by an earlier adjudication of patent 'validity.' " Shelcore, Inc. v. Durham Indus., Inc., 745 F.2d 621, 627, 223 U.S.P.Q. 584, 588 (Fed.Cir.1984). Accordingly, we shall review the district court's conclusion on validity in this case independently of that reached in Jennings.

B. Anticipation.

Browning contends that the Allen bow was anticipated by three United States Patents, No. 2,957,469 issued to Wilkerson, No. 2,957,470 issued to Barna, and No. 2,100,317 issued to Hickman. The district court found that claims 7, 8, 10, and 14, were not anticipated by Wilkerson, Barna, or Hickman. Anticipation is a factual determination, reviewed under the "clearly erroneous" standard. See, e.g., Atlas Powder Co. v. E.I. du Pont de Nemours & Co., 750 F.2d...