851 F.2d 1387 (Fed. Cir. 1988), 86-1439, Demaco Corp. v. F. Von Langsdorff Licensing Ltd.

Docket Nº:86-1439.
Citation:851 F.2d 1387
Party Name:7 U.S.P.Q.2d 1222 DEMACO CORPORATION, Plaintiff-Appellee, v. F. VON LANGSDORFF LICENSING LIMITED and F. Von Langsdorff Bauverfahren GmbH, Defendants-Appellants.
Case Date:June 21, 1988
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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Page 1387

851 F.2d 1387 (Fed. Cir. 1988)

7 U.S.P.Q.2d 1222

DEMACO CORPORATION, Plaintiff-Appellee,

v.

F. VON LANGSDORFF LICENSING LIMITED and F. Von Langsdorff

Bauverfahren GmbH, Defendants-Appellants.

No. 86-1439.

United States Court of Appeals, Federal Circuit

June 21, 1988

Page 1388

Russell D. Orkin, Webb, Burden, Robinson & Webb, P.A., of Pittsburgh, Pa., argued for plaintiff-appellee. With him on the brief was Richard L. Byrne.

Albert C. Johnston, St. Onge Steward Johnston & Reens, of Stamford, Conn., argued for defendants-appellants. With him on the brief were William J. Speranza and Michael L. Goldman.

Before FRIEDMAN, NEWMAN and ARCHER, Circuit Judges.

PAULINE NEWMAN, Circuit Judge.

F. Von Langsdorff Bauverfahren GmbH and F. Von Langsdorff Licensing Ltd. (together "Langsdorff") appeal the judgment 1 in favor of declaratory judgment plaintiff Demaco Corporation and counterclaim defendants Coastal Contracting Corporation, Paver Systems, Inc., and R.I. Lampus Company (together "Demaco"). The United States District Court for the Middle District of Florida, Tampa Division, held that claims 9, 13, and 29-33 of United States Patent No. 4,128,357 ("the Barth patent") are invalid for obviousness under 35 U.S.C. Sec. 103, that all of the claims are unenforceable for inequitable conduct, and

Page 1389

thus that the patent is not infringed. We reverse.

The Patented Invention

The patent claims here at issue are for a paving stone of specific shape and proportion, as illustrated in claim 9, an agreed "typical" claim (as rewritten in independent form):

9. Ground covering slab elements for paving ground areas, each of said elements being a single piece of concrete consisting of a head portion and a stem portion meeting at a dummy groove allowing, but not necessitating, breakage of said slab elements into heads and stems along said dummy grooves and being delimited by two opposite end faces of equal length joined by opposite sides that form angled traces about a longitudinal axis common to said head and said stem, each said angled trace being formed by a succession of sides comprising at said head an inclined side face inclined at 45? in one direction relatively to said axis, a lateral side face extending lengthwise with respect to said axis, and another inclined side face inclined at 45? in the opposite direction with respect to the said axis, and comprising at said stem a lateral side face extending lengthwise with respect to said axis, each said lateral face of said stem being complementary to a lateral face of said head, said end face of said head together with said inclined sides of said head and said lateral faces of said head and said dummy groove describing a centrally symmetrically [sic] octagon, said dummy groove together with said end face of said stem and said lateral faces of said stem being symmetrical about the center of said stem, and said head and said stem being mirror symmetrical about said longitudinal axis, wherein said end face of said head, said lateral faces of said head, said inclined sides of said head and said dummy groove together describe an octagon, with equal lengths of said end face, said lateral faces and said dummy groove, and with equal lengths of said inclined sides of said head, wherein said inclined sides of said head are each shorter than said end face of said head.

Appellant Langsdorff describes the advantages of the Barth paving stone as combining the feature of structural strength obtained from an elongated, interlocking paver, with the feature whereby, however the asymmetric stone is laid, the effect is the same symmetrical pattern. These characteristics are illustrated in the brochure of one of the accused infringers, wherein the Barth stone is shown along with another commercial paving stone laid in the same patterns:

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The Barth result is achieved by using the claimed paving stone.

Validity--35 U.S.C. Sec. 103

A

Reexamination was requested on behalf of Langsdorff on December 2, 1982, and on behalf of Demaco on January 12, 1983. Both requesters brought new references before the United States Patent and Trademark Office ("PTO"). During reexamination the examiner confirmed some of the claims without change, Barth dropped some claims, and some new claims were added. The examiner gave the following reasons for allowing the claims:

Claims 9 and 29-33 are considered to be allowable because the prior art does not suggest a paving stone having a head shaped as an octagon with a square stem separated by a dummy groove in which inclined sides of the head are each shorter than the end face of the head. Claim 13 is considered patentable because the prior art does not suggest a composite pavement formed by laying plural elements having an octagon head with a square stem separated by a dummy joint [laid] in a herringbone pattern as specified. Claims 20-28 are considered allowable because the prior art does not suggest a paving stone having the specific corner angles and indentations as specified.

After the PTO issued the reexamination certificate Demaco filed this declaratory judgment action. Following a trial to the bench, the district court held asserted claims 9, 13 and 29-33 invalid for obviousness. Langsdorff argues that the district court erred in its factual findings and in its application of the law.

Langsdorff asserts that a paving stone having the structure of the Barth paver, combining its ten-sided elongated shape with its appearance of an octagon joined to a square, and accompanying structural and visual advantages, is not shown or suggested in the prior art. Langsdorff argues that even if retrospectively simple in concept, the Barth paving stone was "a new product in a millennia old art". Langsdorff thus argues that the district court did not understand the invention, pointing to the court's statement that

[t]he essence of the advance made by the Barth paver is to accomplish with one piece of concrete that which could be accomplished with one square piece and one octagonal piece by joining the square to the octagon.

as demonstrating that the court believed that Barth had simply joined two paving blocks into one.

The prior art showed paving stones having the general elongated shape of the Barth stone but without the dummy groove; and the geometrical figure of an octagon joined to a square was shown in mathematics texts. The prior art also showed other paving shapes having dummy grooves. The claimed relative dimensions are not shown in the prior art. Langsdorff further states, without apparent contradiction, that this symmetrical paving stone pattern giving the appearance of two different stones is not shown or suggested in the art. Nor does the prior art describe or suggest a stone that gives to paving the structural strength obtained here while achieving a harmonious appearance whatever the pattern in which the stones are laid. Langsdorff presented evidence that it is the overall shape that provides the traffic load strength, by enabling an interlocking pavement.

The district court held that the Barth stone gave "no significant structural advantage ... over other pavers", and that "there is no evidence that the Barth paver makes a stronger or more durable pavement". The patent statute does not require that a patentable invention be superior to all prior devices. Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 960 n. 12, 1 USPQ2d 1196, 1199 n. 12 (Fed.Cir.1986) ("Finding that an invention is an 'improvement' is not a prerequisite to patentability"); G. Rich, Principles of Patentability, 28 Geo.Wash.L.Rev. 393, reprinted in 42 J.Pat.Off.Soc'y 75 (1960) (discussing "the unsound notion that to be patentable an invention...

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