Black & Decker Mfg. v. Ever-Ready Appliance

• Decision Date: 14 July 1981
• Docket Number: No. 80-43C(2).,80-43C(2).
• Citation: 518 F. Supp. 607
• Parties: The BLACK & DECKER MANUFACTURING COMPANY, Plaintiff, v. EVER-READY APPLIANCE MANUFACTURING COMPANY, Defendant.
• Court: U.S. District Court — Eastern District of Missouri

518 F. Supp. 607

The BLACK & DECKER MANUFACTURING COMPANY, Plaintiff, v. EVER-READY APPLIANCE MANUFACTURING COMPANY, Defendant.

No. 80-43C(2).

United States District Court, E. D. Missouri, E. D.

July 14, 1981.

Charles Haverstock, St. Louis, Mo., Don K. Harness, Birmingham, Mich., for plaintiff.

McPherson D. Moore, St. Louis, Mo., for defendant.

MEMORANDUM

NANGLE, District Judge.

This case is now before the Court for decision upon the merits. Plaintiff brought this suit alleging patent infringement and unfair competition. Defendant, in its answer, sought a declaration that the patent-in-suit is invalid or, if valid, not infringed. Prior to trial, the parties stipulated as to the proper relief. The parties agreed that should plaintiff prevail on any or all of its claims, it would be entitled to injunctive relief and damages in the amount of ten thousand dollars ($10,000.00).

This case was tried before the Court sitting without a jury. This Court having considered the pleadings, the testimony of the witnesses, the documents and depositions in evidence, and the stipulations of the parties, and being fully advised in the premises, hereby makes the following findings of fact and conclusions of law, as required by Rule 52, Federal Rules of Civil Procedure.

FINDINGS OF FACT

Plaintiff is a Maryland corporation, with its principal place of business in that state. Defendant is a Missouri corporation, with its principal place of business in that state.

Plaintiff is the present owner by assignment of Patent No. 3,999,629 ('629), entitled "foldable step stool." Plaintiff presently markets this step stool under the tradename "Stowaway" step stool. The '629 patent was originally issued to Elliott Siff and Irving Shaffer, the inventors of the device in question, on December 28, 1976. The patent was initially assigned to Marlene Designs, Inc., a Bridgeport, Connecticut firm which produced and sold the step stool. Marlene Designs, Inc. sold all rights in the step stool, including the patent rights, to plaintiff in October 1978.

The step stool in question is composed primarily of two sets of inner and outer frame members, five cross braces, and two steps. The inner frame members are parallel to each other and connected to each other via three cross braces, and the parallel outer frame members are likewise connected to each other via two cross braces. The inner frame members are pivotally connected to the respective outer frame members to form an X-frame. One step is situated above the pivot of the X-frame and the other is situated below the pivot. The rearward portion of the top step is pivotally connected to the upper cross brace of the outer frame members, and the rearward portion of the bottom step is pivotally connected to the middle cross brace of the inner frame members. The forward portion of the top step is connected to the upper cross brace of the inner frame members by a pin-and-slot connection, the cross brace acting as the pin and a slot being attached to the underside of the top step. The forward portion of the bottom step is similarly connected to the lower cross brace of the outer frame members.

When in an open position, the outer and inner frame members form an "X", and the steps are in a horizontal position. The "X" is skewed such that the steps exhibit a rise and run appropriate to a step stool. The pivot connecting the inner and outer frame members and the outer frame member cross braces are positioned off-center with respect to the outer frame members. When the stool is in a closed position, the inner frame members and the steps are disposed entirely within the planar volume of the outer frame members, which are one inch wide.

With respect to these structural features, defendant's Ready-Steps step stool is nearly identical. Significantly, however, the inner frame members and the lower cross brace on the outer frame members are wider than on the Stowaway model, and, as a result, when in a closed position the inner frame members and the steps are not disposed entirely within the planar volume of the outer frame members. When the Ready-Steps stool is in a closed position, the top step protrudes from the planar volume of the outer frame members one-half of an inch, the bottom step five-eighths of an inch, and the inner frame members one-half of an inch.

Messrs. Siff and Shaffer first applied for a patent for their invention on October 6, 1975. Their application listed nine claims, the first being independent and all the others being dependent on the first. The patent office examiner initially rejected all claims except number nine. The examiner believed that the claims were obvious in view of prior patents, principally Schwartz Patent No. 1,295,073, Barile Patent No. 2,802,578, and Friedenreich Patent No. 2,947,588. The examiner also cited Simmons Patent No. 606,845 and Kade Patent No. 1,217,772.

The Schwartz Patent reveals a folding stool in which inner and outer frame members are pivotally connected to form an X-frame, similar to the patent-in-suit. The seat is pivotally connected to the top of the inner frame members, but is not connected to the outer frame members. When in an open position, the seat rests horizontally on the connecting pivot of the inner frame members and on a tie-bar connecting the tops of the outer frame members. When in a folded position, the inner frame members are disposed entirely within the planar volume of the outer frame members, but the flat surface of the seat protrudes therefrom.

The Barile Patent reveals a collapsible serving stand. The significant revelation of this patent is a lower shelf which is connected to inner and outer frame members below the pivot of the X-frame via a pin-and-slot connection. When in a folded position, however, the lower shelf is not disposed entirely within the planar volume of the outer frame members.

The Friedenreich Patent reveals a reversible top collapsible table. The aspect relevant to the patent-in-suit is that the top is connected to the frame members via a pin-and-slot connection. The Simmons and Kade Patents are relevant only to the extent that they show a slot which is bowed inward slightly to provide a frictional restraint for the pin.

The patent officer examiner initially ruled that to provide Schwartz with a second platform below the pivot of the X-frame would be obvious in view of Barile, and that to connect the upper platform of Schwartz to the frame members with a pin-and-slot connection would be obvious in view of Friedenreich.

In response to the examiner's initial rejection, the application was submitted for reconsideration without amendment. In resubmitting the application, the applicants distinguished the prior art relied on by the examiner. The applicants argued that there was absolutely no way in which Schwartz and Barile could be combined to achieve a structure which met the claim definition with respect to folding flat, i. e. into the planar volume defined by the legs in a folded condition. The applicants argued that:

Barile may be said to suggest adding a second step (actually he does not because he does not really even have a "first" step) but he certainly does not teach what he himself has not accomplished, i. e., he obviously does not suggest a structure capable of folding into a planar volume as described and claimed by Applicants.

Though there is some language in the applicants' arguments supporting reconsideration to the contrary,¹ the basic thrust of their argument is that the prior art fails to disclose any device which meets or makes obvious the claims of the patent with respect to folding entirely within the planar volume of the outer frame members.

The patent office examiner accepted the applicants' arguments for reconsideration, and the patent was issued on December 28, 1976.

In the proceedings before the patent office, the most relevant prior art was not considered. Henry Patent No. 362,379 is for a folding stool. The Henry stool is quite similar to the Schwartz stool, but it is different in two very significant respects. First, the platform is connected to the frame members in basically the same manner as are the steps in the patent-in-suit—a pivot connection to the outer frame members and a pin-and-slot connection to the inner frame members. Second, when in a folded position, the inner frame members and the platform are disposed entirely within the planar volume of the outer frame members.

The other prior art now cited by defendant is not more relevant than that cited in the patent office.

X-frames and pin-and-slot connections were well-known in the prior art. Henry, Barile, Friedenreich, Kade and Simmons all revealed pin-and-slot connections to X-frames, some with the connections above the pivot of the "X" and some with the connection below. Likewise, the prior art revealed a device, Henry, in which a platform and inner frame members were disposed entirely within the planar volume of the outer frame members. What was not shown by the prior art was a device with two platforms connected to an X-frame in a step stool configuration which would fold entirely flat.

The level of skill in the relevant art is high. Messrs. Siff and Shaffer are both graduate mechanical engineers with approximately twenty-four years of engineering experience. Anthony Ribaudo, who designed the Ready-Steps step stool, has a B.S. in Mechanical Engineering and has over twenty years experience in designing stools, ironing boards and chairs. Furthermore, the overall mechanical engineering field is knowledgeable and skilled in the construction of devices combining simple and common elements, as does the patent-in-suit.

The patent-in-suit has met with a considerable degree of success. Sales of plaintiff's Stowaway stool have been encouraging. The step stool market had long sought a stool which would fold as compactly as does the patent-in-suit. Compactness is a desired quality in a step stool, since a stool's use...