946 F.2d 1534 (Fed. Cir. 1991), 91-1189, London v. Carson Pirie Scott & Co.

Docket Nº:91-1189.
Citation:946 F.2d 1534
Party Name:20 U.S.P.Q.2d 1456 Wallace LONDON and Clemco Products, Inc., Plaintiffs-Appellants, v. CARSON PIRIE SCOTT & CO., Marshall Field Stores, Inc., W. Bell & Co., Inc., and Samsonite Corporation, Defendants-Appellees.
Case Date:October 17, 1991
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

Page 1534

946 F.2d 1534 (Fed. Cir. 1991)

20 U.S.P.Q.2d 1456

Wallace LONDON and Clemco Products, Inc., Plaintiffs-Appellants,

v.

CARSON PIRIE SCOTT & CO., Marshall Field Stores, Inc., W.

Bell & Co., Inc., and Samsonite Corporation,

Defendants-Appellees.

No. 91-1189.

United States Court of Appeals, Federal Circuit

October 17, 1991

Page 1535

Harry J. Roper, Roper & Quigg, Chicago, Ill., argued for plaintiffs-appellants. With him on the brief were James P. Naughton and Maureen C. O'Connor. Also on the brief was David S. Schaffer, Jr., Neal, Gerber & Eisenberg, Chicago, Ill., of counsel.

Patrick G. Burns, Welsh & Katz, Ltd., of Chicago, Ill., argued for defendants-appellees. With him on the brief was A. Sidney Katz.

Before LOURIE, Circuit Judge, SKELTON, Senior Circuit Judge, and RADER, Circuit Judge.

LOURIE, Circuit Judge.

Wallace London and Clemco Products, Inc. (London) appeal the judgment of the United States District Court for the Northern District of Illinois, No. 85 C 9712 (January 3, 1991), granting summary judgment in favor of Carson Pirie Scott & Co., Marshall Field Stores, Inc., W. Bell & Co., Inc., and Samsonite Corporation (Samsonite), on a charge of infringement of certain claims of United States Patents 3,566,456 ('456) and Re. 31,075 ('075). We affirm.

BACKGROUND

Both the '456 patent and the '075 patent concern clamps used to hang clothes securely in travel garment bags. The '456 patent, issued on March 2, 1971, relates to a clamp with two metal channels, C-shaped in cross-section, positioned horizontally, with open edges facing one another and pivotally connected at one end by a hinge pin. Two strips of resilient material fit into the open edges of the channels. The clamp is adapted to grip the shank of a clothes hanger below the hook and contemplates that the hanger extends outside the garment bag. Claim 1, which is at issue along with dependent claim 2, reads:

1. A bifurcated clamp for embracing a plurality of garment hangers adapted to be positioned within a garment bag, each hanger having an upstanding shank between the supporting hook for the hanger and the support for the garment, and said upstanding shanks adapted to be spaced along the length of said clamp, said clamp comprising:

(a) a pair of congruous C-shaped channels pivotally mounted to each other at one end thereof, with the open edge of each channel facing the other.

(b) a strip of resilient material seated within each channel and protruding beyond the open edge thereof, and

(c) a latching device on the opposite free ends of said channels for alternately permitting the spreading of said

Page 1536

channels or the clamping thereof together for embracing the spaced shanks of the spaced garment hangers to attain an integrated assembly thereof, at least one of said channels having fastening means thereon to permit the ready affixation thereof to the garment bag to provide a tight seal for the bag and reliable support for the garment hangers therein.

The '075 patent also claims a clamp to hold clothes hangers together inside a garment bag. Unlike the '456 patent, however, the clamping jaws of the '075 patent are positioned vertically, not horizontally. Also, a reinforcing sleeve surrounds the hinge pin between the internal surfaces of the channels. The clamp is operated by inserting the hook portion of a clothes hanger between the two resilient strips when the device is open. After the hook is inserted, the lower channel is rotated upwardly around the hingepin to close the clamp. The latching device holds the hanger in place.

Although both Claims 1 and 9 of the '075 patent are appealed, claim 9 is representative 1 and it reads as follows:

9. In a frame type garment bag assembly having means on the outside of the top thereof for suspending the bag while loading therein or unloading therefrom a plurality of garments on supports therefor, each comprising a vertical wire shank extending upwardly from the center of the support and terminating in a downwardly extending curved hook portion, and means for securely locking a plurality of the garment supports entirely within the bag, the improvement comprising:

(a) a jointed clamp disposed in a generally vertical plane and having an upper channel fixed to the top of the garment bag and a lower channel pivotally mounted to said upper channel at one end thereof, with the open edge of each channel facing the other,

(b) a horizontally disposed hinge pin at said end extending beyond the external surfaces of said channels,

(c) a reenforcing sleeve surrounding said hinge pin between the internal surfaces of said channels,

(d) a strip of resilient material seated within each channel and protruding beyond the open edge thereof,

(e) a latching device of high mechanical efficiency at the opposite end of said jointed clamp for alternately permitting the spreading of said channels or the clamping thereof together, for embracing the hook portions of the garment supports to maintain them in fixed position, and

(f) means extending between said last-mentioned upper channel and said lower channel for limiting the pivotal movement of the latter in the open position of said jointed clamp, to provide an inclined support for the hook portions of the garment supports in the course of loading and unloading the latter into and from the garment bag.

The device which London alleges infringes its patents, Samsonite's "locking trolley" clamp, is an embodiment of United States Patent 4,618,058, issued to Samsonite in 1986. A drawing of Samsonite's clamp is reproduced below.

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


The Samsonite clamp has a C-shaped cantilevered member (K), secured at one end to the frame of a structured garment bag by rivets. The other end of the C-shaped member forms a bottom channel (D) containing a strip of resilient material (C), such as rubber, on which the hanger hooks are placed. The bottom channel is positioned across from an upper channel (E), which also contains a strip of resilient material. The upper channel is pivotally secured to the C-shaped member by a rivet hinge pin (F). A camming device (G) is secured to the end of the upper channel opposite the hinge pin, which, when closed, pushes the upper channel toward the lower channel, thus securing the hangers in the trolley.

London brought suit, alleging that Samsonite's clamp infringed literally and under the doctrine of equivalents; it also charged Samsonite with unfair competition and violation of the Lanham Act and state deceptive trade practice law. Both parties moved for summary judgment relating to infringement. The district court granted Samsonite's motion. London appeals only that part of the district court's judgment relating to infringement under the doctrine of equivalents.

DISCUSSION

A grant of summary judgment under Fed.R.Civ.P. 56 is appropriate where no genuine issue of material fact exists and the moving party is entitled to judgment as a matter of law. Johnston v. IVAC Corp., 885 F.2d 1574, 1576-77, 12 USPQ2d 1382, 1383 (Fed.Cir.1989). Since one principal purpose of summary judgment "is to isolate and dispose of factually unsupported claims or defenses," Fed.R.Civ.P. 56 requires that the nonmoving party "designate 'specific facts showing that there is a genuine issue for trial.' " Celotex Corp. v. Catrett, 477 U.S. 317, 323-324, 106 S.Ct. 2548, 2552-53, 91 L.Ed.2d 265 (1986) (quoting Fed.R.Civ.P. 56(e)). There can be "no genuine issue as to any material fact" where the nonmoving party's proof is deficient in meeting an essential part of the applicable legal standard, since such failure renders all other facts immaterial. Id. at

Page 1538

323, 106 S.Ct. at 2552. Thus, in determining whether the district court correctly granted Samsonite's motion for summary judgment of non-infringement of the '456 and '075 patents, we initially must determine whether London's proof was sufficient to satisfy the legal standard for infringement under the doctrine of equivalents. Johnston, 885 F.2d at 1577, 12 USPQ2d at 1383-84. Such proof is sufficient if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty...

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181 practice notes
163 cases
8 firm's commentaries
  • Intellectual Property Basics
    • United States
    • JD Supra United States
    • November 11, 2011
    ...must show the presence of every element or its substantial equivalent in the accused device.” London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed. Cir. 1991) (the “all-elements” or “all-limitations” rule). Literal correspondence of each element of a claim with the accused devic......
  • Federal Circuit Issues Order Clarifying Status of Doctrine of Equivalents
    • United States
    • JD Supra United States
    • September 6, 2019
    ...the scope of the claims" [italics added]. Citing its pre-Warner Jenkinson precedent in London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed. Cir. Amgen took issue with this statement, and in its petition for rehearing en banc reminded the Court that the term "exception......
  • Amgen v. Sandoz - New Developments in Biosimilars Litigation
    • United States
    • JD Supra United States
    • May 24, 2019
    ...at 15. [17] Amgen, slip op. at 8. [18] Amgen, slip op. at 11. [19] Amgen, slip op. at 11 (quoting London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed. Cir. 1991)). [20] Amgen, slip op. at 11. [21] Amgen, slip op. at 12. [22] Amgen, slip op. at 12. [23] Amgen, slip op. at 12. [2......
  • Amgen Inc. v. Sandoz Inc. (Fed. Cir. 2019)
    • United States
    • JD Supra United States
    • May 13, 2019
    ...protection beyond the scope of the claims,'" citing its pre-Warner Jenkinson precedent in London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed. Cir. 1991). More correctly (and less provocatively), the panel based its decision on the sound reasoning that "Sandoz does no......
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10 books & journal articles
  • INFRINGEMENT, UNBOUND.
    • United States
    • Harvard Journal of Law & Technology Vol. 32 Nbr. 1, September 2018
    • September 22, 2018
    ...(113.) Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 731 (2002). (114.) London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1539 (Fed. Cir. 1991), (citing Becton Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 798 (Fed. Cir. 1990)); see also Litton Sys., Inc. v......
  • The (unnoticed) demise of the doctrine of equivalents.
    • United States
    • Stanford Law Review Vol. 59 Nbr. 4, February 2007
    • February 1, 2007
    ...Perspectives, 21 INT'L REV. INDUS. PROP. & COPYRIGHT L. 497, 499 (1990). (12.) London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538-39 (Fed. Cir. 1991). (13.) As the Supreme Court recognized in Festo, perfect claim drafting may be impossible: "Unfortunately, the nature of la......
  • Tesla, Marconi, and the great radio controversy: awarding patent damages without chilling a defendant's incentive to innovate.
    • United States
    • Missouri Law Review Vol. 73 Nbr. 3, June 2008
    • June 22, 2008
    ...Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1480-81 (Fed. Cir. 1998). (169.) London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed. Cir. 1991); see also Markman v. Westview Instruments, Inc., 517 U.S. 370, 390 (1996); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d ......
  • Use of functional claim elements for patenting computer programs.
    • United States
    • The Journal of High Technology Law Vol. 12 Nbr. 1, January 2012
    • January 1, 2012
    ...definiteness requirement is to "apprise the public" of what is still open to them); London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed. Cir. 1991) (citing State Indus. v. A.O. Smith Corp., 751 F.2d 1226, 1236 (Fed. Cir. 1985)) (noting that claims must be particular a......
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