American Seating Co. v. National Seating Co.

• Decision Date: 15 September 1978
• Docket Number: 76-2626,Nos. 76-2625,s. 76-2625
• Citation: 199 USPQ 257,586 F.2d 611
• Parties: AMERICAN SEATING COMPANY, Plaintiff-Appellant Cross-Appellee, v. NATIONAL SEATING COMPANY, Defendant-Appellee Cross-Appellant.
• Court: U.S. Court of Appeals — Sixth Circuit

Page 611

586 F.2d 611

199 U.S.P.Q. 257

AMERICAN SEATING COMPANY, Plaintiff-Appellant Cross-Appellee, v. NATIONAL SEATING COMPANY, Defendant-Appellee Cross-Appellant.

Nos. 76-2625, 76-2626.

United States Court of Appeals, Sixth Circuit.

Argued June 19, 1978.

Decided Sept. 15, 1978.

Lloyd A. Heneveld, Price, Heneveld, Huizenga, Cooper, Daniel Van Dyke, Grand Rapids, Mich., for plaintiff-appellant cross-appellee.

Charles B. Lyon, Donnelly, Maky, Renner & Otto, Cleveland, Ohio, for defendant-appellee cross-appellant.

Before WEICK and MERRITT, Circuit Judges, and CECIL, Senior Circuit Judge.

WEICK, Circuit Judge.

This action was brought in the District Court by American Seating Company (American) against National Seating Company (National) for the infringement of its U.S. Letters Patent No. 3,729,226 ('226), entitled "Single Pedestal Transit Chair." National, in its answer, pleaded the invalidity of the patent and denied infringement, and counterclaimed for a declaratory judgment of invalidity and non-infringement.

In a well-written opinion District Judge Contie held that the patent was invalid under: (1) 35 U.S.C. § 102, because it was anticipated by the prior art; (2) 35 U.S.C. § 103, because it was obvious to those skilled in the art at the time of its invention; and (3) 35 U.S.C. § 112, because it failed to describe particularly that which was claimed to be invented. Furthermore the District Court found that the patent, if valid, was infringed by some of National's seat models, but was not infringed by other National seat models.

Both parties appealed. American has appealed from those portions of the District Court's judgment which held the patent invalid and which found that certain of National's seat models did not infringe upon the patent. National has cross-appealed from the District Court's findings of infringement.

We affirm, holding the patent invalid, and therefore it is not necessary that we reach the issues of infringement.

I

The '226 patent relates to a passenger bus seat. The device was invented around April, 1970, by Charles A. Barecki, an employee of American. The patent application (which application was assigned by Barecki to American) was filed in the U.S. Patent Office on June 4, 1971, and the patent was issued on April 24, 1973. American and National, at the time of suit, were the sole American manufacturers of inter-city passenger bus seats. ¹

The '226 patent (see diagram 1) discloses a center pedestal seat. The patent claims ² show two side-by-side seats (11 and 12) mounted on a beam (13). The beam is attached to the wall of a bus by an angle iron (14). The beam is supported approximately midway between the seats by a pedestal shaped in the form of an inverted "T". The pedestal is composed of a single upright column (15) and a tubular foot (16), which foot extends fore and aft of the bus. The ends (17) of the foot are cut away at a 45o angle to provide access openings to the fastening bolts (19) used to secure the foot to the floor. The access openings can be covered by end caps (20). The end caps are held in place by a U-shaped spring plate (23), which has two shoulder rivets or lugs (21) snapped into receiving holes (22).

(See following illustration.)

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

TABLE

Prior to the marketing of passenger bus seating with the tubular inverted "T" pedestal, the standard floor support used for passenger bus seats was aisle legs. American began to market passenger bus seats manufactured in conformity with the '226 patent in 1971. Since that time the tubular inverted "T" pedestal disclosed by the '226 patent has enjoyed considerable acceptance and commercial success as a mode of floor support for both inter-city and intra-city passenger bus seats. App. 1171-72.

In 1972 National first offered for sale a recliner passenger bus seat which used a tubular inverted "T" pedestal identical to the one disclosed by the '226 patent. Since its first use National has modified the pedestal's foot design so that the fastening bolts are located outside of the tube of the foot. At the time of trial all passenger bus seats manufactured by National used a tubular inverted "T" pedestal for the floor support.

The '226 patent sets forth the following advantages of its seat design, which advantages are alleged to be attributable to the tubular inverted "T" pedestal, over the traditional aisle leg passenger bus seat: (1) increased safety and ease in passenger ingress and egress; (2) increased leg room and storage space under the seat; (3) increased ease in maintenance and cleaning; and (4) improved appearance.

II

Patentability is dependent upon three essential elements, namely, novelty, utility, and nonobviousness, articulated and defined in 35 U.S.C. §§ 101-03. These elements constitute separate tests of patentability, each of which must be met in order for a patent to be valid. United States v. Adams, 383 U.S. 39, 48, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966); Reynolds Metals Co. v. Acorn Bldg. Components, Inc., 548 F.2d 155, 159 (6th Cir. 1977) and cases cited therein.

The District Court held that the '226 patent was invalid, Inter alia, because it failed to meet two of the above tests, that is, the structure disclosed by the patent was anticipated, thereby negating novelty, Allied Wheel Prods., Inc. v. Rude, 206 F.2d 752, 760 (6th Cir. 1953), and the patent was obvious in light of the prior art.

The starting point in analyzing a challenge to a patent's validity is the statutory presumption that the patent is valid under 35 U.S.C. § 282. The presumption of validity is based upon the acknowledged experience and expertise of the Patent Office and upon the fact that the issuance of a patent constitutes a type of administrative determination supported by evidence. Parker v. Motorola, Inc., 524 F.2d 518, 521 (5th Cir. 1975), Cert. denied, 425 U.S. 975, 96 S.Ct. 2175, 48 L.Ed.2d 799 (1976); See Deep Welding, Inc. v. Sciaky Bros., Inc., 417 F.2d 1227, 1234 (7th Cir. 1969), Cert. denied, 397 U.S. 1037, 90 S.Ct. 1354, 25 L.Ed.2d 648 (1970); Monroe Auto Equip. Co. v. Heckethorn Mfg. & Supply Co., 332 F.2d 406, 412-13 (6th Cir.), Cert. denied, 379 U.S. 888, 85 S.Ct. 160, 13 L.Ed.2d 93 (1964). In cases in which relevant prior art was not considered by the Patent Office, the presumption is largely, if not wholly, vitiated. Tee-Pak, Inc. v. St. Regis Paper Co., 491 F.2d 1193, 1196 (6th Cir. 1974); Westwood Chem., Inc. v. Owens-Corning Fiberglas Corp., 445 F.2d 911, 916 (6th Cir. 1971), Cert. denied, 405 U.S. 917, 92 S.Ct. 941, 30 L.Ed.2d 786 (1972).

The degree by which the presumption is weakened in cases in which relevant prior art was not considered by the Patent Office, depends upon a balancing of the pertinence of the newly cited prior art and the pertinence of the prior art actually considered by the patent examiner in the prosecution of the patent application. Tee-Pak, Inc. v. St. Regis Paper Co., supra, 491 F.2d at 1193; Accord, Aluminum Co. of America v. Amerola Prods. Corp., 552 F.2d 1020, 1024-25 (3d Cir. 1977).

In the instant case the District Court determined that the prior art considered by the Patent Office did not include "any showing of the overall combination claimed, a center pedestal for a two passenger transportation seats (sic) or concealed fasteners for such pedestals." App. 60. Because the concepts embodied in the uncited prior art possess the most relevance in the determination of patentability in this case, we agree with the District Court that the presumption of validity has been completely destroyed. ³

III

Novelty does not exist if a patented device is anticipated by a substantially identical device whose elements perform substantially the same work in substantially the same manner. Dunlop Co. v. Kelsey-Hayes Co., 484 F.2d 407, 414 (6th Cir. 1973), Cert. denied, 415 U.S. 917, 94 S.Ct. 1414, 39 L.Ed.2d 471 (1974); Monroe Auto Equip. Co. v. Heckethorn Mfg. & Supply Co., supra, 332 F.2d at 414.

The District Court found that two prior art seats anticipated the '226 patent. The first of these seats is the Greyhound Tour Coach Seat. (See diagram 2 below.) That seat, designed, manufactured, and sold by National to Greyhound in the 1950's, discloses:

Said Tour Coach seat includes side-by-side recliner seats 11 and 12 supported on frame beam 13, having aisle side 13-A and wall side 13-B and mounting means 14 provided to secure the wall side of the frame to the vehicle wall. Frame 13 is also supported by a pedestal P, including a column 15 and a foot 16. Such foot 16 includes a circular bottom plate 16-A welded to the bottom of the upright column and four spaced gussets 16-B interconnecting the column 15 and the bottom plate 16-A. The bottom plate 16-A has four equally circumferentially spaced countersunk mounting holes 19-A therein to receive fasteners to secure the same to the vehicle floor. The foot 16 is selectively covered by a two-piece shroud 20, 20-A, joined by screws 21, such shroud acting to conceal the four spaced fasteners. The above described pedestal P can be positioned at the center of the seat frame for some seats or in an intermediate position between the center of the frame and the aisle side for other seats. (App. 47-49)

The second seat found by the District Court to anticipate the '226 patent, is the American round base center pedestal seat sold by American to General Motors Corporation in 1969. ⁴ (See diagram 2.) That seat discloses:

Such seat includes two side-by-side transit (I. e., fixed-back) seats 11 and 12 mounted on a tubular beam 13, having an aisle-side 13-A and a wall-side 13-B. Such wall-side of the frame is provided with a flange means 14 to secure the frame to the vehicle wall. The center pedestal P is provided to support frame 13 in conjunction with the wall mount, such pedestal including an upright cylindrical tubular column 15 and a cast foot 16 extending fore and aft of such column. Such foot 16...