Black and Decker Mfg. Co. v. Disston, Inc.
| Decision Date | 11 August 1977 |
| Docket Number | Civ. A. No. 74-1155. |
| Citation | 436 F. Supp. 1175 |
| Parties | The BLACK AND DECKER MANUFACTURING COMPANY, Plaintiff, v. DISSTON, INC., Defendant. |
| Court | U.S. District Court — Eastern District of Pennsylvania |
Arland T. Stein, Reed, Smith, Shaw & McClay, Pittsburgh, Pa., Don K. Harness, Michael R. Dinnin, Harness, Dickey & Pierce, Birmingham, Mich., for plaintiff.
Robert B. Sommer, Kirkpatrick, Lockhart, Johnson and Hutchison, Pittsburgh, Pa., John D. Nies, Strauch, Nolan, Neale, Nies & Kurz, Arlington, Va., for defendant.
This patent infringement suit brought by the Black and Decker Manufacturing Company against Disston, Inc. principally involves the manufacture and sale of cordless electric hedge trimmers. Black and Decker claims that Disston is guilty of infringing its Patent No. 3,757,194 issued on September 4, 1973. The thrust of Disston's defense is that the subject patent is invalid for obviousness. At the outset we note that this case, by patent litigation standards, is not that complicated. That factor we believe will facilitate the understanding of our approach to its resolution. We now turn to a brief recitation of the facts, some of which are not in dispute,1 which we find to be as follows:
Facts
Black and Decker is a Maryland corporation having a principal place of business at Towson, Maryland. Disston is a Delaware corporation having a principal place of business in Pittsburgh, Pennsylvania.
United States Patent No. 3,757,1942 issued to Black and Decker, as assignee of E. J. Weber and T. G. Pugh (inventors), on September 4, 1973, and plaintiff is now and has been since that time the owner of the legal title of said patent (hereinafter the '194 patent). Black and Decker's Model 8184 cordless electric hedge trimmer is the commercial product described in this patent. The patent states eighteen claims. Black and Decker has reduced considerably the magnitude of this suit by asserting that Disston is breaching but two of those claims. We are concerned only with Claims 1 and 3 of the '194 patent which read as follows:
Disston has, preceding the filing of the complaint herein and subsequent to the issuance of said '194 patent on September 4, 1973, sold within the Western District of Pennsylvania and elsewhere in the United States the following accused products:
Disston CEHT-3 cordless electric hedge trimmer
(Version A—with mechanical latch) (PX No. 5A)
Disston CEHT-3 cordless electric hedge trimmer
(Version B—with mechanical detent) (PX No. 5B)
Disston CEHT-4 cordless electric hedge trimmer
(Version A—with mechanical latch) (PX No. 6A)
Disston CEHT-4 cordless electric hedge trimmer
(Version B—with mechanical detent) (PX No. 6B)
Disston Model 800 cordless electric hedge
trimmer (PX No. 7)
Defendant has also, preceding the filing of the second amended complaint herein, and subsequent to the issuance of said '194 patent on September 4, 1973, manufactured and sold the accused product known as:
Disston Model 1030 Powerpack cordless electric
hedge trimmer. (PX No. 10)
Because Black and Decker had marketed another cordless electric hedge trimmer as early as 1962 under a prior patent, the Riley Patent (No. 3,212,1884), and because the Riley hedge trimmer (PX No. 71)—novel as it was—did not achieve commercial success, management ordered that improvements be sought. Accordingly Black and Decker's engineer-inventors, Weber and Pugh, began work on the Model 8184 project in the summer or fall of 1970.5 They were principally charged with the task of devising a more practical—i. e., lighter, yet powerful, and easier to use—cordless hedge trimmer that could be manufactured at a reasonable cost. While the parties appeared during the trial to strongly dispute the point in time at which the true idea which spawned the invention was conceived, we find that December of 1970 denotes the proper time reference.6 We further observe that plaintiff now directs its arguments to the pertinency, not the timeliness, of defendant's prior art assertions.
Because the issue of "obviousness" turns on the relevant prior art we now review the facts pertinent to that issue.
The scope and content of the prior art is demonstrated by a compilation of patents7 and certain physical devices introduced into evidence by Disston. The devices are:
1) Disston EGS-1 grass shear; (DX No. 18)
2) Disston CEHT-1 hedge trimmer; (PX No. 74)
3) Sony Recorder TC-110 and
owner's manual; (DX Nos. 45, 46)
4) Sony Recorder TC-40 and owner's
manual; (DX Nos. 47, 48)
5) Rush Walkie-Talkie; (DX Nos. 10, 10A)
6) Hotchkiss Otoscope; (DX Nos. 13, 14, 15)
7) Riley Black and Decker Hedge
Trimmer as disclosed in Patent
No. 3,212,188. PX No. 71 (device)
DX No. 1, tab 5
(patent)
Of the patents and devices mentioned above only Patents 3,186,878 (DX No. 1, tab 4) (Filander release latch) and 3,212,188 (DX No. 1, tab 5) (Riley cordless hedge trimmer) were considered by the Patent Office.8 This is not to say that the Patent Examiner considered very little prior art in granting the Weber and Pugh patent. Actually the Patent Examiner considered in excess of twenty pertinent patents, some of which were referred to him by plaintiff's patent counsel.9
We find however as a matter of fact that the prior art proffered by Disston is analogous to the subject patent and should have been considered by the Patent Examiner. Since plaintiff does not dispute this art as to priority, there is no question as to its predating the subject invention.10
Plaintiff's Model 8184 was introduced to the public in the fall of 1971 at the annual trade show. We are told, and have no reason to question, that 38,279 of these hedge trimmers were sold the first year (1972) resulting in gross sales of $1,204,438.00.11 Since the device was put on the market 215,410 have been sold for a total sales figure of $6,371,001.00.12
This litigation produced a substantial amount of expert testimony. While we do not feel it is necessary to recount the views of each expert it is imperative for later discussion that we briefly outline their credentials.
Black and Decker called Mr. Don A. Fischer, a former dean of the School of Engineering at Washington University in St. Louis, Missouri. Fischer is also a patent attorney (no longer practicing) who describes himself presently as a consulting engineer. He has extensive experience as an "expert" witness in litigation involving engineering principles.13
Via deposition testimony Disston examined Messrs. Weber and Pugh, the recognized inventors of the Model 8184. Weber owns a degree in mechanical engineering and was the project engineer for the development of the Model 8184. Pugh, Weber's assistant, also received a degree in mechanical engineering.14
Also by deposition defendant examined Russell Fritts, Black and Decker's chief industrial designer who was responsible for the 8184's appearance, and his assistant, Gary Jaffae. Fritts and Jaffae both have degrees in industrial design.15
Mr. Stephen Sorak, Jr. (Director of Manufacturing for International Component Corporation), Mr. John E. Jones (Director of Engineering—Disston Corporation) and C. Joshua Abend (industrial design consultant), also called by defendant, all own degrees in fields of engineering or design.16
In rebuttal Black and Decker questioned, in addition to some of the witnesses heretofore mentioned, James E. Edgell, a Disston engineer who developed some of the alleged infringing devices, and Burton P. Franklin, President of Engineering for Industry, Inc. The Court finds that these men too have similar educational backgrounds, extensive experience, and are of course quite familiar with power tool construction and mechanics.17
The record clearly reveals that one working or knowledgeable in the field of electric power tools would normally be an industrial engineer and/or designer. While we do not believe a college engineering or design degree would be absolutely essential such a person would have to be, either through formal education, reasonable working experience, training and/or a combination of the above, quite conversant with mechanical and electrical engineering principles, battery systems, motors,...
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...of validity. Allegheny Drop Forge Co. v. Portec, Inc., 541 F.2d 383, 384, n. 3 (3d Cir. 1976); Black & Decker Manufacturing Co. v. Disston, Inc., 436 F.Supp. 1175, 1179 (W.D.Pa.1977). Plaintiff contends however that the presumption remains substantially intact where the new prior art is not......
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