Black & Decker, Inc. v. Hoover Service Center, 89-1287
| Decision Date | 28 September 1989 |
| Docket Number | No. 89-1287,89-1287 |
| Citation | 12 USPQ2d 1250,886 F.2d 1285 |
| Parties | BLACK & DECKER, INC. Black & Decker (U.S.), Inc. and CIC Int'l Corp., Plaintiffs-Appellants, v. HOOVER SERVICE CENTER, and The Hoover Company, Defendants-Appellees. |
| Court | U.S. Court of Appeals — Federal Circuit |
Don K. Harness, Harness, Dickey & Pierce, Birmingham, Mich., argued for plaintiffs-appellants. With him on the brief were John A. Artz and Gordon K. Harris, Jr. Also on the brief were Mark D. Gately and Daniel R. Lanier, Miles & Stockbridge, Baltimore, Md. and Edward D. Murphy, Black & Decker, Inc., Towson, Md., of counsel.
Ray L. Weber, Renner, Kenner, Greive, Bobak, Taylor & Weber, Akron, Ohio, argued for defendants-appellees. With him on the brief was Sylvia A. Petrosky.
Before MARKEY, Chief Judge, NEWMAN and ARCHER, Circuit Judges.
Black & Decker, Inc., Black & Decker (U.S.), Inc., and CIC Int'l Corp. (collectively B & D), appeal from a denial by the United States District Court for the District of Connecticut, Civil Action No. H-87-851, of preliminary injunctions against trademark and patent infringement allegedly being committed by Hoover Service Center and The Hoover Company (Hoover). We vacate and remand.
On November 2, 1987, B & D sued Hoover, alleging that sales of Hoover's DUBL-DUTY hand-held vacuum product constituted infringement of U.S. Patent No. 4,309,875 ('875), infringement and dilution of trademark rights, and unfair competition. On November 2, 1987, B & D moved to preliminarily enjoin all but patent infringement. On December 10 and 11, 1987, a hearing was held, but the judge then recused. The case was transferred to the Chief Judge, who recused herself, and then to the judge who rendered the ruling under review.
In early 1988, B & D amended its complaint, alleging infringement of U.S. Patent No. 4,542,557 ('557), in which inventor Levine disclosed and claimed a wet-dry vacuum and of which B & D had become a licensee, added as plaintiff its licensor, CIC Int'l Corp., and moved to preliminarily enjoin infringement of the '557 patent.
After a 7-day evidentiary hearing conducted in April and July, 1988, the court set September 9, 1988, as the deadline for post-hearing briefs. On November 3, 1988, Hoover filed a "Surreply" alleging antitrust violations. No decision having been rendered, B & D's counsel wrote the court on January 20, 1989. On January 27, 1989,
the court rendered its "Ruling On Motions For Preliminary Injunction" denying both motions.
The court decided each motion on a single issue, having found absence of a trademark right and no patent infringement. Determining that B & D had not shown a likelihood of success, the court did not decide on irreparable harm, balance of hardships, or effect on the public interest. 1
The court determined that B & D could have no "proprietary right" in the shape of the bowl portion of its "DUSTBUSTER" hand-held vacuum 2 because the bowl was "functional." The court did not decide whether B & D had shown a likelihood of success on secondary meaning or likelihood of confusion. In finding "functionality" the court said:
The court finds that in the instant case, the design of the DUSTBUSTER bowl is dictated essentially by its utility or purpose. In making this determination, we are guided in large part by the '875 patent, which plaintiffs describe as "deal[ing] with the internal mechanisms of the vacuum cleaner."
The function of the wedge shaped bowl of the DUSTBUSTER is described in detail in column 5, 11, 37-46, and column 6, 11, 7-12, of the '875 patent: the wedging engagement between the ring 75 [of the filter bag assembly 73] and bowl 47 prevents the assembly 73 from inadvertently falling out of the bowl or from backing out when the power unit is separated from bowl unit 23 [sic 25]. Furthermore, when the power unit 23 and bowl unit 25 are assembled together, as shown in Fig. 2, the venturi 41 engages the ring 75 and presses it into snug wedging engagement with the bowl 47. As shown, the venturi has a radial shoulder 85 which engages a radial shoulder 87 on the ring 75.
By providing that the filter bag assembly 73 remains in position in the bowl 47 when the power and bowl units 23, 25 are detached and separated, all of the dirt remains securely trapped in the dirt collecting chamber 80 in bowl 47 and cannot spill out until the filter bag assembly 73 is thereafter removed.
It is clear from plaintiffs' own disclosure in the '875 patent that the wedge shape of the bowl functions to limit removal of the filter assembly upon disassembly of the power unit with the bowl but permits subsequent removal to empty the bowl. By preventing the filter unit from inadvertently falling out of the bowl when the power unit is separated from the bowl unit, debris cannot be accidentally spilled from the bowl. Further, the wedge shape of the bowl serves to frictionally lock the filter unit in place in contact with the venturi unit when the components are assembled.
If these features are covered by the '875 patent, then the '875 patent should be the basis for seeking the requested monopoly and the public will have to wait until the patent has expired and the features are in the public domain to be copied. If not covered by the patent, since it is essential to the use of the vacuum, the wedge shaped bowl should be considered part of the public domain, free for anyone to copy.
Without so labeling it, the court disposed of B & D's assertion of literal infringement in these paragraphs:
The Levine ['557] patent discloses that an air/fluid mixture enters the nozzle of the device under a vacuum produced by a blower or fan. The moisture-laden air then passes along a nozzle or snorkel and impinges against a deflector or diverter, whereupon fluid separates from the air and is directed toward the lowermost portion of a storage chamber or bowl. The remaining substantially fluid-free air in the bowl is then guided from the bowl to the motor housing which contains the blower and a motor for operating the blower and the discharger.
This air passageway or guide has an entry port formed as a protrusion or "snout" arranged to prevent entry of fluid in the bowl or storage chamber from passing to the vacuum filter in advance of the blower-motor housing when the vacuum is oriented in a variety of directions, including when the hand-held unit is tipped with its front or nozzle end pointed in an upward direction. The opening into the entry port is situated such that liquids in the storage chamber will not pass into the filter and blower and motor housing regardless of the orientation of the vacuum, but will be prevented from doing so by the wall of the snout which serves to shield the filter and the blower-motor housing.
The Hoover DUBL-DUTY wet/dry vac charged as an infringement and the prior art cited during the prosecution of the Levine patent, particularly the patent to Nauta, U.S. 4,142,270, does not contain the snout-like protrusion or front wall recited in claim 1 and the dependent claims of the Levine patent. It is obvious from an examination of the prosecution history of the Levine patent that allowance of the claims of the Levine patent was predicated on the addition of language to the claims defining the snout and its depending front wall, distinguishing the claimed invention from Nauta.
In the Hoover DUBL-DUTY vac, the air/fluid mixture enters a nozzle under a vacuum produced by a blower or fan. The moisture-laden air impinges against a deflector or diverter which is located not, as required by claim 1 of the Levine patent, at the "exit port of said nozzle" for the purpose of "directing suctioned liquid away from the entry port of the conduit" [or snout], but against a single curved surface which is the front of the filter housing of the DUBL-DUTY vac. An entry port at the top of the filter housing permits the passage of air to the filter element housing, upstream from a blower motor unit powering the vacuum for filtration and subsequent discharge, while liquid is accumulated in the bowl.
The court recited the standard set forth in Graver Tank & Manufacturing Co. v. Linde Air Products Co., 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097, 85 USPQ 328 (1950), and disposed of B & D's assertion of infringement under the doctrine in this single paragraph:
As explained above, the diverter in the Levine ['557] patent is positioned at the exit port for the purpose of diverting liquid away from the entry port, which is further shielded from liquid in the bowl by the front wall of the snout or entry port if the bowl is tilted. The DUBL-DUTY vac does not have structure to perform this function. Accordingly, the court finds that the doctrine of equivalents does not apply, particularly since Nauta (the prior art patent cited by the Patent and Trademark Office) accomplishes the result in substantially the same manner as the accused device.
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