Bose Corporation v. Linear Design Labs, Inc.

• Decision Date: 21 September 1972
• Docket Number: Docket 71-2207.,No. 920,920
• Parties: BOSE CORPORATION, Plaintiff-Appellant, v. LINEAR DESIGN LABS, INC., et al., Defendants-Appellees.
• Court: U.S. Court of Appeals — Second Circuit

467 F.2d 304 (1972)

BOSE CORPORATION, Plaintiff-Appellant, v. LINEAR DESIGN LABS, INC., et al., Defendants-Appellees.

No. 920, Docket 71-2207.

United States Court of Appeals, Second Circuit.

Argued August 18, 1972.

Decided September 21, 1972.

Charles Hieken, Waltham, Mass. (Roy C. Hopgood, Stephen B. Judlowe, Sandoe, Hopgood & Calimafde, New York City, on the brief), for plaintiff-appellant.

Lawrence J. Swire, New York City (White & Coch, New York City, on the brief), for defendants-appellees.

Before MANSFIELD and TIMBERS, Circuit Judges, and GURFEIN, District Judge.^*

GURFEIN, District Judge.

Bose Corporation (Bose) appeals from an order of the United States District Court for the Southern District of New York (Motley, J.), 340 F.Supp. 513, denying, after hearing, a motion for a preliminary injunction against infringement of the Bose patent issued June 1, 1971 relating to a pair of high fidelity loudspeakers known as the Bose 901. Judge Motley also refused to enjoin the defendant Linear Design Labs, Inc. (LDL) pendente lite from distributing its similarly designed loudspeakers without placing the name of LDL on a normally visible surface.¹ A motion to enjoin the defendants from distributing an advertisement and a brochure describing their product on the ground that these documents contain certain false and misleading representations damaging to Bose was also denied. In sum, Bose was afforded no preliminary relief for alleged patent infringement, violation of the Lanham Act or unfair competition. We affirm the denial of injunctive relief as within Judge Motley's discretion. Imperial Chemical Industries, Ltd. v. National Distillers and Chemical Corp., 354 F.2d 459 (2 Cir. 1965). The standard she applied was correct. The plaintiff must show both likelihood of success and that withholding relief will result in irreparable harm. Clairol, Inc. v. Gillette Co., 389 F.2d 264, 265 (2 Cir. 1968).² We direct a modification of her order in one respect, however, for reasons that will appear.

Bose based its claim to relief (1) on alleged infringement of its patents No. 3,582,553 ('553), particularly Claim 35, issued on June 1, 1971, and No. 3,038,964 ('964), issued on June 12, 1962, (2) on the ground that the defendants are distributing their LDL 749 loudspeaker in violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and are guilty of unfair competition in their simulation of the plaintiff's trade dress and in misrepresentations in sales literature.

Bose manufactures and markets a Bose 901 loudspeaker which embodies patents '553 and '964, the housing cabinet for which is pentagonal in shape. Its inventor, Dr. Amar G. Bose, is a professor at M.I.T. He states that he designed the Bose 901 for "optimum performance when in an actual listening area having an adjacent wall comprising part of the sound radiating system." The speakers are designed to simulate in the home the reflected and direct sound present in a concert hall. Each Bose 901 has eight long-excursion high compliance four-inch speakers mounted on the rear panels and a single speaker in front. The two rear panels meet at an obtuse angle. The eight speakers at the back are mounted in clusters of four. The five sides of the speaker are covered with grill cloth and separate top and bottom walnut panels of pentagonal shape. Each four-inch speaker has a one-inch diameter voice coil with an eight-ohm impedance and a ten-ounce magnet. The dimensions of the Bose 901 are 20 1/2" by 12 3/4" by 12 7/8". The normally visible areas of a Bose 901 speaker do not carry the Bose name. The name appears only on the bottom of the speaker and on the front panel of a separately packaged electronic equalizer. Judge Motley found that each LDL 749 cabinet which houses its loudspeaker system is similarly pentagonal in shape. LDL 749 cabinets also have eight long-excursion high compliance four-inch speakers mounted on the rear panels and a single speaker in front, two rear panels which meet at an obtuse angle slightly different from the Bose 901; and the eight speakers at the back are also mounted in clusters of four. The LDL four-inch speakers have the same eight-ohm impedance, the same one-inch voice coil diameter, and the same ten-ounce magnet. LDL 749 dimensions are 19½" by 12½" by 12". The five sides of the LDL 749 speaker are also covered with grill cloth which separates top and bottom panels of pentagonal shape.

Unlike the Bose 901, the LDL 749 has a black colored grill cloth while the Bose 901 has a beige or gray and white colored grill cloth. The top and bottom panels on both models are made of walnut wood, but the Bose 901 panels prominently overhang. The Bose 901 also has vertical walnut posts at the front corners of the cabinet while the LDL 749 has only one post in the back. The top and bottom panels on the Bose 901 form a wider angle than the LDL 749. The two rear panels of the Bose 901 on which the speaker clusters are mounted form an angle of 120° whereas the angle formed by the similar rear panels in the LDL 749 form an angle of 134°.

LDL's name appears on the front of its cabinet in the lower right hand corner, on the carton in which it is shipped, and on all of its sales and promotional literature.

For the purposes of the motion for a preliminary injunction, based on patent infringement, Bose relied upon only one claim, Claim 35 of its '553 patent (June 1, 1971), as the basis for its allegation that defendants have been and are infringing its Letters Patent. That claim reads as follows:

"35. A loudspeaker system comprising sound radiating means, and means for supporting said sound radiating means for directing of the order of 87 percent of the sound energy therefrom upon a reflecting surface and then to a listener when said sound radiating means is normally positioned in a room while directing of the order of 13 percent of the sound energy therefrom directly to a listener when said sound radiating means is normally positioned in a room."

I

This Court is again confronted with the propriety of issuing a preliminary injunction in a patent infringement case where infringement seems fairly clear if the patent infringed is valid. In Carter-Wallace, Inc. v. Davis-Edwards Pharmacal Corp., 443 F.2d 867 (2 Cir. 1971) the Court reaffirmed the doctrine that, as Judge Learned Hand put it, "an injunction pendente lite in a patent suit should not go except when the patent is beyond question valid and infringed." Simson Bros. v. Blancard & Co., 22 F.2d 498, 499 (2 Cir. 1927). Judge Motley in a careful opinion held that the patent here is not "beyond question valid." Appellant argues that the Carter-Wallace doctrine is not inflexible and that on its facts that case is distinguishable from the case at bar.

Bose must concede that there has been no prior adjudication of validity. Nor has there been long public acquiescence since the Bose patent was issued only in June of 1971. The appellant contends, however, that White v. Leanore Frocks, Inc., 120 F.2d 113 (2 Cir. 1941) was not overruled in Carter-Wallace. In the White case, this Court stated:

It is true that in infringement actions it does not inexorably follow that the patentee can have no relief, pendente lite, though his patent has never been adjudicated and though the public has shown no acquiescence in it. There are exceptional cases when he may so bolster it up as to get immediate protection though these are rare indeed. 120 F.2d at 114 (citations omitted).

The appellant concedes that "the language of Carter-Wallace is such as to cast serious doubt as to whether there is any vitality in the dictum of White," but it urges that this Court reconsider the implications of Carter-Wallace and also find this to be an "exceptional case." We decline to do so.

It is true that in Carter-Wallace there was proof of the prior art which had not been called to the attention of the Patent Office (443 F.2d at 875-880). Here there is no specific prior art proved by the appellee which falls into that category. In this respect, novelty may be assumed, to the extent that there is, indeed, differentiation between novelty of invention and non-obviousness. See Lemelson v. Topper Corporation, 450 F.2d 845, 848 (2 Cir. 1971), cert. denied, 405 U.S. 989, 92 S.Ct. 1253, 31 L.Ed.2d 456 (1972).

Judge Motley did not make a finding on novelty of invention. She did rely on 35 U.S.C. § 103 (Patent Act of 1952) to hold that the plaintiff had failed to show non-obviousness. We affirm her decision not because of this finding but because the plaintiff has failed to meet the Carter-Wallace tests for injunctive relief, pendente lite: an adjudicated patent or long acquiescence by the industry —in short, that the patent is valid beyond question. Because of the short time that has elapsed since its issue, the failure of the appellee to demonstrate prior art, unknown to the Patent Office, does not itself establish the patent to be valid beyond question.

At the hearing below defendants argued that Claim 35 embodies no more than the elementary concept embodied in every concert hall where the orchestra is placed in front of a proper back wall. We do not necessarily agree with the District Court that, in view of this contention, "it is plain that the test of non-obviousness which the claim must survive to be held valid will be difficult in this case." Without deciding that issue, we note that it should be open to proof that fashioning a loudspeaker that would radiate of the order of 87% of the sound first toward a reflecting surface when normally positioned in a room and the remaining sound of the order of 13% directly into the listening area was not necessarily such subject matter as to render it "obvious at the time the invention was made to a person having ordinary skill in the art." 35 U.S.C. § 103. The extended research for a period of ten years and the absence of compelling references to cite against the Bose claim may be found to negate such...