Carella v. Starlight Archery and Pro Line Co.

• Decision Date: 22 October 1986
• Docket Number: No. 86-728,86-728
• Parties: , 1 U.S.P.Q.2d 1209 Richard F. CARELLA, Plaintiff-Appellee, v. STARLIGHT ARCHERY AND PRO LINE COMPANY, Defendants-Appellants. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 135

804 F.2d 135

231 U.S.P.Q. 644, 1 U.S.P.Q.2d 1209

Richard F. CARELLA, Plaintiff-Appellee, v. STARLIGHT ARCHERY AND PRO LINE COMPANY, Defendants-Appellants.

Appeal No. 86-728.

United States Court of Appeals, Federal Circuit.

Oct. 22, 1986.

As Modified Dec. 12, 1986.

Ernie L. Brooks, of Brooks & Kushman, Southfield, Mich., argued for plaintiff-appellee. With him on brief was Thomas A. Lewry, of Brooks & Kushman, Southfield, Mich.

Thomas M. McKinley, of Price, Heneveld, Huizenga & Cooper, Grand Rapids, Mich., argued for defendants-appellants. With him on brief was Randall G. Litton, of Price, Heneveld, Huizenga & Cooper, Grand Rapids, Mich.

Before BISSELL, Circuit Judge, COWEN, Senior Circuit Judge, and ARCHER, Circuit Judge.

ARCHER, Circuit Judge.

DECISION

Appellants, Starlight Archery (Starlight) and Pro Line Company (Pro Line), appeal from a judgment of the United States District Court for the Eastern District of Michigan, 595 F.Supp. 613, 224 USPQ 879 (1984), holding U.S. Patent No. 3,365,800 ('800) issued to Richard F. Carella (Carella) infringed and not invalid. The court also ordered Pro Line to pay damages; enjoined appellants from further acts of infringement of the '800 patent; and dismissed Pro Line's counterclaims seeking, inter alia, a declaration of patent invalidity and noninfringement. We affirm.

I. Background

The '800 patent for an archery bow sight assembly issued to Carella on January 30, 1968, on an application filed in the United States Patent and Trademark Office (PTO) on August 7, 1967. It contains ten claims, with claim 1, the only independent claim, reading as follows:

An archery bow sight assembly comprising:

support means adapted for attachment generally parallel to the length of an archery bow, and a plurality of independent sights respectively connected to and each independently adjustable longitudinally along said support means, each of said sights defining a longitudinal distance different from the longitudinal distance defined by any one of the other sights so that said assembly may be attached to an archery bow and each sight independently positioned relative to said support means for properly aiming the bow by moving the bow to view a target at a distance from the bow through the respective sights until the apparent vertical height of the target equal the longitudinal distance defined by one of said sights, thereby properly aiming the bow for the particular target.

The Carella bow sight has independently adjustable rings of calibrated sizes and a mount that permits overlapping of the rings. These features allow the Carella bow sight to be used for simultaneous range finding and aiming.

Pro Line is in the business of the manufacture, distribution and sale of archery related products, including bow sights. Starlight is a customer of Pro Line, but has also been a customer of Carella.

Pro Line approached Carella in 1973 and again in 1978 for a license to produce the Carella bow sight, but Carella refused. Pro Line sought advice from patent counsel in 1978 and 1980 on the validity of the Carella '800 patent. Thereafter, Pro Line manufactured and sold its Model M-525RF (Pro Line) range finder hunting sight and M-5096RF (Pro Line) range finder pins. The Pro Line bow sight comprises a bracket with a single slot and a plurality of sight elements made from standard sight pins to which wire rings are threaded.

On May 6, 1981, Carella filed suit against Starlight, alleging that Starlight had infringed the '800 patent by selling Pro Line sights and Pro Line sight pins. Pro Line intervened as a party defendant and filed counterclaims seeking a declaration of patent invalidity and noninfringement, damages and injunctive relief.

In their Answer and Counterclaims, appellants alleged the '800 patent was invalid because (1) the claimed invention was anticipated by U.S. Patent No. 3,056,206 ('206) issued to Moore and by the Schneider Rite-Flite Sight, (2) the claimed invention was obvious in view of prior art not considered by the PTO during prosecution of the '800 patent, and (3) Carella procured the '800 patent by inequitable conduct consisting of his failure to disclose to the PTO the settlement of Perkins v. Carella (Civil No. 31581, E.D.Mich. August 5, 1968), a declaratory judgment action, and material prior art. Appellants also asserted that even if the '800 patent were enforceable, they had not infringed the patent, and if they had infringed, treble damages and attorney fees were not warranted.

The district court held the '800 patent infringed and not invalid and ordered Pro Line to pay to Carella $60,466.00 in lost profits, together with $1,663.06 in costs and prejudgment interest; enjoined appellants from further acts of infringement of the '800 patent; and dismissed Pro Line's counterclaims. The court declined to award treble damages and attorneys fees. It also denied appellants' motion for reconsideration.

Issues

1. Whether the district court clearly erred in holding that the '800 patent was not anticipated by either the Moore '206 patent or the Schneider Rite Flite sight.

2. Whether the district court erred in holding that the claimed inventions in the '800 patent would not have been obvious in view of the prior art.

3. Whether the district court erred in concluding that the '800 patent was not rendered unenforceable by inequitable conduct of Carella.

4. Whether the district court erred in awarding $62,129.06 in damages, including lost profits, prejudgment interest and costs to Carella.

II. Validity

The statutory presumption of patent validity imposes the burden of persuasion on one who attacks the validity of a patent. 35 U.S.C. Sec. 282. Facts establishing anticipation or underlying a determination of obviousness must be proven by clear and convincing evidence. RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.Cir.1984).

A. Anticipation

Appellants contend that the claims of the '800 patent are anticipated, in accordance with the provisions of 35 U.S.C. Sec. 102, by the Moore '206 patent. Anticipation under Section 102 requires "the presence in a single prior art disclosure of all elements of a claimed invention arranged as in that claim." Panduit Corp. v. Dennison Manufacturing Co., 774 F.2d 1082, 1101, 227 USPQ 337, 350 (Fed.Cir.1985) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548, 220 USPQ 193, 198 (Fed.Cir.1983)).

The district court found that no single prior art reference disclosed each and every element of the claimed invention. This court cannot set aside the district court's findings of fact unless persuaded that they are clearly erroneous. Fed.R.Civ.P. 52(a). Seattle Box Co. v. Industrial Crafting & Packing, Inc., 731 F.2d 818, 823, 221 USPQ 568, 572 (Fed.Cir.1984).

With regard to the '206 patent, the district court found that it did not teach or suggest use of circular sights for simultaneous range finding and aiming. Based on this, the court found no anticipation, apparently determining that calibrated sights were necessary to simultaneous range finding and aiming in the manner claimed by Carella. In other words, taken in conjunction with the previous finding, that no single prior art reference discloses each and every element of the claimed invention, we hold that the district court was not clearly erroneous in finding that the '206 patent did not clearly disclose a structure having "independently positioned" sights for simultaneous range finding and aiming, i.e., a structure that enabled "properly aiming the bow for the particular target."

Appellants also claim anticipation under Sec. 102(a) and (b) by the Schneider Rite-Flite sight. They say it was known or used in this country and was described in printed publications, a magazine and a mailer prepared by the Wisconsin Bow Hunter Association (WBHA), prior to the invention date. In addition, they say that it was on sale more than one year before Carella's filing date.

Although in some circumstances unsupported oral testimony can be sufficient to prove prior knowledge or use, it must be regarded with suspicion and subjected to close scrutiny. Miner v. T.H. Symington Co., 250 U.S. 383, 386, 39 S.Ct. 542, 543-44, 63 L.Ed. 1045 (1919); Lockheed Aircraft Corp. v. United States, 213 Ct.Cl. 395, 553 F.2d 69, 75, 193 USPQ 449, 455 (1977).

Consistent with these principles, the district court explicitly rejected much of Mr. Schneider's deposition testimony (given in the Perkins v. Carella case), finding that only the following three relevant facts were established: an advertisement for the Rite-Flite sight appeared in a WBHA mailer that was mailed on August 17, 1966; Mr. Schneider began to sell his Rite-Flite sight to the public after the mailing; and an advertisement for the Rite-Flite sight appeared in the July/August, 1967 issue of Bow & Arrow Magazine. In view of its findings regarding Carella's development of his invention, the district court concluded that these facts standing alone did not establish anticipation.

The statutory language, "known or used by others in this country" (35 U.S.C. Sec. 102(a)), means knowledge or use which is accessible to the public. In re Bass, 474 F.2d 1276, 1296, 177 USPQ 178, 193 (CCPA 1973) (Baldwin, J., concurring); In re Borst, 345 F.2d 851, 854, 145 USPQ 554, 556 (CCPA 1965); see also, Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1453, 223 USPQ 603, 614 (Fed.Cir.1984). Here the court determined there was no credible evidence in the record indicating the Rite-Flite sight was known or used by, or was otherwise accessible to, the public until after the mailing of the WBHA advertisement on August 17, 1966. One of our predecessor courts has stated that

one who wishes to characterize the information, in whatever form it may be, as a "printed publication"

* * * should produce sufficient proof of its dissemination or that it has otherwise been available and accessible to persons concerned...