Charles Greiner & Co., Inc. v. Mari-Med Mfg., Inc.

• Decision Date: 27 April 1992
• Docket Number: No. 91-1192,MARI-MED,91-1192
• Citation: 22 USPQ2d 1526,962 F.2d 1031
• Parties: CHARLES GREINER & CO., INC., d/b/a Philadelphia Cervical Collar Co., Plaintiff-Appellant, v.MFG., INC., William R. Burns, Paul W. Burns and Gary R. Burns, Defendants-Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1031

962 F.2d 1031

22 U.S.P.Q.2d 1526

CHARLES GREINER & CO., INC., d/b/a Philadelphia Cervical Collar Co., Plaintiff-Appellant, v. MARI-MED MFG., INC., William R. Burns, Paul W. Burns and Gary R. Burns, Defendants-Appellees.

No. 91-1192.

United States Court of Appeals Federal Circuit.

April 27, 1992.

Philip Rodman, Rodman & Rodman, White Plains, N.Y., argued for plaintiff-appellant. With him on the brief was Harvey E. Bumgardner, Jr., New York City.

Steven Kreiss, Townsend, Snider & Banta, Washington, D.C., argued for defendants-appellees. With him on the brief was Herbert B. Barlow, Jr., Barlow & Barlow, Ltd., Cranston, R.I.

Before PLAGER, Circuit Judge, SMITH, Senior Circuit Judge, RADER, Circuit Judge.

RADER, Circuit Judge.

In 1989, Charles Greiner & Co. sued Mari-Med Manufacturing for infringement of U.S. Patent No. 3,756,226, for trademark infringement under 15 U.S.C. § 1114 (1988), and for unfair competition under 15 U.S.C. § 1125. Greiner's '226 patent covers a two-piece cervical collar or neck brace. Greiner has registered the mark PHILADELPHIA CERVICAL COLLAR.

After a six-day trial, the United States District Court for the District of Rhode Island held that defendants had not infringed either the '226 patent or the trademark, 754 F.Supp. 951. The trial court also determined that Greiner had not proven unfair competition. This court affirms.

BACKGROUND

Both Greiner and Mari-Med manufacture cervical collars. The term "cervical" denotes the neck portion of the spine which supports the head. Treatment of cervical injuries often includes wearing of a collar. A cervical collar eases strain on the spine during healing. Emergency medical technicians also put cervical collars on accident victims to avoid compounding injuries during movement to a hospital.

Cervical collars usually feature two pieces, a front half and a rear half, which join to provide support to the spine. Before the '226 patent, the Patent and Trademark Office issued U.S. Patent No. 3,662,057 to Webster, No. 3,042,027 to Monfardini, No. 3,504,667 to McFarlane, and 2,818,063 to Smith, for cervical collars. Much of this prior art featured cervical collars with rigid supporting halves cushioned by softer material.

The '226 patent claims a cervical collar with two mating halves. The two U-shaped halves are made of a soft light-weight flexible foam. The two halves overlap around the neck. A strap holds the halves together. A rigid support member (Figs. 2 & 3, Nos. 30 & 62) located only at the bight of each half provides support when the collar is in place. Figures 1-3 of the '226 patent show:

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Claim 1 of the '226 patent reads:

A cervical collar comprising first and second discrete body halves, one of said body halves being a front half and the other being a rear half, each half being U-shaped and preformed from a soft flexible, lightweight closed cell foam polymeric plastic material, each half being provided with air holes extending therethrough, adjustable strap means having a portion coupled to each of said halves for releasably interconnecting the free ends of said halves in overlapping relation, a first rigid support member fixedly secured to and located only at the bight of the front half, a second differently shaped rigid support member fixedly secured to and located only at the bight of the rear half.

(Emphasis added.)

During prosecution of the application for the '226 patent, the inventors added the underlined phrases in the above claim. Before these additions, the examiner had rejected the claims as obvious over the Webster patent in view of the Monfardini patent. To escape a section 103 rejection, the applicants for the '226 patent limited the claims to a rigid support member located only at the bight of each half of the collar. The '226 patent specification explained that the invention "combines maximum comfort [and] maximum adjustability, with minimum weight." ' 226 Patent, Col. 1, lines 31-33. In other words, the invention was more comfortable because it limited the rigid supports to only necessary locations.

William Burns designed the Burns collar to compete with Greiner's collar. Later William Burns worked for Mari-Med. Paul and Gary Burns were officers, directors, and owners of Mari-Med. In 1990, William Burns received U.S. Patent No. 4,940,043 for a cervical collar. In the Burns collar, as shown for instance in figures 2 and 6 from the '043 patent, the imbedded rigid support member (Fig. 6, No. 24) extends from the bend in the collar to just short of the ends of each half:

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At trial, Burns introduced expert testimony that extension of the support member beyond the bend "provides a significant degree of lateral flexion stability" not found in the Greiner collar.

At trial, Greiner presented testimony that some of Burns' distributors had marketed the Burns collar as a "Generic Brand of Philadelphia Collar," a "Generic Philadelphia Collar," a "Philadelphia-Type Collar," and a "Philadelphia Style Extrication Collar." Mari-Med and Burns denied any awareness that its dealers sold collars under those names. Mari-Med and Burns further denied encouraging its customers to use Greiner's mark.

DISCUSSION

I.

This court reviews patent infringement findings as questions of fact. Therefore, only clear errors warrant correction. Raytheon Co. v. Roper Corp., 724 F.2d 951, 956, 220 USPQ 592, 596 (Fed.Cir.1983), cert. denied, 469 U.S. 835, 105 S.Ct. 127, 83 L.Ed.2d 69 (1984); Hartness Int'l v. Simplimatic Eng'g Co., 819 F.2d 1100, 1110, 2 USPQ2d 1826, 1833 (Fed.Cir.1987). Claim interpretation is the first step in the two-part infringement determination. Fromson v. Advance Offset Plate, 720 F.2d 1565, 1569, 219 USPQ 1137, 1140 (Fed.Cir.1983). Without factual disputes, claim interpretation proceeds as a question of law. Key Mfg. Group v. Microdot, Inc., 925 F.2d 1444, 1448, 17 USPQ2d 1806, 1809 (Fed.Cir.1991). When a trial court, however, resolves factual disputes over the meaning of claims, this court reviews under the clearly erroneous standard. Palumbo v. Don-Joy Co., 762 F.2d 969, 974, 226 USPQ 5, 7-8 (Fed.Cir.1985). In interpreting a disputed claim, a trial court considers the specification and prosecution history. Moeller v. Ionetics, Inc., 794 F.2d 653, 656, 229 USPQ 992, 994 (Fed.Cir.1986).

After interpreting the claim, the final step of an infringement analysis is to demonstrate whether the accused device is within the scope of the claim. Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 452, 227 USPQ 293, 295 (Fed.Cir.1985). To infringe, an accused device must embody exactly each claim limitation or its equivalent. Julien v. Zeringue, 864 F.2d 1569, 1571, 9 USPQ2d 1552, 1553 (Fed.Cir.), cert. denied, 493 U.S. 917, 110 S.Ct. 276, 107 L.Ed.2d 256 (1989).

Unfair competition and trademark infringement, like patent infringement, involve questions of fact reviewed under the clearly erroneous standard. Keds Corp. v. Renee Int'l Trading, 888 F.2d 215, 222, 12 USPQ2d 1808, 1813 (1st Cir.1989); Fisher Stoves, Inc. v. All Nighter Stove Works, 626 F.2d 193, 206 USPQ 961 (1st Cir.1980).

II.

In this case, the key claim interpretation issue--also determinative of the patent infringement issue--is the meaning of "bight." As defined by Shorter Oxford English Dictionary 178 (3d ed. 1959), "bight" means "a bending or bend." In general, "bight" as used in the '226 claims describes the location where each cervical collar-half bends.

This general understanding, however, still left the district court with a basic claim interpretation dispute, namely, how far does the bight extend around each collar-half. Greiner contends that the bight extends substantially around the U-shaped halves. Burns reads "bight" in the claims to mean a narrow area at the extreme front and rear of the respective halves.

The district court correctly interpreted the term in light of the specification and prosecution history of the '226 patent. In particular, the trial court consulted three distinct portions of the '226 patent specification. Column 2, lines 13-17, for instance, states:

Thus, the body 13 tapers away from the bight portion so that the vertical dimensions of the end portions 16 and 18 are only about one-half the vertical height of the bight portion when viewed in elevation or section as shown in FIG. 3.

This specification language places the bight portion of the collar at the closed end of the collar halves when viewed from the side. The specification notes that the vertical height of the collar-half body "tapers away from the bight portion." Examination of Figure 3 shows that the body height begins to "taper away" just beyond the reach of the narrow rigid support members. Thus, as the district court noted, the specification regards the bight as "approximately the width of the rigid supporting members."

Two other specification references reinforce that conclusion. Column 2, lines 18-19, states:

The upper end of the bight portion of the body 13 is shaped to provide a chin cavity 26.

Column 2, lines 28-30, also clarifies:

Member 30 [the rigid support member] ... extends for substantially the entire length of the bight portion on body 13.

Lines 18-19 suggest that the bight does not extend around the collar-half body, but occupies only that space near one end where the chin rests. Lines 28-30 equate the width of the rigid support member with the bight portion.

Similarly the prosecution history of the '226 patent suggests that the inventors limited the extent of the bight. After an initial rejection under section 103, the applicants for the '226 patent amended their claims. They specified that the patent claimed only a collar which located rigid support members "only at the bight." This evidence again supports the district court's conclusion that the "bight" does not extend beyond the...