Darda Inc. USA v. Majorette Toys (US) Inc.
| Decision Date | 13 January 1986 |
| Docket Number | No. 83-353-Civ.,83-353-Civ. |
| Citation | 627 F. Supp. 1121 |
| Parties | DARDA INC. USA d/b/a Darda Toy Company and Helmut Darda, Plaintiffs, v. MAJORETTE TOYS (U.S.) INC. and Majorette S.A. France, Defendants. |
| Court | U.S. District Court — Southern District of Florida |
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Mark P. Stone, Eric Y. Munson, Parmelee, Bollinger & Bramblet, Stamford, Conn., Jack E. Dominik, Miami Lakes, Fla., for plaintiffs.
Gary Carman, Holland & Knight, Miami, Fla., Stephen Rubin, Holland & Knight, Washington, D.C., for defendants.
THIS CAUSE came on for a non-jury trial before the Court commencing Monday, November 18, 1985, and consumed the better part of seven (7) days. The Court received voluminous documentary evidence and heard the lengthy testimony of nine (9) expert and lay witnesses in addition to the arguments advanced by counsel for all parties on various pertinent matters. On December 17, 1985, after all parties were afforded the opportunity to submit supplemental trial memoranda and revised proposed findings of fact and conclusions of law, counsel presented closing arguments. The Court, having carefully considered all of the evidence, the pertinent portions of the record, the argument of counsel, the applicable law, and being otherwise fully advised in the premises, enters herein its Memorandum Opinion containing findings of fact and conclusions of law.
This is an action for patent infringement of United States Letters Patent Nos. 3,812,933 and 3,981,098 ("patents in suit") issued respectively on May 28, 1974, and September 21, 1976, to Helmut Darda ("Darda"). Both plaintiffs, Helmut Darda and Darda Inc. U.S.A. ("Darda (U.S.)"), the U.S. oral, exclusive licensee of Helmut Darda, sue both defendants Majorette Toys (U.S.) Inc. ("Majorette (U.S.)") and Majorette S.A. France ("Majorette (France)"). Majorette (France) is the parent corporation and holder of United States Patent No. 4,332,104 and Majorette (U.S.) is its subsidiary operating in the United States. Plaintiffs seek damages for infringement, treble damages, an injunction, and an award of costs and reasonable attorneys' fees.
Majorette (U.S.) has counterclaimed against plaintiff Darda (U.S.) for violations of the antitrust laws of the United States alleging that the patents in suit were fraudulently procured and/or are being enforced with knowledge of alleged invalidity. Majorette (U.S.) seeks damages, treble damages, costs and reasonable attorneys' fees. Both Majorette (U.S.) and Majorette (France) have counterclaimed against both Darda (U.S.) and Darda for a declaratory judgment of invalidity of the patents in suit. Majorette (U.S.) and Majorette (France) seek costs and reasonable attorneys' fees for defending the patent infringement action.
This Court has federal jurisdiction for the patent infringement action pursuant to 28 U.S.C. § 1338(a), in that this action arises under an Act of Congress relating to patents; namely, 35 U.S.C. § 271 et seq. Furthermore, as to defendants Majorette (France) and Majorette (U.S.), this Court finds that it has jurisdiction as to both.
This Court has federal jurisdiction for the antitrust counterclaim of Majorette Toys (U.S.) pursuant to 28 U.S.C. § 1337(a), in that the counterclaim arises under section 2 of the Sherman Act, 15 U.S.C. § 2, for damages and injunctive relief provided by sections 4 and 16 of the Clayton Act, 15 U.S.C. §§ 15 and 26.
This Court has federal jurisdiction for the counterclaims seeking declarations of patent invalidity pursuant to 28 U.S.C. § 1338(a) and 28 U.S.C. §§ 2201-2202, in that defendants seek a declaratory judgment under an Act of Congress relating to patents; namely, 35 U.S.C. § 1 et seq.
The following stipulated facts are those facts which the parties agree required no proof at trial of the instant cause. They were initially set forth in the Bilateral Pretrial Stipulation at Paragraph 5 on pages 4 through 9.
a) The Court has jurisdiction over Majorette (U.S.) and the subject matter of this action and the counterclaims.
b) Majorette (U.S.) is controlled by Majorette (France).
c) Until its sale to a third party in 1984, Darda (U.S.) was controlled by Helmut Darda.
d) Majorette (France) manufactured and provided to Majorette (U.S.) motorized toy vehicles containing bi-directionally wound spring motors, which Majorette (U.S.) has sold and distributed in the United States during the term of the patents in suit.
e) Majorette (France) knew that the motorized toy vehicles imported by Majorette (U.S.) were intended to be, and were, sold and distributed in the United States.
f) The motorized toy vehicles referred to in paragraphs (d) and (e) above infringe claims 1-4 and 6 of United States Patent No. 3,981,098, and claims 1-5 of United States Patent No. 3,812,933, if said claims of said patents are held to be valid and enforceable.
g) The motorized toy vehicles referred to in paragraphs (d) and (e) above do not infringe claims 13-28, 30-31, and 36-38 of United States Patent No. 3,812,933, and claims 11, 15-17, 19-20, and 22-45 of United States Patent No. 3,981,098.
h) Majorette (France) is the owner of United States Patent No. 4,332,104 (Ribas), issued on June 1, 1982.
i) The motorized toy vehicles that have been sold by Majorette (U.S.) in the United States are constructed in accordance with the embodiments disclosed and illustrated by Figures 5-9 of United States Patent No. 4,332,104, only the drive and winding transmissions are in reverse position in the actual motor.
j) Plaintiff Helmut Darda is the owner of the patents in suit.
k) Plaintiff Helmut Darda is chargeable with knowledge of the existence of one of the prior-art patents cited by defendants; namely, United States Patent No. 2,305,666 (Bolsey) at least as early as October 14, 1974.
l) Defendant Majorette (France) is chargeable with knowledge of the existence of both of the patents in suit, in that both patents in suit were cited in an Official Action of the U.S. Patent and Trademark Office dated September 30, 1980, with respect to the application which became United States Patent No. 4,332,104.
m) Defendant Majorette (U.S.) was made aware of the existence of both patents in suit at least as early as approximately January 12, 1983, the date upon which written notice was sent to Majorette (U.S.) by Eric Y. Munson, Esquire, attorney for plaintiffs.
n) Plaintiffs were made aware of defendants' position that claim 7 of the patents in suit inherently contradicts claims 1 of the patents in suit, and is therefore inoperative and unenforceable, by letter from Stephen Rubin, Esquire, attorney for defendants, to Eric Y. Munson, Esquire, attorney for plaintiffs, dated October 21, 1983.
o) Since the issuance of United States Patent No. 4,332,104, no action has been taken to reissue, reexamine, disclaim, correct, or cite any publications or patents to the United States Patent and Trademark Office with respect to one or more of the claims of the said patent.
p) Since the issuance of the patents in suit, no action has been taken to reissue, reexamine, disclaim, correct, or cite any publications or patents to the United States Patent and Trademark Office with respect to one or more of the claims of said patents.
q) No prior-art statement, other than the art of record, was ever filed by or on behalf of the applicant during the period when the applications which became the patents in suit were pending before the United States Patent and Trademark Office.
r) The only prior-art references cited by the patent examiner during the pendency of the application which became United States Patent No. 3,812,933 are the following:
s) The only prior-art references cited by the patent examiner during the pendency of the application which became United States Patent No. 3,981,098 are the following:
t) At no time have the plaintiffs or their attorneys sought to inform the United States Patent and Trademark Office of the existence of United States Patent No. 2,305,666 (Bolsey) with respect to the patents in suit.
u) At no time have the defendants or their attorneys sought to inform the United States Patent and Trademark Office of the existence of United States Patent No. 2,305,666 (Bolsey) with respect to United States Patent No. 4,332,104.
v) There is no antecedent basis for the recitations "said gear wheels" (line 25), "other of said gear wheels" (line 28), "said output transmission" (lines 30-31), "said gear wheels" (line 32), or "said spring" (lines 32-33) in claim 6 of United States Patent No. 3,812,933.
w) Subsequent to May 28, 1974, no disclaimer or amendment of claim 6 of United States Patent No. 3,812,933 has been filed by or on behalf of the patentee in the United States Patent and Trademark Office.
x) There is no antecedent basis for the recitations "said gear wheels" (line 40), "other of said gear wheels" (line 43), "said output transmission" (lines 45-46), "said gear wheels" (line 47), or "said spring" (lines 47-48) in claim 21 of United States Patent No. 3,981,098.
y) Subsequent to September 21, 1976, no disclaimer or amendment of claim 21 of United States Patent No. 3,981,098 has been filed by or on behalf of the patentee in the United States Patent and Trademark Office.
z) Both the Majorette (U.S.) and Darda (U.S.) bi-directionally wound motorized toy...
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