Dolly, Inc. v. Spalding & Evenflo Companies, Inc., 93-1233

• Decision Date: 08 February 1994
• Docket Number: No. 93-1233,93-1233
• Parties: , 29 U.S.P.Q.2d 1767 DOLLY, INC., Plaintiff-Appellee, v. SPALDING & EVENFLO COMPANIES, INC., Defendant-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 394

16 F.3d 394

62 USLW 2547, 29 U.S.P.Q.2d 1767

DOLLY, INC., Plaintiff-Appellee, v. SPALDING & EVENFLO COMPANIES, INC., Defendant-Appellant.

No. 93-1233.

United States Court of Appeals, Federal Circuit.

Decided Feb. 8, 1994.

David A. Shough, Faruki, Gilliam & Ireland, Dayton, OH, argued for plaintiff-appellee. With him on the brief were Charles J. Faruki and Donald E. Burton. Also on the brief was Richard A. Killworth, Killworth, Gottman, Hagan & Schaeff, Dayton, OH.

Christopher B. Fagan, Fay, Sharpe, Beall, Fagan, Minnich & McKee, Cleveland, OH, argued for defendant-appellant. With him on the brief was Richard M. Klein.

Before ARCHER, PLAGER, and RADER, Circuit Judges.

RADER, Circuit Judge.

Dolly, Inc. (Dolly) sued Spalding & Evenflo Companies, Inc. (Evenflo) in the United States District Court for the Southern District of Ohio (Western Division) for unfair competition and infringement of U.S. Patent No. 4,854,638 (the '638 patent). On an earlier appeal in this same case, Dolly, Inc. v. Spalding & Evenflo Cos., 954 F.2d 734, 23 USPQ2d 1555 (Fed.Cir.1992), this court vacated the district court's preliminary injunction because the trial court had improperly construed the patent claims. On remand, the district court determined that Evenflo infringed the '638 patent under the doctrine of equivalents. Due to improper application of the doctrine of equivalents, this court reverses.

BACKGROUND

The '638 patent discloses a portable, adjustable child's chair that also serves as a booster seat or a highchair. The '638 patent carries the title "Portable Adjustable Child's Chair." The claimed chair has a series of channels into which the seat panels slide, thereby adjusting the seat height to accommodate a growing child. The chair also has a detachable tray, means for retaining the child in the seat, and means for securing the chair to a standard kitchen chair for use as a highchair.

Claim 19, the only claim at issue, is dependent upon claims 16 and 17. Claims 16, 17, and 19 state:

16. A portable adjustable child's chair, comprising:

(a) a contoured seat panel;

(b) a contoured back panel;

(c) two side panels having on their inner surfaces facing each other a plurality of generally horizontal grooves or channels to slidably receive said seat panel whereby said seat panel may be raised or lowered; and

(d) a stable rigid frame which is formed in part from said side panels and which along with said seat panel and said back panel provides a body supporting feature, said stable rigid frame being self-supporting and free-standing, whereby said child's chair is readily portable and easily stored.

17. The portable adjustable child's chair of claim 16 further comprising:

a serving tray; and

means for removably attaching said tray to said child's chair.

....

19. The portable adjustable child's chair of claim 17 further comprising means for retaining the occupant in said child's chair and means for securely attaching said child's chair to an existing chair or other support.

Evenflo produces the "Snack & Play" chair, a portable adjustable child's chair which also converts into a booster seat or highchair. The Snack & Play chair consists of four interlocking panels, a tray, and two In granting Dolly's motion for a preliminary injunction on January 8, 1991, the district court held that the Snack & Play infringes claim 19 both literally and under the doctrine of equivalents. The trial court read paragraph (d) of claim 16 to mean that the back and seat panels can be part of the stable rigid frame. See Dolly, Inc. v. Spalding & Evenflo Cos., 18 USPQ2d 1737, 1748, 1991 WL 117061 (S.D.Ohio 1991). On appeal, this court vacated the injunction and remanded. This court stated: "[T]he claim language requires that the stable rigid frame must be formed independent of the seat and back panels." Dolly, 954 F.2d at 734, 23 USPQ2d at 1556.

sets of straps. The Snack & Play chair completely disassembles for easy portability and storage. Indeed Evenflo sells its chair disassembled. The purchaser assembles the components to form a chair. In disassembled form, the Snack & Play chair consists of four panels--a back panel, a seat panel, and two side panels. During assembly, the back panel tabs slide into receiving grooves on the side panels, the seat slides into one of three slots on the side panels and engages a receiving slot on the back panel to make a stable chair. The seat height adjusts because the assembler can choose from among three slots on the side panels when attaching the seat panel. The Snack & Play has no additional frame or components supporting the side, back, and seat panels.

On remand, Dolly withdrew its claim for literal infringement. The Snack & Play lacks a stable rigid frame separate from the seat and back panels as required by claim 16. Dolly continued to assert infringement under the doctrine of equivalents. Both Evenflo and Dolly filed motions for summary judgment. Evenflo sought a judgment of non-infringement; Dolly sought reinstatement of the injunction.

The district court granted Dolly's motion for summary judgment, permanently enjoining Evenflo from infringing the '638 patent. The district court held that the Snack & Play infringes Claim 19 of the '638 patent under the doctrine of equivalents. The trial court reasoned that the Snack & Play's assembly of a frame from the back, seat, and side panels is the equivalent of the stable rigid frame limitation in claim 16. Evenflo appeals the district court's determination that the Snack & Play infringes under the doctrine of equivalents.

DISCUSSION

The determination of infringement is a two-step process: First, the court interprets the claim to determine its scope and meaning; second, the court determines whether the accused device is within the scope of the properly construed claim. Becton Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 796, 17 USPQ2d 1097, 1099 (Fed.Cir.1990). To show infringement, the plaintiff must establish that the accused device includes every limitation of the claim or an equivalent of each limitation. Id.

An accused device may infringe a claim under the doctrine of equivalents if it performs substantially the same overall function or work, in substantially the same way, to produce substantially the same overall result as the claimed invention. Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608, 70 S.Ct. 854, 856, 94 L.Ed. 1097 (1950); Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 934, 4 USPQ2d 1737, 1739 (Fed.Cir.1987) (in banc), cert. denied 485 U.S. 961, 485 U.S. 1009 (1988). "To be a[n] ... 'equivalent,' the element substituted in the accused device for the element set forth in the claim must not be such as would substantially change the way in which the function of the claimed invention is performed." Perkin-Elmer Corp. v. Westinghouse Elec. Corp., 822 F.2d 1528, 1533, 3 USPQ2d 1321, 1325 (Fed.Cir.1987).

On remand, the district court determined that the Snack & Play contained an equivalent to the missing separate stable rigid frame:

The stable rigid frame which exists when the Snack and Play side panels, back panel, and seat panel are assembled performs substantially the same function as the stable rigid frame in the claimed chair because the side panels are interconnected through the back panel and through the seat panel. The seat panel and back panel of the Snack and Play chair, like the tubular supports and tie rods in the '638 Patent's preferred embodiment connect the side panels so that they are upright, parallel to each other, and rigidly and uniformly spaced apart from each other, forming a stable rigid frame which is self-supporting and free standing and which also provides a body supporting feature.

Dolly, Inc. v. Spalding & Evenflo Cos., No. C-3-90-226, slip op. at 5 (S.D.Ohio Feb. 9, 1993). The court thus held that the Snack & Play's stable rigid frame, assembled from the various panels, is the substantial equivalent of the separate stable rigid frame in claim 16. In addition, the district court found that the Snack & Play's stable rigid frame provides the body supporting feature without the addition of other components.

The district court erred by disregarding a specific limitation in claim 16. Although the Snack & Play chair, assembled from seat, back, and side panels, is itself a stable rigid frame, the '638 claim requires a stable rigid frame apart from the back and seat panels. The Snack & Play chair has no separate stable rigid frame.

The doctrine of equivalents cannot extend or enlarge the scope of the claims. Wilson Sporting Goods Co. v. David Geoffrey & Assocs., 904 F.2d 677, 684, 14 USPQ2d 1942, 1948 (Fed.Cir.), cert. denied, 498 U.S. 992, 111 S.Ct. 537, 112 L.Ed.2d 547 (1990). "The claims--i.e. the scope of patent protection as defined by the claims--remain the same and application of the doctrine expands the right to exclude to 'equivalents' of what is claimed." Id. The doctrine of equivalents is not a license to ignore claim limitations. See Pennwalt Corp., 833 F.2d at 935.

Claim 16's language requiring a stable rigid frame independent of seat and back panels is not a requirement solely for literal infringement. This limitation applies under the doctrine of equivalents as well. "Under the doctrine of equivalents, the accused device and the claimed invention cannot work in 'substantially the same way' if a limitation (including its equivalent) is missing." Valmont Indus. v. Reinke Mfg., 983 F.2d 1039, 1043 n. 2, 25 USPQ2d 1451, 1455 n. 2 (Fed.Cir.1993). The Snack & Play chair lacks a stable rigid frame separate from the panels. The Snack & Play also lacks a structure to which additional components are added to form the body supporting feature. Rather, the Snack & Play chair achieves its function without a stable rigid frame independent of the various panels. In the absence of the stable rigid frame limitation or its equivalent, the Snack & Play chair does not infringe.

The...