Gentry Gallery, Inc. v. Berkline Corp., Civil Action No. 91-13292-MAP.

• Decision Date: 30 September 1996
• Docket Number: Civil Action No. 91-13292-MAP.
• Parties: The GENTRY GALLERY, INC. v. The BERKLINE CORPORATION.
• Court: U.S. District Court — District of Massachusetts

939 F. Supp. 98

41 USPQ 2d 1345

The GENTRY GALLERY, INC. v. The BERKLINE CORPORATION.

Civil Action No. 91-13292-MAP.

United States District Court, D. Massachusetts.

September 30, 1996.

James J. Foster, Wolf, Greenfield & Sacks, Boston, MA, for Gentry Gallery, Inc.

Paul J. O'Donnell, David A. Brown, Ropes & Gray, Boston, MA, David D. Kaufman, Chicago, IL, Ronald L. Engel, Keck, Mahin & Cate, Chicago, IL, for Berkline Corporation.

MEMORANDUM RE: REMAINING ISSUES

PONSOR, District Judge.

I. INTRODUCTION AND BACKGROUND

On December 16, 1991, the plaintiff, Gentry Gallery, Inc. ("Gentry") filed suit against The Berkline Corporation ("Berkline") for infringement of U.S. Patent No. 5,064,244 ("the '244 patent"). This patent covered a one-armed sectional sofa, with a console positioned between two reclining chairs.

Berkline filed an answer and counterclaim alleging non-infringement, invalidity of the patent (due to prior availability and obviousness), and inequitable conduct. Following discovery, Berkline filed three motions for summary judgment. These motions argued as a matter of law that Berkline's product did not infringe the '244 patent, that the patent was invalid due to inequitable conduct by Gentry in obtaining the patent, and that an offer to sell a similar invention by another inventor in 1989 constituted a statutory bar to the plaintiff's patent.

On April 13, 1993 this judge, then a Magistrate Judge, issued a Report and Recommendation to the effect that Berkline's motion for summary judgment on the issue of non-infringement should be allowed. In essence the court found that a "fixed console" between the two reclining chairs was an essential feature of the '244 patent and that Berkline's product did not include any such fixed console. Having apparently disposed of the case on the issue of infringement, the court declined to address the issue of inequitable conduct and recommended that the motion based on that ground be denied. With regard to the question of the so-called "on sale bar" the court found material, disputed issues of fact and recommended that the summary judgment motion offered on that ground be denied as well.

On January 20, 1994 Judge Freedman adopted this court's Report and Recommendation in toto, allowing Berkline's motion based on non-infringement and denying the others. This, ordinarily, would have been the end of the case.

Berkline, however, argued strenuously that, under law emanating from the Federal Circuit, this court was obliged, even in the face of Berkline's entitlement to judgment (based on its success on the issue of non-infringement), to address all issues raised by its counterclaims. Gentry disagreed, but this court eventually decided that the more prudent course was to address all the issues, as Berkline demanded. On November 10, 1994, the case having been transferred to this docket following my appointment to the district court, an order issued setting a schedule for further proceedings on Berkline's remaining counterclaims.

Trial commenced on September 5 and concluded on September 11, 1995. After submission of post-trial briefs the court heard closing arguments on November 9, 1995. At that time the court ruled in favor of Gentry from the bench on two of the four remaining issues: the on-sale bar and the claim of inequitable conduct.

The court concluded, first, that no credible evidence supported Berkline's claim of a prior offer of sale. The testimony of Berkline's witness, Durling, was rejected on the ground that the court's observations of the witness led to the conviction, or at least strong suspicion, that his testimony was animated by bias against Gentry and some of its employees, and lacked credibility in other respects.

Second, the court found the testimony of Gentry's witness, Greenfield, to be consistent and convincing on the question of inequitable conduct. Based on this testimony and also on the overall weakness of Berkline's evidence concerning inequitable conduct, the court concluded that Berkline had failed to carry its burden on this portion of its counterclaim. On these two issues the court reserved the right to refine its reasoning in a written memorandum, if on reflection the court found this to be necessary.

Two issues remained following oral argument. The court took under advisement the question whether the '244 patent is invalid under 35 U.S.C. § 103 because it constitutes an obvious step forward from the prior art, and the question whether certain claims in the patent are invalid under 35 U.S.C. § 112 for lack of an adequate written description.

The discussion below will unfold in three sections: first, a few additional remarks regarding the questions of the on-sale bar and the plaintiff's alleged inequitable conduct; second, an analysis of the obviousness issue, and finally the court's decision with regard to alleged defects in the written description in light of § 112. For the reasons set forth below the court will be finding in favor of the plaintiff on these issues.

II. DISCUSSION

A. The On-Sale Bar and the Issue of Inequitable Conduct

A few words may be added to the reasons set forth by the court orally last November regarding the on-sale bar. To prevail on this point, Berkline bears the burden of offering clear and convincing evidence that a drawing made by Walter Durling both constituted prior art and was offered for sale more than a year before January 3, 1991, the date of the '244 patent. Durling testified that he offered an entity called Silver Oaks a drawing containing the essence of the '244 patent in October 1989.

Myriad problems render this testimony not credible. First, the drawing itself, Exhibit B-20, does not even convincingly depict a recliner, let alone an inside recliner. Second, no corroboration exists as to when the drawing was conveyed to Silver Oaks. No cover letter confirms this essential point, and Durling was apparently in contact with Silver Oaks before and after the crucial date. Third, the drawing makes no indication of any control mechanism to activate the recliner, a knotty design issue that Gentry spent many months solving. Coupling these problems with Durling's transparent hostility to Gentry and its principals makes decision on this point simple. Berkline has not carried its substantial burden regarding the on-sale bar.

Less need be added to the court's oral remarks regarding inequitable conduct. As the court noted, the core of Berkline's case on this point was Gentry's failure, through its counsel Greenfield, to include a photograph of a Benchcraft sofa in its Petition to Make Special, and its failure to disclose the co-pendency of the Durling patent application to the patent examiner. Berkline bears the burden of demonstrating that the prior art, or pending patent application, was material, that Greenfield knew of it and that he intentionally failed to disclose it in an effort to mislead the patent office — all by clear and convincing evidence. The evidence at trial was not even close. Assuming the Benchcraft photo was material, no persuasive evidence suggests that either Attorney Greenfield or Gentry's principal, Sproule, knew of its existence at the relevant time. Moreover, Greenfield and Sproule's candor during their interview in the patent office in June of 1991 renders incredible any suggestion of a deliberate intent to mislead. With regard to the pending Durling patent application, the evidence is weak that it was even material. Taking all this with the strong and convincing testimony of Attorney Greenfield regarding his efforts to insure that all appropriate material was submitted, and considering all Berkline's arguments on this point, the court can only reach one conclusion: Berkline failed to carry its burden regarding inequitable conduct.

B. Obviousness

Berkline's counterclaim for patent invalidity based on obviousness constitutes by far the closest and most difficult issue of this case. This stubborn question has necessitated the court's intermittent, intense consideration over an unusually protracted advisement period. On the day of oral argument the court took the bench with the inclination, based on the evidence and written submissions up to that time, to find for Gentry on this point, but was forced to reconsider due to the force of Berkline counsel's well-crafted argument.

Now, having examined the most helpful cases and re-read relevant portions of the trial transcript, the court has concluded that it must return to its original bent. Many factors support this decision, but two stand out: the strong, credible testimony of Gentry's witness Metts, and the significant burden of proof that Berkline carries on this issue.

The starting point of the analysis is clear: a patent is presumed valid. 35 U.S.C. § 282. It can only be overturned by clear and convincing proof presented by a challenger.

One ground for invalidity is obviousness. The standard for proving obviousness is set down with deceptive simplicity in the statute. The '244 patent may be found to be invalid,

... if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.

35 U.S.C. § 103.

In evaluating a claim of obviousness the court should consider (1) the scope and content of the prior art, (2) the differences between the prior art and the subject matter at issue, and (3) the level of ordinary skill in the pertinent art. Other factors to be considered include the commercial success of the invention, any long-felt but unsolved needs, and prior failures to invent. Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 716 (Fed.Cir. 1991).

To fairly weigh a claim of obviousness, the court must, to some extent, place itself in a time machine; it must look at the invention with the eyes of an ordinary artisan living at the time the invention was made. This...