Haworth, Inc. v. Steelcase, Inc., K85-526.

• Decision Date: 17 May 1988
• Docket Number: No. K85-526.,K85-526.
• Citation: 685 F. Supp. 1422
• Parties: HAWORTH, INC., Plaintiff and Counter-Defendant, v. STEELCASE, INC., Defendant and Counter-Plaintiff.
• Court: U.S. District Court — Western District of Michigan

685 F. Supp. 1422

HAWORTH, INC., Plaintiff and Counter-Defendant, v. STEELCASE, INC., Defendant and Counter-Plaintiff.

No. K85-526.

United States District Court, W.D. Michigan, S.D.

May 17, 1988.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Cushman, Darby & Cushman, Washington, D.C. by George M. Sirilla, William K. West, Patrick Bengtsson, Thomas Horgan, Miller, Canfield, Paddock & Stone, Kalamazoo, Mich. by Charles E. Ritter, Thomas J. Heiden, Dale H. Thiel, Kalamazoo, Mich., for plaintiff and counter-defendant.

Connolly, Bove, Lodge & Hutz, Wilmington, Del. by Rudolf E. Hutz, John D. Fairchild, David S. Fry, Jon Botsford, Grand Rapids, Mich., Price, Heneveld, Huizenga & Cooper, Grand Rapids, Mich. by Lloyd A. Heneveld, for defendant and counter-plaintiff.

OPINION

ENSLEN, District Judge.

This is an action for patent infringement with a counterclaim for patent unenforceability and invalidity. Plaintiff, Haworth, Inc. ("Haworth"), formerly known as Haworth Mfg., Inc., is a Michigan corporation with its principal place of business in Holland, Michigan. Until about 1975, Haworth was known as Modern Partitions, Inc. and Modern Products, Inc. After 1975, the corporation was known as Haworth Mfg., Inc. In 1981, Haworth Mfg., Inc. was merged into the present Haworth, Inc. For convenience, plaintiff and its predecessors will be referred to collectively as "Haworth." Defendant, Steelcase Inc. ("Steelcase"), is a corporation with its principal place of business in Grand Rapids, Michigan. Both parties manufacture office furniture and the instant litigation involves two Haworth patents relating to electrically pre-wired portable wall panels for use in large offices.

Haworth filed its complaint November 8, 1985, charging Steelcase with infringement of two Haworth Patents, United States Reissue Patent No. Re. 31,733 (the '733 patent) and United States Patent No. 4,370,008 (the '008 patent). Both of those patents are entitled "Wall Panel with Pre-wired Power System." The inventors named in both patents are Richard G. Haworth, Charles J. Saylor and Harold R. Wilson. Haworth argues that claims 8 and 26 of the '733 patent and claims 5 and 29 of the '008 patent are infringed by Steelcase's Series 9000 and Valencia panels. Claims 5 and 29 of the '008 patent are also asserted against Steelcase Moveable Wall Panels.

At all relevant times, Haworth has been and is the owner of the '733 patent in suit which was granted November 13, 1984, on application Serial No. 43,908, filed May 30, 1979, as an application for reissue of United States Patent No. 4,060,294 (the '294 patent). The '294 patent was granted November 29, 1977, on application Serial No. 615, 506, filed September 22, 1975. At all relevant times, Haworth has been and is the owner of the '008 patent in suit which was granted January 25, 1983, on application Serial No. 142,911 filed April 23, 1980, as a continuation of application Serial No. 918,278, filed June 22, 1978 and now abandoned. The latter abandoned application was a continuation of application Serial No. 737,420, filed November 1, 1976, and now abandoned. That latter application, in turn, was a continuation-in-part ("C-I-P") of the aforesaid application Serial No. 615,506, filed September 22, 1975, that became the '294 patent. A terminal disclaimer was filed in connection with the '008 patent so that it will expire on the same day as the '733 patent in suit, namely, November 29, 1994.

Steelcase's answer of January 17, 1986, denied validity, infringement and enforceability of the two patents in suit. Additionally, Steelcase counterclaimed for judgment holding the patents in suit invalid, not infringed and unenforceable. Haworth's reply of February 5, 1986, denied all substantive allegations in Steelcase's counterclaim.

Background Facts

The subject matter disclosed in each of the patents in suit is a portable panel used in office building environments to form wall or partition structures defining "work stations." The Haworth panels are designed to be flexibly arranged so that a given assembled configuration of panels can be altered, without electrically disconnecting adjacent panels from each other. Each of the panels includes a pre-wired power system that allows any panel to be electrically connected to any adjacent panel by means of electrical components arranged within the confines of the panel and at the panel base. The electrical components in the pre-wired power system are the technological focus of this litigation. The design of the components illustrated in the patents was intended by the inventors so that each powered panel would be non-handed, and so that they neither required nor permitted the use of extension cords for electrically interconnecting one panel to other panels. This design was intended to attain Code¹ approval in major cities throughout the country.

In June, 1976, Haworth introduced to the market its wall panels having a pre-wired power system. Those panels were commercially designated "ERA 1."² The ERA 1 system was commercially successful. The first prototype of the ERA 1 power system was made in early 1976.³ It was a single-circuit, three-wire system.

Steelcase was then, and is now, the world's largest manufacturer of office furniture.⁴ Since then, Haworth has become a major competitor of Steelcase's. Haworth is now the third largest manufacturer of systems office furniture, ranking behind Steelcase and Herman Miller. Haworth now markets wall panels with pre-wired power systems under three different trademarks or commercial designations: ERA 1, TRICIRCUIT, and THE POWER BASE.⁵

This action arose as a result of the manufacture, use and sale by Steelcase, since 1978, of pre-wired power systems for wall panels identified by the commercial designations: "Series 9000", "Movable Walls", and "Valencia." The accused Series 9000 panels were first introduced to the market in June 1978. The accused "Movable Walls" panels with their current power system were introduced to the market around 1982. The accused "Valencia" panels with a power system were first introduced to the market around 1983.⁶

The Haworth Inventions

By at least 1974, Haworth perceived a need for a pre-wired power system for panels in the open office plan that would meet the requirements of the National Electric Code and local Code authorities in important cities throughout the country. Haworth decided to develop such a system. In 1974 and 1975, Harold VandenHoek was Director of Engineering at Haworth. VandenHoek Tr. at 1181-82. Charles J. Saylor was hired by Haworth in the latter part of 1974. Saylor Tr. at 392. Mr. Saylor's assignment was to work in the design and development of a satisfactory pre-wired power system for panels. Id.

Some of the important early Haworth conceptual decisions were that the pre-wired power system had to be nonhanded,⁷ that power could flow in either direction through the panel, and that each panel could be a "feeder panel" capable of receiving building power input at either end. JX 1055; SF 33(a)-(g). The Haworth panel system was designed to require a licensed electrician only for initially connecting the pre-wired electrification in the panels to the building power. It was also designed so that, when initially assembling and later rearranging the panels into different work station configurations,⁸ as needed, it was not necessary to initially hard-wire the panels after they were assembled together, or to disconnect and remove the wires in the panels prior to disassembly of these panels and then reinstall the conduit and wiring after the panels had been rearranged. SF 33(a).

As conceived by the Haworth inventors, their pre-wired power system included two key non-handed components, so-called "power blocks" and "flexible electrical connectors." The power blocks were at the heart of their system because of the many features they were designed to provide (the term "power block" was coined by the Haworth inventors). Saylor Tr. at 409. There were two power blocks in each powered panel with the flexible electrical connector being designed to be removably, electrically connected between the power blocks of adjacent panels.

The power blocks disclosed in the patents in suit: (i) had an opening at their inner end for receiving the electric wires or cables that extended between power blocks in the panel base (through a channel referred to as a "raceway") so that the two power blocks in each panel were in electrical communication with each other; (ii) had a first connection means for releasable electrical connection to the flexible electrical connector to electrically connect the power block of one panel to the power block of an adjacent panel; (iii) had a second connection means that was identical to the first electrical connection means, and arranged on the other side of the power block, for connection to a second flexible electrical connector, as would be required for connecting the power block of that panel to the power block of a third panel, for example, in a T or Y configuration of panels; (iv) had an external third electrical connection means in the form of a conventional receptacle for energizing electrical equipment to be utilized at the work station; (v) had a housing enclosing the necessary, internal wiring and electrical members for electrically connecting the wires running between the ends of the panel with the various connection means associated with the power block; and (vi) had means for bringing building power into the panel and for being hard wired at the other end, by a licensed electrician, to a floor monument or junction box in the building. SF 33(c).

The power blocks and flexible connectors made the system non-handed so that each panel could be a feeder panel, yet be conveniently plugged into by the flexible electrical connectors, to electrically connect one panel to another, and with the panels being arranged either in line, or in an "L", "T", or "X" configuration....