Innovative Scuba Concepts v. FEDER INDUSTRIES

• Decision Date: 21 April 1993
• Docket Number: Civ. A. No. 90-S-1311.
• Parties: INNOVATIVE SCUBA CONCEPTS, INC., Plaintiff, v. FEDER INDUSTRIES, INC. d/b/a Scuda Manufacturing, Defendant.
• Court: U.S. District Court — District of Colorado

819 F. Supp. 1487

INNOVATIVE SCUBA CONCEPTS, INC., Plaintiff, v. FEDER INDUSTRIES, INC. d/b/a Scuda Manufacturing, Defendant.

Civ. A. No. 90-S-1311.

United States District Court, D. Colorado.

April 21, 1993.

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Richard Hanes, Timothy Schutz, Hanes & Schutz, P.C., Colorado Springs, CO, J. Stephen McGuire, Denver, CO, for plaintiff.

Peter Schild, Boulder, CO, Robert Schwartz, Miami, FL, for defendant.

MEMORANDUM OPINION AND ORDER

SPARR, District Judge.

THIS MATTER came before the court on a suit for patent infringement brought pursuant to 35 U.S.C. § 1 et seq. This court has subject matter jurisdiction pursuant to 28 U.S.C. § 1338(a) and personal jurisdiction over the Defendant. Venue is proper pursuant to 28 U.S.C. §§ 1391(c) and 1400(b), in that the Defendant transacts business in Colorado and is therefore deemed to reside in this judicial district. VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed.Cir.1990), cert. denied, ___ U.S. ___, 111 S.Ct. 1315, 113 L.Ed.2d 248 (1991). The Plaintiff alleges that its patent is infringed by five (5) products made by the Defendant. The Plaintiff seeks actual damages, enhanced damages for willful infringement, injunctive relief, prejudgment interest, costs, and attorneys' fees. The Defendant has asserted a counterclaim seeking: (1) declaratory judgment that each claim of the patent is invalid; (2) declaratory judgment that the Defendant has not infringed the patent; and (3) attorneys' fees and costs pursuant to 35 U.S.C. § 285. Having considered all the evidence and arguments presented at trial, the court now makes the following Findings of Fact, Conclusions of Law, and Order.

I. Factual Background

The Plaintiff, Innovative Scuba Concepts, Inc. (ISC), is a Colorado corporation doing business in Colorado Springs, Colorado. ISC has been engaged in the business of manufacturing and wholesaling underwater diving products for several years. The Defendant, Feder Industries, Inc. d/b/a Scuda Manufacturing (Feder), is a Florida corporation located in Miami, Florida. Like ISC, Feder has been engaged in the manufacture and sale of underwater diving products. Mr. Irving Feder is the sole director, officer, and stock holder of the Defendant corporation.

In the fall of 1987, Thomas R. Baker, John C. Polkow, and Glen T. Stoll developed an idea for an adjustable strap for use with underwater diving masks. At that time the conventional mask straps being used in the diving industry were constructed of rubber or silicone. These straps served the basic function of maintaining the face mask in place over a diver's face, but tended to tangle with the diver's hair, were difficult to adjust, and did not float. Baker set out to design and manufacture a strap which would alleviate these problems.

With Mrs. Baker's assistance, Baker and the others developed a prototype strap which consisted of a one-piece neoprene headband formed to fit around the back of the head and extend to each side of the head through the attachment loops on the sides of the face mask. (Exhibit 5A). The inside of the narrower end portions of the headband had a "Velcro" type fastening material to secure the strap to itself after it was passed through the loops on the side of the face mask. The inner side of the center portion of the headband contained a plush fabric for comfort in contacting the back of the diver's head. (See Exhibit 5A).

ISC sold the first prototype strap on May 20, 1988 under the name "Slap Strap." The product was initially successful. However, because the thickness of the end portions of the headband made the strap difficult to pass through the attachment loops on the sides of a face mask, this prototype was abandoned in approximately July of 1988 in favor of a modified Slap Strap (Exhibit 5B) (Figure 1). The modified Slap Strap replaced the headband fully made of neoprene with a headband fitted with ribbon type straps attached to each side of the neoprene, which ribbon type straps contained a hook type Velcro material. (See Exhibit 5B). The inner part of the headband which contacted the back of the diver's head had a loop type plush material to act in relation with the hook type Velcro material on the side ribbons as a means of adjusting the size of the headband. ISC began marketing the new Slap Strap (Exhibit 5B) in July of 1988 and introduced it at a series of industry trade shows and conventions during the fall of 1988 through early 1989. This modified strap (Exhibit 5B) was immediately successful in the marketplace. ISC ceased all sales or development of the original prototype strap (Exhibit 5A).

The evidence indicated that Defendant Feder first learned of ISC's Slap Strap (Exhibit 5B) at a trade show in Miami, Florida in the fall of 1988, when Mr. Feder either saw or obtained a Slap Strap. Shortly thereafter, Feder designed and began manufacturing similar straps referred to as the "Scuda" (Exhibit 8A) and the "Mask Mate" (Exhibit 9A). Feder first displayed its straps to the diving industry at the Dive Equipment Manufacturers Association (DEMA) convention in Las Vegas, Nevada in January of 1989. That is where ISC first saw Feder's straps. Since that time, Feder has continuously sold its various, continually evolving straps (Exhibits 8A, 9A, D-3, and E-3), including a modified Mask Mate strap introduced in 1990 under the name "Twin Band" (Exhibit 10A). In September of 1991, Feder obtained U.S. Patent No. 5,046,200 (Exhibit M) on the Twin Band (Exhibit 10A).

In February of 1989, ISC contacted Donald A. Kettlestrings, a patent attorney located in Maryland, to discuss obtaining a patent on the Slap Strap. ISC furnished Kettlestrings with a Slap Strap (Exhibit 5B), two Slap Strap advertisements (Exhibits O and R), two catalogs referring to neoprene fabrics (Exhibits P and Q), and two straps manufactured by Feder (Exhibit 8A and Exhibit T). Also in February of 1989, Kettlestrings conducted a patentability search and gave his opinion to ISC regarding the patentability of the Slap Strap. On May 1, 1989, following the patentability search, ISC filed its patent application with the United States Patent and Trademark Office (PTO) (Exhibit E). The original patent application contained seventeen claims. (See Exhibit E). On December 4, 1989, after review by the patent examiner and two amendments to the application, the PTO issued a Notice of Allowance for ISC's patent (Exhibit E, p. 50). On March 27, 1990, U.S. Patent No. 4,910,806 (806 patent) was issued, covering seven claims (Exhibit 1).

II. Claims for Determination

ISC originally alleged infringement of claims 1 and 4 of the 806 patent (Exhibit 1) under the theories of literal infringement and infringement by the doctrine of equivalents. On February 23, 1993, at the close of ISC's evidence, ISC elected to voluntarily dismiss its claim for infringement of claim 1 of the 806 patent and to proceed solely on its claim for infringement of claim 4. Feder argued that, in the course of discovery and trial preparation, ISC had restricted itself to a literal infringement theory on claim 4. Feder argued that it had relied on that restriction and was unprepared to defend claim 4 under the doctrine of equivalents. The court permitted ISC to proceed on claim 4 both literally and by the doctrine of equivalents. The court offered Feder the option to recess the trial for a few days or weeks in order to allow Feder to adequately prepare a defense against the allegations of infringement of claim 4 under the doctrine of equivalents. Feder consulted with its expert witness and counsel and elected to proceed with the trial as scheduled, apparently believing it could adequately defend ISC's claim for infringement of claim 4 under both literal infringement and the doctrine of equivalents.

A court may and normally should inquire into both validity and infringement. Even if the trial court finds a patent claim invalid, the better practice is to go on to consider infringement to avoid the necessity of a remand should the appellate court reverse the finding of invalidity. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540-41 (Fed.Cir.1983). A judgment of invalidity binds the patentee as against persons not party to the suit unless the court failed to provide a fair opportunity to litigate the claim. Accordingly, the court must determine whether the Plaintiff has proven literal infringement or infringement by the doctrine of equivalents of claim 4 of the 806 patent by the five (5) accused devices: the "Scuda" strap (Exhibit 8A), the "Mask Mate" strap (Exhibit 9A), the "Twin Band" (Exhibit 10A), a later Mask Mate strap (Exhibit D-3), and another later Mask Mate strap (Exhibit E-3). The court must also determine whether claim 4 of the 806 patent is invalid.

III. Findings of Fact and Conclusions of Law

A. Patent Infringement

35 U.S.C. § 271(a) provides that "... whoever without authority makes, uses or sells any patented invention, within the United States during the term of the patent therefor, infringes the patent." In patent cases, the law of the Federal Circuit governs the substantive law to be applied. 28 U.S.C. § 1295. To establish infringement of a patent, every limitation set forth in a claim must be found in an accused product or process exactly or by substantial equivalent. Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 935 (Fed.Cir.1987) (en banc), cert. denied 485 U.S. 961, 108 S.Ct. 1226, 99 L.Ed.2d 426 (1988).

1. Literal Infringement

The law of literal infringement requires that the asserted claims be compared with the product accused of infringement. Amstar Corp. v. Envirotech Corp., 730 F.2d 1476, 1481 (Fed.Cir.), cert. denied, 469 U.S. 924, 105 S.Ct. 306, 83 L.Ed.2d 240 (1984). Literal infringement requires that the accused device embody...