KangaROOS USA, Inc. v. Caldor, Inc.
| Citation | 585 F. Supp. 1516,222 USPQ 703 |
| Decision Date | 25 May 1984 |
| Docket Number | 83 Civ. 6984 (WCC). |
| Parties | KANGAROOS U.S.A., INC., Plaintiff, v. CALDOR, INC., Defendant. |
| Court | United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York |
Parker, Auspitz, Neesemann & Delehanty, P.C., New York City, for plaintiff; Joseph C. Markowitz, Carroll E. Neesemann, New York City, Popkin, Stern, Heifetz, Lurie, Sheehan, Reby & Chervitz, St. Louis, Mo., of counsel.
Kenyon & Kenyon, New York City, for defendant; Philip J. McCabe, James E. Rosini, New York City, Jones, Day, Reavis & Pogue, Barry L. Springel, Robert C. Kahrl, Cleveland, Ohio, of counsel.
In this action for alleged infringement of U.S. patents No. 4,384,414 (the "the '414 patent") and No. D261,695 ("the '695 design patent") covering athletic shoes with side pockets for valuables, defendant Caldor, Inc. has moved for partial summary judgment dismissing the claim on the '414 patent on the ground of alleged fraud in the prosecution of the application therefor, and plaintiff Kangaroos U.S.A. has cross moved for partial summary judgment overruling this fraud defense.
For the reasons stated herein, defendant's motion is granted and plaintiff's cross motion is denied.
The relevant facts
The following facts are undisputed, being based entirely upon the documentary records of proceedings in the United States Patent and Trademark Office ("PTO"):
On August 30, 1978, Robert J. Gamm ("Gamm") filed in the PTO U.S. design patent application Serial No. 938,098 ("the design application") covering an ornamental design for an "Athletic Shoe Pocket." The design application, as well as all of the other applications discussed herein, were prepared and prosecuted by Paul M. Denk of St. Louis, Missouri ("Denk"), the attorney for Envoys U.S.A., Inc. ("Envoys"), the assignee of all the applications.
In the first Official Action, mailed April 21, 1980, the PTO examiner rejected the single claim of the design application because the drawing was indefinite, incomplete and inconsistent, so that the disclosure failed to satisfy the requirements of 35 U.S.C. § 112. No response to this Official Action was filed within the three months allowed by the examiner and on July 21, 1980 the application became abandoned.
On December 26, 1979, Gamm filed in the PTO an application Serial No. 107,092 for a utility patent also entitled "Athletic Shoe Pocket" ("the parent utility application"). The specification of this application contained, in a section captioned "Cross Reference to Related Application," the following recitation:
The subject matter of this application is related in part to the subject matter of the application of Robert J. Gamm, Serial No. 939,098 filed on August 30, 1978, and owned by a common assignee; this application comprised a continuation-in-part of said earlier application.
The parent utility application contained claims covering both flapped and unflapped flat pockets stitched on the outside quarter of an athletic shoe. In the first Official Action, mailed January 12, 1981, the examiner rejected Claims 1, 2 and 13, which were all of the claims covering pockets without flaps, as obvious over the prior Adams et al. U.S. patent No. 2,801,477 ("Adams"), which discloses a transparent pocket stitched on the outside quarter of a saddle-type oxford shoe for receiving a decorative plaque, in view of the prior Bliese U.S. patent No. 3,018,570 ("Bliese"), which discloses a shoe with a flapped purse secured to the vamp panel on top of the shoe.
As for the remaining claims covering pockets with flaps, the examiner allowed Claims 7 through 12, and indicated that Claims 3-6 and 14-17, which were dependent on rejected claims, would be allowable if amended to place them in independent form.
In Amendment A filed October 8, 1980, Gamm cancelled Claim 1 but argued the patentability of Claims 2 and 13 over the reference patents. In the second Official Action, mailed January 12, 1981, the examiner finally rejected Claims 2 and 13, together with Claims 18 and 19, which had been substituted for Claim 1 and which likewise covered unflapped pockets. In Amendment B, filed February 17, 1981, Gamm cancelled all the rejected claims and in the next Official Action, mailed April 24, 1981, the application was indicated to be allowable. After payment of the issue fee, U.S. patent No. 4,296,559 ("the '559 patent") was issued on October 27, 1981 on this application.
On February 3, 1981 while the parent utility application was still pending, Gamm filed in the PTO a divisional application ("the divisional application") for utility patent, containing the cancelled claims 1, 2 and 13, as well as added claims covering unflapped pockets. In Amendment A filed concurrently with the divisional application, the specification was amended to add, after the above-quoted statement that the application was a continuation-in-part ("CIP") of the design application, the following recitation:
This application also comprises a division of the parent patent application upon the Athletic Shoe Pocket as filed by the inventor on December 26, 1979, having Serial No. 107,092.
In the first Official Action mailed September 14, 1981, the examiner rejected all of the claims, most of them as unpatentable under 35 U.S.C. § 103 over various prior patents including Adams and Bliese and/or a newly cited prior Gulbransen U.S. patent No. 4,280,287 ("the Gulbransen patent"). Gulbransen was issued July 28, 1981 on an application filed May 21, 1979 and discloses an athletic shoe having stitched on the outside quarter a flat pocket for valuables. The remaining claims were rejected under 35 U.S.C. § 102 as fully anticipated by the Gulbransen patent alone.
Amendment B also amended the cross-reference section of the specification by inserting after the reference to application Serial No. 939,098, filed on August 30, 1978, the phrase "now United States patent No. 4,296,559." The reference as amended is incorrect. The identified patent was issued not on the design application Serial No. 939,098 but on the parent utility application Serial No. 107,092.
The examiner apparently accepted Gamm's claim of priority for the divisional application based upon the filing date of the 1978 design application because in subsequent Official Actions the Gulbransen patent was never again relied upon or even mentioned by the PTO.
In the "Remarks" to Amendment B, Gamm argued that the claimed invention was patentable over the prior Adams and Bliese patents because Adams does not disclose an athletic shoe but a conventional saddle oxford, and because the pocket was not intended to contain personal items but a decorative patch and it has no zipper, Velcro or other closure means, while in Bliese the pocket is secured to the vamp panel and not the quarter of the shoe. The Gulbransen patent, which had been withdrawn as a reference following Gamm's claim of entitlement to CIP status, discloses both of these features missing in Adams and Bliese.
After considerable further prosecution which involved first substituting new claims and, after the new claims had all been rejected, amending them, submitting extensive affidavits and conducting a personal interview with the examiner, the application was indicated to be allowable in an Official Letter mailed December 10, 1982. After payment of the issue fee, the '414 patent was issued on May 24, 1983 on this application. Two weeks later, on June 7, 1983, Denk filed a certificate of correction of the '414 patent, amending the cross-reference section to read:
Division of Ser. No. 107,092, Dec. 26, 1979, Pat. No. 4,296,559, and a continuation-in-part of Ser. No. 938,098, Aug. 30, 1978, abandoned.
The critical issue of law
Camm's 1979 parent utility application, Serial No. 107,092 was clearly not entitled to the benefit of the filing date of his 1978 design application Serial No. 939,098 because the invention claimed in the parent utility application was not even colorably disclosed in the design application.
All of the claims of the parent utility application, as originally filed, required both (1) stitching of the upper edge of the pocket to the quarter portion of the shoe "approximately along the eyestay" through which the laces pass and (2) "zipper means" for closing the pocket. All of the claims which at any time thereafter were presented in the application contained either one or both of these two limitations.
The design application discloses neither of these features. In the only shoe shown in the drawings of that application, the pocket is closed by a flap whose upper edge is stitched not along the eyestay but along the upper edge of the shoe directly beneath the wearer's ankle. No zipper means is shown; instead, the flap, which is shown only in closed position, is secured by what appears to be a snap of the type commonly used on coin purses.
Entitlement to the benefit of the filing date of an earlier application is governed by 35 U.S.C. § 120, which provides:
An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States ... by the same inventor shall have the same effect, as to such invention, as though filed on the date of the prior application,...
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