Lewmar Marine, Inc. v. Barient, Inc.

• Decision Date: 25 August 1987
• Docket Number: 86-1619,Nos. 86-1412,s. 86-1412
• Citation: 3 USPQ2d 1766,827 F.2d 744
• Parties: LEWMAR MARINE, INC., Appellant, v. BARIENT, INC. and Barlow Marine, Ltd., Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

Page 744

827 F.2d 744

3 U.S.P.Q.2d 1766

LEWMAR MARINE, INC., Appellant, v. BARIENT, INC. and Barlow Marine, Ltd., Appellees.

Nos. 86-1412, 86-1619.

United States Court of Appeals Federal Circuit.

Aug. 25, 1987.

Laurence S. Rogers, Fish & Neave, New York City, argued, for appellant. With him on the brief was Lars I. Kulleseid.

Karl A. Limbach, Limbach, Limbach & Sutton, San Francisco, Cal., argued, for appellees.

Before NIES, BISSELL and ARCHER, Circuit Judges.

NIES, Circuit Judge.

Lewmar Marine, Inc. appeals the July 14, 1986, judgment of the United States District Court for the District of Rhode Island, No. 83-0554 P (May 19, 1986), holding claims 1 and 2 of its United States Patent No. 3,927,580 and claim 11 of its United States Patent No. Re. 30,881 invalid as anticipated under 35 U.S.C. Sec. 102 (1982). We reverse the judgment of invalidity. The judgment that Barient, Inc. and Barlow Marine, Ltd. infringed the claims, if valid, was not appealed and, thus, stands. Other defenses apparently remain to be tried.

I

Lewmar, a U.S. subsidiary of a British corporation, sells and services sailboat winches made by its British parent. It also owns two patents directed to sailboat winches. These winches are generally used on large sailboats to ease the burden of manipulating sails, and are of particular importance on racing yachts such as those that compete for the America's Cup. On such a boat, a winch is operated by a sailor, called a "grinder," who turns the winch handle, or "crank," causing the winch drum to rotate and pull the rope, termed a "line" or "sheet," attached to the sail. The winch gives the grinder a mechanical advantage in pulling on the line, the load on which can fluctuate up to 12,000 pounds. At the start of hauling in, however, the sail is loose and little force is needed to pull in the line. At this point the line should be pulled in quickly, using the highest speed of the winch or "first," that is, the winch speed is selected to give the lowest mechanical advantage and, consequently, the highest speed. As the sail fills with wind and the line tightens, the force exerted to overcome the mounting wind pressure must increase. This increase in force is facilitated by shifting the winch into successively lower gears, that is, gears affording a greater mechanical advantage.

Another sailor, the "tailer," pulls on the end of the line coming off the winch in order to maintain tension on the line, thereby keeping it tightly wound around the winch drum. If the tailer pulls the line at a faster rate than the winch drum is being cranked, as is not uncommon when the line is slack, the winch drum will "overrun" by spinning faster than the grinder is cranking. In early winch designs, drum overrun caused the winch to inadvertently shift to a lower gear, or "override."

In the claimed inventions and in other winches, the gears are changed by reversing the direction in which the crank is turned. The '580 claims are directed to a winch with at least three speeds which can be selected by successive crank reversals, and which will not inadvertently shift upon drum overrun or otherwise. ¹ The '881 claim is directed to a winch with at least three speeds which can shift in the same fashion as the '580 winch, but can also be operated as a two-speed winch. ² The '881 patent discloses a three-speed winch with first and second speed hold, that is, the winch can be operated to shift between first and second and back by successive crank reversals. The need for the different types of operation, three-speed and two-speed, stems from the different types of sail handling necessitated by different types of sailing maneuvers. When sailing into the wind, the three-speed operation is used to take advantage of the full range of gears. When sailing with the wind, speed in sail handling is the focus, and the full range of gears is not needed.

Lewmar sued Barient, Inc., a California Corporation, and Barlow Marine, Ltd., Barient's Australian parent (collectively Barient), for infringing claims 1 and 2 of the '580 patent and claim 11 of the '881 patent. Barient defended inter alia on the ground that a four-speed winch it had made many years before, the "American Eagle" winch, anticipated each of the claims in issue. The American Eagle winch was designed in 1964 and is so named because it was used on a 12-meter yacht, the American Eagle, which participated in the trials for the 1964 defense of the America's Cup. The district court held that the American Eagle winch anticipated the inventions of all three claims at issue and thus held the claims invalid under 35 U.S.C. Sec. 102(a).

II

Anticipation under 35 U.S.C. Sec. 102 requires the presence in a single prior art disclosure of each and every element of a claimed invention. Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ 2d 1051, 1053 (Fed.Cir.1987); Carella v. Starlight Archery, 804 F.2d 135, 138, 231 USPQ 644, 646 (Fed.Cir.), modified on reh'd, 1 USPQ 2d 1209 (Fed.Cir.1986); Jamesbury Corp. v. Litton Indus. Prods., Inc., 756 F.2d 1556, 1560, 225 USPQ 253, 256 (Fed.Cir.1985); Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed.Cir.1984); Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548, 220 USPQ 193, 198 (Fed.Cir.1983). The district court acknowledged that basic principle, slip op. at 21-22, but went on to make the following observations:

As the defendants put it, "[t]hat which infringes if later in time will anticipate if earlier than the patent.... The inquiry as to anticipation is symmetrical with the inquiry as to infringement of a patent." The classic test of anticipation provides: "That which will infringe, if later, will anticipate, if earlier. Thus a claim fails to meet the novelty requirement if it covers or reads on a product or process found in a single source in the prior art."

Id. at 22. While "the classic test of anticipation" was indeed as stated, ³ under the current statute "anticipation" does not carry the same meaning as before, and the "classic test" must be modified to: That which would literally infringe if later in time anticipates if earlier than the date of invention.

As noted in Argus Chem. Corp. v. Fibre Glass-Evercoat Co., 759 F.2d 10, 14 n. 5, 225 USPQ 1100, 1102 n. 5 (Fed.Cir.), cert. denied, 474 U.S. 903, 106 S.Ct. 231, 88 L.Ed.2d 230 (1985), prior to the Patent Act of 1952, the term "anticipation" was used in a broader sense than it is today. The pre-1952 cases often used the term "anticipation" to mean that the subject matter of the claims either was found exactly in the prior art (i.e., lacked novelty) or, though different, was not "inventive" over the prior art. See In re Clark, 522 F.2d 623, 635 n. 9, 187 USPQ 209, 219 n. 9 (CCPA 1975) (Miller, J., concurring). In the 1952 Act, Congress replaced the latter concept with 35 U.S.C. Sec. 103, the requirement of nonobviousness. See generally Rich, Laying the Ghost of the "Invention" Requirement, 1 APLA Q.J. 26 (1972), reprinted in Nonobviousness--The Ultimate Condition of Patentability, 1:501 (J. Witherspoon ed. 1980) (hereinafter Nonobviousness ); Rich, The Vague Concept of "Invention" as Replaced by Section 103 of the 1952 Patent Act, 46 J.Pat.Off.Soc'y 855 (1964), reprinted in Nonobviousness, supra at 1:401; P. Federico, Commentary on the New Patent Law, 35 U.S.C.A. 1, 20-23 (1954). "Anticipation" thereafter became a restricted term of art in patent law meaning that the claimed invention lacked novelty, or was unpatentable under 35 U.S.C. Sec. 102. In re Clark, 522 F.2d at 635 n. 9, 187 USPQ at 219 n. 9. ⁴ It is as a restrictive term of art that the word is used in this opinion. All infringements of a device do not "anticipate" in this sense. Some may be infringements under the doctrine of equivalents which, if one wished to draw a parallel, is somewhat akin to obviousness.

III

The '580 patent specification discloses a winch mechanism which includes the drum and three gear trains in a single pedestal. The drum is turned unidirectionally by a manually operated crank. Since the invention requires at least three speeds and the crank operates in only two directions of rotation, the same direction of the crank must, therefore, be used for more than one speed. The prior art shows two-speed winches where the change in gears, e.g., from first to second and back to first, is accomplished upon reversal of the crank. It also shows three-speed winches which had a problem of shifting inadvertently because of drum override, and four-speed winches which change speed by operating a clutch at the time of moving from second to third. Lewmar asserts that its '580 patent was the first to combine, in a single winch, override protection and automatic shifting through three gears only upon crank reversal.

According to the specification, the grinder pre-selects first speed by pressing a button in the hub of the crank handle, which engages a clutch member with the first speed gear train. Upon crank reversal, the clutch member disengages from the first speed gear train because of the configuration of the mating clutch and gear teeth and the second speed gear train engages. On next reversal, the winch shifts to third (rather than first) because of the previous disengagement of the clutch member. Thus, after pre-setting in first, the '580 winch will progress automatically, that is, without further adjustments, through first, second, and third upon successive reversals of the crank. The invention of the '881 patent has the improvement of being able to lock out the third speed and thereby use first and second on successive crank reversals, i.e., 1-2-1-2. This improved winch was used on nine yachts in the 1983 America's Cup Race.

The American Eagle winch which the district court found anticipated each of the subject claims is a four-speed winch with planetary gears. The gears shift from first to second upon crank reversal. In the high...