Maclaren v. B-I-W Group Inc.

• Decision Date: 20 May 1976
• Docket Number: No. 708,B-I-W,D,708
• Citation: 190 U.S.P.Q. 513,535 F.2d 1367
• Parties: Owen Finlay MACLAREN and Miron Charles Bell, Plaintiffs-Appellees, v.GROUP INC. and Cross River Products, Inc., Defendants-Appellants.GROUP INC., Counterclaim-Plaintiff-Appellant, v. Owen Finlay MACLAREN et al., Counterclaim-Defendants-Appellees. ocket 75-7613.
• Court: U.S. Court of Appeals — Second Circuit

Page 1367

535 F.2d 1367

190 U.S.P.Q. 513

Owen Finlay MACLAREN and Miron Charles Bell, Plaintiffs-Appellees, v. B-I-W GROUP INC. and Cross River Products, Inc.,

Defendants-Appellants.

B-I-W GROUP INC., Counterclaim-Plaintiff-Appellant, v. Owen Finlay MACLAREN et al., Counterclaim-Defendants-Appellees.

No. 708, Docket 75-7613.

United States Court of Appeals Second Circuit.

Argued April 9, 1976.

Decided May 20, 1976.

Joseph C. Sullivan, New York City (Charles R. Hoffmann, Gerald Levy, Kane, Dalsimer, Kane, Sullivan & Kurucz, New York City, Roger W. Parkhurst, Stevens, Davis, Miller & Mosher, Arlington, Va., Francis J. Hone, Brumbaugh, Graves, Donohue & Raymond, New York City, of counsel), for plaintiffs-appellees and counterclaim-defendants-appellees.

Michael I. Rackman, New York City (Barry A. Cooper, Gottlieb, Rackman, Reisman & Kirsch, P. C., Howard I. Rhine, Zimet, Haines, Moss & Goodkind, New York City, of counsel), for defendants-appellants and counterclaim-plaintiff-appellant.

Before FRIENDLY, MANSFIELD and MULLIGAN, Circuit Judges.

MANSFIELD, Circuit Judge:

The issue before us on this appeal is the validity of United States Letters Patent No. 3,390,893, issued on July 2, 1968, to plaintiff-appellee Owen Finlay Maclaren with respect to a "collapsible support assembly," suggested as useful for structures such as baby carriages, folding chairs, shopping carts, and the like. Maclaren subsequently licensed the patent to co-plaintiff-appellee Miron Charles Bell for manufacture in the United States. Defendants-appellants B-I-W Group Inc. (hereafter "B-I-W") and Cross River Products Inc. ¹ are alleged to have infringed the patent by manufacturing a baby stroller embodying the patent's elements. In addition to responding to plaintiffs' allegations, B-I-W has counterclaimed against the plaintiffs and Bell's sublicensees for a declaratory judgment of invalidity and non-infringement.

Maclaren is a British inventor whose prior work largely had been concentrated in the aircraft field. In the mid-1960's he invented a "collapsible support assembly" which was employed in the manufacture of collapsible baby strollers and in 1965 he filed for British Patent No. 1,154,362 for this invention. One year later, on July 18, 1966, he filed a similar application in the United States Patent Office. Following several amendments to the original application, U.S. Patent No. 3,390,893 was issued to Maclaren. It contains 15 claims, the first of which is independent and provides the focal point of this suit, with the other 14 claims representing further refinements or variations. Claim 1 reads:

"A collapsible support assembly comprising a bottom cross frame of interpivoted rigid members, a back cross frame of interpivoted rigid members, a two-axes pivot joint interpivotally attaching one of each of the bottom frame members to one of each of the back frame members at each of two corners of said cross frames, said axes being oriented to permit the members of each cross frame to pivot with respect to each other and to permit said cross frames to pivot with respect to each other, two foldable brace members pivotally attached to the bottom cross frame near the other two corners of the bottom cross frame, respectively, and to the back cross frame near the other two corners of the back cross frame, respectively, first releasable means to hold the members of at least one of the cross frames in an extended position when the assembly is unfolded, and second releasable means to hold said brace members in an extended position when the assembly is unfolded."

Figure 1 from Maclaren's patent application, illustrating a baby stroller embodying Maclaren's design, is appended to this opinion. A brief description of the patent's The patent defines two interpivoted and rigid cross frames, one at the back and one at the bottom of the mechanism. In Figure 1 the cross frames are represented by the two rigid tubes 1 and 2, pivoted at 3, and tubes 4 and 5 pivoted at 6. When the mechanism is opened, the two X-frames form two planes at approximately a 90o angle to one another. The mechanism is locked into this open position by use of a toggle bar and side braces. In the drawing the two pieces of the toggle bar are marked by 9A and 9B and are connected in the middle by a knuckle joint marked 10. The side braces, represented by 7 and 8 and knuckle-jointed at 7B and 8B, are adjoined to pivots to the back X-frame at 4A and 5A and to the bottom frame at 1A and 2A. When opened, the toggle bar holds the X-frames at their maximum width while the side braces, when fully opened, separate the X-frames at roughly a perpendicular angle.

design and operation is essential to the issues in this case.

To collapse and fold the mechanism, one breaks knuckle joint 10 at the center of the toggle bar by moving it in an upward direction either by hand or foot. The handles at 7D and 8D are then pressed together by hand. This collapses both X-frames and breaks the pivots 7B and 8B that lock the side braces. As the toggle bar folds, both X-frames narrow; simultaneously, as the side braces unlock and fold, the two collapsed X-frames are rotated toward each other by pushing the handles 7D and 8D forward and downward until, when the structure is folded into a closed position, the side bars bounded by 7B-7D and 8B-8D run parallel to and press against the tubes marked 7C and 8C. The collapsed X-frames then also lie in a position parallel to the collapsed side braces. The result is a compact sticklike mass.

In London during the summer of 1969, Alexandre C. Goodwin, chairman of the board and counsel of B-I-W, purchased a Maclaren stroller. Impressed with its design, he consulted D. Deaver Brown, President of B-I-W. Together they decided to pursue the possibility of marketing the stroller in the United States. On December 27, 1969, Goodwin made the initial inquiry to Maclaren. Maclaren informed him that Bell had already been designated as his American licensee. Goodwin and Brown then entered into negotiations with Bell for the purpose of acquiring a sublicense. At the same time, Goodwin, in consultation with a patent attorney, began to have doubts concerning the validity of the Maclaren patent. He expressed these doubts to Bell, who disagreed. In February-March 1970, the negotiations between B-I-W and Bell were abandoned as Bell demanded too high a price for the sublicense.

In a meeting held on March 15, 1970, the B-I-W officials decided to manufacture a stroller essentially incorporating the Maclaren design. The first prototype was produced by the middle of the year and B-I-W proceeded to subcontract and market the stroller through a subsidiary. The complaint alleging infringement followed on December 7, 1970, in the United States District Court for the Southern District of New York.

There is little room for dispute that if the Maclaren patent is valid, B-I-W is liable for infringement. The trial therefore centered on B-I-W's contentions (1) that the claim language failed to adequately disclose the claimed invention as required by 35 U.S.C. § 112, (2) that the Maclaren patent is invalid for failure to meet the tests of novelty, 35 U.S.C. § 102, and of non-obviousness, 35 U.S.C. § 103, and (3) that the patent must be disallowed under the "late-claiming" doctrine, since a public use of the invention preceded the claims by more than one year, 35 U.S.C. § 102(b). Resolution of these issues unavoidably turned upon technical evaluations of the design and operability of Maclaren's claimed invention as compared to prior patented collapsible support mechanisms employed in such diverse applications as collapsible tents, strollers, and umbrellas. To clarify the issues each side introduced two expert witnesses to comment on the technical, legal, and business

                aspects of the invention.  2 After a bench trial lasting several days the District Court, Milton Pollack, Judge, on September 19, 1975, filed a carefully reasoned opinion finding the patent to be valid and therefore infringed by defendants' stroller.  See 401 F.Supp. 283 (S.D.N.Y.1975).  With the finding of infringement, B-I-W's counterclaim for a declaratory statement of non-infringement was dismissed.  This appeal followed.  We reverse
                

DISCUSSION

Before considering the arguments advanced on this appeal, a summary of some basic principles governing the scope of our review in patent cases should be helpful. Although the ultimate question of patent validity is one of law, Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966); Julie Research Laboratories, Inc. v. Guideline Inst., 501 F.2d 1131, 1136 (2d Cir. 1974), the trial court, as in any other case tried to the bench, must first find the material facts on the basis of the evidence presented to it and then apply governing patent law principles to arrive at its determination of the issue of validity. Guided by Rule 52(a), F.R.Civ.P., we will not ordinarily disturb the district court's findings of fact unless they are found to be "clearly erroneous," Zenith Radio Corp. v. Hazeltine Research, Inc., 395 U.S. 100, 123, 89 S.Ct. 1562, 23 L.Ed.2d 129 (1969).

Our deference to the trial judge's findings is, of course, predicated in large part upon his having had the opportunity to appraise the credibility of the witnesses on the basis of personal observation and, through interrogation, to clarify disputed and often complicated issues of fact. See Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 609-10, 70 S.Ct. 854, 94 L.Ed. 1097 (1950); Sakraida v. Ag Pro, Inc., --- U.S. ----, 96 S.Ct. 1532, 47 L.Ed.2d 784, 44 U.S.L.W. 4477 (1976). On the other hand, where the material facts are undisputed or the findings are based on documentary evidence which we are as competent to appraise as the district court, we have not hesitated to reject a determination of validity, either because the significance of the facts had not yet been fully perceived by the...