May v. American Southwest Waterbed Distributors, Inc.
| Decision Date | 26 September 1983 |
| Docket Number | No. 82-1302,82-1302 |
| Citation | 715 F.2d 876,218 USPQ 433 |
| Parties | Marvin I. MAY, Plaintiff-Appellant, v. AMERICAN SOUTHWEST WATERBED DISTRIBUTORS, INC., a Texas Corporation and Frank Lucas, an Individual, Defendants-Appellees. |
| Court | U.S. Court of Appeals — Fifth Circuit |
John K. DeLay, Jr., Dallas, Tex., Thomas D. Phillips, Joseph H. Golant, Los Angeles, Cal., for plaintiff-appellant.
Hubbard, Thurman, Turner, Tucker & Glaser, Robert W. Turner, Kenneth R. Glaser, Dallas, Tex., for defendants-appellees.
Appeal from the United States District Court for the Northern District of Texas.
Before GEE, GARZA and TATE, Circuit Judges.
Having read the record, the briefs of the parties, and after hearing oral argument, we are convinced that the court below was correct in deciding that the device in the patent in question was not patentable because of obviousness as a matter of law. Therefore, the court below is affirmed on the basis of its opinion dated the 13th day of May 1982, attached hereto as Appendix "A".
AFFIRMED.
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF TEXAS
DALLAS DIVISION
MARVIN I. MAY, §
Plaintiff §
§
V. § CIVIL ACTION NO. CA-3-80-1075-D
§
AMERICAN SOUTHWEST WATERBED §
DISTRIBUTORS, INC., and FRANK §
LUCAS, §
Defendants §
Came on for consideration before the Court the motion for judgment notwithstanding the verdict or, in the alternative, for a new trial, filed by defendants American Southwest Waterbed Distributors, Inc., and Frank Lucas (collectively Lucas), and the motion for entry of judgment filed by Marvin I. May (May), plaintiff. Having considered the motions, briefs of the parties, and the record in this action, the Court is of the opinion that the motion for judgment notwithstanding the verdict should be granted and the motion for entry of judgment should be denied.
This action is over the validity of patent No. 3,973,282 (the '282 patent) issued to May and covering a water bed liner holder. At trial, Lucas admitted that his device infringed the '282 patent claims in issue, but he has continued to press his contention that the '282 patent is invalid because the patented device would have been obvious to one skilled in the art.
When It Rains ...
A principal concern of the water bed industry is preventing leakage from the mattress, and containing the water should the mattress rupture. A water bed holds a large amount of water and should the water mattress rupture, there is a likelihood of substantial water damage to other furniture as well as to the building structure. This problem was especially acute in the early years of the water bed industry. The bulk of the industry efforts were devoted to methods of assuring the integrity of the water bed mattress, and great improvements have been made, especially in the area of stronger mattress seams.
Since there is a possibility that even the best mattress may rupture, there must be some method of containing any leakage that might occur. The usual method of containment involves a plastic liner which is attached to the inside of the water bed frame over which the water mattress is then placed. The '282 patent covers a plastic device used to hold the plastic liner near the top of the inside of the frame. There were a substantial number of methods for securing the liner to the same area of the frame in existence prior to the development of the device covered by the '282 patent. The main advantages of May's device are that it is easily installed, easy to use, and does not damage the liner. As evidenced by the substantial sales over the last six years, May's device made quite a splash in the industry.
Under 35 U.S.C. § 282 all patents are presumed to be valid. Thus, before a patent may successfully be challenged, the statutory presumption of validity must first be overcome. In order to rebut the presumption of validity, the party seeking to torpedo the patent must show that the Patent Office failed to consider pertinent prior art at the time it made its evaluation. Reed Tool Co. v. Dresser Industries, Inc., 672 F.2d 523, 526 (5th Cir.1982); Ludlow Corp. v. Textile Rubber & Chemical Co., 636 F.2d 1057 (5th Cir.1981). The evidence offered must not be cumulative and must be more than a preponderance, with any doubts resolved against the attacking party. Id.
A determination must therefore be made as to what constitutes the "pertinent" prior art against which the obviousness vel non of the '282 patent is to be measured. I.U. Technology Corp. v. Research-Cottrell, Inc., 641 F.2d 298, 302 (5th Cir.1981). May argues that the most pertinent prior art is the field of bedding fasteners. Lucas, in turn, contends it is the total field of clips, fasteners and holders.
To resolve this issue, the Court must look to the art within which the inventor was working at the time of the invention. In re Application of Grout, 377 F.2d 1019, 1021-22 (CCPA 1967). The focus of inquiry is on the problem solver and not the user of the solution; i.e., it is the subject matter of the invention and not the field or industry which might thereafter have a use for the invention which must be looked to. I.U. Technology, 641 F.2d at 303; Systematic Tool & Machine Co. v. Walter Kidde & Co., 555 F.2d 342, 349 (3d Cir.), cert. denied, 434 U.S. 857, 98 S.Ct. 178, 54 L.Ed.2d 128 (1977). Furthermore, if the elements and purposes of one art are so related and are so similar to those of another art as to make an appeal to one skilled in such art, the two arts are analogous, and both arts must be looked to in determining the field of art to which the patent pertains. I.U. Technology, 641 F.2d at 304-05; Cathodic Protection Service v. American Smelting & Refining Co., 594 F.2d 499, 505-06 (5th Cir.), cert. denied, 444 U.S. 965, 100 S.Ct. 453, 62 L.Ed.2d 378 (1979); Aerotec Industries of Calif. v. Pacific Scientific Co., 381 F.2d 795, 802 (9th Cir.1967), cert. denied, 389 U.S. 1049, 88 S.Ct. 788, 19 L.Ed.2d 843 (1968).
Applying these principles, there can be no doubt that the field of fasteners and holders is the most pertinent prior art to which the patent pertains. May's invention relates to a means of fastening or holding a water bed liner to a water bed frame. While May claims that it solved a problem related to a bed, so that the most pertinent art should be bedding fasteners, the nature of holding a water bed liner naturally calls for the talents of one skilled in the art of fasteners, and holders. See In re Grout, 377 F.2d at 1022. This conclusion is confirmed by a continuation patent application filed by May on a nearly identical water bed liner holder in which the device is described as a providing simple holder for mounting valances, ruffles, draperies, window treatments or to holding memos, notes, or other pieces of paper, as well as holding water bed liners.
Having determined that the sea from which pertinent prior art is to be fished is fasteners and holders, it remains to be determined if the Patent Officer failed to examine pertinent prior art sufficient to rebut the presumption of validity enjoyed by the '282 patent. Lucas cites to eight patent references in the record which were not considered by the patent examiner. 1 These patent references disclose clip-type holders, which in conjunction disclose all of the significant features claims in the '282 patent. In addition, a picnic table cloth clip existing prior to the '282 patent was introduced at trial. (Plaintiff's Exhibit No. 97) This clip is made of plastic, capable of being elongated, with a bottom portion to be secured to the table, a center curved portion with space for storage, and an upper portion which presses against the table to keep the table cloth in place.
In contrast, the patent examiner did not examine any prior art references involving resilient, clip-type fasteners, designed to releasably retain a flexible object against a support surface, although other devices for holding a water bed liner were examined, including liner tape, tack strips, t-molding, cap rails, and a matchbook-like holder. Because the patent examiner failed to consider pertinent prior art, and the prior art that was considered was of a different kind and substantially less relevant, the presumption of validity in this case must be regarded as non-existent.
The ultimate question of patent validity is one of law, but the determination of obviousness depends upon three factual inquiries. Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 693, 15 L.Ed.2d 545 (1966). The factual inquiries are: (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; and (3) the level of ordinary skill in the art. Id.; Reed Tool Co., 672 F.2d at 527. In Lear Inc. v. Adkins, 395 U.S. 653, 676, 89 S.Ct. 1902, 1914, 23 L.Ed.2d 610 (1969), the Supreme Court referred to the test in Graham as a "demanding standard of invention." Lear and its progeny reiterate the proposition that there is an important public interest in the elimination of specious patents. See Id. at 676, 89 S.Ct. at 1914; Steelcase, Inc. v. Delwood Furniture Co., 578 F.2d 74, 76 (5th Cir.1978).
The jury in this action found that the patent was not obvious. In making this determination, the jury was instructed to make the following determinations:
(1) The field of art to which the patent pertains;
(2) the level of ordinary skill of those who worked in the field of art at the time of the invention;
(3) the difference between the claimed invention and prior art; and
(4) then, whether the claimed invention would have been obvious to one of ordinary skill in the art to which the patent...
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