May v. Carriage, Inc.

• Decision Date: 11 July 1988
• Docket Number: Civ. No. S 84-108.
• Citation: 688 F. Supp. 408
• Parties: John C. MAY, Plaintiff, v. CARRIAGE, INC., Defendant.
• Court: U.S. District Court — Northern District of Indiana

688 F. Supp. 408

John C. MAY, Plaintiff, v. CARRIAGE, INC., Defendant.

Civ. No. S 84-108.

United States District Court, N.D. Indiana, South Bend Division.

May 31, 1988.

On Motion to Alter or Amend July 11, 1988.

Malcolm A. Litman, Mark E. Brown, Kansas City, Mo., John Marnocha, South Bend, Ind., Gerald M. Kraai, Kansas City, Mo., for plaintiff.

James D. Hall, Thomas J. Dodd, South Bend, Ind., for defendant.

MEMORANDUM AND ORDER

ALLEN SHARP, Chief Judge.

Plaintiff, John C. May, filed this case on February 24, 1984, alleging patent infringement by defendant Carriage. An answer was filed by defendant, which included a counterclaim for a declaratory judgment of invalidity and noninfringement. Several non-patent claims and counterclaims which were formerly part of this case have since been tentatively resolved by agreement of both parties. This court ordered the bifurcation of this matter to separate the issues of liability and damages. On August 10, 1984, the proceeding was stayed pending notification to this court of the outcome of reissue proceedings of the patent-in-issue. The stay was lifted six months later. Both sides have since moved the court for summary judgment. Oral argument was heard in open court on March 31, 1988 on the cross-motions for summary judgment. Those motions have now been fully briefed and the case file is replete with pleadings, depositions, affidavits and other exhibits to support said motions.

Jurisdiction is conferred on this court by Title 28 U.S.C. § 1338 which grants original jurisdiction to district courts of "any civil action arising under any Act of Congress relating to patents...."

I. Facts

The facts are not in dispute. United States Patent 4,128,269 (hereinafter "Stewart patent"), was issued to inventor Bonner Stewart post-mortem for a "Telescoping Room for Travel Trailers" (hereinafter "slide-out room") on December 5, 1978. It was subsequently assigned to Stewart's widow who then sold it, in early 1983, to plaintiff. Since acquiring the Stewart patent, plaintiff has commercially exploited its subject matter. Prior to said purchase, since about 1977, May had been involved in the manufacture of slide-out rooms. The Stewart patent describes a room which is built into the side of travel trailers and which can be made to slide out when the trailer is stationary for the purpose of obtaining more living space. The room slides back into the trailer for travel. A composite sketch is set forth and incorporated herein as Appendix "A". The slide-out room is not a novel idea. Such rooms have been patented since at least 1925, when United States Patent 1,521,635 (hereinafter "Lewis patent") was issued to Samuel Lewis. The Stewart patent purports to overcome certain disadvantages of previously patented slide-out rooms. Those disadvantages apparently included the necessity of complex mechanisms for moving and supporting the room and having to extensively modify the trailer itself in order to install a room. Also, there were excessive costs associated with those drawbacks.

Defendant Carriage, Inc. of Millersburg, Indiana, is a manufacturer of recreational vehicles. Defendant independently developed a slide-out room which it has never patented, which was first made available for sale in 1981. In 1982, plaintiff notified defendant of the May slide-out room. In 1983, plaintiff notified defendant of its recent purchase of the Stewart patent and accused defendant of infringement of that patent. On February 24, 1984, plaintiff filed suit for patent infringement. After some discovery had taken place, plaintiff filed for a reissue patent and this lawsuit was stayed pending reissue proceedings by the United States Patent and Trademark Office (hereinafter "PTO"). The reissue was eventually granted as Reissue 32,262 (hereinafter "Stewart reissue") and the stay was lifted on these proceedings.

The plaintiff alleges literal infringement, or, in the alternative, infringement under the doctrine of equivalents, of the Stewart reissue Claims 27, 28, 32, 34, 35, 39, 42, 46, 48, 49, 50, 51, 53, 62 and 64. The parties agreed at the March 31, 1988, hearing that basically, the only elements of these claims which are in dispute are those listed below:

1. The inner fixed margin portion of the floor of the slide-out room. Plaintiff's is "angled downward" at a 45° angle. Defendant's is a straight, 90° vertical edge. Plaintiff contends that a 90° edge is "angled downward" just as a 45° edge is "angled downward."

2. The second support means between the trailer floor and the floor of the slide-out room. Plaintiff uses a "support member" or wooden block to support the slide-out room floor on the trailer during reciprocation of the room section. Defendant's slide-out room is separated from the trailer floor by carpeting only. The underside of the slide-out room floor is aluminum sheeting which slides readily over the carpet. Plaintiff alleges that defendant's second support means is the carpet/aluminum sheeting combination which performs the same function as plaintiff's second support means.

3. The spacing between the trailer floor and the slide-out room floor. Plaintiff's slide-out room floor does not touch the trailer floor; the support block separates the two floors. Defendant's slide-out room floor rests on the carpet of the trailer floor. Plaintiff alleges that defendant's slide-out room floor is not in contact with its trailer floor either; carpet and aluminum sheeting separate the floors just as a block separates plaintiff's floors.

Defendant's counterclaim alleges that plaintiff's patent is invalid, thereby precluding infringement. Defendant, in the alternative, denies infringement if the patent is indeed valid. The charge of invalidity is based on Title 35 of the United States Code, sections 102, 103, 112, and 251 as follows:

1. Under sections 102 and 103, defendant contends that plaintiff's patent is invalid for obviousness and lack of novelty. Defendant claims that prior art, both that which the patent examiner considered and that which was not considered, precluded the Stewart reissue under these sections.

2. Defendant alleges that the Stewart patent is invalid under section 251 which prohibits any new matter from being introduced into an application for reissue. That section also prohibits broadening the scope of claims if reissue is applied for more than two years after the grant of the original patent. Defendant claims that plaintiff has violated both provisions by adding new matter and broadening the claims. For example, defendant claims that dropping the word "closely" before the word "adjacent", plaintiff has broadened the claims which represent the distance between the trailer floor and the slide-out room floor.

3. Defendant finally alleges invalidity under section 112 which requires that the specification contain a written description of the invention and conclude with one or more claims particularly pointing out the subject matter which the applicant regards as his invention. The specification must therefore support the claim. Defendant contends that certain parts of plaintiff's claims are not supported by the specification. Two phrases in particular must be considered as they affect all the disputed claims. Those are (1) "closely adjacent" and (2) "second support means supporting the slide-out room floor on the trailer floor" (emphasis added).

A sketch of the slide-out mechanisms which are at the heart of this dispute is incorporated herein and marked as Appendix "B".

It can be seen from these drawings that plaintiff's inner fixed margin portion is tapered at a 45° angle, while defendant's is a straight edge. It is also evident that plaintiff's slide-out room floor is separated from its trailer floor by the support block. Defendant's slide-out room floor slides right over the trailer floor carpet. Apart from these differences, the mechanisms work in the same manner, both having a first support means comprised of a tubular guide member which connects the trailer to the slide-out room, said tubular guide member secured at one end to the underside of the trailer, with an elongated beam extending slidably through this tubular guide member which is rigidly attached at the opposite end to the outer wall of the slide-out room. The slide-out room is moved by a reciprocative drive mechanism which can be operated hydraulically or by an electric motor.

Defendant contends that the following patents represent prior art which the examiner either considered and wrongly decided did not preclude the Stewart patent, or didn't consider at all. Defendant chose to cite only these references because, as it stated in its "Memorandum in Support of its Supplemental Motion for Summary Judgment" at page 23, "... it is believed that the minuteness or non-existence of actual patent validity can be appreciated by the Court with a citation of but a few selected references," because "it is not the Defendant's intention in the course of this motion for summary judgment to pursue all the multiple applications of prior art it has available...." The prior art cited by defendant is as follows:

1. United States Patent 4,049,310 (hereinafter "Yoder" patent)

2. United States Patent 3,572,809 (hereinafter "Buland" patent)

3. United States Patent 2,744,781 (hereinafter "Black" patent)

The Yoder patent was filed on December 22, 1975. It was originally considered by the examiner in the course of the reissue examination but was removed from consideration after plaintiff filed an affidavit showing that the Stewart invention was conceived before the Yoder filing date and reduced to practice shortly thereafter. There is strong evidence, however, which has not been disputed by plaintiff, that the Yoder trailer was on sale in the United States as of October 20, 1975, more than one year prior to the Stewart filing date of January 21, 1977. Therefore, under 35 U.S.C. § 102(b), Yoder is prior art which should have been considered....