Newell Companies, Inc. v. Kenney Mfg. Co.

Citation9 USPQ2d 1417,864 F.2d 757
Decision Date29 December 1988
Docket Number86-742 and 86-1018,86-711,Nos. 85-2232,s. 85-2232
Parties, 9 U.S.P.Q.2d 1417 NEWELL COMPANIES, INC., Plaintiff-Appellant, v. KENNEY MANUFACTURING COMPANY, Defendant/Cross-Appellant.
CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit

James G. Staples, Baker and McKenzie, Chicago, Ill., argued for plaintiff-appellant. With him on the brief was Philip J. Zadeik. Also on the brief was John H. Bush, Blish & Cavanagh, of Providence, Rhode Island.

Lars I. Kulleseid, Fish & Neave, New York City, argued for defendant/cross-appellant. With him on the brief were Kenneth B. Herman and C. Joseph Laughon, II.

Before NIES, NEWMAN, and ARCHER, Circuit Judges.

NIES, Circuit Judge.

Newell Companies, Inc., appeals from the judgment of the United States District Court for the District of Rhode Island, 606 F.Supp. 1282, 226 USPQ 157 (D.R.I.1985) (Boyle, C.J.), in a patent infringement suit brought against Kenney Manufacturing Company. Following a jury trial in which the jury answered interrogatories responding, inter alia, that no claims in issue of United States Patent No. 4,006,770 (the '770 patent), owned by Newell, were proved invalid for obviousness under the standard of 35 U.S.C. Sec. 103 (1982), the district court granted Kenney's reserved motion for directed verdict and entered judgment for Kenney on that issue holding claims 1, 2, 6 and 7 invalid. We affirm.

I Background

The invention of the '770 patent relates to retractable (up and down) window shades. Ferguson, the inventor, was products manager of Newell's window shade division, and developed the shade after seeing certain vinyl shade material manufactured by Sean Corcoran. Corcoran's material is scored partially through in lines parallel to one lengthwise edge so that it can be torn to a desired width. Its advantage over other scored shade materials is that light does not shine through the scored portion.

Corcoran sought a patent which claimed his shade material in combination with a roller, and in In re Corcoran, 640 F.2d 1331, 208 USPQ 867 (CCPA 1981), a predecessor of this court addressed the patentability of Corcoran's invention. Because the Corcoran material had been placed on sale in the United States in 1972, more than a year before the filing date of Corcoran's application, and the combination with a roller would have been obvious, Corcoran was held to have lost his right to a patent under 35 U.S.C. Sec. 102(b)/Sec. 103 (1982). Specifically, the court stated:

As to the support means we conclude that, given the plastic sheet shade material denominated a "window shade," nothing could be more obvious than to attach it to a roller or other support.

Id. at 1334, 208 USPQ at 870. The Corcoran material alone or in combination with a roller, thus, was unprotectable and freely available for anyone to use.

After learning of the Corcoran material in late 1973 or early 1974, Ferguson, sensing the market potential, contacted Corcoran, who resided in Ireland, and requested sample shades. Corcoran sent the shades along with a letter explaining that he would not have the output to supply Newell until 1975 and that at the time rollers were in better supply and cheaper in America. This correspondence led to meetings and eventually to a business arrangement between Corcoran and Newell. Ferguson proceeded to develop the subject matter of the '770 patent, which attaches the Corcoran material to a telescoping roller having a smaller section able to slide inside a larger section.

Ferguson claims the advantage that his shade can be assembled by consumers without the use of tools. As explained in the specification, the material is affixed to the larger roller section. After adjusting the width of the material and roller, the consumer removes a protective cover on an adhesive strip on the smaller roller end and presses the material onto that adhesive. In conducting test marketing, Newell made shades from material supplied by Corcoran and from telescoping rollers available on the market and made by Clopay Corporation. As described infra, the Clopay roller came with a cardboard sleeve which fitted over its smaller telescoping end. That sleeve was unnecessary in the Ferguson assembly and was simply discarded. The Clopay roller is the subject of United States Patent No. 3,203,468 (the '468 patent), issued to Gossling and owned by Clopay.

Shortly thereafter, Ferguson applied for the patent which is the subject of this suit. Claim 1 of the '770 patent, which issued to Ferguson in February 1977, reads:

In an extensible and retractable roll window shade assembly which is width adjustable and installable by the consumer without the use of tools or cutting elements, the combination of a telescoping roller assembly, said telescoping roller assembly including a first roller section, said first roller section having a constant external diameter from end portion to end portion, the outer end portion of said first roller section having first means for supporting the window shade assembly from a first support location, the inner end portion of said first roller section having an opening therein of a size to receive a second roller section, said second roller section having a constant nominal external diameter from end portion to end portion, the outer end portion of said second roller section having second means for supporting the window shade assembly from a second support location, said second roller section being telescopically, slidably received within the first roller section whereby the length of the roller assembly can be adjustable within the limits of the range of telescoping movement, means for precluding relative rotation between the first and second roller sections, a shade of flexible sheet material, a first portion of the upper end of the shade being secured to the first roller section, one side portion of the shade having a plurality of lines of weakness which extend from the upper end of the shade to the lower end of the shade whereby the width of the shade can be adjusted to a desired width by separating a portion of the side of the shade from the balance of the shade, said separated portion being bounded, on the outside, by the original shade edge and, on the inside, by a line of weakness along which said portion is separated from the balance of the shade, said first and second telescoping roller sections being adjustable to an overall length which is at least as wide as the length of the final shade width without severance of any portion of either section, securement means for securing the second portion of the upper end of the shade, which is generally aligned with the second roller section, in fixed relationship to the second, smaller external diameter roller section with a substantially constant securing force from point to point along the length of the portion of the second roller section which extends beyond the end of the first roller section, whereby the positions of the first and second roller sections are fixed with respect to one another and to the shade throughout the entire area of overlap of the shade and the roller assembly.

The Newell window shade was successful with consumers immediately on its introduction into full marketing in October 1975. Other shade companies introduced competing products. In July 1981, Kenney's do-it-yourself shade appeared in response to the requirements of its customer, K-Mart. The Kenney shade was made with scored material and a telescoping roller but, unlike Ferguson's design, the shade material was attached to the larger roller section only and was simply allowed to wrap loosely around the smaller end.

At trial, Kenney asserted numerous defenses, but the dispositive issue here is whether the '770 invention would have been obvious from prior art which includes the Corcoran material, telescoping rollers, and various means for securing a shade to a roller including adhesive strips and partial securement as in the Kenney shade. At the conclusion of presentation of evidence, both parties moved for a directed verdict on which the district court reserved its rulings, and the case was submitted to the jury. In its instructions, the court directed the jury to answer a series of questions, including a question whether any of the claims of Newell's '770 patent would have been obvious, to which the jury answered "No," and whether Kenney infringed any claims, to which the jury answered "Yes." After receipt of the jury's verdict in this form, the court made its rulings on the parties' motions for directed verdict, denying Newell's and granting Kenney's. 1 The district court set out in detail a set of facts and explained the basis for its decision holding claims 1, 2, 6, and 7 unpatentable under 35 U.S.C. Sec. 103, that is, the court concluded from this set of facts that the invention would have been obvious to one of ordinary skill in the art. 2 The court also held that the jury's verdict was not reasonable. Newell appeals the grant of judgment for Kenney.

After entry of judgment, Kenney moved for attorney fees. The court denied that motion and Kenney cross-appeals the denial of attorney fees. 3

II Issues in Newell's Appeal

The dispositive issue in Newell's appeal is whether the trial court erred in setting aside the jury's verdict of nonobviousness of the subject invention. Newell does not challenge the trial court's statement of the facts underlying the trial court's obviousness conclusion except in an immaterial detail. Newell's challenge is two-fold. First, it argues that the trial court improperly substituted its conclusion on obviousness for that of the jury and second it argues that, in any event, the subject invention meets the statutory standard of section 103. We deal with these arguments in turn.

III Standard of Review of the Grant of Directed Verdict or JNOV

The first issue raised by Newell...

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