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

• Decision Date: 04 April 1985
• Docket Number: Civ. A. No. 82-0421.
• Citation: 226 USPQ 157,606 F. Supp. 1282
• Parties: NEWELL COMPANIES, INC. v. KENNEY MANUFACTURING COMPANY.
• Court: U.S. District Court — District of Rhode Island

606 F. Supp. 1282

226 USPQ 157

NEWELL COMPANIES, INC. v. KENNEY MANUFACTURING COMPANY.

Civ. A. No. 82-0421.

United States District Court, D. Rhode Island.

April 4, 1985.

COPYRIGHT MATERIAL OMITTED

John H. Blish, Edwards & Angell, Providence, R.I., James G. Staples, Baker & McKenzie, Chicago, Ill., for plaintiff.

James P. Marusak, Thomas D. Gidley, Hinckley & Allen, Providence, R.I., Robert B. Russell, Russell & Tucker, Boston, Mass., Lars I. Kulleseid, Kenneth B. Herman, Fish & Neave, New York City, for defendant.

OPINION

FRANCIS J. BOYLE, Chief Judge.

Plaintiff in this case, Newell Companies, Inc. (Newell) sued Defendant Kenney Manufacturing Company (Kenney) for alleged infringement of claims 1, 2, 6 and 7 of its patent 4,006,770 (the 770 patent) for a do-it-yourself-without-tools window shade. Kenney denied infringement and asserted the defenses of invalidity due to obviousness and noninfringement. Other defenses and counterclaims which were raised by Kenney were either withdrawn or directed out by the Court at the end of testimony.

At the close of Plaintiff's case-in-chief, Defendant Kenney moved for a directed verdict on the grounds that the 770 patent is invalid due to obviousness, and that Kenney's accused structure does not infringe any of the claims of the patent. This motion was renewed at the close of evidence in the case. The Court reserved decision on the motion and submitted the case to the jury after appropriate instruction. The jury found the claims valid and infringed by Defendant. The Court must now address the directed verdict motion upon which it reserved decision.

Whether a directed verdict motion should be granted is a question of law which must be determined by the Court. See Fed.R.Civ.P. 50(a). A directed verdict should be granted sparingly, since it denies the parties the opportunity to have the facts determined by a jury. 9 C. Wright & A. Miller, Federal Practice and Procedure: Civil § 2524 (1971). The standard applied by the Court is whether there is evidence upon which the jury could properly find a verdict for the party against whom the motion is directed. Id. This standard is the same for both a motion for directed verdict and a motion for judgment notwithstanding the verdict. Id. See also Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1546 (Fed.Cir.1983). The Court must (1) consider all the evidence; (2) in a light most favorable to the nonmoving party; (3) drawing reasonable inferences favorable to the nonmoving party; (4) without determining the credibility of witnesses; and (5) without substituting its judgment for that of the jury on conflicting evidence. Connell, supra at 1546. See also Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 893 (Fed.Cir.1984); Railroad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506, 1512-13 (Fed.Cir.1984). If, after applying these guidelines, the Court is convinced upon the record before the jury that reasonable persons could not reach a verdict for the nonmoving party, it must grant the motion for a directed verdict. Connell, supra at 1546.

The Court finds that reasonable jurors could not conclude that claims 1, 2, 6, or 7 of the 770 patent are valid, and thus will grant the motion for a directed verdict on the issue of invalidity. While a defendant cannot be held legally liable for infringing an invalid patent, Medtronic, Inc. v. Cardiac Pacemakers, Inc., 721 F.2d 1563, 1583 (Fed.Cir.1983), the Court also will address Defendant's motion on the issue of noninfringement in the interest of judicial economy.¹ See Simmons Fastener Corp. v. Illinois Tool Works, Inc., 739 F.2d 1573, 1576 (Fed.Cir.1984); Medtronic, supra at 1582-83. Since no reasonable jury could conclude that claims 1, 2, 6 or 7 of the 770 patent were infringed, the Court will grant the motion for a directed verdict on the issue of noninfringement, as well.

FACTS

The window shade industry has existed for over 100 years. Shades were first made of cloth, starched cloth, or paper, but by 1973 vinyl was the predominant material used. For the most part, wooden or hollow rollers were used, although convolute cardboard was also utilized. The rollers contained a spring motor on the left side and had a pin to support the shade on the right. A pocket in the bottom of the shade enclosed a rigid slat.

In the 1970's as now, Newell was involved in the manufacture of window shades. Other companies in the field included Joanna-Western, Clopay, Graber and Breneman. The practice in the industry was to manufacture shades which were cut to measure on a machine by trained store personnel, rather than by the consumer at home. The consumer would first measure the window for which a shade was required and bring the dimensions to the store, where he or she would choose a new shade. Since window shades were available in a limited variety of sizes, the shade chosen would often have to be reduced in size. In the case of a wooden roller the cap and pin would be removed from the end of the roller, the shade material would be cut and removed, the roller and slat sawed to the required length and the end cap replaced on the roller. After the shade had been cut, the consumer would take it home. If the shade were improperly cut or if the measurements were incorrect, the consumer would return the shade and try again. Frequently the store would bear the loss attributable to a miscut shade. Until the time of the claimed invention, store-cut shades were the state of the art.

Then in late 1973 or early 1974 Thomas Ferguson, the products manager of Newell's window shade division, saw a vinyl material manufactured by Sean Corcoran. This material was scored partially through in parallel lines so that it could be torn to a desired width. On February 12, 1974 Mr. Ferguson wrote to Mr. Corcoran, who resided and had his business in Ireland, and requested sample shades. Mr. Corcoran sent the shades, along with a separate cover letter and instructions on February 25, 1974. In his letter, Mr. Corcoran indicated 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. Mr. Corcoran suggested alternatives to his supplying the completed shades: sending only the shades and attaching rollers in the United States or entering into a licensing agreement. The instructions illustrated the process of measuring and assembling the shade. They contemplated the use of a wooden roller and slat, each of which had to be sawed to length. The window shade had to be cut through at the slat pocket, since the seam for the pocket was solid and overlapped the scoring in the shade material.

Ferguson sensed potential for developing a new product and began to work on designing a window shade on his own time. He decided to attach the vinyl to a telescoping roller in order to simplify the procedure of assembling the shade. He was faced also with the challenge of designing a slat pocket that would enable the width of the vinyl to be reduced the entire length of the shade without the use of scissors or other cutting implement. Here Ferguson's wife, who had considerable sewing skill, contributed to the design. She recommended sewing the slat pocket with an intermittent seam so that the stitching would not overlap the slits in the material. This feature was incorporated into the final design.

In April 1974 Ferguson presented his idea to his superiors at Newell. Newell's new product committee decided to pursue the shade, and prepared to test its market potential. Since Newell did not manufacture its own shade in 1974, it arranged for Breneman, which manufactured other Newell products, to make the test shades. Corcoran sent enough vinyl to make the shades and Breneman developed a heat sealing bar for the slat pocket. Newell purchased rollers made by Clopay and described infra, removed their cardboard sleeves and used the rollers for the test shades.

The test of the window shade had positive results and Newell decided to introduce its product. At this point a complication arose when Breneman, assuming the product was destined to be unsuccessful, declined to manufacture the shades for Newell. Newell decided to manufacture the shades itself and began selling the shades in October of 1975. On June 16, 1975, before the mass selling of the shade began, Ferguson applied for a patent. This application would ripen into the 770 patent, the subject of this controversy.

The do-it-yourself-without-tools window shade was successful with consumers immediately upon its introduction. Competitors, some of whom had been aware of the Corcoran material before Newell introduced its shade, hurried to enter the market. Breneman attempted to import a copy of the Newell shade from Taiwan but was prevented from doing so by litigation. Within one year of Newell introducing its shade, Graber and Clopay entered the market. The Graber shade, called Easy-Up, was a copy of Newell's product except for the motor attachment. Clopay's shade, Sure Fit, functioned much the same as Newell's but included the roller described under the Gossling patent number 3,203,468, infra. Joanna-Western brought out the Perfit shade, Stanley the Trim `N Fit, and Breneman a shade called Strip `N Fit.

In 1981 Defendant Kenney entered the market after K-Mart, one of its principal customers, informed company officers that it wanted to sell tear shades and that, as of July 1981, it would buy drapery hardware, which made up a large part of Kenney's business, only from a company which could also supply do-it-yourself-without-tools window shades. In July of 1981 Kenney delivered its shade to K-Mart. The shade was similar to that manufactured by Newell, except that the shade material was not attached to the smaller roller, but allowed to wrap loosely around it.

At the date of this trial Breneman, Joanna-Western and Stanley had withdrawn their products from the market. The other products discussed remain.

VALIDITY OF...