Orthopedic Equipment Co., Inc. v. All Orthopedic Appliances, Inc.

• Decision Date: 23 May 1983
• Docket Number: Nos. 83-513,83-525,s. 83-513
• Citation: 707 F.2d 1376,217 USPQ 1281
• Parties: ORTHOPEDIC EQUIPMENT COMPANY, INC., Appellant, Cross-Appellee, v. ALL ORTHOPEDIC APPLIANCES, INC., Appellee, Cross-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1376

707 F.2d 1376

217 U.S.P.Q. 1281

ORTHOPEDIC EQUIPMENT COMPANY, INC., Appellant, Cross-Appellee, v. ALL ORTHOPEDIC APPLIANCES, INC., Appellee, Cross-Appellant.

Nos. 83-513, 83-525.

United States Court of Appeals, Federal Circuit.

May 23, 1983.

James D. Hall, South Bend, Ind., for appellant, cross-appellee.

Don K. Harness, Birmingham, Mich., argued, for appellee, cross-appellant; Jeffrey A. Sadowski, Birmingham, Mich., on brief.

Before NICHOLS, Circuit Judge, COWEN, Senior Circuit Judge, and BALDWIN, KASHIWA and MILLER, Circuit Judges.

NICHOLS, Circuit Judge.

Appellant, cross-appellee, Orthopedic Equipment Company, Inc. (OEC), is the owner, by assignment, of U.S. Patent No. 3,935,858 ('858 patent) issued on February 3, 1976, entitled "Knee Immobilizer." In 1980, OEC brought suit in the United States District Court for the Eastern District of Michigan, alleging that its '858 patent was infringed by several knee immobilizer models manufactured and sold by appellee, cross-appellant, All Orthopedic Appliances, Inc. (AOA). AOA defended on the grounds that the '858 patent was invalid and noninfringed. AOA also alleged that the '858 patent was unenforceable due to fraudulent and inequitable conduct in the prosecution of the '858 patent application in the Patent and Trademark Office (PTO). On July 22, 1982, final judgment was entered by the district court holding all five claims of the '858 patent invalid for obviousness. The district court also found that if the claims of the '858 patent are valid, claims 1-5 would have been literally infringed by AOA Model C-127 and claims 4 and 5 (but not claims 1-3) literally infringed by AOA Models 1201, 1273, 1313, and 1318. The district court also found that AOA Models 1201, 1273, and 1318 were equivalents of the device of OEC claim 1, but that the doctrine of file wrapper estoppel prevented a finding of infringement. Finally, the district court found that OEC's conduct during the prosecution of its '858 patent did not constitute grounds for rendering the patent unenforceable, and that this was not an exceptional case under 35 U.S.C. Sec. 285 justifying an award of attorney fees.

OEC appeals from the determinations of invalidity and of noninfringement of claims 1-3 by AOA Models 1201, 1273, and 1318, and from the application of the doctrine of file wrapper estoppel. AOA appeals from the determination that the '858 patent was not unenforceable and from the denial of an award of attorney fees. We affirm the district court's decision invalidating claims 1-5 of the '858 patent for obviousness and, because this holding is dispositive, we do not reach the issue of infringement. We also affirm the district court's decision that OEC's conduct during the prosecution of the '858 patent was not fraudulent or inequitable, and that an award of attorney fees is not justified in this case.

Background

This litigation relates to adjustable knee immobilizers, an orthopedic soft goods device used in the treatment of knee region problems. A knee immobilizer, whose purpose is to prevent the bending of the leg at the knee, comprises a wide flexible cover applied snugly around the leg of the patient at knee level. Strap members or fasteners extend around the leg of the patient and are connected to ring members on the opposite side of the cover so as to close and secure the cover around the leg. Immobilizing stays to prevent flexing of the knee are disposed so that when the cover is properly positioned about the knee, one set of stays is at the posterior (behind the knee) and one set of stays is along each side of the knee. The strap members commonly entail fabric straps with ends stitched at spaced predetermined points relative to the stay pockets and the immobilizer cover. Similarly, the ring members are secured by fabric straps to the immobilizer cover at spaced intervals. The once familiar corset purported to solve comparable engineering problems; we have here a corset for the injured knee.

Because of the inherent need to accommodate a wide range of sizes and conditions of patients, it is desirable that orthopedic soft goods be adjustable. Various means have been used to accommodate adjustment of such goods, including "Velcro"-type fasteners. Such a fastener comprises a plastic sheet which has a large number of closely spaced hook members projecting from one face of the sheet and which is secured to one of the parts to be connected. The other part to be connected has a myriad of loops with which the hook members are engageable by simply pressing the two parts together "Velcro"-type fasteners have been made, used, and sold in the United States since at least 1962 and provide three basic functions--adjustability, removability, and closure. These fasteners have been used on various orthopedic soft goods including traction belts, cervical collars, and wrist retainers prior to 1974. In recent years, as the "Velcro" materials have lessened in cost, "Velcro"-type hook members have been increasingly combined with a pile member comprising a relatively inexpensive open loop fabric laminated to a breathable polyurethane foam, commonly marketed under the trademark "Velfoam," to provide adjustable attachment of parts of orthopedic devices to the covers of those devices.

the loop member being commonly referred to as the "pile" member. The interengagement of many hook members with pile loops effects a strong connection between the attached parts at any selected adjustment or angular position so as to resist separation of the parts by a pull exerted in the plane of the interengaging parts. The parts are readily separable by a simple peeling action effected by a pull on one end of a part in a direction at an angle to the plane of the interengaging parts.

In 1974, OEC marketed a knee immobilizer, the '858 invention, in which the side stay components (rigidifying means) are detachable from and adjustable on the cover, secured by "Velcro"-type hooks which interlock with the "Velfoam"-type outer surface of the knee immobilizer cover. The knee immobilizer also has "securement means" (i.e., strap and ring fasteners) carried by the rigidifying means by which the immobilizer cover can be secured about the knee of the patient. The advantage of the OEC knee immobilizer is to provide adjustability of the side stays. This is accomplished by the use of "Velcro" on the pockets in which the side stays are inserted and to which the strap and ring fasteners are attached, and the use of "Velfoam" material for the cover of the knee immobilizer. According to OEC, the invention reduced the number of different sized knee immobilizers required to be kept in inventory from approximately 18 to 4.

OPINION

I--Validity

The central issue on appeal is whether the district court erred in finding the '858 patent claims invalid for obviousness under 35 U.S.C. Sec. 103. Accordingly, we must refer to Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), which establishes the test for obviousness.

* * * Under Sec. 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy. * * *

[383 U.S. at 17-18, 86 S.Ct. at 693-694.]

A. Scope and Content of the Prior Art

The scope of the prior art, as determined by the district court and uncontested here, includes knee immobilizers and other orthopedic soft goods which use "Velcro"-type fastening means to attach straps or other parts to the cover of the device and to provide adjustability.

The prior art references specifically relied on by the district court in invalidating the '858 patent for obviousness include U.S. Patent No. 3,831,467 ('467 Moore patent) and U.S. Patent No. 3,587,572 ('572 Evans patent) for knee immobilizers. The district court also referred to U.S. Patent No. 3,572,327 ('327 Beard patent) as the most relevant prior art relating to prior use of "Velcro"-type fastening means in orthopedic soft goods other than knee immobilizers. We shall discuss each briefly.

The '467 Moore patent discloses a knee immobilizer as shown in figure 7 of the specification:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The knee immobilizer has a flexible cover 16, a fixed posterior stay pocket (center) having stays inserted therein, and removable side stays 52 in fixed stay pockets on the cover. The straps and rings are sewn to both the stay pocket and the cover, and may be affixed either on top of the stay pocket or between the stay pocket and the cover. "Velcro"-type material on the straps provides for length adjustment.

The '572 Evans patent discloses a knee immobilizer of elastomeric material as shown in figure 4 of the specification:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The immobilizer has a flexible cover 24 of elastomeric material that may be adjustably secured about a wearer's knee with a "Velcro"-type fastener 40, 42 securing the cover. The cover is provided with a plurality of side stay pockets 34. Adjustability is achieved by positioning the movable stays in the appropriate side pockets and adjusting the diameter of the immobilizer with the "Velcro"-type fastener.

The '327 Beard patent discloses a pelvic traction belt utilizing "Velcro"-type fastening means for fastening a belt body about the waist of a patient of any size. "Velcro"-type fastening means are also utilized to adjustably secure yokes, which are connected to the traction weights, to desired...