Radio Steel & Mfg. Co. v. MTD Products, Inc.

• Decision Date: 29 March 1984
• Docket Number: No. 83-1231,83-1231
• Citation: 221 USPQ 657,731 F.2d 840
• Parties: RADIO STEEL & MFG. CO., Appellant, v. MTD PRODUCTS, INC., Appellee. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 840

731 F.2d 840

221 U.S.P.Q. 657

RADIO STEEL & MFG. CO., Appellant, v. MTD PRODUCTS, INC., Appellee.

Appeal No. 83-1231.

United States Court of Appeals Federal Circuit.

March 29, 1984.

James P. Ryther, Chicago, Ill., argued for appellant. With him on the brief was Robert W. Slater, Chicago, Ill.

Charles R. Rust, Cleveland, Ohio, argued for appellee. With him on the brief was Bruce B. Krost, Cleveland, Ohio.

Before FRIEDMAN and MILLER, Circuit Judges, and RE, Chief Judge. ^*

FRIEDMAN, Circuit Judge.

This is an appeal from a judgment of the United States District Court for the Northern District of Ohio, 566 F.Supp. 609, in a patent infringement suit. The court held that United States Patent No. 3,282,600 (the '600 patent) covering a wheelbarrow, which the appellant Radio Steel & Mfg. Co. (Radio) owns, is valid but was not infringed by a wheelbarrow manufactured and sold by the appellee, MTD Products, Inc. (MTD). 220 USPQ 35 (1983). We affirm the determination of validity but reverse the determination of noninfringement, and remand the case to the district court for an accounting.

I

A. A wheelbarrow is an old and well-known device used to transport heavy and bulky materials. A wheelbarrow usually includes a bowl which carries the material to be transported, a pair of long handles that support the bowl, a wheel at the front end of the structure between the handles, and two legs which form a tripod with the wheel upon which the bowl rests when it is being loaded and unloaded. Wheelbarrows also usually include various supporting and bracing elements.

Previously, wheelbarrows generally were assembled at the factory. An assembled wheelbarrow, however, is relatively large, which makes it impractical to package for shipment and difficult and expensive to ship and store. The specification of the '600 patent described the invention as "a strong and rugged wheelbarrow such as may be used for construction work and in which the wheelbarrow can be fabricated, packaged, distributed and sold as separate elements in 'knocked down' condition for assembly by the user to provide a new and improved wheelbarrow of rugged construction."

Claim 2 of the '600 patent, the only claim we consider (see infra p. 844), describes a wheelbarrow in which each handle is composed of two pieces that, when assembled, abut end to end. At their juncture, these pieces are supported on their underside by a cross brace between the handles and also from above by being bolted onto the bottom of the bowl. The cross brace looks like this in simplified cross section:

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

and has at each end a square U-shaped channel into which a handle fits. The claim also describes a wheel between the two handles at their front ends, the bowl, two V-shaped legs with their upper ends connected to the handles, and "means" for mounting and attaching the various components.

The patent issued in November 1966. It contains 10 claims, of which only claims 1 and 2 are independent, with the remainder being directly or indirectly dependent on claim 2.

B. MTD manufactured and sold a noninfringing wheelbarrow from 1970-1978, when it left the wheelbarrow business. It returned to the business in 1980. In the summer of that year, it exhibited its new wheelbarrow at a hardware show. That wheelbarrow was virtually identical to the wheelbarrow the '600 patent covered. Radio so informed MTD and requested MTD to stop the infringement. In response, MTD "changed the ends [of the cross-brace] to flat and did away with the channel." It manufactured and sold its wheelbarrow with this altered cross brace.

Radio filed the present infringement suit in July 1981. MTD filed an answer and counterclaim for declaratory judgment seeking a determination that the '600 patent was invalid, not infringed, and not enforceable. Both parties sought attorney's fees.

After a two-day bench trial, the district court held the '600 patent valid but not infringed. With respect to validity, the court noted that MTD relied upon 10 patents the examiner had not cited. The court concluded, however, that "none of them demonstrates any features disclosed by the '600 patent which are not represented in the cited art." The court held that all the claims met the definiteness requirement of 35 U.S.C. Sec. 112 (1976); that the prior art did not anticipate the claims of the '600 patent because "in no single pre-existing structure or description are there all of the elements of the plaintiff's patented devices or their equivalents"; and that "the differences between the subject matter of the '600 patent and the prior art are such that the subject matter as a whole was not obvious at the time the invention was made to a person having ordinary skill in the art."

With respect to infringement, the court held that there was no literal infringement because "the defendant's cross brace, with its flat ends, is of a somewhat different shape than the cross brace of the plaintiff's patent, which has channel shaped sections on its opposite ends." The court further ruled, however, that "the defendant's cross brace is the equivalent of the cross brace in the '600 patent."

The court pointed out that "[t]he claimed function of the end sections of the cross brace in the plaintiff's patent is to secure the handle portions with the two pieces aligned in abutting relationship to form complete handles. The flat ends of the defendant's cross brace perform this same function in substantially the same way--that is, by bridging the handle pieces and being bolted to each piece." The court concluded that "if determination of infringement of the '600 patent by the defendant's wheelbarrows involved only consideration of the equivalency of the cross brace members, this Court would conclude that the patent was indeed infringed."

The court, however, refused to find infringement, on the ground that "there exists a significant difference between the structure claimed in the '600 patent and that of the defendant's wheelbarrows." The "significant difference" was that although MTD's wheelbarrow contained filler strips, which were shims placed between the handles and the bowl, the claims of the '600 patent do not mention those strips.

The court noted that filler strips "are mentioned frequently in the specification of the '600 patent." It declined, however, to read the "means" language in the claim as incorporating into the claims the filler strips, which it viewed as "integral structural components" of the MTD wheelbarrow that the claims of the '600 patent do not cover. The court stated: "Just as the inclusion into the '600 patent of the multi-purpose cross brace results in a new type of wheelbarrow with a new, improved, and specific interaction among its elements, so the inclusion into the defendant's wheelbarrows of filler strips, although not new elements, creates a different structure."

The court denied MTD's motion for attorney's fees, ruling that it could not find that this is an "exceptional case" under 35 U.S.C. Sec. 285.

C. Radio's appeal challenges the district court's finding of noninfringement. MTD defends that finding and also attempts to support the district court's judgment in its favor by arguing that the patent is invalid. It also contends that it is entitled to attorney's fees. We believe it will aid the discussion of the issues first to consider validity, and then infringement.

II

A. There is a threshold issue whether MTD's failure to cross-appeal on the validity issue precludes it from now arguing that point. The general rule is that, without taking a cross-appeal, the prevailing party may present any argument that supports the judgment in its favor. United States v. American Railway Express Co., 265 U.S. 425, 435, 44 S.Ct. 560, 563, 66 L.Ed. 1087 (1924); 9 J. Moore, B. Ward, & J. Lucas, Moore's Federal Practice p 204.11 (2d ed. 1983). This rule has been applied in some interference proceedings. See, e.g., Klemperer v. Price, 271 F.2d 743, 123 USPQ 539 (CCPA 1959). It is unclear, however, how that rule applies in this case.

The pertinent portion of the judgment of the district court is as follows:

For the reasons stated in the Memorandum Opinion contemporaneously filed, IT IS ORDERED, ADJUDGED, and DECREED that the plaintiff's United States Letters Patent No. 3,282,600 is valid but not infringed by the defendant's products. Judgment is entered in favor of the defendant and against the plaintiff on all aspects of the plaintiff's complaint except validity and in favor of the plaintiff and against the defendant on the defendant's counterclaim.

The judgment did not dismiss the complaint. It adjudicated that the '600 patent "is valid but not infringed," and entered judgment in favor of MTD "except" on the issue of validity and in favor of Radio on the counterclaim. The judgment in favor of Radio on validity was distinct from the judgment against it on infringement.

It would seem that the only way MTD could challenge the judgment of validity was by noting an appeal from that portion of the judgment. If MTD were to prevail in its argument that the claims of the patent were invalid, the result would be not an affirmance of the district court judgment, but a modification that would reverse the adjudication of validity. MTD's argument on validity, therefore, is not an attempt to uphold the judgment of the district court on an alternative ground.

In response to questions about this point at oral argument, counsel for MTD seemingly suggested that it is the usual practice in patent appeals for a party in its position to argue invalidity without appealing from the portion of the judgment against it on that issue. We are not familiar with the practice on that point in other circuits. MTD, however, may have been misled by that practice in not here appealing on the validity issue. Moreover, Radio apparently agreed with MTD, since neither in its reply brief nor in oral...