Schutt Mfg. Co. v. Riddell, Inc.

• Decision Date: 22 March 1982
• Docket Number: No. 80-2557,80-2557
• Citation: 673 F.2d 202,216 USPQ 191
• Parties: SCHUTT MANUFACTURING CO., Plaintiff-Appellant, v. RIDDELL, INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Seventh Circuit

Page 202

673 F.2d 202

216 U.S.P.Q. 191

SCHUTT MANUFACTURING CO., Plaintiff-Appellant, v. RIDDELL, INC., Defendant-Appellee.

No. 80-2557.

United States Court of Appeals Seventh Circuit.

Argued Oct. 29, 1981.

Decided March 22, 1982.

Albert L. Jeffers, Fort Wayne, Ind., for plaintiff-appellant.

James P. Ryther, Chicago, Ill., for defendant-appellee.

Before PELL and CUDAHY, Circuit Judges, and GRANT, Senior District Judge. ^*

PELL, Circuit Judge.

The plaintiff-appellant Schutt Manufacturing Co. (Schutt) appeals from the district court's grant of summary judgment in favor of defendant-appellee Riddell, Inc. (Riddell). The court found Schutt's patent for a mounting used to attach a protective face mask to a football helmet invalid, and dismissed Schutt's claims of trademark infringement, unfair competition, and violation of consumer warranty laws.

The patent in suit, U.S. Patent No. 3,263,236 ('236), involves attaching a face mask to a football helmet with resilient straps in such a manner that highly localized stresses are decreased, eliminating helmet breakage, and providing for increased shock absorption of blows to the mask. It contains eight claims, each of which describes a combination of a football helmet, a grid-like face mask, and various resilient means of connecting the mask to the helmet at the top and sides of the mask. The patent was issued to D. C. Humphrey, Schutt's president, on August 2, 1966, and subsequently assigned to Schutt.

I.

Schutt is an Illinois corporation whose major business is the manufacture of face masks used to protect football players, and of strap means for securing the masks to football helmets. Riddell is an Illinois corporation which produces sporting goods, with football helmets providing the major source of its income. Schutt sold face masks to Riddell until 1976, when Riddell decided to buy masks elsewhere, and dropped Schutt as a supplier.

Schutt owns the U.S. Trademark Registration on the term "Full Cage," for use on its face masks. In 1976 Riddell issued a dealer newsletter, published its 1977 catalog, and ran an advertisement, all announcing that it was introducing a new line of masks. As a result of these communications, Schutt advised Riddell that Riddell was using the Full Cage trademark without authorization, unfairly competing by using Schutt style and sizing designations, and infringing the '236 patent. Riddell denied the charges of infringement and unfair competition, but subsequently agreed to discontinue use of the expression Full Cage, and of the disputed style and sizing designations. This agreement was reiterated at a meeting between the parties on July 13, 1977, and again in writing on July 21, 1977. Subsequently, Riddell filed a petition to cancel Schutt's Full Cage trademark in the Patent and Trademark Office. Fitting instructions for Riddell helmets issued in 1979 included a photograph of a Riddell helmet with a Schutt mask.

Schutt filed the instant suit in May 1978, alleging infringement of the '236 patent, trademark infringement, unfair competition, and violation of the consumer product warranty laws. The trial court granted summary judgment for Riddell at the close of discovery, noting "(s)eldom have we seen a lawsuit as unwarranted and frivolous as this one." As to the counts of trademark infringement and unfair competition, the court ruled that Schutt had demonstrated no damages as a result of Riddell's conduct, and that any claim for injunctive relief was mooted by Riddell's agreement not to persist in such conduct. On the warranty claim, the court ruled that Riddell had not done the acts complained of and further that Schutt did not have standing to bring an action under the consumer product warranty laws. The court also granted summary judgment on Schutt's claim of patent infringement on two alternative grounds: first, that the patent was void for overclaiming; and second, that the patent was invalid for obviousness under the test of Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966).

II.

Schutt initially contends that the district court erred in finding that the '236 patent was invalid. This contention is based on two assignments of error. First, Schutt claims the court erroneously applied the overclaiming doctrine of Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545, 58 S.Ct. 662, 82 L.Ed. 1008 (1938), and that the court's interpretation of that doctrine is only applicable to cases of contributory infringement. Second, Schutt maintains the district court erred in finding that the Schutt '236 mounting would have been obvious to one skilled in the prior art of mask mounting because there was no evidence as to the level of ordinary skill in the art, and thus an unresolved issue of material fact remained. We turn first to the question of obviousness.

In reviewing a district court's determination of obviousness, we are required to examine: (1) the scope and content of the prior art; (2) the differences between the prior art and the claim at issue; and (3) the level of ordinary skill in the pertinent art. Mooney v. Brunswick Corp., 663 F.2d 724 (7th Cir. 1981) (citing John Deere). If there are any genuine issues of material fact regarding any of these questions, summary judgment is inappropriate and must be denied. Medical Laboratory Automation, Inc. v. Labcon, Inc., 670 F.2d 671 at 673 (7th Cir. 1981). We therefore turn to review each of the John Deere considerations to ascertain whether the presence of a disputed issue of material fact renders summary judgment improper.

A. The Prior Art

Face masks for football helmets typically consist of a grid of metal rods covered with a rubber-like material. The masks are then attached by various means to the front of a football helmet. Early masks, such as the McMillan mask developed in the 1930's, employed such means as leather lacing or rivets for securing the masks to the leather helmets of that era.

The development of hard plastic helmet shells led to changes in the means for attaching masks. Rigid means of attachment, such as bolts or rivets, originally used, sometimes caused the shells to break under the stress of hard contact. An example of how the prior art attempted to remedy this problem is found in Schutt's earlier patent No. 3,139,624 ('624). The means for securing the mask to the helmet in '624 include essentially the same "top pivot strap" mounted at the front center of the helmet as the '236 patent. The '624 patent uses side-securing latches, consisting of a groove or channel in a block or pad of resilient rubber-like material, to avoid a rigid connection between the mask and helmet. These side-securing means are described as having the additional advantages of permitting the mask to swing up away from the face to avoid whiplash injury, and giving greater ease in donning and removing the helmet. They also allow access to the face without removing the helmet in the event of injury, although that advantage was not contemplated at the time the patent was issued. In practice, the '624 patent permitted the mask to slip out of the side latches too easily. The design was not extensively used because it did not fulfill its protective function, and furthermore, could cause injury to a player if the mask opened during play. No issue of material fact is asserted as to the state of the prior art.

B. The Differences Between the Prior Art and the Patent in Issue

The '236 patent differs from the '624 patent primarily in that the side-securing means are no longer grooved or channelled latches, but now include "strap elements" which pass around the side of the mask, and are then secured to the side of the helmet. The difference from '624 is thus that the mask is now tied to the sides of the helmet, rather than merely wedged into a resilient holder attached to the helmet sides. Schutt claims that '236 has two principal advantages over '624:

(1) It provides some movement or resilience to absorb impacts, thereby reducing the danger of injury to the player and damage to the helmet;

(2) It permits cutting the side straps to raise the mask and afford access to the player's face and airway.

The latter advantage is not mentioned in the patent although reference to it is made in the file wrapper.

We conclude that the differences between '236 and the prior art, as found in '624, are minimal. Both '624 and '236 involve a pivoting center hinge mounting with resilient straps. Both use resilient side-securing means intended to provide resilience to absorb impacts. As to the argument that the straps in '236 can be cut to gain access to a player's face, we note that this advantage was not claimed in the '236 patent itself. As the Supreme Court commented in Graham v. John Deere Co., 383 U.S. at 25, 86 S.Ct. at 697:

Petitioners' argument basing validity on the freeflex theory raised for the first time on appeal is reminiscent of Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545 (58 S.Ct. 662, 82 L.Ed. 1008) (1938), where the court called such an effort "an afterthought. No such function ... is hinted at in the specifications of the patent. If this were so vital an element in the functioning of the apparatus it is strange that all mention of it was omitted."

Moreover, this feature is not materially different from the swing-away feature of the '624 patent which would permit such access without requiring any cutting of the straps. Because we reject Schutt's contention that the '236 patent had advantages not found in '624, there is no issue of material fact on this question either.

C. The Level of Ordinary Skill in the Art

The third inquiry mandated by the John Deere Court requires determination of the level of ordinary skill in the art. That level is usually established through the testimony of experts familiar with the art and the patent at issue. See, e.g., Mooney v. Brunswick Corp., 663 F.2d 724, 735-36 (7th Cir. 1981). Schutt claims that a genuine issue...