Shelcore, Inc. v. Durham Industries, Inc.
| Decision Date | 28 September 1984 |
| Docket Number | Nos. 84-791 and 84-824,s. 84-791 and 84-824 |
| Citation | 745 F.2d 621,223 USPQ 584 |
| Parties | , 16 Fed. R. Evid. Serv. 1270 SHELCORE, INC., Appellant/Cross-Appellee, v. DURHAM INDUSTRIES, INC., Appellee/Cross-Appellant. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
Peter T. Cobrin, New York City, for appellant.
James M. Rhodes, Jr., New York City, argued for appellee. With him on the brief were Michael Ebert and William L. Botjer, New York City.
Before MARKEY, Chief Judge, BALDWIN and EDWARD S. SMITH, Circuit Judges.
In this patent infringement case, appellant/cross-appellee Shelcore, Inc. (Shelcore), appeals from a judgment of the U.S. District Court for the Eastern District of Pennsylvania, holding invalid claims 1-12 of Strauss, U.S. patent No. 4,208,831 (the '831 utility patent) and finding the claim of Strauss, U.S. Des. patent No. 257,780 (the '780 design patent) to be not infringed. We affirm.
Shelcore is the assignee of the '831 utility and '780 design patents in suit. Both related to a driving simulator toy. The child's legs fit in a "tunnel" under the toy to provide a more realistic driving environment and, thus, maintain the child's interest. Appellee/cross-appellant Durham Industries, Inc. (Durham), manufactures a competing driving simulator toy called "Buckle Up 'N Drive." The "dashboard" surface is supported by legs in the Durham device, rather than by a "tunnel" structure, as in the patented Shelcore toy.
On October 1, 1982, Shelcore sued Durham in the U.S. District Court for the Eastern District of Pennsylvania for infringement of claims 1-13 of the '831 utility patent and of the '780 design patent. Durham answered with affirmative defenses of invalidity, unenforceability, and noninfringement. Durham also counterclaimed for a declaratory judgment of invalidity of both patents and for unfair competition. The case was tried before Judge Broderick, sitting without a jury. During trial, Shelcore's claim of infringement of claim 13 was dismissed with prejudice.
Judge Broderick, in an opinion dated January 6, 1984, held claims 1-12 of the '831 utility patent invalid under 35 U.S.C. Sec. 103 (1982) and found that, if valid, those claims would be infringed by Durham's "Buckle Up 'N Drive" toy. The district court also held that the '780 design patent, while not invalid, was not infringed by Durham's "Buckle Up 'N Drive" toy. Shelcore contends that the trial court erred in holding claims 1-12 of the '831 utility patent invalid and that the trial court's failure to find infringement of the '780 design patent is clearly erroneous. Durham, the prevailing party, argues in its cross-appeal that the trial court's finding, that, if valid, claims 1-12 of the '831 utility patent would be infringed, is clearly erroneous and that the trial court erred in failing to hold the '780 design patent invalid. 1
Four questions are presented in this appeal:
(1) whether claims 1-13 of the '831 utility patent are invalid for obviousness under 35 U.S.C. Sec. 103;
(2) whether the '780 design patent is invalid for double patenting;
(3) whether the '780 design patent is infringed by Durham's "Buckle Up 'N Drive" device; and
(4) whether Shelcore committed unfair competition in securing an ex parte, permanent injunction against Durham at a time when the '831 patent was allegedly unenforceable.
Durham asserts that all of the claims of the '831 utility patent are invalid under section 103. We disagree. The district court held only claims 1-12 invalid. By voluntarily dismissing with prejudice claim 13 of the '831 utility patent, Shelcore removed the issue of infringement of claim 13 from the trial court's consideration. 2 But Shelcore could not unilaterally remove the validity issue because Durham's counterclaim put validity of all the claims in issue. 3 Nevertheless, Durham's counterclaim for a declaration of invalidity as to claim 13 is not supported by the record and therefore we conclude that the trial court did not err by holding invalid only claims 1-12.
The district court held that, since Shelcore The district court erred as a matter of law in applying that otherwise valid rule in the context of determining validity of the claims of an issued patent. It was not Shelcore's burden to argue patentability. The claims were presumptively valid. It was Durham's burden, not only to argue, but to submit evidence establishing the invalidity of each claim it asserted to be invalid.
Rather, the above rule of procedure is applicable to claims pending before, or on appeal from, the Patent and Trademark Office (PTO), where those claims have not yet issued in a patent and where the applicant bears the burden of overcoming the rejection of each claim. Once claims 1-12 issued in the '831 patent, however, the situation is covered by 35 U.S.C. Sec. 282 (1982) which provides in relevant part that
[e]ach claim of a patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims; dependent or multiple dependent claims shall be presumed valid even though dependent upon an invalid claim. * * *
The rule applied by the trial court flies in the face of the presumption of validity. While the rule--that where the patentability of dependent claims is not argued separately from the independent claims from which they depend, the former stand or fall with the latter--has vitality prior to the issuance of a patent embodying those claims, 4 that rule has no application in a district court proceeding to determine whether the claims of an issued patent are valid.
While the above rule is not applicable as a rule of procedure in a district court, it has been applied on appeal from a district court judgment with respect to the claims of an issued patent as a matter of convenience. 5 The presumption of validity does not guide our analysis on appeal. Rather, we review the findings and conclusions of a district court under the appropriate standards of review. That circumstance bears no relation, however, to the requirement at trial that a party challenging the validity of a claim, absent a pretrial agreement or stipulation, must submit evidence supporting a conclusion of invalidity of each claim the challenger seeks to destroy.
The trial court relied primarily on three prior art references in holding invalid claims 1-12 of the '831 utility patent: Kamlay, U.S. patent No. 4,143,915; Wells, U.S. patent No. 2,429,498; and Stubbmann, U.S. patent No. 3,659,375. Shelcore contends that the Kamlay and Wells patents are nonanalogous art and, therefore, the trial court erred in combining those references with the Stubbmann patent in determining whether the subject matter of the '831 utility patent would have been obvious to one of ordinary skill in the art. Shelcore also argues that the trial court improperly relied on the testimony of Durham's allegedly unqualified expert witness, Mr. Margolies. Further, Shelcore argues that the trial court erred in applying the Graham v. John Deere Co. 6 criteria and that, since the trial court analyzed only claim 1 and failed to consider separately claims 2-12, it erred in holding claims 2-12 invalid. We conclude that these contentions do not require reversal of the district court's judgment.
Nonanalogous Art.
The Kamlay patent discloses a "Table for a Child Safety Seat," having a flat padded play surface and legs to support the table over the child's legs. The invention is used primarily in cooperation with a child's automobile safety seat. Wells discloses a similar appliance for use in an adult chair to provide a flat play surface. Even were we to adopt Shelcore's argument, that these references are not within the field of the inventor's endeavor, which we do not, the problem presented and overcome by the invention is basically the same: to permit the child to position his or her body in the same general orientation relative to the play surface or toy with his or her legs extending under the toy. Thus, the solutions disclosed in Kamlay and Wells are "reasonably pertinent to the particular problem with which the inventor was involved." 7
Expert Testimony.
With respect to the testimony of Mr. Margolies, Shelcore has not established that the trial court abused its discretion in allowing the testimony into evidence. While Mr. Margolies was not a toy designer, the trial judge was satisfied that he was qualified as an expert in plastics manufacturing and that his testimony was relevant and material. We are aware of no evidence of record to the contrary. Further, we cannot agree with Shelcore that the trial court placed undue reliance on Mr. Margolies' testimony. Rather, the court below in its opinion appears to base its conclusion of invalidity squarely on the three prior art references mentioned above. No mention is made by the trial court of Mr. Margolies' testimony in its opinion.
Obviousness.
Shelcore alleges that the district court committed error with respect to each of the Graham factual criteria: scope and content of the prior art, differences between the prior art and the claimed subject matter, and level of ordinary skill in the art. We review the factual findings of a district court to determine whether they are clearly erroneous, not merely whether the district court erred. 8
Claim 1 is set forth below:
A driving simulator toy comprising:
To continue reading
Request your trial
-
Akzona Inc. v. EI du Pont de Nemours & Co., Civ. A. No. 84-10 LON.
...Cir.1973); Hawley Products Company v. United States Trunk Co., 259 F.2d 69, 74-76 (1st Cir.1958); see also Shelcore, Inc. v. Durham Industries, Inc., 745 F.2d 621, 624 (Fed.Cir.1984)31; Blackman v. Hadron, Inc., 450 F.2d 781, 782-83 (2d Cir. 1971). Additionally, in the related instance wher......
-
Procter & Gamble Co. v. Nabisco Brands, Inc., Civ. A. No. 84-333 LON.
...choosing" which claims it will prosecute and which claims it will not prosecute as infringing. See, e.g., Shelcore, Inc. v. Durham Industries, Inc., 745 F.2d 621, 624 (Fed.Cir.1984) ("By voluntarily dismissing one of the claims at issue, Shelcore attempted to remove the validity issue becau......
-
Boston Scientific Corp. v. Schneider (Europe) Ag
...held valid for all purposes but, rather, not invalid on the record before the court." 5 F.3d at 1571 (quoting Shelcore Inc. v. Durham Indus., Inc., 745 F.2d 621, 627 (Fed.Cir.1984)). Second, even if the records are identical, the defendant in the second case is entitled to have the evidence......
-
Panduit Corp. v. Dennison Mfg. Co.
...Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1573, 224 USPQ 409, 411 (Fed.Cir.1984); Shelcore, Inc. v. Durham Industries, Inc., 745 F.2d 621, 625-26, 223 USPQ 584, 587 (Fed.Cir.1984); Jervis B. Webb Co. v. Southern Systems, Inc., 742 F.2d 1388, 1393, 222 USPQ 943, 946 (Fed.Cir.1984)......
-
Rising Confusion About "arising Under" Jurisdiction in Patent Cases
...1256 n.3 (Fed. Cir. 2011).144. Taylor v. Sturgell, 553 U.S. 880, 892-93 (2008).145. See, e.g., Shelcore, Inc. v. Durham Indus., Inc., 745 F.2d 621, 627 (Fed. Cir. 1984); see also Allen Archery, Inc. v. Browning Mfg. Co., 819 F.2d 1087, 1091 (Fed. Cir. 1987) ("[W]e shall review the district ......