Slimfold Mfg. Co., Inc. v. Kinkead Industries, Inc., s. 90-1416
| Decision Date | 15 May 1991 |
| Docket Number | 90-1429,Nos. 90-1416,s. 90-1416 |
| Citation | 18 USPQ2d 1842,932 F.2d 1453 |
| Parties | , 18 U.S.P.Q.2d 1842 SLIMFOLD MANUFACTURING COMPANY, INC., Plaintiff-Appellant, v. KINKEAD INDUSTRIES, INC., and United States Gypsum Company, Defendants/Cross-Appellants. |
| Court | U.S. Court of Appeals — Federal Circuit |
Dale Lischer, Jones, Askew & Lunsford, Atlanta, Ga., argued, for plaintiff-appellant. With him on the brief were Elizabeth C. Jacobs and David K. Friedland.
Frank Love, Jr. and James W. Hawkins, Powell, Goldstein, Frazer & Murphy, Atlanta, Ga., argued, for defendants/cross-appellants.
Before RICH, ARCHER and MICHEL, Circuit Judges.
Plaintiff-Appellant Slimfold Manufacturing Company, Inc. (Slimfold) and Defendants/Cross-Appellants Kinkead Industries, Inc. and United States Gypsum Company (collectively Kinkead) appeal from the May 29, 1990 Orders of the United States District Court for the Northern District of Georgia, Civil Action No. 78-CV-1798, finding Slimfold to be entitled to treble damages and attorney fees, but denying Slimfold's application for attorney fees. We affirm-in-part, reverse-in-part, and remand.
Slimfold is the owner of U.S. Patent No. Re. 31,553 (Ford), reissued on April 17, 1984 and entitled "Pivot and Guide Rod Assembly for Bi-Fold Door." 1 The invention of the Ford patent is disclosed specifically for use with metal bi-fold doors, which are the folding doors commonly used for closets and cabinets. In such doors, one end of the door is pivotally attached to the door frame, while the other end of the door has a "pivot rod assembly" attached thereto which has a head portion or "hat" which slides within a track formed in the door frame as the door is opened and closed. As the district court found, the invention of the Ford patent is an improved "cartridge-type" pivot rod assembly which is advantageous over the prior art assemblies which were cumbersome, had many more parts, and were difficult to install.
An example of the improved pivot rod assembly of the Ford patent is shown below. As seen therein, the assembly is made up of a plastic sleeve 30 in which a pivot rod 48 is moveable. The sleeve extends downwardly through two holes formed in a stiffening channel of the door, the top flange of which is shown at 18. A head portion 50 attached to one end of the pivot rod is biased upwardly by spring 66. At the top of the sleeve 30 is an integral collar 26. Extending downwardly from the collar is a finger 42 which engages the top edge of a hole 44 formed in the stiffening channel of the door. Extending upwardly from the collar is a latch 64 which engages a lip 60 formed along the edge of the head portion by a peripheral notch 62. The purpose of the latch is to hold the head portion in a retracted position (against the force of the spring) during assembly, shipment, and installation of the door. When the door is installed, the bottom of the pivot rod is struck by a hammer, causing the latch to flex and disengage from the lip, thus allowing the spring to press the head portion upwardly into the door track.
Claim 1 of the Ford patent reads as follows:
1. In a metal door assembly:
and releasable latch means operatively arranged between said head portion and said sleeve for releasably retaining said head in a retracted position adjacent said collar.
In 1976, after becoming aware of Slimfold's new pivot rod assembly, Kinkead instructed its engineers to produce a similar assembly. The result was what is referred to in this case as Kinkead's "Type I door." The Type I door was almost identical to Slimfold's door, although it had a number of minor improvements. The primary difference was in the latching mechanism; in the pivot rod assembly of the Type I door, the lip extended only part way around the circumference of the head portion, instead of all of the way around as in Slimfold's door, and the bottom of the pivot rod was provided with a knurled surface. The advantage of this design was that the latch mechanism could be released simply by rotating the pivot rod, instead of having to strike it as was required with Slimfold's assembly. Kinkead began selling its Type I door in June of 1977.
In April of 1978, some months after becoming aware of the Ford patent, Kinkead abandoned their Type I door and began making what has been termed their "Type II door." In the pivot rod assembly of the Type II door, the latch formed on the collar was removed. In order to hold the pin in a retracted position during shipment and assembly, Kinkead employed a styrofoam wedge which was placed between the lower part of the pivot rod and the inside of the facing sheet of the door. Kinkead sold the Type II door until December of 1979.
The district court found that Kinkead's Type I door literally infringed claim 1 of the Ford patent, and that the Type II door infringed claim 1 under the doctrine of equivalents. However, the district court further found that Slimfold had not sufficiently proved entitlement to damages based on lost profits, and thus awarded as damages the sum of (1) all of Kinkead's cost savings realized in making the infringing doors (since the pivot rod assemblies covered by the Ford patent were cheaper to produce and install), and (2) a reasonable royalty of 0.75% of the price of the entire doors. The district court found that Slimfold did not provide Kinkead with actual notice of infringement prior to the time Slimfold began marking their doors in November of 1977, and so did not begin the damages period until that date.
The district court also found Kinkead's infringement to be willful and held that Slimfold was entitled to treble damages under 35 U.S.C. Sec. 284 and attorneys fees under 35 U.S.C. Sec. 285. However, in a separate order issued the same day, the district court found Slimfold's application for attorney fees to be deficient. Thus, the district court provisionally denied Slimfold any award of attorney fees but granted leave to Slimfold to refile their fee application within 30 days provided that they agreed to charge no fees for preparation of the first fee request and to an offset of Kinkead's cost in replying to the first fee request. The order concluded with a statement that "[i]f these conditions are unsatisfactory to the movant, then the movant may consider this denial a final order and take its appeal."
Slimfold chose to appeal. In addition to contesting the denial of attorney fees, Slimfold argues on appeal that the district court erred in refusing to award lost profits, in
finding that 0.75% was a reasonable royalty, and in not starting the damages period until November of 1977. Kinkead has cross-appealed, arguing that the district court erred in finding that the Type II door infringed under the doctrine of equivalents, in finding its infringement to be willful, in finding Slimfold was entitled to attorney fees, and in awarding prejudgment interest.
OPINIONAs the district court correctly found, the Type II door meets every limitation of claim 1 except for the last one, i.e., the requirement of a "releasable latch means operatively arranged between said head portion and said sleeve for releasably retaining said head in a retracted position adjacent said collar" (emphasis added). Thus, the sole question with respect to infringement is whether a pivot rod assembly which uses a separate removable styrofoam wedge to hold the pivot rod in the retracted position is equivalent to one which has the latch means recited above.
The district court, as evidenced, for example, by the language on page 13 of its opinion, appears to have been overly concerned with the fact that the Type II door was deliberately designed to avoid infringement of the Ford patent. Intentional "designing around" the claims of a patent is not by itself a wrong which must be compensated by invocation of the doctrine of equivalents. Designing around patents is, in fact, one of the ways in which the patent system works to the advantage of the public in promoting progress in the useful arts, its constitutional purpose. Inherent in our claim-based patent system is also the principle that the protected invention is what the claims say it is, and thus that infringement can be avoided by avoiding the language of the claims. See generally, Texas Instruments, Inc. v. U.S.I.T.C., 805 F.2d 1558, 1572, 231 USPQ 833, 841-42 (Fed.Cir.1986). It is only when the changes are so insubstantial as to result in "a fraud on the patent" that application of the equitable doctrine of equivalents becomes desirable. Id.; Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 608, 70 S.Ct. 854, 856, 94 L.Ed. 1097 85 USPQ 328, 330 (1950).
Thus, the first question which must be asked is "has a substantial change been made?" Only if the answer to that question is "no" should an accused infringer be liable for improperly trying to appropriate the claimed invention. This is where the Graver Tank tripartite test comes into play; the differences between an accused device and a claimed...
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