TWM Mfg. Co., Inc. v. Dura Corp.
| Decision Date | 09 January 1984 |
| Docket Number | Nos. 81-1530,82-1265,s. 81-1530 |
| Citation | 221 USPQ 25,722 F.2d 1261 |
| Parties | TWM MANUFACTURING COMPANY, INC., and Turner Quick-Lift Corporation, Plaintiffs- Appellees, v. DURA CORPORATION and Kidde, Inc., Defendants-Appellants. |
| Court | U.S. Court of Appeals — Sixth Circuit |
W. Robert Chandler, Cross, Wrock, Miller & Vieson, Detroit, Mich., James Van Santen, Kevin M. Guynn, Hill, Van Santen, Steadman, Chiara & Simpson, Chicago, Ill., defendants-appellants in No. 81-1530.
Gordon D. Coplein, New York City, for defendants-appellants in No. 82-1265.
Shafer Orhan, Butzel, Long, Gust, Klein, Van Zile, Detroit, Mich., Geoffrey Myers, Pontamac, Md. (argued), for plaintiffs-appellees.
Before MERRITT and WELLFORD, Circuit Judges, and BROWN, Senior Circuit Judge.
Appellee TWM Manufacturing Company, the owner of the Turner patent (No. 3,285,621), brought this infringement suit against appellant Dura Corporation. 1 TWM claims that its patent, a design for a device to raise and lower an auxiliary axle and wheels, is infringed by Dura's Model 1400 series suspension. The district court held that the patent was valid and denied Dura's defense of laches and estoppel. The court granted TWM a permanent injunction prohibiting further infringement by Dura and ordered an accounting of the profits from the infringement. Nine months later, the court found Dura in criminal contempt for violating the injunction by selling spare parts for the suspension. The court assessed Dura with a fine and attorneys' fees. For the reasons stated below, we affirm the lower court's holding that the suit was not barred by laches and estoppel and that the Turner patent is valid. We hold, however, that although the court properly found that Dura had violated the injunction, the evidence fails to support a holding of criminal contempt.
On November 15, 1966 Stephen Turner, Jr. was awarded U.S. Patent No. 3,285,621 for a "Wheeled Vehicle Suspension." Turner's device enables a truck to engage an additional axle and wheels to carry heavy loads. Airbags above the auxiliary axle are inflated to lower the wheels to the road surface. Two upwardly biased leaf springs attached to the vehicle frame at each end of the axle resist the axle as it is lowered. When the additional wheels are no longer required, the airbags are deflated and the springs raise the wheels above the road surface to decrease drag and reduce wear on the tires. When the auxiliary axle is engaged, the airbags and springs stabilize the suspension and act as shock absorbers.
In March 1965, Turner sent a copy of his patent application to the Dura Corporation, a manufacturer of truck suspensions. Dura received the application but never responded. In December 1966, several weeks after Turner received his patent, Dura began to advertise its 1400 series suspension. Later that month, Turner sent Dura a notice of infringement. More than six years later, in February 1973, TWM, which had acquired an exclusive license to the patent in 1969, filed an infringement suit against Dura.
On December 3, 1975 the district court granted Dura summary judgment on the grounds of laches and estoppel. The court held that the delay of more than six years in commencing the action was unreasonable and prejudiced the defendant, barring recovery by TWM. On appeal, this court reversed the district court's judgment and remanded the case with guidelines for applying the defenses of laches and estoppel. TWM Mfg. Co. v. Dura Corp., 592 F.2d 346 (6th Cir.1979).
On remand, the case was tried before the court sitting without a jury. On May 21, 1981 the court delivered an opinion from the bench adjudging the Turner patent valid and holding that Dura had willfully infringed the patent. The trial judge held that Dura's failure to rebut evidence implying that it had copied the Turner patent precluded Dura from raising the defense of laches. The court also found that TWM committed no acts of misrepresentation that would estop its infringement claims against Dura. The district court permanently enjoined Dura against further infringement and ordered an accounting of the damages.
The district court denied Dura's motion under Rule 62, Fed.R.Civ.P., to stay the injunction and damage determination. On appeal, this court affirmed the district court's denial of Dura's motion to stay the injunction pending appeal of the lower court's decision on the merits. This court, however, reversed the district court and granted Dura's request to stay the accounting procedures. Following this court's order, Dura posted a $5,000 supersedeas bond.
On March 5, 1982, in response to TWM's motion to hold Dura in contempt, the district court found that Dura had violated the terms of the injunction by selling repair parts for the model 1400 suspension. The court held Dura in criminal contempt, fined the company $10,000 and assessed it with $12,097.10 in attorneys' fees and expenses for TWM's costs of bringing the contempt action.
Dura appeals the district court's holdings that the Turner patent is valid and that the infringement suit is not barred by TWM's delay. Dura also appeals the holding of criminal contempt for violation of the injunction. These appeals were consolidated for argument and decision. 2
Dura's principal argument is that the Turner patent is invalid because it is obvious to someone skilled in the art. 3 The ultimate question of obviousness is one of law. Sakraida v. Ag Pro, Inc., 425 U.S. 273, 96 S.Ct. 1532, 47 L.Ed.2d 784 (1976); Reynolds Metals Co. v. Acorn Bldg. Components, Inc., 548 F.2d 155 (6th Cir.1977). The district court's determination of the factual predicates of obviousness are binding on appeal unless the findings are clearly erroneous. Armco, Inc. v. Republic Steel Corp., 707 F.2d 886, 888-89 (6th Cir.1983); Minnesota Mining and Mfg. Co. v. Blume, 684 F.2d 1166, 1172 (6th Cir.1982), cert. denied, --- U.S. ----, 103 S.Ct. 1449, 75 L.Ed.2d 803 (1983).
In its challenge to the district court's judgment that the Turner patent was not obvious, Dura contends that the court committed the following errors: (1) The court failed to make factual findings as required by Hieger v. Ford Motor Co., 516 F.2d 1324 (6th Cir.1975), cert. denied, 423 U.S. 1056, 96 S.Ct. 788, 46 L.Ed.2d 645 (1976). (2) The court failed to consider evidence that would have shown that the Turner design was obvious to a person skilled in the art. (3) The court improperly discounted the testimony of Dura's expert witness, Robert Gottschalk. We have considered these alleged errors and find them without merit.
When a question of obviousness is raised, the district court must make factual findings regarding the "scope and content of the prior art," "the difference between the prior art and the claims at issue," and the "level of ordinary skill in the pertinent art." Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 694, 15 L.Ed.2d 545 (1966); Hieger, 516 F.2d at 1327. Such findings need only be apparent from the court's opinion and need not be set forth specifically. See Universal Elec. Co. v. A.O. Smith Corp., 643 F.2d 1240 (6th Cir.1981); National Rolled Thread Die Co. v. E.W. Ferry Screw Prod., 541 F.2d 593 (6th Cir.1976). The record shows that the trial court made findings that satisfy the requirements of the John Deere test, and we hold that none of these findings is clearly erroneous.
The test for pertinent art is "similarity of elements, problems, and purposes." Skega Aktiebolag v. B.F. Goodrich Co., 420 F.2d 1358, 1359 (6th Cir.), cert. denied, 400 U.S. 825, 91 S.Ct. 49, 27 L.Ed.2d 54 (1970). In defining the scope and content of prior art, the court considered three patents: Kulyk (No. 3,093,388), Hofmeister (No. 1,622,719) and Edginton (No. 1,388,809). Only Kulyk, the court held, was pertinent as prior art. Hofmeister uses air bags and opposing elliptic leaf springs to raise and lower sled runners beneath a vehicle, transforming an automobile into an "autoboggan." Edginton employs elliptic leaf springs and a simple lever to raise and lower a road scraper. The court held that these patents did not constitute prior art because their designs contributed nothing to solve the special problems of a liftable, auxiliary axle suspension. Testimony at trial established that the trucking industry had experimented with various ways to engage auxiliary axles and stabilize the load-carrying capacity of such systems. We do not believe that the court erred in limiting the prior art to developments within this field. See Omark Industries, Inc. v. Textron, Inc., 688 F.2d 1242, 1248 (9th Cir.1982). The district court found that "it is clear that no one skilled in the suspension art would look to the dangerous contraption of Hofmeister to solve any problems in the axle-suspension art." This finding is supported by expert testimony in the record. The only relevance of the Edginton, the court held, was its use of a leaf spring. The court refused, we think properly, to extend the scope of prior art to "any device that uses a leaf spring in any way to raise and lower any other device."
The Kulyk patent, in contrast with the other patents cited by Dura, discloses a device to raise and lower an auxiliary axle. Kulyk employs air bags to lower an axle assembly which is raised by three coil springs and a torsion bar when the bags are deflated. The torsion bar runs across the width of the vehicle frame, and the springs are located at the middle of the axle. The device also uses shock absorbers to stabilize the wheels against lateral forces. The court found that Turner differed from Kulyk in that Turner's leaf springs serve the same function as the torsion bar, coil springs and shock absorbers in the Kulyk patent. The court concluded that Kulyk "represents nothing more than problems overcome by Turner." 4
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