White v. Mar-Bel, Inc.

• Decision Date: 06 March 1975
• Docket Number: No. 74--1101,MAR-BE,INC,74--1101
• Citation: 185 U.S.P.Q. 129,509 F.2d 287
• Parties: Kenneth WHITE, Plaintiff-Appellant, v., and Mr. Dan Marshlack, Defendants-Appellees.
• Court: U.S. Court of Appeals — Fifth Circuit

Page 287

509 F.2d 287

185 U.S.P.Q. 129

Kenneth WHITE, Plaintiff-Appellant, v. MAR-BEL, INC., and Mr. Dan Marshlack, Defendants-Appellees.

No. 74--1101.

United States Court of Appeals, Fifth Circuit.

March 6, 1975.

Rehearing and Rehearing En Banc

Denied April 21, 1975.

Irwin C. Alter, Howard B. Rockman, Chicago, Ill., Harold R. Ainsworth, New Orleans, La., Marvin E. Barkin, Tampa, Fla., for plaintiff-appellant.

Stefan M. Stein, Tampa, Fla., for defendants-appellees.

Appeal from the United States District Court for the Middle District of Florida.

Before BROWN, Chief Judge, and COLEMAN and DYER, Circuit Judges.

DYER, Circuit Judge:

White brought this suit for infringement of United States Patent No. 3,496,812, issued February 24, 1970, for a 'Plastic Cutting Device and Method.' The defendants, Mar-Bel, Inc., a Florida corporation, and Marshlack, its majority stockholder, denied infringement and validity.

The district court submitted five special interrogatories to the jury which found that the patent was valid, that defendants' infringement was wanton and willful, and that the court should treble the damages in entering judgment. White moved for entry of judgment in accordance with the verdict, including treble damages, attorney's fees and injunctive relief against future infringement. Defendants moved for a judgment notwithstanding the verdict or, alternatively, for a new trial. Although the district court found that there was substantial competent evidence to support the jury's finding of infringement, novelty and utility, it granted a judgment NOV on the ground that the patent was invalid as a matter of law by reason of obviousness within the meaning of 35 U.S.C.A. § 103. Pursuant to Rule 50(c) Fed.R.Civ.P., the court conditionally denied defendants' alternative motion for a new trial, declined, in the exercise of its discretion, to award treble damages, and found that this was not an exceptional case justifying an award of attorney's fees under 35 U.S.C.A. § 285.

White appeals from the judgment of invalidity and from the conditional denial of treble damages. We reverse the judgment of invalidity, and affirm in all other respects.

Since we are confronted with the narrow issue of nonobviousness, and the subsidiary question of treble damages, a detailed explication of the background development of plastic laminate material, and of the development of the White-Meyer (White) invention and its infringement by the defendants is capsulated. ¹

Plastic laminate is a very rigid, hard, durable sheet of plastic which cannot be scratched and which has a long wearability. Typical of this material is the commonly known brand name 'Formica.' Plastic is very brittle, and if cut by shearing, its molecules do not stretch but break, and thus the material cracks or fractures, leaving rough edges. Until White's invention, no device or method was known which would cut a piece of rigid plastic laminate material and leave a smooth edge. The carbide-tipped saw blades and steel-tipped routers used were expensive and had to be frequently sharpened or replaced. They invariably left a rough, cracked or chipped edge on the plastic which required masking by stainless steel turned molding or edgebanding techniques.

White and Meyer started manufacturing kitchen cabinets in 1951. In 1959, their corporation, White-Meyer Wood Products, Inc. produced plastic laminated kitchen cabinets with edge banding on the doors. To make the cabinets more cost competitive, they set about experimenting to produce a better cutter, and finally hit upon the machine and method now the subject of this suit.

There is no dispute concerning the claims of the patent alleged to have been infringed (claims 1, 2, 3, 6, 10 and 11). ² The plastic cutting device claims of the White patent (claims 1--9) are directed to a support for a plastic sheet, and a pair of rotating cutters through which the plastic sheet is passed. One of the cutters is a single rotating disc with a smooth periphery, and the other cutter is a pair of spaced-apart rotating discs between which a portion of the single disc extends. The distance between the pair of discs is maintained slightly greater than the thickness of the single disc by a spacer, thereby forming a die (instead of a shear). The single disc is interleaved between the pair of discs, and is rotated in one direction while the pair of discs is rotated in an opposite direction. The process claims of the White patent (claims 10--12) describe a process for severing a sheet of rigid plastic material by passing the plastic through a die formed between a pair of rotating cutters, whereby the die deforms the plastic to the degree where severance occurs.

The critical feature of White's patent is the formation of a die rather than a shear, whereby the plastic is deformed as it passes between the cutters leaving a smooth edge which requires no sanding or deburring. Because the discs do not touch, no heat or friction is created, and the discs far outlast a saw or router blades. There are no teeth to wear out, and the discs rarely need sharpening, thus maintenance and operating costs are materially reduced.

It was undisputed that the difference between a die and a shear is that in a die movement there must be clearances between the male and female components in order to perform. In a shear action the components must touch in order to perform. White's patent describes a die to be formed between the cutter discs.

Novelty and utility having been found by the jury upon substantial competent evidence, the single question, with respect to validity, is whether the device was non-obvious in light of the prior art. Ag Pro, Inc. v. Sakraida, 5 Cir. 1973, 474 F.2d 167. That obviousness is a question of law cannot be doubted, but it must rest on factual underpinning. As Judge Ainsworth has succinctly put it:

While the ultimate question of obviousness is one of law, Graham v. John Deere Company of Kansas City, (383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545) supra; Garrett Corporation v. American Safety Flight Systems, Inc., 5 Cir., 1974, 502 F.2d 9, this issue nevertheless lends itself to the following basic factual inquiries: (1) the scope and content of the prior art, (2) the difference between the prior art and the claims at issue, and (3) the level of ordinary skill in the art.

Gaddis v. Calgon Corporation, 5 Cir. 1975, 506 F.2d 880 at 884. The scope and content of the prior art considered by the court and jury included a pair of scissors, a pair of tin snips, the Hood, Fore and Sabel patents, introduced by the defendants, and the White file wrapper patents, including the Booth patent, plus the testimony of the parties and witnesses, including expert opinions.

The Booth patent, cited by the Patent Office, discloses a sheet metal cutting device with a single rotary cutting disc interleaved between a pair of flat-edged, rotating discs, which are pressed against and held in contact with the single disc. This relationship of discs forms a shear as distinguished from the die formation in White to cut plastic material.

Hood discloses a plurality of interleaved flat-edged discs, each upper disc being in contact with a pair of lower discs to create a shearing action on any substance passed between the discs, and used, for instance, to cut foil such as gold for dental material.

Fore discloses a rotating sharp-edged cutting disc interleaved between a pair of flat-edged portions of a grooved cutting disc, the upper disc being in contact with the grooved disc and used for cutting leather into strips.

Sable discloses a slitting and cutoff mechanism for sheet material and is admittedly of relatively less value than Hood and Fore.

The district court properly instructed the jury with respect to making a finding of the relative closeness of the Booth file history patent and the Hood and Fore patents. We think it was implicit in the verdict of validity that the jury found Hood and Fore were no closer to White than the file history Booth patent. Equally implicit in the verdict of validity is a finding that the difference between prior art and the claims at issue are the teachings in the former of the use of shear devices for cutting metal, foil, leather and paper, contrasted with White's invention of a die deformation apparatus or process for cutting plastic and leaving a smooth edge. While the legal conclusion on patent validity may be reviewed, under the John Deere guidelines,

(i)f the ultimate issue of validity depends on subsidiary fact questions, it is the court's duty to instruct the jury that it should return one verdict if the facts are found one way and a different verdict if the facts are found otherwise. In such event, as in other cases tried to a jury, the reviewing court will presume that the disputed matters of fact have been resolved favorably to the prevailing party in accordance with the trial judge's instructions. (Footnotes omitted). Panther Pumps & Equipment Co., Inc. v. Hydrocraft, Inc., 7 Cir. 1972, 468 F.2d 225, 228.

As we have seen, the Patent Office issued the White patent over the reference to Booth. Hood and Fore were not considered by the Patent Office, but the jury found they were no closer to White than Booth. In this context the patent is presumed valid and the burden of...