Windsurfing Intern. Inc. v. AMF, Inc.
| Decision Date | 28 January 1986 |
| Docket Number | Nos. 85-2808,86-514 and 86-548,85-2835,85-2836,85-2809,s. 85-2808 |
| Citation | 228 USPQ 562,782 F.2d 995 |
| Parties | , 228 U.S.P.Q. 562 WINDSURFING INTERNATIONAL, INC., Appellees, v. AMF, INCORPORATED, Appellant. BIC LEISURE PRODUCTS, INC., Windglider Fred Ostermann, GmbH, Appellants/Cross-Appellees, v. WINDSURFING INTERNATIONAL, INC., Appellee/Cross-Appellant. WINDSURFING INTERNATIONAL, INC., Cross-Appellant/Appellee, v. FRED OSTERMANN GMBH, Amf, Inc., Downwind Corp., and Freeboard Sailing, Inc., Cross-Appellees/Appellants. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
David H. Badger, Willian, Brinks, Olds, Hofer, Gilson & Lione, Indianapolis, Ind., argued for appellant AMF, Inc.
Thomas F. Reddy, Jr., Pennie & Edmonds, of New York City, argued for appellant/cross-appellee BIC Leisure Products, Inc. With him on the brief were Joseph V. Colaianni, Pennie & Edmonds, Washington, D.C., and Brian M. Poissant, Pennie & Edmonds, New York City.
Harold E. Wurst, Nilsson, Robbins, Dalgarn, Berliner, Carson & Wurst, Los Angeles, Cal., argued for appellee/cross-appellant Windsurfing Intern., Inc. With him on the brief was David R. Francescani, Darby & Darby, New York City.
Pasquale A. Razzano, Curtis, Morris & Safford, P.C., New York City, was on the brief for Downwind Corp.
Before MARKEY, Chief Judge, SMITH and NEWMAN, Circuit Judges.
Consolidated appeal from two judgments of the United States District Court for the Southern District of New York: (1) holding claims 15-21 of Windsurfing International's (WSI's) U.S. Patent Re. 31,167 ('167 patent) valid and infringed; (2) holding that WSI had misused the patent; (3) enjoining AMF, Inc. (AMF), BIC Leisure Products, Inc., and Windglider Fred Ostermann, GmbH (BIC); and (4) refusing to enjoin infringing defendant Downwind Corp. (Downwind). 613 F.Supp. 933, 227 USPQ
927 (S.D.N.Y.1985). We affirm in part, reverse in part, vacate in part, and remand.
WSI sued AMF, BIC and Downwind, alleging infringement of its '167 patent. AMF then sought a declaratory judgment that the patent is invalid for obviousness under 35 U.S.C. Sec. 103, unenforceable because of patent misuse, and not infringed. Also, AMF sought the cancellation of WSI's registrations of "WINDSURFER" and related trademarks 1 on grounds that the marks had become generic. BIC sued WSI, seeking a declaration that the '167 patent is invalid for obviousness, unenforceable, and not infringed.
Consolidating the three actions, the district court held a non-jury trial on 13 dates between November 19 and December 11, 1984, filed an opinion July 15, 1985 and entered judgments on September 11, 1985. AMF in Appeal Nos. 85-2808/2809, BIC in No. 85-2835, and Downwind in No. 86-548, appeal from the judgments holding the '167 patent valid and infringed. AMF and BIC appeal from the grant of injunctions. 2 In Appeal Nos. 85-2836 and 86-514, WSI cross-appeals from the judgments holding it misused its patent and refusing to enjoin Downwind.
The patent in suit relates to the sport of "sailboarding", 3 in which participants ride boards propelled by wind striking sails attached to the boards.
A preferred embodiment of the claimed invention is shown in Figure 1 of the '167 patent:
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
A participant stands on the top surface of surfboard 10 behind universal joint 36, grasps boom 16 or boom 18 (depending on wind direction), and controls the speed and direction of the board by maneuvering the boom to which sail 14 is attached. If a participant begins to lose control in a sudden wind surge, he or she merely releases the boom and the universal joint allows the sail to fall freely into the water.
Claim 15 is representative:
15. Wind-propelled apparatus comprising body means adapted to support a user and wind-propulsion means pivotally associated with said body means and adapted to receive wind for motive power for said apparatus, said propulsion means comprising a mast, a joint for The underscored limitation sets forth the boom and was added when WSI's U.S. Patent No. 3,487,800 was reissued as the '167 patent.
mounting said mast on said body means, a sail and means for extending said sail laterally from said mast comprising two opposed booms secured to said mast for guiding said sail therebetween and adapted to provide a hand-hold for said user on either side of said sail while sailing, the position of said propulsion means being controllable by said user, said propulsion means being substantially free from pivotal restraint in the absence of said user, said joint having a plurality of axes of rotation whereby said sail free falls along any of a plurality of vertical planes upon release by said user. [Emphasis added.]
Did the district court err in: (1) holding the claimed invention nonobvious under 35 U.S.C. Sec. 103 4; (2) finding infringement; (3) holding patent misuse; (4) enjoining AMF and BIC; and (5) refusing to enjoin Downwind.
OPINIONOn appeal, AMF 5 argues that the district court erred in upholding the '167 patent because it: (a) improperly deferred to decisions by the U.S. Patent and Trademark Office Board of Appeals (Board); (b) compared preferred and commercial embodiments with the prior art; and (c) considered commercial success having no nexus with the claimed invention.
In deferring to the Board's decisions concerning the allowance of the claims in the reissued patent, the district court was recognizing the statutory mandate that all patents are presumed valid. 35 U.S.C. Sec. 282 (1982); see Fromson v. Advance Offset Plate, Inc., 755 F.2d 1549, 1555, 225 USPQ 26, 31 (Fed.Cir.1985). The district court carefully considered whether the evidence not presented in the "fiercely contested adversarial proceeding" before the Board would ease AMF's burden of proving facts compelling a conclusion of invalidity. 6 613 F.Supp. at 943-45, 227 USPQ at 935-36; see American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1359-60, 220 USPQ 763, 770 (Fed.Cir.), cert. denied, --- U.S. ----, 105 S.Ct. 95, 83 L.Ed.2d 41 (1984). Concluding that the evidence at trial was merely cumulative of that before the Board, the court correctly held that that evidence did not enable AMF to carry the burden imposed by Sec. 282.
AMF contends that, because the Board did not mention the obviousness of replacing the rig, shown in a publication referred to as the "Darby reference", with the boom disclosed in the '167 patent, no deference is due the Board decisions. The district court carefully reviewed the administrative record and stated that such argument "oversimplifies the depth of the Board's review and assumes the Board ignored other issues raised in the parties' extensive briefs." 613 F.Supp. at 945, 227 USPQ at 936. We agree. Merely because a decision does not mention a particular point "forms no basis for an assumption that it did not consider those elements." Perkin Elmer Corp. v. Computervision Corp., 732 F.2d 888, 901, 221 USPQ 669, 679 (Fed.Cir.), cert. denied, --- U.S. ----, 105 S.Ct. 187, 83 L.Ed.2d 120 (1984). Moreover, the district court correctly noted that "the Board ... reaffirmed its original holding that combination of '[t]he hand-held wishbone rigging [boom] with the vehicle swivel mast attachment produces ... a unique sailing apparatus....' " 613 F.Supp. at 945, 227 USPQ at 936. We are satisfied that the district court did not err in this case in giving "deference that is due to a qualified government agency presumed to have properly done its job." American Hoist, supra, 725 F.2d at 1359, 220 USPQ at 770; see Panduit Corp. v. Dennison Manufacturing Co., 774 F.2d 1082, 1096, 227 USPQ 337, 346 (Fed.Cir.1985).
The district court conducted a thorough Graham 7 analysis under Sec. 103 before concluding that the claimed invention at the time it was made would not have been obvious to one of ordinary skill in the art. AMF attacks the district court's findings as clearly erroneous, asserting it compared to the prior art not the claimed invention but commercial and preferred embodiments as representative of the claimed invention. See Jackson Jordan, Inc. v. Plasser American Corp., 747 F.2d 1567, 1578, 224 USPQ 1, 9 (Fed.Cir.1984) (). Those embodiments include a "scoop" on a slimmer hull-shaped board, a skeg, and footstraps. Thus, they argue that the advantages found by the court are attributable to a combination of those design improvements and not to the claimed invention.
The district court did determine that it would have been obvious to replace a kite sail with a fore and aft sail, and to add a second opposed boom. 8 Properly looking to the claimed invention at the time it was made as a whole, as required by Sec. 103, the district court correctly concluded that "the combination of the hand-held wishbone rigging with the universal joint produced a vehicle that performs in a manner previously undisclosed by any of the prior art references before us and, indeed, a vehicle with a performance potential that is even now not yet fully realized." 613 F.Supp. at 948, 227 USPQ at 938.
WSI's expert, Dr. Bradfield, conceded that certain advantages were due to particular added improvements, but he consistently maintained that the overall performance capabilities of the claimed invention were mainly due to the combination of the universal joint and the wishbone rigging. The district court found that testimony credible and AMF has shown no basis on which this court could engage in the normally inappropriate process of substituting a contrary credibility determination for that of the district court.
Before concluding that the combination of the universal joint with the wishbone rigging would not have been obvious, the district court reviewed the objective...
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