Windsurfing Intern., Inc. v. Fred Ostermann GmbH

• Decision Date: 24 October 1985
• Docket Number: No. 81 Civ. 254 (MEL),83 Civ. 1691 (MEL) and 83 Civ. 3774 (MEL).,81 Civ. 254 (MEL)
• Citation: 613 F. Supp. 933
• Parties: WINDSURFING INTERNATIONAL, INC., Plaintiff, and James R. Drake, Intervenor-Plaintiff, v. FRED OSTERMANN GMBH, et al., Defendants. AMF INCORPORATED, Plaintiff, v. WINDSURFING INTERNATIONAL, INC., Defendant and James R. Drake, Intervenor-Defendant. BIC LEISURE PRODUCTS, INC., and Windglider Fred Ostermann, GMBH, Plaintiffs, v. WINDSURFING INTERNATIONAL, INC., Defendant and James R. Drake, Intervenor-Defendant. James R. DRAKE, Cross-Claimant, v. WINDSURFING INTERNATIONAL, INC., Cross-Defendant.
• Court: U.S. District Court — Southern District of New York

613 F. Supp. 933

WINDSURFING INTERNATIONAL, INC., Plaintiff, and James R. Drake, Intervenor-Plaintiff, v. FRED OSTERMANN GMBH, et al., Defendants.

AMF INCORPORATED, Plaintiff, v. WINDSURFING INTERNATIONAL, INC., Defendant and James R. Drake, Intervenor-Defendant.

BIC LEISURE PRODUCTS, INC., and Windglider Fred Ostermann, GMBH, Plaintiffs, v. WINDSURFING INTERNATIONAL, INC., Defendant and James R. Drake, Intervenor-Defendant.

James R. DRAKE, Cross-Claimant, v. WINDSURFING INTERNATIONAL, INC., Cross-Defendant.

Nos. 81 Civ. 254 (MEL), 83 Civ. 1691 (MEL) and 83 Civ. 3774 (MEL).

United States District Court, S.D. New York.

July 15, 1985.

As Amended October 24, 1985.

COPYRIGHT MATERIAL OMITTED

Nilsson, Robbins, Dalgarn, Berliner, Carson & Wurst, Los Angeles, Cal., for Windsurfing Intern., Inc.; Harold E. Wurst, Los Angeles, Cal., David R. Francescani, Darby & Darby, New York City, of counsel.

Davis, Hoxie, Faithfull & Hapgood, New York City, for James R. Drake; James J. Foster, New York City, Spensely Horn Jubas & Lubitz, W. Robert Spensley, Richard H. Zaitlen, Los Angeles, Cal., of counsel.

Willian Brinks Olds Hofer Gilson & Lione, Indianapolis, Ind., for AMF Inc., David H. Badger, Indianapolis, Ind., Richard H. Compere, Chicago, Ill., William R. Golden, Jr., Rogers Hoge & Hills, New York City, of counsel.

Pennie & Edmonds, New York City, for BIC Leisure Products, Inc. and Windglider Fred Ostermann; Brian M. Poissant, Thomas F. Reddy, Jr., New York City, of counsel.

Curtis, Morris & Safford, New York City, for Freeboard Sailing, Inc. and Downwind Corp.; Pasquale A. Razzano, New York City, of counsel.

LASKER, District Judge.

At a social gathering in early 1967 two friends James Drake and Hoyle Schweitzer, then living in California, began discussing the idea of combining the sports of sailing and surfing to create a type of sailing surfboard. The requisite materials were collected in Drake's garage where a makeshift workshop was set up for production. By summer of that year the co-inventors were ready to "launch" their first "sailboard."¹ The craft featured a Bermuda sail with a curved boom on each side of the sail (i.e., a "wishbone" boom) joined by a universal joint to a modified surfboard hull. In March of 1968 Drake and Schweitzer, as co-inventors, filed an application for a United States patent which originally issued in January, 1970. In 1969 Schweitzer assigned his patent rights to Windsurfing International, Inc. ("WSI"), of which he is the Chairman of the Board of Directors. In 1973 WSI purchased Drake's rights in the patent. The patented sailboard is the focus of this dispute.

This litigation involves three consolidated actions relating to the validity, infringement and enforceability of United States Reissue Patent No. 31,167 ("the '167 patent" or "the patent"). All of the cases were tried to the bench in a single trial. In the first action (81 Civ. 254) WSI asserts that BIC Leisure Products, Inc. ("BIC"), AMF Incorporated ("AMF") and Downwind, Inc. ("Downwind")² are manufacturing and selling sailboards which infringe on the '167 patent. In the second (83 Civ. 1691) AMF seeks a declaratory judgment that the '167 patent is invalid, unenforceable on the grounds of misuse and not infringed. In addition, AMF requests the cancellation of WSI's "WINDSURFER" and related trademarks on the grounds that they have become generic. Finally, in 83 Civ. 3774, brought by BIC against WSI, BIC seeks a declaration that the patent is invalid, unenforceable and not infringed.³ BIC and AMF both assert that the patent is invalid because the claimed invention was obvious under 35 U.S.C. § 103 (1982).

For the reasons set forth below we conclude that the patent-in-suit is valid; that each of the claims in the patent has been infringed by the defendants; that WSI has misused the patent; and that the term "windsurfer" is a "common descriptive name."

I. VALIDITY

A. The Claimed Invention

The field of art that includes the claimed invention is stated in the patent to be "the field of ships, particularly sailboats and iceboats, and the field of land vehicle sail attachments."⁴ The patent claims a

wind-propelled apparatus in which a mast is universally mounted on a craft and supports a boom and sail. Specifically a pair of curved booms are arcuately connected athwart the mast and secure the sail therebetween, the position of the mast and sail being controllable by the user but being substantially free from pivotal restraint in the absence of such control.⁵

By moving the hand-held rigging in various directions through the universal joint (which, in turn moves the center of effort ("CE") on the sail relative to the Center of Resistance ("CR") on the hull)⁶ the craft may be steered without the use of a rudder.

Claims 15⁷ and 20⁸ are representative. Claim 15 reads as follows:

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 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.

Claim 20 reads:

Wind-propelled apparatus comprising:

body means adapted to support a user; 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 mounting said mast on said body means, a sail extending in one direction only laterally from said mast, 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;

said body means comprising a sailing-board adapted to support the user on water and in a standing position on either side of said sail while sailing;

said sail having a foot thereof extending from a first corner of said sail, at which said sail is secured to said booms, obliquely downwardly with respect to said booms toward said mast and toward a second corner of said sail which is positioned along said mast;

said booms being secured to said mast above said second corner of said sail.

The '167 patent is a reissue patent based on United States Patent No. 3,487,800 ("the '800 patent") and contains seven claims.⁹

As demonstrated by the representative claims, all of the claims of the '167 patent require the use of both the wishbone rigging and the universal joint. The sole issue raised by BIC and AMF with respect to the validity of the patent is whether the combination of these two elements would have been obvious in 1967.¹⁰ See 35 U.S.C. § 103 (1982).¹¹

Whether the integration of the hand-held wishbone rigging with the vehicle swivel mast attachment is obvious as a matter of law depends upon several factual determinations: "(1) the scope and content of the prior art, (2) the differences between the prior art and the claimed invention, (3) the level of ordinary skill in the pertinent art, and (4) additional evidence, which may serve as indicia of non-obviousness." Environmental Designs v. Union Oil Co., 713 F.2d 693, 695 (Fed.Cir.1983), cert. denied, ___ U.S. ___, 104 S.Ct. 709, 79 L.Ed.2d 173 (1984) (Markey, C.J.); accord Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 693-694, 15 L.Ed.2d 545 (1966); 35 U.S.C. § 103 (1982).

B. The Prior Art

The parties agree that the art in this case, as stated by plaintiff's expert, Dr. Samuel Bradfield¹² is the design and construction of sailboards, surfboards and iceboats.¹³ Further, with one exception, discussed below, there is no dispute as to which items of prior art are "reasonably pertinent to the particular problem with which the inventor was involved", Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1535 (Fed.Cir.1983), i.e., within the scope and content of the prior art. The many items of prior art in this case are demonstrated in numerous technical articles, other United States patents, motion picture videos, still photographs, diagrams, drawings and a model of the sailboard of Kenneth Darby. However, the most significant items of prior art are (1) the article in the August 1965 issue of Popular Science magazine entitled "Sailboarding: Exciting New Sport" written by Newman Darby;¹⁴ (2) the W.F. Crosby article printed in the August 1935 edition of Rudder Magazine entitled "The Wishbone Rig On Small Boats;"¹⁵ (3) an article contained in a catalog published by the Herreshoff Manufacturing Company of Bristol, Rhode Island in the late 1930's entitled "The New `Wishboom' Rig And Sail Plan;"¹⁶ and (4) "Yacht Sail Research," a paper presented by Halsey Herreshoff at the November 1966 symposium conducted by the Massachusetts Institute of Technology.¹⁷ United States Patent No. 3,057,316 owned by J.H.R. Hansen¹⁸ and United States Patent No. 3,349,741 owned by R.A. Herbst,¹⁹ disclosing dinghy-like sailboats, are also noteworthy although they are pertinent to a lesser degree.

BIC and AMF also assert that a "free-sail" sailboard created by ...