In the case of Defendant, Inc., INDUSTRIES FURNITURE BROYHILL versus Plaintiffs, Company, Furniture Hill Hickory and Corp., Furniture Riverside INC., BENCHCRAFT, (1988) 1190 Supp. F. 681 No. A. Civ. WC-143-D-D 84.
Mississippi is a federal court located in the northern and western districts of Mississippi.
14th March, 1988.
The plaintiffs from Illinois include Chicago-based law firms Chestnut & Lungmus Fallon, Tilton, and Hoffman B. Richard, as well as Chestnut W. John from Arkansas. Smith & Maurras, Smith Young, and Harper A. Don represent the plaintiffs from Louisiana, specifically New Orleans. Kreiger & Kimball, Hewitt & Gambrell Pravel, Jr., And Garvey C. Charles are the law firms from Texas, based in Houston. Krieger & Miss. Booneville, Sr., And Keenum D. Thomas are the plaintiffs’ representatives from Mississippi.
Floyd A. Gibson, Blas P. Arroyo, Bell, Seltzer, Park & Gibson, Charlotte, N.C., Dan W. Webb, Tupelo, Miss., Represent the defendant.
MEMORANDUM OPINION.
DAVIDSON, Judge of the District.
The plaintiffs have challenged the validity of a certain design patent issued by the United States Trademark and Patent Office. In response, the defendant, who has been accused of patent infringement by the three plaintiffs, has countersued and invoked the jurisdiction of the court under sections 2202 and 2201 of the United States Code, as well as section 1338 of Title 28 of the United States Code.
In accordance with Federal Rule of Civil Procedure 52(a), the court hereby presents its factual determinations and legal conclusions. This includes the pretrial memoranda, suggested factual findings and legal conclusions, as well as any additional information provided. After carefully reviewing the evidence presented during the trial, this case was heard by the designated United States District Judge, without a jury, in Oxford, Mississippi, subsequent to the issuance of a pretrial order.
FACTUAL FINDINGS I. BACKGROUND A. The Parties.
Benchcraft, Inc. (“Benchcraft”) is a corporation incorporated in Delaware and its main office is located in Blue Mountain, Mississippi. Riverside Furniture Corp. (“Riverside”) is a corporation incorporated in Arkansas and its place of business is in Fort Smith, Arkansas. Hickory Hill Furniture Company, also known as Crestline Furniture Company (“Crestline”), is a corporation incorporated in North Carolina and its place of business is in Fulton, Mississippi. Benchcraft’s business involves the production of upholstered furniture, which includes a set or item known as style 4560. Riverside also produces upholstered furniture, including a set or item known as style 9553. Crestline manufactures upholstered furniture, including a set or item known as style 54737 and another set or item known as style 1201.
Benchcraft, Riverside, and Crestline have consistently produced and marketed the aforementioned furniture styles since July 3, 1984. The defendant’s counterclaim identifies each of the three plaintiffs as counter-defendants.
Style 7663, referred to as a set or collection, comprises bookshelves, low tables, side tables, or “case goods” and occasional furnishings, manufactured by Broyhill. Broyhill Furniture Industries, Inc. (“Broyhill”), a North Carolina corporation headquartered in Lenoir, North Carolina, owns United States Patent Des. No. 274,485 and is the defendant/counterplaintiff in this case.
B. The Patent in Question.
In July 1984, the defendant Broyhill, an employee named A. Gary Huffstetler, assigned his patent rights to Huffstetler’s exhibit (“PTX-1”). The application for the patent suit was filed in May 1983, and subsequently issued in July 1984. This action relates to the validity of the United States patent, also known as the “485 patent” or the “patent in suit.”
PTX-1. “The decorative pattern for a chair, as demonstrated and explained.” The assertion of the patent is: Illustrations 1 and 2 of *1194 the patent in the shape of a couch and loveseat depict a set of cushioned furniture for which the patent in question reveals. The patent in question reveals a decorative pattern for a set of cushioned furniture.
C. Source of the Patent in Question.
Gunter and Kepley, specifically Broyhill’s president Mr. Carl E. Gunter (“Gunter”) and vice-president Mr. Ken Kepley (“Kepley”), visited London, England in May 1982 to attend the Earls Court Furniture Show. Some events that took place in mid-1982 were influenced by this lawsuit and the patent.
In the late 1980s, Gunter and Kepley spotted a furniture set in the Victorian style, produced in Italy by a man named Zampa Bruno (“Zampa”) at this exhibition. Ideal Furniture Co., Ltd.’S Joseph Alfred Spicer (“Spicer”) purchased the suite, referred to as the “Venezia suite”. In a sworn statement, Spicer mentioned that he exhibited the furniture at the Earls Court Show in 1982. Zampa, in his testimony, stated that he likely shared pictures of the Venezia suite with potential customers as early as 1977 or 1978, although he couldn’t recall the exact date.
Mr. Gunter testified that when he first saw the suite Venezia, he realized that it was not appropriate for the United States market. However, he was interested in certain aspects of the general shape and aesthetic of the suite, which triggered his interest in photographing it with his miniature Minox camera, often carried along with him.
In London, Gunter, an employee of Broyhill, also instructed a marketing entity of Broyhill in the U.K., England, to acquire a piece of the Venezia suite for shipment to Broyhill’s plant in the United States. Gunter testified that he believed certain features of the Venezia suite could be successfully marketed in the United States, and that the new upholstered furniture design could be translated into a marketable product.
Gunter recommended that Huffstetler focus his efforts on creating a design that incorporated the described features. Gunter and Kepley provided a detailed account of the Venezia sofa, including the exposed wood outline on the back, the “T-cushions” on the seat, and various phrases like “barrel back,” “pub back,” and “hand-tufted back” to vividly describe the back treatment. They gave a general overview of the Venezia suite to Huffstetler and Stuenkel, discussing its shape and height. Gunter stated that he informed Huffstetler about a product they had seen at the Earls Court Show, suggesting that it would be a desirable and potentially successful addition to Broyhill’s manufacturing. Upon returning to Broyhill’s North Carolina plant, Gunter and Kepley met with Huffstetler and Stuenkel, both furniture designers in Broyhill’s design department, to convey what they had witnessed at the Earls Court Show.
Huffstetler and Stuenkel later discarded these early sketches, which were deemed unsatisfactory. Gunter and Kepley provided suggestions and critiques for their efforts. Huffstetler and Stuenkel showed preliminary sketches to both Gunter and Kepley. In the final design, that specific part would be depicted as envisioned in sketches of various sections of an upholstered sofa created by Huffstetler. Huffstetler promptly produced a design as requested. Gunter and Kepley described to him and Stuenkel a “version” of the sofa. He clearly understood that he was to create a “version” of the sofa based on the description provided by Gunter and Kepley, but in 1982, Huffstetler had no knowledge of what the term “barrel back” meant, as stated in his trial testimony.
Huffstetler testified that the photographs Gunter had never been seen before by him until that time when developing for York New. However, Kepley found Huffstetler’s design to be rather satisfactory, not “crisp” as desired, and with some problems, especially with rough sketches and wings on his piece that were “drooping.” Kepley used the photographs to clarify or verify Huffstetler’s earlier rough sketches and to address the problems with the wings on his piece. Additionally, Huffstetler testified that he added photographs that showed the exposed wood trim around the nail trim on the panels of his sofa arms, in two rows of identical thirteen, seen by Venezia. This was the first time Huffstetler had seen these photographs by Gunter. However, Huffstetler testified that his design was essentially complete.
In the autumn of 1982, the 7503 was initially made available for purchase in the conventional category. Broyhill labeled the Model H-40 sofa piece as Style No. 7503 (“the 7503”) when it was delivered as a sample from their sample shop on July 30, 1982. The piece also featured a dark wood trim and was upholstered in a thick jacquard fabric. Broyhill designated Huffstetler’s original design as Model No. H-40, which was a somewhat formal furniture piece with tufts in the kidney roll and a plain or straight skirt with box pleats. Stuenkel then transformed Huffstetler’s completed design sketch into a full-sized engineering frame drawing, which was sent to Broyhill’s sample shop for the construction of a sample. Huffstetler presented his finished sketch, PTX-4, to Kepley, who expressed that Huffstetler had finally captured the essence of the desired piece by Gunter and had indeed “nailed it.”
Currently, the style of furniture that is very popular continues to be the country look that was developed since the suggested version “country” by Gunter and Kepley, Waggoner. Therefore, Broyhill raised the price of the sofa 7503 beyond the usual price range and the piece was considered too formal and had a jacquard fabric application, according to Waggoner’s opinion. Other sales personnel were also dissatisfied with the look of the sofa 7503 and Larry Mr. Waggoner, a regional sales manager for Broyhill, testified at the trial in 1982.
Huffstetler and/or Stuenkel did not choose the 7663. They had no involvement in selecting the wood type or fabric used for the 7663. Huffstetler and/or Stuenkel designed the 7663, PTX-44, and PTX-45. The 7663 sofa was upholstered in a country print fabric called PTX-78. The exposed wood was changed from gum to light oak with a lighter finish. Instead of the traditional box pleat skirt, a gathered or shirred skirt and kidney roll effect treatment were used. Ruffled bolster pillows were added. The country version of the 7503 was named Model No. H-40A and assigned Style No. 7663 (“the 7663”). Based on Huffstetler’s sketches, necessary changes were made to create a “country” look for the 7503.
Broyhill discontinued this style and the sales of the 7503 were not notable. The possibility of obtaining a patent on its design was apparently what caught everyone’s attention and contributed to its popularity. According to Mr. Gunter’s testimony, the sales of the sofa 7663 “took off” when Broyhill introduced it to the market in August 1982. Customers immediately embraced it and the chair, loveseat, and accompanying sofa 7663 were also introduced during the pre-market phase.
PTX-2. The patent application in Figures 1 and 2 replicated essentially the design illustrated in the brochure, which was given to a patent drafter. PTX-46 and PTX-48. Broyhill’s parent company, Interco, serves as the in-house legal counsel for Mr. Donald J. Fitzpatrick (“Fitzpatrick”), to whom a brochure with a picture portraying the 7660 collection (the couch and loveseat) was dispatched. *1196
II. ENFORCEMENT OF THE PATENT A. Activities of the Patent Attorney.
In the autumn of 1982, the initial communication with Fitzpatrick was initiated by Mr. E.D. Beach, the finance vice-president for Broyhill. He stated in his deposition that he was the first Broyhill official to reach out to Fitzpatrick regarding a patent on the 7663 design. Mr. Beach acts as the intermediary for Broyhill and directs any patent-related inquiries or issues to Fitzpatrick. Fitzpatrick maintains a designated point of contact for every subsidiary of Interco, including Broyhill. Since around 1980, as stated in Mr. Fitzpatrick’s testimony during the trial, he has been responsible for all patent and trademark matters for Interco and its subsidiaries.
To prepare the patent application, Fitzpatrick would simply communicate with either his liaison person or the actual inventor to gather the relevant disclosure documentation required. In 1982, he had not established a formalized process to become aware of an inventor’s understanding of the prior art related to his invention. However, since then, Fitzpatrick has created a procedure to collect such information, which includes a comprehensive disclosure form for prior art.
During his 15 years of prior patent experience, Fitzpatrick testified that he had never prepared a patent design application. He became employed as an attorney for patent and trademark at Interco in February 1980. From 1979 or 1980 until June 1974, he was employed as a trademark and patent attorney at Monsanto. In 1970, he went to work for Airco Inc. When he graduated from law school in 1967, he was immediately employed as a patent attorney at Bethlehem Steel Inc. Fitzpatrick testified that his experience in patent and trademark law began almost immediately upon graduation from law school in 1967, when he was employed as a patent trainee at Bethlehem Steel Corporation.
When Fitzpatrick received certain relative information disclosures regarding the desired patent design 7663 in late 1982, he forwarded the same to Edna Bloch, in order to obtain the PTX-54 patent. Once he obtained the patent sketches, Fitzpatrick prepared the patent application and testified that he did not know whether Huffstetler or Beach understood the legal effects contained in the various oaths in the application.
Fitzpatrick did not consult or meet directly with any declarations contained therein prior to filing the application. He testified that he had no prior knowledge of the patent application, except for one telephone conversation. He also testified that this was his first experience with a patent suit. Although he signed the oaths, he admitted that he did not fully understand their legal significance or meaning. He also testified that he had no prior knowledge of patent procedures.
Fitzpatrick never learned about any other prior art or photographs regarding Gunter before the May 1983 filing application. He also did not discuss any information concerning prior art relative to the art prior 7663. Fitzpatrick never assumed or imputed them with the experience or knowledge level he had as an employee or official at Broyhill. He also never testified whether he understood the declaration and patent application, whether there was any prior art, or whether he visited Broyhill’s previous patent attorney in 1981. Fitzpatrick reviewed some files of pending patents and issued design patents, approximately 40 * 1197, in Greensboro, North Carolina, with Mr. Rhodes, a patent attorney at Broyhill.
During the Fall Market in October 1983, several manufacturers, including Riverside and Benchcraft, were selling and displaying groups of upholstered furniture that closely resembled the design of Broyhill’s 7503 sofa. Apparently, no other manufacturer offered a similar style for sale. The Defendant’s exhibits (“DX-7, DX-10, and DX-14”) showcased this style.
PTX-57. Fitzpatrick additionally mentioned that Crestline’s sale of its Style No. 1201 couch to J.C. Penney & Company, to whom Broyhill had previously sold a version of its 7663, was deemed an unfair competition. Consequently, Fitzpatrick also informed Crestline about Broyhill’s pending application and reiterated his claim of infringement. By December 1, 1983, Broyhill had also become aware of a Crestline group that closely resembled the 7663 style. PTX-55 and PTX-56. Fitzpatrick informed these manufacturers through a letter about Broyhill’s pending patent application and expressed that Broyhill considered these replicas a “blatant act of infringement”, as well as an unfair competition.
Crestline argued that the patent issued until the pending application could not be infringed, and Broyhill only received a response to the notification of the pending patent application.
After being notified that he was allegedly infringing on these acts, Fitzpatrick prepared a petition to the Patent and Trademark Office (“PTO”) requesting special consideration for accelerating the patent process for several reasons.
Professor Chisum testified that the annual updates of the MPEP are available at a nominal cost. The MPEP is annually updated to reflect changes in the interpretation of patent law made by the PTO. According to Professor Chisum’s testimony, the MPEP is universally utilized by patent attorneys and PTO examiners in their everyday practice. However, it is important to note that the MPEP is neither a regulation of the PTO nor a binding law. One basis for making a special petition is set forth in section 708.02, § II. Of the MPEP, which deals with allegations of infringement against a pending patent application. Patents are reviewed in chronological order based on their filing date, as stated in section 1.101 of the C.F.R. 37. (1986).
PTX-52. Around October 18, 1983, Russell delivered his search findings to Fitzpatrick. Fitzpatrick enlisted the assistance of Mr. Howard E. Russell to carry out a search of the existing knowledge relevant to the 7663 design, which he intended to patent by filing a Petition to Make Special. PTX-2. On March 1, 1984, the Petition to Make Special was approved upon reconsideration. PTX-2. Initially, on January 3, 1984, his Petition to Make Special was rejected because he neglected to include the necessary fee required for such special consideration, likely due to Fitzpatrick’s lack of awareness of the current regulations at the PTO. Consequently, Fitzpatrick acknowledged during the trial that he might have relied on a 1973 edition of the MPEP when preparing his Petition to Make Special for the patent in question in November 1983.
[8] During the prosecution of his patent suit, Fitzpatrick did not inquire about prior art or references that may have been used as derivation or inspiration for Huffstetler’s supposedly novel design “verify and clarify.” He also testified at trial that he did not have any direct communication or interview with Huffstetler, nor were any representations made in his filed affidavit based on such communication. Therefore, Fitzpatrick was not aware of any prior art references made by Huffstetler. Additionally, the attorney prepared and signed the affidavit, which set forth the elements of Huffstetler’s supposedly novel design, namely the combination of back tufted hand and exposed portion of wood. [7]
Huffstetler testified at the trial that he considered Gunter’s photographs to be material to the design development. He also testified that Fitzpatrick never explained to him the effect and meaning of the oath he signed on both the original patent application and the Special Petition to Make. Huffstetler testified that he might have easily added any prior art references or other photographs of Gunter in the form of patents, had he seen them before filing with the PTO. He also testified that Fitzpatrick did not provide him with a copy of the “A Amendment” styled document, which was the most relevant in the prosecution history of the patent.
B. The Current Legal Dispute.
Broyhill informed all the manufacturers, including the three plaintiffs, about their ongoing accusation of infringement and the granting of the patent, which happened on or around July 9, 1984. The patent in question was officially granted on July 3, 1984.
Furthermore, apart from the three plaintiffs, a minimum of eighteen manufacturers have replicated or replicated the Broyhill design portrayed in the patent under consideration. Numerous of these manufacturers have resolved their disputes with Broyhill, consenting to cease the production of the accused furniture collections and providing compensation for alleged previous violation. Thus far, Broyhill has not authorized any furniture manufacturer to continue producing the patented design. Mr. Gunter provided testimony regarding this matter.
The three complainants persisted in selling their accused sets of furniture until and during the trial of this lawsuit. Broyhill promptly lodged its counterclaim alleging deliberate violation by the three complainants. On July 17, 1984, the three complainants initiated this legal action seeking a declaratory judgment, arguing that the ‘485 patent is void and cannot be enforced, thus claiming that they did not infringe it.
The plaintiffs argue that the patent infringement lawsuit is invalid, unenforceable, and based on conduct that is inequitable in the prosecution of the patent. They claim that the patent should be considered invalid and unenforceable because the patented design was not truly invented by Huffstetler himself and was obvious due to prior art references. Additionally, they assert that the patent is invalid based on several grounds, including obviousness and prior art.
III. BACKGROUND AND ORIGIN OF THE PATENT UNDER DISPUTE.
These are the factual findings that will enable the court to ultimately reach its legal conclusion on the question of the validity and obviousness of the patent. According to the relevant article at 556 Ed. 15, 693 Ct. S. 86, 17 Id., A determination of obviousness requires an analysis of the differences between the prior art and the issue of obviousness at the ordinary level of skill in the art. Deere John v. Graham, under 103 U.S.C. 35, held that a determination of obviousness requires an analysis of the differences between the prior art and the content and scope of the prior art. As set forth in the allegations put forth by the plaintiffs, the court must make factual findings in order to rule on the plaintiffs’ claim.
The prior art.
35 U.S.C. § 102 declares that prior art can encompass other patents, published materials, and actual furniture pieces that were publicly known or in public use or sale more than one year before the application’s filing date. The court adopts the perspective that prior art should be interpreted as any tangible form of evidence that the PTO can legitimately rely on in patent cases to support its rejection of the patent and assess the relevance of these matters as prior art to the patent in question. During the trial, the parties presented various alleged prior art articles to the court, which were not submitted to or considered by the PTO during its examination of the patent before determining the scope and content of the prior art. Refer to Borden, Inc. V. Occidental Petroleum Corp., 381 F. Supp. 1178 (S.D. Tex.1974) for more information.
The court determines that the following are relevant and significant prior references concerning the patent in question.
1. The Zampa Venezia Advertising Image Photograph.
Spicer and Zampa gave evidence to support the plaintiffs’ claim that PTX-9 meets the criteria of being a printed publication according to § 102(b). The only evidence presented during the trial regarding this matter did not originate from individuals testifying in person. The plaintiffs contend that the advertisement image of the Zampa Venezia photograph, PTX-9, can be considered as prior art under 35 U.S.C. § 102(a), § 102(b), or both.
Broyhill argues that the plaintiffs must assume the evident and convincing responsibility of demonstrating their case, a responsibility that cannot be fulfilled by this spoken testimony alone, lacking the necessary, concurrent, collaborating written evidence.
(1) In the case of Dempster Brothers, Inc., 315 F. Supp. 68, 81-82 (E.D.Tenn.1970), it is clear and strong evidence if there is sufficient testimony that is corroborated and convincing, either through other records or contemporaneous correspondence. (2) The court notes that oral deposition testimony is probably not the most favored means of proving the prior existence and status of a printed publication under Section 102(b) and 102(a) of the art.
§§ 102(a) and 102(b).[9] The plaintiffs have met their burden of convincing and clear evidence by showing the publication of PTX-9 as a printed photograph ad in the Venezia Zampa slick. These facts have been considered in their entirety by the court to persuade their case. Mr. Spicer testified that he purchased the suite from Zampa, which was photographed by him at the Show Court Earls and displayed on behalf of Venezia. He also offered invoices as evidence of his purchase of the Venezia suite, as early as 1977 or 1979, and probably in 1980. Additionally, Zampa testified that he distributed copies of the suite to prospective customers.
The Zampa Venezia Couch.
The patented design meets the criteria of prior art to the patented design, and the Zampa Venezia couch was present for over one year before Huffstetler’s claimed innovation. The identical couch shown in PTX-9 was undoubtedly the couch observed by Gunter and Kepley. Huffstetler could potentially produce a “variation” of the couch after Gunter and Kepley provided a detailed description of it. Gunter and Kepley observed the Venezia collection at the Earls Court Show in London in May 1982, and Gunter captured a photograph of the couch.
3. The Gunter Pictures.
Huffstetler argued strenuously at trial whether Gunter’s photographs could properly be characterized as a “publication” of prior art, as the court finds that the printed publications in the field of furniture design, which comprise photographs of certain furniture designs, constitute sufficient qualification for the meeting of the essence of design. The court’s opinion is that the overall external appearance of the furniture design is given by the ornamental photographs printed in the publications, which must be something in writing or at least a modicum of information. The photographs do not meet the usual and general definition of a printed publication, as they only suggest the presence of prior art.
At the trial, Mr. Eric Stuenkel, who had been unable to see the photographs before, testified that he had worked closely with Mr. Huffstetler, the draftsman who developed the design of the patent suit, to create an acceptable sketch incorporating the design of the sofa they had seen at Messrs. Kepley and Gunter’s Show Court in London.
The Benchcraft 4540.
Section 102(b) of the U.S.C. Under art prior is 4540, which the court finds. Thus, PTX-19 and PTX-18 see. The patent suit for the filing date is prior to one year more than April as early as 1982. PTX-15, the Benchcraft sofa in the style of 4540, was offered for sale and manufactured before that, as admitted by Broyhill.
5. Miscellaneous Preceding Knowledge.
The Broyhill furniture styles, including (PTX-33) 3973, (PTX-28) 7253, and (PTX-26) 7233, showcase the use of ruffled-edge pillows, shirred or ruffled skirts, and other decorative elements. In addition, the Colonial Conover Catalog on page 8 depicts the country and traditional looks achieved by interchanging the styles 7663 and 7503. These alternate skirt treatments, as shown in the catalog, were well-known in the furniture industry and were readily admitted as trial items by Huffstetler.
Furthermore, the prior art also comprises the different patents and publications referenced to the PTO while prosecuting the patent in question, which encompass:
A lawsuit has been filed regarding the patent, derivation, content, and scope of the Loveseat No. 740, which was featured in the 9-page catalog from 1973 by the company K-Chair. Another Loveseat No. 38815 was featured in the 5-page catalog from 1976, volume 20, by Crestline Nash Brooks. Additionally, there are several other designs that are relevant to this case, including Des. 256,634, Des. 253,262 by Eisen, Des. 250,864 by Al. Et Nash, 249,754 by Winrow, Des. 238,634 by Kaplan, Des. 237,435 by Berth, Des. 97,253 by Tavis, Des. 89,728 by Anderson, Des. 86,820 by Faris, and Des. 76,862 by Graham.
35 U.S.C. § 103, as well as whether the knowledge gained from the previously mentioned references in the field would make the patented design easily predictable. This determination requires the court to assess the distinctions between the patented design and the previous works, as well as the level of expertise possessed by a hypothetical “person having ordinary skill in the art”. The pertinent investigation in the present case is whether the previous works would make the patented design evident to a furniture designer with average expertise. The previous works must be evaluated based on what they alone would instruct, propose, or make obvious to an imaginary individual with ordinary skill in the relevant field of the patent’s subject matter. The extent and substance of the previous works relevant to the patent being contested encompass various sofas with different designs, each incorporating one or two of the design characteristics of the patented design.
1. Contrasts Between Prior Art and Patented Design.
Before the purported creation of the patented design, all these design aspects or characteristics were already familiar in the field of furniture design. The patented design combines different design characteristics and elements, blending Victorian and country elements. Some of these include the tall back of the 7663 design, the curved wing treatment on the sofa’s arms, the gathered skirt and bolster pillows, the use of lightweight “ditsy” print cotton fabric, visible wooden arm stumps and back rail, and a partially attached back.
Huffstetler testified that he invented one aspect of the patented design of a kidney-shaped roll, which had never been seen in any style of furniture before. Rolls of kidney-shaped design were not known in the industry and did not appear on traditional or contemporary pieces prior to Huffstetler’s invention. The Plaintiffs argue that a kidney-shaped roll may have appeared on a piece of furniture from another country. Broyhill argues that the distinctive feature of using a kidney-shaped roll was not known in the furniture design field prior to Huffstetler’s invention.
The patented design distinguishes itself from the prior art by incorporating a shirred kidney roll on a country style piece, in addition to known features. The unique aspect of this design is the combination of these elements. It is worth noting that the prosecution history of the patent does not indicate the shirred kidney roll as a distinctive feature.
PTX-2. “Introduces a progressive development in the field of design for such items by showcasing a fresh and decorative look that is not even remotely proposed by the existing body of work.” Fitzpatrick further claims that the design, which combines the exposed wooden section and the hand tufted back, is a characteristic that is not indicated by the previous art. In his Amendment A, submitted to support the Petition to Make Special, Mr. Fitzpatrick outlines his arguments.
[12]. The feature that distinguished the patented design from prior art was identified as the novel roll kidney shirred, which was clearly described in the patent’s description. Fitzpatrick, the expert witness testified that Shefte Dalbert, the patent law expert, could ask the PTO to include the clause “characterized by” in the description of the patented design. It was pointed out by Broyhill’s own expert that this feature was not highlighted as a key feature of the patented design. Similarly, the PTO examiner did not point out this feature as a key feature in Amendment A of the design patented. Even though Broyhill’s witnesses focused on the novel and distinctive feature of the roll kidney shirred, it was not considered as a key feature of the patented design.
2. Level of Competence of Person of Average Skill in the Field.
The court determines that an individual with average proficiency in furniture design would possess, at minimum, a high school education and certain minimal instruction or familiarity with designing in general, along with a fundamental artistic perception or capacity. This conclusion is drawn from the testimonies of two expert witnesses specializing in furniture design, namely Mr. Roland Carter for the plaintiffs and Professor Vincent Foote for the defendant. Professor Foote, an instructor at North Carolina State University’s School of Design, attested that the person of average proficiency would have also completed an apprenticeship program, either through further education beyond high school or through rigorous on-the-job training.
Carter, Mr., Who identified himself as a freelance furniture designer with over 36 years of experience in the field of furniture design, also testified that the goal of an ordinary designer is to create a “saleable” item, which is already available in the market but with a different twist or interest to attract the public. Additionally, Carter testified that a person with ordinary skills in the furniture design area should possess the ability to determine whether a particular piece of furniture is aesthetically pleasing and why it is pleasing.
3. Clarity of the Design to Individual of Average Skill Level.
In the field of furniture design, a person with average expertise at the time of invention would have considered the content of the ‘485 patent to be clearly evident in its entirety. The distinctions between the patented content and the existing art are such that when the aforementioned references from the prior art are merged, specifically the Zampa Venezia design and the Benchcraft 4540, along with the rustic aesthetic of the Broyhill 7233 and 7253, the plaintiffs argue that the subject matter would have been apparent.
To illustrate his opinion, Carter prepared a set of “overlay” drawings showing a direct progression in the design patented, considering what one would consider obvious when taught by the prior art. These drawings suggest combining the back of the Benchcraft 4540 sofa and the Venezia sofa, alleging an inherent design patented.
According to Carter’s testimony, the patented design would result in a “organic progression” of the modifications demonstrated by Carter. Broyhill’s style 7233 (PTX-26) similarly indicates the use of wooden appliqué on an exposed wood rail, as proposed by Carter. Additionally, Carter recommended replacing the elaborate carved back rail on the Venezia with an appliqué, substituting the exposed legs of the Venezia sofa with a skirt treatment, and extending the length of the Venezia sofa for the American market, all of which would have been readily apparent to an average individual with expertise in the field.
According to the plaintiffs’ argument, the acknowledgment by the inventor of the resemblance between his design and the 4540 style is proof of someone imitating his design of the 7663. The mention of Huffstetler’s remark when he initially saw the Benchcraft 4540 in either October or November of 1982 is also brought up.
The designer should not rely on ordinary skills in art and should instead strive to create a different and new design by combining or modifying existing art designs. According to Foote, there is no suggestion that any prior art designs should be incorporated or modified, as he found no flaws in prior art. Foote further testified that there is no suggestion to combine elements or features of country and Victorian style furniture in the patented design. Foote stated that the incorporation of the patented design should not be obvious to an ordinary designer in the art. The patented design incorporates elements that make it completely different and unique from prior art designs. Foote testified that there is no suggestion to combine elements or features of country and Victorian style furniture in the patented design. According to Foote, there is no suggestion that any prior art designs should be incorporated or modified, as he found no flaws in prior art.
The alleged invention of Huffstetler must be considered as prior art in determining whether there are any non-obvious differences in the design that is patented. The court must ascertain whether, at the time of the invention in 1976, the design would have been obvious to an ordinary designer of skill in the art. The court should not utilize hindsight to hold that the design is obvious now because it was not obvious at the time of the invention. Please see Blessings Corp. V. Clopay, 422 F. Supp. 1312, 1321-1322 (D. Dela. 1976) and Application of Corp., 86 F.2d 579 (C.C.P.A. 1978) for more information.
The distinct characteristics of the country style of furniture do not suggest any obvious combination of the two styles. When considering the prior art alongside the patented design, one could find that the patented design is obvious with the use of hindsight, which is impermissible. The court’s opinion fully sets forth its conclusions in the law, stating that the unique combination of Victorian and country elements in one piece of furniture renders the patented design non-obvious as a whole. (Fed.Cir.1987) 1411 F.2d 835, aff’d, 915 Supp. F. 654, Inc., Co. Manitowoc v. Corp. FMC. The court’s opinion fully sets forth its conclusions in the law, stating that the unique combination of Victorian and country elements in one piece of furniture renders the patented design non-obvious as a whole. (Fed.Cir.1984) 1548, 1541 F.2d 740, Inc. Purchasing, Central v. Inc., Co. Mfg. Peterson Cf. The court’s opinion fully sets forth its conclusions in the law, stating that the unique combination of Victorian and country elements in one piece of furniture renders the patented design non-obvious as a whole. (Fed.Cir.1984) 1548, 1541 F.2d 740, Inc. Purchasing, Central v. Inc., Co. Mfg. Peterson Cf. The court’s opinion fully sets forth its conclusions in the law, stating that the unique combination of Victorian and country elements in one piece of furniture renders the patented design non-obvious as a whole. (Fed.Cir.1984) 1548, 1541 F.2d 740, Inc. Purchasing, Central v. Inc., Co. Mfg.
C. Secondary Factors to Consider (Objective Indicators of Non-Obviousness) 1. Market Achievement.
Each week, around 250 couches and roughly 500-550 overall items were purchased by the 7663 frame at its highest point. A “successful” furniture frame that sells well could sell about 200 to 250 items per week in the couch, loveseat, and chair categories, according to Mr. Gunter’s statement. The introduction of the 7663 couch[15] resulted in almost instant commercial triumph, as confirmed by Broyhill’s witnesses. The undeniable testimony attested to the impact of this achievement.
From 1982 until now, the patented design has consistently enjoyed commercial success. However, after a period of two to three years, it tends to become commercially unproductive and reaches its peak in terms of style. This average “life” span of furniture design was confirmed by both plaintiffs’ and Broyhill’s witnesses. Furthermore, the witnesses testified that this is generally the case for the design.
Broyhill pointed out that they only need to sell 25 units per week to maintain their product line. According to Mr. Gunter’s testimony, during the September-October period in 1987, the average weekly sales of the group 7660 were still 401 units, with a total of 7660 units sold. The Plaintiffs claimed that the accused groups sold around $27 million worth of products between December 31, 1986, and July 1984. In contrast, Broyhill, who embodies the patented design of the group 7660, has sold more than $30 million worth of products. It is estimated that the group 7663, which is probably one of Broyhill’s largest selling frames, sold 7663 units.
The plaintiffs argue that factors such as price, non-design factors, fabric material, color stain wood, and print are responsible for the commercial success of the patented design. They claim that the success of group 7660 is directly attributable to the merits of the patented design, including its projected pleasing appearance, overall shape, and design. They also argue that Broyhill cannot attribute the commercial success solely to factors other than these, as the design and merits of the patented design play a significant role.
Factors that may impact a consumer’s choice to buy a specific furniture item, as revealed during the trial, include the statements of Mr. Gunter in favor of the defendants and Messrs. Hugh McLarty, Keith Franklin, Lee Corson, and Norman Waxman in favor of the plaintiffs.
1) Fabric Application (i.E., The type and shade of fabric used on the internal structure).
Mr. Waxman, who has 28 years of experience in the furniture industry and was working as the Chief Operating Officer for Corson Furniture Industries during the trial, stated that fabric is the primary factor driving furniture sales. He testified that companies or designers who are able to effectively combine fabric with frames are the most prosperous in the furniture industry.
The primary and most important motivator for buyers is the fabric, as Mr. Corson testified that a strong frame design can be “killed” by a bad fabric, while a weak frame design can sell well by adding good fabric.
Mr. Corson testified that sales of country style pieces accounted for approximately 63 percent of the total fabric sales. The fabric print, known as “ditsy” cotton PTX-78, was a popular choice for many other country style frames. Additionally, the blue natural and blue Crestline fabric print was successfully sold by Broyhill and imitated or copied by the plaintiffs, who also sold the design under the patented pattern called “Memories”.
2) Wood Preservation (i.E., Type of wood and coloring applied to the structure).
The triumph of the 7663 couch contributed to the implementation of the wood treatment, as determined by the court. The patented design, which employs oak wood and a mild stain, achieved greater commercial triumph in comparison to the 7503. Broyhill confesses that the 7503, which employed a darker wood stain and darker wood species, experienced minimal commercial success. According to Mr. Carter’s testimony, lighter wood stains and lighter wood species are indicative of country styles. Mr. Gunter believes that the disparity in wood used between the 7503 and the 7663 was accountable for the triumph of the 7663.
3) Price.
Mr. Corson and Mr. Gunter testified that the furniture industry is highly competitive and economically challenging for companies due to the high fixed costs involved in furniture production. They noted that the overall success of a company can be affected by the price of a particular group or piece of furniture, as the industry is price-sensitive and lowering prices can be difficult.
Gunter explained that the highest-priced sofa would be considered at the lowest end of the price range, and he testified that the group of Broyhill sofas, sold as the “low-side” in the upper quadrant of the price range, retailed for $799-$899.
Mr. Corson testified that the commercial success of Broyhill’s 7660 group was greatly influenced by the pricing. The plaintiffs argued that Broyhill’s higher prices hindered their sales, but Mr. Corson expressed his opinion that this was not the case. He stated that the average price for marketable furniture pieces is usually around $599, with a range of $399 to $699. He also mentioned that other mass merchandisers such as Ward, Montgomery Company, and J.C. Penney have similar price ranges. Mr. Corson further testified that the accused copy of the 7663, DX-11, PTX-67, and 54737 styles were sold for approximately $699.
4) Design of the Frame.
Mr. Gunter’s testimony indicated that the commercial success of the 7663 can be attributed primarily to its overall design. Along with Professor Foote, he mentioned that he regarded the incorporation of fabric application as an integral aspect of the patent’s overall design.
Gunter explained that the choice of fabric for the application of the patented design is somewhat influenced by or dependent on the frame design. Gunter suggested that the fabric is an integral and necessary part of the patented design, as it is necessary to achieve the desired aesthetic effect. Gunter also stated that the fabric used in the 7663 country look suit would not be adaptable or suitable for the 7503 fabric, which is a heavy jacquard fabric. In order to achieve the desired shirring effect, the patented design needs to be applied to a lightweight cotton fabric with a printed pattern. Some fabrics are not suitable for the shirring effect seen on the kidney roll and skirt of the patented design.
During the cross-examination, Professor Foote testified that he agreed with the opinion that the fabric is a part of the design patent for the furniture piece and that it contributes to the commercial success of the application.
According to the plaintiffs, the court is unable to take into account the textile material, pattern, dye, or wooden trim shade as components of the patented design, despite their potential contribution to the 7663’s achievements.
The court is convinced that Broyhill alone stands as a complete explanation for the commercial success of the 7660 group. Neither party has shown any evidence, through a preponderance of evidence, that one was solely and directly responsible for the enormous commercial success enjoyed by the patented design. The court finds that all of these various factors, including the design itself, the price of the frame, the applications of wood, and the fabric application, had some effect on the commercial success of the patented design, based on the evidence and testimony provided.
The court’s opinion acknowledges that while it may be true that the color of the fabric does not mean that it is not part of the design, it also concedes that some aspects of the fabric’s application may be necessary to achieve the shirred effect on the skirt and the roll kidney effect, which are dictated by the patented design.
On the other hand, the court determines that color cannot be appropriated as a component of a design. According to Funnelcap, Inc. V. Orion Industries, Inc., 421 F. Supp. 700 (D.Del.1976), there is no evidence indicating that the commercial success solely stems from the design of the patent in question. As another court stated in A. & H. Mfg. Co. V. Contempo Card Co., Inc., 576 F. Supp. 894, 900 (D.R.I.1983), the mere success alone does not definitively prove non-obviousness; there must be a direct connection to the design. Consequently, the court does not find any indication within the patent claim itself, PTX-1, that suggests a specific fabric pattern or color is required to achieve the patented design. The claim states: “The ornamental design for a seat, as shown and described.” PTX-1. The patent claim does not imply or involve fabric application. Furthermore, the court discovers that the “Memories Blue” fabric pattern not only sold successfully in the patented design but also in various other country style furniture pieces. It is undisputed that the fabric color is not mandated.
2. A persistent yet unresolved necessity and the inability of others to address it.
The evaluation of the patentability of a design is essentially subjective, as personal artistic tastes of the viewer are unpredictable and inexplicable. Therefore, if a court finds the failure of others to contemplate a design patent difficult, it deems the inquiry meaningless. Similarly, the court may make a more objective determination on this factor, where the purpose of the design serves a functional function, which is more properly addressed in the context of mechanical or utility patents. This unresolved and long-felt factor is not a proper matter of concern in the context of this design patent, according to the opinion of the court (Roanwell v. Plantronics, Inc., 138 F. Supp. 403 (S.D.N.Y. 1975), aff’d, 535 F.2d 1397 (2d Cir. 1976)).
3. Reproduction by Others.
The proximity in time and appearance of the Benchcraft and Crestline pieces to the design of the patent in question proves the novelty of the design. According to the court’s opinion, the distinguishing characteristics, such as slight differences in wood stain, numbers of buttons, and the length or continuous nature of the back rail, are insignificant and only de minimis distinctions. After closely inspecting the alleged copies provided by the plaintiffs, the court finds that both the Benchcraft and Crestline pieces (DX-5 and DX-11, respectively) are almost identical copies of the commercial embodiment of the patented design. This finding is supported by the persuasive evidence presented. Additionally, Broyhill asserts that the acts of the plaintiffs and at least eighteen other furniture manufacturers in copying the patented design further demonstrate the non-obviousness of the design.
The patented concept, the Riverside creation, cannot be classified as a duplicate of the overall visual look of this item, DX-8, as the court determines that it is adequately distinct. Moreover, the court is amazed by the proof of seemingly simultaneous autonomous evolution of the Riverside creation prior to any Riverside staff observing the patented concept.
The DX-8 was designed by personnel outside of the Riverside No. 9553 Style, specifically for the design of the drawing for PTX-63. While the Crestline and Benchcraft pieces do not have the same high Victorian “flair” as the Riverside piece, they also do not feature the patented design. Furthermore, the court notes that the Riverside piece is somewhat smaller than the Crestline and Benchcraft pieces.
The wood polish on the 9553 corresponds with that already on the various tables and other pieces in the Great Hill Road collection. Orler stated that the decorative patterns both on the back rail and the wood arm stumps of the 9553 were intended to match the theme of the Great Hill Road collection. Riverside hired the design team Otto & Moore to develop the 9553 design so that Riverside would have a sofa to add to its existing case goods line known as the “Great Hill Road” collection. Mr. Jerry Orler (“Orler”), vice-president of upholstery sales for Riverside, testified that Riverside hired the design team Otto & Moore to develop the 9553 design so that Riverside would have a sofa to add to its existing case goods line known as the “Great Hill Road” collection.
The court finds that Riverside, as the plaintiff, did not copy the patented design, thus making this point particularly persuasive. It is a fact that Crestline and Benchcraft had non-infringing substitutes or prior art designs available, which the plaintiffs actively marketed while not actively marketing their own patented designs.
IV. INVALIDITY OR UNENFORCEABILITY OF THE PATENT.
Recently clarified by the Federal Circuit Court of Appeals in the case of J.P. Stevens & Co., Inc. V. Lex Tex, Ltd., 747 F.2d 1553, 1559 (Fed. Cir.1984), cert. Denied, 474 U.S. 822, 106 S. Ct. 73, 88 L. Ed. 2d 60 (1985), the concept of inequitable conduct includes both affirmative actions and omissions. While the term is given a slightly broader interpretation before the PTO, a claim of inequitable conduct is essentially a claim of fraud. Broyhill engaged in “inequitable conduct” before the PTO by either withholding or neglecting to disclose relevant prior art during the process of obtaining the ‘485 patent. Therefore, even if the patent was initially valid, it should now be declared invalid and/or unenforceable. The plaintiffs put forth the argument that.
The court must now consider whether Broyhill’s non-disclosure rises to the level of inequitable conduct. There are certain prior art items that have already been found, which were not disclosed to the PTO. See supra, Manitowoc Co. V. FMC Corp., 1415 F.2d 835.
A. Significance of the Undisclosed Pre-existing Information.
37 C.F.R. § 1.56(a) asserts that an inventor and their patent lawyer have an obligation to reveal to the PTO during the application’s pendency all information and prior art that they are aware of and which is relevant to the examination of the patent. The meaning of “relevant” encompasses all information where there is a significant probability that a reasonable examiner would deem it important in determining whether to grant the patent. There are also more stringent interpretations of “relevant”, including an objective “but for” test and a subjective “but for” test. In this case, the court chooses to apply the PTO’s Rule 1.56(a) definition because it is the broadest test and is most closely aligned with the proper conduct for patent applicants before the PTO, as stated in J.P. Stephens & Co., Supra, at 1559.
The court finds that Fitzpatrick, a registered patent attorney with over 15 years of prior experience in prosecuting and filing patent applications, has testified that he has been involved in four or three lawsuits for patent infringement and has prosecuted several utility patents for his former employers, Monsanto, Airco, and Bethlehem Steel. As a representative of his clients, he should have been well aware of his obligations of candor and good faith in dealing with the PTO in prosecuting and filing patent applications.
1. The Gunter Pictures.
During his deposition, the inventor Huffstetler admitted that although he testified in trial that he “messed up” in indicating the relevance of the photographs to his realization of PTX-5, the photographs supplied to him by Venezia Zampa were considered material to his design. He further acknowledged during his deposition that these photographs were included in his patent application ‘485 while it was pending.
PTX-8. In his deposition, Huffstetler explained that although the term “material” does not provide a complete legal understanding, it should be interpreted closely to the court’s approximate estimation. He admitted that if he had seen anything that would give him an idea of the design element, he would have given it to Fitzpatrick, who was not sent PTX-8 until almost two months after the patent suit was already issued. It is curious that this letter from Huffstetler indicates that the development of the “7663 sofa group,” including the paperwork, was not involved in PTX-8. One indication of Huffstetler’s appreciation of the pertinence of Gunter’s photograph is that the photographs of Gunter’s sofa from Europe, which served as inspiration for the 7663 sofa, were sent to Fitzpatrick along with Huffstetler’s letter dated August 28, 1984.
Fitzpatrick was advised about the existence of photographs shortly before the issuance of Gunter’s patent, which was advised about the existence of photographs shortly before the issuance of Fitzpatrick’s patent.
Since Huffstetler testified that the photographs by Gunter depict his patented design and are material that should have been disclosed to the PTO, he also testified that he required these photographs to clarify and verify his design.
2. The Benchcraft 4540 model.
4540 Benchcraft, the inventor himself, considered his design as a “knockoff” of the prior art material that he found in court. Huffstetler testified that he was unaware that his invention predated the 4540 Benchcraft. He thought that someone had “knocked off” his design, after viewing the overall silhouette of the 4540 in a Furniture Fingers catalog in late 1982. Huffstetler testified that he filed the patent application in October 1983, before Broyhill and others at 4540 Benchcraft were aware of his design.
Mr. Russell conducted a minimal search based on the materials accessible in the PTO, and Fitzpatrick relied on it. No other Broyhill representative or Huffstetler conducted a prior art search, and Fitzpatrick did not ask them to do so. Fitzpatrick himself acknowledged that he did not conduct an independent search when filing the Petition to Make Special. The plaintiffs claim that Fitzpatrick did not thoroughly investigate the prior art during the patent prosecution process.
Fitzpatrick would have learned that the plaintiffs made an assertion that filing the patent application for Benchcraft had been done one year prior to the market. It has been confirmed that a search, such as the one conducted by Huffstetler, could have discovered the approximate introduction date of 4540 and the circulars containing Broyhill’s Furniture Fingers catalogs. Huffstetler and the plaintiffs concede that if an adequate search of their own files had been conducted, the plaintiffs’ contention would have been discovered.
References to the materiality of these notes can hardly be denied, and the combination novel design of the Venezia Zampa has been patented since 4540. The court notes that it is rarely possible to meet the attorney’s suggested obligation of conducting a thorough and careful prior art search, demonstrating good knowledge of the pertinent prior art, or including a search of the inventor’s own files and possible references in the development of the invention. The court’s opinion is that a relevant prior art search, which does not include the inventor’s own files, is not required to meet the attorney’s suggested obligation. (1983) (5) II. 708.02, MPEP, …
B. Intent.
The applicant’s deliberate scheming is not required to prove gross negligence by the representative or agent. The natural consequences of the acts, which are presumably intended, may be proven by showing intent. The intent threshold, as demonstrated by the natural consequences of the actor’s acts, may be proven. However, proving intent also requires a threshold of proof for inequitable conduct, which does not necessarily need to be proven with direct evidence.
At 1560, J.P. Stevens, supra; 731 F.2d 878, 885 (Fed.Cir.1984), Driscoll v. Cebalo, the significance of the withheld reference should have been known by the individual, assessed as a reasonable person in his position, when there is a clear lack of care. Inadequate to support an accusation of unfair behavior is simple carelessness, oversight, or a mistaken decision made in good faith. “An attempt to persuade the fact-finder that the failure to disclose was still not due to an intention to deceive the PTO….” Can be made by an applicant accused of unfair behavior, supra, 835 F.2d at 1416, FMC Corp.
The court deems the pertinent information to be of great importance, as it indicates an intention to deceive the PTO or hide Broyhill’s actions, which shows either a serious lack of care or a deliberate choice. According to Huffstetler’s testimony, Beach simply handed him the application and asked him to sign the oath. There is no breach of the duty of honesty under 37 C.F.R. § 1.56, as Mr. Beach, the liaison, was aware of the duty but took no action. Furthermore, Huffstetler neither understood nor questioned his obligation to disclose all relevant prior art and publications when he signed the oath. Additionally, Fitzpatrick failed to explain to Huffstetler his duty under 37 C.F.R. § 1.56. Broyhill’s defense is based on the fact that the Gunter photographs were never brought to the attention of the PTO Examiner before the patent was issued, as well as the inventor’s lack of knowledge regarding the 4540.
The court finds that Fitzpatrick was grossly negligent in failing to discuss the invention directly with Gunter Beach, Huffstetler, or any other employee or official involved in the application or prior art relevant to the inventor’s knowledge, before filing the Special Make to Petition or any semblance of attempting to determine the facts relevant to the inventor’s knowledge about the prior art.
Fitzpatrick is aware that it is a fact that he neglected to inquire about individuals’ knowledge of these proper patent acquisition procedures, particularly in regards to Broyhill’s past reliance on outside counsel for assistance and advice with patent applications. Fitzpatrick failed to determine whether Huffstetler or Beach Gunter, who were personally involved in any prior patent applications with Broyhill, had any involvement. Fitzpatrick did not make any effort to confirm his assumption that the principal parties involved in the patent application understood their duty of disclosure to the PTO and the implications of their oaths. Despite knowing what he knew about patent matters, Fitzpatrick also relied heavily on Huffstetler’s opinion that obtaining design patents was not a simple or easy process, without providing any explanation as to why he did not follow this procedure. Interestingly, Fitzpatrick testified that he regularly visited the inventor to determine the inventorship and obtain the most relevant and best prior art knowledge for filing the application.
Fitzpatrick also admitted that even though Broyhill is an expert in patent law, it is a useful tool for him in preparing patent applications because it would keep him up-to-date on the most recent edition of the MPEP. Shefte testified that it is prudent for the examiner to disclose any “doubtful” prior art and allow materiality to decide on the course of action.
The Court of Appeals for the Federal Circuit has recently declared:.
The court finds that the plaintiffs have shown convincing and clear evidence that both Broyhill and Huffstetler, other personnel at Defendant’s company, had prior knowledge of the materiality of this prior art and failed to disclose it to the court. The court concludes that this failure to disclose leads to the intent to mislead the plaintiffs. (Reference: 1416 at F.2d 835 supra, Corp., FMC)
The court finds that Huffstetler, Beach, Gunter, and Fitzpatrick, who are substantially involved in the prosecution or preparation of the application and associated with the inventor, violated their duty of good faith and candor towards the inventor by committing grossly negligent acts, as stated in § C.F.R. 37.
*1211
V. INFRINGEMENT OF PATENTS.
The court finds no factual findings regarding the deliberate or willful nature of the alleged infringement or the nature of the infringing copies of the plaintiffs’ patented design. The court determines that there is no claim for patent infringement. According to Stevens P.J. In supra 1560, the patent must be deemed unenforceable and invalid. The court concludes that the patentee is guilty of inequitable conduct.
The plaintiffs promptly initiated this lawsuit to seek a declaration that the patent was invalid as soon as they became aware of its issuance. The plaintiffs cannot be accused of infringing the patent for any actions they took prior to its issuance. As the plaintiffs never acknowledged the existence of a valid patent, but instead questioned its validity from the beginning, the court determines that investigating the intentional or deliberate nature of the plaintiffs’ actions is unnecessary and irrelevant.
Messrs. Corson and Waxman of Crestline, Udouj of Riverside, and McLarty of Benchcraft, who have extensive knowledge in the history and evolution of furniture design, all expressed doubt regarding the patentability of the patented design. When the patent application was submitted and when the patent was granted, the management of each of the plaintiff manufacturers had significant expertise in furniture design. In the case of Riverside, outside designers were responsible for creating the 9553 style. The Broyhill’s pieces in the 7660 group did not have any indication of patent marking or “patent pending” notice. Broyhill was unaware of any patent rights held by each plaintiff when they started developing and producing their accused style.
The court finds that the plaintiffs reasonably acted in analyzing the validity of the patent suit and reaching a good faith belief that the claim was invalid. In the foregoing view, the court finds reasons for the claim being invalid, such as the failure to disclose derivative prior art or obviousness. Additionally, the court takes into account that the plaintiffs obtained the inspiration for the patent from the “derived” origin of the patent and the management of the plaintiffs learned about it in Europe through Broyhill. The court also considers that the design in question is not significantly different from various prior art designs.
VI. DAMAGES.
Since Broyhill was not entitled to receive damages, the court does not provide any advisory opinion on whether Broyhill would have been owed a royalty or lost profits, as the court’s final decision does not require any damages. Broyhill’s patent was obtained through unfair practices and has been declared invalid and unenforceable, so the court determines that Broyhill cannot receive any damages.
VII. UNUSUAL SCENARIO.
Plaintiffs can request attorney’s fees under 35 U.S.C. § 285, but only if they can demonstrate that this case is “exceptional”. To justify an award of attorney’s fees, certain extraordinary circumstances must be present, such as misconduct in the patent prosecution process, inappropriate actions during litigation, baseless or harassing litigation, or instances of fraud or bad faith by the patent holder or infringer (See Interpart Corp. V. Italia, 777 F.2d 678 (Fed.Cir.1985); Reactive Metals and Alloys Corp. V. ESM, Inc., 769 F.2d 1578 (Fed.Cir.1985); Pennwalt Corp. V. Akzona, Inc., 740 F.2d 1573 (Fed.Cir.1984).)
The purpose of awarding attorney’s fees under section 285 is to prevent gross injustice to the prevailing party who had to defend against or enforce a patent infringement allegation. This statute, as interpreted by the Fifth Circuit in American Hospital Supply Corp v. Arbrook, requires a showing of extraordinary and unambiguous misconduct. The discretion to grant attorney’s fees lies with the sound judgment of the court. The party prevailing in the litigation is not automatically entitled to attorney’s fees. This was affirmed in Automation Spectrum v. Campbell and General Motors Corp-Colyer Korody. In Ford Owens-Libbey Glass Shatterproof and Ford Motors Corp-Colyer Korody, the court again emphasized that the decision to grant attorney’s fees is within the sound discretion of the court and not automatically granted to the prevailing party.
During the pendency of this lawsuit, the plaintiffs continued to sell furniture pieces that were alleged to be infringing. The alleged infringers themselves brought this action, claiming that Broyhill’s declared patent is invalid. In this case, the court finds that if the plaintiffs were awarded their attorney’s fees, they would be unjustly enriched, unless exceptional circumstances are justified. On the contrary, if the plaintiffs were denied their attorney’s fees, it would result in a gross injustice, showing that there has been no gross injustice thus far.
LEGAL CONCLUSIONS I. AUTHORITY.
The court’s personal jurisdiction applies to all the parties involved in this lawsuit. The court determines that it possesses subject matter jurisdiction over this matter according to 28 U.S.C. § 1338 and §§ 2201 and 2202.
II. ASSUMPTION OF LEGITIMACY.
The court must give deference to the decision of the PTO to grant a patent and a patent is presumed valid under Section 282 of §U.S.C. 35.
Regarding design patents, Section 171 of the United States Code, Title 35, provides:
The Federal Circuit clearly outlined the method that the court must adopt when considering a challenger’s questioning of the legitimacy of a patent. According to Jones v. Hardy, 727 F.2d 1524, 1528 (Fed.Cir.1984), it is stated that the responsibility of proving the invalidity falls entirely on the party making the claim, and the assumption of validity can only be refuted by substantial and convincing evidence of invalidity, as stated in Loctite Corp. V. Ultraseal, Ltd., 781 F.2d 861, 872 (Fed.Cir.1985).
In the year 1984, the second edition of the law (L. 83, Ct. S. 105, U.S. 821) was denied certification. Additionally, in the case (1213 * 1360 1350, F.2d 725), Inc., Sons, & Sowa Co. & Derrick Hoist American were involved.
The validity or patentability of an issued patent depends on novelty, as set forth in § 101 U.S.C. 35, lack of anticipation as set forth in § 102 U.S.C. 35, and non-obviousness as set forth in § 103 U.S.C. 35. The court does not determine novelty by whether each element of the claimed invention was disclosed in a single prior art reference. (1984) 107 2d L. Ed. 83, 172 S. Ct. 105, U.S. 469, denied, cert. 1984 (Fed.Cir.1983), 1554, 1540 F.2d 721, Inc., Garlock, Inc. V. Associates, Gore & W.L.; Corp., FMC.
The language of § 103 is precise in stating that the invention claimed must not have been obvious to a person of ordinary skill in the art at the time the invention was made. In the case of Deere John v. Graham, the court made it clear that the invention as a whole would have been obvious to a person of ordinary skill in the art.
III. OBVIOUSNESS.
The question of whether a patent is obvious under the law is evident in John Deere v. Graham, 556; 2d Ed. L. 15 at 693, Ct. S. 86 at 17, U.S. 383, supra, Co. The party asserting that the patent is invalid bears the burden of proving this by providing convincing and clear evidence, as stated in Stucki v. Dynamics Railroad Co., 1984 (Fed.Cir.1517, 1511, 1506, F.2d 727, Co.). The burden is not lessened when the prior art material was not examined or cited during the prosecution of the patent application. This was affirmed in U.S. V. Graham, 150 (1984), 83 L. Ed. 2d 220, S. Ct. 105, U.S. 469, and denied, cert. (1984).
In ruling on obviousness, the court should initially conduct factual investigations, including examining Graham 383 U.S. At 17, 86 S. Ct. At 693, 15 L. Ed. 2d at 556; Atlas Powder Co. V. E.I. DuPont de Nemours & Co., 750 F.2d 1569, 1574 (Fed.Cir.1984), as well as considering the failure of others, long felt but unsolved needs, and commercial success, commonly referred to as “secondary considerations”. Additionally, the court should assess the level of ordinary skill in the art, the distinctions between the claimed invention and the prior art, and the extent and content of the prior art.
In the case of Whirlpool Corp. V. Litton Systems, Inc. (Fed.Cir.1984): 1443 1423 F.2d 728, the Federal Circuit stated that the court’s focus should solely be on the existing circumstances and facts at the time the invention was made. It is critical to the proper resolution of the issue of obviousness that no consideration is given to any later time.
*1214
Also, reference Cable Elec. Products, Inc. V. Genmark, Inc., 770 F.2d 1015 (Fed.Cir. 1985).
The evaluation of the design necessarily involves considering the distinguishing features claimed in the patented design, but as a whole. In the patent suit for claim “described and shown as an ornamental seat design,” the article(s) shown in the patent drawings represent the ornamental appearance of the claimed invention. When determining the obviousness of the subject matter, the court must consider the claimed invention as a whole and begin with the conclusion that is based on the consideration of what the claimed invention actually is, according to Section 103 of the U.S.C. 35.
The court, in assessing the obviousness of the patent suit, considers all the factual evidence presented, including the expert opinions offered by each party. The court deems the weight of such testimony, giving appropriate weight to the expert opinions presented.
A. Scope and Content of the Previous Knowledge.
The Benchcraft 4540 is considered as existing knowledge under 35 U.S.C. § 102(a) and § 102(b) as a matter of law, thus the court concludes. The court determines that both the Benchcraft 4540 sofa and the Zampa Venezia photographs are existing knowledge under 35 U.S.C. § 102, and is tasked with making a legal conclusion regarding their relevance to the patent in question. The court has provided a discussion and list of the existing knowledge in its findings of fact, mentioned above. The Benchcraft 4540 was made available for sale in the Spring of 1982, more than one year before the patent application was filed.
The trade publication may be considered a publication if it reaches the members of the trade who are interested in the subject matter, as long as it is not required to find a matter that is not printed in the publication alone. The limited dissemination of the document does not require a finding that the document is not printed in a publication. In order for an item to qualify as a printed publication under Section 102 of the U.S.C., It must be a printed document that can be located by interested persons in the art and has been otherwise made available or disseminated to the public, at least to some extent, through satisfactory showing of modern methods, including photography, duplication, reproduction, or printing. A photograph itself may constitute a printed publication for the purposes of Section 102 of the U.S.C.
Jockmus v. Leviton, 28 F.2d 812, 813-814 (2d Cir.1928).
Broyhill argues that there is insufficient proof to qualify the prior publication artwork as a PTX-9 photograph, slick ad, Venezia Zampa. Broyhill argues that the plaintiffs’ oral argument regarding the availability and accessibility of the photograph fails, since all the evidence presented on the dissemination issues supports this vein of argument. However, the court has found that oral testimony can be sufficient if it is corroborated by other dated records or contemporaneous correspondence, and if it is convincing and clear on the question at hand. This is supported by the cases cited: Supra, *1215 at 1199; Galland-Henning Mfg. Co., Supra.
According to § 102(a) and § 102(b), the court determines that the plaintiffs have proven that the Zampa Venezia photograph, PTX-9, qualifies as a published document. In Stevenson v. International Trade Commission, 612 F.2d 546, 550 (C.C.P.A.1979), it is mentioned that there is no evidence suggesting that either Zampa or Spicer have any “demonstrated financial interest in the outcome of this litigation.” The court affirms the credibility and persuasiveness of Zampa’s oral testimony, which is supported by Spicer’s testimony and Spicer’s contemporaneous written records.
The patented concept was created before the gathered kidney roll became recognized in the field and observed on modern or conventional items. Nonetheless, the previous examples relevant to the patent in question consist of different styles of sofas, each integrating one or more of the design characteristics of the patented concept. The sole significant component absent from the previous examples is the gathered kidney roll on a rustic furniture piece. The court has previously stated in its factual discoveries that the extent and substance of the previous examples encompass these particulars.
B. Distinctions Between the Asserted Innovation and the Existing Body of Knowledge.
The “dictates” of Mr. Gunter’s testimony, which is considered in the claim of the patent, can be found within the patent’s description of the certain fabric treatment that holds the shirred kidney roll. However, the general language of the claim does not clearly state the existence of the shirred kidney roll. Even though other aspects of the design were known in the industry prior to the invention, the primary difference between the patented design and the prior art is the shirred kidney roll. This is evident from the testimony of Professor Foote, as mentioned in note 13 above, where the primary differences between the patented design and the prior art are set forth.
To nullify any creation, the court must consider if the distinctions between the claimed creation and the previous art are minimal. The appropriate assessment is whether the references, viewed as a whole, would propose the creation to someone with average expertise in the field. In a more concise manner, when determining obviousness, the assessment for whether references can be merged is “whether they are so interconnected that the presence of specific decorative characteristics in one would propose the application of those characteristics to the other,” as stated in In re Rosen, 673 F.2d 388, 391 (C.C.P.A.1982). Not all elements of previous art can be combined to ascertain obviousness when reviewing the previous art.
The court is limited to considering the invention as a whole. In 1443, the court cannot simply take individual elements of the patented design item by item to determine if they already exist somewhere in the prior art, as stated in Systems Litton v. Art. The court cannot simply take individual elements of the claimed invention from the prior art to distinguish them in the court.
At 391, in the case of Rosen mentioned above, referring to the Application of Jennings, 182 F.2d 207, 208, 37 CCPA 1023 (1950), there needs to be a specific mention, with design features that are essentially identical to the patented design. Afterwards, that one reference can be combined with changes proposed by other references. The essential qualities of the main reference cannot be altered by the modifications required to achieve the patented design. At 391, the same source applies.
The court is not convinced that the differences between these prior art references and the claimed invention are minimal. The court is convinced that these two references, the starting point for the derivative design patented by Huffstetler, form the point of convergence. The sofa and photograph of Venezia and the 4540 do not constitute highly prior art material, and this suggests that changing the overall appearance of the sofa Venezia to give it a much more substantial Victorian style back graft onto the 4540. Similarly, altering the overall aesthetic appearance of the Venezia piece would require a complete change in style from country to Victorian and a shift in proportions to an American scale. Undoubtedly, combining either of the primary references with the other would destroy their fundamental characteristics. Furthermore, there is no suggestion, either expressly or impliedly, in either the Venezia sofa or the 4540 that the combination of these two references is present. Professor Foote testified that there is nothing in either the Venezia sofa or the 4540 that would suggest the combination of these two references. Although the plaintiffs made a concerted effort to show that the combination of the Venezia sofa and the 4540 from Benchcraft was suggested by these two references, the court holds otherwise.
C. Level of Average Proficiency in the Field.
The court holds that the overall design claimed in the patent would not be obvious to an ordinary person skilled in the art. The court finds that the issue of obviousness is more probative on the prior art piece based on the descriptions in the Venezia suite and Kepley’s Gunter’s. However, the court is not prepared to hold that only Stuenkel and Huffstetler rose to the known level of the prior art to Huffstetler and Kepley’s Gunter’s. The court holds that they might have created the patented design if an ordinary person skilled in the art had access to Gunter’s photographs and had seen their request for a “version” of the European sofa, based on the description given by Kepley Gunter. While the court does not suggest any combination thereof in the prior art references to an ordinary person skilled in the art, it holds that an ordinary person skilled in the art of furniture design would possess at least a minimal level of experience or training in the artistic aptitude and a minimum high school education in order to hold the court’s view as an ordinary person skilled in the art of furniture design. The court fully develops the above findings in fact.
Secondary factors to consider.
In the case of Panduit Corp. V. Dennis Mfg. Co., 810 F.2d 1561, the court must determine whether there are any clear signs of non-obviousness when making a final decision on the matter of obviousness. These signs may include the success of the invention in the market, the failure of others to create a similar invention, a long-standing but unresolved need for the invention, and instances where the invention was copied instead of using prior art.
1. Business Achievement.
The design, by itself, cannot be considered a reliable indication of the lack of obviousness of the commercial success when the court determines that this case involves fabric application, price, and wood treatment. The success of the patented design in the market was and continues to be due to various factors unrelated to the design. Litton Systems, Inc., 728 F.2d at 1443, has established that evidence of commercial success must clearly demonstrate that the success is specifically due to the design and not any other factor. There must be a connection between the decorative features of the design and the commercial success of the design: In re Nalbandian, 661 F.2d 1214, 1218 (C.C.P.A.1981); Peterson Mfg. Co., 740 F.2d at 1549, states that the commercial success must be attributed to the design or aesthetic appearance of the invention rather than a market demand fulfilled by the functional or non-design aspects of the underlying items to which the design is applied.
2. Persistent yet unresolved requirement and the inability of others.
One court has eloquently stated the difficulty in applying these criteria to design patents. The court notes that in this case, the design furniture does not meet the appropriate consideration for long-felt unresolved factors. Therefore, the court concludes that neither the failure of others to solve the “problem” solved by the patented design nor the efforts employed by others to employ similar designs in their furniture show the need for this design patent.
Plantronics, Incorporated, 403 F. Supp. At 159-160.
3. Reproduction by Others.
Broyhill argues that the evidence of copying the patented design along with the commercial success of the design clearly demonstrates that the design was non-obvious. The court has found that the design of the patent suit has been copied by at least eighteen furniture manufacturers in addition to Crestline and Benchcraft plaintiffs. This is perhaps one of the most compelling and probative arguments questioning the uniqueness and novelty of the design, as stated by the Fifth Circuit Court.
The case of Belle v. Kurtz, which was cited by Lining Hat Co., In the second circuit court in 1922 (281 277 F. 280 Co.), Referenced a denial of certiorari by the Supreme Court in the case of Henry v. Corp. Rak-O-Sel. In the fifth circuit court, the case of Fix. Display & Hanger Corp. V. Corp. Rak-O-Sel. Was cited (179 176 F.2d 232).
The court concludes that, when compared to prior art, the design of a novel invention would not have been obvious to an ordinary person skilled in the art at the time it was made. The court considered all the relevant criteria of Graham in determining obviousness as far as the patent in question is concerned.
IV. DERIVATION.
The person A shall be entitled to a patent unless he himself did not seek to patent the subject matter sought to be patented. The argument for derivation is tied to the language of § U.S.C. 35. Instead of deriving the patented design from Gunter’s photographs, he argues that Huffstetler did not invent any new original ornamental design. The Plaintiffs also argue this.
In order for the plaintiffs to prevail in this patent suit, they must be able to establish that the photographs Gunter saw before he developed his design, which depict a design identical to the one claimed by United States, also show Ash Fly Amax Corp.’S design.
The Gunter images reveal every aspect of the patented design, but the plaintiffs have not been able to prove that. According to the court’s factual findings mentioned above, the plaintiffs have shown at least half of their theory of derivation. The plaintiffs have examined the evidence regarding the derivation of the patented design from the previous art references, specifically the Benchcraft 4540 and the Zampa Venezia, which Huffstetler saw in the Gunter images. Huffstetler himself acknowledged that the Gunter images served as the “inspiration” for his design and that he used them to “confirm and clarify” certain elements of his design. The court has also reviewed the plaintiffs’ evidence on the derivation of the patented design from the previous art references, namely the Benchcraft 4540 and the Zampa Venezia, which Huffstetler observed in the Gunter images. Carella v. Starlight Archery and Pro Line Co., 804 F.2d 135, 139 (Fed.Cir. 1986).
In terms of whether or not something is obtained, the court concludes that the plaintiffs have failed to adequately fulfill their obligation to present proof.
*1218 V. UNFAIR CONDUCT.
The party asserting the claim or defense of patent unenforceability must provide evidence that Broyhill engaged in inequitable conduct or fraud before the PTO by withholding important prior art during the patent application process. It is important to note that proving patent unenforceability in this case is a challenging task and requires convincing and clear evidence. (Kansas Jack, Inc. V. Kuhn, 719 F.2d 1144, 1151 (Fed.Cir. 1983)).
Id. At 793. This portrayal is utilized as a substitute for the term “fraud” so as to clarify the scope of the behavior that could make a patent unenforceable: inequitable conduct encompasses both positive acts of commission as well as grossly negligent acts of omission. J.P. Stevens & Co., Supra, at 1559. Such behavior that could make a patent unenforceable includes either the failure to disclose significant information to the PTO or the submission of false significant information with an intention to mislead. In prosecuting a patent before the PTO, behavior that could make a patent unenforceable is broader than what constitutes common law fraud. Norton v. Curtiss, 433 F.2d 779, 793, 57 CCPA 1384 (1970). Generally, common law fraud necessitates that: 1) a misrepresentation of an important fact be made with an intention to deceive or a mindset so reckless regarding the consequences of the misrepresentation as to be the equivalent of intention; 2) reasonable reliance on the misrepresentation by the party deceived thereby inducing them to take action; and, 3) harm to the party deceived as a result of the reliance on the misrepresentation.
When deciding on the matter of unfair conduct, the court should utilize a balancing test established by the Federal Circuit in the N.V. Akzo case, as mentioned earlier. The plaintiffs in this case need to demonstrate: 1) an act of misrepresentation that was committed, 2) which was significant, 3) involving information that the patentee either knew or should have known, and 4) which was carried out with the necessary intent (referring to Environmental Designs, Ltd. V. Union Oil Co., 713 F.2d 693, 698 (Fed.Cir.1983), cert. Denied, 464 U.S. 1043, 104 S. Ct. 709, 79 L. Ed. 2d 173 (1984)).
The balancing approach, as reaffirmed by the Federal Circuit in the recent case FMC Corp. V. Manitowoc Co., Inc., Supra, 835 F.2d at 1414-1417, was further supported in the case Id. At 1153.
A. Materiality.
§ 103 determines whether the claimed invention is obvious, regardless of whether the invention is claimed or undisclosed. The court ruled that it does not need to make explicit findings on whether the conduct is inequitable, but rather considers whether the conduct committed by Broyhill before the PTO reaches the conclusion of inequitable conduct. The court adopts the standard of materiality set forth in 37 C.F.R. 1.56(a), which requires clear and convincing evidence to prove the degree of non-disclosed information.
The court determines that the Gunter images of the Zampa Venezia couch and the Benchcraft 4540 couch are extremely significant preexisting evidence that Huffstetler or Fitzpatrick should have revealed to the PTO in regards to importance. Huffstetler acknowledged awareness of the images before finalizing his design and even described them as the “inspiration” for his design with regards to the Gunter images. Undoubtedly, according to the court’s viewpoint, this reference holds more significance to the patented design than the previously disclosed preexisting evidence in PTX-2.
The court holds that the photographs of Gunter, which closely resemble at least a portion of the patented design, should have been disclosed to the PTO and should not be considered as cumulative prior art references. When deciding whether to grant the patent, the examiner at the PTO would undoubtedly consider the photographs and if the formative or inspirational aspects of Gunter’s photographs are contained in Huffstetler’s ultimate design. Even though Huffstetler himself admitted that he considered the photographs to be material to his design, the court’s opinion states that the interpretation of “material” is closely analogous to the standard set forth by the PTO in §1.56 of the C.F.R., Which means that anything that would give the examiner an idea of a design element would be considered material, without needing a thorough legal explanation of the proper interpretation of the term.
The court determines that this reference also satisfies the definition of material established by the PTO. 37 C.F.R. § 1.56(a). Referencing the FMC Corp. Case, 835 F.2d at 1415-1416, a brief examination of his personal records would have made it clear to Huffstetler that the 4540 predates his own design and is significant to his patented design. Considering the striking resemblance between the visible wood rail on the 4540 and the “continuous wood rail” described as a distinguishing characteristic of the patented design in Amendment A by Fitzpatrick, the court concludes that the 4540 is highly significant prior art. Huffstetler described the overall outline of the 4540 sofa as a replica of his own design. Utilizing the same analysis as applied to the Gunter photographs, the court also determines that the Benchcraft 4540 is noteworthy prior art that the inventor, Huffstetler, was aware of prior to submitting his patent application.
B. Intent.
In 1560, according to J.P. Stevens, when the individual, evaluated as a reasonable person in their situation, should have been aware of the significance of the concealed reference, there is a presence of gross negligence, as stated in the court’s factual findings, mentioned above. At 469 U.S. 851, 105 S. Ct. 172, 83 L. Ed. 2d 107 (1984), Rohm & Haas Co. V. Crystal Chemical Co., 722 F.2d 1556, 1571 (Fed.Cir.1983), cert. Denied. It is sufficient to demonstrate gross negligence, deliberate plotting is not required, proof of deliberate plotting is not necessary, the actor’s actions, which are presumably intended to lead to the natural consequences, can be demonstrated, and the intention does not have to be proven with direct evidence. Additionally, clear and convincing evidence of a threshold intention is also required. Inequitable conduct also necessitates.
FMC Corp, supra, 835 F.2d at 1416. May encounter challenges in establishing ‘subjective good faith’ adequate to prevent the inference of intent to deceive….” The Federal Circuit has suggested that “a patent holder encountering a substantial degree of significance and undeniable evidence that it was aware or should have been aware of that significance.
The examiner must address any doubts regarding the significance of a previous reference, as confirmed by Mr. Shefte, Broyhill’s expert in patent law. Whether these references would have an impact on the examiner’s decision to grant the patent is a determination that Fitzpatrick and Huffstetler are responsible for making. The inventor, Huffstetler, did not fully recognize the importance of these references, and Fitzpatrick, the patent attorney, was unaware of their existence. There is no evidence presented to the court that Broyhill has convincingly demonstrated “subjective good faith” with a high level of significance. The previous art that Broyhill failed to disclose is considered highly significant, as determined by the court in the present case.
The court concludes that there was an intent to mislead the PTO by the inventor, who utilized an extremely prior art reference in order to produce a final design, but failed. This intent is evident during the prosecution of the patent application, where the inventor named Huffstetler had knowledge or reason to know that the photographs of the material were patented and should have been disclosed to the PTO. The photographs were placed in the hands of Huffstetler by Kepley and Gunter, who deliberately withheld knowledge of the subject of the photographs from both the PTO and their own patent attorney. Later, it was described by Huffstetler that Kepley and Gunter went to England and photographed the Venezia Zampa sofa, which is personnel from Broyhill’s intent. The court also notes that there appears to be proof of this intent in the notes.
Before the Patent and Trademark Office (PTO), the court declares that the ‘485 patent is invalid and cannot be enforced due to the unfair behavior committed. The court determines that Broyhill’s claim for the ‘485 patent cannot be enforced due to the unfair behavior of Huffstetler, Fitzpatrick, and Broyhill’s staff during the time when the patent application was being processed. Based on the actions of Huffstetler and Broyhill’s officers and their patent attorney, the court determines that the withheld Gunter photographs of the Venezia sofa and the Benchcraft 4540 are prior art references that are highly relevant to the design of the patent in question. Fitzpatrick was extremely negligent in not discovering the existence of the Gunter photographs, which the inventor knew about and were highly relevant to the development of the patent’s design. This is a case where it is very clear that unfair behavior has taken place. According to the J.P. Stevens case, this conclusion is supported (supra, at 1560).
VI. INFRINGEMENT.
The section of the plaintiffs, there was no intentional or delaying action. Upon the issuance of the patent, the plaintiffs promptly acted based on their belief and never admitted the legitimacy of the patent in question. The court determines that there cannot be any violation of the patent since the court has declared that the patent in question is deemed null and unenforceable due to Broyhill’s unfair conduct before the PTO.
VII. DAMAGES.
The court has determined that Broyhill’s patent is invalid and cannot be enforced. Consequently, Broyhill is not eligible for any compensation.
VIII. UNUSUAL SITUATION.
The court acknowledges that Section 285 does not envision treating a winning alleged infringer as a “private attorney general” to invalidate a “fraudulent” patent, despite the plaintiffs’ success in invalidating Broyhill’s patent. In making this decision, the court recognizes that the issues in this case were highly contentious and that each party had a reasonable right to rely on the arguments presented during the trial. Considering all the circumstances presented in this case, the court determines that this is not an “exceptional” case that justifies awarding attorney’s fees to the plaintiffs. Refer to 35 U.S.C. § 285. J.P. Stevens Co., Inc. V. Lex Tex Ltd., Inc., 822 F.2d 1047, 1052 (Fed.Cir.1987)
The court finds that it would not be grossly unjust to deny these plaintiffs an award of attorney’s fees in this case. Section 285 of the U.S. Code provides the discretion to the court to leave the burden of bearing his own counsel’s fees to the prevailing litigants, where it would be grossly unjustly otherwise. In this case, there has been no showing of extraordinary misconduct to justify an award of attorney’s fees. As noted in the court’s findings of fact.
IX. CONCLUSION.
There are no “extraordinary situations” that warrant granting plaintiffs’ attorney’s fees in this case. The court determines that Broyhill cannot receive damages as the patent is invalid. Plaintiffs have not violated it. The ‘485 patent is invalid and cannot be enforced due to unfair behavior before the Patent and Trademark Office. The court reaches this conclusion based on the aforementioned reasons. The court’s assessment of all the circumstances leads to this determination.
A distinct decision shall be issued today in accordance with Rule 58 of the Federal Rules of Civil Procedure.
JUDGMENT.
In accordance with a memorandum opinion entered today, it is hereby ordered and decided as follows:
The court determined that unfair actions before the U.S. Patent and Trademark Office resulted in the U.S. Patent Des. No. 274,485 being declared invalid and unenforceable. Benchcraft, Inc., Riverside Furniture Corporation, and Hickory Hill Furniture Company, also known as Crestline Furniture Company, support the plaintiffs and counter-defendants, and a judgment has been entered.
Section 285 of the United States Code defines an “extraordinary situation” as a situation where this court does not determine the case to be one, thus resulting in no allocation of attorney’s fees and expenses in the case under consideration.
(3) The defendant and cross-plaintiff Broyhill Furniture Industries, Inc. Are responsible for paying the court costs.
NOTES.
The legal action resulted in the subsequent occurrences that had a noteworthy role in the “Gunter photographs” (and accepted as evidence under the name Plaintiffs’ Trial Exhibit 5, “PTX-5”), hereafter referred to as these images.
Huffstetler and Stuenkel displayed some of this printed material to Gunter and Kepley to determine if it reflected “the path they should pursue.” As designers, Huffstetler and Stuenkel considered the possibility of reviewing “tear sheets” or ad slicks of different furniture pieces that were already available at that time, while developing the design for the sofa requested by Gunter and Kepley. Huffstetler acknowledged this.
After viewing the Gunter photographs, Huffstetler mentioned that he only needed an extra hour to an hour and a half of drafting in order to create a satisfactory design drawing. This is worth mentioning.
Fitzpatrick briefly consulted with extra lawyers after submitting the Petition to Make Special. It was only later that he realized he didn’t require any help, deeming a design patent as “very straightforward” and “extremely simple”. According to Fitzpatrick’s testimony, he neither sought advice from external lawyers nor sought any aid in preparing the application for the patent in question, despite his limited familiarity with design patents.
[5] As numerous witnesses for the plaintiffs stated, it is common in the field for manufacturers to replicate one another’s unpatented designs.
The application for a new special examination of the claimed invention requires closely related references from the prior art, as well as a thorough and careful search of the prior art’s pertinent knowledge. This search should be supplemented by a declaration or affidavit from the applicant’s agent or attorney, showing that they have made a diligent effort to show the infringement. The MPEP provides for the filing of a Special Make to Petition when preparing the same, which imposes a special duty of candor on the attorney. Professor Chisum testified about the Special Make to Petition.
Amendment A. PTX-2 sets forth Huffstetler’s assessment of the novelty and patentability of his design, distinguishing it from the prior art as indicated by 1.111 § C.F.R. 37. The attorney or applicant must comply with section VIII.(D), 708.02 § under [7].
The court finds no reason to impute knowledge of the relevant prior art about Huffstetler to Fitzpatrick, who had the opportunity to communicate with Huffstetler before filing the Petition. Since PTX-5, the photographs of Gunter, were not mentioned in Fitzpatrick’s signed affidavit filed with the Special Make to Petition, Fitzpatrick could easily describe the depicted sofa in the photographs PTX-2, which also set forth a description of the tufted hand and exposed portion of wood on the back of the Venezia sofa, as noted by the court [8].
Concludes that the distribution of the photograph meets the criteria for a printed publication, based on the fact that it reached individuals in the furniture industry who were interested in the furniture suite. Additionally, the court points out that the limited distribution of the PTX-9 photographs does not determine whether it qualifies as a printed publication.
This fact is confirmed solely by the claim on the patent, which relies on the forth set of drawings patented by Matter subject. [10]
Broyhill’s earlier furniture designs were stored in Huffstetler’s design department “library” or “morgue”, even though Huffstetler acknowledged that none of these pieces were referenced in the PTO.
In the case of F.Cir.1985), Inc., Co., Jones H.A. V. Inc. Systems, Fastening KSM, it has already been adjudicated that the assignee or owner of a patent may not broaden the scope of a claim. Even if the patent design is not expressly claimed, it can still be treated as claiming the implied items. In the prior art, the roll kidney shirred could be further distinguished by the clause “characterized” included in the patent application. Fitzpatrick, the inventor, could have learned that the roll kidney shirred is a novel and unique feature by consulting or interviewing Mr. Huffstetler, who had close knowledge about Fitzpatrick’s design. The court notes [12] that Fitzpatrick’s application could have included this knowledge.
The variances comprise: the patented structure in contrast to the noticeable tangible distinctions between the Benchcraft 4540 and the Venezia couch affirmed by Professor Foote as well.
The Venezia suite features exposed legs, while the patented design showcases T-cushions in contrast to the “bull-nosed” cushions. Additionally, the arm of the Venezia sofa curves into a tapered-down backrail, whereas the patented design boasts a shirred skirt, unlike the 4540 which has a box-pleat skirt. Furthermore, the back of the 4540 (PTX-15) is divided into two parts and lacks a kidney roll, in contrast to the straight formal back of the patented design which is characterized by a “double-curved” shape.
In the case of F.A.D., 1950, as stated in C.C.P.A.1018 182 Ward of Application, as well as C.C.P.A.1961 192 F.2d 287 Garbo of Application, and the 1967 798 Ct.Cl. 178, 1014 F.2d 372 U.S. Pittsburgh of Blumcraft, it is evident that a design’s patentability is not hindered by the fact that its individual elements may be well known in the relevant art. This is because the court appreciates the unique and inventive combination of these old elements, which creates an overall appearance that is novel and prevents it from being merely a connection of known elements.
The court has chosen to use this synonymous terminology for the sake of convenience. Nevertheless, the court acknowledges that the extent of the patent is determined by the patent itself, PTX-1. Throughout this opinion, the court has used the patented design and its commercial representation, the 7663 sofa, interchangeably.
[16] As mentioned earlier, though, copying seems to be quite common in the furniture sector. Refer to note 5, supra.
The sequence of events surrounding Fitzpatrick’s acquisition of all details regarding the innovation, PTX-8, supports the assumption that Broyhill had the intention to deceive the PTO. It was only after the patent had been granted and with the anticipation of litigation against those accused of patent infringement that Fitzpatrick finally sought a thorough and exhaustive disclosure from Huffstetler. Additionally, there is another piece of information.
Despite the fact that each actor possesses actual knowledge, it would be appropriate to attribute all knowledge to one actor. This connection is noted by Fitzpatrick, Huffstetler, Kepley, and Gunter in the court’s notes.