David Leinoff v. Louis Milona & Sons, Inc.

726 F.2d 734, 220 U.S.P.Q. (BNA) 845, 1984 U.S. App. LEXIS 14835
CourtCourt of Appeals for the Federal Circuit
DecidedJanuary 24, 1984
DocketAppeal 83-814
StatusPublished
Cited by91 cases

This text of 726 F.2d 734 (David Leinoff v. Louis Milona & Sons, Inc.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
David Leinoff v. Louis Milona & Sons, Inc., 726 F.2d 734, 220 U.S.P.Q. (BNA) 845, 1984 U.S. App. LEXIS 14835 (Fed. Cir. 1984).

Opinions

NICHOLS, Senior Circuit Judge.

This appeal is from a final judgment of the United States District Court for the Southern District of New York, holding United States Patent No. 3,760,424 valid, 556 F.Supp. 273, 219 USPQ 1186 (S.D.N.Y. 1982), and infringed and awarding treble damages, 556 F.Supp. 280 (S.D.N.Y.1983). We affirm in part, reverse in part, vacate in part, and remand.

Background

David Leinoff (“Leinoff”), the plaintiff-appellee, is the sole owner of a fur manufacturing and selling company, David Lei-noff, Inc. He brings this action in his capacity as the owner of the patent in suit, U.S. Patent No. 3,760,424 (“the Leinoff patent,” “the ’424 patent”) issued September 25, 1973. Leinoff is also the named inventor of the ’424 patent, which is directed toward a composite fur pelt and the method for making the same. Louis Milona and Sons, Inc. (“Milona”), the defendant-appellant, is a New York corporation which manufactures and sells fur coats. Leinoff and Milona compete in the wholesale and retail fur coat business. •

The invention relates to producing unique design effects in fur coats. An object is to create an “attractive stripe effect” in such coats, and to broaden the range of use of long-haired furs. One step of the patented method involves a technique commonly known to fur manufacturers as “leather-ing.” Leathering involves inserting leather strips of a specified width in relation to the hairs of an animal pelt between cut strips of the animal pelt laid in a position unchanged from their ordinary relative positions in the uncut pelt. The use of this composite method causes a fur to look much longer and flatter than a fur in its natural state. Long-haired pelts, such as badger, were not ordinarily used in the manufacture of coats prior to leathering because they were considered relatively bulky.

Certain long-haired fur pelts are characteristically comprised of hairs which are light colored at the base, or “underground,” and darker at the tip portion. (Some pelts, such as badger, may also have small portions of white at the extreme ends of the dark tip portions.) The underground portion is somewhat “wooly” in nature and is not generally visible in pelts in their natural state. Leinoff connects the fur strips and leather connector strips in such a way as to overlap the dark tips of the pelt hair and the lighter portion of the underground. In exposing the underground, Leinoff creates his composite pelt with a striped effect.

Leinoff wrote to Milona on January 8, 1974, informing Milona of the existence of the ’424 patent and offering it a license. Milona ignored the letter and continued to manufacture coats using the allegedly infringing method. Leinoff did not approach Milona again about the ’424 patent until December 9, 1980. In the intervening [738]*738years, Leinoff instituted litigation in which the ’424 patent was held valid. Leinoff v. Valerie Furs, Ltd., 501 F.Supp. 720, 210 USPQ 835 (S.D.N.Y.1980).

Leinoff filed the present action on February 25, 1981. The issues of validity and infringement were bifurcated for trial. The court held the patent valid and infringed and awarded treble damages.

Opinion

A. Validity

The trial court recognized that since a statutory presumption of patent validity exists, 35 U.S.C. § 282, Milona bore the burden of establishing the patent’s invalidity. To meet this burden, the court required that Milona establish not that it presented art materially different from that which the patent examiner cited when reviewing the patent application, but rather, that it presented art more pertinent than that which the court (in this case, the same judge) considered in Valerie Furs. The court found the new prior art which Milona introduced not materially different from art it had considered earlier and therefore insufficiently persuasive to rebut the presumption of validity. We have considered all prior art presented in either case, though Valerie Furs is not directly before us for appellate review.

Milona argues now that the court erred in applying any statutory presumption of validity to the ’424 patent. Milona contends, it appears, that whenever the pri- or art that the alleged infringer introduces is more pertinent than that considered by the United States Patent and Trademark Office (“PTO”), the trial court should perform a de novo review of the facts underlying the question of obviousness, free of the presumption. Contrary to this contention, however, the introduction of prior art more pertinent than that which the examiner considers does not weaken or destroy the statutory presumption of validity. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1534, 218 USPQ 871, 875-76 (Fed.Cir.1983). Rather, where new pertinent art is introduced, the patent owner can, and often should, make a countervailing argument in support of validity; the more persuasive the opposer’s- prior art, the more convincing any rebuttal argument ought to be. See, e.g., American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350 (Fed.Cir.1984). Regardless of the prior art Milona introduced in evidence at trial, therefore, the presumption of validity remains intact.

1. Section 102 defense

Milona argues that the ’424 patent is invalid for lack of novelty under 35 U.S.C. § 102. The district court found, however, that none of the eight prior art publications upon which Milona relied disclose all of the elements of the Leinoff claims in the identical fashion. In reaching this finding, the court followed the rule that “[t]o anticipate a claim, a prior art reference must show each and every element claimed.” General Electric v. United States, 572 F.2d 745, 768, 215 Ct.Cl. 636, 198 USPQ 65, 85 (1978); In re Royka, 490 F.2d 981, 984, 180 USPQ 580, 583 (CCPA 1974).

Milona focuses on two references in its argument new to us. The German-language textbook, H. Schirmer, Die Technik Der Kuerschnerei (1928), states that “Japanese” badger may be leathered to lengthen a fur pelt. This reference is important, Milona tells us, because it contradicts Lei-noff’s statements that he was the first to leather badger and thus first to extend the use of this bulky fur to the manufacture of fur coats. The district court, however, noted the inability of Milona’s expert to compare Japanese badger with American badger, to state what the coloration of a Japanese badger’s hairs are, or to state whether the use of Japanese badger would produce a noticeable striped effect on the fur side of the pelt. This reference, alone, therefore, anticipates nothing but the well-known concept of “leathering.”

Milona relies, in addition, on Rauchwar-enherstellung und Pelzkonfektion 335-337 (VEB Fachbuchuerlag 1970). This German-language reference discloses a “gallooning” technique which can be used for “achieving fashion effects.” (Gallooning is the equiva[739]

Free access — add to your briefcase to read the full text and ask questions with AI

Related

Sanofi-Aventis v. Apotex Inc.
659 F.3d 1171 (Federal Circuit, 2011)
Blue & Gold Fleet, L.P. v. United States
492 F.3d 1308 (Federal Circuit, 2007)
Aguayo v. Universal Instruments Corp.
356 F. Supp. 2d 699 (S.D. Texas, 2005)
Odetics, Inc. v. Storage Technology Corp.
14 F. Supp. 2d 785 (E.D. Virginia, 1998)
A.C. Aukerman Company v. R.L. Chaides Construction Co.
960 F.2d 1020 (Federal Circuit, 1992)
Goodwall Construction Co. v. Beers Construction Co.
824 F. Supp. 1044 (N.D. Georgia, 1992)
Conopco, Inc. v. May Dept. Stores Co.
784 F. Supp. 648 (E.D. Missouri, 1992)
General Electric Co. v. Hoechst Celanese Corp.
740 F. Supp. 305 (D. Delaware, 1990)
American Standard Inc. v. Pfizer Inc.
722 F. Supp. 86 (D. Delaware, 1989)
Berger & Gorin, Inc. v. Gary Plastic Packaging Corp.
691 F. Supp. 740 (S.D. New York, 1988)
RCA Corp. v. Data General Corp.
701 F. Supp. 456 (D. Delaware, 1988)
McDermott v. Omid International
723 F. Supp. 1228 (S.D. Ohio, 1988)
Badalamenti v. Dunham's, Inc.
680 F. Supp. 256 (E.D. Michigan, 1988)
Jamesbury Corp. v. Litton Industrial Products, Inc.
839 F.2d 1544 (Federal Circuit, 1988)
Paul G. Watstein v. The United States
837 F.2d 1097 (Federal Circuit, 1987)
Soot v. General Electric Co.
681 F. Supp. 157 (S.D. New York, 1987)
Hottel Corp. v. Seaman Corp.
833 F.2d 1570 (Federal Circuit, 1987)

Cite This Page — Counsel Stack

Bluebook (online)
726 F.2d 734, 220 U.S.P.Q. (BNA) 845, 1984 U.S. App. LEXIS 14835, Counsel Stack Legal Research, https://law.counselstack.com/opinion/david-leinoff-v-louis-milona-sons-inc-cafc-1984.