Lester L. Smith, and Cross-Appellee v. Acme General Corporation, and Cross-Appellant

614 F.2d 1086, 204 U.S.P.Q. (BNA) 1060, 1980 U.S. App. LEXIS 21353
CourtCourt of Appeals for the Sixth Circuit
DecidedJanuary 15, 1980
Docket77-3282-3
StatusPublished
Cited by21 cases

This text of 614 F.2d 1086 (Lester L. Smith, and Cross-Appellee v. Acme General Corporation, and Cross-Appellant) is published on Counsel Stack Legal Research, covering Court of Appeals for the Sixth Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Lester L. Smith, and Cross-Appellee v. Acme General Corporation, and Cross-Appellant, 614 F.2d 1086, 204 U.S.P.Q. (BNA) 1060, 1980 U.S. App. LEXIS 21353 (6th Cir. 1980).

Opinion

KEITH, Circuit Judge:

Plaintiff Lester L. Smith appeals from a judgment of the United States District Court for the Northern District of Ohio, Honorable Robert B. Krupansky presiding, dismissing his complaint pursuant to 35 U.S.C. § 271(a) and (b) for patent infringement and declaring the patent claim in suit invalid pursuant to 28 U.S.C. § 2201. Defendant ACME General Corporation (ACME) cross-appeals from the district court’s denial of its prayer for attorneys’ fees. We affirm Judge Krupansky.

FACTS

In 1973, Smith, in Tucson, Arizona, and ACME, in San Dimas, California, independently developed an adjustable bottom pivot assembly for supporting and guiding a folding or swinging door. 1 The record dis *1088 closes that neither Smith nor ACME was aware of the other’s development of a pivot assembly.

On January 28, 1974, Smith filed a patent application for the device which he had developed. The file history (BK. Ex. 128-186) of Smith’s patent application shows that it had twelve (12) claims when it was originally filed. 2 The claims stated that the bottom pivot has a pivot block (36) with a socket (57) in its upper face for receiving a pivot pin (37), and with an offset lower anchor portion (61) having serrated teeth for engaging teeth on the jamb bracket. 3

In March, 1974, Smith visited ACME’s offices in San Dimas, California and offered to sell or license to ACME the overall hardware assembly, including the bottom pivot, that Smith had developed. However, ACME informed Smith that it was not interested in Smith’s assembly and further that ACME was already marketing its own bottom pivot assembly. ACME also gave Smith one of ACME’s assemblies. 4 On April 18, 1974, Smith amended his patent application by adding a thirteenth (13th) claim. Claim 13 states that a “support means” inter joins the pivot pin and the jamb bracket in lieu of reciting the pivot block, as was done in the prior claims. It used functional language (“support means”) to define the pivot block. 5 Initially, this new claim was rejected by the patent office under 35 U.S.C. § 102 as being fully anticipated by “Reference A,” the prior art patent No. 3,597,790 to Kellems which is owned by ACME. 6

On October 17, 1974, Smith amended this new Claim 13. The amended Claim 13 specified that the serrated teeth on the jamb bracket project inwardly from the opposing lengthwise edges of an opening in the jamb bracket to engage the serrated teeth on the pivot “support means.” Smith relied upon that tooth arrangement to get Claim 13 allowed over the Kellems patent No. 3,597,-790 which disclosed all of the other features of that claim. Claim 13 is the subject matter of this patent action.

Smith’s application for the amended Claim 13 was allowed on October 30, 1974, and the patent issued on February 18, 1975, Patent No. 3,866,658. After failing in his attempt to sell or license hardware assemblies having a five-piece bottom pivot corresponding to that shown in Fig. 2 to 5 of the patent in suit, Smith, in the Spring of 1975, adopted a bottom pivot assembly similar to ACME’s (the accused) device. 7

On August 15, 1975, Smith instituted the present action for infringement against ACME. The complaint alleged that defendant ACME infringed plaintiff’s United States Letter Patent No. 3,866,658 (658) “Pivotal Support and Guide Hardware for Folding Doors,” by selling and using, and by actively inducing others to use, hardware claimed in this patent in violation of *1089 plaintiff’s rights pursuant to 35 U.S.C. § 271(a) and (b). The plaintiff prayed for treble damages, injunctive relief and attorney’s fees.

In its answer, ACME denied the infringement and asserted by way of affirmative defense that plaintiff’s patent is invalid because:

1) the subject matter of the claims of Patent No. ’658 and every material and substantial part thereof had been described in public use or sale in the United States and/or described in patents prior to the invention thereof, for over one year prior to the filing in the United States Patent Office of the application upon which said patent was issued;
2) Smith is not the first inventor of the subject matter of Patent No. ’658;
3) Smith did not himself invent the subject matter of the claims of Patent No. ’658;
4) the subject matter of Claim 13 of Patent No. ’658 was filed with the United States Patent Office subsequent to plaintiff’s examination of defendant’s allegedly infringing hardware (the accused device) in violation of 35 U.S.C. § 132;
5) the subject matter of Claim 13 was filed without the requisite oath, pursuant to 35 U.S.C. § 115; or declaration, pursuant to 35 U.S.C. § 25;
6) the subject matter of Patent No. ’658 was non-obvious; and,
7) the claims of Patent No. ’658 do not “particularly point out and distinctly claim” the alleged invention as required by 35 U.S.C. § 112.

ACME also counterclaimed for attorney’s fees pursuant to 35 U.S.C. § 285 and a declaration pursuant to 28 U.S.C. § 2201 that it has neither infringed, contributorily infringed, nor induced infringement of Patent No. ’658 and that the patent is invalid and void.

After a bench trial the district court, in a Memorandum Opinion and Order filed January 10, 1977, found that Smith’s patent was not infringed by ACME and also that Smith’s claim in suit (Claim 13) is invalid. In a judgment filed January 17, 1977, the district court dismissed Smith’s complaint and entered judgment for ACME on its counterclaim for a declaratory judgment. However, the district court denied ACME’s prayer for attorney’s fees. Both sides appealed.

On appeal Smith attacks every factual finding made and conclusion of law reached by the district court in its determination that the accused device did not infringe upon Patent ’658 and that Patent ’658 was invalid for obviousness.

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614 F.2d 1086, 204 U.S.P.Q. (BNA) 1060, 1980 U.S. App. LEXIS 21353, Counsel Stack Legal Research, https://law.counselstack.com/opinion/lester-l-smith-and-cross-appellee-v-acme-general-corporation-and-ca6-1980.