Before Rich, Bryson, and Gajarsa, Circuit Judges.
The opinion of the court was delivered by: Bryson, Circuit Judge.
NOTE: Pursuant to Fed. Cir. R. 47.6, this Disposition is not citable as precedent. It is a public record. The Disposition will appear in tables published periodically.
The technology on which this case turns involves clothes hangers. Spotless Plastics Pty., Ltd., an Australian company, owns United States Patent No. 4,322,902 (the '902 patent), a patent that recites and claims certain hangers and indicating devices that can be used to indicate the size or other characteristic of the garment that is hanging on the hanger. Spotless Enterprises, Inc., the American affiliate of Spotless Plastics, is the exclusive licensee of the '902 patent. Different Dimensions, Inc., was a competitor of Spotless Plastics Pty., Ltd., and Spotless Enterprises, Inc., (collectively, Spotless) in the sizing hanger business. Spotless asserted that Different Dimensions' "top sizers" (i.e., hangers with a size indicator on the top of the hanger hook rather than on the side of the hook) infringed the '902 patent. Different Dimensions subsequently filed an action in the United States District Court for the Eastern District of New York seeking a declaratory judgment that the '902 patent was invalid and that Different Dimensions' top sizers did not infringe the '902 patent. Spotless counterclaimed for infringement. While the case was pending, Different Dimensions was acquired by appellant Carlisle Plastics, Inc. Also during the pendency of the case, the Patent and Trademark Office reexamined the '902 patent. Following reexamination, several claims were amended, one was canceled, the patentability of others was confirmed, and four new claims were added and determined to be patentable.
Spotless brought a separate action for infringement, alleging that certain of Carlisle's products, not part of the earlier action, also infringed the '902 patent. Carlisle then counterclaimed, seeking a declaration of invalidity and non-infringement. Both actions were consolidated for trial.
After a bench trial, the court rejected Carlisle's contention that the asserted claims of the '902 patent (claims 1, 2, 17, 18, and 19) were invalid, but it agreed with Carlisle that its top sizer did not infringe those claims. The court also denied Carlisle's request that the case be denominated an "exceptional case" within the meaning of 35 U.S.C. § 285 and that Carlisle be awarded reasonable attorney fees. Each party has appealed from those aspects of the trial court's judgment adverse to it. Finding no merit to either party's appeal from the careful and comprehensive Disposition of this case by the district court, we affirm the judgment in all respects.
Carlisle appeals from the aspect of the court's judgment ruling that the asserted claims of the '902 patent are not invalid for obviousness and from the court's refusal to find this to be an "exceptional case" for purposes of awarding attorney fees to Carlisle.
Simplifying somewhat, the asserted claims of the reexamined '902 patent claim a hanger with "an enlarged display portion" extending from the hanger hook so that it projects above the top contour of the hook, and an indicating device having a hollow body that receives at least a portion of the display portion. Carlisle contends that the claimed invention of the '902 patent would have been obvious from the prior art. Among the references to which Carlisle points are various hangers with display areas above the hanger hook, including hangers designed to accept cards or tags in a slot above the hook. In addition, Carlisle points to other prior art references that disclose indicating devices having hollow bodies that were used to attach the indicators to the hangers. It would have been obvious, Carlisle argues, to produce the claimed invention by combining exemplars from those two groups of references.
All of the references on which Carlisle relies were before both the examiner who reexamined the patent and the district Judge who rejected the assertion of obviousness. The district court found that nothing in the prior art suggested that combination to which Carlisle pointed; in the absence of some teaching, suggestion, or motivation to combine the prior art references, the court held, the claimed invention should not be held obvious. The court further pointed out that no one prior to the inventor had combined the elements (even though some of the prior art references were quite old by the time of the invention), and the commercial embodiment of the patent experienced substantial financial success. Accordingly, the court held that Carlisle had failed to adduce clear and convincing evidence of obviousness.
In this court, Carlisle simply repeats the arguments it made to the district court. While the "technology" of this case is very simple, and while the elements of the invention were plainly present in the prior art references, we are not prepared to overturn the district court's ruling that Carlisle failed to satisfy its heavy burden of providing the court with clear and convincing evidence that the invention of the reexamined '902 patent would have been obvious to one of ordinary skill in the art at the time of the invention. See Patlex Corp. v. Mossinghoff, 758 F.2d 594, 603 (Fed. Cir. 1985) (burden of proof of unpatentability more difficult to sustain following a successful reexamination). We agree with the district court that the commercial success of the embodiment of the invention and the failure of anyone (including Carlisle's predecessor) to combine the prior art elements before the inventor did so provide significant support for the Conclusion that the invention was not obvious, notwithstanding that combining the elements in the prior art would seem, with the considerable benefit of hindsight, to be fairly elementary. We therefore affirm the district court's judgment that the asserted claims of the '902 patent were not invalid for obviousness.
We also affirm the trial court's refusal to characterize this case as "exceptional" for purposes of imposing Carlisle's attorney fees on Spotless. Such a determination is committed to the discretion of the district court, see W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1559 (Fed. Cir. 1983), and an abuse of discretion is not readily found in the absence of a clear legal error in applying the test for exceptional status, which is plainly not present here. Carlisle's appeal has failed with respect to the invalidity portion of the case, and we regard Spotless's argument with respect to infringement under the doctrine of equivalents to be reasonable, even if ultimately unpersuasive. We therefore ...