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Carlisle Plastics Inc. v. Spotless Enterprises Inc.

U.S. Court of Appeals, Federal Circuit

January 26, 1999


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 are not prepared to overturn the district court's discretionary decision that this case is not exceptional and that Carlisle is therefore not entitled to an award of attorney fees.


Spotless's cross-appeal concerns the issue of infringement. The district court, following trial, found no infringement, and we uphold that finding.


As is often the case, Spotless's infringement argument turns on claim construction. Each of the asserted claims recites a hanger hook having "an enlarged display portion [or support]" that projects above the top contour of the hook and receives an indicating device. The district court construed the term "enlarged display portion," in accordance with the dictionary definition of the term "enlarged," to mean a display portion that is "larger or greater than that formerly, usually, or normally present." Despite Spotless's contentions to the contrary, the court found nothing in the claims, written description, or prosecution history of the '902 patent to suggest that the term "enlarged display portion" should be accorded a different meaning for purposes of the '902 patent. The court therefore rejected Spotless's proposed definition of the term "enlarged display portion," which did not require that the display portion be "enlarged" in the usual sense of that word, but required only (1) that the display portion be "large enough to display the indicator" and to "restrain against undesirable movement" by the indicator, and (2) that the display portion be "received in the hollow body of an indicator in a releasable manner but yet restrained against undesirable movement." Based on its claim construction, the district court found no literal infringement, because the display portion of Carlisle's products do not extend beyond the normal configuration of the hanger hook and thus lack an "enlarged display portion."

The district court's claim construction was correct. Although, as the district court noted, Spotless's proposed construction of the term "enlarged display portion" is "inventive," it does not comport with the ordinary meaning of the term, nor does it find any support in the language of the patent or its prosecution history. "Enlarged" is a relative term; to be "enlarged" means that the "enlarged" object must be larger than some reference object. Spotless's definition of "enlarged display portion" does not come to terms with this basic point. Rather than pointing to some reference object compared to which the claimed display portion is "enlarged," Spotless defines "enlarged" as meaning simply large enough to be inserted into the hollow portion of an indicator and to restrain the indicator from undesirable movement. That definition, however, could be satisfied by a display portion that did not extend beyond the normal contour of the hanger hook; indeed, Spotless's definition could even cover a display portion that was significantly smaller than the normal size of the hook. The district court properly rejected Spotless's definition in favor of the definition suggested by common usage of the term "enlarged."

Accepting the district court's claim construction, we must sustain the court's Conclusion that the accused products did not literally infringe any of the asserted claims of the reexamined '902 patent. Spotless does not argue that Carlisle's products literally infringe if the court's claim construction was correct, and we hold that the court was not clearly erroneous in finding that the "display portion" of the accused products is not larger than the normal size of the hanger hooks on those products.


With respect to the doctrine of equivalents, the court concluded that prosecution history barred Spotless from asserting that Carlisle's products infringed on that basis. The inclusion of the "enlarged display" element was necessary to the patentability of the asserted claims, the court found. To illustrate, the court noted that Spotless sought, but was not permitted, to add a claim on reexamination of the '902 patent that would have substituted the term "supporting means" for "enlarged display portion." The rejection was based in part on the examiner's Conclusion that the proposed claim would be anticipated by a prior art device in which a size indicator is attached to the top of an ordinary wire hanger and is visible above the hanger.

The district court was correct in refusing to find infringement under the doctrine of equivalents. Claim 31 was added during prosecution of the application by an amendment dated July 25, 1980. That claim recited a hanger hook having a "supporting means" extending from the hook and "an indicating device attached to said supporting means" by having a cavity in the indicating device receive the supporting means. The examiner rejected claim 31 on the ground that it was obvious in light of several prior art references, including two in which the supporting means for the indicator was not larger than the normal size of the hanger hook. In response to the rejection, the applicant represented that claim 31 would be amended to structurally distinguish over the references. In place of claim 31, the applicant then added new claim 41, which, in pertinent part, substituted the term "enlarged display portion" for the term "supporting means." Claim 41 ultimately became claim 1 of the '902 patent and, with a further amendment not relevant here, it became claim 1 of the reexamined '902 patent. The clear inference from the applicant's conduct in response to the rejection of claim 31 is that the applicant gave up a "supporting means" that is not "enlarged," i.e., the applicant gave up a supporting means that is not larger than the normal size of the hanger hook.

A similar surrender occurred in the course of reexamination. As noted by the district court, the patentee attempted to add claim 21 to the patent on reexamination. That claim, like prior claim 31, recited a "supporting means" in place of the "enlarged display portion." The examiner rejected proposed claim 21, both because it would have enlarged the scope of the patent claims on reexamination, in violation of 35 U.S.C. § 305, and because it would have been anticipated by one of the same prior art references that the examiner had cited against prior claim 31, a reference that disclosed a supporting means for a hollow- based indicator that was not enlarged, i.e., that was not larger than the normal size of the hanger hook. The patentee did not pursue claim 21 in light of the rejection. The Disposition of claim 21 adds support to the district court's Conclusion that the patent should not be given a scope of equivalence large enough to include structures to which the examiner had determined the patent could not extend. We therefore uphold the district court's ruling that Spotless failed to prove infringement under the doctrine of equivalents.


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