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September 19, 1975

Owen Finlay MACLAREN and Miron Charles Bell, Plaintiffs,
B-I-W GROUP INC., and Genesee Plastic Company, Inc., Defendants. B-I-W GROUP INC., Counterclaim-Plaintiff, v. Owen Finlay MACLAREN et al., Counterclaim-Defendants

Pollack, District Judge.

The opinion of the court was delivered by: POLLACK

POLLACK, District Judge.

This is a suit arising under the patent laws in which the inventor and patentee, Maclaren, and his American licensee, Bell, charge defendants B-I-W Group Incorporated *fn1" and Cross River Products, Inc., with wilful infringement of United States Letters Patent No. 3,390,893, issued to Maclaren for "Structures for Folding Baby-Carriages, Chairs and the Like" on July 2, 1968.

 In its answer, B-I-W denied infringement and asserted that the patent is invalid on the grounds of (1) obviousness and lack of novelty and utility, (2) insufficient disclosure of the invention, and (3) late claiming based upon public use. B-I-W also brought two counterclaims, the first seeking a declaratory judgment that the patent is invalid and not infringed and the second, which was subsequently withdrawn, alleging unfair competition on the basis of threats of suit made to B-I-W's sales representatives and customers. General Recreation, Inc. and Gerico, Inc. were joined as additional defendants on the counterclaim as sublicensees of Bell under an agreement signed in November 1972.

 The Court concludes that the patent is valid and that it is infringed by defendants' stroller. Accordingly, judgment will be entered in favor of the plaintiffs against defendants *fn2" on liability for infringement, and B-I-W's counterclaim for a declaratory judgment of patent invalidity and non-infringement will be dismissed.

 The dispute in this action concerns the right to manufacture a type of collapsible baby stroller which has experienced stunning commercial success in the last several years and is now the best selling stroller on the market, according to the testimony of plaintiffs' trade expert. *fn3" The type of stroller involved in this suit is lightweight, but sturdy and may be collapsed with one hand into the compact shape of an umbrella, *fn4" rather than a bulky rectangle. As can readily be imagined, such a stroller would be particularly useful to parents travelling by subway or bus or living in non-elevator buildings and is stored easily in the trunk of the smallest compact car. The conception of this type of stroller is undeniably clever. However, the question as posed by B-I-W is whether Maclaren's creativity was that of an inventor or simply that of a skilled mechanic.

 Owen Finlay Maclaren, the named inventor and owner of the patent herein, is presently a director of Andrews Maclaren, Ltd., a British company which manufactures and sells strollers of the type depicted in figure 4 of the patent in countries other than the United States under the trademark "BABY BUGGY". Maclaren has had a distinguished career in the field of engineering and design and is a member of the Society of Automotive Engineers, U.S.A. and an Associate Fellow of the Royal Aeronautical Society. Maclaren holds a number of patents in his name, most of them in the aircraft field and some of them relating to chairs or strollers. Some of Maclaren's work on aircraft undercarriages has been displayed at the Smithsonian Institute, and one of his strollers, of the type of figure 4 of the patent, has been displayed in the Museum of Modern Art.

 Maclaren's patent application was filed with the United States Patent Office on July 18, 1966, claiming priority of Great Britain Applications 30,787/65 filed on July 20, 1965 and 34,181/65 filed on August 10, 1965. The British applications subsequently issued as British Patent No. 1,154,362. Following a number of amendments, the United States patent was issued on July 2, 1968; it is entitled to the 1965 filing dates of the British applications from which it claims priority pursuant to the provisions of 35 U.S.C. § 119. Maclaren first sold a product constructed in accordance with the teachings of the patent in or about February 1967 in Great Britain.

 The first contact with the Maclaren stroller by any of the B-I-W principals *fn5" was in London in the summer of 1969 when Goodwin purchased a stroller and brought it back to the United States. In the fall, Goodwin demonstrated to Brown how the stroller collapsed and indicated that his child had liked it. *fn6" Three weeks later, Brown and Goodwin decided to pursue the stroller as a "business problem" for their company which at that time had venture capital but no product. At a third meeting they discussed the fact that the stroller was patented, as well as their research into possible new markets which their company might enter. They concluded that entry into the juvenile furniture market would be relatively easy because the industry was badly managed and the capital requirements were low.

 On December 27, 1969, Goodwin wrote to Maclaren indicating that they were "sincerely impressed" with the patented BABY BUGGY and inquiring whether Maclaren would be interested in negotiating with them concerning the manufacture of the stroller. Maclaren replied that he had licensed Bell to manufacture products under the patent in the United States. *fn7" Goodwin in turn arranged a meeting with Bell in January 1970 to discuss a sub-license under the Maclaren patent. Brown and Goodwin indicated to Bell that their thinking about manufacturing the stroller was just in an exploratory stage at that point.

 In January or February 1970, Goodwin and Brown decided to bring Sloan in on their review of the stroller, to consider technical production questions about costs. Sloan examined how the parts of the Maclaren stroller were manufactured and assembled. Goodwin, a lawyer, began reviewing the Maclaren patent itself and later consulted a patent lawyer named Booth. In February, Goodwin told Brown that he was pretty sure, but not positive, that the Maclaren patent was invalid.

 Goodwin and Brown met again with Bell on February 27, 1970 to continue discussion of a sublicense. Goodwin told Bell that he thought that there were weaknesses in the patent, but Bell did not agree. Brown and Goodwin thought that Bell's price was too high for them to manufacture under a sublicense, and they decided that Goodwin would complete the patent search.

 Goodwin and Brown made their final overture to Bell by letter in early March, indicating that B-I-W intended to manufacture a non-infringing product which would be highly competitive and suggesting that Bell cooperate with them in attacking the market. Goodwin again reiterated their doubts about the validity of the patent and suggested that Bell undertake a critical examination by patent counsel. Bell never responded to that letter.

 On March 15th, Brown, Goodwin, Sloan and Booth met to discuss the stroller. Brown indicated that he did not want to get involved with a product that would drag them into court and that he was skeptical about proceeding with the stroller. Goodwin and Booth argued on the basis of 30 to 50 patents that somebody else had previously developed the stroller idea and were ultimately able to convince Brown that the patent was invalid or could be found to be invalid.

 The first B-I-W prototype was produced in May or June of 1970. Sloan testified that the parts of the Maclaren stroller were not duplicated, but that B-I-W tried to construct a stroller with similar structural components and that a majority of the parts of the first prototype were similar to those of the Maclaren stroller. A comparison of the Maclaren BABY BUGGY and the B-I-W UMBROLLER strongly suggests that such testimony constitutes a rather disingenuous understatement.

 On August 27, 1970, Goodwin wrote to Maclaren, stating that they believed the patent to be invalid, or, if not invalid, easily circumvented and that they had:

. . . every intention of entering the subject market with a highly collapsible item, and we are at this time actively engaged in preparations toward that end. Prior to undertaking a critical examination of the patent to you, we had already identified reasonable alternatives in the prior art. A competitive alternative is still under consideration; however, pending one remaining cost decision, we shall probably commence the manufacture and distribution of a model allegedly covered by the patent to you. (Emphasis added)

 Goodwin then indicated that if the asserted defects in the patent, which were identified in an accompanying memorandum, could be corrected, B-I-W would be prepared to negotiate within a framework specified in the letter. No agreement was ever reached between Maclaren and B-I-W. The latter proceeded with the manufacture and marketing of its unpatented folding stroller through a subcontractor and a subsidiary and this suit was thereafter filed on December 7, 1970.


 United States Letters Patent No. 3,390,893 for "Structures for Folding Baby-Carriages, Chairs and the Like" was issued with one independent claim describing the basic structure and 14 dependent claims describing various refinements in the structure. Claim 1 of the patent defines a collapsible support assembly consisting of a bottom cross frame and a back cross frame each consisting of interpivoted rigid members. Two-axes pivot joints interpivotally attach one of each of the bottom frame members to one of each of the back frame members at each of two corners of the cross frames to permit the members of each cross frame to pivot with respect to each other and to permit the cross frames to pivot with respect to each other. Two foldable brace members are pivotally attached to the bottom cross frame near the other two corners of the bottom cross frame respectively and to the back cross frame near the other two corners of the back cross frame respectively. The "first releasable means" holds the members of at least one of the cross frames in an extended position when the assembly is unfolded. (Members 9A, 9B and knuckle joint 10 in the drawings) The "second releasable means" holds the foldable brace members in an extended position when the assembly is unfolded.

 The structure must permit two types of movement: (1) each cross frame must be permitted to widen or contract and (2) each cross frame must be permitted to collapse as a whole on to the other cross frame. When the structure is in the extended position, the same two types of folding movement must be prevented. Collapse of one cross frame on to the other is prevented by keeping the side braces extended. Prevention of inward or outward folding of the side braces is the function of the "second releasable means".

 As mentioned in the specification, there are many folding structures of this kind, and most of them fold "flat"; that is to say their extended and basically 3-dimensional envelope, is foldable into a basically 2-dimensional envelope disregarding the obviously necessary structural volume when folded. The invention is concerned with structures which may be colloquially described as "stick folding" as compared to "flat folding", i.e., a three dimensional structure which is foldable in effect into a single dimension in the same sense as an umbrella, rather than into two dimensions in the same sense as an ordinary bridge chair. The specification and drawings disclose simultaneous folding in the two dimensions, the collapsing action of the back and bottom frames being accompanied by the breaking of the braces so that the corners of the bottom frame rise toward the upward folding position depicted in figure 2 of the patent. The specification indicates that such a structure when folded may be easily stored and when extended may be lightweight yet sturdy.

 The specification and accompanying drawings describe in particular two baby strollers or carriages as examples of the invention, but the specification expressly indicates that the invention also contemplates folding chairs, invalid chairs, shopping carriers "or any such article, where a three-dimensional structure is required to be folded into a stick-like formation".


 Simply stated, the conditions of patentability are: novelty, utility, and unobviousness, provided the right to patent has not been lost, and full disclosure. B-I-W argues that the patent is invalid on three basic grounds: (1) the patent does not adequately disclose the claimed invention as required by 35 U.S.C. § 112, (2) the claimed invention is neither useful, nor novel, nor non-obvious as required by 35 U.S.C. §§ 101, 102 and 103, and (3) certain features of the invention were in public use more than one year before they were claimed in the patent application.

 1. Disclosure

 No invention can be patented unless it is so fully disclosed that the public is enabled to use it. This is the quid pro quo given in exchange for the temporary right to exclude.

 B-I-W's expert Gambrell *fn8" testified that if the stroller actually produced by Maclaren represents his invention, the patent itself does not adequately disclose or claim that invention. Section 112 of Title 35 provides that:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

 The purpose of this requirement for an "enabling disclosure" is twofold: first, to enable those skilled in the art to understand and apply the teaching of the invention, and second, to avoid uncertainty as to the scope of the invention which might discourage enterprise and experimentation. Georgia-Pacific Corp. v. United States Plywood Corp., 258 F.2d 124, 136 (2d Cir.), cert. denied, 358 U.S. 884, 79 S. Ct. 124, 3 L. Ed. 2d 112 (1958). Whether the inventor has met the statutory requirement is determined by inquiring whether the disclosure of the patent -- the technical description with drawings -- is sufficient to enable one skilled in the art to make and use the product without undue experimentation. Ansul Company v. Uniroyal, Inc., 448 F.2d 872, 879 (2d Cir. 1971), cert. denied, 404 U.S. 1018, 92 S. Ct. 680, 30 L. Ed. 2d 666 (1972). The claims that appear in the patent following the specification are also part of the specification. They are separate, legally-technical definitions of the invention covered by the patent, defining the scope of the patentee's protection.

 B-I-W contends that the disclosure in the Maclaren patent is inadequate in the following respects: (1) the working of the pivot joint described in claim one, (2) the elements constituting the second releasable means described in claim 1, and (3) the point of connection of the seat and wheel struts to the foldable brace members.

 The two types of folding movement described in claim 1 require movement about at least three axes. B-I-W contends that claim 1 discloses a pivot joint allowing movement about only two axes and therefore describes an inoperable device which is an inadequate recitation under § 112. See Indiana General Corp. v. Krystinel Corp., 297 F. Supp. 427, 441 (S.D.N.Y.1969), aff'd, 421 F.2d 1023 (2d Cir.), cert. denied, 398 U.S. 928, 90 S. Ct. 1820, 26 L. Ed. 2d 91 (1970). The relevant language of claim 1 is as follows:

. . . a two-axes pivot joint interpivotally attaching one of each of the bottom frame members to one of each of the back frame members at each of two corners of said cross frames, said axes being oriented to permit the members of each cross frame to pivot with respect to each other and to permit said cross frames to pivot with respect to each other . . .

 Maclaren contends that the language of claim 1 taken as a whole does disclose an operable pivot joint, a third axis being provided by the phrase "interpivotally attaching" read in conjunction with the remainder of claim 1 which discusses the type of relative movement which the pivot joint must permit.

 The Courts have recognized the problems posed by the inexactitude of language in an area requiring precision of description, e.g., Georgia-Pacific Corp. v. United States Plywood Corp., 258 F.2d 124, 136 (2d Cir.), cert. denied, 358 U.S. 884, 79 S. Ct. 124, 3 L. Ed. 2d 112 (1958), and it has been said that an inventor may be his own lexicographer. E.g., Bela Seating Company v. Poloron Products, Inc., 297 F. Supp. 489, 506 (N.D.Ill.1968), aff'd, 438 F.2d 733 (7th Cir.), cert. denied, 403 U.S. 922, 91 S. Ct. 2228, 29 L. Ed. 2d 701 (1971). The function of claims is to define the scope of the invention; it is not their function to describe the embodiment. Claims are legal definitions, not descriptions. Disclosure is further performed by the patent specification and accompanying drawings which may elucidate the claims of the patent. Shaw v. E. B. & A. C. Whiting Co., 417 F.2d 1097, 1106 n.11 (2d Cir. 1969) cert. denied, 397 U.S. 1076, 90 S. Ct. 1518, 25 L. Ed. 2d 811 (1970); Autogiro Company of America v. United States, 384 F.2d 391, 398, 181 Ct.Cl. 55 (1967); see United States v. Adams, 383 U.S. 39, 48-49, 86 S. Ct. 708, 15 L. Ed. 2d 572 (1966).

 The Court concludes that claim 1 read in conjunction with the specification and figures 1, 2, 3 and 4 adequately discloses the nature of the claimed pivot joint to one skilled in the art. Claim 1 and the specification adequately disclose the nature of the two types of folding which must be permitted. A comparison of figures 1 and 4 with 2 and 3 illustrates the "before" and "after" results of the folding. The mechanical principles involved in the operation of the Maclaren strollers are not particularly complicated, and it seems most probable that one skilled in the art would readily realize that three axes of movement would be required to accomplish the type of folding described and that "interpivotally attaching . . ." described the third axis. Moreover, the drawings in the patent suggest the relatively simple hardware -- two L shaped brackets and 3 pins -- which may be used to achieve the desired result.

 Claim 1 includes a "second releasable means to hold said [foldable] brace members in an extended position when the assembly is unfolded." Section 112 provides in pertinent part that:

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

 Maclaren contends that the second releasable means consists of the knuckle joints (parts 7B and 8B in figures 1 and 4 of the patent) plus either the seat struts (12A and 12B in figures 1 and 4) or the wheel struts (40, 41 in figure 4, not contained in the figure 1 embodiment of the patent) or both sets of struts. B-I-W contends that the disclosure of the second releasable means is inadequate an is in fact limited to the knuckle joints. B-I-W further contends that a second releasable means limited to the two knuckle joints would have been obvious in light of the prior art which is discussed below.

 If the second releasable means is to "hold" the foldable brace members extended, it must prevent both inward and outward folding. The knuckle joint will prevent outward fold, but does nothing to prevent inward fold. Both mechanical experts agreed that if neither set of struts were present, the foldable braces would collapse when inward pressure was applied, for example by the weight of a baby placed on the seat. B-I-W's expert testified, however, that because of the special cooperation of all the members of the structure, the struts do not contribute anything more to the function of the second releasable means than the other members do. While it is true that the rigidity of the structure depends on the interaction of all the members, the struts do contribute to preventing inward folding of the side braces in a more direct sense than the other members.

 The Court concludes that since the function of the second releasable means is to "hold" the side braces extended, a mechanic skilled in the art would readily and necessarily infer that the second releasable means consisted of something beyond the knuckle joints in order to prevent inward folding of the side braces and that that something would be the seat and wheel struts connected to the side braces. Claim 1 itself defines only the function of the second releasable means. *fn9" As § 112 indicates, one may look to the specification or its equivalent for a description of the components of the second releasable means. B-I-W properly points out that any express reference in the specification to the seat struts and the wheel struts by member number is in the apparent context of supporting the seat or the wheels. (col. 3, lines 53-59; col. 4, lines 29-37). This does not necessarily preclude their performing an additional function, and Maclaren's mechanical expert testified that the role of the struts as part of the second releasable means is implicitly recited in the description of the folding movement in column 4, lines 6-12 of the patent specification, which refer the reader to figures 2 and 3 as well. If one follows in figure 2 the nature of the folding movement described in column 4, the role of the struts and the sense in which they are "releasable" from the locked or extended position becomes apparent. Moreover, both figures 1 and 4 illustrate that the seat struts in the former and both the seat struts and the wheel struts in the latter perform the function of the second releasable means of keeping the side braces extended by preventing inward fold. While it may be that one skilled in the art would have to think a bit about the components of the second releasable means, the drawings and specification considered in light of the relatively simple mechanical principles embodied in the stroller nonetheless meet the disclosure requirements of § 112.

 B-I-W attempted to demonstrate by a mechanical experiment at trial that the point of connection to the seat strut to the brace element, which rigidly fixes the pivoting length of the strut, must be selected with precision in order to prevent any undue bending pressures on the joints which would otherwise result as the fixed length of the strut rotates through the required folding action. B-I-W pointed out that the proper connection point is not even remotely indicated in the patent drawings and argued that the drawings must precisely locate that point since the role of the seat and wheel struts as part of the second releasable means is at best disclosed by mere implication in the claim and specification.

 The test of disclosure, however, is only that one skilled in the art must be able to ascertain the invention without undue experimentation. Maclaren's mechanical expert testified that the proper location of the connection points for the struts could be determined either through the use of drafting with proper scale and perspective, which the patent drawings do not purport to present, *fn10" or through trial and error with an actual model. The Court finds that the patent discloses sufficient information to enable one skilled in the art to succeed with either or a combination of both approaches without undue experimentation.

 2. Utility, Novelty and Non-obviousness

 In order for a claimed invention to be patentable, it must be new and useful, 35 U.S.C. § 101, and meet the requirements of novelty under § 102 and satisfy the requirement of non-obviousness under 35 U.S.C. § 103. E. g., Graham v. John Deere Co., 383 U.S. 1, 12, 86 S. Ct. 684, 15 L. Ed. 2d 545 (1966). The statutory bar, 35 U.S.C. § 102, is a one year time bar. If the applicant's invention is described in a patent or publication anywhere, or is in public use or on sale in this country more ...

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