Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

KWIK PRODUCTS, INC. v. NATIONAL EXPRESS

February 7, 2005.

KWIK PRODUCTS, INC., Plaintiff,
v.
NATIONAL EXPRESS, INC., CMD PRODUCTS, GEORGE E. ALLIS, TORVIAN, INC., ALEX J. PHINN, JR., and GRIFF and ASSOCIATES, L.P., Defendants.



The opinion of the court was delivered by: DENNY CHIN, District Judge

OPINION

In this patent infringement case, plaintiff Kwik Products, Inc. ("Kwik"), a manufacturer of vegetation string trimmer heads, alleges that defendants infringed its patent, U.S. Patent No. 5,896,666 (the "'666 Patent"). Defendants counterclaim, contending that the '666 Patent is invalid. The case was tried to the Court without a jury in October 2004. For the reasons that follow, judgment will be entered in favor of defendants on the infringement claims and in favor of Kwik on the invalidity counterclaim. Pursuant to Fed.R.Civ.P. 52(a), my findings of fact and conclusions of law follow.

  STATEMENT OF THE CASE

  A. The Facts

  1. Vegetation Trimmers

  Vegetation trimmers are outdoor power tools used to cut grass, weeds, and other vegetation. They are powered by gasoline Page 2 or electricity and feature a cutting head that spins a blade or string, at speeds up to 10,000 rpm. The heads are replaceable and a market exists for replacement trimmer heads. For many years, the string trimmers came principally in two versions: spool and weave. The spool systems used spools of coiled string in the head, with one end extending out and the string advanced by manual or automatic activation. Examples included "tap and go" or "bump and feed" devices that required the user to tap or bump the bottom of the head on the ground to advance the trimmer line from the spool. The weave systems used a string woven through a predetermined path or channel in the trimmer head and then extending out. (PTO ¶¶ 12, 13, 14, 15; 10/12/04 Tr. at 28; 10/13/04 Tr. at 121).*fn1

  These systems had drawbacks. The string trimmers were cumbersome, time-consuming, and hard to load. The coil systems required the user to wind string around a spool. The weave systems required the user to weave lines of string through the trimmer head, including around posts. The blade systems required the user to affix the blade to a trimmer head with a bolt. The blades also presented a potential danger, as they sometimes broke Page 3 off upon hitting a hard surface, such as a rock. (10/12/04 Tr. at 27-29; 10/13/04 Tr. at 120-22).

  Over the years, customers complained about the drawbacks in the various vegetation trimmer systems. Certainly by the mid-1990s, there was a demand for a better trimmer head — one that could be more easily loaded and replaced. (10/12/04 Tr. at 30-31).

  2. Kwik and the '666 Patent

  Kwik has been in the business of manufacturing vegetation trimmer heads since 1997 or 1998. Kwik was started by Fernando Iacona and his brother. Iacona had been working with power tools since he was a twelve-year old apprentice at a hardware store repairing outdoor power equipment. After graduating from high school in 1984, he opened a lawnmower shop in Flushing, New York, with his brother, and worked for years selling and repairing power tools, including vegetation trimmers. (10/12/04 Tr. at 22-27, 36; PTO ¶ 16).

  In 1996, Iacona and his brother conceived of an idea for a quick-loading trimmer head. They developed a prototype that used two eight-inch sections of a hard plastic "string" inserted into opposite sides of a "head," with each piece of string held in place by a clamping member mounted on a post and connected to a spring. The string could be easily loaded, and therefore easily replaced, while still being held firmly in place when the head was spinning at a high speed. (10/12/04 Tr. at 27, 31-32; PX 1; PTO ¶¶ 9, 17). Page 4

  In June 1996, the Iacona brothers met with a patent attorney, Anthony J. Casella, Esq. On August 23, 1996, Casella submitted an initial application to the United States Patent and Trademark Office (the "Patent Office") for a patent on the trimmer head invention. The Iaconas thereafter submitted a continuation application as well. (PTO ¶¶ 18, 19; 10/12/04 Tr. at 32-34).

  The first application was granted and U.S. Patent No. 5,758,424 (the "'424 Patent") was issued on June 2, 1998. The continuation application was granted and the '666 Patent, the patent in suit, was issued on April 27, 1999. (PTO ¶¶ 19, 20; PXs 2, 3).

  The '666 Patent is entitled "Head for String Trimmer." Claims 1-10 and 15-19 — the claims at issue in this case*fn2 — provide as follows:
1. A combination of a cutting head and string for cutting and trimming vegetation, said combination being selectively rotationally driven through a drive shaft, said combination comprising:
at least one generally straight length of string, each said string having two ends and an intermediate portion extending therebetween;
  a cutting head selectively rotationally driven by the drive shaft, said head Page 5 having a base plate and a side wall, said base plate defining a periphery, said side wall extending from said periphery, said base plate and said side wall collectively defining a volume, said side wall being formed with at least one aperture corresponding to each said string, wherein each said string is disposed to extend through a single said aperture with one said end of each said string being disposed in said volume defined by said base plate and said side wall; and
 
at least one clamping means for selectively fixing each said string to said head.*fn3
2. A combination as in claim 1, wherein each said clamping means includes a pivotally mounted clamping member and a pressing wall aligned to cooperatively clamp the string.
3. A combination as in claim 2, wherein each said clamping member being formed with a center of gravity disposed between said pivotal mounting of said clamping member and cooperating pressing wall.
4. A cutting head for a string trimmer, said cutting head for accommodating at least one piece of string, the string being fixedly supported in said cutting head, said cutting head comprising:
base plate, said base plate defining a periphery;
a side wall extending from the periphery of said base plate, said side wall formed to define at least one aperture;
  at least one wall means corresponding to Page 6 each said aperture, each said wall means for at least partially supporting a single piece of the string, each said wall means disposed adjacent a single said aperture;
 
at least one clamping member corresponding to each said aperture, each said clamping member being pivotally mounted adjacent a single said aperture and opposite a single said wall means, each said clamping member having a contact surface for engagement with said opposing wall means; and
at least one biasing means corresponding to each said clamping member, each said biasing means for both urging a single said clamping member into contact with a corresponding opposing said wall means, and urging said contact surface of said clamping member in a direction towards said aperture into engagement with an opposing said wall means, wherein each pair of said clamping member and said opposing wall means fixedly supports a single piece of the string in said cutting head.
5. A cutting head as in claim 4, wherein at least one said biasing means includes a coil spring.
6. A cutting head as in claim 4, wherein at least one said biasing means includes a torsional spring.
7. A cutting head as in claim 4, wherein the center of gravity of each said clamping member is located between said pivotal mounting of said clamping member and said opposing wall means.
8. A cutting head as in claim 4, wherein at least one said clamping member is formed as a cam.
9. A cutting head as in claim 4, wherein at least one said clamping member is formed as a cylindrical rod.
  10. A cutting head as in claim 4, wherein at Page 7 least one said wall means is formed continuously with said side wall and extends inwardly from said side wall.

  . . .

 
15. A cutting head for a string trimmer, said cutting head for accommodating at least one piece of string, the string being fixedly supported in said cutting head, said cutting head comprising:
a base plate, said base plate defining a periphery;
a side wall extending from the periphery of said base plate, said side wall formed to define at least one aperture;
at least one wall means corresponding to each said aperture, each said wall means for at least partially supporting a single piece of the string, each said wall means disposed adjacent a single said aperture;
at least one clamping member corresponding to each said aperture, each said clamping member being pivotally mounted adjacent a single said aperture and opposite a single said wall means, each said clamping member having a contact surface for engagement with the string; and
at least one spring corresponding to each said clamping member, each said spring urging said contact surface of said clamping member in a direction towards the opposing wall means and said aperture, which is adjacent said clamping member, and wherein each pair of said clamping member and said opposing wall means fixedly supports a single piece of the string in said cutting head.
  16. A cutting head as in claim 15, wherein the center of gravity of each said clamping member is located between said pivotal mounting of said clamping member and said opposing wall means. Page 8
 
17. A cutting head as in claim 15, wherein at least one said clamping member is formed as a cam.
18. A cutting head as in claim 15, wherein at least one said clamping member is formed with a plurality of spaced ribs.
19. A cutting head as in claim 15, wherein at least one said wall means is formed continuously with said side wall and extends inwardly from said side wall.
(PX 3).

  At some point, Iacona acquired his brother's rights to the '666 Patent. Eventually, Iacona assigned the '666 Patent to Kwik, and Kwik currently is the sole owner of all rights to the '666 Patent. (PTO ¶ 8; 10/12/04 Tr. at 35-36).

  Kwik began manufacturing its easy-load trimmer head — the commercial embodiment of the invention covered by the '666 Patent — in 1998. (10/12/04 Tr. at 37-38; PX 5). Its trimmer head is sold both as part of a complete power trimmer and separately as a replacement head. For example, Kwik's trimmer head is sold as a "Rapid-Loader" replacement string trimmer cutting head under the Echo brand name and it is also sold on original trimmers made by Echo as well. Echo is the largest trimmer manufacturer in the country. Kwik's product has also been marketed by Briggs and Stratton, another substantial outdoor power equipment company. According to its label, Kwik's Rapid Loader also fits trimmers made by Black & Decker, Craftsman, Homelite, Husqvarna, John Deere, Sears, Stihl, Toro, and Weedeater, among others. (10/12/04 Tr. at 38-39, 47-48, 80-81; PX 5). Page 9

  Kwik's easy-load trimmer was received well in the market. When it was introduced, there was no other trimmer head that loaded as easily or quickly. (10/12/04 Tr. at 37, 43).

  3. Defendants and Their Products

  Defendant George E. Allis spent most of his professional life in the floor and wall covering business. In the late 1990s, he conceived of an idea for using velcro to fasten a shower curtain to a wall. In the course of pursuing that idea he met defendant Alex J. Phinn, Jr., and eventually began doing some work for Phinn and defendant Torvian, Inc. (10/13/04 Tr. at 71-74, 137, 146).

  In 1998, Allis began a landscaping business with his brother. (10/13/04 Tr. at 74). Allis was dissatisfied with the vegetation trimmers that were available on the market and he developed an idea for a trimmer head using a looped line device. (10/13/04 Tr. at 74-75, 94-96; PX 32; PTO ¶¶ 26, 27). He offered the looped line idea to Phinn and others in 1999 and 2000, but the looped line device was never marketed. (10/13/04 Tr. at 75-77, 165; PTO ¶ 28).

  Later in 2000, Allis met again with Phinn about his looped line vegetation trimmer head, and this time representatives of a power tool company, Shakespeare, were present as well. At the meeting, the Shakespeare representatives showed Allis a Kwik trimmer head and compared his device to the Kwik head. The different heads were taken outside and tested on the grass. The Kwik head loaded more quickly and easily. Page 10 (10/13/04 Tr. at 77-80, 96-98, 146; PTO ¶ 30).

  In August or September 2000, after the meeting with Shakespeare and Phinn, Allis purchased a Kwik trimmer head (the Echo Rapid-Loader) and took it apart. The Kwik device reminded him of a one-way gripping device that he had seen in his youth. He looked for and found the device, which was sold under the name "Gripple" — this was a one-way gripping device used to hold or splice wires that was loaded simply by inserting a wire into the opening. (10/13/04 Tr. at 80-84, 98-100, 101-04; DX 95).

  Allis then developed his own spring-biased trimmer head. When he did so, he had both the Kwik device and the Gripple device in front of him, and the Kwik device influenced the design of his own device. He was aware of the locking mechanism of the Kwik device when he designed his own device, and indeed he was impressed with the Kwik device. In the meantime, he had also found the Iacona patents and reviewed them. He did not want to infringe on the Iacona patents and thus he sought to ensure that his device and the Kwik device did not work in the same way. His design used a spring-biased, slideable clamping member to hold straight lengths of trimmer line in place. (10/13/04 Tr. at 80-84, 105-06; PTO ¶ 32; see PX 35; DX 3).

  Allis tried out his spring-biased device, using a Grass Gator trimmer head. He created a rough prototype, prepared drawings, and then commissioned a machine shop to do another prototype. (10/13/04 Tr. at 107-11; DX 3). After discussions with another company about manufacturing and distributing his Page 11 trimmer, he returned to Phinn, who in turn contacted defendant CMD Products ("CMD"). (10/13/04 Tr. at 111-15, 170-72).

  On August 17, 2001, Allis submitted a provisional patent application for his device to the Patent Office. (10/13/04 Tr. at 76, 118, 129; DX 36). He contacted counsel, and on July 24, 2002, counsel gave him an opinion that his device did not infringe any patent, including the '666 Patent. (PTO ¶ 39; PX 46; DX 25; 10/14/04 Tr. at 70-71). On August 20, 2002, with the assistance of counsel (and financial assistance from Phinn), Allis applied to convert his provisional application to an application for a utility patent. (10/13/04 Tr. at 118-19, 129-30, 169-70; 10/14/04 Tr. at 91-93; DXs 26, 27, 38). The '666 and '424 Patents were disclosed to the Patent Office as part of the process. (10/13/04 Tr. at 101; 10/14/04 Tr. at 101-02; PTO ¶ 42).

  On June 24, 2003, the Patent Office issued U.S. Patent No. 6,581,292 (the "`292 Patent"), entitled "Vegetation Trimmer Apparatus," covering the Allis invention. (DX 26). The '292 Patent was issued over the cited references to the '666 and '424 Patents, among others. (10/13/04 Tr. at 104, 107; 10/14/04 Tr. at 106; DX 26 at 00312; PTO ¶ 43). Defendants also applied for and eventually obtained a patent for the Allis device in Australia. Applications are pending in Canada, Europe, and South Africa. (10/14/04 Tr. at 106-08; Def. PFFCL at 16 n. 2).

  Eventually, the Allis device was marketed commercially as the Grass Gator "Load n' Cut" through and by defendants Phinn, Page 12 CMD, Griff and Associates, L.P., Torvian, and National Express, Inc. (10/13/04 Tr. at 111-15, 147, 163; 10/14/04 Tr. at 7-10, 22, 55-57; PX 6; PTO ¶¶ 36, 38, 48, 49, 50, 67).

  4. A Comparison of the Allis Device to the '666 Patent

  The '666 Patent describes the preferred embodiment of the invention as a cutter head, rotationally driven by a motor, that spins strings at a velocity sufficient to cut vegetation. (PX 3 at col. 4). The head has apertures at opposing locations, equally spaced apart so that the cutting head remains balanced as it rotates during use. (Id.). Strings of fixed length are inserted into the apertures and forced between a cam (or clamping member) and a pressing wall. (Id. at cols. 4-5).*fn4

  The cam pivots and has a center of gravity between the pivot point and the clamping point. (10/21/04 Tr. at 58; PX 3 at Fig. 3). In Figure 3 to the '666 Patent, the cam is item 36, and it rotates on the pivoting post (item 38), pressing the string (item 14) against the pressing wall (item 32). The center of gravity of the cam is denoted by the letters "CG," and a spring (item 40) biases the cam so that it will rotate in a certain direction. The spring has one end secured to ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.