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POLLENEX CORP. v. SUNBEAM-HOME COMFORT

September 14, 1993

POLLENEX CORPORATION, a Missouri corporation, Plaintiff,
v.
SUNBEAM-HOME COMFORT, a division of SUNBEAM CORP., a Delaware corporation, RAYMOND INDUSTRIAL, LIMITED, a Hong Kong corporation, and RAYMOND MARKETING CORPORATION OF NORTH AMERICA, a Delaware corporation, Defendants.



The opinion of the court was delivered by: BRIAN BARNETT DUFF

 This case comes before the court on the Plaintiff's assertion that the Defendants infringed U.S. Patent No. 5,020,517 (the "'517 patent"). On July 20-22, 1993, this court conducted a bench trial on the issue of whether the '517 patent is unenforceable because of the patent applicant's alleged inequitable conduct before the U.S. Patent and Trademark Office. This court has heard the evidence and considered the credibility of the witnesses, the testimony, exhibits, memoranda of law, arguments of counsel, and each party's proposed findings of fact and conclusions of law. Now fully advised in the matter, the full trial on the issue of inequitable conduct having been concluded, the court makes the following findings.

 FINDINGS OF FACT

 I. The Parties

 1. Plaintiff Pollenex Corporation is a Missouri corporation with its principal place of business in Kansas City, Missouri. It is a wholly-owned subsidiary of The Rival Company, which formed Plaintiff to receive the assets purchased by Rival from Plaintiff's predecessor, also called Pollenex Corporation. Plaintiff's predecessor, an Illinois corporation which had a principal place of business in Chicago, Illinois, designed, developed and marketed a variety of household appliances, such as air and water filters and purifiers, whirlpool spas and the "Back Relief" massager covered by the patent-in-suit. Plaintiff's predecessor was previously known as Associated Mills, Inc. (Stip. Facts 1, 2, 3).

 2. Defendant Sunbeam-Home Comfort is a division of Sunbeam Corporation and has its principal place of business in Schaumburg, Illinois. Sunbeam-Home Comfort was previously called Northern Electric Company (Stip. Fact 4).

 3. Defendant Raymond Industrial, Ltd. is a Hong Kong corporation with a place of business in Hong Kong. Defendant Raymond Marketing Corporation of North America is a Delaware corporation with its principal place of business in Norwalk, Connecticut. Raymond Marketing is, at least in part, owned and controlled by Raymond Industrial and markets products manufactured by Raymond Industrial (hereinafter, both Raymond defendants will occasionally be referred to jointly as "Raymond") (Stip. Facts 5, 6, 7).

 II. The Patent-In-Suit

 4. On June 4, 1991, United States Letters Patent No. 5,020,517 ("the '517 patent"), entitled "Back Massager For Use In Home Or Auto," issued to Plaintiff's predecessor Associated Mills, as assignee of the inventors, Robert Foster, Jr. and Jefferson Gentry. Plaintiff sells the product which embodies the invention of the '517 patent under the commercial name "Back Relief" (Pl. Exh. 102).

 5. Claim 1 of the '517 patent claims a back massager having the following combination of elements:

 a. a cushion having two vibrating motors, one at the upper thoracic region and the other at the lower lumbar region of the cushion;

 c. an air bladder at the lumbar region of the cushion;

 d. a pump to inflate the air bladder and to also allow regulation of the degree of inflation of the air bladder; and

 e. a jack in the control unit to receive either (1) an AC adapter for supplying power from an AC commercial power source (i.e., 110 volt household current) or (2) a DC adapter for supplying power from a DC battery power source, such as an automobile battery (Pl. Exh. 102).

 6. Dependent claim 2 of the '517 patent adds a hand pump and an exhaust valve to the combination of elements in claim 1 (Pl. Exh. 102).

 7. Dependent claims 4 and 6 of the '517 patent add a seat switch to remove power from the control unit when the cushion is not occupied (Pl. Exh. 102).

 III. The Prior Art Clairol Back Massagers Made By Defendant Raymond

 8. In or about the summer of 1988, Raymond Industrial Ltd. began manufacturing two back massagers for Clairol. One of these massagers, called the "Easy Driver Automobile Back Massager with Heat" (Model FG-2), was intended for use solely in an automobile and was designed to be powered by an automobile battery, while the other, called "The Back Fixer Deluxe Home Back Massager With Heat" (Model FG-3), was designed for use on a conventional AC household current in a variety of locations. A third Clairol massager, called the "Back Fixer" (Model FG-1), was powered by AC household current or DC current from two rechargeable batteries. All three of these Clairol back massagers were prior art to the invention defined by the claims of the '517 patent (Stip. Facts 18, 28, 29, and 36).

 9. The Clairol FG-2 and FG-3 back massagers have:

 a. a cushion having two vibrating motors, one at the upper thoracic region and the other at the lower lumbar region of the cushion;

 b. a control unit for applying power to the vibrating motors at either a high or a low level;

 c. an air bladder at the lumbar region of the cushion;

 d. a pump to inflate the air bladder and to also allow regulation of the degree of inflation of the air bladder;

 e. an AC adapter for supplying power from 110 volt AC household current (FG-3), or a DC adapter for supplying power from a DC battery power source, such as an automobile battery (FG-2); and

 f. a hand pump and an exhaust valve; and

 g. a seat switch to remove power from the control unit when the cushion is not occupied (Def. Exh. 217 & 218).

 IV. Pollenex's Knowledge of The Clairol FG-2 and FG-3 Back Massagers Led To Foster and Gentry's Conception Of The Alleged Invention

 10. By October 1988, Pollenex/Associated Mills was aware of both the FG-2 and FG-3 back massagers (Stip. Fact 31).

 11. By October 1988, Pollenex/Associated Mills considered itself to have had a "complete line of back massagers" and wanted to add to its line a model equivalent to Clairol's Easy Driver Automobile Back Massager (FG-2) (Stip. Fact 32).

 12. By October 27, 1988, Pollenex/Associated Mills had acquired a sample of the FG-2 back massager and was trying to find the maker of the unit or of similar items and to obtain price quotes for the manufacture of such units or items (Stip. Fact 33).

 13. On October 27, 1988, David Anderson, the Import Production Manager of Associated Mills, Inc./Pollenex wrote to the Sanyei Corporation of Hong Kong enclosing a sample Clairol FG-2, saying: "This item is becoming very big in the U.S. market. . . . As you know AMI has a complete line of back massagers. We now want to add a model equivalent to the [FG-2] to our line. Please try to find the maker of this unit, or makers of similar items, and obtain a price quotation" (Def. Exh. 221).

 14. In the words of Jeff Gentry, one of the inventors and then Senior Vice President of Pollenex, "Clairol was the competitor who had gained market share from us, and they were the guy that we had to attack in the marketplace" (Gentry at 51).

 15. Prior to the application for the '517 patent, the two claimed inventors, Robert Foster, Jr., and Jeff Gentry, were both aware of the Clairol FG-2 and FG-3 back massagers and that they had been on the market since more than a year prior to the application (Stip. Fact 40).

 16. At the time of the conception and development of the claimed patented invention, in evaluating competitive back massagers, Mr. Gentry decided he liked the Clairol massager design for several reasons. During his deposition, when asked which of the competing massagers he preferred at the time of this evaluation, Mr. Gentry mentioned only the Clairol unit (Gentry at 35-40).

 17. On or before November 17, 1988, at Mr. Gentry's direction, Robert Foster, Jr., a Pollenex engineer, disassembled the Clairol FG-3 back massager and wrote an evaluation of the unit for John Kabat, vice president of international purchasing (Gentry at 39, 41; Foster at 121-22; Def. Exh. 222). At about the same time, Messrs. Foster and Gentry orally discussed the Clairol unit (Foster at 171). The FG-3 ...


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