Sundance, Inc. v. DeMonte Fabricating, Ltd. (08-1068)
Sundance obtained U.S. Patent No. 5,026,109 directed to retractable segmented covering systems for truck trailers, swimming pools, porches, patios and the like. Subsequently, Sundance sued DeMonte for patent infringement in the Eastern District of Michigan. There, the court found claim 1 of the patent valid and infringed by DeMonte.
However, on appeal, the Federal Circuit found claim 1 of the patent to be obvious. In particular, the Court relied on the teachings of U.S. Patent Nos. 4,189,178 (Cramaro) and 3,415,260 (Hall). Cramaro discloses a retractable tarpaulin cover for use with truck trailers, but the cover does not include segmented tarps as claimed by Sundance. However, Hall discloses a covering system wherein the cover is divided into a number of flexible screen members.
Relying on KSR, the Court reasoned that, in view of Cramaro and Hall, the segmented truck cover claimed by Sundance represents the mere application of a known technique to a piece of prior art ready for the improvement. Stated another way, it would have been obvious to replace the one-piece cover of Cramaro with the segmented cover of Hall.
In explaining its rationale, the Court turned to the Sundance patent which explains “it would be desirable to have a retractable cover system wherein only the damaged portion could easily be removed and replaced without replacing or disassembling the entire cover system.” Likewise, Hall explains that its segmented cover “can be prefabricated for ready assembly and that replacement and repair is easily provided for.” Thus, the Court found that the “work to incorporate the replaceable cover sections of Hall into the design of Cramaro is ‘the work of the skillful mechanic, not that of the inventor.’” citing Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976) (quoting Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248, 267 (1851).