Homework 7 - Prior Publication Case Summary (Potter)

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Benchcraft, Inc. v. Broyhill Furniture Industries, Inc.

March 14, 1988

Background of the Case

  • 3 corporate plaintiffs (Benchfraft, Inc., Riverside Furniture Corp., and Hickory Hill/Crestline Furniture Co.) sued to challenge the validity of a design patent held by Broyhill Furniture Industries, Inc. and Broyhill countersued for infringement.
  • The patent in question, Des. 274,485, is an ornamental design for a sofa and loveseat. It was filed on May 19, 1983 and issued on July 3, 1984.
  • In May 1982, two corporate officials of Broyhill attended the Earls Court Furniture Show in London, England. At the show, one of the officials (Carl Gunter) saw a furniture collection called the "Venezia suite," designed in Italy and purchased by an Englishman. Though he didn't think the design would be popular in America, certain aspects of the design intrigued him and he took photographs of it to bring back to America.
    • Upon returning, Broyhill employees began immediately working on designs to emulate certain aspects of the Venezia suite while the photographs were still being developed.
    • The design was almost complete by the time the pictures were developed, but the pictures were consulted to finalize the design
    • A sample was delivered on July 30, 1982 and the sofa was offered for sale as a part of the Fall 1982 collection - it was not particularly successful.
    • A second sample was derived from the first design but given more of a "country" look, and an accompanying loveseat was also produced - these models were extremely successful.
  • Catalog photographs of the "country" set were sent to a patent draftsman.
    • The draftsman was a patent attorney but this was his first experience with a design patent. He assumed that the Broyhill employees were familiar with the patent process and understood the legal matters of the application.
    • The Broyhill employees had no patent experience and signed the various oaths without fully appreciating their meaning.
    • The draftsman did not learn about Gunter's photographs or any other pertinent prior art information.
  • In the Fall Market of 1983, several other companies, including the plaintiffs, were showing designs very similar to those of Broyhill.
    • The patent lawyer contacted the companies to inform them of the pending design patent and warn them of infringement.
    • The companies moved to have the patent declared invalid on the grounds of obviousness and the printed publication bar.

Court Holding

  • The Italian designer of the Venezia collection testified that he had distributed photographs of his collection prior to 1982 and as early as 1977, and the English owner of the collection confirmed that he had displayed it at the Earls Court show in 1982. The court held that this constituted "printed publication" within the meaning of Section 102.
  • In regards to the Gunter photographs, the courts determined that a photograph that gives the full essence of a design constitutes a printed publication under Section 102 for a design patent.
  • The court also held that Broyhill and the patent attorney withheld prior art information that should have been included in the patent application, even though they may have done so unknowingly. The attorney and involved Broyhill employees were guilty of gross negligence in omitting so much important information from the application. Thus, the patent was invalid and unenforceable.