Vanmoor v. Wal-Mart Stores Inc.

Decision Date10 January 2000
Docket NumberWAL-MART
Citation201 F.3d 1363,53 USPQ2d 1377
Parties(Fed. Cir. 2000) ARTHUR VANMOOR (formerly known as Arthur Vanmoerkerken), Plaintiff-Appellant, v.STORES, INC., Defendant, and BUILDER'S SQUARE, INC., Defendant-Appellee, and HOME DEPOT USA, INC. (doing business as Home Depot) and RED DEVIL, INC., Defendants-Appellees, and SONOCO PRODUCTS COMPANY, Defendant-Appellee, and FEDERAL PACKAGING CORPORATION, Defendant-Appellee, and THE GLIDDEN COMPANY, Defendant-Appellee. 99-1190,-1256 DECIDED:
CourtU.S. Court of Appeals — Federal Circuit

Appealed from: United States District Court for the Southern District of Florida Judge William P. Dimitrouleas

Jack E. Dominik, Dominik, Knechtel, Demeur & Samlan, of Miami Lakes, Florida, argued for plaintiff-appellant.

Blas P. Arroyo, Alston & Bird, of Charlotte, North Carolina, argued for defendants-appellees. On the brief were Philip J. Moy, Jr. and Steven M. Auvil, Fay, Sharpe, Beall, Fagan, Minnich & McKee, LLP, of Cleveland, Ohio; Andrew C. Aitken, Clifton E. McCann, and Ralph P. Albrecht, Lane, Aitken & McCann, of Washington, DC; Everett J. Bowman, Robinson, Bradshaw & Hinson, P.A., of Charlotte, North Carolina; and Jay B. Shapiro, Stearns Weaver Miller Weissler Alhadeff & Sitterson, P.A., of Miami, Florida. Of counsel was Shelley H. Leincke, Wicker, Smith, Tutan, O'Hara, McCoy, Graham & Ford, P.A., of Fort Lauderdale, Florida.

Before MAYER, Chief Judge, ARCHER, Senior Circuit Judge, and RADER, Circuit Judge.

MAYER, Chief Judge.

Arthur Vanmoor appeals the judgment of the United States District Court for the Southern District of Florida, holding on summary judgment that United States Patent No. 5,582,331 is invalid under 35 U.S.C. § 102(b) and that Vanmoor's trade secrets had not been misappropriated. Vanmoor v. Wal-Mart, Inc., Civ. Action No. 97-CIV-6907 (S.D.Fla. Dec. 15, 1998) (final judgment order).1 Because we agree with the district court that Vanmoor has not raised a genuine issue as to any material fact and that Wal-Mart Stores, Inc. and its co-appellees are entitled to judgment as a matter of law, we affirm.

Background

Vanmoor is the owner of U.S. Patent No. 5,582,331, entitled "Caulking Gun and Cartridge with Afterflow Prevention" ("'331 patent"). The '331 patent is directed to a construction for a cartridge used to dispense caulking compound. The claims of the '331 patent recite a cartridge comprising a tubular body having a forward end with a dispensing opening and a movable backwall (commonly known as a plunger) disposed within the tubular body. The backwall is defined as having a diameter chosen such that it moves backwardly away from the forward end of the tubular body when the pressure within the chamber bounded by the tubular body, forward end, and backwall is greater than the pressure outside the chamber. The '331 patent issued on December 10, 1996, from an application filed on September 13, 1995.

Vanmoor initially filed a complaint in the district court on July 28, 1997 alleging that major home improvement retailers, Wal-Mart Stores, Inc., Builder's Square, Inc., and Home Depot U.S.A., Inc., together with Red Devil, Inc., a leading manufacturer of caulking products, were infringing the '331 patent. As the supplier of several of the accused products to Wal-Mart, the Glidden Company was permitted to intervene as an additional defendant. Each of the defendants (collectively "Wal-Mart") answered the complaint with a denial of all material allegations and interposed affirmative defenses that the '331 patent was invalid and unenforceable. Additionally, Wal-Mart asserted counterclaims, including a request for declaratory judgment that the '331 patent is invalid.

Vanmoor amended his complaint on April 22, 1998 to add two new defendants, Federal Packaging Corporation and Sonoco Products Company ("manufacturers"), the two major manufacturers in the United States of tubes and plungers used for caulking cartridges. Vanmoor added the manufacturers to the patent infringement claim and asserted a new trade secret misappropriation claim against them both. The manufacturers denied all material allegations and sought a declaratory judgment that the '331 patent is invalid.

Wal-Mart and the manufacturers jointly moved for summary judgment on both the patent infringement and trade secret misappropriation claims. They argued that the '331 patent is invalid as a matter of law because certain of the accused caulking cartridges were identical to cartridges manufactured, sold, and used prior to the critical date for the '331 patent. In addition, the manufacturers argued that they had received no disclosure of the alleged trade secrets before Vanmoor claimed those concepts had been incorporated into their products and that there was no change in the construction of the cartridges after they received the disclosure of Vanmoor's trade secrets. The motion was supported by affidavits from two Sonoco employees and documentary evidence showing that the manufacturing specifications, component dimensions, and methods of operation of at least three of the accused cartridges were identical to those manufactured, used, and sold prior to the critical date. Vanmoor responded by asserting that Wal-Mart and the manufacturers failed to prove the prior sale and public use of the allegedly infringing products and submitted a single affidavit from a molds expert who stated that the actual products manufactured may have varied from the drawings.

The district court granted Wal-Mart's motion for summary judgment of invalidity, concluding that Vanmoor had not raised a genuine issue of material fact that the subject products were not on sale prior to the critical date and that the defendants had shown by clear and convincing evidence that they were for sale and in public use prior to the critical date. The district court also granted summary judgment that the manufacturers had not misappropriated Vanmoor's trade secrets based on Vanmoor's failure to present anything beyond conclusory allegations that the manufacturers had violated their confidentiality agreements with Vanmoor. This appeal followed.

Discussion

The issue is whether the district court erred in granting Wal-Mart's and the manufacturers' motion for summary judgment of invalidity and non-misappropriation of trade secrets. We review a district court's grant of summary judgment de novo. Petrolite Corp. v. Baker Hughes Inc., 96 F.3d 1423, 1425, 40 USPQ2d 1201, 1203 (Fed. Cir. 1996) (citing Meyers v. Asics Corp., 974 F.2d 1304, 1306, 24 USPQ2d 1036, 1037 (Fed. Cir. 1992)). Summary judgment is appropriate when there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. Id. (citing Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1274, 35 USPQ2d 1035, 1038 (Fed. Cir. 1995)).

On-Sale Bar

"The ultimate determination that a product was placed on sale under [35 U.S.C. § 102(b) (1994)] is a question of law, based on underlying facts." Ferag AG v. Quipp Inc., 45 F.3d 1562, 1566, 33 USPQ2d 1512, 1514-15 (Fed. Cir. 1995). Thus, this court reviews the ultimate determination without deference, but subsidiary fact...

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