DeLong Corp. v. Raymond Intern., Inc.

• Citation: 206 USPQ 97,622 F.2d 1135
• Decision Date: 14 April 1980
• Docket Number: No. 79-1509,79-1509
• Parties: DeLONG CORPORATION, Appellant, v. RAYMOND INTERNATIONAL, INC.
• Court: United States Courts of Appeals. United States Court of Appeals (3rd Circuit)

Page 1135

622 F.2d 1135

206 U.S.P.Q. 97

DeLONG CORPORATION, Appellant, v. RAYMOND INTERNATIONAL, INC.

No. 79-1509.

United States Court of Appeals, Third Circuit.

Argued Dec. 11, 1979.

Decided April 14, 1980

Richard D. Catenacci, Connell, Foley & Geiser, Newark, N. J., for appellant; David E. Varner, William K. West, Jr. (argued), Akin T. Davis, Cushman, Darby & Cushman, Washington, D. C., of counsel.

Frank L. Bate, Shanley & Fisher, Newark, N. J., for appellee; Joseph M. Fitzpatrick, John A. O'Brien (argued), Fitzpatrick, Cella, Harper & Scinto, New York City, of counsel.

Before ADAMS, ROSENN and SLOVITER, Circuit Judges.

OPINION OF THE COURT

ROSENN, Circuit Judge.

We are asked on this appeal to consider a decision by the United States District Court for the District of New Jersey entering summary judgment for the defendant in an action for infringement of two patents. The district court held that the invention covered by the later or second patent was "on sale" more than one year prior to the date of the application for the patent and thus was invalid under 35 U.S.C. § 102(b). The court also found that this patent had been obtained by fraud and therefore, under the equitable doctrine of "unclean hands," dismissed with prejudice the plaintiff's complaint as to the infringement of the earlier or first patent. Because we agree with the plaintiff-appellant that there are genuine issues of material fact as to the allegations of fraud, we reverse the entry of summary judgment on this issue and remand to the district court. However, as to the district court's determination that the second patent is invalid because of its failure to comply with the "on sale" provision of 35 U.S.C. § 102(b), we affirm.

I.

DeLong Corporation ("DeLong") is the owner of U. S. Patent No. 2,841,961 ("Lucas patent") granted on July 8, 1958, for Offshore Drilling Barge, in the name of Joseph F. Lucas as inventor. DeLong also owns U. S. Patent No. 3,422,505 ("Slemmons patent") granted January 21, 1969, on an application filed November 3, 1967, for Two-Piece Releasable Gripper, in the name of Charles O. Slemmons as inventor. DeLong acquired the rights to that invention pursuant to an agreement entered into in December 1966 by which General Tire and Rubber Co. ("General Tire") and Slemmons assigned to DeLong their rights in the invention, including the right to prepare and file appropriate patent applications.

The Lucas Patent is directed principally to so-called slip jacks for erecting massive marine platforms of the jack-up or self-elevating type on supporting legs. Slip jacks use a segmental metal ring having tapered wedge-shaped segments surrounded by an outer one-piece ring having a tapered inner surface for urging the segments into gripping engagement with a cylindrical supporting leg by a mechanical wedging action. The Slemmons patent covers improvements in the gripping mechanism of the DeLong air jacks used for erecting marine platforms of the jack-up type on supporting legs. Air jacks operate on a different principle than slip jacks. Air jacks, in contrast with slip jacks, use a hollow inflatable rubber ring disposed in an inwardly-facing rigid annular channel so that, on inflation, the rubber ring will grip a cylindrical supporting leg by a pneumatic gripping or contracting action.

DeLong filed its original complaint on May 17, 1976, charging Raymond International, Inc. ("Raymond"), with infringement of the Lucas patent in violation of 35 U.S.C. § 271 (1976). ¹ On April 28, 1977, DeLong filed an amended complaint charging Raymond, in addition, with inducing the infringement of the Slemmons patent.

After completion of some discovery Raymond filed a motion for summary judgment. The rulings Raymond sought were primarily three. First, Raymond sought to have the Slemmons patent declared invalid on the ground that the invention covered by the patent was "on sale" more than one year before the date of the application for the patent. The basis for this assertion was a purchase order issued by DeLong on June 20, 1966 to General Tire for 54 rubber grippers. The first shipment of these grippers was apparently received by DeLong on October 31, 1966. Second, Raymond sought a declaration that DeLong's failure to inform the Patent Office that the Slemmons patent had been on sale more than one year prior to the date of the patent application constituted fraud. Finally, Raymond asked that the amended complaint be dismissed and DeLong denied all relief, even as to the Lucas patent, because of its "unclean hands" in obtaining the Slemmons patent. The district court granted Raymond's motion.

Thereafter DeLong moved, under Local Rule 12-I, for reargument of Raymond's motion for summary judgment, to vacate the district court's order, and for an order denying Raymond's motion, under Fed.R.Civ.P. 52(b). ² The court, however, denied this motion. DeLong raises several arguments on appeal. ³ First, it asserts that the district court abused its discretion in denying DeLong's motion for reargument. Second, DeLong argues that there was a genuine issue of material fact whether the Slemmons invention was on sale more than one year prior to the date of the patent application, and thus the district court erred in entering summary judgment for Raymond on this issue. Third, DeLong argues that even if the district court did not err in holding the Slemmons patent invalid there were, nevertheless, genuine issues of material fact as to whether it was obtained by fraud. Finally, DeLong asserts that even if the district court did not err in holding that the Slemmons patent had been procured by fraud, it nevertheless erred when it applied the "unclean hands" doctrine and dismissed the action based on the earlier Lucas patent. We consider each of these arguments seriatim.

II.

In the district court's consideration of Raymond's motion for summary judgment DeLong presented no evidentiary affidavits in opposition. Rather, it filed a memorandum noting the "stringent requirements for summary judgment" and arguing that what was "on sale" was not the Slemmons invention but merely a component of the combination invention claimed in the Slemmons patent. However, in support of its motion for reargument with the district court, DeLong submitted additional documents and affidavits. ⁴ Those were intended in part to indicate that the inferences drawn by the district court adverse to DeLong were contrary to fact. DeLong argues that "(s)ince an evidentiary showing by DeLong was not required at the time of (the) hearing (on the motion for summary judgment) . . . it follows that when DeLong did present evidence which demonstrated the existence of issues of material facts beyond peradventure, the district court ought to have reconsidered and denied Raymond's motion (for summary judgment)."

DeLong's argument, however, is without merit. Fed.R.Civ.P. 56(e) specifically provides that "(w)hen a motion for summary judgment is made and supported as provided in this rule, an adverse party may not rest upon the mere allegations or denials of his pleading, but his response, by affidavits or as otherwise provided in this rule, must set forth specific facts showing that there is a genuine issue for trial." Sound Ship Building Co. v. Bethlehem Steel Co., 533 F.2d 96, 99 (3d Cir.), cert. denied, 429 U.S. 860, 97 S.Ct. 161, 50 L.Ed.2d 137 (1976). Furthermore, Fed.R.Civ.P. 56(c) specifically provides that "(t)he adverse party prior to the day of hearing may serve opposing affidavits." (emphasis added). Thus, contrary to DeLong's assertions, Fed.R.Civ.P. 56 does require that such evidentiary material as DeLong believed relevant to indicate the existence of a genuine issue of material fact be presented at the hearing in the district court.

DeLong does not assert that the evidentiary material which it later sought to introduce on the motion for reargument was unavailable or unknown to it at the time of the original hearing. Nor does such reason appear in the record. The district court therefore stated:

The scope of Raymond's November, 1978 motion (for summary judgment) was clear on its face. If these affidavits and exhibits were to be advanced to meet the motion they should have been advanced then. If time were needed to gather and present them, an adjournment should have been requested.

It is important to observe that these affidavits and exhibits were in the possession of DeLong or available to it without seeking discovery from Raymond.

We accordingly cannot conclude that the district court abused its discretion in denying DeLong's motion for reconsideration. ⁵ Thus, our discussion of the remaining issues will be predicated upon the evidentiary material introduced prior to the district court's consideration of Raymond's motion for summary judgment.

III.

The application for the Slemmons patent was filed on November 3, 1967. Thus, a sale of the covered invention prior to November 3, 1966, would run afoul of the provisions of 35 U.S.C. § 102(b).

35 U.S.C. § 102(b) provides:

A person shall be entitled to a patent unless

(b) the invention was patented or described in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States. (Emphasis added.)

DeLong asserts that the district court erred in holding that the invention covered by the Slemmons patent was "on sale" more than one year prior to the date of the patent application and was thus invalid. ⁶ On June 20, 1966, DeLong placed an order with General Tire for 54 rubber grippers. Some of these were delivered to DeLong on October 31, 1966. It is undisputed that this transaction constituted a sale. DeLong, however, asserts that Raymond failed to demonstrate that the 54 rubber grippers incorporated the Slemmons invention.

In support of its contention that the Slemmons invention had been on sale more than one year prior to the date of the patent...