Interpart Corp. v. Italia

• Decision Date: 14 November 1985
• Docket Number: 85-878,Nos. 84-1690,s. 84-1690
• Citation: 777 F.2d 678,228 U.S.P.Q. 124
• Parties: , 228 U.S.P.Q. 124 INTERPART CORPORATION, Appellee, v. Imos ITALIA, Vitaloni, S.p.A. and Torino Industries, Ltd., Appellants. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 678

777 F.2d 678

54 USLW 2315, 228 U.S.P.Q. 124

INTERPART CORPORATION, Appellee, v. Imos ITALIA, Vitaloni, S.p.A. and Torino Industries, Ltd., Appellants.

Appeal Nos. 84-1690, 85-878.

United States Court of Appeals Federal Circuit.

Nov. 14, 1985.

William C. Schubert, of Spensley, Horn, Jubas & Lubitz, Los Angeles, Cal., argued for appellee. With him on brief was Martin R. Horn, Los Angeles, Cal.

Gary A. Clark, of Pretty, Schroeder, Brueggemann & Clark, Los Angeles, Cal., argued for appellants. With him on brief were Jan P. Weir, Los Angeles, Cal., and Alex Devience, Jr., of Alex Devience, Jr., Ltd., Chicago, Ill.

Before FRIEDMAN, RICH and BISSELL, Circuit Judges.

RICH, Circuit Judge.

This appeal is from the judgment entered July 30, 1984, by the United States District Court for the Central District of California granting summary judgment to appellee Interpart Corporation (Interpart) and holding that United States Design Patent No. 263,130 for "Rear View Mirror," assigned to appellant Imos Italia, Vitaloni, S.p.A., et al. (Vitaloni), is invalid and not infringed by Interpart; that Interpart's manufacture and sale of automobile mirrors does not constitute unfair competition within the meaning of Sec. 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a) or within the meaning of Secs. 17200, 17300, and 17500 of the California Business and Professions Code; and that Interpart is entitled to an award of attorney fees from Vitaloni for defending the patent infringement action. We affirm-in-part, reverse-in-part, and remand.

Background

Interpart produces and distributes automobile rear view mirrors in the automobile aftermarket throughout the United States under the styles and trademarks "Interpart," "Mirrari 1," "Mirrari 2," "Mirrari 3," "Mirrari Oval," "Mirrari ERC," and "Mirrari VT." Imos Italia sells automobile rear view mirrors manufactured by Vitaloni in the same aftermarket under the styles and trademarks "Vitaloni," "Tornado Van," "Baby Tornado," and others. Torino exclusively Interpart filed a declaratory judgment action in the United States District Court for the Central District of California on 2 October 1980. Vitaloni filed its suit for patent infringement in the United States District Court for the Northern District of Illinois on 30 April 1982, seven months after its design patent had issued on 23 February 1982. The patent action was transferred to California and consolidated with the declaratory judgment action pursuant to Rule 42(a), Fed.R.Civ.P., by order of the court in the Central District of California.

assembles, distributes, and sells the Vitaloni mirrors throughout the United States. Interpart admits that it copied Vitaloni's mirrors, claiming the right to do so.

The district court conducted several trial-like hearings on Vitaloni's motion for a temporary restraining order (TRO) against Interpart and Interpart's two separate motions for summary judgment. The court had the opportunity to hear, question, and evaluate witnesses on some of the issues in this case. The district court made twenty-one findings of fact and fourteen conclusions of law, very similar to those submitted by Interpart.

Vitaloni filed two separate appeals. The first appeal, No. 84-1690, was taken to this court from the holding that this case is exceptional and awarding attorney fees under 35 U.S.C. Sec. 285; Vitaloni did not appeal the holding of invalidity. The second appeal, No. 85-878, was initially taken to the United States Court of Appeals for the Ninth Circuit from the unfair competition portion of the judgment. Upon Interpart's motion to transfer the second appeal to this court, and over Vitaloni's opposition, the Ninth Circuit transferred it pursuant to 28 U.S.C. Sec. 1631 after holding that "the Federal Circuit has exclusive jurisdiction in these circumstances." The two appeals were then consolidated by stipulation of the parties.

Issues

In addition to the threshhold question of our jurisdiction, these appeals present the following issues:

I. Whether there is a genuine issue of material fact that Interpart used photographs of Vitaloni mirrors in the Interpart brochure.

II. Whether Vitaloni may have a legally protected interest in its mirrors that would preclude Interpart from selling copies of those mirrors, absent any valid patent rights covering the Vitaloni mirrors and requiring a trial.

III. Whether California's "plug molding" statute, California Business and Professions Code Sec. 17300, is preempted by federal law.

IV. Whether the trial court abused its discretion in holding the case exceptional under 35 U.S.C. Sec. 285.

OPINION

Jurisdiction

The question is whether the Federal Circuit has jurisdiction of a case involving the Lanham Act and unfair competition law, but no patent issues, that was filed in one district court and later consolidated with a patent case, between the same parties, transferred from another district court where it was filed, and then appealed. On the facts of this case, we answer this question in the affirmative.

This court has jurisdiction under 28 U.S.C. Sec. 1295 over an appeal from a final decision of a district court if the jurisdiction of the district court was based at least in part on 28 U.S.C. Sec. 1338(a), at the time the complaint was filed, Atari, Inc. v. JS & A Group, Inc., 747 F.2d 1422, 223 USPQ 1974 (Fed.Cir.1984), cf. USM Corp. v. SPS Technologies, 770 F.2d 1035, 1036, 226 USPQ 1038, 1039 (Fed.Cir.1985), except that this court does not have jurisdiction of a case that relates to copyrights or trademarks and no other claims under Sec. 1338(a).

When Interpart filed its declaratory judgment action in the California federal district court, the case was one that would fall within the exception to our jurisdiction set out in Sec. 1295, i.e., it was not a case involving patents. It was only after the patent case was transferred from the Illinois federal district court and consolidated with the case in California that the case became one that would fall within our jurisdiction when appealed. The appeal from the consolidated case involves at least a portion of the patent claim, i.e., the award of attorney fees under 35 U.S.C. Sec. 285, which is part of the patent statute, and jurisdiction of the case is exclusively ours. The Ninth Circuit agreed.

Standard of Review

Summary judgment in patent cases, as in all other cases, is appropriate where there is no genuine issue of material fact and the movant is entitled to judgment as a matter of law. See Molinaro v. Fannon/Courier Corp., 745 F.2d 651, 653-54, 223 U.S.P.Q. 706, 707 (Fed.Cir.1984). The movant bears the burden of demonstrating the absence of all genuine issues of material fact, and the district court must view the evidence in a light most favorable to the nonmoving party and draw all reasonable inferences in its favor. See United States v. Diebold, 369 U.S. 654, 655, 82 S.Ct. 993, 994, 8 L.Ed.2d 176 (1962); Palumbo v. Don-Joy Co., 762 F.2d 969, 973, 226 U.S.P.Q. 5, 7 (Fed.Cir.1985). The party opposing summary judgment must show an evidentiary conflict on the record; mere denials or conclusory statements are not sufficient. Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831, 836, 221 USPQ 561, 564 (Fed.Cir.1984). Summary judgment is authorized where it is quite clear what the truth is. Sartor v. Arkansas Natural Gas Corp., 321 U.S. 620, 627, 64 S.Ct. 724, 728, 88 L.Ed. 967 (1944).

I. The Photographs

Vitaloni argues that Interpart used photographs of Vitaloni mirrors in the Interpart advertising brochure in contravention of Secs. 17200 and 17500 of the California Business and Professions Code and Sec. 43(a) of the Lanham Act. We disagree.

The district court found the following as fact:

There is no evidence that Interpart has used, in connection with its mirrors, any photograph of any Vitaloni mirrors which it falsely identified as being a photograph of Interpart's mirrors.

Because the question of whether summary judgment is appropriate is determined on an analysis of the facts, First National Bank of Arizona v. Cities Service Co., 391 U.S. 253, 88 S.Ct. 1575, 20 L.Ed.2d 569 (1967), we review the record in some detail.

Interpart published a brochure in late October of 1980 that depicted its line of mirrors and used it at an important trade show. Vitaloni urges that Interpart must have used Vitaloni mirrors in at least some of the brochure pictures because Interpart did not have all of the mirrors depicted in the brochure at the time the pictures were taken; they had not yet arrived from the manufacturer, Hiraoki, in Taiwan. Interpart responds that it took pictures of mock-ups of those mirrors which were not in its possession at that time, not of Vitaloni mirrors. The mock-ups were made from clay and other Interpart mirrors, all of their mirrors being similar enough to allow Interpart to interchange them with slight modification.

On 9 December 1981, Brian Wald, the president of Interpart, stated that the photographs of Interpart's mirrors were taken "in July-August, 1980, in that area." Fifteen months later, in March 1983, he had a chance to review Interpart invoices from Hiraoki in Taiwan. Wald stated:

Based on my subsequent review of the invoices attached to the Declaration of George S. Yueh dated April 23, 1982 and my recollection that the trade show at which the advertising brochure was first distributed occurred around the last week in October or the first week in November, 1980, I am now convinced that the photographs appearing on the last page of the advertising brochure were taken in approximately September or October, 1980 and not as early as July-August, 1980.

Wald continued by stating that he had instructed Barbara Lewis not to use photographs of competitor's products in Interpart's brochures and advertisements. Wald further declared that he authorized the advertising agency to make mock-ups of the bases of the left and righthanded versions of the Mirrari VT and...