835 F.2d 1419 (Fed. Cir. 1987), 87-1151, Kennecott Corp. v. Kyocera Intern., Inc.
|Citation:||835 F.2d 1419|
|Party Name:||5 U.S.P.Q.2d 1194 KENNECOTT CORPORATION, Plaintiff-Appellant, v. KYOCERA INTERNATIONAL, INC. and Kyoto Ceramic Co., Ltd., Defendant-Appellee.|
|Case Date:||December 22, 1987|
|Court:||United States Courts of Appeals, Court of Appeals for the Federal Circuit|
Clyde F. Willian, Willian Brinks Olds Hofer Gilson & Lione, Ltd., Chicago, Ill., argued, for plaintiff-appellant. With him on the brief, were Jack C. Berenzweig and Raymond W. Green.
Paul L. Gardner, Spensly Horn Jubas & Lubitz, Los Angeles, Cal., argued, for defendant-appellee. With him on the brief, were Stuart Lubitz, Saul Epstein and David Henty.
Before MARKEY, Chief Judge, DAVIS, and NEWMAN, Circuit Judges.
PAULINE NEWMAN, Circuit Judge.
Kennecott Corporation appeals the final judgment of the United States District Court for the Southern District of California, 1 in which the district court granted summary judgment to the defendants Kyocera International and Kyoto Ceramic Co., Ltd. (together "Kyocera"), holding that United States Patent No. 4,179,299 ("the '299 patent") is invalid in terms of the "on sale" bar of 35 U.S.C. Sec. 102(b). Kennecott's claim of patent infringement was dismissed. We reverse.
The Controlling Question
The judgment of invalidity turned on the sole question of whether the claims of the '299 patent are entitled, as a matter of law, to the benefit of the filing date of its parent patent application which eventually issued as U.S. Patent No. 4,312,954 ("the '954 application"), filed on June 5, 1975. If so entitled, the sales events in 1977 can not effect an invalidity bar. If not so entitled, Kennecott admits that its sales activities occurred more than one year before May 1, 1978, the filing date of the continuation-in-part application that issued as the '299 patent.
On summary judgment all facts material to the result must be either undisputed or, if disputed, must be resolved in favor of the party opposing summary judgment. Litton Industrial Products, Inc. v. Solid State Systems Corp., 755 F.2d 158, 163, 225 USPQ 34, 37 (Fed.Cir.1985). Rule 56, Fed.R.Civ.Proc. The question of the sufficiency of the disclosure of the '954 application to support the '299 claims is a matter of law based on underlying facts. All facts material to the issue are here deemed undisputed, based on admissions by Kyocera for the purpose of its motion for summary judgment.
Kyocera states in its brief on appeal that it did not concede or admit all the facts that Kennecott says it did. The district court found, however, that:
Finding 11. For the purposes of this Motion only, the material facts set forth in all of the affidavits and in all of the exhibits submitted by plaintiff in opposition to Defendants' Motion, are undisputed by defendants.
Kyocera has not assigned error to this finding, and it is bound thereby.
The continuation-in-part '299 application contains a substantial part of the disclosure of the '954 parent application, plus a description of and photomicrographs showing the equiaxed microstructure. 2 It is not disputed that the photomicrographs were of the product made and described in the '954 application, and produced in the original examples.
The '299 patent claims contain the words "equiaxed microstructure" that were not present in the '954 specification and claims. This is the only difference at issue. ' 299 patent claim 1 is representative:
A sintered ceramic body consisting essentially of:
(a) from about 91 to about 99.85% by weight silicon carbide, wherein at least 95% by weight of the silicon carbide is of the alpha phase;
(b) up to about 5.0% by weight carbonized organic material;
(c) from about 0.15 to about 3.0% by weight boron; and
(d) up to about 1.0% by weight additional carbon;
and having a predominantly equiaxed microstructure.
Pertinent undisputed or conceded facts include the following:
the high (over 95%) alpha silicon carbide ceramic body that is described in the '954 application has an equiaxed microstructure;
the '954 application does...
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