Ag Pro, Inc. v. Sakraida

• Decision Date: 01 February 1971
• Docket Number: No. 29708.,29708.
• Citation: 437 F.2d 99
• Parties: AG PRO, INC., Plaintiff-Appellant, v. Bernard A. SAKRAIDA, Defendant-Appellee.
• Court: U.S. Court of Appeals — Fifth Circuit

437 F.2d 99 (1971)

AG PRO, INC., Plaintiff-Appellant, v. Bernard A. SAKRAIDA, Defendant-Appellee.

No. 29708.

United States Court of Appeals, Fifth Circuit.

February 1, 1971.

Kolisch & Hartwell, J. Pierre Kolisch, John W. Stuart, Portland, Or., for plaintiff-appellant; Frank Hunter, Edwards, Belk, Hunter & Kerr, El Paso, Tex., of counsel.

J. F. Hulse, Stephen B. Tatem, Jr., Scott, Hulse, Marshall & Feuille, El Paso, Tex., for defendant-appellee.

Before RIVES and SIMPSON, Circuit Judges, and NICHOLS,^* Judge of the Court of Claims.

SIMPSON, Circuit Judge:

The issue before us in this patent infringement case is the propriety of the entry of summary judgment by the district court in favor of the defendant-appellee, Bernard A. Sakraida. This summary judgment meets the fate of many others before it. We reverse and remand for further proceedings.

On October 8, 1968, the suit was filed claiming infringement of United States Letters Patent No. 3,223,070, titled "Dairy Establishment". The plaintiff, Ag Pro, Inc. is the owner of the patent as assignee of the inventors, Donald Joseph Gribble and Henry E. Bennett. The corporation was formed by Gribble and Bennett for the purpose of commercially exploiting the invention disclosed in the patent.

The patent deals with the ancient and puzzling problem of disposing conveniently and profitably of the excrement (referred to by the parties and herein as offal) of domesticated food-producing animals, and assertedly represents a solution of the problem as related to the dairy cow industry. Through utilization of a dairy barn with sloped, paved floors and large tanks of dammed upstream water, the invention deals with a flush-type system for removal of the offal from dairy barns. The offal was to be carried through drains into tanks from which it could be conducted to sprinkler systems on adjoining fields for use as fertilizer.

The defendant-appellee is a general contractor who specializes in the construction of agricultural buildings. Previously he had worked as a construction supervisor for the plaintiff on a dairy barn installation which was built in accordance with the patent in suit. The appellee subsequently contracted with other persons to build another dairy barn. The latter is alleged to be the infringing installation.

After pre-trial discovery, the defendant moved for summary judgment. In the motion for summary judgment the defendant raised no question as to the infringement of the patent, but rather directed his attack at the validity of the patent held by the appellant. On February 19, 1970, the trial court granted the defendant's motion, holding that the appellant's patent was a combination patent composed of a number of parts or elements well known in the dairy business long prior to the date of filing the original application for the patent; that the combination patent did not result in anything new and patentable; that the case was controlled by the holding of the Supreme Court of the United States in Anderson's Black-Rock, Inc. v. Pavement Salvage Company, 1969, 396 U.S. 57, 90 S.Ct. 305, 24 L.Ed.2d 258; and concluding as a matter of law that there was no issue as to any material fact.

Rule 56(c) of the Federal Rules of Civil Procedure provides in pertinent part that a party is entitled to summary judgment:

"* * * if the pleadings, depositions, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law."

The Rule was not complied with in this instance. The heart of the defense was that the plaintiff's "dairy establishment" combines a number of previously known and widely used components in a manner which is obvious and not inventive. This defense assumes the burden of meeting and overcoming the presumption of validity inhering to a patent issued by the patent office. Title 35 U.S. C., Section 282; Metal Arts Company v. Fuller Company, 5 Cir. 1968, 389 F.2d 319, 321. In support of the motion for summary judgment the defendants attached the oral deposition of Gribble, in which he described the elements of the patent. Also attached to the defendant's motion were the affidavits of the defendant Sakraida, W. C. Fairbanks, and Archie Sharp. In these affidavits the affiants simply swore that dairy barns like that patented by the plaintiff have been used in the dairy industry prior to the date of the application for plaintiff's patent. The affiants also state the conclusion that there is nothing novel or patentable in plaintiff's patent. Ag Pro, Inc. countered the defendant's motion with affidavits of Gribble and M. G. Huber. These affidavits do not deny that the patent is a combination of a number of previously known elements, but they do contend that the combination patent is a product of invention. They further swear that to their knowledge no dairy barns like that patented were in existence prior to the application for patent. In essence the plaintiff's affidavits contradict the defendant's supporting evidence regarding the prior art and obvious nature of the thing patented. It should be emphasized that the district court did not have any patents or publications regarding the prior art before it at the time summary judgment was granted. The only information before the court regarding the prior art was the conclusory statements contained in the affidavits and...