Avia Group Intern., Inc. v. L.A. Gear California, Inc.

Decision Date29 July 1988
Docket NumberNo. 87-1505,87-1505
Citation853 F.2d 1557,7 USPQ2d 1548
PartiesAVIA GROUP INTERNATIONAL, INC., (Formerly Pensa, Inc.), Plaintiff-Appellee, v. L.A. GEAR CALIFORNIA, INC., Defendant-Appellant.
CourtU.S. Court of Appeals — Federal Circuit

Perry J. Saidman, of Saidman, Sterne, Kessler & Goldstein, Washington, D.C., argued for plaintiff-appellee.

John J. Quinn, of Kelley Drye & Warren, New York City, argued for defendant-appellant.

Before SMITH, NIES and MAYER, Circuit Judges.

NIES, Circuit Judge.

L.A. Gear California, Inc. (LAG) appeals the decision of the United States District Court for the Central District of California, Pensa, Inc. v. L.A. Gear of California, Inc., 4 USPQ2d 1016 (C.D.Cal.1987), granting the motion of Avia Group International, Inc. (formerly Pensa, Inc.) for summary judgment holding United States Design Patent Nos. 284,420 ('420) and 287,301 ('301) valid as between the parties and willfully infringed, and the case exceptional under 35 U.S.C. Sec. 285 (1982). We affirm.

I BACKGROUND

Avia owns the '420 patent, claiming an ornamental design for an athletic shoe outer sole, and the '301 patent, claiming an ornamental design for an athletic shoe upper, by assignment from the inventor, James Tong. LAG ordered and sold shoes, Model No. 584 "Boy's Thrasher" ("Thrasher") and Model No. 588 "Boy's Thrasher Hi-Top" ("Hi-Top"), designed and manufactured for it by Sheng Chun Chemical Ind. Corp. in Taiwan. Avia filed suit against LAG alleging, inter alia, that both of LAG's models infringed its '420 design patent and that LAG's Hi-Top model also infringed the '301 design. LAG counterclaimed for a declaratory judgment that the two patents were not infringed and were invalid because the designs were both obvious and functional. Avia moved for partial summary judgment on the patent validity and infringement issues and for attorney fees.

Finding no bona fide dispute as to any material fact and that Avia had shown entitlement to judgment as a matter of law, the court granted Avia's motion after a hearing. It determined that the infringement was willful and that the case was exceptional within the meaning of 35 U.S.C. Sec. 285 (1982), thus providing the basis for an award of attorney fees. The court also issued a permanent injunction enjoining further infringement by LAG. Because the court reserved decision on the amounts to be awarded as damages and as attorney fees, these matters are not involved in this appeal. 1

II SUMMARY JUDGMENT
A. Procedural Aspects

Under Rule 56(c) of the Federal Rules of Civil Procedure, summary judgment may be granted "if the pleadings, depositions, answers to interrogatories, 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."

In the recent Supreme Court case of Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986), the Court expanded the group of situations in which summary judgment is appropriate. To create a genuine issue of fact, the nonmovant must do more than present some evidence on an issue it asserts is disputed. The Court stated:

[T]here is no issue for trial unless there is sufficient evidence favoring the nonmoving party for a jury to return a verdict for that party. If the evidence [of the nonmovant] is merely colorable, or is not significantly probative, summary judgment may be granted.

477 U.S. at 249-50, 106 S.Ct. at 2511 (citations omitted); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 2552-53, 91 L.Ed.2d 265 (1986); Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87, 106 S.Ct. 1348, 1356, 89 L.Ed.2d 538 (1986). This standard "mirrors" that required to obtain a directed verdict. Anderson, 477 U.S. at 250, 106 S.Ct. at 2511. Thus, a nonmovant must do more than merely raise some doubt as to the existence of a fact; evidence must be forthcoming from the nonmovant which would be sufficient to require submission to the jury of the dispute over the fact.

On the other hand, the evidence must be viewed in a light most favorable to the nonmovant and all reasonable inferences must be drawn in the nonmovant's favor. See e.g., United States v. Diebold, 369 U.S. 654, 655, 82 S.Ct. 993, 994, 8 L.Ed.2d 176 (1962); Interpart Corp. v. Italia, 777 F.2d 678, 681, 228 USPQ 124, 126 (Fed.Cir.1985); Petersen Mfg. Co. v. Central Purchasing, Inc., 740 F.2d 1541, 1546, 222 USPQ 562, 565-66 (Fed.Cir.1984). Further, the movant bears the burden of demonstrating the absence of all genuine issues of material fact. See, e.g., Cooper v. Ford Motor Co., 748 F.2d 677, 679, 223 USPQ 1286, 1288 (Fed.Cir.1984). On that point, however, the burden is not as heavy as some decisions have held. The moving party need not "produce evidence showing the absence of a genuine issue of material fact"; rather, "the burden on the moving party may be discharged by 'showing'--that is, pointing out to the district court--that there is an absence of evidence to support the nonmoving party's case." Celotex Corp., 477 U.S. at 325, 106 S.Ct. at 2554.

The recent trilogy of Supreme Court cases establishes that "[s]ummary judgment procedure is properly regarded not as a disfavored procedural shortcut, but rather as an integral part of the Federal Rules as a whole, which are designed 'to secure the just, speedy and inexpensive determination of every action.' " Celotex Corp., 477 U.S. at 327, 106 S.Ct. at 2555 (quoting Fed.R.Civ.P. 1); see also Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 1562, 4 USPQ2d 1793, 1795 (Fed.Cir.1987).

LAG makes much of a perceived "unfairness" in the grant of summary judgment against it in that summary judgment "precluded" LAG from trial procedures such as presenting its evidence by live witnesses and cross-examining witnesses of its opponent. That argument is meritless. Ample due process safeguards are available in the summary judgment procedures of Rule 56. See, e.g., Fed.R.Civ.P. 56(f) (when nonmovant cannot present facts essential to his opposition through affidavit, "court may refuse the application for judgment or may order a continuance to permit affidavits to be obtained or depositions to be taken or discovery to be had or may make such other order as is just"); see also Celotex, 477 U.S. at 326, 106 S.Ct. at 2504; Sweats Fashions, 833 F.2d at 1566-67, 4 USPQ2d at 1798-99. Thus, a litigant is not "deprived" of a trial, as LAG argues, upon grant of summary judgment where the evidence of record at the time of the motion supports its opponent on all key issues and the nonmovant fails to put in sufficient evidence to create a triable issue of any material fact.

LAG also raises the familiar cry that summary judgment was granted before it could complete its discovery. A litigant's right to discovery is fully protected by Fed.R.Civ.P. 56(f), which allows a court to refuse summary judgment if a litigant shows, "by affidavit," that additional discovery is necessary to uncover "facts essential to justify his position." On the other hand, a litigant's complaint that it needed discovery will not be heard on appeal when discovery was precluded by its own failure to seek Rule 56(f) protection. In this case, LAG did not invoke Rule 56(f) and attempt to convince the trial court that it could not properly respond to Avia's summary judgment motion without additional discovery. Had it done so, there would be an appealable discovery issue. Having failed to do so, there is none.

Finally, this court has repeatedly emphasized that "summary judgment is as appropriate in a patent case as in any other." See, e.g., Spectra Corp. v. Lutz, 839 F.2d 1579, 1581 n. 6, 5 USPQ2d 1867, 1869 n. 6 (Fed.Cir.1988); Brenner v. United States, 773 F.2d 306, 307, 227 USPQ 159, 160 (Fed.Cir.1985); Petersen Mfg., 740 F.2d at 1546, 222 USPQ at 565; Barmag Barmer Maschinenfabrik v. Murata Mach., Ltd., 731 F.2d 831, 835, 221 USPQ 561, 564 (Fed.Cir.1984). LAG's understanding that "summary judgment is not an appropriate procedure to determine the issues of patent validity and is particularly inappropriate to a finding of willfulness in an infringement action" is outmoded. The question is whether summary judgment was properly granted on the evidence of record. It is no longer debatable that the issues in a patent case are subject to summary judgment.

B. Standard of Review

In reviewing a district court's grant of summary judgment in a patent case, this court must review the record, to the extent presented to us by the parties, and essentially determine for itself whether the evidence is genuinely conflicting on material issues of fact and, if not, whether the movant is entitled to judgment on those facts.

In its brief, LAG repeatedly asserts that the district court here made "findings of fact" which are clearly erroneous. Because the district court spoke of "findings of fact" supporting its judgment, LAG apparently believes that the court must have weighed evidence and resolved a genuine issue of fact. That interpretation of the court's order is unwarranted. It is common practice for a district court, after a full trial of a case, to include in its statement of "Findings of Fact," required by Fed.R.Civ.P. 52, the facts in a case which are not disputed as well as those which the court resolved on the basis of conflicting evidence. A court's "findings of fact" after a trial must be viewed simply as a statement of the facts, some of which were disputed, some not, which support its ultimate conclusions. The district court here was exemplary in its statements of the standard for the grant of summary judgment. With respect to the facts, the court "found" only that "there is no bona fide dispute of material fact." Its full statement of the facts on which it relied has been of great assistance to this court. 2

In any event, an appellate court does not review a district court's "f...

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