Cable Elec. Products, Inc. v. Genmark, Inc.

Decision Date09 August 1985
Docket NumberNo. 84-1412,84-1412
Citation226 U.S.P.Q. 881,770 F.2d 1015
PartiesCABLE ELECTRIC PRODUCTS, INC., Appellant, v. GENMARK, INC., a/k/a Diablo Products Corp., Appellee. Appeal
CourtU.S. Court of Appeals — Federal Circuit

Paul J. Sutton, New York City, argued for appellant. With him on the brief were Barry G. Magidoff and Anthony Amaral, Jr.

Alan H. MacPherson, Skjerven, Morrill, MacPherson, Franklin & Friel, San Francisco, Cal., argued for appellee. With him on the brief were Thomas J. Friel, Jr. and Doniel E. Weil.

Before BENNETT, Circuit Judge, MILLER, Senior Circuit Judge, * and SMITH, Circuit Judge.

BENNETT, Circuit Judge.


This is an appeal from the United States District Court for the Northern District of California 1 which through its grants of summary judgment favorable to defendant Genmark, Inc. (Genmark), on February 29, 1984, 2 and May 25, 1984, 3 rendered a final judgment in Civil Docket No. C-83-0897-WWS, an action for patent infringement, federal false designation of origin, state unfair competition, and state trademark infringement.

The original complaint in this action was filed February 25, 1983, and accused Genmark of infringement of United States Patent No. 4,343,032 issued to Frederic W. Schwartz (the Schwartz patent) and owned by plaintiff Cable Electric Products, Inc. (Cable). The Schwartz patent relates to a photosensitive electric lamp able to turn itself on by degree as ambient light diminishes. As illustrated in Fig. 1 from the Schwartz patent, appearing below with unnecessary reference characters omitted, such a lamp includes a housing 10 which supports a light bulb 18 enclosed by a removable translucent shade 24. A lens 12 on the front of housing 10 permits ambient light to reach electrical circuitry and effect the operation described above. The device obtains power from a conventional electric wall receptacle through a pair of contact blades 14 at the rear of housing 10.


On October 11, 1983, Genmark filed a first motion for summary judgment. The following day Cable moved for leave to amend its complaint to include, in addition to the patent count already joined, three others not based on any patent. The requested We affirm the grant of summary judgment as to the patent infringement count, vacate the grant of summary judgment as to the nonpatent counts, and remand these for further appropriate deliberations.

leave to amend was granted November 17, 1983. Subsequently, Genmark's first motion for summary judgment as to the patent count was granted. Thereafter, on April 24, 1984, Genmark made a second motion for summary judgment, this time as to the three counts added to the litigation by the amended complaint. The second motion was also granted, and the present appeal resulted.

The judgments will be reviewed below in the order granted. 4


The district court dealt with the Genmark motion for summary judgment on the patent infringement count of the original complaint of Cable Electric in a Memorandum of Opinion and Order dated February 29, 1984 (the patent opinion) 5. There it stated, "[T]he Court finds that, although defendant cannot establish that its device does not infringe plaintiff's patent, defendant does meet its burden of proof in establishing the obviousness of plaintiff's claimed invention under 35 U.S.C. Sec. 103 without raising a genuine dispute of material fact." The Genmark motion was accordingly granted, and the Schwartz patent invalidated.

Cable Electric attacks that judgment scattershot fashion with a laundry list of objections which fall into the two general areas of inquiry suggested by Fed.R.Civ.P. 56(c), 6 namely, (1) the existence of genuine issues of material fact and (2) the entitlement of the movant to judgment as a matter of law. In the former category, it is asserted that the obviousness standard used by the district court evidences a level of uncertainty which implies the existence of genuine issues of material fact, and that affidavits or deposition testimony submitted in opposition to the summary judgment motion raise contested issues of material fact with regard to the scope and content of the prior art, the differences between that art and the claims at issue, the commercial success of the product embodying those claims, and the copying of that product by Genmark as demonstrating nonobviousness. It is asserted that the evidence on these issues was not viewed in a light most favorable to Cable, the opponent of summary judgment.

Regarding the law employed, Cable contends that the district court erred in that it shifted the burden of persuasion on invalidity, failed to determine that the art relied on to invalidate the Schwartz patent was more pertinent than that considered during prosecution, did not specifically indicate the combination of teachings that would yield the claimed invention, gave inadequate consideration to commercial success and copying as secondary indicia of nonobviousness, and applied an incorrect obviousness standard, which included, among other alleged We find these assertions individually and collectively to be without merit. The patent opinion of the district court is well reasoned and, in light of the record upon which it is based, adequate, accurate, and amply justified. The following discussion substantiates our conclusion.

deficiencies, a failure to consider the claimed invention as a whole.

A. Summary Judgment

Some comments on the use and appellate review of summary judgment are required to provide a frame of reference for a discussion of the record.

A number of objections by Cable are essentially complaints that the district court did not adequately amplify its reasoning and the underlying factual inferences on which it relied in granting summary judgment. Fed.R.Civ.P. 56(c), however, makes it clear that the circumstances in which a grant of summary judgment is proper are circumstances in which a district court need not function as an arbiter among differing versions of every factual reality for which evidentiary support has been presented. Instead, the circumstances appropriate to summary judgment are those in which a district court is able to conclude that, with regard to any factual issues material to granting judgment as a matter of law, no genuine dispute exists. Thus, it manifests incorrect expectations to fault a district court in granting summary judgment for a failure to find particular facts. To engage in fact finding would be not only inappropriate, but would per se imply the impropriety of the grant. See Lemelson v. TRW, Inc., 760 F.2d 1254, 1260-61, 225 USPQ 697, 700-01 (Fed.Cir.1985).

Additionally, although Fed.R.Civ.P. 52(a) provides that a "court shall find the facts specially and state separately its conclusions of law thereon," the rule contains the pertinent qualification that "[f]indings of fact and conclusions of law are unnecessary on decisions of motions under Rules 12 or 56." Accord Helena Rubinstein, Inc. v. Bau, 433 F.2d 1021, 1024, 167 USPQ 711, 713 (9th Cir.1970); Fromberg, Inc. v. Gross Manufacturing Co., 328 F.2d 803, 806, 140 USPQ 641, 643 (9th Cir.1964). An exception, which we do not consider to be applicable here, can be found in Fed.R.Civ.P. 56 in the case of grants of partial summary judgment. 7 Assuredly, to know the reasoning a district court used in deciding to grant summary judgment facilitates the task of a reviewing court, and there does exist a risk in complicated cases of an unnecessary reversal if the logic that resulted in a grant of summary judgment cannot be discerned. See Petersen Manufacturing Co. v. Central Purchasing, Inc., 740 F.2d 1541, 1546, 222 USPQ 562, 566 (Fed.Cir.1984). Nevertheless, in light of the record before us and the patent opinion of the district court, the issues in this case present no such degree of complexity as would preclude affirmance, due to any failure of the district court to make the basis of its holding clear.

Thus, the complaint of Cable as to the insufficiency of "the factual findings of the On this basis, we also dispose of the charge by Cable that the district court "failed to make a factual determination as to whether any of these [prior art patent] references were or were not more pertinent than the art considered by the Patent and Trademark Office during the prosecution of the patent-in-suit." Cable cites Jones v. Hardy, 727 F.2d 1524, 1529, 220 USPQ 1021, 1025 (Fed.Cir.1984), as condemning the omission of such a determination. Nevertheless, in Jones the appeal was from a judgment rendered after a 2-day trial, rather than one from summary judgment, and the failure of the lower court opinion to contain a factual determination as to pertinency was but one of many, more major flaws in the obviousness analysis cited by this court in reversing a conclusion of invalidity. The analysis faulted in Jones included, for example, a denial of the "statutory presumption of validity and an impermissible burden-shifting," id., which, as will be discussed below, did not occur here. Cf. King Instruments Corp. v. Otari Corp., 767 F.2d 853, 857, 226 USPQ 402, 404 (Fed.Cir.1985) (referring to the failings in the Jones analysis as a "parade of horrors"). A determination on pertinency may in some cases afford insight into the reasoning of the factfinder, but it is not strictly a requirement under Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545, 148 USPQ 459 (1966), for a proper obviousness analysis.

District Court on the scope and content of the prior art [or] ... the differences between the prior art and the claims at issue" is unpersuasive for at least three reasons. First, the presence of findings would signal the possible existence of disputed issues of material fact, none of which we discern to exist. Second, there is no legal requirement that the rationale behind a nonpartial grant of summary judgment, including a...

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