Finish Engineering Co., Inc. v. Zerpa Industries, Inc., 86-747
| Decision Date | 02 December 1986 |
| Docket Number | No. 86-747,86-747 |
| Citation | 806 F.2d 1041,1 USPQ2d 1114 |
| Parties | FINISH ENGINEERING COMPANY, INC., etc., Appellee, v. ZERPA INDUSTRIES, INC., etc., Appellant. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
Conrad R. Solum, Jr., Lyon & Lyon, of Los Angeles, Cal., argued for appellant. With him on the brief was Jon E. Hokanson.
David C. Hanson, Webb, Burden, Robinson & Webb, P.A., of Pittsburgh, Pa., argued for appellee.
Before RICH and DAVIS, Circuit Judges, and BENNETT, Senior Circuit Judge.
Appellant Zerpa Industries, Inc. (Zerpa) appeals from the Opinion and Order of the United States District Court for the Western District of Pennsylvania, 1 granting the motion of appellee Finish Engineering Company, Inc. (Finish) for partial summary judgment and holding claims 1 through 7 and 14 of Zerpa's United States Patent No. 4,457,805 ('805 patent) 2 invalid for obviousness under 35 U.S.C. Sec. 103. We reverse and remand because a trial is needed for the resolution of disputed factual issues that are material to Zerpa's cause.
The '805 patent is concerned with the small scale recovery of clean solvent from a mixture of solvent and contaminants. 3 The patent discloses an apparatus for such recovery through the use of a distillation apparatus. Contaminated solvent flows from a sink into a plastic bag positioned in an open top tank mounted below the sink, where the solvent is heated and vaporized. A tube leading from the bank carries the solvent vapor to a condenser where it is collected as clean, liquid solvent. The clean solvent is then pumped back to the tap above the sink.
The most advantageous feature of the invention appears to be the disposable plastic bag. Solid residue from the contaminated solvent accumulates in the plastic bag, which is discarded after the solvent is completely evaportated.
On July 3, 1984, the day the '805 patent was issued, Finish filed suit against Zerpa seeking a declaratory judgment declaring the patent invalid, and a preliminary and permanent injunction against the enforcement of the patent. Zerpa filed a counterclaim for infringement. Finish then filed a motion for partial summary judgment directed to claims 1 through 7 and 14, asserting that the subject matter of these claims would have been obvious to one of ordinary skill in the art at the time the invention was made. Following a hearing on the motion, the District Court (in its Opinion and Order dated June 27, 1985) granted Finish's motion, adjudged the pertinent claims to be invalid, and enjoined Zerpa from enforcing these claims of the '805 patent against Finish and its customers.
The District Court's conclusions relevant to this appeal are that: (1) Finish effectively rebutted the presumption of validity; (2) the '805 patent was invalid in view of the prior art because it would have been obvious to one of ordinary skill in the art; (3) the examiner erroneously concluded that the prior art reference, Downs, U.S. Patent No. 2,794,570, was non-analogous art; and (4) Zerpa failed to establish a nexus between the commercial success of its invention and the claimed invention.
The District Court considered three prior art references, which had all been before the Patent and Trademark Office (PTO). The Lee patent, U.S. Patent No. 3,890,988, issued June 24, 1975, discloses a solvent recovery system using a faucet and sink, in which a plastic bag is used to receive the contaminants. The Lee apparatus teaches cleaning the solvents by straining and filtering, rather than distilling (the method used by the '805 patent). Downs, U.S. Patent No. 2,794,570, issued June 4, 1957, discloses a replaceable flexible tank liner for extending the life of fluid holding tanks. Finally, Hoover, U.S. Patent No. 4,323,429, issued April 6, 1982, discloses a small batch solvent recovery system using a distillation device; Hoover does not disclose a plastic bag or mounting means.
On appeal, Zerpa contends that the trial court erred either in failing to recognize genuine issues of material fact or in resolving issues of material fact in favor of Finish. Primarily, Zerpa argues that the court erred in (1) substituting its unsupported opinion for that of the PTO examiner that the Downs reference is analogous art, and (2) ignoring Zerpa's evidence on four secondary considerations of nonobviousness: (a) commercial success, (b) failure of others, (c) copying by Finish, and (d) favorable industry response. We need decide only whether summary judgment was properly granted or whether there were, instead, disputed issues of material fact calling for a trial.
An appellate court, reviewing a grant of summary judgment, determines for itself whether a "genuine issue as to any material fact" exists and, if not, whether "the moving party is entitled to a judgment as a matter of law." F.R.Civ.P. 56(c). The nonmovant "is required merely to point to an evidentiary conflict created on the record." Armco, Inc. v. Cyclops Corp., 791 F.2d 147, 149, 229 USPQ 721, 722 (Fed.Cir.1986). All reasonable inferences must be drawn in favor of the party opposing the motion and where "there is doubt as to the existence of a genuine issue of material fact, that doubt must be resolved in favor of the nonmovant." Cooper v. Ford Motor Co., 748 F.2d 677, 679, 223 USPQ 1286, 1288 (Fed.Cir.1984). In other words, where "there are genuinely disputed issues of material fact, summary judgment cannot be utilized as the tool for deciding those issues." Armco, Inc., supra, 791 F.2d at 151, 229 USPQ at 724.
The District Court erroneously resolved a number of disputed factual issues against Zerpa and in favor of Finish on the latter's motion for summary judgment. Although the trial court decided that Downs was from the "same art or an art extremely closely analogous to the Pastor patent," the Patent and Trademark Office examiner had previously found that Downs was non-analogous art. The examiner stated: "the Downs references, drawn to the art of lined tanks, is sufficiently remote from batch still subject matter of the proposed primary references that, but for the guidance of applicant's disclosure, the routineer would not be motivated to make the proposed combinations." The determination whether prior art is analogous involves some factual issues concerning whether the reference is within the field of the inventor's endeavor or reasonably pertinent to the particular problem with which the invention was involved. See Union Carbide Corp. v. American Can Co., 724 F.2d 1567, 1572, 220 USPQ 584, 588 (Fed.Cir.1984). Nevertheless, the District Court erroneously resolved the factual dispute in favor of Finish, the movant for summary judgment, by expressly rejecting the examiner's distinction between "batch distillation" art and "lined tank" art. Zerpa's contention that Downs is non-analogous art, supported as it was by the examiner's statement, is sufficient to raise a genuine issue of material fact. 4
The District Court also erred in resolving against Zerpa several disputed material factual issues relating to secondary...
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