Gerber Garment Technology, Inc. v. Lectra Systems, Inc.

• Decision Date: 10 October 1990
• Docket Number: No. 89-1743,89-1743
• Citation: 916 F.2d 683,16 USPQ2d 1436
• Parties: , 16 U.S.P.Q.2d 1436 GERBER GARMENT TECHNOLOGY, INC., Plaintiff-Appellant, v. LECTRA SYSTEMS, INC. and Lectra Systems, S.A., Defendants-Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

Page 683

916 F.2d 683

59 USLW 2299, 16 U.S.P.Q.2d 1436

GERBER GARMENT TECHNOLOGY, INC., Plaintiff-Appellant, v. LECTRA SYSTEMS, INC. and Lectra Systems, S.A., Defendants-Appellees.

No. 89-1743.

United States Court of Appeals Federal Circuit.

Oct. 10, 1990.

Edward F. McKie, Jr., Banner, Birch, McKie & Beckett, Washington, D.C., argued for plaintiff-appellant. With him on the brief were William W. Beckett and Barry L. Grossman.

Larry Hugh Chesin, Meals, Kirwan, Goger, Winter & Parks, P.C., Atlanta, Ga., argued for defendants-appellees.

Before MARKEY, Circuit Judge, ^* BENNETT, Senior Circuit Judge, and SENTER, Chief Judge. ^**

MARKEY, Circuit Judge.

The United States District Court for the Northern District of Georgia, No. 1:86-CV-2054-CAM, denied the motion of Gerber Garment Technology, Inc. (Gerber) for summary judgment that United States Patent No. 3,790,154 ('154) was infringed and not invalid, denied Gerber's request for a preliminary injunction, and granted Lectra Systems, Inc. and Lectra Systems S.A.'s (Lectra's) motion for summary judgment that claims 15 and 16 of the '154 patent are invalid for obviousness-type double patenting in view of claim 23 of United States Patent No. 3,495,492 ('492). Gerber appeals from the denial of its motion for preliminary injunction. We affirm.

BACKGROUND

Proceedings in the Patent and Trademark Office

On May 5, 1969 Gerber filed an original patent application. The Patent and Trademark Office (PTO) examiner imposed a restriction requirement between "Claims 1-11 and 16-28 drawn to a cutting apparatus" and "Claims 12-15 drawn to a work holding means." See 35 U.S.C. Sec. 121. Gerber elected to prosecute the former claims and the application issued as the (now expired) '492 patent on February 17, 1970.

On February 2, 1970 Gerber had filed a continuation-in-part application directed to the "work holding means" of claims 12-15. Gerber abandoned that application in favor of a continuation application filed on December 17, 1971. The latter application issued as the '154 patent on February 5, 1974. During the four years of prosecution preceding issuance of the '154 patent, Gerber amended and substituted claims for consideration by three examiners.

The Patents

The patents-in-suit relate to automated fabric cutting and disclose the use of a vacuum to hold a stack of multiple layers of fabric on a penetrable support surface while a vertically reciprocating cutting blade cuts the fabric.

Claim 23 of the '492 patent reads:

23. An apparatus for working on sheet material comprising a bed of penetrable material defining a surface for supporting sheet material spread thereover, a piece of substantially air-impervious sheet material overlying at least an associated portion of the exposed surface of the material over said supporting surface, means for producing a vacuum adjacent said supporting surface which acts on said sheet of air-impervious material and pulls it toward said supporting surface so as to compress said sheet material Claims 15 and 16 of the '154 patent read:

between it and said supporting surface, a cutter for cutting sheet material spread on said supporting surface, and means for moving said cutter and said supporting surface relative to one another along a given line of cut, said cutter having a cutting tool which during normal operation of said cutter to cut sheet material received on said supporting surface penetrates said bed of penetrable material.

15. In a machine having a tool in the form of a cutting blade adapted to normally pass through and beyond an object in a cutting operation, an apparatus for holding the object in a rigid condition while it is worked on by the cutting blade, said apparatus comprising support means defining a penetrable supporting plane on which said object is placed in a cutting operation for enabling the cutting blade passing through said object to also pass through and beyond the supporting plane, a panel of substantially air-impervious sheet material overlying at least a portion of the exposed surface of said object, and means for producing a vacuum directly adjacent the surface of said air-impervious panel facing said object so that atmospheric pressure acting on said panel pushes it toward said object and causes said object to be compressed between said panel and said supporting plane.

16. The apparatus defined in claim 15 further characterized by said support means comprising a bed having a supporting surface defining said supporting plane and which bed is made of such material as to be readily penetrable by said tool to thereby enable said tool to pass through and beyond the plane of said supporting surface.

Proceedings in the District Court ¹

Gerber sued Lectra for infringement of three patents, the '154 patent and two others. Gerber moved for summary judgment that the patents were infringed and not invalid, or, in the alternative, for preliminary injunction. Because Lectra's opposition raised issues of fact as to the two other patents, Gerber withdrew its motion as to them, leaving them for trial.

Lectra filed a motion for summary judgment that the asserted claims 15 and 16 of the '154 patent were invalid for obviousness-type double patenting. The district court determined that: (1) 35 U.S.C. Sec. 121 did not preclude Lectra from raising the issue because the claims were not consonant with those not elected under the restriction requirement; and (2) claims 15 and 16 of the '154 patent were invalid for obviousness-type double patenting in view of claim 23 of the '492 patent.

The district court denied Gerber's motion for summary judgment and its request for a preliminary injunction. Respecting the latter, the district court merely stated in the last paragraph of its order that it should be denied. The district court entered no findings on the questions normally involved in a grant or denial of a preliminary injunction (likelihood of success, irreparable harm, balance of hardships, and public interest).

ISSUE

Whether the district court abused its discretion in denying Gerber's motion for preliminary injunction.

OPINION

Introduction

Compliance with a restriction requirement means the claims in a divisional application must be consonant with those not elected under that requirement. Noncompliance with the consonance requirement is normally detected by the PTO examiner. See Manual of Patent Examining Procedure (MPEP) Sec. 804.01 (double patenting protection of Section 121 does not apply where the claims are not consonant with, i.e. "have been changed in material respects from", the claims subject to the restriction requirement). Examiners' compliance with MPEP Sec. 804.01 may account for the absence of court decisions on the precise fact pattern before us and the consequent "first impression" status of the case in this court.

We are presented here also with that procedural quirk in the law whereby the nonappealable becomes reviewable and piecemeal litigation becomes permissible. The district court's grant of summary judgment to Lectra was an interlocutory partial judgment not appealable absent certification. Fed.R.Civ.P. 54. The denial of Gerber's motion for summary judgment is interlocutory, nonfinal and nonappealable. Glaros v. H.H. Robertson, 797 F.2d 1564, 1573, 230 USPQ 393, 399 (Fed.Cir.1986), cert. dismissed, 479 U.S. 1072, 107 S.Ct. 1262, 94 L.Ed.2d 124 (1987) (the denial of summary judgment merely establishes that a trial is necessary).

The denial of Gerber's "alternative" request for a preliminary injunction is appealable under 28 U.S.C. Sec. 1292(c)(1), but would normally be incapable of review because the district court expressed no reasons or findings in its support. Pretty Punch Shoppettes, Inc. v. Hauk, 844 F.2d 782, 784, 6 USPQ2d 1563, 1565 (Fed.Cir.1988). In view of the district court's silence, the parties on appeal properly refrained from arguing the four factors involved in the grant or denial of a preliminary injunction. On the apparent but unexpressed assumption that the denial rested on the grant of summary judgment to Lectra, the parties here focus exclusively on the merits of that grant.

Forced to the same assumption, i.e., that the court denied the preliminary injunction because its summary judgment of invalidity clearly precluded preliminary relief to Gerber, we review the merits of that summary judgment because it is "closely interrelated factually" to the preliminary injunction. Intermedics Infusaid, Inc. v. Regents of the University of Minnesota, 804 F.2d 129, 134, 231 USPQ 653, 657 (Fed.Cir.1986). Thus through the magic of Section 1292(c)(1), the unappealable partial judgment to Lectra must be reviewed as though it were appealable, and the result of that review in this case is to affirm the denial of the motion for preliminary injunction.

The district court here held that there was no "same invention" type double patenting because, in its view, one using the structure set forth in claims 15 and 16 would not infringe claim 23 (with its limitation to means for moving the cutter). The court, however, determined that "obviousness-type" double patenting is present. The latter is a judge-made criterion adopted out of necessity where the courts were faced with a situation in which claims in two applications or patents were not drawn precisely to the same invention, but were drawn to inventions so very much alike as to render one obvious in view of the other and to effectively extend the life of the patent that would have the earlier of the two issue dates. In re Thorington, 418 F.2d 528, 534, 163 USPQ 644, 648 (CCPA 1969), cert. denied, 397 U.S. 1038, 90 S.Ct. 1356, 25 L.Ed.2d 649, 165 USPQ 290 (1970).

Because we find no error in the grant of summary judgment of invalidity, Gerber necessarily cannot possibly establish a basis for a preliminary injunction. Accordingly, we affirm the denial of Gerber's motion for preliminary injunction and deny its request for a remand for consideration of...