Imazio Nursery, Inc. v. Dania Greenhouses, 94-1450

• Decision Date: 03 November 1995
• Docket Number: No. 94-1450,94-1450
• Citation: 69 F.3d 1560,36 USPQ2d 1673
• Parties: , 36 U.S.P.Q.2d 1673 IMAZIO NURSERY, INC., Plaintiff-Appellee, v. DANIA GREENHOUSES, Defendant, and Coastal Nursery, Jess Rodrigues, and Donna Rodrigues, Defendants-Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1560

69 F.3d 1560

64 USLW 2352, 36 U.S.P.Q.2d 1673

IMAZIO NURSERY, INC., Plaintiff-Appellee, v. DANIA GREENHOUSES, Defendant and Coastal Nursery, Jess Rodrigues, and Donna Rodrigues Defendants-Appellants.

No. 94-1450.

United States Court of Appeals, Federal Circuit.

Nov. 3, 1995.

Rehearing Denied; Suggestion for Rehearing In Banc Declined

Jan. 23, 1996.

David A. Dillard, Christie, Parker & Hale, Pasadena, California, argued for plaintiff-appellee. With him on the brief were Vincent G. Gioia and John D. Carpenter.

Philip C. Swain, Kirkland & Ellis, Los Angeles, California, argued for defendants-appellants. With him on the brief was Jay I. Alexander, Kirkland & Ellis, Washington, D.C.

William L. LaFuze, Vinson & Elkins, L.L.P., Houston, Texas, was on the brief for Amicus Curiae, Greenleaf Nursery Company.

Before RICH, MAYER, and LOURIE, Circuit Judges.

RICH, Circuit Judge.

Coastal Nursery, Jess Rodrigues, and Donna Rodrigues (collectively, Coastal) appeal from the judgment of the United States District Court for the Northern District of California granting summary judgment of infringement of U.S. Plant Patent No. 5,336 (the '336 patent). Imazio Nursery, Inc. v. Dania Greenhouse, No. 92-20755 (SW) (N.D.Cal. September 2, 1993). We reverse the holding of infringement, vacate the finding of willfulness and the award of attorney fees, and remand.

I. BACKGROUND

A. The Patent

Bruno Imazio, the owner of Imazio Nursery, Inc. (Imazio), is the inventor of the '336 patent which is entitled "Heather Named Erica Sunset." According to the '336 patent, Mr. Imazio discovered Erica Sunset heather in 1978 "as a seedling of unknown pollen parentage growing in a cultivated field of Erica persoluta, the variety believed to be the seed parent, where it was noticed because of its early blooming and particularly because of its reaching full bloom, from base to tip, more than a month before the parent plant begins to bloom." It was the early blooming of the Erica Sunset, during the Christmas and Valentine's Day seasons, that distinguished the Erica Sunset from other known varieties.

The sole claim of the '336 patent recites:

A new variety of Heather persoluta, substantially as herein shown and described, particularly characterized by its profuse production of blooms over the entire length of the stem beginning in early December.

B. The Litigation

In April 1992, Imazio sued Coastal for patent infringement alleging that Coastal's "Holiday Heather" infringed the '336 patent. In December 1992, the trial court entered an order granting Imazio's motion for preliminary injunction. Imazio Nursery, Inc. v. Dania Greenhouse, 29 USPQ2d 1217, 1992 WL 551670 (N.D.Cal.1992). The trial court enjoined Coastal from "selling, shipping, giving away, trading or otherwise disposing of potted heather plants of the variety sold by [Coastal] as Holiday Heather." Coastal was not enjoined from selling cut flowers. Id. at 1222, 1992 WL 551670. Coastal appealed the entry of the preliminary injunction to this court. However, in an order dated April 22, 1993, the appeal was dismissed for failure to file a brief. Imazio Nursery, Inc. v. Dania Greenhouses, No. 93-1193 (Fed.Cir. Apr. 22, 1993).

On September 2, 1993 the district court granted Imazio's motion for summary judgment of infringement, denied its summary judgment motion on the issue of validity, and denied its motion for a permanent injunction.

The issues of patent validity, willful infringement, and damages were subsequently tried to a jury. The jury found the '336 patent not to have been proven invalid, found Coastal's infringement to have been willful, and determined actual damages of $101,279.20. The district court entered final judgment on June 29, 1994, finding the case to be exceptional within the meaning of 35 U.S.C. Sec. 285 (1988) and awarding attorney fees of $363,140.59 to Imazio for a total award of $464,419.79 plus pre-judgment interest. Coastal appealed to this court from the grant of summary judgment of plant patent infringement. We have jurisdiction under 28 U.S.C. Sec. 1295(a)(1) (1988).

II. SUMMARY JUDGMENT

Rule 56(c) of the Federal Rules of Civil Procedure provides that summary judgment is appropriate

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.

Fed.R.Civ.P. 56(c). "In ruling on a motion for summary judgment, the district court is required to view the evidence in a light most favorable to the nonmoving party and draw all reasonable inferences in favor of the nonmoving party." C.R. Bard, Inc. v. Advanced Cardiovascular Sys., Inc., 911 F.2d 670, 672, 15 USPQ2d 1540, 1542 (Fed.Cir.1990).

We review de novo a district court's grant of summary judgment. Conroy v. Reebok Int'l Ltd., 14 F.3d 1570, 1575, 29 USPQ2d 1373, 1377 (Fed.Cir.1994). A district court's decision on summary judgment "must be overturned if the court engaged in a faulty analysis in applying the law to the facts and a correct application of the law to those facts might bring a different result." Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 164, 225 USPQ 34, 38 (Fed.Cir.1985).

III. PLANT PATENTS

At least as early as 1892, legislation was proposed to grant patent rights for plant-related inventions. H.R.Rep. No. 5435, 52d Cong., 1st Sess. (1892). Plant patent legislation was supported by such prominent individuals as Thomas Edison who stated that "[n]othing that Congress could do to help farming would be of greater value and permanence than to give to the plant breeder the same status as the mechanical and chemical inventors now have through the law." S.Rep. No. 315, 71st Cong., 2d Sess. 3 (1930) (Senate Report). It was also supported by Luther Burbank, a leading plant breeder of the day, ¹ whose widow stated that her late husband "said repeatedly that until Government made some such provision [for plant patent protection] the incentive to create work with plants was slight and independent research and breeding would be discouraged to the great detriment of horticulture." H.R.Rep. No. 1129, 71st Cong., 2d Sess. 4 (1930) (House Report).

The Townsend-Purnell Plant Patent Act was passed by Congress on May 13, 1930 and was signed by President Hoover on May 23, 1930. It was the first legislation anywhere in the world to grant patent rights to plant breeders ² and was enacted to "afford agriculture, so far as practicable, the same opportunity to participate in the benefits of the patent system as has been given to industry, and thus assist in placing agriculture on a basis of economic equality with industry." Senate Report at 3.

Before enactment of the Plant Patent Act, two factors were thought to prevent plants from being patentable subject matter. The first was the belief that plants, even those bred by man, were products of nature and therefore not subject to patent protection. The second factor was that plants were not considered amenable to the "written description" requirement of the predecessor of 35 U.S.C. Sec. 112, first paragraph. ³ In promulgating the Plant Patent Act, Congress addressed both concerns. It explained that the work of the plant breeder "in aid of nature" was subject to patent protection. Additionally, the written description requirement, applicable to utility patents, was relaxed in favor of a "description ... as complete as is reasonably possible." 35 U.S.C. Sec. 162 (1988); see also Diamond v. Chakrabarty, 447 U.S. 303, 312, 100 S.Ct. 2204, 2209, 65 L.Ed.2d 144 (1980); Ex Parte Hibberd, 227 USPQ 443 (PTO Bd.App. & Int.1985).

As originally enacted, the provisions for plant patent protection were made as amendments to the general patent law. Specifically, section 4884 of the Revised Statutes was amended to recite:

Every patent shall contain ... a grant to the patentee ... of the exclusive right to make, use, and vend the invention or discovery (including in the case of a plant patent the exclusive right to asexually reproduce the plant ).

Rev.Stat. Sec. 4884, as amended by Act of May 23, 1930, ch. 312, Sec. 1, 46 Stat. 376 (current version at 35 U.S.C. Sec. 163 (1988)) (emphasis added).

Similarly, section 4886 of the Revised Statutes was amended to recite:

Any person who has invented or discovered any new and useful art, machine ... or who has invented or discovered and asexually reproduced any distinct and new variety of plant other than a tuber-propagated plant, ... may ... obtain a patent therefor.

Rev.Stat. Sec. 4884, as amended by Act of May 23, 1930, ch. 312, Sec. 1, 46 Stat. 376 (current version split between 35 U.S.C. Secs. 101 and 161 (1988)) (emphasis added).

With the promulgation of the 1952 Patent Act, the plant patent provisions were included as a separate chapter of the statute. Act of July 19, 1952, ch. 950, 66 Stat. 804 (current plant patent provisions at 35 U.S.C. Secs. 161-164 (1988)). Additionally, as was done for utility patents in 35 U.S.C. Sec. 154(a)(1) (1988), the plant patent grant was changed from the "exclusive right" to the "right to exclude" following court decisions explaining the nature of the right conferred by a patent. 35 U.S.C. Sec. 163 (1988); see Crown Die & Tool Co. v. Nye Tool & Mach. Works, 261 U.S. 24, 34, 43 S.Ct. 254, 256, 67 L.Ed. 516 (1923) ("All that the Government grants and protects is the power to exclude others from making, using or vending during the grant."); P.J. Federico, Commentary on the New Patent Act, 35 U.S.C.A. 1, 40-41 (1954), reprinted in 75 J.Pat. & Trademark Off. Soc'y 161, 202 (1993); Giles S. Rich, Address to the New York Patent Law Association Meeting of Nov. 6, 1952, 14-15 ("A change was made, however, in Section 163, where the plant patent right is expressed as the right to exclude.").

It should be noted that although the plant patent provisions were separated from the utility...