Jones v. Hardy

• Decision Date: 08 February 1984
• Docket Number: No. 83-900,83-900
• Citation: 220 USPQ 1021,727 F.2d 1524
• Parties: Robert L. JONES and Labrado, Inc., Appellants, v. Alex HARDY, Appellee. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 1524

727 F.2d 1524

220 U.S.P.Q. 1021

Robert L. JONES and Labrado, Inc., Appellants, v. Alex HARDY, Appellee.

Appeal No. 83-900.

United States Court of Appeals Federal Circuit.

Feb. 8, 1984.

Robert E. Strauss, Newport Beach, Cal., argued for appellants.

Alex Hardy, Newport Beach, Cal., argued for appellee.

Before MARKEY, Chief Judge, and DAVIS and KASHIWA, Circuit Judges.

MARKEY, Chief Judge.

Appeal from a judgment of the United States District Court for the Central District of California holding the patents in suit invalid and dismissing pendant unfair competition claims. We reverse and remand.

Background

In construction, some concrete walls have been cast in a horizontal containing form. A polystyrene plastic sheet with a design carved or cut into it, was laid in the form with the design uppermost. Concrete was poured into the form, and after it hardened, the wall was tilted upright and the sheet was removed, leaving a decorated concrete wall surface. The sheet tended to adhere to the wall. Its removal was done in pieces and presented methodology and time-consumption problems.

Robert L. Jones (Jones), in 1963 molded a design in a polystyrene sheet. After concrete poured on the molded sheet had cured, the sheet could be air blown off in one piece. He applied for and obtained U.S. Patents 3,515,779 ('779 patent) entitled "Mold and Method for Casting Concrete Panels", and 3,702,180 ('180 patent) entitled "Mold for Casting Concrete Panels". The '779 patent issued in 1970 and contains six product and four method claims. The '180 patent resulted from a continuation application. It issued in 1972 and contains six product claims. Jones granted a license under his patents to Labrado, Inc. (Labrado).

Independent product claim 1 of the '779 patent recites the combination of an outer frame structure of the containing form and a molded plastic sheet (a "mold") having a "molded intaglio pattern" of artistic relief, and a very limited but flex resistant thickness (from 0.005 to 0.2 times its length, i.e., a "thin face" mold). Claims 2-6 are dependent on claim 1 and add various details of the mold.

Independent method claim 7 recites the steps of forming a thin-face mold by molding a plastic foam against an artistic pattern, positioning the mold in a form, pouring concrete into the form, permitting the concrete to cure, and separating the form and mold from the concrete wall. Dependent claim 8 requires that the plastic be of cellular, expandable polystyrene beads of limited sizes. Dependent claim 9 adds the step of selecting the bead size of the polystyrene beads to control the texture of artistic relief in the concrete wall. Dependent claim 10 recites the added step of vibrating the concrete.

Independent product claim 1 of the '180 patent recites a thin-face plastic foam mold with an intaglio pattern of relief "molded therein". Dependent claims 2-6 add details of the mold.

The claims of the patents appear in the appendix to this opinion.

On August 23, 1974, Jones and Labrado sued Alexander Hardy and Vefo, Inc. (Hardy) for infringement and unfair trade practices. Hardy admitted infringement and defended on the ground that the patents were invalid.

On March 3, 1976, the district court granted Hardy's motion for summary judgment, holding the asserted claims (1-3, 5-8, and 10 of the '779 patent, and 1-4 and 6 of the '180 patent) invalid for anticipation. The court dismissed the pendant claims for unfair trade practices.

The Court of Appeals reversed in Jones v. Vefo, 609 F.2d 409, 204 USPQ 535 (9th After a two-day trial, the district court filed an opinion on November 24, 1981, in which the patents were viewed as invalid because Jones claimed "an inherent quality of a product long in use". The opinion said the pendant claims were dismissed. Though the opinion stated that "attorneys for defendant shall prepare findings of fact, conclusions of law, and judgment appropriate to this opinion", the record before us confirms that neither that nor anything else was done for over 15 months following the trial. Judgment was entered on March 9, 1983, "in accordance with" the November 1981 opinion. The judgment stated that the "patent" [sic] was invalid, that the pendant claims were dismissed, and that each party would pay its own costs and attorneys fees.

Cir.1979) and remanded for trial on the issue of whether the claims were invalid for obviousness.

Issue

Whether the district court erred in holding the patents in suit invalid.

OPINION

Review of the opinion on which judgment was expressly founded establishes that the judgment was premised on legal errors, including: (1) nonconsideration of the invention as claimed; (2) disregard of the presumption of validity and burden of proof established by 35 U.S.C. Sec. 282; (3) absence of the factual findings on the four inquiries mandated by Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 693-694, 15 L.Ed.2d 545, 148 USPQ 459, 467 (1965); (4) application of an improper test under 35 U.S.C. Sec. 103; and (5) nonconsideration of objective indicia of nonobviousness. ¹ A judgment based solely on such fundamental legal errors cannot stand.

Nor has Hardy shown on appeal any basis on which the foregoing errors may be disregarded as harmless. Indeed, Hardy filed in this court a brief consisting of a single page. ² On that page, Hardy misstates the issues as whether "strippability" of molded and cut foam is a matter of "degree", whether molded is "more economical" than cut foam, and "how obvious" it was "at the time the patent was granted" to "use foam" to form patterned concrete. With no record or authority citations, and no reference to specific prior art disclosures, Hardy says Jones relies only on "strippability" as "justifying the validity of his patents", that a reading of Hardy's cross-examination of two witnesses will divulge the inadequacy of that reliance, that there is "nothing unusual or not inherent in a process with a long history of prior art", and that Jones' witnesses upon cross-examination supported Hardy. Hardy's appendix reflects that cross-examination, which is devoted to irrelevant considerations, such as whether the claimed inventions are useful with every type of design, whether release agents have been used, and the economics of some installations, most of which was properly disregarded in the district court's opinion.

1. Claimed Invention

The invention cannot be tested on the basis of whether the "idea" of using molded polystrene foam is patentable. Under the patent statute, Title 35 U.S.C., "ideas" are not patentable; claimed structures and methods are. Reducing a claimed invention to an "idea", and then determining patentability of that "idea" is error. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303, 308-09 (Fed.Cir.1983). Analysis properly begins with the claims, for they measure and define the invention. Aro Manufacturing Co. v. Convertible Top Replacement Co., 365 U.S. 336, 339, 81 S.Ct. 599, 600-601, 5 L.Ed.2d 592 (1961). Further, each claim must be considered as defining a separate invention. 35 U.S.C. Sec. 282, supra, note 1; Altoona Publix Theaters, Inc. v. American Tri-Ergon Corp., 294 U.S. 477, 487, 55 S.Ct. 455, 459, 79 L.Ed. 1005 (1935).

Both patents were characterized as relating to "a method" of constructing a concrete wall. The record contains no discussion of the individual product and method claims of the '779 and '180 patents. There is present an indication that the present invention is the use of a pattern formed by molding polystyrene foam against a positive design because all other aspects of the claim are well known in the art.

Though it is proper to note the difference in a claimed invention from the prior art, because that difference may serve as one element in determining the obvious/nonobviousness issue, it is improper (even if erroneously suggested by a party) to consider the difference as the invention. The "difference" may have seemed slight (as has often been the case with some of history's great inventions, e.g., the telephone), but it may also have been the key to success and advancement in the art resulting from the invention. Further, it is irrelevant in determining obviousness that all or all other aspects of the claim may have been well known in the art. Medtronic, Inc. v. Cardiac Pacemakers, Inc., 721 F.2d 1563, 220 USPQ 97, 99-100 (Fed.Cir.1983). Hence the statute, the law established not by judges but by Congress, requires that the invention as claimed be considered "as a whole" when considering whether that invention would have been obvious when it was made. 35 U.S.C. Sec. 103.

2. Presumption of Validity

A patent shall be presumed valid; that presumption attaches to each claim independently of the other claims. 35 U.S.C. Sec. 282. The statute places the burden of proving facts establishing invalidity on the person asserting invalidity. The patent challenger must establish those facts by clear and convincing evidence, and the ultimate burden of persuasion never shifts from the patent challenger. Medtronic, supra, 721 F.2d 1563, 220 USPQ at 100.

The record reflects no mention of the presumption of validity, and Hardy suggested nothing from which it can be inferred that the presumption was at any time considered. Nor does there appear an indication that Hardy had or had not carried the burden assigned by 35 U.S.C. Sec. 282. Nor is there reference to obviousness-indicating facts proved by clear and convincing evidence.

Contrary to 35 U.S.C. Sec. 282, there was placed on Jones the burden of establishing validity, in substitution for the burden assigned Hardy by that statute. Error occurred in requiring that the evidence "persuade" the court of patentability:

Although the evidence in this regard [that a molded face of styrofoam has less tendency to adhere to concrete than a carved face] is somewhat conflicting, in my view, the evidence preponderates in favor of this...