Jones v. Vefo Inc.

• Decision Date: 10 December 1979
• Docket Number: No. 76-1885,76-1885
• Parties: Robert L. JONES, an Individual, Labrado, Inc., a corporation, Plaintiffs-Appellants, v. VEFO INC., DFC Company, Harco Products Company, Superior Concrete Accessories, Corporations; Harry Fox, Alex Fox, and Laurie Fox, Individuals, Defendants-Appellees.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 409

609 F.2d 409

204 U.S.P.Q. 535

Robert L. JONES, an Individual, Labrado, Inc., a corporation, Plaintiffs-Appellants, v. VEFO INC., DFC Company, Harco Products Company, Superior

Concrete Accessories, Corporations; Harry Fox,

Alex Fox, and Laurie Fox, Individuals,

Defendants-Appellees.

No. 76-1885.

United States Court of Appeals, Ninth Circuit.

Dec. 10, 1979.

Robert E. Strauss, Long Beach, Cal., for plaintiffs-appellants.

Joseph E. Mueth, Wills, Green & Mueth, Los Angeles, Cal., for defendants-appellees.

Appeal from the United States District Court for the Central District of California.

Before BARNES, WALLACE and TANG, Circuit Judges.

TANG, Circuit Judge:

The plaintiffs Robert Jones and Labrado, Inc. sued the defendants for infringement of Patents Nos. 3,515,799 and 3,702,180. The district court, holding that the patents were invalid, granted the defendants' motion for summary judgment, and the plaintiffs appealed. We reverse.

Jones is the inventor of Patents '779 and '180. He assigned an undivided one-half interest in the patents to James Palm who in turn granted an exclusive license of his interest to Jones and Labrado.

The patented inventions involve the use of molded cellular plastic foam, preferably polystyrene foam, to give an artistic surface appearance to poured concrete panels. After the concrete is poured and hardened, the molds are stripped from the concrete panel, leaving an artistic design. The inventions are primarily used in the "tilt-up" wall construction of commercial and industrial buildings. In their complaint, the plaintiffs generally alleged infringement of the methods described in the Jones patents. They also included a pendent state cause of action alleging unfair trade practices.

In support of their motion for summary judgment, the defendants relied upon the Patent Office histories of the patents and the affidavit of Albert Vrana to show that the patents were in public use prior to Jones' claim of invention in October 1965. According to the affidavit, Vrana had used plastic styrofoam molds extensively to shape concrete panels in 1963 at the Edgewater Beach Apartments in Florida.

In opposition, the plaintiffs filed several affidavits to show that Vrana's methods were different from their patented invention. In particular they emphasized that Vrana never employed molded thin-face molds but instead carved his molds with a hot knife. The plaintiffs argued that this distinction was significant because, unlike their method, Vrana's carved molds required nine times more effort in stripping the molds from the hardened concrete. In reply, the defendants cited the file wrapper histories to show the prior use of molded styrofoam molds by earlier patentees (whose techniques differed from the plaintiffs in other respects).

The district court granted the defendants' motion for summary judgment and dismissed the pendent state unfair practices claim. It held that the patents were anticipated and therefore invalid under 35 U.S.C. § 103 because of Vrana's prior public use of styrofoam molds in the Edgewater construction and the file wrapper history of molded styrofoam molds. On appeal, the plaintiffs contend that the district court erred in finding that their patents were anticipated. ¹

The district court erred in resolving whether the Jones' patents were anticipated by the prior art under 35 U.S.C. § 102 on a motion for summary judgment. As we have previously held, anticipation is a strictly technical defense. Cool-Fin Electronics Corp. v. International Electronic Research Corp., 491 F.2d 660, 662 (9th Cir. 1974). "Unless all of the same elements are found in exactly the same situation and united in the same way to perform the identical function in a single prior art reference there is no anticipation." Schroeder v. Owens-Corning Fiberglas Corp., 514 F.2d 901, 903-04 (9th Cir. 1975) (quoting Walker v. General Motors Corp., 362 F.2d 56, 68 (9th Cir. 1966)). See Saf-Gard Products, Inc. v. Service Parts, Inc., 532 F.2d 1266, 1270 (9th Cir.), Cert. denied, 429 U.S. 896, 97 S.Ct. 258, 50 L.Ed.2d 179 (1976).

Whether there was a single prior art reference in this case involved a genuine issue of material fact. To prove anticipation, the defendants relied on the Vrana affidavit to show that the methods employed in the Jones patent were in prior public use. The Vrana affidavit, however, was deficient in a significant respect. As the plaintiffs' affidavits showed, Vrana failed to demonstrate that he utilized the...