Manufacturing Research Corp. v. Graybar Elec. Co., Inc.

• Decision Date: 09 July 1982
• Docket Number: No. 80-5333,80-5333
• Citation: 215 USPQ 29,679 F.2d 1355
• Parties: , 11 Fed. R. Evid. Serv. 278 MANUFACTURING RESEARCH CORPORATION, a Florida Corporation and Electrovision, Inc., a Florida Corporation, Plaintiffs-Appellees, v. GRAYBAR ELECTRIC COMPANY, INC., a New York Corporation, Defendant-Appellant.
• Court: U.S. Court of Appeals — Eleventh Circuit

Page 1355

679 F.2d 1355

215 U.S.P.Q. 29, 11 Fed. R. Evid. Serv. 278

MANUFACTURING RESEARCH CORPORATION, a Florida Corporation and Electrovision, Inc., a Florida Corporation, Plaintiffs-Appellees, v. GRAYBAR ELECTRIC COMPANY, INC., a New York Corporation,

Defendant-Appellant.

No. 80-5333.

United States Court of Appeals, Eleventh Circuit.

July 9, 1982.

Leydig, Voit, Osann, Mayer & Holt, Edward W. Osann, Jr., H. Michael Hartmann, Chicago, Ill., Maguire, Voorhis & Wells, James E. Slater, Orlando, Fla., for defendant-appellant.

Duckworth, Hobby, Allen & Pettis, Herbert L. Allen, Orlando, Fla., for plaintiffs-appellees.

Appeal from the United States District Court for the Middle District of Florida.

Before FAY, VANCE and ARNOLD ^*, Circuit Judges.

VANCE, Circuit Judge:

This appeal involves the validity of three patents held by plaintiffs for manual and hydraulic cable benders. After a jury trial, the district court held the three patents valid and held that defendant had infringed them by manufacturing and marketing two cable benders, one manually operated and one hydraulically operated. We reverse and remand for further proceedings.

On October 19, 1971 the United States Patent Office issued patent 3,613,430 (the '430 patent) to Silas R. Crees based on an application filed July 25, 1969. This patent was for a hydraulically powered cable bender designed for use within the close confines of electrical transformer boxes. Crees subsequently applied for a patent for a manually operated cable bender. The Patent Office rejected his initial application dated January 17, 1974 because some of the application's claims were vague and some were anticipated by prior patent art. ¹ Crees amended the application and the Patent Office issued to him patent 3,888,101 (the '101 patent) on June 10, 1975. Before issuing the '101 patent, however, the Patent Office instructed Crees to divide the amended application and seek two separate patents. ² On August 31, 1976 Crees filed for a patent for another hydraulic cable bender based upon the division of the '101 patent. He received patent 4,052,879 (the '879 patent) on October 11, 1977. Crees assigned the three patents to plaintiff Manufacturing Research Corporation (MRC), which manufactured and marketed two different tools, a manual cable bender which was the commercial embodiment of the '101 patent and a hydraulic cable bender embodying the '430 patent. ³

Greenlee Tool Company has marketed for several years two devices that are remarkably similar to the MRC manual and hydraulic cable benders. One of Greenlee's largest distributors is defendant Graybar Electric Company, which has marketed Greenlee's manual bender (the 796 Model) and hydraulic bender (the 800 Model) throughout central Florida. In 1977 plaintiffs brought this suit ⁴ against defendant for patent infringement. ⁵ Plaintiffs claimed that the Greenlee 796 cable bender infringed the '101 patent and that the Greenlee 800 cable bender infringed both the '430 and the '879 patents. ⁶ At the conclusion of the evidence, the district court instructed the jurors to presume that the three patents were valid unless Graybar had proven their invalidity by clear and convincing evidence. The jury held for plaintiffs on all counts, the district court denied a motion to set aside the verdict or for a new trial, and judgment was entered. ⁷

Although the factual issues underlying this appeal are exceedingly complicated, most of the controlling legal principles are firmly established. The 1952 Patent Act, 35 U.S.C. §§ 1-293, establishes the conditions of patentability. First, to be patentable an invention or process must be "new and useful." 35 U.S.C. § 101. ⁸ An invention must also be novel and not run afoul of certain specific statutory bars to patentability. 35 U.S.C. § 102. ⁹ The most relevant of these statutory bars for our purposes are the bars which preclude patentability if the invention was either "anticipated" by prior art, or "on sale" or "in public use" more than one year prior to the date of the patent application. 35 U.S.C. § 102(a) & (b). See Hobbs v. United States Atomic Energy Commission, 451 F.2d 849, 855 (5th Cir. 1971). Finally, an invention must not be an obvious development to a person having ordinary skill in the pertinent field of invention. 35 U.S.C. § 103. ¹⁰

Once a patent application survives the scrutiny of the Patent Office, it is presumed to be valid. 35 U.S.C. § 282; ¹¹ Parker v. Motorola, Inc., 524 F.2d 518, 521 (5th Cir. 1975), cert. denied, 425 U.S. 975, 96 S.Ct. 2175, 48 L.Ed.2d 799 (1976). This presumption of validity "is based on the acknowledged experience and expertise of the United States Patent Office and recognition that patent approval is a species of administrative determination supported by evidence." Ludlow Corp. v. Textile Rubber & Chemical Co., 636 F.2d 1057, 1059 (5th Cir. 1981). Thus, in an infringement suit the burden of establishing patent invalidity as a defense rests with the party challenging the patent. This burden generally is an onerous one. The alleged infringer must demonstrate the patent's invalidity by clear and convincing evidence to succeed in this defense. Kiva Corp. v. Baker Oil Tools, Inc., 412 F.2d 546, 553 (5th Cir.), cert. denied, 396 U.S. 927, 90 S.Ct. 262, 24 L.Ed.2d 226 (1969); Speed Shore Corp. v. Denda, 605 F.2d 469, 471 (9th Cir. 1979); Astra-Sjuco, A. B. v. United States International Trade Commission, 629 F.2d 682, 688 (C.C.P.A.1980). ¹² The presumption of validity is severely weakened, however, when pertinent prior art was not considered by the Patent Office in its review of patent applications. Cathodic Protection Service v. American Smelting & Refining Co., 594 F.2d 499, 505 (5th Cir.), cert. denied, 444 U.S. 965, 100 S.Ct. 453, 62 L.Ed.2d 378 (1979); Gaddis v. Calgon Corp., 506 F.2d 880, 885 (5th Cir. 1975). In those instances, the burden upon the challenging party is lessened, so that he need only introduce a preponderance of the evidence to invalidate a patent. Futorian Manufacturing Corp. v. Dual Manufacturing & Engineering, Inc., 528 F.2d 941, 943 (1st Cir. 1976). See Beckman Instruments, Inc. v. Chemtronics, Inc., 439 F.2d 1369, 1374-75 (5th Cir.) (presumption of validity is seriously weakened, although not entirely dissipated, when pertinent prior art is not before the Patent Office), cert. denied, 400 U.S. 956, 91 S.Ct. 353, 27 L.Ed.2d 264 (1970). ¹³

Finally, the ultimate determination of patent validity is a conclusion of law. Bird Provision Co. v. Owen's Country Sausage, Inc., 568 F.2d 369, 372 (5th Cir. 1978). This conclusion of law, however, turns on several underlying factual inquiries. Id. As to these subsidiary factual findings in a patent case, our scope of review is restricted by the "general proposition that jury findings on disputed matters of fact will be upheld by the reviewing court if substantial evidence exists to support them." Control Components, Inc. v. Valtek, Inc., 609 F.2d 763, 767 (5th Cir.) (citing Boeing Co. v. Shipman, 411 F.2d 365, 374-75 (5th Cir. 1969) (en banc)), cert. denied, 449 U.S. 1022, 101 S.Ct. 589, 66 L.Ed.2d 484 (1980).

The '101 Patent

Graybar argues that the district court erred in refusing to set aside the jury verdict finding the '101 patent valid. Graybar contends, inter alia, that there was no substantial evidence to support the jury's finding that the patented manual cable bender had not been placed on sale more than one year before the patent application. Specifically, Graybar argues that undisputed evidence demonstrated that in October 1972 Henry B. Durham sold to Greenlee the manual cable bender that allegedly infringes the '101 patent, and that this sale bars the subsequent patent application. We agree with Graybar, for there was no substantial evidence in the record to support the jury's finding that no manual cable bender embodying the principles of the '101 patent had ever been placed on sale prior to January 17, 1973, the statutory bar date for the '101 patent. Indeed, uncontroverted evidence establishes beyond doubt that Henry B. Durham had sold such a device to Greenlee in 1972.

Undisputed documentary and oral evidence indicated that Durham met Frank DeBartola, Greenlee Tool's Southern Regional Sales Manager, at a trade show in Birmingham, Alabama sometime in October 1972. The evidence also shows that Durham privately showed DeBartola a model of a manual cable bender that he had built. On November 9, 1972 Durham signed a written agreement with Greenlee submitting his manual cable bender for consideration, and DeBartola sent the tool to Greenlee's product development division for review. The manager of this division soon notified Durham that Greenlee was enthusiastic about the tool, but that Greenlee had to research ways of manufacturing the tool. Greenlee subsequently reversed the cable bending shoes and modified the size and shape of the shoes before entering into an exclusive licensing agreement with Durham on April 16, 1973.

These actions constituted the placement on sale of a cable bender that embodies the concepts of the '101 patent application. The statutory on sale bar applies when the invention that is the subject of a patent application is merely offered for sale; there is no requirement that a sale be consummated before the statutory bar attaches. Arbrook, Inc. v. American Hospital Supply Corp., 645 F.2d 273, 278 (5th Cir. 1981); Application of Theis, 610 F.2d 786, 791 (C.C.P.A.1979). Further, a single sale or offer is enough to bar patentability. In re Yarn Processing Patent Validity Litigation, 498 F.2d 271, 277 (5th Cir.), cert. denied, 419 U.S. 1057, 95 S.Ct. 640, 42 L.Ed.2d 654 (1974). ¹⁴ In this case, Durham presented Greenlee with a functional tool that embodied the tool claimed in the subsequent '101 patent application a full fourteen months before the '101 patent application was filed. It is of no consequence that the actual sale was not completed until the licensing...