Massey v. Del Laoratories, Inc.

• Decision Date: 09 July 1997
• Docket Number: No. 96-1312,96-1312
• Citation: 118 F.3d 1568,43 USPQ2d 1367
• Parties: , 43 U.S.P.Q.2d 1367 Becky Lynn MASSEY, Plaintiff-Appellant, v. DEL LABORATORIES, INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1568

118 F.3d 1568

38 Fed.R.Serv.3d 1475, 43 U.S.P.Q.2d 1367

Becky Lynn MASSEY, Plaintiff-Appellant, v. DEL LABORATORIES, INC., Defendant-Appellee.

No. 96-1312.

United States Court of Appeals Federal Circuit.

July 9, 1997.

Tod R. Dubow, Robins, Kaplan, Miller & Ciresi, Costa Mesa, CA, argued for plaintiff-appellant.

Richard A. Wallen, Pretty, Schroeder & Poplawski, Los Angeles, CA, argued, for defendant-appellee. On the brief was David B. Kirschstein, Kirschstein, Ottinger, Israel & Schiffmiller, P.C., New York City.

Before NEWMAN, PLAGER and RADER, Circuit Judges.

RADER, Circuit Judge.

In the United States District Court for the Central District of California, Becky Lynn Massey sued Del Laboratories, Inc. (Del), the parent company of Sally Hansen, Inc., for infringement of her U.S. Patent No. 4,536,426 (the '426 patent), entitled "Self-Adhesive Nail Overlay or Wrap." After the parties filed cross-motions for summary judgment, the district court ruled that the patent was invalid for obviousness under 35 U.S.C. § 103 (1994). Because the district court granted summary judgment to a non-movant without ensuring a full and fair opportunity to proffer material evidence, this court vacates and remands.

I.

While the heart of this appeal is procedural in nature, general background information on the invention helps frame the issues. The '426 patent discloses an alleged improvement in the method of (and the attendant products related to) applying various wraps or overlays to fingernails or toenails to strengthen the nail. An overlay applies supportive material to the top of the nail. A wrap attaches supportive material to both the top and also beneath the nail on the portion which extends past the end of the finger or toe.

In the past, a primary coating of glue was first applied directly to the nail. This process required careful (and quick) placement of the overlay or wrap on the nail because adjustments or alignments became difficult as the glue dried. This invention coats one side of the overlay with pressure sensitive non-permanent bonding glue, thus eliminating the primary glue coating. With this invention, an individual can adjust the supportive material to a proper alignment before applying the bonding glue to the top of the nail overlay. The material is also permeable to allow the permanent bonding glue to secure the overlay. The invention not only reduces mistakes in the application of overlays, but also reduces the time necessary for a manicure or pedicure.

Claim 1 of the '426 patent, a process claim, states:

The process of strengthening and protecting human nails with a permeable nail overlay having one side coated with a pressure sensitive adhesive of non-permanent bonding material and secured to release backing paper--comprising the sequential steps of:

(a) shaping the nail overlay to a human nail to be strengthened;

(b) simultaneously cutting the nail overlay and release backing paper to the general outline of the human nail;

(c) separating the release backing paper from the nail overlay;

(d) adhering the nail overlay to the human nail with non-permanent bonding material; and,

(e) applying a coat of glue to the top of the nail overlay and permanently bonding the nail overlay to the human nail.

Claim 2, a product claim, states:

Material for providing strength and durability to a human nail, comprising:

(a) a strip of nail overlay having one side coated with pressure sensitive non-permanent bonding adhesive, the nail overlay being permeable so as to permit the passage there through of a bonding glue;

(b) a strip of release backing paper superimposed on and secured to the nail overlay and arranged to be separated from the nail overlay after sections of the superimposed strips have been cut to the general outline of a human nail;

(c) whereby the nail overlay material may be generally positioned and worked into alignment on the human nail before a permanent bonding glue is applied to the top of the nail overlay.

Del, the alleged infringer, produces "The Professional Silk-Wrap Kit." The Professional Silk-Wrap Kit includes fourteen pre-shaped, self-adhesive silk wraps and bonding glue. Before marketing the Professional Silk-Wrap Kit, Del sold other products. In 1973, ten years before the filing date of Massey's patent, Del manufactured the Kwik-Aid and Mend-A-Nail products. These products were not before the examiner during prosecution. Kwik-Aid, a nail repair product, consisted of overlays of surgical tape, a non-permanent self-adhesive permeable rayon fabric. Like the claimed product and process, the Kwik-Aid adhesive facilitates positioning of the overlay on the nail before more permanent bonding.

II.

In February 1995, Massey sued Del, alleging that Del's Professional Silk-Wrap product infringed the '426 patent. On April 10, 1995, Del filed an answer to the complaint alleging in defense, inter alia, that the '426 patent was invalid under 35 U.S.C. §§ 102(b) & 103. Moreover, Del counter-claimed for declaratory judgment of invalidity based on sections 102(b) and 103. Del subsequently amended its answer to include defenses based on 35 U.S.C. § 112.

On November 27, 1995, the parties filed cross-motions for summary judgment. Del's motion sought a determination that the '426 patent was invalid under section 102(b). Specifically, Del claimed that the patent was anticipated by Del's Kwik-Aid product. In support of its motion, Del offered various declarations detailing the prior public use and sale of Kwik-Aid. However, Del's motion neither requests nor mentions invalidity due to obviousness.

In response to Del's motion, Massey argued that the '426 patent was not anticipated by Kwik-Aid. Specifically, Massey's brief noted that Del's motion "is based on the single proposition that its ... 'Kwik-Aid' product constitutes invalidating prior art under 35 U.S.C. Section 102(b)." Massey argued that the prior art does not contain each and every limitation of the claims and, therefore, cannot anticipate the patent.

In reply, Del first mentioned that it also seeks summary judgment based on obviousness. Del noted that it "has introduced compelling, objective evidence that the suit patent is invalid both for anticipation under 35 U.S.C. § 102(b) and obviousness under 35 U.S.C. § 103." Del then incorporates by reference arguments made in its opposition to Massey's motion for summary judgment ("Del's argument regarding the obviousness of the suit patent claims was set forth in its memorandum in opposition to plaintiff's summary judgment motion....").

Filed concurrently with Del's motion, Massey's cross-motion for summary judgment sought a determination that Del's products infringe the '426 patent. In addition, Massey sought a determination of validity. In opposition, Del argued that the '426 patent is invalid for both anticipation and obviousness. Massey then replied to Del's arguments as to obviousness. However, Massey specifically noted "that [Del's motion] does not raise [obviousness], and that it is only raised in opposition to [Massey's motion]."

On December 18, 1995, the district court held a hearing on the parties' cross-motions for summary judgment. The district court issued a tentative ruling denying Del's motion on the basis of anticipation. As to that motion, the district court found numerous disputes as to material facts; namely, the district court held that genuine issues of fact existed as to (a) whether rayon is a fabric, (b) whether Kwik-Aid bonding glue is a glue, and (c) whether one of ordinary skill in this art would ascribe particular meaning to the term "permanent" in the claims. However, the district court granted summary judgment in favor of Del based on a ruling that the '426 patent was obvious in light of Kwik-Aid and the prior art of using "Crazy Glue and 5 Second Nail Glue over silk overlays." At the conclusion of the hearing, the district court adopted its tentative ruling as the order of the court.

Massey, however, did not sit idly as the trial court entered summary judgment for Del on a ground for which Del did not move. At the hearing on the motions for summary judgment, Massey moved to strike Del's reply papers that argued obviousness. The district court stated in its later filed conclusions of law:

With regard to [Massey's] Motion to Strike [Del's] Reply Papers, considering (a) that [Massey's] Motion for Partial Summary Judgment of Validity and Infringement placed in issue all grounds on which the suit patent could be held invalid, (b) that [Del] raised the issue of invalidity for obviousness in its Answer and Counterclaim, (c) that [Del] raised the issue of obviousness in its answering papers submitted in opposition to [Massey's] Motion for Summary Judgment, and (d) that each party relied in support of its Summary Judgment Motion on its answering papers to the opposing party's Motion and in view of the fact that [Massey] did not bring on its Motion to Strike in compliance with local Rule 7 and did not seek an adjournment of the hearing on the Motions for Summary Judgment in order to do so or in order to respond to [Del's] Reply Papers, [Massey's] said Motion to Strike should be denied on the merits and for failure to comply with Local Rule 7.

III.

On appeal, Massey argues that it was improper for the district court to grant Del's motion for summary judgment based on obviousness because obviousness was not properly raised in Del's initial motion. In essence, the district court granted summary judgment to the non-movant in Massey's motion for summary judgment of validity. Thus, this...