Medical Laboratory Automation, Inc. v. Labcon, Inc., 80-2468
| Citation | 670 F.2d 671 |
| Decision Date | 29 December 1981 |
| Docket Number | No. 80-2468,80-2468 |
| Parties | MEDICAL LABORATORY AUTOMATION, INC., a corporation, Plaintiff-Appellant, v. LABCON, INC., a corporation, and Ways and Means, Inc., a corporation, Defendants-Appellees. |
| Court | United States Courts of Appeals. United States Court of Appeals (7th Circuit) |
Anthony J. Janiuk, Emrich, Root, Lee, Brown & Hill, Chicago, Ill., for plaintiff-appellant.
Hugh D. Finely, San Francisco, Cal., for defendants-appellees.
Before CUMMINGS, Chief Judge, FAIRCHILD, Circuit Judge, and EAST, District Judge. *
Medical Laboratory Automation, Inc. (MLA) appeals the District Court's summary judgment entered on September 15, 1980 and holding MLA's patent invalid for obviousness. We note jurisdiction under 28 U.S.C. § 1291 and affirm.
In August, 1972, MLA filed for the patent at issue, claiming an invention by one Scordato and others for a stackable tray to hold pipette tips for use in medical and technical laboratories. The salient features of this claim for purposes of this appeal are that the side of the tray is vertical in its bottom part and inwardly sloping on its top.
In 1977 MLA brought an action for infringement. Before trial, defendants Labcon, et al. (Labcon) moved for summary judgment on several grounds. Pursuant to local rules, the court transferred the matter to a magistrate who recommended that the instant Scordato patent be held invalid for obviousness. 1 In September of 1980, the District Court, 505 F.Supp. 54, entered its Memorandum Opinion and Order, incorporating the magistrate's recommendation, and Judgment Order granting defendants' motion for summary judgment, holding the patent invalid.
MLA first contends that it was improper for the District Court to grant the motion for summary judgment because factual disputes were present. It correctly notes that the existence of a genuine issue of material fact will preclude a grant of summary judgment. See Adickes v. S. H. Kress & Co., 398 U.S. 144, 90 S.Ct. 1598, 26 L.Ed.2d 142 (1970). MLA urges that such issues existed as to whether the Patent Office considered the most relevant prior art, its scope and content, the difference between it and the invention, and the level of skill in the art.
The Supreme Court addressed the obviousness requirement in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). There it stated:
While the ultimate question of patent validity is one of law, (citation), the (35 U.S.C.) § 103 condition ... lends itself to several basic factual inquiries. Under § 103, the scope and content of the prior art are to be determined; differences between Id., at 17, 86 S.Ct. at 693. Thus, if there are genuine material issues of fact regarding these preliminary questions, summary judgment would be improper. These issues are not always in dispute, however, and summary judgment can sometimes be appropriately invoked in patent proceedings. Research Corp. v. Nasco Industries, Inc., 501 F.2d 358, 361 (7th Cir.), cert. denied, 419 U.S. 1096, 95 S.Ct. 689, 42 L.Ed.2d 688 (1974).
the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined.
Here, we have carefully examined each of MLA's claimed issues of fact and find that they are either not truly disputed, or that the dispute is immaterial to the conclusion of obviousness. MLA's first alleged factual issue, whether the Patent Office considered the most pertinent prior art, is the closest question.
The Patent Examiner considered a number of items of prior art, as indicated by the references on the file wrapper. Principal among these were Roach, a tray hand-filled with pipette tips; Shapiro, indicating layered, nesting, ice cream cones; and Cooke, et al., showing a micro-filtration tray with shoulders on each tray to permit stacking. It also cited Cease's French patent to show nesting of trays. Not cited by the Patent Examiner but also conceded by both parties to be prior art are Thomas, showing stacking communion trays, and Cohen, showing stacked trays of nested pipette tips, without the benefit of inwardly sloping upper walls and tray shoulders. The Cohen structure, also developed within MLA, is particularly relevant and central to whether there exists a material fact about the prior art considered.
The potential question of fact is whether the Examiner considered the Cohen structure as prior art notwithstanding the absence of any reference to it on the Scordato file wrapper. This is relevant to existence or weight accorded to the presumption of validity of patents. 35 U.S.C. § 282. 2 MLA notes that the Cohen application was pending at the time the Scordato application was considered, and also claims that the same Examiner addressed both applications. From this, and Patent Office procedures, MLA argues that the Examiner must necessarily have considered the effect of the Cohen structure on Scordato and decided it did not defeat the application. MLA explains the absence of any reference to Cohen as either an unnecessary equivalent citation or as an attempt to preserve the confidentiality of the pending Cohen application.
This court's decisions are clear that we may not safely assume that the Examiner considered an example of prior art if it is not cited. We can only presume, in the absence of evidence to the contrary, that it was overlooked. Chicago Rawhide Mfg. Co. v. Crane Packing Co., 523 F.2d 452, 458 (7th Cir. 1975), cert. denied, 423 U.S. 1091, 96 S.Ct. 887, 47 L.Ed.2d 103 (1976); Milton Mfg. Co. v. Potter-Weil Corp., 327 F.2d 437 (7th Cir. 1964).
Here, MLA contends that it has shown circumstances from which it could be inferred that the Examiner took Cohen into consideration in deciding that Scordato was not obvious, and that resolution of that issue in its favor would preserve the presumption of validity vis-a-vis Cohen. Because, as later made plain, we deem it obvious notwithstanding the presumption, the issue whether the Examiner considered Cohen ceases to be material.
In Graham, the Supreme Court confirmed that the legal question of obviousness must MLA and Labcon appear to agree on what constitutes the relevant prior art. Roach, Shapiro, Cooke, Cease, Thomas, and especially Cohen speak to this patent, and are easily discernible from their drawings and descriptions. Thus, no expert testimony regarding their scope and content are necessary. Lee Blacksmith, Inc. v. Lindsay Bros., Inc., 605 F.2d 341, 344 (7th Cir. 1979); Research Corp. v. Nasco Industries, Inc., 501 F.2d at 362. Similarly, the nature and scope of the present patent is not complicated or overly technical. We have recently noted that "if the differences between the patent in suit and the prior art are such that the subject matter as a whole is obvious to a lay(person), a determination of the level of skill on the basis of expert testimony in the pertinent art would be useless." Lee Blacksmith, 605 F.2d at 344. We believe that the differences argued here, and this subject matter as a whole, can fairly be described as obvious to the layperson. As such, no expert testimony was necessary and the threshold issues were not materially in dispute. See Research Corp. Thus, we find no genuine issues of fact present before the District Court and agree that summary judgment was a proper avenue for disposition of this case.
be answered on the factual findings regarding prior art, its differences from the disputed patent, and the level of skill in the art. If there are genuine issues of fact on any of these three inquiries summary judgment would be improper.
MLA argues that the presumption in favor of validity of patents should attach here, that Labcon has failed to overcome this presumption, and that the District Court erred on the merits in granting Labcon's motion for summary judgment. MLA attacks the reasoning of the District Court, arguing omissions and errors in its analysis.
MLA correctly notes the statutory presumption that an issued patent is valid. 35 U.S.C. § 282. 3 As applied, this presumption requires one challenging a patent to show its invalidity by "clear and convincing evidence." Reese v. Elkhart Welding and Boiler Works, Inc., 447 F.2d 517, 526 (7th Cir. 1971). However, the presumption and its commensurate level of proof is "largely, if not wholly, dissipated" when pertinent prior art is not considered by the Patent Office. Chicago Rawhide, 523 F.2d at 458.
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