Petersen Mfg. Co., Inc. v. Central Purchasing, Inc., No. 83-1006

• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
• Writing for the Court: Before MARKEY, Chief Judge, BENNETT and NIES; NIES
• Citation: 222 USPQ 562,740 F.2d 1541
• Decision Date: 03 July 1984
• Docket Number: No. 83-1006
• Parties: PETERSEN MANUFACTURING CO., INC., Appellant, v. CENTRAL PURCHASING, INC., Appellee. Appeal

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740 F.2d 1541 222 U.S.P.Q. 562 PETERSEN MANUFACTURING CO., INC., Appellant,
v.
CENTRAL PURCHASING, INC., Appellee. Appeal No. 83-1006. United States Court of Appeals,
Federal Circuit. July 3, 1984.

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Howard N. Aronson and James E. Siegel, Scarsdale, N.Y., argued for appellant. With them on the brief were Elia Weinbach, Los Angeles, Cal., and Susan Friedman.

William H. Pavitt, Jr., Los Angeles, Cal., argued for appellee.

Before MARKEY, Chief Judge, BENNETT and NIES, Circuit Judges.

NIES, Circuit Judge.

This appeal is from the grant of summary judgment by the United States District Court of the Central District of California (Real, C.J.), entered April 18, 1983, dismissing a complaint by Petersen Manufacturing Co. for patent infringement and unfair competition, and from an award of attorney fees to the accused infringer, Central Purchasing, Inc. Petersen asserts that summary judgment was improvidently granted in that genuine issues of material fact remain to be tried. Certain affidavits submitted by Petersen are claimed to raise factual issues with regard to the validity of the design patent in suit, and with respect to the asserted claim of unfair competition based on the public's identification of the design with Petersen.

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From a review of the record, we conclude that summary judgment was proper and affirm the judgment.

However, the award of attorney fees is vacated because the basis for the award is not apparent in the record, and we are thus unable to review whether the award constitutes an abuse of discretion.

Background

The patent in suit, U.S. Patent No. Des. 261,096, ¹ is directed to the following design for a hand tool:

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The assignee of the patent, Petersen, has for many years sold a series of locking plier-type wrenches and other hand tools under the trademark VISE-GRIP, part of the full line of which is shown below:

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The two tools on the right embody the design of the patent in suit. As is readily apparent, all of the tools utilize essentially the same handle which appears in a number of now expired mechanical patents obtained by Petersen more than one year prior to the filing of the application for the subject patent. ²

During the prosecution of the design patent application, which was filed on September 18, 1978, counsel for Petersen provided the examiner with the following prior art:

(1) U.S. Patent No. 2,563,267, (owned by Petersen), which contains the following drawing:

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NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

(2) The LeverWrench device, a competing locking pliers-type wrench with elongated jaws:

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(3) Various tool catalogues showing a variety of non-locking pliers with long nose jaws, e.g.:

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In addition, the examiner's search disclosed a patent to Schroeder, U.S. Patent No. 3,585,704, for a pliers-type wrench which admittedly shows substantially the same handle utilized by Petersen:

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Following Petersen's response to an initial rejection under 35 U.S.C. Sec. 103 based on Schroeder '704 and the LeverWrench tool, the examiner allowed the application and the patent issued on October 6, 1981. ³

Petersen introduced the six-inch version of its hand tool to the market in March of 1980, followed by the nine inch model in 1982. Without question, Petersen's new tool has enjoyed substantial commercial success. The new tool is sold singly and as part of a set with other Petersen locking hand tools.

Aware that an affiliate of Central, Harbor Freight Salvage Co., was marketing a similar device, Petersen, on February 26, 1982, sent a "cease-and-desist" letter to Harbor Freight, charging infringement of the '096 patent. Counsel for Central responded to the letter on March 15, 1982, asserting, inter alia, that the patent appeared to represent an effort to protect functional features of the tool under the guise of a design patent. No further correspondence was exchanged by the parties.

On November 2, 1982, Petersen filed the present action for patent infringement and for unfair competition, under federal and state law, the latter claim being premised on a theory that Central was using a false designation of origin by selling tools of a patented design which the public identified with Petersen. It must be noted that Petersen does not assert that the handle design identifies its line of tools, but rather argues that certain details of the jaws portion of the new tool are ornamental and that the shape of the long nose tool has acquired distinctiveness, or secondary meaning, indicating the source of the tool to the public.

Based on testimony and exhibits obtained through discovery of Petersen's officers, and on the prosecution history of the patent in suit, Central moved for summary judgment asserting:

(a) The patent in suit was invalid because (1) the design was not ornamental (as required by 35 U.S.C. Sec. 171), being dictated by functional considerations; (2) the design was obvious (within the meaning of 35 U.S.C. Sec. 103) in view of Petersen's own earlier tool design and the LeverWrench tool; and (3) the patent was fraudulently procured for failure to disclose Petersen's entire line of tools;

(b) The unfair competition claims were meritless under Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed.2d 661, 140 USPQ 524 (1964); and for the reason that no secondary meaning had been, or could be, established in Petersen's tool design; and

(c) The case was "exceptional" within the meaning of 35 U.S.C. Sec. 285, warranting an award of attorney fees, because of inequitable conduct in procuring and asserting the patent.

In opposing the motion, Petersen filed eight affidavits, including four by "experts" attesting to the nonobviousness, non-functionality, and aesthetic appearance of the design.

After hearing, the district court granted the motion for summary judgment; declared U.S. Patent No. Des. 261,096 invalid and unenforceable; dismissed the complaint in its entirety; and granted Central an award of attorney fees. Petersen appeals that judgment. Our jurisdiction is found in 28 U.S.C. Sec. 1295(a)(1).

I

Analysis

The Federal Rules of Civil Procedure pertinent to Central's motion for summary judgment provide:

Rule 56(b): A party against whom a claim, counterclaim, or cross-claim is asserted

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or a declaratory judgment is sought may, at any time, move with or without supporting affidavits for a summary judgment in his favor as to all or any part thereof.

(c) ... The judgment sought shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law....

* * *

* * *

(e) ... When a motion for summary judgment is made and supported as provided in this rule, an adverse party may not rest upon the mere allegations ... of his pleading, but his response, by affidavits or as otherwise provided in this rule, must set forth specific facts showing that there is a genuine issue for trial. If he does not so respond, summary judgment, if appropriate, shall be entered against him.

As this court has repeatedly held, summary judgment is as appropriate in a patent case as in any other type of case, where no genuine issue of material fact remains and the movant is entitled to judgment as a matter of law. See, e.g., Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831, 835, 221 USPQ 561, 564 (Fed.Cir.1984); Union Carbide Corp. v. American Can Co., 724 F.2d 1567, 1571, 220 USPQ 584, 587 (Fed.Cir.1984); D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144, 1147, 219 USPQ 13, 15 (Fed.Cir.1983); Chore-Time Equipment, Inc. v. Cumberland Corp., 713 F.2d 774, 778-79, 218 USPQ 673, 675 (Fed.Cir.1983). Similarly, summary judgment may be granted on a meritless claim of unfair competition. See, J. Gilson, Trademark Protection and Practice, Sec. 8.10 (1982) and cases cited therein. In deciding such motions, all doubt respecting the presence or absence of factual issues and all inferences of fact must be resolved in favor of the one against whom summary judgment is sought. Union Carbide v. American Can Co., 724 F.2d at 1571, 220 USPQ at 588.

As an initial matter, Petersen argues that the case must be remanded to the district court because of the failure of the court to issue specific findings of fact and conclusions of law. According to Petersen, a district court must, in invalidating a patent, set forth the factual basis for its conclusion. For example, to invalidate for obviousness under 35 U.S.C. Sec. 103 ⁴, each of the inquiries delineated in Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 693, 15 L.Ed.2d 545, 148 USPQ 459, 467 (1966) must be discussed.

Fed.R.Civ.P. 52(a) provides that a "court shall find the facts specially and state separately its conclusions of law thereon." However, Rule 52(a) continues, "Findings of fact and conclusions of law are unnecessary on decisions of motions under Rules 12 or 56." Only in connection with the grant of partial summary judgment must the court specify in an order "the facts that appear without substantial controversy". Fed.R.Civ.P. 56(d).

The district court cannot, therefore, be reversed simply for failing to provide a detailed analysis, although we agree with Petersen that a full statement by the court of the basis for its decision facilitates appellate review and may be necessary in some circumstances. Accord, Fromberg, Inc. v. Gross Mfg. Co., 328 F.2d 803, 806 (9th Cir.1964). However, in this case the issues...