Pro-Mold and Tool Co., Inc. v. Great Lakes Plastics, Inc.

• Decision Date: 07 February 1996
• Docket Number: PRO-MOLD,95-1181,Nos. 95-1171,s. 95-1171
• Citation: 75 F.3d 1568,37 USPQ2d 1626
• Parties: AND TOOL COMPANY, INC., Plaintiff-Appellant, v. GREAT LAKES PLASTICS, INC., Defendant/Cross-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1568

75 F.3d 1568

37 U.S.P.Q.2d 1626

PRO-MOLD AND TOOL COMPANY, INC., Plaintiff-Appellant, v. GREAT LAKES PLASTICS, INC., Defendant/Cross-Appellant.

Nos. 95-1171, 95-1181.

United States Court of Appeals, Federal Circuit.

Feb. 7, 1996.

Appealed from: U.S. District Court for the Northern District of Ohio; Judge Katz.

Thomas F. Zych, Thompson, Hine & Flory, Cleveland, Ohio, argued for plaintiff-appellant. With him on the brief were Mark Levy and Brian J. O'Connell, Thompson, Hine & Flory, Dayton, Ohio, of counsel.

Marshall Bennett, Jr., Marshall & Mulhorn, Toledo, Ohio, argued for defendant/cross-appellant. With him on the brief was D. Edward Dolgorukov.

Before PLAGER, LOURIE, and RADER, Circuit Judges.

LOURIE, Circuit Judge.

Pro-Mold and Tool Company, Inc. appeals from the summary judgment of the United States District Court for the Northern District of Ohio holding U.S. Patent 5,224,600 invalid under 35 U.S.C. § 103 and dismissing its patent infringement claim. Great Lakes Plastics, Inc. cross-appeals from the district court's judgment dismissing its counterclaim for unfair competition. Pro-Mold and Tool Co. v. Great Lakes Plastics, Inc., No. 3:93 CV 7412 (N.D.Ohio Sept. 12, 1994). Because the district court erred in holding that there were no genuine issues of material fact regarding nonobviousness of the subject matter of the patent, we vacate the district court's judgment holding the patent invalid and remand.

Because the district court did not err in determining that there was a lack of evidence to support Great Lakes' counterclaim for unfair competition, we affirm the district court's judgment dismissing that counterclaim.

BACKGROUND

The patent in suit describes a card holder for storing baseball and other sports trading cards. The card holder consists of a base and cover. Figures 1 and 2 illustrate top and side sectional views, respectively, of the base, and Figure 3 illustrates a side view of the cover:

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

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The base 12 forms a frictional fit with the cover 14; it contains a lip 22 extending around surface 20, which forms a pocket 30 for receiving a card 18. The cover 14 contains a slightly smaller plate 44, which forms a side surface 52. The base 12 and cover 14 fit together such that the lip 22 frictionally engages the plate 44 along side surface 52. The lip 22 and side surface 52 are each slightly tapered to form the friction fit. Claim 1, the only independent claim, reads as follows 1. A card holder for displaying a card having a thickness and a face of a predetermined area, the card holder consisting essentially of:

a transparent rectangular base having a first perimeter and a lip extending along the first perimeter, said lip projecting approximately perpendicularly from and bounding a flat first surface, whereby said lip and said first surface form a rectangular pocket for receiving the card, the length and width of said lip being only slightly larger than the length and width of said card; and

a transparent rectangular cover having a second perimeter approximately equal to said first perimeter, said cover including a transparent rectangular plate centrally located therein, said plate having a thickness, a third perimeter less than said second perimeter and a flat rectangular second surface bounded by said third perimeter, said cover further having a peripheral surface bounded by said second and said third perimeters, whereby upon said base and said cover being assembled, said lip receives and frictionally engages said plate, and said lip contacts said peripheral surface of said cover thereby establishing a separation between said first and second surfaces slightly greater than the thickness of said card, the length and width of said cover being the same as the length and width of said base.

According to testimony in the record, the inventor, Edward J. Neugebauer, Sr., designed the patented card holder to be only slightly larger than a stored card. The idea for this sized card holder resulted from conversations that he had with his son, Edward Neugebauer, Jr., who was a sports card collector and was familiar with the sports card market and industry. Neugebauer, Jr. stored his cards in numerical order using a conventional set storage box. However, he stored his more valuable cards in individual card holders. These individual card holders did not fit in the set storage box, and Neugebauer, Jr. thus taped them to the top of the box in order to store the cards with their set. Seeing the individual card holders taped to the storage box prompted Neugebauer, Sr. to ask his son if there was a card holder on the market that fit in a storage box. His son replied that he did not think so. This led Neugebauer, Sr. to design a card holder that was only slightly larger than the stored card so that it would fit in a conventional set storage box. It could therefore be stored in the storage box with cards that were not in individual card holders, providing the advantage of allowing sports card collectors to keep their sets together in a set storage box. ¹

Great Lakes has made several different card holders since it was formed in 1991. One of these, the Mini Tite card holder, is a two-piece card holder with a friction fit cover; it is only slightly larger than a card. While it is not clear from the district court's opinion which Great Lakes product Pro-Mold believed infringed the patent, the district court assumed that the Mini Tite card holder was the accused infringing product; no one has disputed this assumption.

Pro-Mold sued Great Lakes for infringement of the patent. ² Great Lakes counterclaimed for unfair competition, alleging that Pro-Mold acted in bad faith by filing its lawsuit knowing that the patent was invalid because of inequitable conduct. On summary judgment, the district court held that: (1) the patent was invalid under 35 U.S.C. § 103 as having been obvious over the prior art Classic Line Thin card holder and Great Lakes Squeeze Tite card holder; and (2) there was insufficient evidence of bad faith by Pro-Mold in filing its patent infringement lawsuit because Pro-Mold and Neugebauer, Sr. did not engage in inequitable conduct in the procurement of the patent. Accordingly, the district court dismissed both Pro-Mold's patent infringement claim and Great Lakes' unfair competition counterclaim. Each party appeals from the dismissal of its claim.

DISCUSSION

Summary judgment is appropriate when there is no genuine issue as to any material

                fact and the moving party is entitled to judgment as a matter of law.   Fed.R.Civ.P. 56(c);  Johnston v. IVAC Corp., 885 F.2d 1574, 1576-77, 12 USPQ2d 1382, 1383 (Fed.Cir.1989).   Thus, summary judgment may be granted when no "reasonable jury could return a verdict for the nonmoving party."  Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986).   In determining whether there is a genuine issue of material fact, the evidence must be viewed in the light most favorable to the party opposing the motion, with doubts resolved in favor of the nonmovant.  Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1274, 35 USPQ2d 1035, 1038 (Fed.Cir.1995).   We review de novo a district court's grant of summary judgment.  Conroy v. Reebok Int'l, Ltd., 14 F.3d 1570, 1575, 29 USPQ2d 1373, 1377 (Fed.Cir.1994)
                

A. Obviousness

Pro-Mold argues that there was no suggestion to combine the prior art Squeeze Tite and Classic Line Thin card holders. Pro-Mold also contends that the district court erred by not considering evidence of secondary considerations in its obviousness analysis.

Great Lakes counters that the district court did not err in holding the claimed invention to have been obvious over the prior art card holders. Great Lakes argues that the district court considered the evidence of secondary considerations offered by Pro-Mold and that this evidence did not create genuine issues of material fact precluding summary judgment.

A determination of obviousness under 35 U.S.C. § 103 is a legal conclusion involving factual inquiries. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1050, 5 USPQ2d 1434, 1438 (Fed.Cir.), cert. denied, 488 U.S. 825, 109 S.Ct. 75, 102 L.Ed.2d 51 (1988). Among these factual inquiries are secondary considerations, which include evidence of factors tending to show nonobviousness, such as commercial success of the invention, satisfying a long-felt need, failure of others to find a solution to the problem at hand, and copying of the invention by others. Id.; Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1566, 1 USPQ2d 1593, 1595 (Fed.Cir.), cert. denied, 481 U.S. 1052, 107 S.Ct. 2187, 95 L.Ed.2d 843 (1987).

The district court held that there were no genuine issues of material fact pertaining to the obviousness of the invention. The district court determined that the content of the prior art included the Squeeze Tite card holder and Classic Line Thick and Thin card holders. The Squeeze Tite card holder is a two-piece card holder with a friction fit cover. It is larger than the card and thus provides a "frame" around a stored card. The Classic Line card holders are only slightly larger than the stored card and consist of a base and slide cover. The cover fits into the base by sliding into grooves in the "long" sides of the base. The Classic Line Thick card holder was designed to hold several cards, while the Classic Line thin card holder was designed to hold one card. The district court combined the size of the Classic Line Thin card holder with the friction fit cover of the Squeeze Tite card holder, and held this combination of features to have been obvious to a person of ordinary skill in the art of the design and manufacture of card holders. The district court, however, did not provide a basis for its discounting of Pro-Mold's evidence of secondary considerations.

We agree with the district court that the...