Schroeder v. Owens-Corning Fiberglas Corp.
| Decision Date | 15 April 1975 |
| Docket Number | OWENS-CORNING,No. 73-2796,73-2796 |
| Citation | 514 F.2d 901 |
| Parties | Clifford A. SCHROEDER, an Individual, et al., Plaintiffs-Appellants, v.FIBERGLAS CORPORATION, a corporation, Defendant-Appellee. |
| Court | U.S. Court of Appeals — Ninth Circuit |
Before CARTER, WRIGHT and GOODWIN, Circuit Judges.
In this action for infringement of patent No. 3,216,459 (hereinafter the '459 patent), the district judge entered summary judgment for the defendant, holding the patent invalid under 35 U.S.C. §§ 102(b) and 103. The judgment of invalidity was based on several grounds: obviousness in view of an earlier Edwards patent, No. 2,980,144, obviousness in view of a trade brochure of Flexible Tubing Corporation, and because of anticipation under both. On appeal by the holders of patent '459, we reverse.
The subject matter of the '459 patent is a flexible insulated duct for air conditioning and heating systems. Appellants Schroeder and Clark were the inventors. The patent was issued in November 1965 and certain patent rights were sold to Pittsburgh Plate Glass, Inc. (PPG), with the inventors retaining a limited license to manufacture and sell the product in California through their corporation, Glass Insulation Company (GIC). The two corporations join the inventors in this appeal.
Our key issue here is whether or not there is a genuine issue as to any material fact surrounding the dispute over patent '459, so as to render inappropriate the granting of summary judgment.
The appellee reminds us that we have affirmed summary judgments of dismissal in patent infringement suits, and they cite inter alia our decisions in Schwinn Bicycle Co. v. Goodyear Tire & Rubber Co., 444 F.2d 295 (9th Cir. 1970), and Ashcroft v. Paper Mate Mfg. Co., 434 F.2d 910 (9th Cir. 1970). The appellants would have us follow Northrop Architectural Systems v. Lupton Mfg. Co., 437 F.2d 889 (9th Cir. 1971).
In Schwinn, we considered the propriety of summary judgment in patent cases and stated:
It is true that summary judgment is seldom used in patent cases. This is largely a result of the technological problems which ordinarily arise in litigation involving a utility (as opposed to design) patent. In such cases, the trial court often needs the assistance of expert testimony to determine the nature of the patented device as well as the scope and content of the pertinent prior art.
The Schwinn case involved a patented bicycle seat and we and the district judge had before us illustrations, advertisements, and photographs which indicated unequivocally that no material factual issues were in controversy. Thereafter, we concluded that the summary judgment procedure was proper under the circumstances of that particular case.
Ashcroft was another patent case with no serious complexities. The suit was an action for damages for patent infringement related to the "piggy-back" ball point pen refill unit. A district court summary judgment held the patent invalid, inter alia, for obviousness. We affirmed, stating that:
There can be no dispute that the granting of a motion for summary judgment, which renders a patent claim invalid, is proper when "there is no genuine issue as to any material fact and . . . the moving party is entitled to judgment as a matter of law." Rule 56(c), F.R.Civ.P. The granting of such a motion is still proper even though there are some issues of fact presented in the affidavits or other evidence before the court, unless those issues are of material fact.
The simplicity of the patents involved, together with sufficiently harmonious presentations of the issues by counsel, brought both Schwinn and Ashcroft within the summary judgment standards. Such was not the case in Northrop. That appeal presented this court with almost the identical issue posed by this one. The suit involved the validity of some patent claims on closure doors employed in the construction of homes and apartments. By summary judgment the district court declared the claims invalid for obviousness.
On appeal, we set aside the summary judgment and held that substantial contrary assertions by expert witnesses related to the determination of whether or not the subject matter of a patent was obvious presented a material issue of fact precluding summary judgment We said At the outset, we are faced with the rule that a summary judgment is available only if there is no genuine issue of material fact involved. The question to be resolved on a motion for a summary judgment is whether there is sufficient evidence supporting the claimed factual dispute to require a judge or a jury to decide the truth of the different versions in a trial. First National Bank of Arizona v. Cities Service Co., 391 U.S. 253, 288-289, 88 S.Ct. 1575, 20 L.Ed.2d 569 (1968); McGuire v. Columbia Broadcasting Systems Inc., 399 F.2d 902, 905 (9th Cir. 1968); Industrial Building Materials, Inc. v. Interchemical Corp., 437 F.2d 1336 (9th Cir. Nov. 23, 1970).
Certain guidelines emerge from these three cases which assist in determining whether a patent infringement case is suitable for summary judgment disposition. As in Northrop, material issues of fact will often emerge from genuine conflicts in the testimony of experts. Another hurdle for the trial court will be the definition of various facets of the prior art against which the uniqueness of a patent must be gauged. Not many cases will survive these difficulties and material issues of fact will remain for ultimate disposition after trial. This appeal is not one of the exceptions.
Unlike the rudimentary composition and design technique of a ball point pen or...
To continue reading
Request your trial
-
Johnson & Johnson v. WL Gore & Assoc., Inc., Civ. A. No. 4334.
...56, 58 (9th Cir. 1966). See, also, Shanklin v. Springfield Photo Count Co., 521 F.2d 609 (1st Cir. 1975); Schroeder v. Owens-Corning Fiberglas Corp., 514 F.2d 901 (9th Cir. 1975); Universal Athletic Sales Co. v. American Gym, Recreational and Athletic Equipment Co., Inc., supra. Defendant a......
-
Dielectric Laboratories v. American Tech. Ceramics
...is asserted. Anticipation is a technical claim of invalidity, and must therefore meet strict standards. Schroeder v. Owens-Corning Fiberglas Corp., 514 F.2d 901, 904 (9th Cir. 1975). Anticipation occurs only when a single prior invention or publication contains every element of the claim in......
-
Famolare, Inc. v. Edison Bros. Stores, Inc.
...primarily on the basis that the question of obviousness is a poor candidate for summary judgment, citing Schroeder v. Owens-Corning Fiberglass Corporation, 514 F.2d 901 (9th Cir. 1975). The plaintiff also argues that its design patent is to be presumed valid under 35 U.S.C. § 282 and that d......
-
Saf-Gard Products, Inc. v. Service Parts, Inc.
...obvious. Graham v. John Deere Co., supra, 383 U.S. at 17-18, 86 S.Ct. at 693-94, 15 L.Ed.2d at 556-57; Schroeder v. Owens-Corning Fiberglas Corp., 514 F.2d 901, 904 (9th Cir. 1975); Hayes Spray Gun Co. v. E. C. Brown Co., supra, 291 F.2d at 322. The court found that the invention solved a s......