Stein Associates, Inc. v. Heat and Control, Inc.
| Decision Date | 16 November 1984 |
| Docket Number | No. 84-954,84-954 |
| Citation | 748 F.2d 653,223 USPQ 1277 |
| Parties | STEIN ASSOCIATES, INC., Appellant, v. HEAT AND CONTROL, INC., Appellee. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
Richard J. Egan, Baldwin, Egan, Walling & Fetzer, Cleveland, Ohio, argued for appellant. With him on the brief were Leslie W. Jacobs and James B. Niehaus, Thompson, Hine & Flory, Cleveland, Ohio.
Donald N. MacIntosh, Flehr, Hohbach, Test, Albritton & Herbert, San Francisco, Cal., argued for appellee. With him on the brief was Elmer S. Albritton and Debra E. Dahl, San Francisco, Cal.
Before MARKEY, Chief Judge, and KASHIWA and NEWMAN, Circuit Judges.
Appeal from an order of the United States District Court for the Northern District of California (district court) denying Stein Associates' (Stein's) motion for preliminary injunction. We affirm.
In 1982, Heat and Control, Inc., (H & C) became aware that Stein was offering to sell its Counterflow Oven (CFO) to a British company, G.W. Padley Poultry Ltd. (Padley) and had installed a pilot CFO at Padley's factory in Lincolnshire, Great Britain. H & C was advised by its British patent counsel that the pilot oven infringed H & C's two British patents. Accordingly, a writ of infringement was issued against Padley on March 31, 1983. When Padley did not then actually purchase the CFO oven from Stein, the writ of infringement was withdrawn.
Having learned that Stein was selling its CFO oven through a British distributor, RHM Ingredient Supplies Ltd. (RHM), and believing that Stein and RHM intended to continue that activity in Great Britain, H & C initiated court proceedings against Stein and RHM on August 5, 1983 for infringement of H & C's two British patents.
In the interim, on July 6, 1983, Stein filed an action in Toledo, Ohio, for a declaratory judgment that H & C's U.S. patents are invalid and not infringed, that H & C unfairly competed with Stein, and that H & C violated Sections 1 and 2 of the Sherman Anti-trust Act. H & C counterclaimed for infringement of its United States patents.
H & C's United States patents relate to apparatus and method for cooking solid food products in a continuously circulating steam laden atmosphere. The patents, one for the apparatus and one for the method, resulted from a parent application filed in the Patent and Trademark Office (PTO) on February 2, 1973. H & C filed a British application on May 9, 1973, claiming priority in view of the United States parent application under Article 4 of the Paris Convention.
On September 12, 1983, H & C moved to transfer the Toledo action to San Francisco, California. Stein reacted by moving in the Ohio district court for summary judgment that H & C's United States patents are invalid under 35 U.S.C. Sec. 102(b), because of an alleged offer to sell more than one year before the filing date of H & C's parent application, and for an order enjoining H & C's enforcement of its British patents against Stein and RHM. Stein filed an affidavit of Richard Egan (one of Stein's attorneys) and an affidavit of Arthur Nilsen, a retired H & C employee.
On November 8, 1983, the Ohio district court granted H & C's motion to transfer, leaving the decision on Stein's motions to the district court in California. Stein's appeal of that action to this court (Appeal No. 84-654) was dismissed on December 21, 1983. Stein then noticed its motions for Stein's affidavits said that the oven and process originally claimed in the parent application were reduced to practice on September 16, 1971, when H & C tested an experimental oven for Kraft Foods, a potential customer, and that that oven was offered for sale to Kraft on January 2, 1972, more than one year before the February 2, 1973 filing date of the parent application.
hearing relying on the same record (the Egan and Nilsen affidavits).
H & C relied on testimony of inventors Andrew Caridis and Clark Benson, and of Nilsen, given at depositions on October 9, 10 and 11, 1983. That testimony was that the oven tested for Kraft Foods on September 16, 1971 was not that defined in the claims of the issued patents, and that the inventions claimed in the patents were not actually reduced to practice until after the critical date of February 2, 1972.
Specifically referring to the patent claims, Caridis, Benson, and Nilsen testified that the experimental oven tested on September 16, 1971 did not have means for excluding outside air from the cooking chamber and did not have means for measuring and regulating the moisture content of the circulating process vapor.
At a March 2, 1984 hearing, the district court denied Stein's motion for partial summary judgment because Stein failed to establish that there had been an invalidating offer for sale and because issues of material fact were present. The court denied Stein's motion to preliminarily enjoin H & C's effort to enforce its British patents in Great Britain.
Did the district court abuse its discretion in denying a preliminary injunction?
OPINIONThe denial of Stein's motion for partial summary judgment is not appealable, Switzerland and Cheese Ass'n v. E. Horne's Market, Inc., 385 U.S. 23, 87 S.Ct. 193, 17 L.Ed.2d 23 (1966), and has not been appealed. That motion, however, serves as Stein's intended basis for its appeal from denial of its motion for an injunction.
Stein set forth to establish by way of summary judgment that H & C's United States patents are invalid under Sec. 102(b), in the mistaken belief that H & C's British patents would thereupon lose their priority dates under the Paris Convention. Stein argues that without those priority dates the British patents are invalid under British law and that the district court should enjoin enforcement of those "invalid" British patents. Stein thus proceeded on a theory founded in twisted logic.
Stein employed the novel technique of attempting to show that H & C's United States patents are "void ab initio" by applying two of the thirteen claims in the parent application as originally filed to the oven allegedly on sale before the critical date. Those two claims, however, were amended during prosecution and are not found in the issued patents. Absent inequitable conduct in prosecution of the application, a patent is invalid under Sec. 102(b) only if every element in every claim in the issued patent reads on the device offered for sale. 35 U.S.C. Sec. 102(b); Barmag Barmer Maschinenfabrik AG v. Murata Mach., Ltd., 731 F.2d 831, 838, 221 USPQ 561, 566 (Fed.Cir.1984); A.B. Dick Co. v. Burroughs Corp., 713 F.2d 700, 702-703, 218 USPQ 965, 967 (Fed.Cir.1983), cert. denied, --- U.S. ----, 104 S.Ct. 707, 79 L.Ed.2d 171 (1984). Stein cites only In re Theis, 610 F.2d 786, 204 USPQ 188 (CCPA 1979). That case was an ex parte appeal from a PTO rejection, and did not involve the validity of an issued patent.
Just as a patentee cannot prevail by proving infringement of claims originally filed but not in its patent, a patent challenger cannot prevail by proving invalidity of those claims. Thomas & Betts Corp. v. Litton Systems, Inc., 720 F.2d 1572, 1579-80, 220 USPQ 1, 6 (Fed.Cir.1983).
Stein's purpose in attempting to show that the oven set forth in originally filed claims had been on sale was to create a basis for showing that H & C's parent application was not a "regular national filing" under Article 4 of the Paris Convention, and that H & C could not therefore claim for its British patents the benefit of the filing date of its parent application in the PTO. Whether H & C may claim that benefit is a matter for determination by the British court before which the claim is asserted. To forestall efforts similar to Stein's, however, the flaw in its approach to the Paris Convention should be made clear.
Stein's attempt to convince this court that once a United States patent falls, all corresponding foreign patents lose their priority dates is totally without merit and is expressly refuted by the Paris Convention itself. Article 4 bis of the Paris Convention provides:
(1) Patents applied for in the various countries of the Union by nationals of countries of the Union shall be independent of patents obtained for the same invention in other countries, whether members of the Union or not.
(2) The foregoing provision is to be understood in an unrestricted sense, in particular, in the sense that patents applied for in the period of priority are independent, both as regards the grounds for nullity and forfeiture, and as regards their normal duration.
Article 4(A)(3) of the Paris Convention defines a "regular national filing":
(3) By a...
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