Therma-Tru Corp. v. Peachtree Doors Inc.

• Decision Date: 04 January 1995
• Docket Number: Nos. 92-1242,THERMA-TRU,92-1314,s. 92-1242
• Citation: 44 F.3d 988,33 USPQ2d 1274
• Parties: CORPORATION, Plaintiff-Appellant, v. PEACHTREE DOORS INC., Acme Sliding Door, Inc. d/b/a Edwards Wholesale, and Village Door, Defendants/Cross-Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

Page 988

44 F.3d 988

33 U.S.P.Q.2d 1274

THERMA-TRU CORPORATION, Plaintiff-Appellant, v. PEACHTREE DOORS INC., Acme Sliding Door, Inc. d/b/a Edwards

Wholesale, and Village Door, Defendants/Cross-Appellants.

Nos. 92-1242, 92-1314.

United States Court of Appeals, Federal Circuit.

Jan. 4, 1995.

Rehearing Denied; Suggestion for Rehearing In Banc Declined

April 14, 1995.

Ernie L. Brooks, Brooks & Kushman, Southfield, MI, argued, for plaintiff-appellant. With him on the brief, was Earl J. LaFontaine. Of counsel was Thomas A. Lewry.

Roland N. Smoot, Lyon & Lyon, Los Angeles, CA, argued, for defendants/cross-appellants. With him on the brief, were Michael R. Dinnin and Robert A. Dunn, Dinnin & Dunn, P.C., Troy, MI. Also on the brief, was John L. Taylor, Jr., Vincent, Chorey, Taylor & Feil, Atlanta, GA.

Before NEWMAN, MAYER, and PLAGER, Circuit Judges.

PAULINE NEWMAN, Circuit Judge.

Therma-Tru Corporation appeals from the judgment of the United States District Court for the Eastern District of Michigan, ¹ holding that Therma-Tru's United States Patent No. 4,550,540, invention of John Thorn, ("the '540 patent") is unenforceable due to inequitable conduct in the Patent and Trademark Office ("PTO"). Peachtree Doors, Acme Sliding Door, and Village Door (collectively "Peachtree") cross-appeal from the judgment that the '540 patent is not invalid, was infringed by Peachtree, and that the infringement was willful.

The judgment with respect to validity and infringement is affirmed. The holding of unenforceability is reversed, and the case is remanded for further proceedings.

BACKGROUND

The invention described in the '540 patent is a door having a glass fiber-reinforced plastic In accordance with the '540 patent, the surface of the door is shaped by compression-molding a sheet of glass fiber-reinforced plastic in a mold whose surface has been etched, in a simulated wood grain texture, to a predetermined depth between 0.003 and 0.009 inch. The etched pattern of the mold pushes the glass fibers below the surface of the plastic skin, thereby producing a glass fiber-reinforced door having a textured surface that is not subject to wicking when stained. The patent claims are directed to a product whose plastic surface is essentially devoid of glass fibers to a depth of at least 0.005 inch.

skin covering a wood frame with the internal spaces filled with insulating foam. Glass fiber-reinforced plastic doors had previously been made, but were not fully satisfactory substitutes for wood doors due to the presence of glass fibers at the surface of the plastic, whereby when the door was stained to simulate wood these surface fibers acted as wicks, drawing the stain below the surface and causing blemishes in the finish. Therma-Tru's patented construction remedied this disadvantage.

The Therma-Tru door achieved rapid commercial success. Peachtree arranged to have the same door manufactured for it by the same contractor employed by Therma-Tru using the same process. Therma-Tru charged Peachtree with willful patent infringement. Peachtree raised the defenses of patent invalidity on various grounds, non-infringement, and unenforceability due to inequitable conduct in the PTO.

The case was tried to a jury, except that the issue of inequitable conduct was decided by the judge on evidence that was presented at the trial. The jury returned special verdicts that Peachtree infringed claims 11 and 13 of the '540 patent, literally and under the doctrine of equivalents; that the '540 patent was not invalid; and that the infringement was willful. Concurrently, the trial judge held that the '540 patent was unenforceable due to inequitable conduct. On post-trial motions the court held that the jury's determinations were supported by substantial evidence, and would not be disturbed. This appeal and cross-appeal followed.

We review the jury verdicts to ascertain whether a reasonable jury, on the evidence adduced and on correct instructions as to the law, could have reached the verdict that was reached. Lemelson v. General Mills, Inc., 968 F.2d 1202, 1207, 23 USPQ2d 1284, 1288 (Fed.Cir.1992); Sun Studs Inc. v. ATA Equipment Leasing Inc., 872 F.2d 978, 982, 10 USPQ2d 1338, 1341 (Fed.Cir.1989); Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1571, 1 USPQ2d 1081, 1084-85 (Fed.Cir.1986).

We review the district court's determination of inequitable conduct on the abuse of discretion standard. The court's factual findings of material withholding, and intent to deceive or mislead the patent examiner, are reviewed for clear error. Kingsdown Medical Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 876, 9 USPQ2d 1384, 1392 (Fed.Cir.1988) (en banc ), cert. denied, 490 U.S. 1067, 109 S.Ct. 2068, 104 L.Ed.2d 633 (1989).

I

PATENT VALIDITY

Patent claim 11 is representative:

11. A door assembly comprising, in combination, a rectangular frame, a pair of opposed compression molded skins mounted on said frame, and a foamed core positioned within said frame between and adhered to said opposed compression molded skins, said skins each having an outer side and an inner side, a pair of vertically extending projections defined along each vertical edge of the inner side of each skin, said compression molded skins being integral,

including a molding resin and glass fibers, said outside of said skin being essentially devoid of glass fibers for a predetermined depth of at least 0.005 inch,

said outer side of said skin defining a textured pattern simulating the grain and texture of a wood door,

said textured pattern having a pattern depth between 0.003 inch and 0.009 inch, but not in excess of such predetermined depth.

A Obviousness

Peachtree states that the jury should have found the '540 patent invalid for obviousness. As evidence Peachtree relied on the prosecution history in the PTO, showing the initial rejection by the examiner of Thorn's patent application on grounds of obviousness in terms of 35 U.S.C. Sec. 103. In response to this rejection Thorn had submitted arguments, filed a continuation-in-part ("CIP") application, amended the claims to include the information that the plastic surface is devoid of glass fibers to a depth of at least 0.005 inch, and presented evidence of commercial success. The examiner then withdrew the rejection and issued the patent.

Peachtree argues that Thorn should have been required to demonstrate to the patent examiner that Therma-Tru's commercial doors contained no glass fibers within 0.005 inch of the surface, in order to have its arguments accepted and the patent granted. However, no such requirement was made by the examiner or is required as a matter of law. The burden of proving invalidity of an issued patent is on the challenger. Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1235, 9 USPQ2d 1913, 1919 (Fed.Cir.), cert. denied, 493 U.S. 853, 110 S.Ct. 154, 107 L.Ed.2d 112 (1989). This burden can not be shifted to the patentee by asserting that the patentee should have presented additional evidence in the patent office, or that the examiner should not have issued the patent on the record presented.

The jury was correctly instructed as to the law of obviousness, and that invalidity of an issued patent must be proved by clear and convincing evidence. We conclude, as did the district court, that there was substantial evidence to support the jury's verdict that invalidity on this ground had not been proved. See Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 618, 225 USPQ 634, 636 (Fed.Cir.), cert. dismissed, 474 U.S. 976, 106 S.Ct. 340, 88 L.Ed.2d 326 (1985).

B Public Use and On Sale

Peachtree argues that the patented invention was in public use or on sale more than one year before Thorn's patent application was filed, and thus is invalid in terms of 35 U.S.C. Sec. 102(b). The trade show event that Peachtree relies on occurred in January of 1983. The '540 patent issued from an application filed on March 29, 1984, which was a CIP of an application filed on January 7, 1983. If the claims of the CIP were entitled to the January 7, 1983 filing date, then the asserted bar could not arise. The jury was instructed to consider "the question of the filing date". In addition to testimony and argument, the jury was given the following written instruction:

The filing date of the patent is the first date an application was filed that reasonably conveys to those in the art that Thorn had possession of all of the subject matter of claims 11 and 13.

This was essentially as set forth in the parties' joint proposed jury instructions. Peachtree does not state that it objected to this instruction. Nor is the instruction an incorrect statement of law.

A claim in a CIP application is entitled to the filing date of the parent application when the claimed invention is described in the parent specification in a manner that satisfies, inter alia, the description requirement of 35 U.S.C. Sec. 112. See Kennecott Corp. v. Kyocera Int'l Inc., 835 F.2d 1419, 1421, 5 USPQ2d 1194, 1196-97 (Fed.Cir.1987), cert. denied, 486 U.S. 1008, 108 S.Ct. 1735, 100 L.Ed.2d 198 (1988). The evidence at trial was directed to the "at least 0.005 inch" depth of the fibers, which is the descriptive matter that was added in the CIP application. Witnesses for Therma-Tru testified that this described the product of the parent application, and that the product in the parent and the CIP were identical. The parent application stated that the textured pattern of the mold had a depth between 0.003 and 0.009 inch; witnesses testified that this depth of the mold pattern inherently and necessarily pushed the glass fibers at least 0.005 inch below the surface. Therma-Tru As discussed in Kennecott, the later explicit description of an inherent property does not deprive the product of the benefit of the filing date of the earlier application. 835 F.2d at 1423, 5 USPQ2d at 1197-98. Although Peachtree now argues that the standard for inherency was not...