Robert L. Jones and Labrado, Inc. v. Alex Hardy

727 F.2d 1524, 220 U.S.P.Q. (BNA) 1021, 1984 U.S. App. LEXIS 14842
CourtCourt of Appeals for the Federal Circuit
DecidedFebruary 8, 1984
DocketAppeal 83-900
StatusPublished
Cited by129 cases

This text of 727 F.2d 1524 (Robert L. Jones and Labrado, Inc. v. Alex Hardy) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Robert L. Jones and Labrado, Inc. v. Alex Hardy, 727 F.2d 1524, 220 U.S.P.Q. (BNA) 1021, 1984 U.S. App. LEXIS 14842 (Fed. Cir. 1984).

Opinions

MARKEY, Chief Judge.

Appeal from a judgment of the United States District Court for the Central District of California holding the patents in suit invalid and dismissing pendant unfair competition claims. We reverse and remand.

Background

In construction, some concrete walls have been cast in a horizontal containing form. A polystyrene plastic sheet with a design carved or cut into it, was laid in the form with the design uppermost. Concrete was poured into the form, and after it hardened, the wall was tilted upright and the sheet was removed, leaving a decorated concrete wall surface. The sheet tended to adhere to the wall. Its removal was done in pieces and presented methodology and time-consumption problems.

Robert L. Jones (Jones), in 1963 molded a design in a polystyrene sheet. After concrete poured on the molded sheet had cured, the sheet could be air blown off in one piece. He applied for and obtained U.S. Patents 3,515,779 (’779 patent) entitled “Mold and Method for Casting Concrete Panels”, and 3,702,180 (’180 patent) entitled “Mold for Casting Concrete Panels”. The ’779 patent issued in 1970 and contains six product and four method claims. The T80 patent resulted from a continuation application. It issued in 1972 and contains six product claims. Jones granted a license under his patents to Labrado, Inc. (Labrado).

Independent product claim 1 of the ’779 patent recites the combination of an outer frame structure of the containing form and a molded plastic sheet (a “mold”) having a “molded intaglio pattern” of artistic relief, and a very limited but flex resistant thickness (from 0.005 to 0.2 times its length, i.e., a “thin face” mold). Claims 2-6 are dependent on claim 1 and add various details of the mold.

Independent method claim 7 recites the steps of forming a thin-face mold by molding a plastic foam against an artistic pattern, positioning the mold in a form, pouring concrete into the form, permitting the concrete to cure, and separating the form and mold from the concrete wall. Dependent claim 8 requires that the plastic be of cellular, expandable polystyrene beads of limited sizes. Dependent claim 9 adds the step of selecting the bead size of the polystyrene beads to control the texture of artistic relief in the concrete wall. Dependent claim 10 recites the added step of vibrating the concrete.

Independent product claim 1 of the T80 patent recites a thin-face plastic foam mold with an intaglio pattern of relief “molded therein”. Dependent claims 2-6 add details of the mold.

The claims of the patents appear in the appendix to this opinion.

On August 23, 1974, Jones and Labrado sued Alexander Hardy and Vefo, Inc. (Hardy) for infringement and unfair trade practices. Hardy admitted infringement and defended on the ground that the patents were invalid.

On March 3, 1976, the district court granted Hardy’s motion for summary judgment, holding the asserted claims (1-3, 5-8, and 10 of the ’779 patent, and 1-4 and 6 of the 180 patent) invalid for anticipation. The court dismissed the pendant claims for unfair trade practices.

The Court of Appeals reversed in Jones v. Vefo, 609 F.2d 409, 204 USPQ 535 (9th [1527]*1527Cir.1979) and remanded for trial on the issue of whether the claims were invalid for obviousness.

After a two-day trial, the district court filed an opinion on November 24, 1981, in which the patents were viewed as invalid because Jones claimed “an inherent quality of a product long in use”. The opinion said the pendant claims were dismissed. Though the opinion stated that “attorneys for defendant shall prepare findings of fact, conclusions of law, and judgment appropriate to this opinion”, the record before us confirms that neither that nor anything else was done for over 15 months following the trial. Judgment was entered on March 9, 1983, “in accordance with” the November 1981 opinion. The judgment stated that the “patent” [sic] was invalid, that the pendant claims were dismissed, and that each party would pay its own costs and attorneys fees.

Issue

Whether the district court erred in holding the patents in suit invalid.

OPINION

Review of the opinion on which judgment was expressly founded establishes that the judgment was premised on legal errors, including: (1) nonconsideration of the invention as claimed; (2) disregard of the presumption of validity and burden of proof established by 35 U.S.C. § 282; (3) absence of the factual findings on the four inquiries mandated by Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 693-694, 15 L.Ed.2d 545, 148 USPQ 459, 467 (1965); (4) application of an improper test under 35 U.S.C. § 103; and (5) nonconsideration of objective indicia of nonobviousness.1 A judgment based solely on such fundamental legal errors cannot stand.

Nor has Hardy shown on appeal any basis on which the foregoing errors may be disregarded as harmless. Indeed, Hardy filed in this court a brief consisting of a single page.2 On that page, Hardy misstates the issues as whether “strippability” of molded and cut foam is a matter of “degree”, whether molded is “more economical” than cut foam, and “how obvious” it was “at the time the patent was granted” to “use foam” to form patterned concrete. With no record or authority citations, and no reference to specific prior art disclosures, Hardy says Jones relies only on “strippability” as “justifying the validity of his patents”, that a reading of Hardy’s cross-examination of two witnesses will divulge the inadequacy of that reliance, that there is “nothing unusual or not inherent in a process with a long history of prior art”, and that Jones’ witnesses upon cross-examination supported Hardy. Hardy’s appendix reflects that cross-examination, which is devoted to irrelevant considerations, such as whether the claimed inventions are useful with every type of design, whether release agents have been used, and the economics of some installations, most of which was properly disregarded in the district court’s opinion.

1. Claimed Invention

The invention cannot be tested on the basis of whether the “idea” of using molded [1528]*1528polystrene foam is patentable. Under the patent statute, Title 35 U.S.C., “ideas” are not patentable; claimed structures and methods are. Reducing a claimed invention to an “idea”, and then determining patentability of that “idea” is error. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303, 308-09 (Fed.Cir.1983). Analysis properly begins with the claims, for they measure and define the invention. Aro Manufacturing Co. v. Convertible Top Replacement Co., 365 U.S. 336, 339, 81 S.Ct. 599, 600-601, 5 L.Ed.2d 592 (1961). Further, each claim must be considered as defining a separate invention. 35 U.S.C.

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727 F.2d 1524, 220 U.S.P.Q. (BNA) 1021, 1984 U.S. App. LEXIS 14842, Counsel Stack Legal Research, https://law.counselstack.com/opinion/robert-l-jones-and-labrado-inc-v-alex-hardy-cafc-1984.