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July 26, 1993



The opinion of the court was delivered by: WILLIAM B. ENRIGHT


 This is an action for infringement for U.S. Patent No. 4,937,989 (the '989 patent) claiming a mobile home support that elevates and ties together "trailer-like" sections of mobile homes. The suit is brought by plaintiffs Sure Safe Industries, Inc. ("Sure Safe") and Intertrack Management, Inc. ("Intertrack") against defendants C&R Pier Mfg. ("C&R"), Richard Clifton and Chuck Giles.

 The '989 patent claims a combination of three assemblies: 1) a pair of piers; 2) a two-part clamp to engage an I-beam (the "marriage lock"; and 3) a tie-rod assembly for connecting piers. The '989 patent does not contain claims for any single sub-assembly by itself. Only a product comprised of all three sub-assemblies arranged as set out in the claims infringes.

 On April 28, 1993, this court granted summary judgment in favor of defendants on non-infringement grounds. At that time, the court found that the defendants' motion for summary judgment based on invalidity was moot in light of its decision to grant summary judgment on non-infringement grounds.

 However, defendants have subsequently requested this court to rule on the invalidity issue. They have convincingly argued that the invalidity issue is relevant to defendants' counterclaims in this case. Additionally, defendants have drawn this court's attention to a recent Supreme Court case which indicates the Court's preference that district courts rule on both the infringement and invalidity issues, even when non-infringement is found. See Cardinal Chemical Co. v. Morton International, Inc., 93 D.A.R. 6165 (5/18/93). In light of this recent Supreme Court case and upon further consideration, this court has decided to render a ruling on defendants' motion for summary judgment based on invalidity. For the following reasons, the court denies defendants' motion for summary judgment on invalidity.


 Federal Rule of Civil Procedure 56(c) mandates the entry of summary judgment against a party which "fails to make a showing sufficient to establish the existence of an element essential to that party's case and on which that party will bear the burden of proof at trial." Celotex Corp. v. Catrett, 477 U.S. 317, 322, 91 L. Ed. 2d 265, 106 S. Ct. 2548 (1986). The party moving for summary judgment bears the burden of proving that there is no genuine issue of material fact and that judgment may be entered as a matter of law. Richards v. Neilsen Freight Lines, 810 F.2d 898, 902 (9th Cir. 1987). "[A] party opposing a properly supported motion for summary judgment . . . 'must set forth specific facts showing that there is a genuine issue for trial."' Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986) (citing Fed. R. Civ. P. 56(e)) (footnotes omitted). The evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn in his favor. Id. at 255.


 Plaintiffs argue that the patent is invalid because: 1) it fails to comply with the best mode requirement on 35 U.S.C. § 112; and 2) the inventor, Clayton Chong, failed to read the application before it was filed in the Patent Office and executed a false oath to the contrary.

 A. Best Mode

 Defendants argue that summary judgment should be granted because the inventor failed to disclose the best mode for practicing his invention at the time of the patent.

 35 U.S.C. § 112 requires that the "specification shall set forth the best mode contemplated by the inventor carrying out his invention." A patent that fails to meet this statutory requirement is invalid. See Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1537 (Fed. Cir. 1987). The failure to disclose the best mode for practicing an invention can result in summary judgment against the patentee. See Acme Resin Corp. v. Ashland Oil, Inc., 20 U.S.P.Q. 2d 1305 (S.D. Ohio 1991). Pursuant to 35 U.S.C. § 282, defendants have the burden of proving by clear and convincing evidence that the inventors of the '989 patent failed to disclose what they contemplated to be the best mode for carrying out their invention. This burden includes the burden of overcoming the presumption of patent validity. See Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1022 (Fed. Cir. 1985).

 Best mode is a question of fact. DeGeorge v. Bernier, 768 F.2d 1318, 1324 (Fed. Cir. 1985). There is no objective standard by which to judge the adequacy of a best mode disclosure. Id. The court must determine whether the quality of an applicant's best mode disclosure is so poor as to effectively result in concealment. Id. In doing so, the court should consider evidence of accidental and intentional concealment. Id. The purpose of the best mode requirement "is to restrain inventors from applying for patents ...

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