North American Oil Co. v. Star Brite Distributing, Inc.
North American Oil Co. v. Star Brite Distributing, Inc.
Opinion of the Court
Star Brite Distributing, Inc. (“Star Brite”) appeals the judgment of the United States District Court for the Northern District of Georgia granting North American Oil Company, Inc.’s (“North American”) motion for partial summary judgment that U.S. Patent No. 5,250,598 (the “ ’598 patent”) is invalid for anticipation and obviousness and unenforceable for inequitable conduct. N. Am. Oil Co., Inc. v. Star Brite Distrib., Inc., 148 F.Supp.2d 1351 (N.D.Ga. 2001). North American cross-appeals the court’s grant of Star Brite’s motion for attorney’s fees. Id. Because the district court improperly granted North American’s motion for summary judgment of invalidity of the ’598 patent under 35 U.S.C. §§ 102 and 103, and erroneously determined that the ’598 patent was unenforceable for inequitable conduct, we vacate those portions of its judgment. However, because the district court did not abuse its discretion by excluding the expert opinions of Dr. Michael Rubner and Harry Manbeck, and imposing sanctions against North American, we affirm that part of the judgment. We affirm-in-part, vacate-in-part and remand.
1. The court erred in invalidating claim 1 of the ’598 patent as anticipated under section 102 without evaluating whether the alleged prior art satisfied all the limitations of the claim. The district court made no attempt to construe the claim limitations of independent claim 1 or dependent claims 2-9. It conducted a cursory analysis of the allegedly invalidating prior art and compared that analysis to the general concept of the ’598 patent. The court stated that “[t]he submitted pages discuss vinyl chloride-acetate copolymers like VYHH-1.... ” It further stated that “Payne [Henry Fleming Payne, Organic Coating Technology (1954) (“Payne”) ] also notes that a vinyl chloride-acetate copolymer is the one most widely used in coatings,” and that “the Payne work includes formulas that form a coating when air-
2. The district court’s judgment that the ’598 patent is obvious under section 103 is infirm for the same reasons as its invalidity determination under section 102. Additionally, when obviousness is based on multiple references, Payne, Union Carbide product brochures (describing the uses of vinyl resins and stabilizers), and MDR Liquid Lectric Tape and Whip-End Dip products, there must be a showing of some “teaching, suggestion, or reason” to combine the references. Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573, 1579, 42 USPQ2d 1378, 1383 (Fed.Cir. 1997). Neither the district court nor North American point to any suggestion in the Payne reference or any of the other cited art to combine the various elements to render the ’598 patent obvious. Furthermore, there is no suggestion that one of ordinary skill in the art would know to combine these references. The court does not address the problem faced by Peter Dornau, Robert Russo, and Jeffrey Tieger (inventors of the ’598 patent) or why a “skilled artisan, confronted with the same problems as the inventor and with no knowledge of the claimed invention, would select the elements from the cited prior art references for combination in the manner claimed.” In re Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1456 (Fed.Cir. 1998). There is a genuine issue of material fact on this issue, Ecolochem, Inc. v. Southern Cal. Edison Co., 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1076 (Fed.Cir. 2000), and we must vacate the summary judgment and remand for further proceedings.
3. Inequitable conduct results from the withholding of material information from the patent examiner or the submission of false material information, with the intent to deceive or mislead the examiner into granting a patent. Both materiality and intent to deceive must be proven by clear and convincing evidence. Upjohn Co. v. MOVA Pharm. Corp., 225 F.3d 1306, 1312, 56 USPQ2d 1286, 1291 (Fed. Cir. 2000). While proffering subjective statements, North American has not cited any objective evidence that the applicant or his attorney intended to deceive the
4. The district court refused to allow Rubner’s testimony in opposition to North American’s motion for summary judgment because Star Brite failed to show that he had special expertise or knowledge different from the previously engaged expert. With respect to Man-beck, the court found that Star Brite identified him as a possible expert in January of 2000, but provided no expert report until July 12, 2000, nine days before the close of discovery. The court reasoned that North American was left with insufficient time to review the submitted report, depose the witness, and seek rebuttal testimony before the close of discovery on July 21, 2000, as allowed by L.R. N.D. Ga. 26.2. It also determined that Star Brite could not justify the untimely submission of Manbeck’s expert report as required by L.R. N.D. Ga. 26.2. We see no abuse of discretion in the district court’s exclusion of Rubner’s expert opinion as cumulative and Manbeck’s as untimely. See Port Terminal & Warehousing Co. v. John S. James Co., 695 F.2d 1328, 1335 (11th Cir. 1983).
5. Based on our review of the record, we conclude that the district court did not abuse its discretion in sanctioning North American, by awarding Star Brite its expenses in prosecuting its motion to strike, pursuant to the court’s inherent power. See Thomas v. Tenneco Packaging Co., 293 F.3d 1306, 1319 (11th Cir. 2002).
Reference
- Full Case Name
- NORTH AMERICAN OIL COMPANY, INC., Plaintiff-Cross v. STAR BRITE DISTRIBUTING, INC.
- Cited By
- 1 case
- Status
- Published