Before Rich, Plager, and Rader, Circuit Judges.
The opinion of the court was delivered by: Per Curiam.
NOTE: Pursuant to Fed. Cir. R. 47.6, this Disposition is not citable as precedent. It is a public record. The Disposition will appear in tables published periodically.
Sash Controls, Incorporated (Sash) appeals from a judgment of the United States District Court for the Eastern District of Michigan on cross motions for summary judgment holding that Sash was estopped from contesting invalidity of its United States Design Patent No. 340,398 ('398 patent) as a result of a terminal disclaimer filed during prosecution of the '398 patent and Sash's position during the litigation that the '398 and its earlier issued U.S. Design Patent No. 320,334 ('334) were the same invention. The district court's judgment also held Sash's '398 patent invalid under 35 U.S.C. § 103. Talon, L.L.C., Allen- Stevens Corporation, Reflectolite Products Company, Inc., and Stern & Company, Inc. (collectively "Talon") cross-appeal from the district court's denial of Talon's motion for summary judgment of unenforceability of the '398 patent because of inequitable conduct. We vacate the district court's decision that the '398 patent is invalid as obvious and remand to the district court for admission and consideration of the secondary considerations of nonobviousness. We affirm the district court's denial of summary judgment of unenforceability of the '398 patent for inequitable conduct.
This case involves two design patents for sliding glass door handles involving a handle connected by risers to an escutcheon plate, which in turn attaches the handle to the door. Joseph Clancy (Clancy) filed a design patent application on July 27, 1989, embodying his Curio handle design. The '334 patent issued to plaintiff, Sash, as assignee. Figure 1 of the '334 patent is shown below. The Curio handle embodied in the design below was "on sale" for purposes of § 102(b) on September 29, 1989.
More than one year after the Curio design was "on sale," Clancy filed a second design patent application on April 1, 1991 embodying his Legacy design for door handles. The examiner, who was unaware of the sales of the Curio handle design, rejected the claimed Legacy design under obviousness-type double patenting in light of the '334 patent and two other designs. *fn1 The examiner reasoned that "it would have been obvious to modify the ends of the escutcheon of [Clancy's] prior patent ['334] by rounding and then beveling these ends as demonstrated by the Baldwin escutcheon and Butts, respectively." Clancy filed a terminal disclaimer to obviate the rejection, and the design patent on the Legacy handle issued as Des. 340,398 ('398 patent) to Sash as assignee. Figure 1 from the '398 design patent is shown below.
Sash filed suit against Talon for willful infringement of its two design patents. On cross motions for summary judgment, the district court made the following rulings in open court.
[In the] present case, the Court finds that this means that [Sash] is estopped from claiming the '398 design is not obvious in light of the Curio handle, unless it can show the terminal disclaimer on patent '334 was filed for some reason unconnected to the patent examiner's determination that the '398 design was obvious in light of [Sash's] '334 patent.
Attorney Don Wood, representing the plaintiff before the patent examiner, presented an affidavit from Mr. Wood. However, it says nothing about [Sash's] reason for filing the terminal disclaimer. . . .
The parties have provided the Court with copies of most of the patent file and there's no indication in that file that [Sash] ever refuted [the] examiner's finding of obviousness.
Moreover, [Sash's] counsel in the present matter indicated [Sash] agreed the two patents represent essentially the same designs [when it argued that Talon's 2995 handle infringed the '334 patent.]
The Court believes [Sash] has failed to rebut the presumption; that it agreed with the patent examiner that the design '398 was obvious in light of patent '334. . . .
Therefore, the Curio handle must serve as prior art, given that it was on sale more than one year before the application for patent '398, and plaintiff is estopped from arguing that '398 is not obvious in light of the Curio handle, which is the commercial ...