D.L. Auld Co. v. Chroma Graphics Corp. (901422128)

Read for 2/21/11

Reading Notes

• Decided in 1983 by the CAFC
• Auld sued Chroma for infringement of a method of forming foil-backed inserts in the form of case decorative emblems
  • Chroma moved for summary judgment on grounds that the invention had been "on sale" for more than one year
• Indications of intent to sell precludes the possibility that the efforts were merely experimental
  • Sales reps, not R&D
• Quoted pricing and delivery dates in writing for a potential order through International Crest
• CAFC Determined that no material conflicts were present to require a trial to resolve
• Auld is arguing that the offers fall within the "experimental" exception to the on sale rule because they were made by a laboratory method
  • Raise the material issue of whether the method had been reduced to practice as the sample emblems were not made in series and had to be postformed
  • Lab method raises no material fact issue
• Auld is misdirected with the above attempt
  • Labeling the samples as lab samples is irrelevant because the patent is for the method and the record shows the method was clearly performed
• Doesn't matter that no sale was made
• The magistrate did overlook a request for an oral hearing which should be provided when requested
  • Auld argues that this should overturn the case because he did not adhere to law and because they had the burden of trying to change his mind
  • False - CAFC affirms the ruling of the District Court

Trail procedure

• Issues of formality
  • Whether issues of material fact were present, rendering issuance of summary judgment improper
  • Whether absence of an oral hearing before issuance of the original order rendered that order invalid
• Summary judgment cannot be issued when material issues of fact requiring trial to resolve are present
• In order to avoid summary judgement, a patentee must submit facts indicating an ability to produce evidence that a proof of experimentation is possible
• Absence of pre-judgment hearing cannot justify a remand

Statutory Bars

• If the product of a method is sold the method must be declared forfeited - citing Metallizing Engineering
• If one inventor sells the products but does not disclose the method, another may still apply for patent
• An offer to sell is sufficeient under 102b ("on sale")