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

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The Case

  • Auld (Appellant), Chroma (Appellee) in Federal Court of Appeals
  • October 15, 1981, the D.L. Auld Company (Auld) sued Chroma Graphics Corp. (Chroma) in the Eastern District of Tennessee for infringement of Patent No. 4,100,010 (the Waugh patent)
  • Patent: a method of forming foil-backed inserts in the form of cast decorative emblems
    • The Vitrofoil method employs a flat sheet of metal as the base on which a metered amount of liquid plastic is deposited while the base is held horizontal. The plastic flows to the edge of the sheet without overflowing; its surface tension causing it to stop at the sheet's edge to form a curved upper surface
  • Chroma moved for summary judgment on the ground that the invention had been “on sale” for more than one year before June 12, 1974
    • Auld opposed motion but it was eventually granted
    • Summary judgments may not be issued if there is a dispute of facts (and thus a trial is necessary)
      • Moving party (Corona) is responsible for showing absence of material fact issues

The Ruling

  • Even the most indulgent reading of The D.L. Auld Company's business records [shows] that at least some sample products were made in the laboratory according to the Waugh patent and were offered for sale well outside of the statutorily protected year.
  • If Auld produced an emblem by the method of the invention and offered that emblem for sale before the critical date, the right to a patent on the method must be declared forfeited
  • In Auld’s deposition
    • claimed made emblems by hand according to method (1969-1972) to generate interest from customers, but they weren’t receptive
    • these were made with “laboratory method”, which differed enough from patent method
    • “the only asserted differences between the patented method and the “laboratory” method are the use of adhesive and holding the foil shapes flat” and even some of the samples were made with those two steps
  • Auld tried to show discrepancies in his deposition to get an issue of material fact, but no contradiction was found
  • That no sale was actually made to International Crest is irrelevant. An offer to sell is sufficient under the policy animating the statute, which proscribes not a sale, but a placing “on sale.”
  • Ruled
    • (1) that no genuine material issue of fact was present; (2) that the uncontradicted facts of record establish that the claimed method invention had been commercially exploited more than a year before the crucial date; (3) that no possibility of proving an experimental purpose was present (the method was not still in the works); and (4) that Patent No. 4,100,010 was, therefore, invalid within the intent of 35 U.S.C. § 102(b).