Dispute arises in the Court of Appeals, Federal Circuit, from an appeal based on the claim construction in a patent for a gas cap latching device and subsequent patent infringement suit against Ford M Cases of Interest >  IP >  Patent >  Obviousness

Cooper v. Ford Motor Company

Cooper v. Ford Motor Company

Cooper v. Ford Motor Co., 748 F.2d 677 (Fed. Cir. 1984).

Decided November 23, 1984

This dispute arises in the Federal Circuit Court of Appeals from the claim construction in a patent for a gas cap latching device brought patent infringement against Ford Motor Company. The U.S. District Court for the Northern District of California previously granted summary judgment in favor of Ford on the grounds of obviousness. The Plaintiff appealed, and the appellate court found that the only issue before it was that of obviousness.

The invention in question (U.S. Patent No. 3,784,047) was designed to prevent mislatching of the cap of an automobile gas tank by preventing the cap from being rotated unless it is properly seated. Cooper alleged that Ford had infringed his patent by selling new and replacement gas caps whose design fell within the scope of his claims.

In spite of an apparent disagreement as to the interpretation of prior patents the court lower found that Cooper's invention “is obvious as a matter of law” under 35 U.S.C. § 103 and granted summary judgment in favor of Ford. In his appeal Cooper argues that the summary judgment was improper because a dispute existed over the teachings of the prior art. Recognizing that patent infringement suits often give rise to numerous and complex fact making summary judgment inappropriate the Court granted Cooper’s appeal.

To determine the worthiness of Cooper’s claim on appeal the Appellate Court applied the Graham factors for obviousness: (1) the scope and content of the prior art, (2) differences between the prior art and the claims at issue, and (3) the level of ordinary skill in the pertinent art. Other relevant factual considerations include commercial success, long-felt but unsolved need, and failure of others. Graham v. John Deere Co., 383 U.S. at 17-18 (1966).

Ford introduced prior patents directed to bayonet-type closures for use on tanks for the teachings they contained. The Greenberg patent (No. 2,224,385) showed the specific latching means used in the Cooper patent. However, Cooper argued that the Greenberg cap was designed as a permanent closure device, and that once installed it could not be removed. Ford then claimed fraud on the part of Cooper by his failing to disclose the O'Neal patent (No. 2,531,860), another prior art reference, to the PTO upon his application. Cooper argued that O'Neal's invention was different, complicated, and commercially impracticable. Ford even attempted to argue that its cap was “substantially identical to that shown in the Swiss patent No. 109,104” and therefore does not infringe the Cooper patent. The basics argument was that since Ford is infringing this Swiss patent they could not be infringing on Cooper’s patent. However, Ford's memorandum only discussed the Swiss patent regarding non-infringement, not invalidity or obviousness.

Ford also contends that the invention described in the Swiss patent, a threaded cap that may be removed even if it rusts, renders Cooper’s invention obvious. However, the Court found that the problem solved by the Swiss invention was corrosion not mislatching like the Cooper patent. Ford also puts forth the theory that the Swiss cap could be modified in an obvious way to produce a cap substantially similar to Cooper’s. To this the Court states that “mere fact that prior art device could have been modified does not make modification obvious unless prior art suggested desirability of modification.” Further, it rejects the lower court’s theory that experimentation should have been performed on the Swiss cap to determine similarities to Appellant’s cap.

The Appeals Court, upon review of the above arguments in light of the Graham factors, found that genuine issues of material fact existed in the prior art which the Graham factors were applied to. In fact the only undisputed fact the Court found was that both parties agreed that prior art patents did exist. The Court rendered its decision based on the fact that Cooper argued that the structure of the Greenberg invention differed from his, and Ford disputed this view. This decision was made necessary by the Court’s finding that the descriptions of the two inventions were insufficient to determine whether the devices actually differed in a legally substantial way. It reasoned that Ford's interpretation was not the only reasonable interpretation that could be made, thus negating a summary ruling. The Court goes so much further as to say that Cooper’s claims have merit, though it is possible they are not correct. However, genuine issues of material fact do exist.

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