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Keywords

precedentburden of proofpatent

appealsummary judgmentpatent

Related Cases

Met-Coil Systems Corp. v. Korners Unlimited, Inc., 803 F.2d 684, 231 U.S.P.Q. 474

Facts

Met-Coil Systems Corp. owns U.S. Patent No. 4,466,641, which covers an apparatus and method for connecting metal ducts used in heating and air conditioning systems. Met-Coil sells roll-forming machines that its customers use to create integral flanges necessary for practicing the claimed inventions. Korners Unlimited, Inc. produces corner pieces for use with these flanges and was sued by Met-Coil for allegedly inducing infringement of its patent claims. Korners argued that Met-Coil's sale of the machines granted an implied license to its customers, which would preclude any infringement.

Met-Coil makes and sells roll-forming machines that its customers use to bend integral flanges in the ends of metal ducts so as to practice the claimed inventions.

Issue

Whether a patent owner's unrestricted sale of a machine useful only in practicing the claimed inventions presumptively carries with it an implied license under the patent.

The determinative issue in this appeal is whether a patent owner's unrestricted sale of a machine useful only in practicing the claimed inventions presumptively carries with it an implied license under the patent.

Rule

The sale of a patented article that is capable of use only in practicing the patent is considered a relinquishment of the patent monopoly concerning that article, thereby granting an implied license to the purchaser. The existence of an implied license is a question of law, and the burden of proof lies with the alleged infringer to establish that such a license exists.

The existence of an implied license to practice inventions claimed in a patent is a question of law.

Analysis

The court analyzed the facts surrounding the sale of Met-Coil's machines, noting that they had no noninfringing uses and were essential for practicing the patented inventions. The court referenced the precedent set in Univis Lens Co., which established that the sale of an article that embodies essential features of a patented invention implies a license to use that invention. The court found that Korners met its burden of proof by demonstrating that Met-Coil's unrestricted sales implied a license for its customers.

A patent owner's unrestricted sales of a machine useful only in performing the claimed process and producing the claimed product 'plainly indicate that the grant of a license should be inferred.' Korners established a prima facie case, thereby shifting the burden of going forward to Met-Coil.

Conclusion

The court affirmed the district court's ruling that Met-Coil's customers enjoyed an implied license to practice the inventions claimed in the patent, leading to a judgment of noninfringement.

Therefore, Korners was entitled to summary judgment of noninfringement as a matter of law.

Who won?

Korners Unlimited, Inc. prevailed in this case because the court found that Met-Coil's unrestricted sale of its roll-forming machines granted an implied license to its customers. This implied license meant that Met-Coil's customers could not be held liable for direct infringement of the patent claims, which also precluded any claims of contributory infringement or inducement of infringement against Korners.

Korners was entitled to summary judgment of noninfringement as a matter of law.

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