## Facts

- Cable Electric Products, Inc. owned a patent covering a photosensitive night-light that gradually turns on as ambient light decreases, using a housing, bulb, removable translucent shade, a lens admitting light to photosensitive circuitry, and wall-plug prongs.
- Genmark, Inc. marketed a competing photosensitive night-light, and Cable sued for patent infringement in federal district court.
- Genmark moved for summary judgment that the patent was invalid as obvious under 35 U.S.C. § 103 based on prior art describing photosensitive lamps and related structures.
- After Genmark’s invalidity motion, Cable amended its complaint to add non-patent claims for false designation of origin under the Lanham Act, plus state-law unfair competition and trademark infringement.
- The district court granted summary judgment for Genmark on the patent claim (obviousness) and later granted summary judgment for Genmark on all non-patent claims.
- Cable appealed both summary judgments.

## Issues

1. Whether summary judgment was proper in holding the patent invalid for obviousness in view of the prior art, notwithstanding Cable’s evidence of copying and other secondary considerations.
2. Whether summary judgment was proper on the Lanham Act and state-law unfair-competition and trademark claims, particularly where the district court treated patent invalidity as dispositive.

## Decision

- The Federal Circuit affirmed summary judgment that the patent was invalid for obviousness.
- The court held that summary judgment is available in patent cases, including on obviousness, when there is no genuine dispute of material fact on the relevant predicates.
- The court concluded that Cable’s evidence of copying and commercial success did not create a triable issue because it lacked a sufficient nexus to a non-obvious technical advance in the claimed invention.
- The court vacated summary judgment on the Lanham Act and state-law claims and remanded for further proceedings because those claims required independent legal and factual analysis separate from patent validity.

## Legal Principles

- Summary judgment is appropriate in patent litigation, including on obviousness, where the record shows no genuine dispute of material fact and the movant’s showing compels the legal conclusion.
- Obviousness is a legal conclusion based on underlying factual inquiries concerning the scope and content of prior art, differences from the claimed invention, and the level of ordinary skill, with secondary considerations considered as part of the overall analysis.
- The presumption of validity and the clear-and-convincing evidentiary burden do not bar summary judgment when the evidentiary record supports invalidity and the nonmovant fails to raise a genuine factual dispute.
- Secondary considerations (including copying and commercial success) are relevant but not outcome-determinative; they must be linked to the merits of the claimed invention to meaningfully rebut a strong obviousness showing.
- Patent invalidity does not automatically defeat Lanham Act false designation of origin, unfair-competition, or trademark claims; those claims must be assessed on their own elements (including marketplace conduct and consumer confusion).

## Conclusion

The Federal Circuit upheld summary judgment invalidating the photosensitive night-light patent as obvious because the claimed combination was shown by the prior art and the proffered secondary considerations did not raise a material factual dispute. It also ruled that the district court erred by disposing of the Lanham Act and related state claims based on the patent ruling, vacating that judgment and remanding for independent evaluation of the non-patent causes of action.


Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015 (Fed. Cir. 1985)