## Facts

- Robert L. Jones owned two patents directed to casting decorative concrete panels using molded plastic foam sheets; Labrado, Inc. was an exclusive licensee.
- The patented approach used a molded polystyrene sheet with an intaglio pattern and a thin, flex-resistant “thin-face” configuration intended to permit removal from cured concrete as a single piece (rather than fragmentary removal).
- The patents included product and method claims addressing features such as the thin-face mold dimensions and method steps for molding the foam sheet, placing it in a form, pouring and curing concrete, and separating the mold; some claims specified cellular polystyrene bead characteristics and vibrating concrete.
- Jones and Labrado sued Alex Hardy for patent infringement and pendent unfair competition.
- Hardy admitted infringement but asserted the patents were invalid, principally for obviousness under 35 U.S.C. § 103.
- The district court held the patents invalid for obviousness and dismissed the pendent unfair competition claims, focusing substantially on the asserted advantage that the sheet could be stripped off in one piece.

## Issues

1. Whether the district court applied the correct legal standards for obviousness under 35 U.S.C. § 103, including the factual inquiries required by *Graham v. John Deere*.
2. Whether the district court improperly evaluated patentability by reducing the invention to an abstract “idea” rather than analyzing the claims as a whole.
3. Whether the district court failed to apply the statutory presumption of validity and the clear-and-convincing burden placed on the challenger under 35 U.S.C. § 282.
4. Whether dismissal of the pendent unfair competition claims should stand after reversal of the patent invalidity judgment.

## Decision

- The Federal Circuit reversed the judgment holding the patents invalid and remanded for further proceedings.
- The court held that the district court’s obviousness analysis was legally deficient because it lacked the specific factual findings required by *Graham*.
- The court concluded the district court erred by treating the invention as a generalized “idea” and by not beginning its analysis with the claims that define the invention.
- The court emphasized that invalidity must be proven by clear and convincing evidence and that the ultimate burden of persuasion remains with the challenger.
- The case was returned to the district court to conduct a proper, claim-focused § 103 analysis consistent with the required fact findings and the correct time frame (“at the time the invention was made”).

## Legal Principles

- Each patent claim is presumed valid under 35 U.S.C. § 282; the party asserting invalidity bears the burden of proving the facts establishing invalidity by clear and convincing evidence, and the burden of persuasion does not shift.
- Obviousness under 35 U.S.C. § 103 must be determined based on conditions “at the time the invention was made,” not at the time of patent issuance.
- A proper § 103 determination requires explicit findings on the *Graham* inquiries: (i) scope and content of the prior art, (ii) differences between the prior art and the claims at issue, (iii) level of ordinary skill in the art, and (iv) objective indicia (secondary considerations) when present.
- Patentability and validity analysis must start with the patent claims; reducing a claimed invention to an abstract “idea” and judging that abstraction for obviousness is legal error.

## Conclusion

The Federal Circuit reversed a district court’s obviousness-based invalidation of patents on decorative concrete casting molds because the trial court failed to make required *Graham* findings, improperly evaluated an abstracted “idea” rather than the claims, and did not apply the presumption of validity and clear-and-convincing proof standard, requiring remand for a correct § 103 analysis.


Jones v. Hardy, 727 F.2d 1524 (Fed. Cir. 1984)