# Best Lock Corporation v. Schlage Lock Company

> Court of Customs and Patent Appeals · October 23, 1969 · 413 F.2d 1195

URL: https://www.frixlaw.com/law-library/cases/9454743

## Case

- **Full name:** BEST LOCK CORPORATION, Appellant, v. SCHLAGE LOCK COMPANY, Appellee
- **Court:** Court of Customs and Patent Appeals
- **Decided:** October 23, 1969
- **Citations:** 413 F.2d 1195; 56 C.C.P.A. 1472
- **Precedential status:** Published
- **Opinion:** Dissent by Baldwin
- **Judges:** Rich, Collins, Neese, Almond, Baldwin
- **Cited by:** 25 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/9454743

## Opinion text

BALDWIN, Judge
(dissenting).
A motion for summary judgment may be granted if and only if there is no genuine issue as to any material fact, that is, if the moving party is entitled to.prevail strictly as a matter of substantive law. On a motion for summary judgment, the tribunal cannot try issues of fact; it cannot pre-judge the facts by making conclusions based on part of the evidence; it can only determine whether there are any substantial issues of material fact to be tried.
The burden is on the moving party to establish that there is no genuine issue as to any material fact and that he is. entitled to judgment solely as a matter of substantive law. And the moving party is not entitled to the benefit of favorable factual inferences which may be drawn from his pleadings or moving papers; instead, the matters presented must be construed most favorably to the party opposing the motion. That it may be surmised that the non-moving party is unlikely to prevail after a full trial is not sufficient to authorize summary judgment against him.
Thus, I feel that summary judgment was erroneously granted since I agree with appellant that a genuine issue of material fact exists as to the functionality of the figure 8 configuration, at least to the extent that the functionality is of such nature as to preclude registration, and that appellant is entitled to introduce its evidence relevant to the issue of functionality. The mere magnitude of appellant’s burden, which may indeed be quite formidable, to prevail on the merits of this case should not as a matter of law deny appellant his day in court.
I have no quarrel with the majority’s characterization of the substantive law as to trademark registration of “functional” configurations. What troubles me is the majority’s acceptance of a single piece of evidence, the Best patent, as conclusively establishing functionality of such nature as to preclude registration. This, I feel, is error. Perhaps if the only evidence as to functionality were the utility patent after appellant had submitted all of its evidence, as was the case in Shenango, supra, then the utility patent might be “some,” “adequate,” and “conclusive” evidence of functionality of such nature as to preclude registration. However, Shenango is no precedent for holding that the evidentiary value of a patent is so great as to foreclose a party’s efforts to introduce evidence contradictory to the specification of the patent. Since the Best patent is merely one piece of evidence of functionality insofar as this case is concerned, appellant should be given the opportunity to rebut that evidence.
I would reverse.

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/9454743. Public record. Not legal advice.