Talk:Perkin-Elmer Corporation v. Computervision Corporation, 732 F2d 888 (1984)

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Maura

The district court denied Perkin-Elmer's motions for a judgment of infringement notwithstanding the verdict ("JNOV")

ISSUES (1) Whether the district court erred in denying Computervision's motion for JNOV on validity. (2) Whether the district court abused its discretion in denying Computervision's motion for new trial based on absence of a jury trial of a fact issue underlying the determination of nonobviousness. (3) Whether the decision of the Ninth Circuit should be reviewed. (4) Whether the district court abused its discretion in denying Computervision's motions for new trial and to vacate the judgment based on allegations of fraudulent conduct.

When a party moves for JNOV, the trial court must consider all the evidence in a light most favorable to the non-mover, must draw reasonable inferences favorable to the non-mover, must not determine credibility of witnesses, and must not substitute its choice for that of the jury between conflicting elements in the evidence. Railroad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506, 1512, 220 USPQ 929, 936 (Fed.Cir.1984); Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1546, 220 USPQ 193, 197 (Fed.Cir.1983). Following those guidelines, the court determines whether the evidence so viewed constitutes "substantial evidence" in support of the jury's findings and, if so, whether those findings can support the legal conclusions necessarily drawn by the jury in accord with its instructions enroute to its verdict.

On appeal from denial of a motion for JNOV, appellant must show that the jury's findings, presumed or express, are not supported by substantial evidence or, if they were, that the legal conclusion(s) implied from the jury's verdict cannot in law be supported by those findings. Id., 727 F.2d at 1517, 220 USPQ at 935-36.

The jury was instructed under 35 U.S.C. Sec. 1022 that there is no anticipation "unless all of the same elements are found in exactly the same situation and united in the same way ... in a single prior art reference". See e.g., Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 771, 218 USPQ 781, 789 (Fed.Cir.1983). From that instruction and the jury's verdict, the law presumes that the jury found no anticipation under Sec. 102 because of differences (discussed infra ) between the claimed inventions and the prior art. Having shown no basis for determining that the record is devoid of substantial evidence to support that finding, Computervision has not met its burden on appeal, i.e., to establish that a reasonable juror could not have found that Computervision failed to overcome the presumption of novelty included within the presumption of validity mandated by 35 U.S.C. Sec. 282.

3. Obviousness

Determining obviousness/nonobviousness under 35 U.S.C. Sec. 1033 involves factual inquiries into: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the prior art; and (4) objective evidence of nonobviousness, e.g., long felt need, commercial success, failure of others, copying, unexpected results. See, e.g., Environmental Designs, Ltd. v. Union Oil Co. of Calif., 713 F.2d 693, 695, 218 USPQ 865, 867 (Fed.Cir.1983); Orthopedic Equipment Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1379-82, 217 USPQ 1281, 1283-85 (Fed.Cir.1983). The critical question, as Sec. 103 makes plain, is whether the invention as a whole would have been obvious to one of ordinary skill in the art at the time it was made.

Included within the presumption of validity mandated by 35 U.S.C. Sec. 282 is a presumption of nonobviousness which the patent challenger must overcome by proving facts with clear and convincing evidence. American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1358-59, 220 USPQ 763, 769-70 (Fed.Cir.1984); Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983). The presumption remains intact even upon proof of prior art not cited by the Patent and Trademark Office (PTO), Raytheon, supra, 724 F.2d at 960, 220 USPQ at 599, though such art, if more relevant than that cited, may enable the challenger to sustain its burden. Id.

Nothing in the prior art anticipates or, considered singularly or as a whole, would have suggested, the inventions claimed in the '015 and '763 patents. The objective evidence is strong in support of the judge's ruling upholding the jury's verdict on validity. Thus, the district court did not err in denying Computervision's motion for JNOV.

Though the Ninth Circuit's opinion did not use the word "equivalence", that court was presumably aware that the jury had been instructed on the doctrine and its opinion spoke the language of equivalency ("functions in a strikingly similar way"; "the only difference"; "differences ... are miniscule"; "Otherwise ... identical"; "A minor adjustment ... not ... beyond the reach"; "variations ... within the range" ). Assessing equivalency involves a determination of whether the claimed invention and alleged infringing device, which are different (there would otherwise be literal infringement), perform substantially the same function in substantially the same way to give the same or substantially the same result. See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608, 70 S.Ct. 854, 856, 94 L.Ed. 1097 (1950). If equivalence appears, infringement will be found unless (1) arguments or amendments made by applicant during prosecution (prosecution history estoppel) estop the patentee from asserting a range of equivalence broad enough to encompass the accused product or process; or (2) the equivalent device is within the public domain, i.e., found in the prior art, Carmen Industries, Inc. v. Wahl, 724 F.2d 932, 942, 220 USPQ 481, 489 (Fed.Cir.1983); Thomas & Betts Corp. v. Litton Systems, Inc., 720 F.2d 1572, 1579-80, 220 USPQ 1, 6-7 (Fed.Cir.1983). Determining the existence of either condition (1) or condition (2) does not require reassessment of validity. See e.g., Carmen Industries, supra, 724 F.2d at 936 n. 2, 937 n. 5, 220 USPQ at 484 n. 2, 485 n. 5. Nor does determination of the existence of either condition necessitate a re-interpretation of the claims as written. Computervision's assumptions concerning a Ninth Circuit interpretation of the claims are unsupported in the record.

We recognize that a court that established the law of a case could elect to review its earlier decision and change it if one of three "exceptional circumstances" exist: (1) the evidence on subsequent trial was substantially different; (2) controlling authority has intervened; or (3) the earlier decision was clearly erroneous and would work a manifest injustice. Central Soya, supra, 723 F.2d at 1580, 220 USPQ at 495. Revisions in the law of the case occur "very infrequently" when an appellate court is asked to review the decision of a coordinate court. 1B Moore's Federal Practice p 0.404 [4.-5 at 138].

Equivalence, in the patent law, is not the prisoner of a formula and is not an absolute to be considered in a vacuum. It does not require complete identity for every purpose and in every respect.

Courtney

In late 1977, Perkin-Elmer sued Computervision for infringement of the patents. Computervision counterclaimed for a declaratory judgment that the patents were invalid and not infringed.


The jury was instructed under 35 U.S.C. § 102 FN2 that there is no anticipation “unless all of the same elements are found in exactly the same situation and united in the same way ... in a single prior art reference”. See e.g., Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 771, 218 USPQ 781, 789 (Fed.Cir.1983). From that instruction and the jury's verdict, the law presumes that the jury found no anticipation under § 102 because of differences (discussed infra ) between the claimed inventions and the prior art. Having shown no basis for determining that the record is devoid of substantial evidence to support that finding, Computervision has not met its burden on appeal, i.e., to establish that a reasonable juror could not have found that Computervision failed to overcome the presumption of novelty included within the presumption of validity mandated by 35 U.S.C. § 282.

Computervision urges that the Reed disclosure be viewed backwards, i.e., as a system for forming an image of the pilot's eye. There is no evidence that those of ordinary skill in the art would so view it, and such distortion of a reference in light of a patentee's disclosure is pure hindsight.

Computervision says this is the first case in which a jury verdict of noninfringement was reversed without consideration of a validity verdict, resulting in unfairness. Perkin-Elmer cites numerous non-jury cases in which a court of appeals has reversed a court finding of noninfringement and remanded for entry of judgment without reconsideration of validity. It is unnecessary, however, to decide such questions. There has been a judgment of validity and infringement and it is that judgment that has been appealed to this court.

Assessing equivalency involves a determination of whether the claimed invention and alleged infringing device, which are different (there would otherwise be literal infringement), perform substantially the same function in substantially the same way to give the same or substantially the same result. ... If equivalence appears, infringement will be found unless (1) arguments or amendments made by applicant during prosecution (prosecution history estoppel) estop the patentee from asserting a range of equivalence broad enough to encompass the accused product or process; or (2) the equivalent device is within the public domain, i.e., found in the prior art, USPQ ... Determining the existence of either condition (1) or condition (2) does not require reassessment of validity.

In an effort to show that the Ninth Circuit did not understand the technology, Computervision says one of the two differences the court found (wider placement of the convex and concave mirrors) does not exist because the mirrors are spaced the same in both systems. That error, however, would, if anything, have favored Computervision because it would have increased the court's perceived differences from one to two. Computervision has not made a prima facie showing that the finding of an allegedly non-existent difference constituted clear error producing manifest injustice.

The motion for a new trial or to vacate the judgment under Rule 60(b) alleged fraudulent conduct. On review of a denial of a motion to vacate under Rule 60(b), the standard, like that on review of a denial of a motion for new trial, is whether an abuse of discretion occurred.

Equivalence, in the patent law, is not the prisoner of a formula and is not an absolute to be considered in a vacuum. It does not require complete identity for every purpose and in every respect.

Thus, if Perkin-Elmer changed its commercial device to get an improved result by making it the same as the CA-3000, it would not be inconsistent-much less fraudulent-for Perkin-Elmer witnesses to testify that the claimed and accused devices are nevertheless equivalent. A patentee need produce no commercial device. Infringement is determined by comparison with the patentee's claimed invention, not with its marketed product.

Presumably, as above indicated, the Ninth Circuit so determined equivalence, and, though it did not in its opinion employ the words of Graver Tank, supra, its words do indicate that it found “substantially the same” result. Perkin-Elmer's witnesses testified that the results are substantially the same, not identical. The instructions to the jury defined equivalency in terms of “substantially the same” result. Computervision's own expert testified that the CA-3000 optical system performs the same work in substantially the same way as the '015 patent system, and accomplished a similar result. For all of those reasons, Computervision's assertion of fraudulent conduct is unpersuasive.

Kevin

At argument, the court stated that the findings of the jury supported a conclusion of non-obviousness, that there was considerable evidence supporting those findings, and that non-obviousness was clear as a matter of law. The court also noted that a patent is presumed valid, that the burden of persuasion remains with the party asserting invalidity, and that Computervision did not satisfy that burden. In accordance with the Ninth Circuit's mandate and in full compliance with Sarkisian, the district court determined that the patents were valid and infringed and granted Perkin-Elmer's motion for entry of judgment so stating.

ISSUES (1) Whether the district court erred in denying Computervision's motion for JNOV on validity. (2) Whether the district court abused its discretion in denying Computervision's motion for new trial based on absence of a jury trial of a fact issue underlying the determination of nonobviousness. (3) Whether the decision of the Ninth Circuit should be reviewed. (4) Whether the district court abused its discretion in denying Computervision's motions for new trial and to vacate the judgment based on allegations of fraudulent conduct.

Determining obviousness/nonobviousness under 35 U.S.C. Sec. 103[3] involves factual inquiries into: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the prior art; and (4) objective evidence of nonobviousness, e.g., long felt need, commercial success, failure of others, copying, unexpected results. See, e.g., Environmental Designs, Ltd. v. Union Oil Co. of Calif., 713 F.2d 693, 695, 218 USPQ 865, 867 (Fed.Cir.1983); Orthopedic Equipment Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1379-82, 217 USPQ 1281, 1283-85 (Fed.Cir.1983). The critical question, as Sec. 103 makes plain, is whether the invention as a whole would have been obvious to one of ordinary skill in the art at the time it was made. Included within the presumption of validity mandated by 35 U.S.C. Sec. 282 is a presumption of nonobviousness which the patent challenger must overcome by proving facts with clear and convincing evidence.

Computervision summarily asserts in its brief, without explanation, that the Reed and Schmidt disclosures are applicable. That bare assertion cannot possibly satisfy Computervision's appellate burden of showing that no reasonable juror could have concluded that it had failed to prove facts rendering the '763 patent claims invalid.

CONCLUSION ON VALIDITY Nothing in the prior art anticipates or, considered singularly or as a whole, would have suggested, the inventions claimed in the '015 and '763 patents. The objective evidence is strong in support of the judge's ruling upholding the jury's verdict on validity. Thus, the district court did not err in denying Computervision's motion for JNOV.

AFFIRMED DAVIS, Circuit Judge, dissenting. I am concerned that the District Court denied the appellant's motion for new trial on validity simply because the judge felt compelled to do so by the Ninth Circuit's ruling on infringement, despite the District Court's strongly expressed views (in argument) that (a) the Ninth Circuit's interpretation of the patent (in the infringement appeal), without any necessary jury findings supporting that position, was "absurd", "not according to me", "not according to the jury", a position "with which I strongly take issue",[10] (b) that the patents could not both be valid and infringed, but (c) that the District Court felt bound to uphold validity by the Ninth Circuit's infringement decision because that appellate court interpreted the patents broadly as a "conclusion of law", though the District Court clearly considered that that interpretation, if proper, would necessarily depend on findings of fact to be made by the jury but not actually made in this case.