Erroneous Jury Instructions Not Grounds for Overturning a Verdict Where Jury Is Not Prejudiced
January 25, 2010
Judges: Linn (author), Friedman, Dyk
[Appealed from: N.D. Cal., Judge Alsup]
In Therasense, Inc. v. Becton, Dickinson & Co., Nos. 09-1008, -1009, -1010, -1034, -1035, -1036, -1037 (Fed. Cir. Jan. 25, 2010), the Federal Circuit affirmed the district court’s denial of JMOL. The Court found that the district court’s legally erroneous jury instruction on the law of anticipation did not prejudice the jury’s verdict of “anticipation or obviousness,” where the claims in question would have been obvious as a matter of law, and therefore affirmed the district court’s judgment.
Therasense, Inc. (now known as Abbott Diabetes Care, Inc.) and Abbott Laboratories (collectively “Abbott”), the owners of U.S. Patent No. 5,628,890 (“the ’890 patent”), sued Becton, Dickinson & Co. and Nova Biomedical Corp. (collectively “BD/Nova”) for infringement of claims 11 and 12 of the ’890 patent by making, using, and selling a product called BD™ Test Strips. BD/Nova denied infringement and asserted that the claims were invalid under 35 U.S.C. §§ 102, 103, and 112. Specifically, BD/Nova asserted that the claims were anticipated or rendered obvious in light of U.S. Patent No. 5,120,420 (“Nankai”) and U.S. Patent No. 5,582,697 (“Ikeda”). The jury found that BD/Nova had infringed claims 11 and 12 under the DOE, and also that claims 11 and 12 were invalid under § 102 or § 103, and § 112. Slip op. at 1.
The jury used a special verdict form and checked “Yes” to the following two questions: (1) “Have defendants proven by clear and convincing evidence that Claims 11 and 12 of the ’890 patent are invalid by reason of anticipation or obviousness?” and (2) “Have defendants proven by clear and convincing evidence that Claims 11 and 12 of the ’890 patent are invalid by reason of inadequate written description?” Id. at 4-5. The district court entered judgment in favor of BD/Nova on all counts relating to the ’890 patent and denied Abbott’s post-trial motions for JMOL and a new trial.
Abbott appealed the judgment and challenged the district court’s denial of its motions for JMOL and for a new trial. Abbott’s appeal sought to overturn the jury’s two verdicts of “anticipation or obviousness” and “inadequate written description.” Id. at 6. BD/Nova also cross-appealed the jury’s finding of infringement, but its cross-appeal was dismissed as improper because judgment had been entered in favor of BD/Nova on all counts.
With regard to the “anticipation or obviousness” issue, Abbott contended that the verdict encompassed the separate legal theories of anticipation and obviousness, and that if either theory was legally flawed or unsupported, the verdict must be reversed or a new trial granted. Particularly, Abbott argued that the jury instructions regarding the law of anticipation were legally erroneous and that the jury could not have found the claims obvious under either of BD/Nova’s two obviousness contentions. The Court determined that a jury verdict could only be set aside if the jury instructions were both legally erroneous and prejudicial.
In addressing the first issue, the Court examined the jury instructions regarding the law of obviousness. The jury had been instructed that, for anticipation to apply, it is not necessary that the prior art reference expressly lay out the elements in the exact way laid out in the claim, and that it is sufficient if the single reference would have informed those skilled in the art that all of the claimed elements could have been arranged as in the claimed invention. Id. at 7. The Court found these instructions to be legally erroneous, noting that for a claim to be anticipated, each element of the claim must be disclosed, either expressly or inherently, in a single prior art reference, and the claimed arrangement or combination of those elements must also be disclosed, either expressly or inherently, in that same prior art reference. Id. at 10. The Court then moved on to determine whether the erroneous instructions had a prejudicial effect.
The Court held that the erroneous jury instructions on the law of anticipation could not have changed the result in this case because the claims at issue would have been obvious as a matter of law, such that no reasonable jury could have returned a verdict that the claims were not obvious. The Court decided that only one legal theory upon which the jury’s decision was based was required to be supported in law and in fact. The Court examined the Nankai patent and determined that it disclosed all of the features and limitations of claims 11 and 12 of the ’890 patent, in an arrangement sufficiently similar to that of the claims to render the claims obvious as a matter of law. Because the jury must at least have found the claims obvious over the Nankai patent, the Court declined to address whether the alternative legal theories of obviousness over Nankai in view of Ikeda, or anticipation over Nankai were supported. Id. at 16. The Court further declined to address Abbott’s challenge to the verdict that claims 11 and 12 of the ’890 patent were invalid based on inadequacy of written description.
Summary authored by Richard M. Hanna, student associate at Finnegan.