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District Court Improperly Construed Claim Limitation After Jury’s Verdict

August 07, 2003

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Last Month at the Federal Circuit - September 2003

Judges: Dyk (author), Schall, and Mayer (dissenting)

In Hewlett-Packard Co. v. Mustek Systems, Inc., No. 02-1372 (Fed. Cir. Aug. 7, 2003), the Federal Circuit vacated a judgment of infringement of the asserted claims of U.S. Patent No. 5,336,878 (“the ‘878 patent”) and affirmed a judgment of invalidity of the asserted claims of U.S. Patent No. 4,837,635 (“the ‘635 patent”).

Hewlett-Packard Company (“HP”) owns the ‘878 and ‘635 patents directed to optical-scanner technology. HP sued Mustek Systems, Inc. and Mustek, Inc. (collectively “Mustek”) for infringement of five patents, but only the ‘878 and ‘635 patents remained on appeal. A jury had found that Mustek literally infringed the claims of both patents. The jury had also found claim 1 of the ‘635 patent anticipated by a prior art patent (“Cawkell”) and claims 1-8 of the ‘635 patent obvious in view of the prior art. Although the jury had not addressed the issue of infringement under the DOE, and HP had not requested JMOL on this issue, the district court granted JMOL of infringement under the DOE as to certain claims of the ‘878 patent. The district court also reduced the damages award. Finally, the district court ruled that certain claims of the ‘878 patent were invalid.

On appeal, the infringement issue turned on the construction of the claim phrase “scan speed indicating means for generating a scan speed signal indicating a selected one of different scan speeds of said displacement means.” Although neither party requested a specific construction of this language when the district court first construed the claims, on JMOL, Mustek urged that the district court should construe this limitation as requiring that the user select a specific scanning speed known to the user.

The Federal Circuit ruled that it was improper for the district court to have adapted a new or more detailed claim construction in connection with the JMOL motion. Rather, on JMOL, the issue should have been limited to the question of whether substantial evidence supported the verdict under the agreed-upon instruction. In other words, where the parties in the district court elect to provide the jury only with the claim language itself and do not provide an interpretation of the language in light of the specification and the prosecution history, it is too late at the JMOL stage to argue for or adopt a new and more detailed interpretation of the claim language and test the jury’s verdict by that new and more detailed interpretation. Accordingly, the Federal Circuit held that the district court’s decision was contrary to the undisputed facts and unsupported by substantial evidence because the accused devices do not include a scan-speed selector that, based on the user’s selection, generates a scanspeed signal, as required by the district court’s original instruction.

The Federal Circuit also vacated the district court’s JMOL of infringement under the DOE since no timely motion on this issue had been filed. Moreover, there was no evidence in the record to address the issue of DOE.

Concerning invalidity, the Federal Circuit agreed that Cawkell anticipated claim 1 of the ‘635 patent and rejected HP’s attempts to read limitations into the claims so as to distinguish Cawkell. The obviousness decision was based on the demonstration of a prior art scanner and testimony of three Mustek witnesses who testified that the claimed methods had been publicly performed using the prior art scanner in the same manner as demonstrated to the jury. The Federal Circuit rejected HP’s argument that the testimony regarding the use of the prior art scanner was uncorroborated, concluding instead that the testimonial evidence here was sufficiently corroborated by the operation of the device itself, which was made contemporaneously with the alleged prior invention.

Judge Mayer dissented, concluding that the jury’s finding of infringement was proper because the claim did not require that a user know what he was selecting, only that a selection be made.