New Trial Required Because of Inconsistent Jury Verdict on Obviousness
March 01, 2010
Last Month at the Federal Circuit - April 2010
Judges: Rader, Gajarsa, Dyk (author)
[Appealed from: E.D. Pa., Judge Tucker]
In Comaper Corp. v. Antec, Inc., Nos. 09-1248, -1249 (Fed. Cir. Mar. 1, 2010), the Federal Circuit rejected Antec, Inc.’s (“Antec”) contention that a new trial was required because the district court’s claim constructions were in error. The Court, however, concluded that the district court was required to grant a new trial because the jury’s verdicts on obviousness were irreconcilably inconsistent. The Court affirmed-in-part, vacated-in-part, and remanded for a new trial on invalidity.
Comaper Corporation (“Comaper”) is the owner of U.S. Patent No. 5,955,955 (“the ’955 patent”), which claims a cooling device designed to mount within the drive bay of a computer. The device comprises a “case” containing an air movement device, such as a fan. Openings in the case allow for movement of air between the cool ambient air outside the computer and the warm air inside the computer. In particular, the device is meant to cool the drive bay region of the computer, where hard disk drives, optical drives, or tape drives may be installed. Comaper brought suit against Antec alleging that it infringed the ’955 patent. A jury found that Antec had willfully infringed claims 1, 2, 7, 12, and 13 of the ’955 patent. The jury also found that independent claims 1 and 12 were not obvious, but that various dependent claims were invalid as obvious.
The district court denied Antec’s post-trial JMOL motion under Fed. R. Civ. P. 50(b) as waived because Antec failed to file a JMOL motion at the close of evidence under Fed. R. Civ. P. 50(a). The district court also denied Antec’s motion for a new trial. The district court agreed that the verdicts on obviousness were inconsistent but reconciled the verdicts by concluding that Antec had failed to present sufficient evidence for the jury to find that the dependent claims were obvious.
On appeal, the Court first affirmed the district court’s denial of Antec’s post-trial JMOL motion as waived. Although Antec argued that it had met the “letter and spirit” of Rule 50(a) by making its position clear to the district court in opposing Comaper’s Rule 50(a) motion, the Federal Circuit disagreed. The Court noted that not only had Antec failed to move for JMOL before the case was submitted to the jury, it had also argued to the district court that the prior art evidence “establishe[d] at the very least the basis for going . . . to the jury”—a position inconsistent with JMOL. Slip op. at 6 (alterations in original) (citation omitted).
The Court next addressed the district court’s construction of “case” as “a structure for containing and holding something.” Id. Antec argued that the district court’s claim construction was too broad and that a “case” requires at least some type of enclosure. The Court disagreed, finding that although the embodiment disclosed in the ’955 patent includes a six-sided rectangular enclosure, the claims were not limited to the preferred embodiment. Consulting a dictionary, the Court found that “case” is generally defined as “a box or receptacle to contain or hold something” and that the district court’s construction of “case” as “a structure for containing and holding something” was therefore appropriate. Id. at 7.
The Court next addressed the district court’s construction of “drive bay slot” as “the relatively narrow opening in the housing of the computer that leads to the drive bay.” Id. Antec argued that the drive bay slot is not the opening in the computer housing but rather the area inside the computer behind the opening where a drive may be installed. Antec essentially asked the Court to equate the terms “drive bay” and “drive bay slot,” despite their separate use in the ’955 patent. The Court rejected this argument, finding that the district court’ s construction was supported by the prosecution history. The Court also found that the district court’s construction of “second opening” as “a separate opening that is exposed to the drive bay region” faithfully tracked the term’s ordinary meaning in light of the intrinsic evidence. Id. at 9.
The Federal Circuit next agreed with Antec that a new trial was required in view of the inconsistent jury verdicts that the independent claims were not obvious, while the dependent claims were obvious. The Court noted that Third Circuit law recognizes that where verdicts are genuinely inconsistent and the evidence might support either of the inconsistent verdicts, the appropriate remedy is ordinarily to order an entirely new trial. When thus faced with inconsistent verdicts where evidence would support either of the inconsistent verdicts, the district court must order a new trial.
The Federal Circuit also disagreed with the district court’s determination that the evidence was insufficient to support verdicts of obviousness with respect to the dependent claims. Specifically, the Federal Circuit held that the district court erred in concluding that the prior art asserted by Antec was not analogous prior art. The Court found that Antec’s asserted prior art references all related to the same field of endeavor as the ’955 patent—specifically, cooling computer electronics using fans to draw cool ambient air—and thus were properly considered by the jury on the issue of whether the ’955 patent would have been obvious.
The Court also found that the district court inappropriately applied an anticipation analysis to a question of obviousness when it concluded that all of the claim elements of the ’955 patent did not appear in a single piece of prior art. Under a proper obviousness analysis, the Court found that there was ample evidence in the record to support the jury’s verdicts that the dependent claims would have been obvious. The district court recognized that Antec had provided extensive claim-by-claim and element-by-element comparisons between numerous prior art references and the claims of the ’955 patent. Moreover, in addition to providing lengthy testimony regarding the prior art, Antec had introduced physical exhibits of many of the prior art devices. The Court found the evidence offered by Antec adequate to demonstrate that the jury could have found obviousness based on a motivation to modify the prior art. The Court thus concluded that the jury could have credited the testimony of Antec’s expert and relied on its own assessment of the exhibits shown at trial to conclude that the dependent claims would have been obvious to a person having ordinary skill in the art. The Court therefore found that the jury’s verdicts on obviousness reflected an irreconcilable inconsistency and remanded for a new trial on invalidity.