Evidence Supports Jury Finding of Nonobviousness, JMOL of Invalidity Reversed
August 21, 2001
Last Month at the Federal Circuit - September 2001
Judges: Clevenger (author), Mayer, and Michel (dissenting)
In McGinley v. Franklin Sports, Inc., No. 00- 1324 (Fed. Cir. Aug. 21, 2001), the Federal Circuit reversed the district court’s JMOL of invalidity due to obviousness concerning U.S. Patent No. 5,407,193 (“the ‘193 patent”). The ‘193 patent, owned by Michael McGinley, discloses an instructional pitching device in the form of a regulation baseball with specific “finger placement indicia” for teaching students how to grasp a baseball to throw different types of pitches. The accused instructional baseball, sold by Franklin Sports, Inc. (“FSI”), had similar but differently shaped and configured finger-placement indicia.
On appeal, FSI challenged the district court’s claim construction of the “means for indicating an orientation of the baseball relative to the palm of the hand” claimed in the ‘193 patent. The district court had construed this term as a means-plus-function limitation, and FSI argued on appeal that the claim limitation was not entitled to any range of undisclosed equivalents whatsoever. The Federal Circuit rejected this argument as contrary to the express provisions of 35 U.S.C. § 112, ¶ 6, which provides a statutorily guaranteed range of equivalents for means-plus-function claim limitations.
In reversing the district court’s JMOL, the Federal Circuit found that there was sufficient evidence to support the jury’s verdict of nonobviousness and rejected the district court’s finding that no reasonable jury could have reached a verdict of nonobviousness in light of two prior patents owned by Pratt and Morgan. Generally, the Pratt patent disclosed a regulation baseball with its own fingerplacement indicia, and the Morgan patent disclosed a lightweight baseball “replica” fabricated in the form of hemispherical shells that assemble together and have their own fingerplacement indicia.
At trial, McGinley had presented many reasons for the jury to reject a combination of Pratt and Morgan. For instance, both the Pratt and Morgan patents were before the PTO during prosecution of the ‘193 patent. During prosecution, McGinley’s claims were initially rejected as anticipated by Pratt, but were never rejected on obviousness grounds. Perhaps most importantly, McGinley had submitted substantial evidence and argument that Pratt and Morgan actually taught away from their combination and that their combination would produce a seemingly inoperative device. For these reasons, the Federal Circuit found that FSI had not rebutted the ‘193 patent’s presumption of validity by clear and convincing evidence.
Judge Michel dissented, finding that Pratt alone rendered the ‘193 patent obvious as a matter of law. Specifically, Judge Michel found that Pratt expressly taught the very “means for indicating an orientation of the baseball relative to the palm of the hand” claimed in the ‘193 patent. Judge Michel was also troubled by what he perceived as the majority’s resulting unwillingness to examine the jury’s factual findings given the general verdict of nonobviousness.
Judge Michel commented that the majority’s opinion, and its deference to the jury’s verdict in the absence of express factual findings, implied that the use of a general verdict form on the legal question of obviousness will render the jury’s verdict essentially immune from a review by the district court (on JMOL) or by the Federal Circuit.