Findings of Fact Insufficient to Support Ruling of Willful Infringement
April 19, 2004
Last Month at the Federal Circuit - May 2004
Judges: Linn (author), Mayer, and Newman (concurring-in-part and dissenting-in-part)
In Golden Blount, Inc. v. Robert H. Peterson Co., No. 03-1298 (Fed. Cir. Apr. 19, 2004), the Federal Circuit affirmed a district court’s claim construction and finding of validity, but remanded the issue of infringement.
Golden Blount, Inc. (“Blount”) and Robert H. Peterson Company (“Peterson”) compete in the fireplace-equipment market. Blount owns the patent-in-suit, U.S. Patent No. 5,998,159 (“the ‘159 patent”), which relates to a gas-fired, artificial log and coalburner assembly.
Blount alleged infringement by a device marketed by Peterson—the EMB Series Ember Flame Booster (“Booster”) based on the function and relative positions of the Booster’s burners. Claim 1 recites that a support means holds “the elongated primary burner in a raised level relative to the forwardly position secondary coals burner elongated tube.” The district court had found that “raised level” meant that the primary burner was at a raised level relative to the secondary burner. Peterson argued that the raised level should be based on the position of the gas ports, but the Federal Circuit agreed with the district court.
Claim 17 recites that the gas ports are directed “away from the fireplace opening.” The district court had construed this to mean any direction that did not include a horizontal component pointed toward the vertical plane of the fireplace opening, and the Federal Circuit affirmed.
Based on its claim constructions, the district court had concluded that Peterson infringed each of the asserted claims. It had also concluded, among other things, that the claims of the patent are valid and that Peterson’s infringement was willful.
The Federal Circuit vacated and remanded the infringement issues because the district court did not provide findings of fact to support a conclusion of infringement. With a lack of support for findings of infringement, the Federal Circuit could not determine whether the trial court had any evidence to support its conclusions, nor was it able to determine whether the district court applied appropriate legal standards. Because it remanded the infringement issues, the Court also vacated the finding of willfulness.
The Federal Circuit also found that Peterson did not meet its burden of proving invalidity by clear and convincing evidence. The Court found that Peterson offered only the bare assertion that the patent claims would have been obvious. The Court stated that it therefore had no reason to reverse the district court’s conclusion that the ‘159 patent is not invalid. The Federal Circuit found that Peterson had failed to raise an inequitable-conduct issue before the district court and, as a result, had waived that issue.
Judge Newman concurred-in-part and dissented-in-part. She concurred with the court’s finding of validity and that evidence to support Peterson’s inequitable-conduct claim was lacking, but dissented against remanding for another determination of infringement. She based her dissent on judicial efficiency and a finding of sufficient support in the record, stating that the issues on appeal were decided by the claimconstruction issue and did not require a remand for a longer opinion.