Court’s Failure to Instruct Jury on Claim Construction Was Erroneous But Not Prejudicial
February 17, 2004
Last Month at the Federal Circuit - March 2004
Judges: Linn (author), Lourie, and Gajarsa
In Sulzer Textil A.G. v. Picanol N.V., No. 02- 1410 (Fed. Cir. Dec. 9, 2003), the Federal Circuit affirmed a district court’s denial of a motion for a new trial and a motion for attorneys’ fees, but vacated the district court’s grant of a motion in limine concerning evidence for infringement under the DOE, and remanded for further proceedings.
The patents-in-suit, U.S. Patent Nos. 4,446,893 (“the ‘893 patent”) and 4,450,876 (“the ‘876 patent”), relate to methods of using air-jet weaving machines for weaving threads or yarns into fabric. After introducing the first air-jet weaving machine in the 1970s, Ruiti-Te Strake, predecessor of Sulzer Textil A.G. (“Sulzer”), developed a time controller, the subject of the ‘893 patent, and a system known as the “bobbin-changeover” invention, the subject of the ‘876 patent. Sulzer acquired Ruiti-Te Strake as well as ownership of the ‘893 and ‘876 patents, and is one of the industry leaders in the manufacture of weaving machines. Picanol N.V. (“Picanol”) is also a manufacturer of air-jet weaving machines and a competitor of Sulzer.
Sulzer and Picanol had discussed possible cross-licensing of a number of different patents, including the ‘876 and ‘893 patents, but the parties never reached a formal agreement. In May 2000, Sulzer sued Picanol, alleging infringement of the ‘893 and ‘876 patents. The district court construed the claims, but failed to instruct the jury on its construction. Furthermore, although the claims of the patents-in-suit are directed to the methods of operation of the weaving machines, the district court incorrectly stated in one of the jury instructions that Sulzer must show that Picanol has manufactured its weaving machines using a process that includes all steps of the claims. The jury returned a verdict of noninfringement in favor of Picanol. In addition, prior to the conclusion of the jury trial, the district court granted Picanol’s motion in limine, based on Festo, to preclude Sulzer from introducing evidence of infringement under the DOE. Sulzer filed a motion for a new trial based on the two asserted errors in the jury instructions, but the district court denied Sulzer’s motion.
On appeal, the Federal Circuit concluded that the district court had erred in omitting from its jury charge any instructions on claim constructions and in incorrectly referring to the manufacture, rather than the method of operation. In particular, the Court stated that in patent cases where claimconstruction rulings on disputed claim terms are made prior to trial and followed by the parties during the course of the trial, it is the duty of trial courts to inform jurors both of the court’s claim-construction rulings on all disputed claim terms and of the jury’s obligation to adopt and apply the court’s determined meanings of disputed claim terms in the jury’s deliberations of the facts. Nevertheless, the Federal Circuit affirmed the district court’s order because the omitted jury instruction was harmless. The Court reasoned that Sulzer had failed to show that the district court’s failure to instruct the jury on its claim construction or the erroneous instruction on infringement was prejudicial. As to the erroneous instruction concerning infringement, the Court found that the jury instructions, viewed in their entirety and considered in the context of the trial as a whole, presented the correct legal standard for infringement to the jury. As to the missing claim constructions, the Court found that the evidence as presented at trial generally reflected the proper claim construction. To the extent it did not, the testimony was solicited by Sulzer and was, therefore, invited error.
With respect to the district court’s in limine order, Sulzer argued that the district court’s ruling on the motion in limine was based on the Federal Circuit’s Festo decision (Festo I) prior to being vacated by the Supreme Court in Festo II. The Federal Circuit vacated the district court’s order and remanded the issue of the DOE for consideration consistent with Festo II and the Federal Circuit’s precedent following Festo II.