Appealed from: U.S. District Court for the Western District of Michigan, Judge Gibson.
Markey, Chief Judge, Newman and Archer, Circuit Judges. Newman, Circuit Judge, dissenting.
Appeal from a judgment entered by the United States District Court for the Western District of Michigan, No. K 84-444, on a jury verdict that Richard-Allan Medical Industries, Inc. (Richard-Allan) failed to establish invalidity of U.S. Patent No. 4,109,844 ('844) and that Senmed, Inc. and Ethicon, Inc. (collectively Senmed) proved Richard-Allan's willful infringement of that patent. We vacate in respect of validity and reverse in respect of infringement.
The claimed and accused devices are surgical staplers (skin staplers) that apply staples to close incisions or wounds. Unlike paper or stationery staplers, to which they are kin, skin staplers locate the staple-deforming anvil above the material to be stapled and deform the staple into a "box" shape rather than a tightly clenched configuration. Skin staples extend through the edges of skin tissue but remain open and able to flex when the tissue swells. To facilitate removal, the top of the staple is spaced slightly above the skin.
At trial, inventor Becht testified that, attributing unreliability of existing staplers to unnecessary complexity, he set forth to design a simpler device and focused on an area he considered the most complex, i.e., "the interface between where the staples are fed and where the staples were formed."
Becht's effort led to the '844 patent. Claim 1 reads:
A surgical stapling instrument for forming and implanting a staple in skin or fascia of a patient, said instrument comprising a handle portion incorporating a nose portion, said nose portion having an anvil plate at the bottom end thereof, said anvil plate terminating at its forward end in a coextensive anvil surface, said anvil plate being adapted to slidably mount a row of staples, means to constantly urge and advance said row of staples along said anvil plate to place a forwardmost staple on said anvil surface, a staple driver mounted in said nose portion and shiftable vertically between a normal upper position closely adjacent said forwardmost staple on said anvil surface and a lower position wherein it forms and implants said forwardmost staple about said anvil surface, and means to shift said staple driver between said upper and lower position thereof.*fn1
On October 14, 1984, Senmed sued Richard-Allan, alleging, inter alia, infringement of the '844 patent. Following an exhaustive six-week trial, the jury returned a verdict in the form of answers to questions on anticipation, obviousness, infringement, and willfulness:*fn2
1. Do you unanimously find that the defendant Richard-Allan has proved by clear and convincing evidence that either of the asserted claims of the Becht 844 Patent is invalid because such claim was anticipated by a single prior art reference which disclosed each and every element of a claim arranged as in such claim?
[jury answer] Claim 1, no. Claim 2, no.
2. Do you unanimously find that the defendant Richard-Allan has proved by clear and convincing evidence that any of the asserted claims of the Becht 844 Patent is invalid because the differences between such claims and the pertinent prior art were such that the subject matter of the claim as a whole would have been obvious to a person having ordinary skill in the pertinent art at the time of the invention?
[jury answer] Claim 1, no. Claim 2, no.
3. Do you unanimously find that the defendant Richard-Allan has infringed upon any of the asserted claims of the Becht 844 Patent?
[jury answer] Claim 1, yes. Claim 2, yes.
4. If you find the Becht 844 Patent infringed, do you unanimously find by clear and convincing evidence that Richard-Allan willfully infringed upon the Becht 844 Patent?
Richard-Allan moved for judgment NOV and for a new trial. Supplying a comprehensive opinion, the trial judge denied the motions and entered judgment in accord with the jury answers that constituted the verdict.
In his well written opinion, the trial judge discussed the evidence and Richard-Allan's arguments in relation to literal infringement, infringement under the doctrine of equivalents, anticipation, obviousness, willful infringement, jury instructions, and an evidentiary ruling. The court noted that the credibility of Richard-Allan's sole witness on anticipatory art could "reasonably be questioned." Thrice noting that Richard-Allan "provided no testimony from an expert with ordinary skill in the art of skin stapling," the court adopted inventor Becht's claim-interpreting testimony in upholding jury answer 3 on infringement.
Richard-Allan here contends that certain of the jury's answers are unsupportable and that the trial judge therefore erred in refusing to enter judgment NOV. Admirably, it does not burden this court with challenges on the denial of its motion for a new trial, the correctness of any jury instruction, jury answer 1 (anticipation), or jury answer 4 (willfulness), but limits its appeal to jury answer 2 (obviousness) and jury answer 3 (infringement).
Whether the judgment entered on the jury verdict of infringement can be sustained in law.
To succeed here, Richard-Allan must show that the jury's finding of infringement is not supported by substantial evidence or that it was made in relation to a claim interpretation that cannot in law be sustained. See ZMI Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1581-82, 6 U.S.P.Q.2D (BNA) 1557, 1561-61 (Fed. Cir. 1988). After careful review of the record, we are convinced that Richard-Allan satisfied the latter criterion. We must, therefore, reverse the judgment entered on the jury verdict of infringement.*fn4
Richard-Allan says the "jury and the district court misconstrued the scope of claim 1" and that the claim, "properly construed," cannot be read on its device. It argues that the claim limitation "means to constantly urge and advance said row of staples along said anvil plate to place a forwardmost staple on said anvil surface" cannot be read on its device because its advancing means places a forwardmost staple above its anvil. Stated differently, Richard-Allan says "on" the anvil surface must be interpreted as meaning "in physical contact with" the anvil surface.*fn5
There was, at the pretrial, trial, and post-trial stages, an intense focus on claim interpretation. That an appellant's arguments had been ineptly presented to a trial court does not in itself preclude a reversal by this court if the record unequivocally establishes that the appealed judgment resulted from clear and reversible legal error. We cannot and will not, as Richard-Allan would have us do, substitute our view of facts, or re-try the case, or ignore all the events that occurred before the appeal. Construction of claim scope (claim interpretation), however, is a question of law for decision by the trial judge on motion for JNOV and by this court on appeal. Johnston v. IVAC Corp., 885 F.2d 1574, 12 U.S.P.Q.2d (BNA) 1382, slip op. at 9-10 (1989); Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 452, 227 U.S.P.Q. (BNA) 293, 295-96 (Fed. Cir. 1985); Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 866, 228 U.S.P.Q. (BNA) 90, 93 (Fed. Cir. 1985); Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565, 1569, 219 U.S.P.Q. (BNA) 1137, 1140 (Fed. Cir. 1983). That a jury has answered a legal question may not in itself require reversal. Of a ...