Bettcher Industries, Inc. v. Bunzl USA, Inc.
661 F.3d 629
| Fed. Cir. | 2011Background
- Bettcher owns the '325 Low Friction Rotary Knife patent directed to a rotary knife blade with a frustoconical bearing race engaging bearing beads.
- Bettcher sued Bunzl for infringement; Bunzl challenged validity, including anticipation by pre-1998 Bettcher blades with chamfers.
- District court instructed the jury to apply ordinary meaning; no specific construction for some terms; Bettcher asserted anticipation theories.
- Jury returned a non-infringement verdict; Bunzl moved for judgment as a matter of law or new trial on invalidity; these motions were denied.
- Inter partes reexamination was pursued by Bunzl; Right of Appeal Notice issued; § 315 estoppel became a central issue on appeal.
- Federal Circuit affirmance in part, vacatur in part, and remand, with a separate dissent by Judge Reyna arguing anticipation by Bettcher blades as a matter of law.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Anticipation by pre-1998 Bettcher blades | Bettcher argues chamfers cannot be bearing faces; pre-1998 blades fail to disclose bearing faces as claimed. | Bunzl contends chamfers inherently serve as bearing faces; thus anticipatory. | No judgment as a matter of law; substantial evidence supported non-anticipation. |
| New trial on anticipation | Bettcher contends district court erred by not adopting Bunzl's constructions and jury instruction on anticipation. | Bunzl asserts proper construction and instructions would have favored anticipation. | No new trial; instructions and evidence found adequate. |
| Estoppel under 35 U.S.C. § 315 | Bettcher argues § 315 estoppel attaches at the Right of Appeal Notice (earlier), excluding references. | Bunzl contends estoppel applies only after exhaustion of all appeals. | Estoppel applies after all appeal rights are exhausted; vacates denial of new trial on invalidity and remands for possible new trial on that basis. |
| Jury instruction on anticipation standard | Bettcher argues instruction stating anticipation requires no difference could mislead via inherency. | Bunzl argues the instruction was proper and consistent with precedent. | No reversible error; instruction not prejudicial given record evidence. |
| Infringement ruling and evidence | Bettcher challenges Stallion testimony and closing arguments as prejudicial to infringement finding. | Bunzl defends admissibility and relevance of opinion-of-counsel evidence; argues holdings were correct. | No new trial; district court's handling affirmed. |
Key Cases Cited
- In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997) (anticipation may rest on inherent disclosures; functional limitations need not be recognized)
- In re Cruciferous Sprout Litig., 301 F.3d 1343 (Fed. Cir. 2002) (inherency may not rely on probabilities; inherent function must be present)
- Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565 (Fed. Cir. 1991) (anticipation requires no difference as viewed by a person of ordinary skill in the art)
- NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005) (four-part test for errors in jury instructions and prejudice standard)
- Microsoft Corp. v. i4i Ltd. P'ship, 131 S. Ct. 2238 (2011) (strict standard for evaluating new evidence of invalidity; deference to Patent Office interpretations)