Woods v. Deangelo Marine Exhaust, Inc.
692 F.3d 1272
Fed. Cir.2012Background
- DeAngelo appeals a jury verdict finding Woods’ patents valid and infringed, challenging JMOL denials and district court rulings on discovery and claim construction.
- The patents cover water jacketed marine exhaust systems with tapered inner and outer liners to improve cooling and reduce water migration and corrosion.
- Woods’ patents ’670 and ’633 were issued from the CIP lineage beginning with the ’097 application and later the ’821/’633 route, with MES holding exclusive licenses.
- MES sought sanctions for DeAngelo’s late disclosure of prior-art drawings found February 8, 2010, and the district court excluded those drawings under Rule 37(c) after ruling Rule 26(e) violations.
- A two-week jury trial began April 5, 2010; discovery closed February 9, 2010; the court denied DeAngelo’s JMOL motions and Rule 11 sanctions, and this appeal followed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Exclusion of drawings as Rule 26(e) violation | DeAngelo argues timely disclosure within 30 days, supplement proper | MES contends late/supplement improper and prejudicial | District court did not abuse discretion; exclusion affirmed |
| Claim construction accuracy | District court imposed improper limitations on terms like elongated outer shell | Construing terms would read in required limitations | District court’s constructions affirmed |
| Obviousness/Validity JMOL denial | Prior art fully anticipated claims or shows obviousness; excluded drawings undermine case | Prior art lacks tapered inner liner; KSR framework applied | JMOL denial upheld; jury findings sustained |
| Non-infringement JMOL denial | Evidence (drawings) insufficient to prove lack of infringement; hose bead induces taper | Notched diffusers infringe as shown by testimony and Key Marine Riser | denial of JMOL of non-infringement affirmed |
| Rule 11 sanctions consideration | MES conducted sufficient pre-suit investigation with photographs | Judin v. U.S. requires closer inspection/access to devices | Rule 11 sanctions not warranted; no abuse of discretion |
Key Cases Cited
- Cybor Corp. v. Fas Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (claims construction reviewed de novo; legal questions emphasized)
- O2 Micro Int’l Ltd. v. Monolithic Power Sys., 467 F.3d 1355 (Fed. Cir. 2006) (law of patent-unique issues; standard on obviousness and evidence)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claim terms given ordinary meaning; avoid reading limitations from embodiments)
- Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363 (Fed. Cir. 2008) (requirement to supplement defenses; 282 and 26(e) interplay)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (Supreme Court 2007) (obviousness analysis is a common-sense, flexibly applied test)
- Graham v. John Deere Co., 383 U.S. 1 (Supreme Court 1966) (framework for determining obviousness (Graham factors))
- TorPharm, Inc. v. Ranbaxy Pharmaceuticals, Inc., 336 F.3d 1322 (Fed. Cir. 2003) (acquiescence theories require more than mere presence of a limitation)
- Judin v. United States, 110 F.3d 780 (Fed. Cir. 1997) (observations alone may not constitute adequate pre-suit investigation)