*1 certainly not follow does the dictates immunity grounds and for proceed- further Federal Rules Civil Procedure. ings See Fed. opinion.11 consistent with this 8(a) (“A pleading R.Civ.P. which sets forth
claim for ... relief shall contain ... a short plain claim_).” statement of the He
pled extensively facts repetitively in a However,
101-page complaint. as we have
noted, facts simply truckload are not
enough to plaintiffs meet a quali- burden on immunity.
fied ATD CORPORATION, Plaintiff- time, At the same certainly we are less Appellant, sanguine than about some of alleged actions taken University various officials. addition, In allegations of various viola- LYDALL, INC., Defendant/Cross- of University policy tions cause us some dis- Appellant. comfort. We do not know if we would have 97-1308, Nos. 97-1356.
reached the same result
the Hearing
reached, by
Committee
a close 3-2 vote.
United
Appeals,
States Court of
However,
earlier,
as we stated
Due
“[t]he
Federal Circuit.
Process Clause is not
guarantee
against
incorrect
personnel
or ill-advised
decisions.”
Oct.
1998.
Collins,
U.S.
As legal noted scholar Alexander Bickel
observed, highest “[T]he morality al- almost
ways is morality process.” Alexander Bickel, (1975). Morality of Consent 123 process described in Professor Tonko-
vich’s complaint, a hearing spanning nine conjunction
months in post-termi- with two remedies,
nation clearly comports with the
process required by the law our land. The
Due Process Clause does guarantee
the University of Kansas would reach a re-
sult with which agreed. Professor Tonkovich summary, we conclude that the district when it erred denied the defendants’
motions to dismiss qualified based on immu-
nity. We hold that each the individual
defendants is qualified entitled to immunity
on Professor § Tonkovich’s remaining
claims, i.e., violations of procedural pro- due
cess, process, substantive due equal pro- rights.
tection We REVERSE the district
court’s ruling to contrary and REMAND
the case district court with instruc-
tions to § dismiss the remaining 1983 claims
against the individual on qualified defendants Finally, deny
11. we pend- ing Professor Tonkovich's sur-reply. motion for leave to file a *3 Burns, Doane, Wieder, Swecker T.
Bruce Alexandria, VA, L.L.P., argued for Mathis, & brief him on the With plaintiff-appellant. Michaud, Jr., H. Eric G. Frederick Weisblatt, S. Jillions. and Ronni Lardner, Grossman, Foley & Barry L. DC, defendant-cross argued Washington, *4 brief was Wil- on appellant. Of counsel Sutro, Atkins, & Pillsbury Madison liam P. LLP. NEWMAN, RICH,
Before CLEVENGER, Judges. Circuit filed Circuit for the Opinion Separate opinion, NEWMAN. Judge dissenting part, part concurring Judge CLEVENGER. Circuit filed NEWMAN, Judge. Circuit PAULINE judg- the final Corporation appeals for District Court the United States ment holding the Michigan, the Eastern District No. Patents in suit United States claims (the 5,111,577 No. patent) and 5,011,743 ’743 Includ- (the “Pad both patent), entitled ’577 Ar- Insulation and Thermal Sink ing Heat affirm infringed. eas,” We invalid non-infringement and reverse rulings of Lydall’s cross- invalidity. On rulings of inequitable conduct we affirm appeal challenged eviden- was not established. sustained. rulings tiary
BACKGROUND insu- a flexible patent relates ’743 ther- sink and includes heat lating pad that described areas. It mal insulation spot” “hot providing for particularly useful insulation, primarily automo- is used com- prompt It achieved tive underbodies. ef- an economical acceptance, as mercial Two dissipating heat. structure ficient reproduced be- drawings are cross Fig. top 1 a view and Fig. low. pad: patented section (E.D.Mich.1997). WL 111783 Lydall, Corp. 1. ATD *5 The thermal insulation area 5 is made of said stack including at least one heat layers of metal foil 2 separated by sink gaps, air area and at least one thermal insulat- and ing adjacent the heat sink area area 4 is by area, formed said com- heat sink pressing edges layers of the layers. foil said providing The better heat condi- tion depressions in said at 6 vertical are “embossments,” called direction at said heat sink area than at area, insulating and said the dashed lines at 11 represent optional layers least two of layers of said including heat-resistant a scrim. plurality embossments separat- therein of Claims and of the patent ’743 are at ing layers said in said insulating area so issue, shown emphases with added to high- provide as to gaps therebetween, light disputed subject matter with re- one of layers said in said insulating area spect to infringement; all of the other claim being adjacent to and not metallurgically elements and limitations are conceded to be bonded to another one layers, of said present in the pads: accused said heat sink area comprising a com- pressed portion of said stack. pad 1. A including thermal insulation and 3. pad of claim wherein said heat sink heat areas comprising: sink area at partly least surrounds said plurality a layers of of metal foil forming insulating area layers and said in said heat a stack wherein layers said are arranged sink area are interengaged with each other one above another direction, in a vertical by securing means. layers which make plurality of of metal foil ’743 of the is a division ’577 pad flexible. said manufacture relates
patent, and 1, 11, 19 of the ’577 pad. Claims and Lydall contain heat sink pads The accused follows, emphases added to show with are as areas, insulating in accordance with and “embossments,” only point usages of pads are the same as the dispute. separat- Lydall layers foil are except that the mesh instead of ed knitted or woven insulating making a heat I. A method argues foil. ATD that due depressions areas, heat insulating and sink pad having applied during compression manu- forces comprising: facture, layers are “embossed” foil layers assembling plurality step of impressions intervening said in a stack wherein metal foil these “emboss- mesh. ATD states in a verti- above another arranged are one ments,” along with the mesh reach direction, at two said cal least foil, thus that adjacent layers of by plu- each other being separated from infringed, are product process claims one of on at least rality embossments doctrine of literally or in accordance with the layers; said equivalents. por- one step compressing at least patent infringement, Upon ATD’s suit for sink and that heat tion of said stack such non-infringe- raised the defenses therein with insulating areas formed ment, unenforceability. invalidity, On heat conduc- layers providing better said judgment, summary cross-motions at said heat direction tion said vertical Lydall’s motion that granted district court area, insulating than at said sink area infringement no not literal there was insulating in said embossments said *6 court also infringement. The district willful pro- layers so as to separating said area was not ATD’s that there granted motion therebetween; gap vide a prosecution inequitable conduct in layers to- step securing said a of ruled that there were patents. and The court area, securing heat said on the issue of gether said sink of fact genuine issues material layers in interengaging said step including equiva- of infringement doctrine under the validity; each other. issues sink area of these said heat with the issue lents and jury. jury The found that to a were tried insulating making a heat II. A method of the doctrine of infringe, under Lydall did not areas, heat sink having insulating and pad patent, nor the ’743 equivalents, claim 3 of comprising: 1, 5-7, 11, patent. 19 of the ’577 or claims layers assembling plurality a of step of infringe- the issue of jury The deadlocked on layers said foil in a wherein of metal stack 1 of the ’743 of claim by equivalents ment verti- another in a arranged one are above 1 that claims jury found patent. The also direction, layers two said at least cal of 1,11, and patent and claims and 3 of the ’743 by plu- each other being separated from prior on art. based 19 of the ’577 invalid one of on at least rality embossments of judgment accord- The district entered layers; and said post-trial motions. all ingly, and denied por- compressing at least one step of to it. rulings adverse appeals the Each side heat sink and stack that tion of said such insulating formed therein areas are I heat conduc- layers providing better said heat at said vertical direction tion said INFRINGEMENT LITERAL area, insulating than at said sink area literal of the issue of Determination insulating in said embossments said steps first con of infringement involves pro- layers as to separating so area said assigned claims, law a matter of struing the gap vide a therebetween. jury trial has or not a judge whether to the demanded, applying the con then 11, and said been of claim wherein The method 19. device, a factual claims accused assembling strued step comprises assembling 540 performed (Fed.Cir.1987) (claims determination the jury. See in light understood Instruments, Inc.,
Markman v. Westview
52
specification
they
of which
part).
are a
967, 976,
(Fed.
U.S.P.Q.2d 1321,
F.3d
34
specification
1326
When “the
explains and defines
Cir.1995) (in banc),
370,
aff'd,
517
a term
U.S.
116
used
ambiguity
without
1384,
(1996).
S.Ct.
incompleteness,
541 of claim 1 as preclude not the construction pattern of the emboss- a other include 6, separate with re- layers being requiring offset that the embossments ments at least some layers. Lydall points other such that out that for the em- spect to each in aligned embossments are not ATD uses mesh between bodiment which arrangement, vertical direction. With layers, specification shows that some foil point con- provided 2 layers can be by layers separated at least some therebet- minimize heat transfer tact point contact of the embossments. Non-as- A. in the vertical direction ween 14 dependent patent, claim of the ’743 serted 9-17; scrim, patent, layers ’577 patent, specifies col. lines which one or more ’743 court also The district incorporates col. lines 13-21. claim 1 limitation of at also correctly drawings, reviewed “layers including plurality a of em- least two showing “the emboss- them as described separating layers said bossments therein the various being raised reliefs on ments as provide insulating gaps area so as to said come layers that the embossments such therebetween.” adjacent layers point contact with direct pat- ’577 5 of the ’743 and (Figures separation ensuing ents.)” concluded that “emboss- The court provision insulating gaps arise from the require in the claims raised ments” as used point agree contact. Thus we that the cor separate adjacent of foil reliefs that interpretation of the claims suit is rect point contact. that, whether or not mesh is used between errone- ATD that the district court states layers, some of the foil embossments incorporated ously into the definition layers. separate at least some of the serve to in suit in the claims “embossments” of claim can not The doctrine differentiation “point contact” from structural feature of scope sup beyond the that is broaden claims patent, 11 of the ’743 non-asserted claim specification. De ported Multiform which reads: siccants, 1480, U.S.P.Q.2d at F.3d at pad said pad (“claim 11. The of claim wherein can not broaden differentiation of said em- and at least some is flexible scope”); Tandon beyond their correct claims side of depressions Comm’n, form on one bossments Int’l Trade Corp. v. United States bumps layers and respective one of said respective layer, opposite on an side said (Fed.Cir.1987) (“Whether or not claims differ point providing contact said embossments other, interpret not one can from each layers. between is contained in to be broader than what claim filed.”) added.) as specification and claims argues point (Emphasis separate differ presumption that claims have specification in the contact is described embodiment, rigid rule.” scope guide, “is a is not a ent simply preferred *8 States, America v. United Autogiro not it. Co. to the claims that do include limitation of U.S.P.Q. of embossments ATD that a definition 181 Ct.Cl. states (1967). by supported the point without contact is also specifications in ’577 description the ’743 and a layers wherein of heat- argues
of an embodiment that the ATD also district interposed scrim are be- resistant mesh or limitation improperly a method added that since layers. foil states interpreted tween the when it product claims generic is to the various embodi- claim 1 the embossments requiring claims as method specification, it was an in the ments shown the the metal sheets before to be made on claim to law to restrict the broadest error of assembly court held process. The district Fig. in wherein embodiment illustrated the specifications make clear that the “[t]he that point contact with are the embossments contemplated the as under ‘embossments’ layers. adjacent foil prior on the metal sheets patents are made (district court’s assembly process” any the mere fact that Lydall responds that very that “the ’577 is emphasis), and that specifically states non-asserted claim The pre-assembly on embossment.” point contact does clear are in the embossments specification pat- court cited the of ’577 bearing the separate lay- embossments that the ent: patent, ers. Claim 1 of the correctly ’743 interpreted, generically embraces the according
The method to the invention use of can mesh step layers, also some of the foil plurality include a of a between but embossing requires also layers of that embossments on plurality the such that a of some of the therein, layers the foil make contact sepa- embossments 6 are formed with and adjacent layers. rate embossing step being performed foil All of by simul- the claims of patents taneously require both embossing plurality of embossments that over- serve function, foil, lapping specifications sheets 2 of the metal and the each make of clear that this is step patented the sheets essential to the embossing com- after conclude, prising respective invention. layers. one We as did the The district of court, that provided embossments can “embossments” as be in a used ’743 random patents and ’577 repeated pattern. depressions or means uniform It also bumps scope separate gap within the of and form a the invention to emboss between separately. layers least of by each sheet some the foil point embossments provided by passing can be contact of the single adjacent embossments with sheet layers. pair applies This definition stack sheets between a to all the rollers of having claims in suit. pattern the desired embossment thereon. Application B. (district to Accused patent,
’577 Devices col. lines 32^44 court’s emphasis). give We plenary review to the district aspect product This is relevant to both the grant Lydall’s court’s summary motion for and the disput- method it was not judgment non-infringement, reapplying Lydall pad ed pattern impres- summary adjudication standard for produced sions is on the metal after foil applied by the district court. foil is layers, by compression assembled into (discontin Lydall’s original product against the foil the intervening mesh. The 1995) ued after June included an specifications outer make clear that the “emboss- layer of metal pattern” foil with a “decorative ments” of the ’743 ’577 patents are ensuing product relief. The did not in “something ‘impressions’ more than on the clude pattern this outer in relief. The court layers of the foil merely surface which are found that “projected these ‘incidental,’” indentations out in the district court’s words. ward, only i.e., they provide did point require claims that the “embossments” — adjacent contact with interior lay solid metal deep be enough separate adjacent ers, they provide nor did gaps foil; between the layers product claims are not layers.” The court although held that these dependent on how the embossments are layers outer made, ordinary “embossed” and were not construed otherwise. word, usage they did not contain “em- Upon plenary review we confirm the dis- bossments” meaning within that term trict court’s claim construction. The ’743 patents. in the agree We that no reasonable specifications and ’577 show and the claims jury could have found otherwise. require that insulating gap between at least some of the metal foil is formed Lydall product the metal foil space the embossments that apart separated the foil each layer an intervening *9 layers. In patent specifications the pres- the metal mesh. pressed When the mesh is be- ence making of embossments with layers contact tween during the assembly foil the adjacent layers separate of foil to layers process, the patterned is created a there impres- is aspect described as a material of the inven- sion of the mesh on the smooth metal foil tion. The use of a mesh or scrim between sheets. Applying construed, the claims as layers, some the of even without “emboss- the district court found that these impres- layers, ments” in those does not defeat the sions do not constitute “embossments” as requirement of even the broadest claims that that term is ATD used the and that pad the contain at least two layers Lydall of foil the impressions “merely are inciden- infringement no literal was judgment sur- of the mesh the contact of
tal to the properly granted. court layers.” The the metal district face of Lydall product it is the in the found that II layers the and creates separates that
mesh not the embossed insulating gap, and the EQUIVALENTS BY INFRINGEMENT foil in the metal depressions that are formed infringement in against question the mesh. The The terms pressed it is where equivalents given was no contact was point found that there of the doctrine of court layers, jury. as the court Lydall required the the district construed the between construction, “embossments,” Jury metal “[t]he claim term Instruction No. court’s all contact between the prevents in fact as follows: mesh con- layers.” court adjacent metal sheet are instructed that emboss- 25.... You there were no emboss- that because cluded patterns purposefully created ments are contact, summary point providing ments layers directly on individual foil formed ap- infringement was of no literal judgment produced depressions on one side of a that limitation of an essential propriate because bumps projections respective layer and accused absent from the the claims was respective lay- the opposite on the side of and method. structure projections The embossments create er. adja- providing point contact with direct Lydall argues that the ATD embossments must be layers. cent The embossments requirement of em- literally meet the claims’ separate layers the large enough to and bossments, only plain meaning in the layers. provide between the gaps “emboss,” Lydall em- but also because the court argues to ATD the district incorrect along with the mesh contribute bossments claims, thereby distorting layers. ly construed the gaps the foil the between non-infringement jury’s finding a limitation the point contact is not stresses jury suit, basis for the ver presence providing an incorrect and that to the claims Corp. v. Surgical foil dict. See United States wire mesh between the Ethicon, infringe- Lydall product does not avoid literal (Fed.Cir.1997) (review 1225, 1236 U.S.P.Q.2d are on the because there embossments ment jury in accordance ing whether verdict was Lydall layers. argues ATD also that the foil construction). As we have with correct claim of whether embossments issue discussed, court’s construction gap district to the between the contribute correctly fact that the term included presents question of material “embossments” foil point requirement of contact. summarily against not be resolved could ATD, question. requests trial this jury equivalency On the issue of instructed follows: as Lydall prod- disputed that in the is not It equiva- ... the doctrine 27. Under is no between uct and method there contact lents, there are you must find that insub- lay- impressed pattern on the foil relief between the stantial differences ers, any adjacent layer. are no There product alleged infringing claims “embossments,” we and the district making product. or method of patents, to as used in the the term construe may consider whether the de- regard, you layers. separation separate foil This (1) performs product or method fendant’s the as- express an limitation of function (2) in sub- substantially function the same from claims. In view of its absence serted (3) way produce stantially same method, product no reason- accused when substantially the same result com- jury have that the asserted could found able product or patented pared plaintiffs literally infringed claims method, may though they differ even Cole, F.3d at product or method. See name, shape form. (affirming sum- at 1007 *10 does not product or method As non-infringement when “ac- accused mary ruling of equivalents infringe the doctrine of the under products literally meet all do cused limitations”). function and achieves the Therefore, summary performs if it claim substantially way result in a important part different than the most ATD inven- record, the claimed invention. Reviewing tion. we conclude that support there is substantial evidence to equivalents The doctrine of does not in- jury application infringement verdict that there is not volve the of a formula and is equivalents.2 not an absolute to be considered in a vacu- under the doctrine of That Rather, question um. of whether one judgment is affirmed.
component allegedly infringing product equivalent an method is ele- Ill patented ment in the claim is a factual requires you matter. It to consider the PATENT VALIDITY context of the claim. Your entire answer depend upon drawings will and written jury verdict was that claims 1 description, patent application history, 1,11, and 3 of the ’743 and claims prior art and all the circumstances of 19 of the ’577 were invalid based on this case. prior art. The district court judg entered
[*]
[*]
[*]
[*]
ment
to ascertain
accordingly.3
whether the
The evidence is reviewed
jury’s express
implicit
Other factors to be considered in
findings
supported by
deter-
factual
mining infringement
is the known
evidence,
inter-
legal
substantial
and whether the
changeability of the accused and claimed
represented by
conclusion
the verdict was
objective technological
elements or other
adequately
supported findings,
based on
ac
demonstrating
evidence
that the substitute
companied by
application
correct
of the law
represents
change
nevertheless
that one
to the
Shatterproof
Corp.
facts. See
Glass
ordinary
skill
the art would have
Co.,
Libbey-Owens
613, 619,
Ford
758 F.2d
considered “insubstantial” at the time of
(Fed.Cir.1985)
634,
(“In
U.S.P.Q.
re
infringement.
copying
Evidence of
viewing
denying
a decision
judg
motion for
“designing
evidence of
around” are also
verdict,
ment notwithstanding the
we do not
relevant
question
infringement
approach the issues as if there had been no
equivalents.
under the doctrine of
whole,
trial. We review the evidence as a
infringement
The issue of
under the doctrine
and ascertain whether the
verdict is
accor
equivalents
fully
litigated.
One of
law,
dance with
and whether there was sub
Lydall’s expert witnesses testified that
support
stantial
jury’s
evidence
Lydall
substantially
mesh is
different from verdict.”)
doing,
any
In so
we resolve
dis
embossments. He testified that
puted facts and draw all reasonable factual
although
Lydall
mesh and the ATD em-
jury
inferences in favor of the
verdict. Rich
perform
separating
bossments
the function of
Co.,
1226,
ardson v. Suzuki Motor
layers, they
substantially
the foil
do so
(Fed.Cir.1989);
ways, leading
substantially
different
differ- DMI,
Co.,
421, 425,
Inc. v. Deere &
According
Lydall’s
ent results.
expert,
(Fed.Cir.1986).
U.S.P.Q.
278-79
Lydall
preserves
the use of the
mesh
sheet
Although the verdict form
reflectivity
greater
did not state the
and results
crush resis-
tance,
ground
jury relied,
on which
providing advantages
as well as differ-
had
disputed
grounds
anticipation
ences. ATD
raised
this evidence and
both
and obvi-
significance,
ousness,
parties
argued
and stressed that
used
and the
have
both of
insulator,
the combination of a heat sink
grounds
appeal.
these
on
opinion
2.
concurring/dissenting
Although
judgment
draws anal-
3.
we have affirmed the
ogy
styled
'Technologies.
to a case
Vehicular
non-infringement we review the merits of the
However, the cases are not the same.
In the
judgment
invalidity,
in accordance with Cardi-
case at bar the function of the embossments
Int'l,
nal Chem. Co. v. Morton
508 U.S.
separating
is stated in the
(1993).
113 S.Ct.
545 The ASTM Pub. C 740-82 entitled Stan- Anticipation for Insu- dard Practice Evacuated Reflective anticipa for A is invalid Service, Cryogenic lation in describes an in- method, having tion when the same device multiple layers sulator made from of metal limitations contained of the elements and all foil, layers having foil embossments claims, single prior described in a in the separate layers gaps and form air be- Richardson, 1236, 868 F.2d at reference. art layers. tween the This reference does 1920; Corp. v. U.S.P.Q.2d at Perkin-Elmer 9 layers compressing show to form heat 888, 894, 221 Corp., Computervision sinks, against compression of and cautions (Fed.Cir.1984). U.S.P.Q. An antici layers. of the two refer- Neither ASTM patented pating must describe the reference compressed layers ences shows of foil creat- clarity subject with sufficient and de matter ing accompanying sink areas the insu- heat subject matter exist tail to establish that the lating areas. recognized by existence was ed and that its al., by Swalley The article F.E. et entitled ordinary persons skill the field Design High-Per- Practical Problems in Spada, re invention. See In Multilayer System for formance Insulation (Fed.Cir.1990); U.S.P.Q.2d Cryogenio Cryogenic Stages, Advances Corp. Century Steps, Diversitech (1965), Vol. 10 at 208 describes Engineering, (Fed.Cir. F.2d multilayer system cryogenic insulation for 1988). references, seven as relied on stages, again showing projections space to follows: layers apart, but not show com- does ar- pressed layers creating of foil heat sink 126,780, enti- U.K. Patent No. The Collier eas. in or connected with the Improvements tled al., by Stimpson enti- The article L.D. et or like ob- of Boxes or Cases Construction Multilayer Predicting Spacecraft tled Insu- Floors, Roofs, Walls, jects Parti- lation Performance from Heat Transfer Railway other Parts of or other tions or Measurements, Heat Transmission Mea- objects, in the or like was cited Vehicles Insulations, ASTM in Thermal surements Collier, prosecution patent. of the ’743 dis- (1974), multilayer in- STP 544 is directed cars, railway cussing insulation of shows spacecraft. It describes sulation blankets projections separate met- use of embossed multilayered insulation as “a series of radia- insulation, layers but does not describe al for low-conductivity spacers.” tion with shields areas, required heat sink as foil not discuss the substance of the does by each of the claims. brief, agree and we Stimpson article utility model German Meekenstock Stimpson ATD that does not disclose parts gas-exhausting for shows a heat shield insulating together with a heat sink an area vehicles. Meekenstock describes of motor area. plates, at one of two sheet metal least the use 4,489,852 Patent No. Logan et al. U.S including projections separate of them utensil, cooking such as a cookie describes required plates, shows no foil as but sheet, pro- construction “of a double walled claims. by each of the insulating layer or volume of air viding an therebetween,” but not show a stack does (American Society Testing for The ASTM layers as called for the claims. foil Materials) 667-80, entitled Standard Pub. C stipulated Logan et al. “do not parties Practice for Prefabricated Recommended every of the claims of the disclose element Systems Equipment for Reflective Insulation arranged as in the claims.” patents Operating Temperatures Above Pipe the crite- Air, of these references meets rigid inner and None Ambient describes liners, anticipation, none show the combi- which ria of protecting embossed outer case insulating layers and embossed not show nation of may be foil. The reference does areas, There was not compressed heat sink areas. sink compressed foil to form heat support a verdict of evidence to and cautions substantial required each of the anticipation. invalidity based on of the liners. against such deformation *12 546 supporting evidence the obviousness
Obviousness determi- nation, conclusory opinion other than the of legal is a conclusion Obviousness expert witness. general underlying based on facts of four types, by must be considered the all of which embossments, We observe similar in (1) scope trier of fact: the and content of the general shape patents, to those of the ATD (2) art; ordinary prior the level of skill in the space insulating layers have been used to of (3) art; the differences between the claimed However, various forms. some of the cited (4) art; prior any invention and the against compressing references cautioned the objective indicia of nonobviousness. See insulator, multilayer in a and none Co., 1, 17-18, v. John Deere 383 U.S. Graham compressing insulating layers showed the to 684, (1966); 15 86 S.Ct. L.Ed.2d 545 Conti patented form heat sink as in the device USA, Co., nental Inc. v. Can Co. Monsanto and method. does not direct us to 1264, 1270, 1746, USPQ2d 948 F.2d 20 1750 any teaching suggestion evidence of a or to (Fed.Cir.1991); Corp. v. Panduit Dennison components select the that ATD’s inventors Co., 1561, 1566-68, Mfg. 1 810 F.2d selected, from the crowded field of insulation (Fed.Cir.1987). 1593, 1595-97 U.S.P.Q.2d technology, produce product to the and meth- patents. Lydall’s od of the ’743 and ’577 of
Determination obviousness can expressed witnesses themselves the view that hindsight not be on the based combination of undesirable, compression such pro- would be components selectively prior from culled the viding cogent ordinary of evidence that one parameters patented art to fit the the skill would not have deemed it obvious to teaching sug invention. There must be a or art, compress the gestion prior insulating within of an device the or within the purposes. for heat sink general knowledge person ordinary of a Absent substantial invention, teaching evidence of such suggestion skill the field of the to or look to information, particular prior the art or in general knowledge sources of to select elements, particular persons field, ordinary to skill in combine them there way they by support were combined the inventor. was not substantial evidence to Heidelberger jury’s See Druckmasckinen v. AG verdict obviousness. It was undis- Prods., Inc., Hantscho Commercial 21 puted product F.3d that the met an unsolved need (Fed. quickly adopted by the automotive Cir.1994) (“When patented invention is industry, this commercial weigh- success also components combining made known ing against obviousness. system, prior achieve a new art must Because there was not substantial evidence provide suggestion or motivation to make supporting ground the verdict on the of ei- Telecom, combination.”); such a Northern obviousness, anticipation ther judg- or Datapoint Corp.,
Inc. v. invalidity ment of is reversed. (Fed.Cir.1990) (the 15 U.S.P.Q.2d prior art suggest ordinary must to one of IV desirability
skill in the art the of the claimed composition); Planning Corp. Interconnect INEQUITABLE CONDUCT Feil, 1132, 1143, U.S.P.Q. (Fed.Cir.1985). 543, 551 patent ap Determination that a plicant engaged in inequitable conduct before argues
ATD
that there was not sub
the Patent and
requires,
Trademark Office
support
finding
stantial evidence to
that the
fact,
findings
appli
threshold
both that
prior art
teaching
suggestion
contained
cant failed to
portions
disclose material information to
prior
combine selected
art
PTO,
patented
thereby
and that he
order to create the
structure or
intended
jury
argues
method.
mislead
deceive the
examiner into
must
patent.
improperly
hindsight
granting
Materiality
have
reasoned with
of the non-
information,
intent,
accomplishment. Lydall
of ATD’s successful
culpable
disclosed
group
relied on the same
convincing
references as for must be established
clear and
However,
anticipation.
established,
points to no
When
evidence.
these facts are
1992)4
(Rev.14,
weigh
findings
§
will
M.P.E.P.
the court
and their
Nov.
a refer-
decide,
premises
in the court’s
required
exercise
ence is not
to be
resubmitted
discretion,
prosecuting
whether
to hold the
application:
a divisional
*13
Kingsdown
unenforceable.
Medical Consul-
§
patent
....
609
examiner will con-
tants,
Inc.,
867,
Ltd. v. Hollister
863 F.2d
sider information cited or submitted to the
(Fed.Cir.1988)
872,
1384,
U.S.P.Q.2d
9
1389
in
parent application
Office
a
when exam-
(in banc). We review the district court’s
ining continuing application,
and a list of
ruling
inequitable
on the ultimate issue of
the information need not be submitted in
conduct on the standard of abuse of discre-
continuing application
applicant
unless
tion,
876,
Kingsdown,
Lydall argued during prosecution that counterparts, prosecution that is to material application the ’577 divisional ATD withheld in the foreign United States. The details of 2,212,481 Sendzimir, U.S. Patent No. prosecution category are not an additional report prosecution well as a search PCT material information. See Molins PLC v. applying records Textron, Sendzimir to the corre- 1172, 1180, sponding application. Lydall argues (Fed.Cir.1995) PCT 1823, 1828 U.S.P.Q.2d (duty to inequitable that this in prosecuting conduct cite material arising references in related patent parent pat- the ’577 “infects” the ’743 foreign applications). ent, patents both should be held discern no clear error in We the district
unenforceable. ruling court’s that because the Sendzimir patent
The Sendzimir
was
parent
cited
reference was of record in the
’743
prosecution
patent.
application,
of the ’743
Thus
§
and because M.P.E.P.
district court found that ATD’s failure to
states that the information need not be re-
provide
submitted,
during
the Sendzimir information
there was not clear and convinc-
prosecution
ing
withholding
’577 divisional
evidence
material
convincing
not clear
summary judgment
evidence of intent to
intent to
deceive. The
deceive, observing
inequitable
accordance with
no
conduct is affirmed.
(Rev.3,
1997).
subsequent-
ly
July
§
4. Further elaboration of the rule was
made. See M.P.E.P. 609
claim,
patent. Lydall’s response, for each
V
position
Lydall retained that
was “Denied.”
RULINGS
EVIDENTIARY
discovery.
for five months after the close
Evidentiary rulings,
appeal-
when
trial,
Twenty-nine days
the start of
before
able,
“Denied,
under the criteria
are reviewed
Lydall changed
responses
ex-
circuit,
evidentiary
unless the
issue
regional
expand-
cept as to shields made with twisted
litigation and thus
unique
law or
tardy change
metal mesh.” Based on this
ed
uniformity.
national
See
would benefit from
position ATD
in limine to exclude
moved
Co.,
Bend
National Presto v. West
Lydall patent. The motion
evidence of the
n. 2
trial,
1188 n.
day
on the first
was denied
*14
(Fed.Cir.1996) (“On procedural matters not
stating
court
that Fed.R.Civ.P. 36
district
exclusively
admission,
as
unique to the areas that
party
a
binds a
to an
but not to
Circuit,
law of the
signed to the Federal
denial.
applied.”)
regional circuit shall be
Lydall presented
patent
showing
its
applied
is
The abuse of discretion standard
patentable by
products were deemed
that its
evidentiary rulings in the Sixth
to review of
Office, despite
ATD
the Patent
citation of the
Circuit,
sys
in
generally
as it is
the federal
comparative
in the
patents, and for the
data
Elec.
E.g.,
tem.
Schrand v. Federal Pacific
superiority of
Lydall
which showed
(6th Cir.1988)
Co.,
156-57
product.
products
accused
over the ATD
(“This
applies an
of discretion
court
abuse
Lydall presented five witnesses on these is-
reviewing
decisions of a trial
standard
sues,
complaint
giving substance to ATD’s
evidence.”)
court on the admission of
deliberately tardy
about the tactics of the
addition,
provides,
Fed.R.Civ.P. 61
“No error
ATD states that
identification of this issue.
or the exclusion of
either the admission
by this tactic it was denied reasonable time
granting a
ground
...
is
for
new
evidence
data,
investigate
depose
and its
setting
a verdict ... unless
trial or for
aside
witnesses,
contrary
Lydall’s
present
evi-
appears
refusal to take such action
surprised,
ATD
that
it
dence.
states
justice.”
court inconsistent
substantial
with
ambushed,
severely prejudiced.
See
Schrand,
be found not to have been lative, fact supra § 103.41 Miller evidence, neously admitted evidence Weinstein overwhelming. See (“erroneous already & Kane, (6) be avoided prejudice may had [5] whether admission of evidence [a]-[h]; been shown supra § other evidence see also was 2885 [Rule prejudicial merely & admissible BERGER, Wright, cumu- 61] if by a may Patent No. evidence of Lydall court’s refusal to allow designated excluded the did Lydall cross-appeals not 2,037,813 invalidity discovery period. produce Munters (the B Lydall the reference ATD’s Munters patent to patents. the district present patent) because during U.S. instruction”). curative record, According to the on Decem gave Lydall identify it The district court noted 1994 ATD asked ber jury concerning limiting Lydall instruction each document considered to relate Lydall patent: validity invalidity patents. Lydall patent not the Munters in its did list patent, there is an issued 23. Where reply January Subsequently, 1995. patent for a later issuance of device interrogatories ATD served additional presumption raises no of nonin- method Lydall identify requests, asking document previously patent. fringement of the issued prior art of which it was aware. did may You consider the later issued any response. Munters list the your give it the decision *16 extension, Following discovery an closed on weight, you keep must in appropriate but 1, 1995, Ly- August 1995. On December improvements and mind that even where Art ATD with a “Notice of Prior dall served separately patentable, modifications listing § Pursuant to 35 U.S.C. 282” the may improved the device or method still patent. month before Munters This was one previously pat- infringe the issued pretrial conference. Re first rescheduled ents. submission, jecting explained: the court the may patented A later device or method to the steps I want the record to be clear as elements or be- include additional oppor- denying Lydall that I am the basis yond those claimed in the earlier issued tunity prior to use that art at trial. The patented if or patent. But the later device not relevance. The basis is not every basis is contains each and element of method any evidentiary ruling as to the value of patent, an a claim of the earlier issued or prior simply I’m art. The basis is any literally in- equivalent of element not cluded, exercising my under the rule of discretion then that claim of the earlier issued to the Federal Rules of Civil Procedure infringed. preclude party relying from on theories instruction, however, did not relate to This the not made available or not disclosed to inability present a ATD’s asserted defense opposing side. Lydall patent. on the substance of the although pat- Munters states that trial rec- Following a careful review of the any response ent was not disclosed in ord, request for a grant we do not ATD’s discovery requests during or the discov- Considering emphasis ATD’s on new trial. period, ery it should not have been excluded separate use of embossed foil it was disclosed in accordance with because layers, of metal scrim in both and use § 35 U.S.C. 282: prior art one or two of the and between involving § the validi- in emboss- 282.... actions ATD outer addition to the party ments, ty infringement patent, of a that in view of the or we are convinced invalidity noninfringement jury asserting correctly a reasonable construed pleadings infringe- give shall notice other- either literal could have found writing party to the adverse at wise infringement ment or under the doctrine trial, thirty days objective least before the provision section 282’s number, date, country, and name of the prevent advance notice is to unfair and title, date, patentee any patent, prejudicial surprise by production page any publication numbers of to be unexpected unprepared-for prior art upon anticipation relied end, at references trial. To this section suit.... In the absence of such notice 282 is to be read with the Federal Rules of proof may of said matters not be made at Civil Procedure. except the trial on such terms as the court 879,229 (citations U.S.P.Q. F.2d at 672
requires.... omitted). purpose § like that of Rules, the Federal prevent is to unfair and Lydall argues § any 282 overrides dis- prejudicial surprise, not to facilitate last-min- covery schedule set under the Federal Rules production ute of evidence. The district Procedure, of Civil because these Rules court in the instant case was well within its § instituted in 1938 whereas 282 was reen- discretion in excluding patent, the Munters part acted as of the 1952 Patent Act. P.J. for the record shows that offered no Federico, commenting on the 1952 Patent justify reason to its submission long after the Act, reported broad, relationship discovery. close of The solid entrenchment ambiguous terms: of the Federal Rules principles and the paragraph The last relating of section 282 orderly discovery weigh heavily against Ly- giving of notice of various details argument § dall’s governs the re- relating to certain defenses is on based quirement prior despite of notice of art part paragraph of the last of old R.S. discovery procedures, elaborate interrogato- provision modifications. The old was ries, explicit directives which the trial superseded fact the Federal Rules of managed. but, Civil Procedure [28 as modi- U.S.C.A.] Costs fied, has been reinstated. Costs against Lydall. are taxed See Fed. Federico, Commentary P.J. on the New Pat 39; R.App. P. Fed. Cir. R. 39. (1954),reprinted, ent Act in 75 J. Pat. TRADE (1993). Since AFFIRMED-IN-PART Soc’y RE- Off. MARK squarely matter has not been resolved. VERSED-IN-PART. *17 In King Corp. Thermo v. Trucking White’s CLEVENGER, Judge, Circuit Serv., Inc., concurring 668, 674, 292 U.S.P.Q. F.2d 130 part in (5th dissenting part. 90, Cir.1961), 94 that court to referred § “coexisting” 282 as with the Federal Rules. agree I with the conclusions that the agree However, they We that coexist. when claims in infringed, suit are not either literal- the parties court has set the agreed have ly by equivalents, and are not invalid for discovery period, to a procedure that neces anticipation or agree obviousness. I also sarily governs that although trial. Thus that the claims in suit are not unenforceable § a period 282 sets minimum for the identifi conduct, inequitable for and that no error prior cation of art to be introduced as evi challenged evidentiary rulings. infects the I anticipation, specific judicial dence of di separately points write to indicate a few rective timing discovery for the establishes disagreement path as to the followed the procedures the parties to which the conclusions, court to the highlight and to the bound. point interpretation, the claim with agree, which I infringe- drives both of the Corp. Appliance Corp., Eaton v. Valves ment conclusions. (Fed.Cir.1986) U.S.P.Q. 229 could, this court held that the trial court infringement There is no in this case be- discretion, its allow into evidence a reference cause the accused devices lack embossments thirty days was not disclosed at least separate adjacent that make contact with and despite § advance layers. for in that it case was foil The claims recite “embossments patentee surprised clear that the was not separating layers.” therein said The claim prejudiced: was not language speak point itself does not con- Corp. Lydall, v. contact, matter. ATD nondisclosed by point as Separation tact. 94-CV-74320, demonstrates, Inc., slip op. at 43-46 is em- No. opinion amply court’s 1995) (E.D.Mich. (Opinion description. The and Order Jan. in the written phasized Summary Judgment). properly for Regarding is thus Motions claim term “embossments” Instead, hinged separa- its decision function of the district require understood in- proof requisite on the absence by point contact. tion I thus would not dwell Id. tent deceive. in this analysis interpretation The claim court, materiality, as does the on the issue of in Ve- recent decision follows from our case simply affirm the district but instead would Corp. v. Titan Wheel Technologies hicular ground. on its stated court decision 1084, U.S.P.Q.2d Int’l, Inc., (Fed.Cir.1998). case, key claim In that the court’s view that disagree I springs in for two concentric language called applied an incorrect standard district court descrip- assembly, the written spring opinion In the trial motion. to test new spring second clearly required that the tion motion, denying the Rule 59 order spring function. We held back-up have law that set the same trial court out back-up Technologies that Vehicular ATD governing. Compare court states is spring affects function of second Corp. Lydall, paten- equivalents available range of (E.D.Mich.1997) *3 1997 WL case, it is in this Id. at 1091. So tee. Maj. Op. The trial court with the at 549. Here, interpretation claim the same well. law and deter- applied then that “correct” func- analysis requires the embossments to alleged improper admission of mined that the contact, requirement a claim point tion not affect the substantial Lydall’s did equivalents. range that likewise affects ADT, sufficient other evi- rights of because juror analysis, no reasonable Because of this jury to sustain dence was before claim 1 of the ’743 infringement of could find noninfringement by equivalents. verdict As equivalents. the doctrine of under U.S.P.Q.2d at In a Corp., 1173-79. notes, on that jury deadlocked the court of the discussion of footnote at the end pre- The issue was infringement question. issue, opinion merely com- the district court’s by post-verdict motions for served below if there had been error ments that even law, pre- and ADT judgment as a matter of Lydall’s patent, the error would admitting appeal by challenging the issue on serves the at 1175 n. 6. That have harmless. Id. been on the for a new trial denial of its motion legal to the correct comment is unrelated infringement by equivalents. question that the district court used de- standard equiv not remand the deadlocked We need motion, and cannot form cide the Rule 59 issue, however, the claim as because alents court. predicate criticism of the district to achieve interpreted requires point contact *18 join to tax Finally, I the decision do infringe A layers. claim separation speaks Lydall. Although the court costs to cannot succeed unless equivalents ment trial, harshly Lydall’s conduct at redress equiv an of a claim is met each limitation properly lies in the trial court conduct v. Hilton Co. alent. Warner-Jenkinson court, any I am unaware of trial not here. Co., 17, 117 S.Ct. 520 U.S. Davis Chem. Lydall. impose costs on reason to (1997) (adopting sub silentio 137 L.Ed.2d Corp. v. Pennwalt “all elements” rule of land, Durand-Way banc)). (in (Fed.Cir.1987)
U.S.P.Q.2d 1737 any equiva lack the accused devices
Because contact, they point
lent to the function of matter of law. infringe claim 1 as a
cannot at 1090. Technologies 141 F.3d Vehicular
See inequitable regard to the issue
With
conduct, explicit court made the district no allegedly materiality
ruling on