*1 determine defendant below whether has showing by
carried its clear and burden of
convincing that the claimed evidence inven-
tion would obvious under have been section appropri-
103. If court deems the district it
ate, may evidence. elicit new remand,
On the district court should also presented, issues
address the other e.g., 102(f) defense, section
“overclaiming,” the infringement, and should enter accordingly. way, That we need not
remand the should we reverse the on, appeal, in future e.g., often,
determination of obviousness. Too
district courts resolve one of a number and, presented
of issues when reversed on issue, retry forced the remain- is, balance,
der of the case. retrial Such judicial process.
an inefficient use of the can, example, duplication
It involve testimony
much of and evidence
presented at the first trial.37
VACATED REMANDED AND Baldwin, Circuit Senior filed
concurring opinion. LABORATORIES, INC., BIO-RAD
etc., Appellant,
NICOLET INSTRUMENT
CORPORATION, etc.,
Appellee.
Appeal No. 86-840. Appeals,
United States Court of
Federal Circuit.
Dec. See, e.g., Stratoflex, 713 F.2d at *2 Sheran, Lindquist
Robert Vennum, J. & Minneapolis, Minn., argued, appellee. brief, With him on was Robert J. Sheran. FRIEDMAN, Before Circuit BALDWIN, NICHOLS and Senior Circuit Judges.*
FRIEDMAN,
Judge.
Circuit
case,
The sole
in
appeal
issue
this
here on
from an
order
the United States District
Court for the Northern District of Califor
nia, is whether the
improperly
limited
the amount
interest award
prevailing plaintiff
ed to the
in a
suit.
The award of
pursuant
was made
to our
in
remand
appeal
earlier
this case. Bio-Rad Labor
atories,
Corp.,
Inc. Nicolet Instrument
604,
(Fed.Cir.),
denied,
1038,
516,
cert.
U.S.
(1984).
I A. appellant June Bio-Rad Lab- oratories, (Bio-Rad) appellee informed Corporation (Nicolet) Nicolet Instrument epitaxial Nicolet’s “MX-ECO” thick- gauge, an rapid- ness electronic device that crystalline layer measures surface semi-conductors, on which Nicolet had be- selling in gun appeared infringe 3,319,515, Patent No. U.S. which Bio- was the Rad exclusive licensee. Bio-Rad infringing demanded that Nicolet cease all activities. infringement,
Nicolet denied disputed validity patent, and continued its parties exchanged activities. The conten- 4,1980, through August tions letters dated September and October dispute. were unable resolve the Bio-Rad filed suit on June 1981. At Cook, Roger Townsend, conference, L. Townsend & the first status held in Novem- Francisco, Cal., argued, appellant. San schedule estab- ber was brief, Seka, Georg him J. With were lished and trial was scheduled for October During discovery, David N. Barr. 1982. resist- Slone Robert * Judge took Baldwin senior on November producing $737,074
ed a number documents—the sulted through ambiguous regarding record is se- June quence par- of actions counsel for apparently Nicolet presented no evidence ties, judge, magistrate argument regarding appropriate pre- charge discovery. Although judgment interest, urged but instead alleges wrongfully withheld that Bio-Rad deny trial court to or reduce Bio-Rad’s *3 produced, documents that were ordered Ni- judgment interest because of Bio-Rad’s re- colet did and the did not not seek court producing in calcitrance documents before impose for sanctions Bio-Rad’s conduct. during and the trial. jury Judge 44-day After a trial before order, aIn brief the district court award- Burke, assigned to whom the case was four ed Bio-Rad interest for a nine- days 5, began trial before the on October period, upon month based “the California 1982, jury pat- the found all claims of the prejudgment interest, 7%, rate of state un- infringed, ent valid and and Bio- awarded $161,595. compounded,” of The court $3,078,000 damages. Rad compensatory in following findings made the explaining the judgment moved notwithstand- basis that award: ing verdict, the a alternatively for new (1) during Bio-Rad’s conduct trial, pat- and to deny enforcement of the delays led in bringing unreasonable ent for misuse. trial court denied all case in entry to trial and motions, three entered judgment and ment; (2) delays, but for those trial the verdict January effective case could commenced in nine have granted court postjudgment but denied months, rather in the approximately than judgment interest. period actually 15 month from consumed prior appeal, we affirmed dis- filing Complaint on June 1981 trict judgment court’s in all respects until of trial on commencement October than the denial 5], judgment 1982 and could there- [sic: We vacated that denial and remanded to earlier; (3) fore have been entered all but prejudg- district court “for an award of spent months of the time in ment interest or a determination some prosecuting the commence- specific justification denying pre- exists for period of trial of un- interest.” F.2d at delay due and Bio-Rad should not be USPQ at 665. awarded interest for that (4) delay; Bio-Rad’s counsel
B. On
to the
remand
Bio-
in
engaged
dilatory
dis-
action
sought
Rad
at the
covery process, which should be taken
percent,
average
rate of 15
based on the
into account when
paid
corporate
rate it
borrowings
on its
interest;
entitlement to
early
through
from
end
(5)
findings (1), (2), (3)
based on the
hearing,
trial in December 1982. At
above,
the appropriate term over
requested
district court
that Bio-Rad sub-
interest shall
cal-
calculation,
mit a
using
modified
the rate
is
appropri-
culated
nine months and an
that a “reasonably
corporate
sound
borrow-
rate of
in
ate
this case
is
er” would
paid during
have
in
state
California
question, and calculated from the date of
terest, 7%, uncompounded.
infringement, adjusted
each
for the normal
lag
delivery
time
payment.
recognizes
necessarily
between
The Court
requested
submitted the
calcula-
inexact nature of its
that the case
tion,
rate,
using
average
prime
brought
annual
have
could
been
trial within
compounded
months;
annually.
however,
Bio-Rad also sub-
nine
this is
upon
based
mitted Federal Reserve
and an
statistics
the Court’s
that such
estimate
expert supporting
affidavit of an
its new
with
speed
which such a case could have
brought
prosecuted
calculations. The revised calculation re-
if
been
Id.,
diligence and without
reasonable
Bio-
ple arguments presented by Nicolet opinion, in which no other member of the effect. to that joined, stating Court exercising “[i]n
its discretion deny [prejudgment] inter- appropriate cases, est in the trial may II properly take into account the nature of Corp. In General Motors v. Devex strength of the defend- Corp., 461 U.S. challenge.” Id., ant’s (1983), L.Ed.2d S.Ct. at Supreme held Court view of the court, however, This recently held that a requirement in 35 U.S.C. limiting pre- the court “shall award” the successful interest “must have some rela- plaintiff in a suit *4 tionship to the prejudgment award of inter- “damages adequate compensate to for the est.” Mfg. Radio Steel & Co. v. MTD infringement,” Products, 1554, 1557-58, prejudgment interest ordinarily should USPQ (Fed.Cir.1986). typical be awarded. In the case an A. The procedure normal under Devex prejudgment award of interest is neces- is to award prejudgment interest from the sary patent ensure to that the owner is date of to the date pay placed good position in as he as would ment, only since such award satisfy will infringer have been had the into entered “Congress’ overriding purpose section [in royalty agreement. a reasonable An affording patent complete owners 284] from award interest the time that the compensation.” Devex, 461 U.S. at royalty payments would have been re- 2062; see, Int’l, 103 S.Ct. at e.g., Smith merely ceived serves make the Co., v. Hughes USPQ 81, Tool whole, damages since his owner consist (C.D.Cal.1986) 102-03 on WEST- [Available only not royalty pay- value of the LAW, database]; Shiley, DCTU Inc. v. foregone ments also of the use of the Laboratories, Inc., Bentley F.Supp. money infringe- between the time of the USPQ 1013, (C.D.Cal.1985) ment and the judgment. date of the (supplemental memorandum), aff'd, 794 Id., 103 S.Ct. at (Fed. Cir.1986). not, however,
The Court did apparently began selling in- fringing device in and the final requiring construe 284 as the award of January ment was entered in 1983. Pre- prejudgment infringe- interest whenever judgment ordinarily interest thus would provision is found. That states have been awarded for at least 30 months. interest shall by be “fixed court, however, The district awarded such court,” and in our it leaves the view only months, interest for apparently nine court some awarding pre- discretion in on the theory that had it not been for example, may interest. For it delay Bio-Rad’s undue dilatory tactics prejudgment be to limit during discovery, the case could have been terest, perhaps deny altogeth- even brought to trial within nine months after er, where the owner has been filing. responsible prosecut- delay undue ing the may lawsuit. There be question grounds is whether the may appro- circumstances in which it upon which the district court determined to priate prejudgment not to award interest. only award for nine months, We need not findings, delineate those circumstanc- as justi- set forth in its es in this case. fied the district court’s action. We con- parties that the court's limitation of nation of by
elude district efforts to resolve nine months can- dispute through correspondence. The not stand. time it took file suit did not delay. constitute undue Shiley, 225 gave two Cf. (no delay justifying undue limiting interest: reduction of where spent that “all but 9 months the time suit filed nine plaintiff months after by the case noti prosecuting Bio-Rad in infringement). fied defendant of commencement of undue should not be 2. The finding interest for pe-
awarded “dilatory there had been during action delay,” riod of Bio-Rad’s counsel dilatory discovery process” counsel, “engaged action dis- covery process,” “should be “which taken should be taken into account when determining prejudgment into account” pre Bio-Rad’s entitlement to judgment interest,” support not does limitation of interest to nine 1. The basis for the court’s months. There is no evidence in the record during discovery that Bio-Rad’sconduct de that such “dilatory delayed action” the tri layed the trial of the case for six months is noted, Steel, al. As held in we Radio comprehend. difficult trial date was USPQ 434, F.2d at set at the first conference in Novem limiting an 4, 1982; award of ber 1981 for October the trial commenced on interest “must have October one some rela *5 day specified after the tionship date. There is no of prejudgment the award inter that, indication but the behavior of Bio- est.” “Dilatory action” discovery, Rad, the trial could or begun would have trial, without resultant in the does Indeed, earlier. discovery proceedings justify not limiting of prejudg presumably were conducted after the first ment interest. conference, since schedule was established there. The sched prejudgment limitation inter uled trial met only day’s date was one est to justified nine months cannot as a delay, regardless of Bio-Rad’sconduct dur sanction the discovery process for abuse of ing discovery. finding by the district by Bio-Rad. A court has available delayed court that beginning remedy sanctions to abuses of the by of the clearly six months is errone discovery process. ous. sum, the district court’s limitation of finding The court’s that “all 9 to nine interest months can- spent by months of the time not upon be sustained the basis of the prosecuting the case to commence findings. ment of trial of undue B. The district court’s determinations delay,” for which Bio-Rad should not re that rate of interest was interest, puzzling ceive percent the California seven another reason. Since the court awarded compound- interest should not be only months, interest for nine ed, upon findings were based the same implies that all of the time underlie its appro- determination that the infringement from Nicolet’s first to priate period for such interest was nine filing complaint of the also constituted “un reasoning months. The that led us to con- delay” by due Bio-Rad. record does findings clude that support not those either were clear- that conclusion. Bio-Rad filed support not complaint exactly year its erroneous or did almost one after nine- infringing device, compels delivered its first month limitation also invalidation eight and less than percent uncompounded months after the termi- of the seven rate.
969
The rate
ous. Since
the amount of
compounded
it should be
largely
whether
lies
within
uncompounded
largely
left
discretion,
matters
to district
court’s
in deciding
Paper
the discretion
district court.
properly
whether
district court
exer-
Magna-Graphics
Mach. Co. v.
Converting
discretion,
cised that
we restrict our review
USPQ 591,
Corp.,
F.2d
600
upon
stated basis
which the district
(Fed.Cir.1984); Gyromat
Champi
v.
Corp.
do
acted and
not consider other
Co.,
549, 557,
Spark Plug
735 F.2d
222 grounds upon which the district court
(Fed.Cir.1984);
USPQ
Dy
9-10
Railroad
might
its
have based
decision.
namics,
Co.,
A. Stucki
F.2d
event,
In any
Nicolet’s additional
(Fed.Cir.
1506, 1520,
USPQ 929,
unconvincing,
for affirmance are
1984); Lam,
Corp.,
Inc. v. Johns-Manville
attempts
and also
relitigate
constitute
USPQ 670,
long
matters
laid to
since
rest.
(Fed.Cir.1983). In exercising that discre
1. Nicolet’s contention
chal-
tion, however, the district court must be
lenges
justified”
were “well
guided
purpose
in
position
reflects the
of Justice Stevens in
terest,
is “to ensure
concurring
his
We im-
Devex.
good
in as
as
placed
position
owner is
he
plicitly rejected
position
in Radio
infringer
would have
had the
entered
been
Steel,
where we ruled that the
royalty agreement.”
into
De
a reasonable
an
award of
vex,
at
“must
relationship
have some
to the award
1188;
Dynamics Corp.
see
interest.”
F.2d
States,
Am.
v. United
(Fed.Cir.1985).
gave no
The district court
convinc
Moreover,
purpose
since the
ing
why
alleged delay
reason
in judgment
compensate
pat
interest is to
bringing
alleged
dis
the case
trial or
“foregone
money
entee for its
use of the
covery improprieties
using a
warranted
royalty payments]
the time of
between
[the
percent
uncompounded
seven
rate of
inter
judg
date of the
noted,
Indeed,
est.
as
evidence in ment,”
*6
Devex
2. We have discussed Nicolet’s regarding contentions Bio-Rad’s conduct COMPANY, INC., KAUFMAN during discovery. sought a new Appellant, allegations trial on the basis of its of Bio- discovery. Rad’s abuse of The district LANTECH, INC., Appellee. request, specifi- court denied that and we Appeal cally upheld ruling prior appeal. in the No. 86-770. In 739 F.2d at at 662-63. Appeals, United States Court of making argument, seeking Nicolet is Federal Circuit. relitigate issues that were settled at the Dec. appeal. trial and the first attempt justify 3. Nicolet’s the reduc- ground
tion in on the damages “unduly high” in- were also relitigate attempt
volves an an issue
previously appeal, settled. Ni- argued damages
colet were exces-
sive. We discussed that contention at
length rejected opinion. our 222 USPQ at 663-64.
There is no reason for us to reconsider that
ruling in connection with the award of
judgment interest.
CONCLUSION
The order of awarding the district court vacated,
case is remanded to the district court to
redetermine the amount of
terest in opinion. accordance with this
VACATED and REMANDED.
BALDWIN, Senior Circuit concur-
ring.
The trial court did not have the benefit of in Radio Steel at the time the *7 interest award was made. majority’s reliance on that misplaced.
therefore