*1 however, accepted First explana- Union’s
tion of the disparity: de Gorter had EMBREX, INC., Plaintiff-Appellee, informed himself of policy’s the insurance terms the interval deposi- his between
tion and affidavit. This is a plausible ex- SERVICE ENGINEERING CORP. planation, say and we cannot that its ac- Bounds, Jr., Edward G. ceptance by the bankruptcy and district Defendants-Appellants. courts anwas abuse of In discretion. event, de Gorter’s familiarity was based No. 99-1064. only on record, other materials so it United Court of Appeals, is difficult to States any prejudice see whence have would come. Federal Circuit. June
D. Class Certification After determining that none
Telfair’s merit, underlying claims had
bankruptcy court came to the ineluctable
conclusion that there were no claims to
certify as a class action lawsuit.19 It was
within the court’s discretion to consider
the merits of the claims their amen before
ability to class certification. Cowen v. Texas,
Bank Unitеd 70 F.3d (7th Cir.1995); Schock, Wright v. (9th Cir.1984); 543-44 Katz v. Carte (3d Corp.,
Blanche Cir.
1974) (en banc). With no meritorious
claims, certification of those claims as
class action is moot. agree Because we bankruptcy
with the courts’ district
disposition claims, of the merits of Telfair’s
we also affirm the denial of the motion for
class certification.
III. CONCLUSION
For reasons, the foregoing we AFFIRM
the district court’s decision affirming the
bankruptcy in all respects. bankruptcy
19. The representative, also denied Mrs. Tel- appeal but she does not fair’s motion for class on the certification decision. ground that sufficiently her claims were not *3 Myers, D. Myers,
James Bigel, Sibley & Sajovec, P.A., of Raleigh, Carolina, North argued plaintiff-appellee. for With him on were brief Robert W. Glatz and D. Ayers. Randal Jacobson, Harvey B. Jr. and Michael R. Jacobson, Price, Slobasky, Holman & Stern, PLLC, DC, of Washington, argued for defendants-appellants. LOURIE, CLEVENGER,
Before RADER, Judges. Circuit Opinion for the court PER filed CURIAM. Circuit Judge RADER concurs.
PER CURIAM.
The United Statеs District Court for the
Eastern District of North Carolina award-
Embrex,
(Embrex)
ed
Inc.
damages for
Service Engineering Corporation’s and
SEC’s)
Edward Bounds’ (collectively,
in-
fringement
4,458,630
of No.
Patent
(’630 patent),
including
damages,
direct
competence
immunologic
developed
has
willfulness,
attor-
treble
injected
vaccine
said
and wherein
finding.
case
exceptional
under
ney fees
by either
region defined
within
motions
denied
court also
The trial
(JMOL)
yolk
sac.
amnion
Lawof
a Matter
as
Judgment
trial,
to overturn
sought
which
a new
9,11.26-34.
col.
patent,
’630
Because
jury verdicts.
its license
claims,
obtaining
Upon
construing the
err
did
machines
designing
began
Embrex
patent,
could
that a reasonable
concluding
large
method
willfulness,
claimed
perform
infringement,
find
After
farms.
chicken
fees,
industrial
attorney
scale
awarding
and in
at-
products,
dis-
Embrex’s
learning
because
affirms-in-part.
*4
using its
in
Embrex
interest
direct
to
erroneously
tempted
awarded
trict
eggs
transferring
sup-
automatically
to
for
proper evidence
device
without
hatching
to
that
flats
award,
vacates
egg-supporting
the
from
port
way
of thе
proceed-
quarters
three
for further
about
trays
remands
and
award
also
period. SEC
the incubation
through
ings.
manu-
in
interest
its
to Embrex
expressed
ma-
ovo
injection
in
Embrex’s
facturing
I.
SEC’s advances.
rebuffed
Embrex
chines.
companies
other
two
then contacted
of SEC
licensee
exclusive
is the
Embrex
design around
collaborating to
about
United States
from the
patent
the ’630
and
sued
Embrex
SEC
patent.
AAct.
the ’630
Bayh-Dole
the
under
Government
of
infringement
for
Agri-
of
collaborators
Department
the U.S.
its
at
scientist
in
technology.
litigation
That
resulted
patent.
patented
the
’630
developed
the
culture
of
a
and dismissal
agreement,
for inocu-
claims methods
patent
a
settlement
’630
injecting
by
suit.
against
disease
lating
the
birds
egg
the
region of
specified
a
into
vaccines
its
history,
continued
SEC
Despite this
appli-
hatching.
In its commercial
before
injection ma-
ovo
to build
attempts
immunizes
cation,
invention
the claimed
device,
prototype
developed a
SEC
chine.
ovo, ie.,
are
they
while
still
chickens
two scientists
the services
engaged
and
re-
Thus,
method
the сlaimed
egg.
the
injecting
possibility
the
investigate
to
will succumb
chickens
risk
duces the
that
cov-
region
the
embryos outside
chicken
an entire
often infect
to infections
Vergil
Dr.
claims.
patent
by the ’630
ered
an advance
represents
This method
flock.
be
embryos could
that the
suggested
Davis
inoculat-
method, which
prior art
over the
the
into
vaccine
by injecting
inoculated
the
leaving
hatching,
days after
ed several
(CAS),
egg
of the
part
a
sac
chorioallantoic
patent con-
The ’630
unprotected.
chicks
Mr.
claims.
in the ’630
mentioned
not
claims,
jury
the
found
12 which
tains 13
to
experimented
Davis
Dr.
Bounds
1 of the
Claim
infringed.
had
SEC
the
target
they could
whether
determine
representative:
ink
several
into
injecting India
by
CAS
controlling an immun-
1. A method
inject-
difficulty of
the
To address
eggs.
bacterial,
viral,
mi-
or
disease
izable
a
CAS,
Bounds devised
Mr.
into the
ing
com-
species
in an avian
origin
crobial
into
inject
predeter-
reliably
stand to
test
effective
a vaccine
prising injecting
egg.
of the
shell
beneath the
depths
mined
said disease
immunity against
inducing
Rosenberger,
Dr.
retained
also
SEC
embryo of
embodying
egg
into
University of Delaware.
at
professor
injection
said
species,
avian
wherein
said
stand,
Rosenberger
test
Dr.
gave
SEC
during the final
quarter of
is made
tests
several
performed
which he
embryo with
whereby the
period
incubation
practicability
injection
by reapplying
the district
determine the
court’s standard.
injected India
These tests
Applied
Corp.
into
CAS.
Med. Resources
v. U.S.
eggs and vaccine into others.
ink into some
Surgical
Corp.,
F.3d
target
ink
sought
The India
tests
(Fed.Cir.1998).
Thus,
CAS,
sought
the vaccine
whereas
tests
prevail
appeal,
SEC must show that
on
the effectiveness of the inocula-
evaluate
evidence does
support
substantial
record,
to the
According
tions.
trial
jury’s
findings
factual
Rosenberger
inject-
tests showed that the
in applying
erred
the law. See id.
little
embryos
immunity,
ed
received
injections penetrated beyond
most
may
A district court
overturn a
amnion/yolk
and into the
sac—-areas
CAS
jury’s verdict on a motion for
only
JMOL
by
patent.
covered
if,
record,
upon the trial
reasonable
could not have reached that verdict. See
рreparing
prototype
per-
While
Corp.
Computervision
Perkin-Elmer
tests,
forming
began soliciting
orders
Corp.,
USPQ 669,
injection
Specifically,
device.
for its
ovo
(Fed.Cir.1984).
This court considers
alleges
Embrex
that SEC offered to sell
the record
light
evidence
most fa
to Hudson Foods in the
its machines
*5
Embrex,
vorable to
all
drawing
reasonable
Canada,
in
effectively
and Courvoir Dufo
inferences in its favor. Accordingly, this
depriving Embrex of the sales.
jiffy’s credibility
court will not disturb the
Upon learning
testing
of SEC’s
and its
determinations or substitute its resolutions
attempts
market
thе
to
nascent
ovo of conflicting evidence for those of the
device,
injection
again
Embrex
sued SEC.
Med.,
jury.
Applied
the Lanham Act. The a district court held jury jury trial on each issue. The re- This court reviews the district a turned verdict favorable Embrex on pat court’s claim construction of the ’630 contract, infringement, breach of and will- Georgia-Pa ent without deference. See jury fulness. the returned a Co., Corp. Gyрsum v. United States cific alleged verdict favor of SEC on the 1322, 1330, 1590, USPQ2d 195 F.3d 52 In response Lanham Act violation. (Fed.Cir.1999). 1597 “In claim construc motions, post-trial the district court denied tion the words of the claims are construed JMOL, SEC’s motion for and awarded independent product, of the accused attorney Embrex treble fees light specification, prosecution of the the agree- under the terms of the settlement history, prior and the art.... con [T]he §§ ment as well as under 35 U.S.C. 284 simply way struction of claims is a (1994). The district and 285 court also terse, elaborating normаlly the claim lan granted summary judgment Embrex’s mo- guage[] order to understand and ex tion on SEC’s defense Embrex did standing plain, change, scope for but not to the of the have sue Genentech, Inc., of the ’630 because its license from Scripps claims.” Clinic v. government Bayh- the the violated (Fed.Cir.1991) (internal
Dole Act. quotations omitted).
II. independent claim preamble The controlling im 1 recites a method “for an This court reviews species ... ruling court’s after a verdict munizable an avian JMOL disease period, quarter the final incubation This lan- steps].” comprising [several conditiоns, the em- and ... these [u]nder to determine on this calls guage Id. at col. favorably respond.” bryo will dis- “controlling immunizable whether description Similarly, 11.2-6. detailed pop- anof entire inoculation requires ease” explains: “A 1-inch needle of the invention immunization effective ulation of birds and of the fully inserted from the center when birds. The of treated percentage high of a shell, the out- penetrate will large end simply 1 to de- claim read district court enclosing inner shell membranes er and method, the claimed purpose of scribe the cell, Depending the amnion. the air by preventing a disease namely to control development and precise stage of on the in individual the disease managing embryo, a needle of position of the birds. fluid either in the will terminate length supports the of the claims language itself.” Id. chick or in the chick above the The claims interpretation. district court’s instances, 3,11. In these at col. 51-58. a sin- immunizing process chick, describe the single egg, a inventor refers to example, claim calls Thus, sup- For also gle egg. injection. spеcification egg ... em- interpretation into “injecting ports a vaccine the district court’s in- that is single egg ... wherein said of a is all embryo injection bodying the use of the required by the claims. While quarter final jection during made preclude a word does not singular form of embryo period whereby incubation plural, see meaning which includes compe- immunologic developed has Co., Mfg. Elkay Mfg. Co. v. Ebco. With col. 11. patent, ’630 28-33. tence.” (Fed.Cir. 973, 977, USPQ2d process claim calls language, 1999), singular descriptions of the these of an individual involving immunization *6 without injеctions eggs, into individual popu- process than a for entire egg, rather more, only not limit the to cover claims do of lations birds. entire flock of birds. of an inoculations per reading a rule that Logic precludes speak also of a “vaccine The claims encompass plu the usage mits to singular Id. at inducing immunity.” effective for plural meaning. require ral to instead the 9, phrase This does not col. 11.28-29. all the method be effective for require that descriptions In the of individ- to addition of birds. percentage description birds or also processes, threshold the written ual context, modifies efficacy per- In the word “effective” tests reports the results of “vaccine,” multiple not the meth These re- the claimed formed animals. word however, requires no not limit the claims ports, a whole. The claim do od as populations processes performed only on more than effective to inoculate a vaccine reliability, biological tests Thus, of birds. For the district an individual chick. study many of generally groups demand of part this of the correсtly construed reproduci- to ensure accurate and animals in require only claim to that vaccine in the Reporting such data ble results. effective, but not jected is known to be description operate not written does egg actually into an every that inoculation In import a limitation into the claims. immunity. confers sum, only the claims do cover not of birds. The of entire flocks inoculation description accompa The written correctly construed this district court supports also trial nying the claims claim. of the court’s construction claims. im specification repeatedly refers to the B. example, single eggs.
munization of For fact, question summary Infringement “[I]t of the invention a states: findings of which are substantial injected during that accorded egg is essential be
1349
Foods,
inquiry,’
inquiry
on review. See
scientific
when that
deference
has
Kraft
definite,
Co.,
cognizable, and not
Trading
203
insubstantial
Inc. v. International
1362, 1370,
purposes”) (superseded
commercial
on oth-
USPQ2d
53
1817
F.3d
271(e) (1994)).
§
grounds by
er
35 U.S.C.
(Fed.Cir.2000).
denying
In
motion
Roche,
In
this court considered whether
JMOL,
reviewed
patented
“the limited usе of a
drug for
evidence,
jury’s verdict for substantial
and
testing
investigation strictly
related to
reapplies the same standard on
this court
FDA drug approval” constituted infringe-
Am., Inc.,
appeal.
Hupp v.
Siroflex of
ment.
Id. at 861. In that case this court
1456, 1465,
43
122 F.3d
271(a)
recognized:
prohibits,
“Section
on
(Fed.Cir.1997).
face, any
its
all
patented
uses of a
Binding precedent
invention.”
Id.
from
In
reaching
infringement ver
the United States
Court
Claims also
dict,
jury may
have concluded that
acknowledged a narrow defense to in-
by offering to sell machines
infringed
fringement performed
amusement,
“for
perform
pat
the method of the ’630
curiosity,
satisfy
strictly philo-
idle
or for
precise
ent. This court addressed
863;
sophical inquiry.”
Id. at
see also
Flakt,
in Joy Technologies
issue
Inc. v.
States,
Pitcairn v.
United
Ct.Cl.
Inc.,
USPQ2d 1378,
(1976).
USPQ
This
(Fed.Cir.1993).
case,
In that
court in Roche thus observed that Bolar’s
explained:
unequivocal
“The law is
alleged experimental use would not even
equipment
perform
the sale
fit within the narrow confines of the al-
process
process
is not a sale of the
within
experimental
leged
exception
use
because
271(a).”
meaning
Accordingly,
Id.
“in
particular
guise
use
of ‘scienti-
mere offer to sell a machine such as SEC’s
”
“definite,
inquiry’
cognizable,
fic
had
cannot serve as the sole basis for
purposes.”
insubstantial commercial
claimed method.
Roche,
the amount pre-commercialization evidence, the case of and a ments in trict court for substantial case, record does not In this reaching the licenses. method court’s district compute evidence supply sufficient of discretion. for an abuse damages 1368, by section royalty as Valves, required Dray, v. reasonable Inc. (Fed.Cir.2000). Thеrefore, 1834, vacates the this 1837 284. U.S.P.Q.2d 64 $500,000 damages and sufficiency of in direct Here, challenges the award of SEC $500,000 award. for determi- underlying remands to district evidence royalty for SEC’s a reasonable
nation of above, re the sole noted method. patented As uses of the infringing district evidentiary basis for the maining is the test court’s D. Rosen by Drs. Davis and
ing performed paten entitles a Act berger. The Patent contends that appeal, On compensate damages sufficient tee to reverse the district should this court than in no event less but infringement, and trеble on willfulness court’s decision infring for the actual royalty a reasonable court used because the district process. See 35 patented ing use of the trial, At jury instruction. improper (1994). proper proof, § With U.S.C. will jury that court instructed district compen properly profits damages can lost by preponder proved be fulness could Trell patentee’s losses. See sate for the whereas, evidence, this court ance of the 1443, 1445, F.2d Corp., 912 Elecs. Marlee convincing evi proof by clear and requires (Fed.Cir.1990). 1059, 1061 USPQ2d Communications, See Comark dence. Corp., 156 F.3d Inc. v. Harris that case, court found In (Fed.Cir.1998). USPQ2d money several potential on Embrex lost However, jury in addressing the before $500,000 was suffi- sales and found issue, court must first decide struction lost sales. compensate for those cient to appeal preserved right whether SEC above, because as discussed object to the SEC did not issue. may prac- used to be sale of devices trial. timely during in a fashion instruction infringe cannot method patented tice a rights proce is a appeal Preservation infringеment, direct proof without issue, court looks to for which this dural cannot sell its machines SEC’s offers to this case regional the law of the circuit—in support for a evidentiary supply adequate Midwest Indus. the Fourth Circuit. See compensatory damage award. Trailers, Inc., Inc., v. Karavan (Fed. in only cognizable Because Cir.1999) (en part) banc relevant testing and is the fringement this case *8 (“[W]ith we respect nonpatent to issues to were not shown cause those tests the circuit in apply the of generally law Embrex, va this profits loss of to sits.”); Advаnced district court which the $500,000 award of cates the court’s district Inc., Gang v. Bao Wu Systems, Display However, in under damages. direct Kent, “in no loses § event” U.S.C. Embrex (“Because (Fed.Cir.2000) objection to royalty for entitlement to a reasonable procedural jury instruction involves Royalties are ordi tests. infringing this intimately related to matter that is not upon the sales of a narily computed based look to jurisdiction, we exclusive However, court’s patented product process. or ascertain the circuit law to the regional to com parties may other choose methods comply with the necessary requirements to may pay pute that a licensee the amount rule.”). appeal allows The Fourth Circuit product right patented for the to use a agreement, in the of terms of the such faulty jury i]f instructions absence of only plain by in the case of violation is determined this court to timely objection faith, in Community good Health be other than dam- Rice said error. See (4th Cir.2000). Ass’n, ages shall be trebled and SEC/Bounds Therefore, costs, prevail required pay must show that shаll be in- SEC occurred, cluding attorneys’ that the error was fees. “an error error affected his sub- plain, and that the Agreement jury, Settlement at 3. appellant] Even if rights.... [the stantial verdict, special that found SEC acted requirements, we will exer- satisfies these good without faith and that Embrex de- only to correct the error cise our discretion attorney served fees and costs. Because in a if failure to do so would result miscar- replete record with evidence that riage justice.” of United States v. Jen- supports jury’s that SEC (4th Cir.1998) 1006, 1008 nings, 160 F.3d faith, agreement breached the in bad omitted). (internal quotations court affirms the district court’s award of attorney fees accordance with the terms agrees This court with SEC that the agreement. error occurred and that the error was plain. because the record shows Regarding independent the section 285 after infringed that SEC award, attorney basis for the fee Embrex notice, prior litigation, and an substantial right ap- counters that SEC waived its agreement settlement that unambiguous peal faulty jury instruction on willful- precluded infringement, further this court object ness because it failed to to that jury that would have concludes trial, instruction at and because record reached the same conclusion under either supports finding irrespec- the willfulness or the and con- preponderance clear tive of the erroneous instruction. Be- Thus, standard. does not vincing SEC that the cause SEC did not show district justice miscarriage prong meet the clear error in designating committed Therefore, plain test. this court error exceptional the case or abused its discre- district court’s willfulness find- affirms the fees, attorney setting tion the amount ing. affirms the district court’s attor-
ney fee award.
E. F. argues the district court attorney Embrex fees. awarding erred appeals the Finally, SEC district explained The district court the fee Embrex’s motion to dis grant court’s independently supported by its award was defense, challenged the miss SEC’s which exceptional case conclusion under 35 government’s grant of the exclusive license (1994) § and the settlement U.S.C. Embrex, gave in turn Embrex which the dis agreement. SEC contends infringement. Grant standing to sue for attorney to award trict court’s decision motion, the district court ing Embrex’s fees under section 285 was flawed because defense was standing determined that the based-in-part the award was on the willful by judicata, res view of precluded verdict, which was in-turn flawed be ness *9 judgment prior litigation be consent cause of an erroneous instruction. judgment parties. tween the That consent prevailed, if argument Even this the settle parties’ incorporated by reference the set stated that: agreement ment agreement. agreement That stat tlement ed, exclusive li standing “Embrex has as any agent repre- If or or SEC/Bounds patent.” the ’630 Settlement thereof is found to the censee under [breach sentative of SEC’s court’s dismissal the district 1. This court concludes at Agreement standing defense. correctly dismissed court the district by res as barred standing defense judicata. COSTS assuming that the dis- even its own costs. party Each shall bear mo- granting Embrex’s trict court erred AFFIRMED-IN-PART, VACATED- dismiss, concludes that this court tion to IN-PART, and REMANDED. fully litigated have been the same issues court’s Before the district ease. another ease, in this filed SEC entry judgment Judge, concurring. RADER, Circuit District Court for States suit the United conclusions on joining the court’s While the Maryland, challenging the District of because, issues, separately I write all license of the exclusive grant government’s Patent Act leaves no my judgment, to Embrex. patent under the ’630 de minimis experimental room States, Corp. v. United Eng’g No. Service infringement. Because use excuses 1999). (D.Md. In Mar. CCB-97-833 preclude right Act Patent confers case, original challenged the SEC use,” “use,” room re- no not “substantial to Embrex as of the exclusive license grant in the law for a de minimis excuse. mains amendments there- subsequent as the
well irrelevant Similarly, because intent opinion, thirty-page In reasoned to. a well experimental use infringement, an Maryland district addressed infringe- excuse cannot survive. When assertions, rul- disposed of each of SEC’s wholly minimal or proven ment is either every on issue. Because ing against SEC non-commercial, damage computation opportunity full fair has had a SEC provides flexibility full for courts process once, standing issue at least litigate the (or perhaps any) awards preclude large judgment disturb the this court will not infringements. for minimal district court dismiss- the North Carolina ing standing defense.
I. III. affirms the district court’s This court de minimis experi denial of SEC’s This court concludes excuses, but I read the Patent mental use correctly construed the claims of altogether. excuses preclude Act to these affirms-in-part This patent. essentially an affirmative de asserts court’s denial of SEC’s motion district fense, plea on the combining based for JMOL on the verdicts activity infringing quantum amount or supports substantial evidence because minimis) plea with a based on {de jury’s verdict that the Dаvis and Rosen- infringing intent activi character or court also re- berger infringe. tests This use). (experimental Although courts ty because, law, verses-in-part as a matter of separate these occasionally have addressed infringe an offer to sell a device cannot one, see, e.g., if were they excuses as patent without evidence of the de- method States, USPQ Douglas v. United carry vice’s actual use to out the method. (Ct. Trial Division Cl. 1974 WL infringe- This court vacates the award of aff'd, 1974), F.2d 364 Ct.Cl. damages, ment and remands for determi- (1975), seрarate analyses. clarity calls for royalty, nation of a reasonable but affirms court has not inception, award of findings of willfulness and the Since infringe- a little the notion that attorney Finally, this court affirms tolerated fees.
1353
grounds,
rev’d on other
520
fringement.”),
ac-
infringement
ment —de minimis
—is
1040,
17,
Supreme precedent gives Court it was infringement because
son to excuse purpose or particular
committed with a
intent,
experimenta
as for scientific
such
DICK, Petitioner,
Ronald S.
Rather,
the Su
curiosity.
or idle
tion
v.
recently
and this court have
preme Court
PERSONNEL
OFFICE OF
to in
intent is irrelevant
reiterated
MANAGEMENT,
Warner-Jenkinson Co.
fringement. See
Respondent.
Co.,
520 U.S.
Hilton Davis Chem.
(1997)
No. 00-3104.
1995) (“Intent in- not an element of