Furon Company appeals the judgment of the United States District Court for the Eastern District of Pennsylvania, ruling that Michael Webb is the original inventor of the subject matter of United States Patent No. 5,297,896.
Background
Environ Products is the assignee of United States Patent No. 5,297,896, filed on March 25, 1992 and naming Michael Webb, president and founder of Environ, as the inventor. Furon is the assignee of United States Patent No. 5,343,738, filed on October 16, 1992 and naming Steven Skaggs, a Furon engineer and manager, as the inventor. Advanced Polymer Technology is the assignee of United States Patent Application No. 07/859,034, filed on March 27, 1992 and naming Leo J. LeBlane and Andrew Youngs as joint inventors. It was agreed before the district court that the same invention, a flexible double-walled pipe for containment of hazardous fluids, is common to the two issued patents and the pending patent application.
The parties to this case were involved in various commercial relationships before these patent applications were filed. In brief summary, Environ was founded by Michael Webb to produce the flexible coaxial pipe of the patented structure. EBW invested in Environ as a start-up company, and Leo J. LeBlane, owner of EBW, became a member of Environ’s board of directors pursuant to this investment. Mr. LeBlane later left Environ’s board and founded Advanced Polymer Technology to manufacture flexible coaxial pipes. Furon had been retained by Environ to fabricate flexible coaxial pipes for Environ, and did so until Environ withdrew this arrangement; Furon then continued to manufacture the pipes for sale to others.
Various lawsuits ensued. Environ charged the other entities with infringement of the ’896 patent and other wrongs
The Inventorship Trial
The parties and the court agreed on the description of the common subject matter that would serve as the basis for determining who was the original inventor. This description, as stated in the jury instructions, included the following:
The subject matter of the invention contested by the three parties is a flexible underground secondary containment pipe.
The pipe has an inner fuel supply line, with a fluid resistant layer, and a secondary containment pipe encircling the inner supply pipe. Between the inner and secondary pipes are several ribs that are attached to either the inner or ... to the secondary pipe. In other words, the ribs can either go, sort of point outward from the center or they can point back inward from the secondary covering pipe.
These ribs extend radially, that is to say, just like a circle. The radius from the circle, from the middle they extend out as you have seen no doubt in the sundry diagrams. These ribs extend radially to and contact the pipe to which they are not attached. And they fit closely enough against that pipe that the inner supply pipe cannot be removed from the secondary pipe....
The ribs create one or more spaces between the inner supply pipe and the secondary pipe for collecting fuel that may leak from the primary pipe and allow the collected fuel to flow along the pipe....
The invention is illustrated in Fig. 1A of the ’738 patent:
[[Image here]]
The inner fuel supply line is shown at 10, with fluid resistant layer 12. Ribs 60 are attached to the secondary containment pipe 54 and extend radially to and contact the inner fuel supply line.
The parties presented testimony with respect to the activities of each of the
No. 1. Did Leo LeBlanc and Andrew Youngs independently conceive the invention before March 25, 1992?
No
* * :|= * * *
No. 4. Did Michael Webb conceive the invention before the asserted date of the invention’s conception by Leo LeBlanc and Andrew Youngs?
Yes
No. 5. Did Michael Webb communicate his conception of the invention to either Leo LeBlanc or Andrew Youngs?
Yes
No. 6. In light of your answers to questions four and five, did Advanced Polymer Technology or Leo LeBlanc use Michael Webb’s conception of the coaxial pipe invention to apply for a patent on the invention?
Yes
No. 7. Did Steven Skaggs independently conceive the invention before March 25, 1992?
No
No. 9. Did Michael Webb conceive the invention before the asserted date of the invention’s conception by Steven Skaggs?
Yes
No. 10. Did Michael Webb communicate his complete conception of the invention to Steven Skaggs before the asserted date of the invention’s conception by Steven Skaggs?
Yes
No. 11. In light of your answers to questions nine and ten, did Furon use Michael Webb’s conception of the coaxial pipe invention to apply for and obtain a patent on the invention?
Yes
No. 12. Who is the original inventor of the coaxial pipe described in Environ’s U.S. Patent number 5,297,896, Furon’s U.S. Patent No. 5,343,738, and Advanced Polymer Technology’s U.S. Patent Application No. 07/859,034? (Check only one):
a. _ Leo LeBlanc and Andrew Youngs, jointly (as shown by clear and convincing evidence)
b. _ Leo LeBlanc, Andrew Youngs, and Michael Webb, jointly (as shown by clear and convincing evidence)
c. _ Steven Skaggs (as shown by clear and convincing evidence)
d. / Michael Webb (as shown by a pre-ponderance of the evidence)
e. _ None of the parties has met its burden of proof.
The district court entered the verdicts, and decided a series of summary judgment motions. Environ was granted summary judgment in its favor on the issue of incorrect or joint inventorship of Environ’s ’896 patent, on Furon’s claim for part ownership of the ’896 patent, and on the federal and state unfair competition claims raised against Environ. Summary judgment was denied on Environ’s unfair competition and conversion claims against the other entities, and on Furon’s counterclaim that Environ infringed Furon’s ’738 patent.
Final judgment was entered as to inven-torship; that is the only issue addressed on this appeal. Furon contends that a new trial is required, on the ground that the jury instructions were in error as to the standard of proof of priority and inventor-ship.
Jury instructions must be free of prejudicial error, subject to the general rule that the asserted error was adequately raised for timely correction at trial. See United States Surgical Corp. v. Ethicon, Inc.,
Furon argues that it was error to place the “clear and convincing evidence” standard of proof of inventorship on those claimants whose filing dates were later than (ie., junior to) the filing date of the Webb patent (the first application filed). Furon states that the proper standard for all claimants should have been a preponderance of the evidence, the same standard as prevails in PTO interference practice for determining priority among co-pending applications. Alternatively, Fu-ron states that clear and convincing evidence should have been the standard for all parties, particularly in view of Environ’s requested remedy of constructive trust and its charges of conversion and fraud.
The two issued patents and the pending application were all co-pending in the Patent and Trademark Office. In a PTO administrative proceeding it would have been the burden of the junior applicants to establish prior invention by a preponderance of the evidence. See 37 C.F.R. § 1.657(b) (1998) (“In an interference ... a junior party shall have the burden of establishing priority by a preponderance of the evidence.”); Bruning v. Hirose,
Neither of these paths was chosen by the parties. The challenge to inventor-ship was raised as an invalidity defense to Environ’s charge of infringement of the Webb patent under 35 U.S.C. § 271. On this basis the district court accorded the Webb patent the statutory presumption of validity, 35 U.S.C. § 282, which requires that invalidity be established by clear and convincing evidence. Indeed, it is well established that persons defending against a charge of infringement on the ground of patent invalidity by virtue of prior invention or prior knowledge must establish this defense by clear and convincing evidence. See, e.g., Oney v. Ratliff,
Thus, the jury instruction that Fu-ron was required to show that Steven Skaggs was the original inventor of the coaxial pipe by clear and convincing evidence was flawed. Environ states that any error was harmless in this case. It is necessary to consider the entirety of the proceedings, including the jury instructions as a whole, to determine whether prejudicial error occurred. See Delta-X Corp. v. Baker Hughes Production Tools, Inc.,
B
Environ points to several specific jury answers to questions concerning priority of conception as to each claimant, particularly those expressly finding communication by Webb to the other claimants and the use by Furon of Webb’s idea in preparing its own patent application, as support for its position that any error is harmless. Environ also states that the result would necessarily have been the same whether the jury’s conclusion on the ultimate question of inventorship, question No. 12, was decided on the preponderance of the evidence standard or the clear and convincing standard, because the question required an answer in the alternative, depending on the jury’s determinations of credibility. If the jury believed that Michael Webb was the inventor, as the jury had concluded in earlier questions, then the inventor could not have been Steven Skaggs. Conversely, if the jury believed that Steven Skaggs was the inventor, a conclusion already rejected by the jury, then the inventor could not have been Michael Webb. Further, if the jury could have found that Skaggs was the inventor by a preponderance but not by clear and convincing evidence, the jury could not have found that Webb was the inventor by a preponderance. Thus the only possible consistent view of the jury’s verdicts is that Webb was the inventor. It is highly relevant that the jury answers to the preceding questions are entirely consistent with the answer to question No. 12, and indeed could support no other answer than the one given.
An apt analogy is seen in Tatro v. Kervin,
C
Furon alternatively argues that Environ’s burden of proof of Webb’s inventor-ship should have been set at the clear and convincing level due to Environ’s claims of breach of fiduciary duty, conversion, fraud, and deceit. However, as established in the district court’s orders, the only issue before the jury was that of priority of inven-torship of co-pending patents and applications. Whatever burden must be met to establish these other charges on remand, they are unrelated to the standard applied to determination of priority of inventorship of interfering patents.
Conclusion
The error in instructing the jury was harmless. The judgment entered on the jury verdict is affirmed, and the case is remanded for further proceedings.
AFFIRMED; REMANDED
Costs to Environ, Fed. Cir. R. 39(a).
Notes
. Environ Prods., Inc. v. Furon Co., 47 USPQ2d 1040 (E.D.Pa.1998).
. Advanced Polymer Technology, Leo Le-Blanc, and EBW, although submitting appellate briefs, did not argue their appeal, stating that they had reached a tentative settlement with Environ. Their appeal is dismissed.
. 35 U.S.C. § 291.
The owner of an interfering patent may have relief against the owner of another by civil action, and the court may adjudge the question of the validity of any of the interfering patents, in whole or in part. The provisions of the second paragraph of section 146 of this title shall apply to actions brought under this section.
. The question relates solely to that of priority of invention of common claimed subject matter in issued patents; this does not affect the standard of proof as to any other question that may be in dispute.