*4 (or, tacts the frame when the snubber is MARKEY, Before FRIED- Judge, Chief position, reversed in at which point MAN, NICHOLS, Circuit Judge, and Senior bolster). rod contacts the Judge. Circuit representative: 1 is Claim MARKEY, Judge. Chief dampened truck railway assem- Appeal from a judgment of the District bly selectively operable in loaded and un- Court for the of Pennsyl- Eastern District loaded conditions and having hydraulic denying vania motions for not- judgment apparatus interposed spring snubber in a withstanding (JNOV) the verdict and for a group intermediate a bolster member and 3,837,292 (’292 new trial. Patent U.S. No. member, frame improvement a side patent), assigned (Stucki), to A. Co. Stucki comprising: interposed means between infringed. was held valid and found Dam- apparatus snubber one of said said ages were awarded in the apparatus amount of members to bias said snubber $2,182,986. We affirm. operative engagement out of with said new truck moved for or for a trial said JNOV said members when
one of an un- normally royalties assembly operating objected inclusion condition; means and and said loaded award. moved carsets Stucki certain being cooperable apparatus snubber said by increasing amend judgment to alter snubbing by said hydraulic initiate amount of award. substantially only apparatus snubber Broderick, and exhaus- in a careful Judge assembly is nor- railway said truck F.Supp. at published tive Memorandum condition, the in a mally operating loaded all the evi- USPQ 618, reviewed means overcome partially bias of said dence, trial post and denied the motions of opera- is in and said snubber apparatus for correction of (except RDI and Stucki mem- engagement tive with both of said interest). error the calculation clerical bers. Order on court entered an The district August 1983 that March Procedural History corrected, tunc, pro nunc (RDI) brought a Dynamics, Railroad Inc. $2,182,986. Final judg- favor Stucki declaratory judgment against action 28,1 entered March accordingly ment was 1975, seeking a of patent declaration after suit was years or some seven for in- invalidity. Stucki counterclaimed filed. fringement. lia infringement RDI admitted and the Issues tried bility issue was to a for three *5 entered on (A) judgment Whether 19, 1980 10, 1980). The (May weeks June is in the jury supported verdict record. judge gave trial detailed instructions covering over 51 of the record. jury, pages erred in: (B) Whether the district court inquiries answered in ten jury writing The jury; (2) (1) submitting legal issue to “interrogatories”, each of its an labeled jury; (3) submitting interrogatories agree favoring parties swers Stucki. The (4) failing to instructing jury; declare gen jury’s amounted to a answers or invalidity for lack of oath declaration. verdict in favor of eral Stucki. court (C) Whether the district erred damages issue tried to the court The was determining damages. the amount of 9,1981 20,1981. February February from Memorandum unreported The court in an OPINION royalty established a reasonable $35.00 of Review—In General2 Standard per (four snubbers) interest. plus carset 6% judgments appealed. It is that are 25, 1981, issued an August On the court a final issues favor of judgment Because favor of judgment Order that be entered in movant, “an it has said that order $1,960,700. en- been Judgment for August appealable”. 26. a motion is granting tered on for JNOV Damages were on this basis: awarded Royalty Royalty ($35.00/ with Compound Carsets Carset) Interest at
Shipped 6% - 124,400 84,236 12/1/74 4/30/75 2.406.75 - 245,977 176,505 5/1/75 4/30/76 5.043.00 - 312,105 238,175 5/1/76 4/30/77 6.805.00 - 309,493 250,075 4/30/78 5/1/77 7.145.00 - 386,807 332,080 5/1/78 4/30/79 9.488.00 - 465,360 513,013 13,296.00 5/1/79 4/30/80 - 291,191 279,991 2/9/81 5/1/80 7.999.75 2,182,986 52,183.50 1,826,422
TOTAL
cases and the indication of
section is distasteful dicta deemed desir-
trials
patent
2. This
growing
briefs
and in other appeals.
in view of the
incidence of
here
able
need
only
Orders
a motion for JNOV and
denying
meaning
court,
that ease as
that the district
a motion for
granting
denying
new trial
a motion for
considering
JNOV attacking
generally
judgments
do not
result
validity,
only
determines
whether
pat-
are not themselves
5A Moore’s
appealable.
ent owner had introduced sufficiently sub-
(2d
1983).
¶
Federal Practice
50.16
ed.
support
stantial evidence to
that conclusion.
instances,
appealable
those latter
the only
would,
That approach
contrary to the stat-
judgment
is that entered on the
ver
ute,
35 U.S.C.
shift
to the patent
§
dict.
owner the burden of proving facts estab-
lishing validity.
Where
post-trial
no
motions of the
filed,
type discussed here were
and the ap
Patent owners are never in law re
peal
directly
judgment
from the
entered
quired
prove
establishing
facts
validity,
verdict,
on the jury’s
sufficiency
review for
though they may
necessary
be well
of evidence is extremely limited or non-ex
prove
advised to
such facts in rebuttal of a
istent, prejudicial legal error must be shown patent challenger’s
do,
case.
they
When
trial,
to have occurred in the conduct of the
validity
verdict of
may be sustained on the
and the action
an appellate
court is limit
failure of the challenger to meet its burden
ed to affirmance or remand for new trial.
in light of the rebuttal evidence.
Argento,
Lenard v.
See
F.2d
placed
burden
challengers
(7th Cir.1983);
Holding
Scientific
Co.
282 is not undue. There are many
§
Inc.,
Plessey,
(2nd
Cir.1974).
F.2d
grounds for challenging
patent.
Chal-
It thus behooves counsel to file non-frivo
all;
lengers
press
often
them
and challeng-
JNOV,
lous motions for directed
they
ers win if
only
establish
one.
and for new trial.
When a
validity
verdict of
where
Similarly,
there has been no
JNOV, therefore,
tested
a motion for
motion for
50(b)
JNOV under Rule
Fed.R.
district court must determine whether the
Civ.P., and nothing of record that may be
patent challenger’s evidence met the burden
motion,
treated as such a
appellate
court
imposed by
282. If
cannot
that evidence be such
§
reverse or order
appel
*6
lant.
as to have so withstood the
Virginia Pulp
Paper
patent
Cone v. West
&
owner’s
Co.,
212,
752,
330 U.S.
67 S.Ct.
Thus RDI misconceives jus- hall appellate court. the concert of not so RDI’s asser- Though designated, tice, part play. musician a to each has in of trial of error the conduct the tions his but plays When one on whim not own the (B)(1), (2), (3)) are attacks on (issues and certain. More- part, another’s discord is new These its motion for a trial. denial of over, are under well parts played our if warrant a new attacks would sustained play When a elects to player defined rules. assume, a as to (not, appears trial RDI design, rules personal under of a special it). appears and for As reversal satisfy sweetly so though playing his should de- below, declaring for the no basis exists ear, the justice the of his inner concert new to have nial RDI’s motion for trial of succeed. roles rules itself cannot The and of discretion. been abuse an trial are distinct and appellate of and courts Hence, designed harmony. to distinctly Legal for A Issue (B)(1) Submitting reject Jury RDI’s to consider the we invitation the de and arrangement Holland evidence novo in strenuously RDI asserts error to reach our own conclusion on obviousness question the of obvious submission vacuum, though many in a as the events language from an jury, citing ness the to appeal before this never occurred. seeming to so opinion of another court trial may That there have been evidence state. i.e., sides, to both to RDI and to favorable that it is not error to This court held Stucki, simply usually There irrelevant. to a question submit the of obviousness At argument, responded is. oral to Connell, supra, at As jury. it to this court’s indication that did not sit Connell, there is no reason for stated review de evidence novo with assertion legal ques- the of distinguishing submission no there is evidence favorable jury a cases from the patent tions to Stucki. That assertion is unfounded. legal juries submissions of issues to routine is dis- ample evidence favorable of types in other cases. F.Supp. cussed at 579 by Judge Broderick elsewhere, ef- appearing Language 364-66, 625-26. jury findings” no when it fect that a “made RDI’s “no evidence” assertion is short- general legal a or that the returned disagreement hand the for its first “al- regarding obviousness must conclusion court’s of jury’s and now district view ways judge made and not the evidence, expert particular testi- jury”, broadly as so stated difficult are mony that contact of the bolster with the always necessarily A jury understand. spiral in the Holland arrangement. occurs (albeit findings unwritten) makes before it our governing jurispru- Under the rules general Similarly, its verdict. a reaches dence, had jury right credit conclusion, jury necessarily legal reaches and, testimony, factual under those expert judge’s with the in- presumably accord rules, deprive judge trial could not law, on the it reaches its structions before by substituting own right of that his Moreover, verdict. is idle to general may Nor we
credibility finder, determination. as fact so speak jury solely per- ours. Because reasonable substituting long general instructions on the law and sons, testimony, could crediting a jury remain elements of trial. verdicts arrangement did found that Holland 49, 50, if Fed.R. When and Rules RDI, asserted spacing involve Civ.P., repealed, may there are be room for JNOV of RDI’s motion the denial finding juries the restriction fact required. prohibition general role verdicts verdict or other types trials. Un attacks on RDI’s other day, prohibition general til ver of attacks on in terms that are couched (and disregard of the findings are without dicts motion for JNOV denial *9 must legal jury conclusions a make merit.
1515
verdicts)
you
plaintiff
cannot be accom-
Do
find that
the
reaching those
convincing
clear and
evi-
proved by
judicial fiat.
plished by
that United
Patent No.
dence
States
course,
is,
no reason for con-
of
There
3,837,292
ground
is invalid on the
of
the
cases as somehow out of
sidering patent
obviousness?
proce-
rules of
of the law and
mainstream
submitted to the
interrogatories
The ten
trials for centuries
jury
applicable
dure
answers,
case,
are
in this
and the
jury
waiver of
jurisprudence.
our
Until
under
opinion.
A to this
As
Appendix
found
the Act of
permitted by
trials was
jury
2, 9,
seen,
interrogatories
be
all but
may
501,
3, 1865,
86,
4, 13
all
ch.
Stat.
March
§
substantially identical with in-
and 10 are
juries.
tried
The
by
cases at
law were
1,
differing only
respect
with
terrogatory
resurfacing
jury
of
comparatively recent
many grounds
invalidity
by
the
of
asserted
cases,
of
though productive
in patent
trials
RDI.
judges
for some
and commenta-
discomfort
welcome;
tors,
may
not be wise or
may
courts have broad au
District
special
of
and
it forms no basis for creation
the
controlling
and discretion in
con
thority
rules,
consequent
or for the
unauthorized
authority
a trial. That
extends to
duct of
denying the constitution-
effectively
risk of
verdicts,
juries return
the form
which
clause of the
out in the first
right spelled
al
49, and will not be interfered
Fed.R.Civ.P.
Amendment.
Seventh
abuse of discretion is shown.
with unless an
Metal,
Hammerquist v. Clarke’s Sheet
See
danger
error nor
Thus it is neither
481,
1319, 1322-23,
USPQ
Inc.,
212
legal
ju
issues to
justice
ous to
to submit
Cir.1981),
nom.
(9th
cert. denied sub
483
ries,
being accompanied
the submission
Corp.
International
v. Carson
Carsonite
on the law from
appropriate instructions
1499,
Co., -- U.S. --,
103 S.Ct.
Mfg.
to inter
judge.
relating
The rules
the trial
v. Acme-
(1983); Tights,
Inc.
L.Ed.2d
instructions,
di
motions for
rogatories, jury
1061,
McCrary Corp.,
F.2d
verdict, JNOY,
trial,
new
and
rected
(4th Cir.),
314-15
cert. denied
following jury
governing appeals
the rules
Inc.,
Tights,
Kayser-Roth Corp.
sub nom.
trials,
fully adequate
provide
are
verdicts with without merit. That is jury, elements of instruc- tions on the law as it of the evidence in “interrogatories”, having considered all light must be viewed in entirety the of motions, of he said would to RDI’s response trial, at events was as so viewed it as those made findings made the same have harmless. role rever- jury the does not constitute indicated, Moreover, a as above when sal. as Though labeled the “interrogatories”, verdict, law general pre- a the returns jury questions put ten to jury designed the were elicit, findings implied fact to and were the existence of treated all concerned sumes elicited, as a having Be- reached that verdict. ten-part jury’s having verdict. the from tried, was the validity only cause issue findings certain jury the must make That of interrogatories encompassed the ten each is, as it it can its verdict reach before defenses, hardly RDI’s numerous RDI can here, clear instructions on the made in the complain separate returned a general the The verdict given jury. law defenses, of of verdict on each those instead the conclusion and jury’s legal includes thus ex- returning general reading, a verdict the latter implied findings, of fact a set (which “we find in of ample, favor Stucki” the necessary support legal those to being of it could have absent the ten course done the verdict. encompassed in conclusion responses “interrogatories”). jury’s The were verdicts, they were not special because When, here, present is judge as the upon “written each simply finding[s] not a motion or for new trial ed with for JNOV 49(a), fact”. Rule Fed.R.Civ.P. issue of there is sufficient and determines whether single per there a general Nor was the support jury’s of record to evidence se, accompanied by “written answers” findings, is not role reversal. implied the of “one or more issues fact decision contrary, serving precisely the it is the On 49(b) necessary to a Rule which verdict”. judge long role of under established Nonetheless, as above indi- Fed.R.Civ.P. Pumps rules. Panther & procedural See cated, correctly viewed the parties Inc., 468 Co. v. F.2d Equipment Hydrocraft, responses equal gener- ten 228, 577, Cir.1972), 225, (7th 175 579 USPQ jury spoke al verdict for Stucki. That denied, Q.S. 965, 2143, 411 93 36 cert. S.Ct. respect each defense is specifically (1973); v. American May L.Ed.2d 685 in benefit courts and to this case of Distributors, Inc., 715 Waterbed Southwest parties. 876, 880, USPQ 433, (5th 218 437 Cir. F.2d interrogato- attack on the primary RDI’s 1983). ries, call “in- which its briefs on occasion judge deciding role of the trial The structions”, centers the statement trial, and new motions JNOV upon challenger’s is met burden review, are greatly of this court on evidence, convincing” whereas “clear and facilitated answered “preponder- is met when mere says burden, writing. indi- factual When inquiries ance” as above series of is shown. defenses, cated, issue, facts prove supporting interrogatories is to seek obviousness is not, prove legal conclu- says, as RDI writing inquiries drawn ing answers de- invalidity) sought by those (patent sion those listed v. John Deere about in Graham the stan- This court has said that fenses. 684, 15 Co., L.Ed.2d 383 U.S. S.Ct. necessary support facts proof dard (1966), insofar as evi “clear and invalidity legal conclusion at relate to those in dence adduced trial upon a change It does not convincing”. Connell, employed. should be su quiries, art considered prior showing of cited F.2d at and cases there pra, 722 Connell, defense to defense. or from PTO in; Company Derrick American Hoist and supra. Sons, Inc., 725 F.2d & Sowa modified (Fed.Cir.1984). Examples from interroga assertion that
RDI’s
cases
reversal,
employed
appear
a few actual
in which the
those
in role
tories resulted
opinion.
B to
Appendix
role of the
this
fact-finding
judge played
*11
ITC,
to
detailed fact in
law.
Removal v.
Failure
submit
Solder
F.2d
every
will not in
case result in
terrogatories
1978);
(CCPA
Sunspool,
633 n. 9
Richdel v.
the
for a new trial. Rule
Fed.R.
need
(Fed.Cir.1983).
(B)(3) Instructions
presumption
validity
evidence. The
is
indicated,
As above
the district court
destroyed
neither weakened nor
where art
extended, detailed,
gave the
care-
jury
and
pertinent
than
by
more
that considered
the
the law.
ful instructions on
Those instruc-
introduced;
offering
PTO is
the
party
make
correctly required
tions
to
simply
likely
carry
more
the burden of
proper findings
reaching
before
its conclu-
facts
proving
clearly
convincingly
and
un
questions presented
on
to it.
legal
sions
Medtronic,
der those circumstances.
Inc. v.
specifically
The court’s
re-
instructions
Pacemakers,
Inc.,
Cardiac
set
quired findings
inquiries
forth
(Fed.Cir.1983). Similarly,
argu
RDI’s
Graham,
before the
reached its
supra,
required
prove
ment
that
it was
facts
conclusion on obviousness. The instructions
establishing its “failure
set
forth the best
contained no error of law
governing
mode” defense only by
preponderance,
issues at trial
that would warrant a new
because that issue was not before the exam
trial.
iner, is without merit.
RDI has made no effort to claim error in
any instruction,
for the reason that
perhaps
among
plethora
RDI included
its
few
very
appear
errors that do
were
defenses
applied
one to which it
at trial the
(“the
pro-
favorable to it
combination must
inappropriate
long ago
and
discredited “late
result”;
surprising
duce a new and
“second-
claiming”
label. Because Stucki had
ary
finding
factors .'.. cannot
support
amended its claims in the course of prose
[sic, holding]
subject
matter is not
cuting
application,
RDI created from
[sic,
your
would not have
obvious if
been]
single
variously
that
fact four
labeled “de
consideration of the three
factors
[Graham]
(1)
fenses”:
the claims of the ’292
listed leads to the conclusion that
the sub-
patent
designed
are
to encompass RDI’s
ject
[sic,
matter is
would have
obvi-
been]
product, and therefore claim an invention
ous”).
headings
RDI’s briefs include
assert-
claimed; (2)
different
from that originally
instructions,
ing error in the
but the text
that the claims
by
entered
amendment were
headings
under those
foregoing
discusses its
declaration;
supported by
(3)
never
oath or
objections to the interrogatories, not to the
acquired
that RDI had
“intervening
instructions.
(4) that
rights”;
guilty
Stucki was
(1)
RDI asserts:
is not enti-
claiming”.
“late
As the district court cor
tled to
presume
uncited U.S. Patents
rectly recognized,
question
the sole
raised
1,983,088
1,989,433
to Kiesel and
Syming-
single
but
by
variously stated defense
PTO,
ton
solely
were considered
be-
is whether
claims entered
amend
they
cause
are listed
classes and subclass-
supported by
ment were
the disclosure in
searched;
(2) that
two patents
es
those
original application.
clearly
As
set
Stucki’s
arrangement
per-
are more
and the Holland
forth at
snubber not to truck assemblies. infringement RDI admitted claims in all Approximately percent. A. 1,671 it suit. When made the in this earsets arguing In testimony estab- it infringed claim Whether country, lished that would have made it at least 68% those earsets were sold in the else U.S. sales, only of RDI’s Stueki misconstrues not irrelevant, where is therefore no error appellate our role as an court but the evi- in including among occurred those earsets question dence itself. The presupposes infringing products royalty on which have Stueki would made of RDI’s 100% due. sales and the answer indicates that v. Notice resulted in a would have 68% increase The cited testimony Stuekis sales. thus RDI’s mere us that assertion before provides support no whatever for Stucki’s receive did not actual notice of the testimony assertion that indicates January until 1975 does not establish as sales, finding made clearly erroneous the district court’s would have 68% of RDI’s Stueki injunction in a mis- that error If waived the view Stucki support and cannot statement con- remain resides in the district court’s that RDI would expectation taken record. cerning proof an absence of that is unfortunate. damages, responsible extent to record establishes the Nothing of that 35 points out U.S.C. correctly Stucki may have contributed which Stucki “adequate to provides damages § events, all delay before trial. In year five pro- infringement compensate” for proceed- conducted a full the district court only as the royalty vides for a reasonable at which was found ing damages, should Stucki damage floor beneath which a award damages in its fail- its actual difficulty not fall. Its here lies not to have established leaving the prove damages, ure to actual 284. No basis exists under 35 U.S.C. § court with no alternative but that district overturning the award of therefore for measuring damages what would light made in of those damages and interest royalty. been a reasonable proceedings. ii. Interest Proceedings Further Lastly, asserts that a 6% in of this case to the district Upon return represents
terest rate neither the value of court, motion for an assuming Stucki’s nor money adequately compensates Stucki upon, then been acted provides injunction for its loss. 35 U.S.C. § adequate award ... at an damages granted court “shall we it will be presume infringement for the ... compensate determining damages to be early date. as fixed together with interest and costs infringement occurring from awarded for ” “leaves the language the court.... That 28,1983 until the final the March awarding prejudg court some discretion in injunction, the rate of interest grant of the *14 Corp. ment interest”. General Motors damages equal is applicable to those 2058, 103 Corp., -- U.S. --, Devex S.Ct. Treasury bills. coupon yield issue U.S. Lam, (1983); 211 Inc. v. 76 L.Ed.2d (1982). concern 1961 U.S.C. Stucki’s § Corp., Johns-Manville the full amount ability for its to collect (Fed.Cir.1983). Though finally presentation awarded is a matter for inter higher could have selected a court course, court, may, which to the district rate, is est mere assertion 6% Stucki’s not without modify judgment its and is an abuse of too does not establish that low to enforce it. power discretion occurred here. stipulated in 1980 it tells us that Stucki Costs on injunction appeal, until decision delay are not al- lawyering The limit lines of on proceedings it learned in the dam- ways ap- clear. The zenith of zeal was of RDI had ages that the two shareholders of RDI’s if not exceeded those proached assets, its milking been and were RDI of or law. having no true basis in fact defenses injunction for an that it then filed motion RDI, sought appeal on Similarly, like which the district court had not acted on damages facts and a de a retrial of the filed, two appeal this that RDI’s testimony to misconstrued approach novo $2,200,000 received from RDI stockholders express find- court’s the face of the district $1,000,000, all from RDI’s in- gained record, that it had not ing, supported on litigation, that RDI’s fringement during the This court damages. its actual proved just from before the suit infringing sales parties leave the where content therefore to $19,000,000, $9,000,- with a was filed were provide finds them and to herewith that suffered actu- margin, that Stucki gross appeal. own costs on party pay each shall $7,000,000 than over of more damages al filing from years than five the more Decision while it waited for of trial completion having legal error been prejudicial No owner in plight decision. have influenced the shown to it cannot may sympathy; invoke this case hav- of RDI’s motion for JNOV of discretion. the denial finding invoke a of abuse correct, ing eminently been awarding $2,182,986 denial of damages and inter- est, final entered on March RDI’s motion for new trial representing no 28, 1983 is affirmed. discretion, abuse of having and no error Judge been shown in Broderick’s order AFFIRMED.
APPENDIX A THE IN UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF PENNSYLVANIA DYNAMICS, RAILROAD CIVIL ACTION v. INC. A. NO. 76-800 STUCKI COMPANY TO THE JURY
INTERROGATORIES We, case, captioned unanimously in the above find as follows: 1,2 questions Instructions: Answer and 3A. you plaintiff proved by convincing
1. Do find that the has clear and evidence 3,837,292 ground United States Patent No. is invalid on the of obviousness? X NO
YES_ you proved by preponderance 2. Do find that defendant has of the evidence filing the effective date of the invention claimed in United States 3,837,292 22,1969? August Patent No. X NO YES _ you plaintiff proved by convincing 3A. Do find that clear and evidence that 3,837,292 ground United Patent No. is invalid on the that the invention States known, public year prior claimed was or on use sale more than one patent application? filing the effective date X NO YES_ your “No”, question proceed Instructions: If question answer to 3A is 4 and following questions. “Yes”, your question answer If 3A is answer question following questions. 3B and *15 you 3B. Do proved by convincing find that defendant has clear and evidence that use or sale of the experimental claimed invention was an use?
YES_ NO_ you plaintiff proved by 4. Do find that convincing has clear and evidence that 3,837,292 United Patent ground States No. is invalid on the patent application amendment April required filed on supplemental oath or declaration in that the amendment contained matter originally substantially shown or described but not embraced in the statement originally presented application? invention or claim X NO
YES_(cid:127) you plaintiff 5. Do proved by convincing find that the has clear and evidence that 3,387,292 claiming? United Patent States No. is invalid for late NO X
YES_ you plaintiff proved by convincing 6. Do find that has clear and evidence that 3,837,292 ground United Patent invalid States No. on the application contemplated by failed to set forth the best mode the inventor carrying out his invention? NO X
YES_ you plaintiff proved by convincing Do 7. find that has clear and evidence that 3,837,292 Patent No. States are claims 7 and/or of United invalid on distinctly particularly point out and not they do claim ground subject applicant regards invention? matter which the as his X NO YES _ convincing you plaintiff proved by clear and evidence that Do find that has 8. 3,837,292 ground on the United Patent No. is invalid States description specification application provide such that does practice skilled in the art to the invention? would enable one NO X
YES _ prior questions that Patent you by any your answers to Instructions: If have found however, invalid, If, you 3,837,292 proceed have no further. No. then invalid, questions patent to be answer 9 and 10. not found the proved by preponderance the evidence that you plaintiff 9. find that Do 3,387,292? acquired intervening rights Patent No. it has under United States NO X
YES _ you proved by preponderance of the evidence 10. Do find that defendant has 3,827,292 infringement plaintiff’s of United Patent No. was willful? States NO X
YES_ (Signature Foreperson) Dated: June [10] 1980.
APPENDIX B
Interrogatories (MARK NO) OR YES NO YES the_article scope Is within the and con- prior tent of the art? impedance pass 2. Did the associated with the low filter phase loop the_Stereo locked charge discharge substantially equal Tuner time constants? *16 the_Stereo
3. Does Tuner have constant driving impedance? driving impedance,” used
4. Does the term “constant as pat- reissue No._(“the in U.S. Patent ent”) person ordinary of skill in the art how teach a impedance can have and still be much variation that “constant”? patent in some Was claim 1 of the reissue broadened 5. original patent? respect scope in the from its 6. Did the inventor listed in the reissue act with gross bad faith negligence or when he made the statements of to the fact United Patent States regarding Trademark operation Office of the _Stereo Tuner?
7. Does the_chip following have the ele- (which ments are set forth in each of asserted claims 3,4, 5):
A first filter means?
A second filter means? driving impedance?
A constant respect the_
8. claim With to asserted does article disclose: attaching a_lead a. “a of a method of _to a_” “obtaining b. access the_lead “screwing
c. free end of the_” into ordinary pertinent art that Is skill in the
9. the level of a_? ordinary Is the level skill pertinent in the art that knowledge the combination of skill and of a together expertise _ with the of a _engineer having a mechanical or elec- aptitude engineering degree? trical NICHOLS, one, Judge, Senior concur- this though but reflected glory Circ.uit in the ring result. case of this writer. concur in join is, I the result and impossible trouble it is to foresee captioned (c) portion opinion contingencies. Dam- parts all In future cases Much, all, ages. cited, that is perhaps opinion said in this will response be and the parts correct, prior opinion but bewill made that the words referred to are I serious qualms saying about it. The Future judges may dicta. this court attempt guidelines is to have comprehensive by our struck wisdom wish to follow all contingencies likely words, as to to arise may when a or they perceive they our are is asked or general allowed to return a problem confronted we did not fore- see, dealing verdict with the issue of obvious- and find our words an embarrassment. event, ness under 103 of Act. No pre- doubt In the latter it cannot now be § courts guide- profess district have a need these whether will themselves they dicted *17 it worthy statements, lines and would be a our enterprise reject bound or them as for one our able textbook nonbinding writers. I dicta. The future utility or qualms being have about attempted by subsequent a career of a dictum is wholly panel unpredictable, of three judges twelve-judge why judges and that is over court, given dicta, even as panel distinguished centuries have avoided or at least said relevant, i.e., suit was expo- the Stucki device in judicial were so.
they doing When to be decid- was sition relates to a concrete issue and Holland’s not. Stucki hydraulic ed, meaning however, add to record facts evidence, substantial offered words, and their safeguards against exist believed, and could which a dictum being read out of context. With did, doubtless view of so, up having not may this is and it well end not work in the manner Holland device did effect author never intend- judicial all there really RDI. This asserted ed. the Chief point. the obviousness As was on course, state always Of the court should to find- wanted us make a Judge says, RDI on, this rule the rule law it relies which contrary jury’s, our own to ing of cover than the before the may more case was no liberty not at to do. There we are forensically be nec- may court. Or dictum being inadequately as issue argu- essary, example, deal with as to erroneously instructed the obviousness imag- commonly urged, predicting ments so any Surely no federal point. issue or other it has inary horribles if the court what does it about court, may however deluded be must forgivable decided do. dicta Such areas, more law in some difficult carefully be and hedged. limited merely issue. reverse on this factual would I But if pronounce were to dissertation hand, I with subject on the at start would
the recent con- scholarly comprehensive banc, Circuit,
sideration en by the Seventh Sears, Co., v.
Roberts Roebuck & (1983). it I take this is the “[l]an- to in
guage appearing elsewhere” referred (B)(1). jurisdiction
Part own Our exclusive require of certain of cases does not classes Labrado, Robert L. JONES us to follow other opinions such cases Inc., Appellants, courts, require ig- but not that we it does my nore them either. consideration light I would topic, grope this difficult HARDY, Appellee. Alex might from wherever it emanate. Appeal No. 83-900. case The obviousness issue the instant of Appeals, Court United States is, however, readily and it simple, can Federal Circuit. committed no judge shown the district more ef- reversible error. Railroads needed 8, 1984. Feb. to deal car roll and fective snubbers increasing in view of and load pitch, speeds deteriorating
weights, and roadbeds. Our snubbers perceived prior
inventor art
needlessly the entire attempted control range weight car from full
broad art worked all
empty. prior snubbers but as the
right, were not efficient He a snubber
Stucki invention. contrived the car was inoperative
that was only car was
empty engaged when the al- Dynamics loaded. Railroad
partially however, prior unpa-
leged, art but job in device did the same
tented Holland way. too Allegedly the same
almost light at loads. The
went out of contact car Holland differencé between the
greatest patentably snubbers
and Stucki