112 F.3d 1137 (Fed. Cir. 1997), 96-1298, Young Dental Mfg. Co., Inc. v. Q3 Special Products, Inc.

Docket Nº:96-1298.
Citation:112 F.3d 1137
Party Name:42 U.S.P.Q.2d 1589 YOUNG DENTAL MANUFACTURING COMPANY, INC., Plaintiff-Appellant, v. Q3 SPECIAL PRODUCTS, INC., and David G. Kraenzle, Defendants-Appellees.
Case Date:April 29, 1997
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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112 F.3d 1137 (Fed. Cir. 1997)

42 U.S.P.Q.2d 1589

YOUNG DENTAL MANUFACTURING COMPANY, INC., Plaintiff-Appellant,

v.

Q3 SPECIAL PRODUCTS, INC., and David G. Kraenzle,

Defendants-Appellees.

No. 96-1298.

United States Court of Appeals, Federal Circuit

April 29, 1997

Rehearing Denied; Suggestion for Rehearing In Banc

Declined June 19, 1997.

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[Copyrighted Material Omitted]

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Gregory E. Upchurch, Polster, Lieder, Woodruff & Lucchesi, L.C., St. Louis, MO, argued, for plaintiff-appellant. On the brief were J. Philip Polster and Jonathan P. Soifer.

J. Bennett Clark, Senninger, Powers, Leavitt & Roedel, St. Louis, MO, argued, for defendants-appellees. With him on the brief was Rudolph A. Telscher, Jr.

Before PLAGER, CLEVENGER, and RADER, Circuit Judges.

CLEVENGER, Circuit Judge.

Young Dental Manufacturing Company (Young) appeals the judgment of the United States District Court for the Eastern District of Missouri in favor of Q3 Special Products and David G. Kraenzle (collectively Q3). Young Dental Mfg. Co. v. Q3 Special Prods., Inc., No. 93-CV-2319 (E.D.Mo. Sept. 21, 1995) (as amended by Order entered Feb. 21, 1996). The court ruled on summary judgment that Q3's products do not literally infringe any patent claim asserted by Young. The court later upheld a jury verdict of noninfringement under the doctrine of equivalents and invalidity of all asserted claims for violation of the best mode requirement of 35 U.S.C. § 112 and for obviousness under 35 U.S.C. § 103. We affirm-in-part and reverse-in-part.

I

Young's asserted patents, U.S. Patent Nos. 5,156,547 and 5,423,679 (the '547 and '679 patents), disclose an improved disposable prophy angle (DPA). A prophy angle is the small hand-held device used by dentists to polish teeth. It holds a rubber cup, known as a prophy cup, which the dentist dips into an abrasive paste and then holds against the patient's teeth as the cup rotates. Early prophy angles were not disposable; they were made entirely of metal and had to be sterilized in an autoclave between uses. In the 1970s, plastic DPAs were introduced which could be pushed onto the end of a metal handpiece and locked onto the handpiece's drive shaft. These early DPAs did not replace metal DPAs, however, largely because they often ran roughly, fell apart, and overheated.

In November 1990, Ronald Bailey, an employee of Young, filed a patent application for an improved DPA and assigned the application to Young. The application matured into the patents in suit. Fig. 1 of the '547 patent shows the components of Bailey's DPA in side cross-section.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE


The body 3 of the angle includes a sleeve 4, a neck 5, and a head 6 formed integrally with each other. The head is formed as a cylinder at right angles to the neck. The body and head have axial bores 7 and 9, respectively,

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into which are placed drive shaft 15 and driven shaft 29, respectively. To assemble the prophy angle, one inserts the drive shaft into the body bore from the distal end of the prophy angle through aperture 11. One then inserts the driven shaft into the head bore, where the drive gear 17 meshes with the driven gear 27. A snap cap 35 slides down into head bore 9 to lock the gears and shafts in place. At its front edge, the snap cap has a sheath 43 that covers the aperture and a latch 41 that locks the cap in place.

The '547 patent was the first to issue from Bailey's application. It claims the DPA and a method for assembling the DPA. The '547 patent was followed by the '679 patent, a divisional based on a continuation-in-part application of the '547 patent. Bailey copied the claims in the application for the '679 patent from an application for defendant Kraenzle's later-issued U.S. Patent No. 5,224,859 (the '859 patent) in an effort to provoke an interference between the two applications. The Patent Office refused to declare the interference after Kraenzle surrendered certain claims and amended others to make them patentably distinct from Bailey's claims.

Kraenzle worked as an engineer with Young from December 1990 until his resignation in March 1992. In April 1992, he designed the device accused here of infringing and in July 1992 filed the patent application that matured into the '859 patent. Kraenzle formed Q3 in July 1992 with Chris Carron, another former Young employee, and began selling the accused device in July 1993, the same month in which the '859 patent issued. Kraenzle is the president and majority shareholder of Q3. Figs. 2 through 4 of the '859 patent are representative of Q3's accused device.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE


As is shown, Q3's DPA includes a sleeve and neck, with a head mounted at the neck's end. The drive gear and driven gear are meshed at the end of the neck and a cap 9 rotates upward and snaps shut to hold the gears in place. The dispute in this case centers on whether cap 9 is part of the head when the cap is closed.

II

On November 1, 1993, Young sued Q3, Kraenzle, and Carron, alleging infringement

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of the '547 patent, misappropriation of trade secrets, constructive fraud, and breach of a confidentiality agreement. Young later added a count for infringement of the '679 patent and Carron was dismissed from the suit. Q3 counterclaimed for a declaration of noninfringement and invalidity. In response to cross-motions for summary judgment on infringement, the district court construed the claims but initially declined to rule on infringement. The court denied Young's motion for reconsideration and its request for a Markman hearing. The court then granted Q3's motion for summary judgment of no literal infringement.

Trial was held before a jury September 11-21, 1995. At the beginning of trial, Young moved to exclude certain exhibits, which were models representing a device disclosed in a prior art patent to one Thiedemann, on the ground that the models were incomplete and misleading. The court denied the motion and all renewed motions relating to the Thiedemann models. At the close of the evidence, Young objected to the submission of any jury instruction related to best mode on the ground that there was "no evidence to support the submission of a best mode defense." Importantly, however, Young did not make a motion for judgment as a matter of law (JMOL) on any issue.

The jury returned a verdict in favor of Q3. The jury found noninfringement under the doctrine of equivalents for all asserted claims, and invalidity for obviousness and for failure to comply with the best mode requirement for all asserted claims. The jury also found that Young had not proven its trade secret misappropriation or breach of contract claims. The court denied Young's motion for a new trial and renewed motion for reconsideration of the motions for summary judgment. Young appeals the issues of infringement, obviousness, best mode, and admission of the Thiedemann models. We have jurisdiction to hear the appeal under 28 U.S.C. § 1295(a)(1) (1994).

III

We first consider, for both the '547 and '679 patents, the district court's grant of summary judgment of no literal infringement and the jury's finding of no infringement under the doctrine of equivalents. Summary judgment is permissible when there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c). Even when material facts are in dispute, however, summary adjudication may be appropriate if, with all factual inferences drawn in favor of the nonmovant, the movant would nonetheless be entitled to judgment as a matter of law. Stark v. Advanced Magnetics, Inc., 29 F.3d 1570, 1572-73, 31 USPQ2d 1290, 1292 (Fed.Cir.1994). We review a grant of summary judgment de novo. Mark I Mktg. Corp. v. R.R. Donnelley & Sons Co., 66 F.3d 285, 289, 36 USPQ2d 1095, 1098 (Fed.Cir.1995), cert. denied, --- U.S. ----, 116 S.Ct. 917, 133 L.Ed.2d 847 (1996).

An infringement analysis involves two steps. First, the claim scope is determined without regard for the accused device. See General Mills, Inc. v. Hunt-Wesson, Inc., 103 F.3d 978, 981, 41 USPQ2d 1440, 1442 (Fed.Cir.1997). Second, the properly construed claim is compared with the accused device to determine whether all of the claim limitations are present either exactly or by a substantial equivalent. See id. We review the first step de novo, id., and we typically review the second step for clear error if performed by the court and for substantial evidence if performed by a jury, Hilton Davis Chem. Co. v. Warner-Jenkinson Co., 62 F.3d 1512, 1521, 35 USPQ2d 1641, 1647 (Fed.Cir.1995) (en banc ), rev'd on other grounds, --- U.S. ----, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997).

Young's failure to make a motion for JMOL substantially affects our review of the jury's findings. Where a party fails to make a motion for JMOL at the close of the evidence, the sufficiency of the evidence underlying presumed jury findings cannot be challenged through a renewed motion for JMOL or on appeal. Jurgens v. McKasy, 927 F.2d 1552, 1557, 18 USPQ2d 1031, 1035 (Fed.Cir.1991) (citing Smith v. Ferrel, 852 F.2d 1074, 1075 (8th Cir.1988) and Hubbard v. White,

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755 F.2d 692, 695-96 (8th Cir.1985)). 1 Nonetheless, the party may challenge the judgment on the ground that the judge committed an error of law or abused his discretion, i.e., it may challenge the judge's legal conclusion on obviousness, the judge's jury instructions, and any other issue that was the province of the court rather than the jury and to which it timely objected at trial. Id., 927 F.2d 1552, 18 USPQ2d at 1035-36.

A

Young's challenge to the findings of noninfringement on the '547...

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