General Electro Music Corp. v. Samick Music Corp.

• Decision Date: 22 March 1994
• Docket Number: No. 93-1299,93-1299
• Citation: 30 USPQ2d 1149,19 F.3d 1405
• Parties: GENERAL ELECTRO MUSIC CORP., and General Music S.P.A., Plaintiffs-Appellees, v. SAMICK MUSIC CORPORATION, Defendant-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1405

19 F.3d 1405

30 U.S.P.Q.2d 1149

GENERAL ELECTRO MUSIC CORP., and General Music S.P.A. Plaintiffs-Appellees, v. SAMICK MUSIC CORPORATION, Defendant-Appellant.

No. 93-1299.

United States Court of Appeals Federal Circuit.

March 22, 1994.

Daniel P. Hogan, Ross & Hardies, of Chicago, IL, argued for plaintiffs-appellees. With him on the brief was P. Matthew Glavin.

David A. Dillard, Christie, Parker & Hale, of Pasadena, CA, argued for defendant-appellant.

Before NIES ^*, LOURIE and CLEVENGER, Circuit Judges.

LOURIE, Circuit Judge.

Samick Music Corporation appeals from a final judgment of the United States District Court for the Northern District of Illinois entered in favor of General Electro Music Corporation and General Music, S.P.A. pursuant to jury verdicts that Samick's U.S. Design Patent 310,232 was unenforceable by reason of inequitable conduct and invalid on the ground of obviousness under 35 U.S.C. Sec. 103 (1988), and that General Electro Music and General Music did not engage in trade dress infringement. General Electro Music Corp. v. Samick Music Corp., No. 90 C 5590 (N.D.Ill. Aug. 17, 1992). The district court denied Samick's post-trial motions for judgment as a matter of law and for a new trial. We affirm-in-part.

BACKGROUND

General Electro Music commenced this action on September 25, 1990, seeking a declaratory judgment that Samick's '232 design patent, entitled "Electronic Baby Grand Piano," was unenforceable, invalid, and not infringed. Samick answered and filed a counterclaim asserting patent infringement and trade dress infringement. Samick also filed counterclaims on the same theories against General Music as a third party defendant. General Music counterclaimed seeking a declaratory judgment of unenforceability, invalidity, and noninfringement. For purposes of this appeal, General Electro Music and General Music have consolidated their arguments and will be collectively referred to as "GEM."

GEM's claim that Samick engaged in inequitable conduct before the Patent and Trademark Office ("PTO") pertained in part to a "petition to make special" that Samick filed through its patent attorney, Walter Maxwell, on July 21, 1989, during prosecution of the application which ultimately issued as the '232 patent. See 37 C.F.R. Sec. 1.102 (1992); U.S. Patent and Trademark Office, Manual of Patent Examining Procedure (MPEP), Sec. 708.02 (9th rev. 1988) (setting forth requirements for petitions to make special). Samick sought expedited examination of its application on the ground that the claimed design was being infringed. See MPEP Sec. 708.02, II. At the time Samick filed its petition, the MPEP required that an applicant support a petition to make special with an oath or declaration alleging facts showing, among other things, "that he or she has made or caused to be made a careful and thorough search of the prior art or has a good knowledge of the pertinent prior art." MPEP Sec. 708.02, II(5). In support of the petition, Maxwell filed a declaration in which he described the alleged infringement and referred to a prior art search. Maxwell stated: "[A] prior art search conducted on the subject matter of this design application has uncovered ... U.S.Des. 260,528 to Decker." Maxwell stated under oath that the statements in his declaration were true, and further acknowledged that any willful false statements would jeopardize the validity of the application and any patent issuing therefrom:

I hereby declare that all statements made herein in my own knowledge are true and that all statements made on information and belief are believed to be true and further that these statements are made with the knowledge that willful false statements and the like so made are punishable by fine or imprisonment or both ... and that such willful false statement my [sic, may] jeopardize the validity of this application or any patent issuing thereon or any patent to which this verified statement is directed.

On August 31, 1989, the Commissioner granted Samick's petition and Samick thereafter received expedited examination of its application. The examiner rejected Samick's claim as obvious over four prior art references, none of which was cited by Maxwell in his declaration. Samick argued to the PTO that the claimed design was patentable over the cited prior art. On August 28, 1990, Samick's application issued as the '232 patent.

At Samick's request, the action was tried to a jury. GEM asserted that Samick engaged in inequitable conduct during prosecution of the '232 patent application by making a material false statement to the PTO. GEM alleged that Maxwell did not conduct a prior art search before filing the petition to make special and lied under oath when he said that he had. ¹

Samick's position was that Maxwell's statement that he conducted a prior art search was not false because Maxwell had asked numerous individuals in the piano design industry whether they knew of pertinent prior art designs and had searched his own files for prior art. Samick maintained that Maxwell's activities constituted a legitimate prior art search. Samick conceded, however, that Maxwell did not conduct the equivalent of a prior art search in the PTO files, nor did he hire a professional searcher to carry out such a search.

Following a five-day trial, the jury returned special verdicts finding that Samick intentionally made a material false statement to the PTO regarding its search of the prior art. The jury further found that the '232 patent was invalid because the claimed design would have been obvious to one of ordinary skill in the art at the time it was created, and that there was no trade dress infringement. Accordingly, the court entered judgment in favor of GEM, declaring the '232 patent unenforceable by reason of inequitable conduct and invalid for obviousness. Samick filed a post-trial motion for judgment as a matter of law (JMOL) or, in the alternative, for a new trial. The court refused to overturn the jury's verdicts, stating that "[t]here was ample evidence to support all of the jury's findings." Slip op. at 3. Accordingly the court denied Samick's motions, and Samick now appeals.

DISCUSSION

A. Inequitable Conduct

"The concept of inequitable conduct in patent procurement derives from the equitable doctrine of unclean hands: that a person who obtains a patent by intentionally misleading the PTO can not enforce the patent." Demaco Corp. v. F. Von Langsdorff Licensing, Ltd., 851 F.2d 1387, 1394, 7 USPQ2d 1222, 1228 (Fed.Cir.), cert. denied, 488 U.S. 956, 109 S.Ct. 395, 102 L.Ed.2d 383 (1988). A patent may be held unenforceable by reason of a patentee's inequitable conduct in, among other things, the submission of material false information with an intent to deceive. Kingsdown Medical Consultants, Ltd. v. Hollister, Inc., 863 F.2d 867, 872, 9 USPQ2d 1384, 1389 (Fed.Cir.1988) (in banc), cert. denied, 490 U.S. 1067, 109 S.Ct. 2068, 104 L.Ed.2d 633 (1989).

The ultimate question whether there was inequitable conduct is committed to the discretion of the trial court and we review the court's determination that Samick engaged in inequitable conduct for abuse of discretion. Modine Mfg. Co. v. Allen Group, Inc., 917 F.2d 538, 541, 16 USPQ2d 1622, 1624 (Fed.Cir.1990), cert. denied, 500 U.S. 918, 111 S.Ct. 2017, 114 L.Ed.2d 103 (1991); Paragon Podiatry Lab., Inc. v. KLM Lab., Inc., 984 F.2d 1182, 1190, 25 USPQ2d 1561, 1568 (Fed.Cir.1993). We will not disturb that determination absent a showing that it was based upon erroneous finding of fact, a misapplication or misinterpretation of applicable law, or evidences a clear error of judgment. Modine, 917 F.2d at 541, 16 USPQ2d at 1624 (citations omitted).

The disputed issues of fact underlying the issue of inequitable conduct are not jury questions, the issue being entirely equitable in nature. See Gardco Mfg., Inc. v. Herst Lighting Co., 820 F.2d 1209, 1212, 2 USPQ2d 2015, 2018 (Fed.Cir.1987). Thus, the facts are ordinarily for the court to resolve, accompanied by findings of fact in accordance with Rule 52(a). Samick made correction of error more difficult for itself by having had the issues of fact respecting inequitable conduct decided by a jury by means of special verdicts. Because both parties consented to trial of the factual issues by the jury, the special verdicts have the same effect as if trial by jury had been a matter of right and the verdict cannot be treated as advisory only. Modine, 917 F.2d at 542 n. 2, 16 USPQ2d at 1625 n. 2. Thus, we review the special verdicts under the stringent substantial evidence standard, rather than under the more lenient clearly erroneous standard of Rule 52(a).

The jury found that Maxwell's statement in the petition to make special concerning conducting a prior art search was material and intentionally false. In denying Samick's motion for JMOL, the district court determined that that finding was "clearly supported by the evidence, cannot be set aside and justifies a conclusion of more than gross negligence." Slip op. at 4. On that basis, the court entered judgment that Samick's patent was unenforceable by reason of inequitable conduct before the PTO. Samick argues that that ruling was erroneous, asserting only that the jury's underlying finding of fact is not supported by substantial evidence. Samick does not urge that the district court abused its discretion on any other ground. Accordingly, the only issue before us is whether the jury's finding that Samick intentionally made a material false statement to the PTO regarding its search of the prior art is supported by substantial evidence. See Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 893, 221 USPQ 669, 673 (Fed.Cir.) (citation omitted), cert. denied, 469 U.S. 857, 105 S.Ct. 187, 83 L.Ed.2d 120 (1984). Under this standard, we review the evidence in the light most favorable to GEM, the non-moving party, drawing all reasonable inferences in GEM's favor, to...