Minnesota Min. & Mfg. Co. v. Chemque, Inc.
| Decision Date | 30 August 2002 |
| Docket Number | No. 00-1517.,No. 00-1429.,00-1429.,00-1517. |
| Citation | 303 F.3d 1294 |
| Parties | MINNESOTA MINING AND MANUFACTURING COMPANY, Plaintiff-Appellant, v. CHEMQUE, INC. (formerly known as Chemque Canada, Ltd.) and Thomas & Betts Corporation, Defendants-Cross Appellants. |
| Court | U.S. Court of Appeals — Federal Circuit |
Willem G. Schuurman, Vinson & Elkins L.L.P., of Austin, TX, argued for plaintiff-appellant. With him on the brief was David B. Weaver. Of counsel on the brief were Gerald F. Chernivec and Darla Fonseca, Minnesota Mining and Manufacturing Co., of Austin, TX. Also of counsel on the brief were Nicole W. Stafford and Michael C. Barrett, Fulbright & Jaworski L.L.P., of Austin, TX.
Robert F. Altherr, Jr., Banner & Witcoff, Ltd., of Washington, DC, argued for defendants-cross appellants. With him on the brief were Nina L. Medlock, John P. Iwanicki, and Bradley C. Wright. Of counsel was Patricia E. Hong. Of counsel on the brief was Thomas H. Watkins, Hilgers & Watkins, of Austin, TX.
Before, MAYER, Chief Judge, and GAJARSA and LINN, Circuit Judges.
Opinion for the court filed by Circuit Judge GAJARSA. Dissenting opinion filed by Chief Judge MAYER.
This is an appeal from the judgment issued by the United States District Court for the Western District of Texas pursuant to a jury verdict and the subsequent denial of several motions for judgment as a matter of law ("JMOL"). Minn. Mining & Mfg. Co. v. Chemque, Inc., A-98-CA-241 (order entering judgment) ("Order"). Although two patents were at issue in this action, U.S. Patent No. 5,169,716 ("the '716 patent") and U.S. Patent No. 4,857,563 ("the '563 patent"), only issues relating to claims 1 and 9 of the '716 patent are on appeal before us. Plaintiff-Appellant, Minnesota Mining and Manufacturing Co. ("3M"), the assignee of the '716 and '563 patents, appeals only the denial by the district court of the JMOL that dependent claim 9 of the '716 patent is not anticipated and that defendant-cross-appellant Chemque, Inc. ("Chemque") induced infringement of claim 9. Defendants-cross-appellants Chemque and Thomas and Betts Corp. ("T&B"), (collectively "the defendants") brought a conditional cross-appeal challenging the jury's finding that dependent claim 9 was infringed. We reverse the district court's denial of judgment as a matter of law that claim 9 was infringed by inducement. In addition, we hold that the district court erred in denying judgment as a matter of law that claim 9 is not anticipated. Finally, we affirm the district court's claim construction. Therefore, we affirm-in-part, reverse-in-part, and remand to the district court for a determination of damages.
The '716 patent teaches compositions of encapsulants used for protecting signal transmission devices, such as electrical or optical cables. The signal transmission device is encompassed in a mixture of the two parts that comprise the encapsulant: the anhydride functionalized compound and the cross-linking agent. When mixed, the cross-linking agent reacts with anhydride reactive sites on the anhydride functionalized compound to form a cross-linked polymer structure which is gel-like, thus protecting the signal transmission devices from contaminants.
3M brought suit against Chemque and T&B, for infringement of the '716 patent, and the defendants asserted patent invalidity as a defense. Only claims 1 and 9 of the '716 patent are relevant to this appeal. They recite:
1. A signal transmission component comprising:
a) a signal transmission device; and
b) a dielectric encapsulant which encapsulates said device, said encapsulant having a C-H adhesion value of at least 4.0 comprising:
the extended reaction product of an admixture of:
a) an effective amount of an anhydride functionalized compound having reactive anhydride sites; and
b) an effective amount of a crosslinking agent which reacts with the anhydride sites of said compound to form a cured cross-linked material;
said reaction product extended with at least one organic plasticizer present in the range of between 5 and 95 percent by weight of said encapsulant to form a plasticized system which is essentially inert to the reaction product and substantially non-exuding therefrom.
9. The component of claim 1 wherein said encapsulant has a Polycarbonate Compatibility Value of at least 80.
'716 Patent, col.19 ll. 36-54 and col. 20 ll. 9-11.
The district court conducted a Markman hearing to construe the claim terms. The court construed the term "effective amount" to mean "a sufficient amount of the specified component to form an encapsulant having the specified properties under the specified conditions, if any." Minn. Mining & Mfg. Co. v. Chemque, Inc., A-98-CA-241, slip op. at 6 (W.D.Tex. Jan. 19, 2000) ("Claim Construction"). The term "cross-linking agents" was construed as "a compound which reacts with anhydride sites on an anhydride functionalized compound to form a cross-linked polymer structure." Id.
The case was tried to a jury. Before the jury returned its verdict 3M made a motion for judgment as a matter of law on the defendant's invalidity defenses, which was denied. The jury returned a special verdict. It is summarized below:
Independent Dependent
Claim 1 Claim 9
Infringement No Yes
Contribution No No
Inducement No No
Anticipation No Yes
Obviousness Yes No
Indefiniteness No No
Despite its finding of infringement of dependent claim 9, the jury awarded 3M no damages. The jury was not instructed as to the relationship between independent and dependent claims. This turned out to be a critical oversight by the parties, as evidenced by the apparent inconsistency in having independent claim 1 neither infringed nor anticipated, while dependent claim 9 is both infringed and anticipated. While Schrödinger's cat may be both alive and dead at any given moment, even in theory, claim limitations cannot be concurrently both met and not met.
The parties' attempts to manipulate the inconsistent jury verdict have left the procedural posture of this case an exhibit of frustrated strategy. After the jury verdict was entered, 3M moved for judgment as a matter of law with respect to validity, and moved for a new trial due to the inconsistencies in the verdict, including the infringement inconsistency. In its motion, 3M argued, inter alia, that the infringement verdicts could not be reconciled. Citing to Jeneric/Pentron, Inc. v. Dillon Co., and Wahpeton Canvas Co. v. Frontier, Inc., 3M explained that dependent claims cannot be infringed unless the independent claims from which they depend are infringed. Jeneric/Pentron, 205 F.3d 1377, 1383, 54 USPQ2d 1086, 1090 (Fed.Cir.2000); Wahpeton, 870 F.2d 1546, 1553, 10 USPQ2d 1201, 1208 (Fed.Cir.1989).
In its opposition to the motion for a new trial ("Opposition"), the defendants asserted that the jury findings were not irreconcilable. In the introduction to the Opposition the defendants stated: "This is not a situation in which the jury's findings on essential issues are `in irreconcilable conflict,' such as might be the case where a jury finds, on the basis of a single factual allegation, that a particular proposition is `true' and, at the same time, that its corollary is `not true.'" Addressing 3M's specific assertion of inconsistency with respect to direct infringement, the defendants argued "[t]here is no irreconcilable conflict in the jury findings regarding direct infringement." They continued to argue in the alternative that "[a]ny inconsistency in the jury's interrogatory answers regarding direct infringement is, in all events, clearly irrelevant" because the claims were found to be invalid. In footnote 2 of the Opposition, which immediately followed this quote, the defendants stated:
To the extent an inconsistency is presented by the jury's finding that defendants directly infringed dependent claim 9 of the '716 patent, but did not infringe independent claim 1 from which claim 9 depends, resolution of that inconsistency (in view of the relationship between dependent and independent claims under the patent law) requires a finding that neither claim 9 nor claim 1 is infringed. The law is clear that if an independent claim, here claim 1, is not infringed, claims dependent on that independent claim, e.g., claim 9, cannot be found to be infringed. See Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed.Cir.1989).
The district court ultimately concluded that the verdicts were not inconsistent. Order, slip op. at 1. At that time 3M renewed its motion for judgment as a matter of law on the defendants' invalidity defenses and renewed its motion for a new trial on both the infringement and validity issues. Both were denied.
3M has limited its issues on appeal to whether claim 9 was anticipated and whether Chemque had induced infringement of claim 9. Although 3M asserts that the finding of noninfringement of claim 1 was incorrect, it also repeatedly maintains that it is not challenging that finding, asserting only that by not challenging it, it does not lose the ability to rely on the infringement verdict for claim 9. The defendants have brought a conditional cross-appeal challenging the jury's finding that dependent claim 9 was infringed and challenging the district court's construction of the claim term "effective amount" and "cross-linking agents." This court has jurisdiction over this appeal pursuant to 28 U.S.C. § 1295(a)(1).
This court reviews a denial of JMOL following a jury verdict by reapplying the district court's standard of review. SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1354, 55 USPQ2d...
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