Mendenhall v. Cedarapids, Inc.

• Citation: 5 F.3d 1557,28 USPQ2d 1081
• Decision Date: 13 September 1993
• Docket Number: 92-1237 and 92-1256,Nos. 92-1236,s. 92-1236
• Parties: , 38 Fed. R. Evid. Serv. 305 Robert L. MENDENHALL, Plaintiff-Appellant, and CMI Corporation, Plaintiff-Appellant, v. CEDARAPIDS, INC., Defendant/Cross-Appellant.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 1557

5 F.3d 1557

28 U.S.P.Q.2d 1081, 38 Fed. R. Evid. Serv. 305

Robert L. MENDENHALL, Plaintiff-Appellant, and CMI Corporation, Plaintiff-Appellant, v. CEDARAPIDS, INC., Defendant/Cross-Appellant.

Nos. 92-1236, 92-1237 and 92-1256.

United States Court of Appeals, Federal Circuit.

Sept. 13, 1993.

Rehearing Declined; Suggestion for Rehearing In Banc

Declined Nov. 18, 1993.

Jerry J. Dunlap, Dunlap, Codding & Lee, P.C., of Oklahoma City, OK, argued, for plaintiff-appellant. Richard S. Florsheim, Foley & Lardner, Milwaukee, WI, argued, for plaintiff-appellant. Of counsel was George E. Quillin.

Donald H. Zarley, Zarley, McKee, Thomte, Voorhees & Sease, Des Moines, IA, argued, for defendant/cross-appellant. With him on the brief were Edmund J. Sease and Kirk M. Hartung. Also on the brief was Stephen J. Holtman, Simmons, Perrine, Albright & Ellwood, Cedar Rapids, IA.

Before NIES, Chief Judge, MAYER and LOURIE, Circuit Judges.

NIES, Chief Judge.

Robert L. Mendenhall and CMI Corporation, the exclusive licensee for the United States, as owners of all rights in United States Patents Nos. Re. 31,904 ('904 patent) and 31,905 ('905 patent), sued Cedarapids, Inc., in the United States District Court for the Northern District of Iowa for infringement. Cedarapids counterclaimed, charging CMI with infringement of United States Patents Nos. 4,165,184 ('184 patent) and 4,318,619 ('619 patent). Cedarapids also sought declaratory judgments of invalidity, unenforceability and noninfringement of Mr. Mendenhall's patents. After a jury trial, judgment was entered in accordance with special verdicts in favor of Cedarapids on the complaint and counterclaims. Cedarapids was awarded damages in the amount of $1,952,618 plus interest and costs against CMI, and CMI was enjoined from further infringement of the '184 and '619 patents. In Appeal No. 92-1236, Mr. Mendenhall seeks to obtain a new trial by reason of the exclusion of evidence and erroneous jury instructions. In Appeal No. 92-1237, CMI seeks a reversal of the judgment on Cedarapids' counterclaim or a new trial. We find no reversible error raised by these appeals. In Appeal No. 92-1256, Cedarapids seeks to have claims 12 and 13 of the '904 patent declared invalid for obviousness. We agree that Cedarapids is entitled to that judgment.

I. Background

All of the asserted patents relate to the preparation of hot mix asphalt (HMA), a common paving material. Specifically, these patents disclose the "recycling" of old asphalt paving material, also referred to as reclaimed or recycled asphalt pavement (RAP), by using it in the preparation of HMA.

HMA consists broadly of two components: aggregate and asphalt. "Aggregate," also referred to as "virgin aggregate," may consist of rock, gravel, sand, or mixtures thereof. "Asphalt," the highest molecular weight component of crude oil, is the black, sticky substance that gives HMA its characteristic color and odor. As the price of crude oil, and thus of asphalt, increased in the 1970's, the recycling of old asphalt paving material became increasingly attractive.

HMA is prepared in an "asphalt plant," a multi-component assembly, one component of which is an "asphalt mixer." The asphalt mixer is the component that heats and mechanically combines the aggregate, the asphalt, and (in the case of all patents asserted here) the RAP. All of the patents in suit relate to asphalt plants which utilize asphalt mixers known as drum mixers. The use of drum mixers for the preparation of HMA has been known since the 1930's.

Mr. Mendenhall is a paving contractor based in Las Vegas, Nevada. In the mid 1970's, he began experimenting with the preparation of HMA from RAP, using a drum mixer. However, when RAP was introduced into the hot end of the mixer, it burned, emitting a noxious blue smoke. Mr. Mendenhall recognized that this problem could be reduced by introducing the RAP into the cooler, downstream end of the drum.

On August 11, 1975, Mr. Mendenhall filed Application Ser. No. 603,357 (the '357 application), which is grandparent to the applications for both the '904 and the '905 patents. In this application, which issued in December of 1976 as United States Patent No. 3,999,743 (the '743 patent), he disclosed and claimed a process and a drum mixer for making HMA which require the segregation of RAP by particle size, the introduction of larger RAP particles at the hot end, and the introduction of smaller RAP particles in a cooler zone in one or more locations. Extra asphalt may be added.

On August 26, 1976, Mr. Mendenhall filed Application Ser. No. 718,063 (the '063 application) as a continuation-in-part of the '357 application. In this application, which issued in January 1980 as United States Patent No. 4,182,631 (the '631 patent), he disclosed and claimed segregating virgin aggregate (i.e., not recycled) by particle size, introducing larger aggregate particles at the hot end, and smaller aggregate particles in a cooler zone before combining with asphalt. This invention does not involve the use of RAP.

The '905 patent in suit resulted from the following history. On December 27, 1977, Mr. Mendenhall filed Application Ser. No. 864,673 (the '673 application), as a continuation-in-part of the '063 application. In this application, which issued as United States Patent No. 4,177,080 (the '080 patent), he disclosed and claimed the introduction of virgin aggregate in the hot end of the drum mixer, and of RAP into the cooler, downstream end. The claims of the '080 patent are all method claims. The '080 patent was reissued in 1985 as the '905 patent. Representative claim 1 is quoted in the margin, with material added in reissue underlined, and that deleted in reissue bracketed. ¹

On February 16, 1979, Mr. Mendenhall filed Application Ser. No. 12,657, as a division of the '673 application. This application issued as United States Patent No. 4,215,941 ('941 patent) and was reissued as the '904 patent. The claims of the '904 patent are all apparatus claims. Representative claim 12, which was not changed during reissue, is set out in the margin. ²

The drum mixer illustrated in the drawing of the '904 patent is reproduced below. It is a large device, with a typical diameter of 6-10 feet and a typical length of 30-40 feet. During operation, the cylinder is inclined upward at the left end and rotates about its long axis. A burner (12) heats a gas stream, which in turn heats and dries aggregate, which is introduced at the hot end (left end of drawing). Those parts of the drum more distant from the burner are cooler.

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

CMI is a manufacturer of highway construction equipment, including drum mixers and other asphalt plant components. CMI has been Mr. Mendenhall's exclusive licensee of all rights in these patents for the United States since February of 1978. All rights in the patents are owned by Mr. Mendenhall and CMI.

The instant case was filed by Mr. Mendenhall and CMI on June 4, 1986 in the Northern District of Iowa. Cedarapids was charged with infringement of all claims of the '905 patent and all but claims 5 and 10 of the '904 patent. Cedarapids denied validity, infringement, and enforceability of the asserted claims and sought a declaratory judgment that all claims of the '905 and '904 patents were invalid and/or unenforceable. Cedarapids also counterclaimed for infringement of two of its patents, U.S. Patents Nos. 4,165,184 and 4,318,619 issued to Schlarmann (the '184 and '619 patents, respectively).

Following three weeks of trial and two weeks of deliberation, the jury returned over 350 special verdicts which, in sum, concluded that Cedarapids was not liable to plaintiffs because all claims of both patents were invalid (except Claim 13 of '904) on various and different grounds and no asserted claim of '904 was infringed. ³ Some claims were invalidated for more than one reason. For example, the jury found claims 6-10 of '904 and all claims of '905 were invalid by reason of improper reissue. After post-trial motions, the district court entered judgment in accordance with the verdicts that all claims except claims 12 and 13 of the '904 patent were invalid for obviousness; claim 12 was invalid for indefiniteness; and no asserted claim of '904 was infringed; that all claims of the '905 patent were infringed, but all were invalid by reason of a public use bar. The defense of unenforceability by reason of inequitable conduct was rejected. Respecting the counterclaims, the jury found CMI infringed Cedarapids' patents and assessed damages in the amount of $1,952,618 against CMI. Final judgment was entered March 4, 1991, and modified on February 3, 1992 (in an order resolving a number of post-trial motions), to provide for an award of costs and prejudgment interest to Cedarapids.

II. Issues On Appeal

Mr. Mendenhall seeks a new trial of the case but does not otherwise seek to overturn the special verdicts of obviousness of claims 1-11. He challenges only the special verdict of invalidity for indefiniteness of claim 12. Mr. Mendenhall also asserts error in denial of his JNOV motion which sought to overturn the verdicts of noninfringement of '904. Cedarapids seeks a judgment as a matter of law that claims 12 and 13 are also invalid for obviousness.

All claims of the '905 patent, although found to be infringed, were held invalid by reason of the public use bar of section 102(b). ⁴ Again, Mr. Mendenhall seeks a new trial and does not seek reversal of the judgment entered on these verdicts. Cedarapids seeks reversal of the finding of infringement of the '905 claims.

While issues affecting both infringement and validity of the claims are before us, the Supreme Court has directed that we generally rule on validity issues even if we hold that the patents were not infringed. Cardinal Chem. Co. v. Morton Int'l, Inc., --- U.S. ----, 113 S.Ct. 1967, 124 L.Ed.2d 1 (1993). We turn first therefore to Mr....