744 F.2d 797 (Fed. Cir. 1984), 84-515, Weinar v. Rollform Inc.

Docket Nº:Appeal Nos. 84-515, 84-526.
Citation:744 F.2d 797
Party Name:223 U.S.P.Q. 369 Roger Neil WEINAR, an individual, Concept Search, Inc., a corporation, and National Gypsum Company, a corporation, Appellees, v. ROLLFORM INCORPORATED, a corporation, Appellant. Roger Neil WEINAR, an individual, Concept Search, Inc., a corporation, and National Gypsum Company, a corporation, Cross-Appellants, v. ROLLFORM INCORPORAT
Case Date:September 17, 1984
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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Page 797

744 F.2d 797 (Fed. Cir. 1984)

223 U.S.P.Q. 369

Roger Neil WEINAR, an individual, Concept Search, Inc., a

corporation, and National Gypsum Company, a

corporation, Appellees,

v.

ROLLFORM INCORPORATED, a corporation, Appellant.

Roger Neil WEINAR, an individual, Concept Search, Inc., a

corporation, and National Gypsum Company, a

corporation, Cross-Appellants,

v.

ROLLFORM INCORPORATED, a corporation, and George C. Adams,

an individual, Cross-Appellees.

Appeal Nos. 84-515, 84-526.

United States Court of Appeals, Federal Circuit

September 17, 1984

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Douglas W. Sprinkle, Birmingham, Mich., argued for appellants. With him on the brief was Ernest I. Gifford, Birmingham, Ala.

Eric P. Schellin, Arlington, Va., argued for appellees. With him on the brief was Kenneth L. Warsh.

Before MARKEY, Chief Judge, NICHOLS, Senior Circuit Judge, and KASHIWA, Circuit Judge.

MARKEY, Chief Judge.

Appeals from judgments entered on verdicts after denials of motions for judgment notwithstanding the verdict (JNOV). The United States District Court for the Eastern District of Michigan entered judgments on jury verdicts that U.S. Patent No. 3,308,590 (Ettore patent) is valid and not infringed, that U.S. Patent No. 4,117,644 ('644 patent) is valid and infringed, that U.S. Patent No. 4,221,095 ('095 patent) and U.S. Patent No. 4,296,580 ('580 patent) are invalid, and that plaintiffs Roger Neil Weinar, Concept Search, Inc. (Weinar) and National Gypsum Company (Gypsum) are each entitled to damages of $66,930. We affirm in part and vacate in part.

BACKGROUND

The Parties

Weinar is the patentee of the '644 patent (issued October 3, 1978), the '095 patent (issued September 9, 1980), and the '580 patent (issued October 27, 1981). The patents are directed to a wallboard fastener and a wall constructed with that fastener.

Weinar manufactures the fasteners. Concept Search, Inc. is assignee of the patents. Gypsum is sole distributor of Weinar's fasteners in the United States. Weinar sells half his fasteners to Gypsum and half to a Canadian distributor.

Rollform Incorporated (Rollform) manufactures and sells fasteners for wallboard. On November 29, 1978, Rollform obtained from Champion International Corporation (Champion) a license under the Ettore patent, which discloses a fastener similar to Weinar's and which issued years before his patent applications. Rollform purchased the Ettore patent on November 13, 1979.

From February, 1979 to June 1, 1980, Rollform made over two million of its "Type A" fasteners. From June 1, 1980 to present it has made its "Type B" fastener.

The Invention

The Weinar fastener is a metal one-piece clip with pointed impaling flanges. An opening in the clip allows for securing it to wooden framing with a nail or screw. A walled depression strenghthens the clip and spaces the wallboard from the frame.

The Weinar fastener is illustrated thus in the drawings of the '644 patent:

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And thus in the identical drawings of the '095 and '580 patents:

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Rollform's type "A" and "B" fasteners are illustrated in the drawings introduced at trial:

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Patent and Trademark Office Proceedings

On September 29, 1978, during pendancy of the application for the '644 patent, Weinar filed what he called a first continuation-in-part (CIP) application. He says he added no new matter, but filed it to permit extensive rewriting. When claims were rejected for double patenting and as obvious in view of Ettore, Weinar filed a terminal disclaimer, cancelled four claims, and added seven new claims. The CIP application issued September 9, 1980 as the '095 patent.

Weinar had filed a further CIP application on July 23, 1980, containing new matter. On September 8, 1980, Weinar filed a petition to make that application special in the Patent and Trademark Office (PTO), citing the present litigation. When the PTO rejected all claims for obviousness-type double-patenting and as obvious in view of Ettore, Weinar filed a terminal disclaimer, cancelled a claim, and added five claims. The application was issued October 27, 1981 as the '580 patent.

The Ettore fastener is shown in these drawings from the Ettore patent:

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Judkins patent No. 4,127,975 (Judkins) discloses a wallboard fastener having this configuration:

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The Judkins patent was issued December 5, 1978 on a continuation of an application filed July 15, 1976; i.e., about 3 1/2 months before the October 3, 1976 filing date of the application that resulted in the '644 patent. The Examiner who allowed the Judkins patent application examined the applications that issued as the '095 and '580 patents. He cited Judkins against the '095 but not against the '580 patent. Weinar called the examiner's attention to an advertisement of the Judkins fastener during prosecution of the '644 patent, saying he did not know whether it was prior art and was therefore not admitting that it was. Though Weinar later learned that the Judkins fastener did constitute prior art, he made no mention of it to the PTO.

District Court Proceedings

Weinar sued Rollform on October 31, 1979, alleging infringement of the '644 patent. On January 9, 1980, Weinar amended his complaint, alleging unfair competition, saying Rollform's imitation of Weinar's advertising was an effort to pass its fasteners off as Weinar's.

Rollform answered on January 16, 1980, denying validity of the '644 patent for prior use, anticipation, obviousness, incomplete specification, indefinite claims, and lack of synergism. Rollform counterclaimed for infringement of its Ettore patent.

On February 22, 1980 Weinar answered the counterclaim, denying validity of the Ettore patent for incomplete specification and indefinite claims, denying enforceability because of misuse, and saying Ettore's claim wording precluded application of the doctrine of equivalents.

On June 1, 1980 Rollform ceased making its type "A" fasteners and began making and selling type "B" fasteners. Weinar conceded that type B does not infringe the '644 patent. Rollform conceded that if the '644 patent is valid, its type A infringes it.

On November 13, 1980, Weinar again moved to amend the complaint, alleging

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direct, induced, and contributory infringement of his newly issued '095 patent. The motion was granted on January 9, 1981.

Rollform answered on February 23, 1981, alleging invalidity of the '095 patent for prior use, anticipation, obviousness, incomplete specification, indefinite claims, lack of synergism, and late claiming.

The '580 patent having issued on October 27, 1981, Weinar filed an additional complaint the next day alleging direct and induced infringement.

Rollform denied validity of the '580 patent on the grounds cited against the '095 patent plus double patenting and fraud on the PTO. Answering Rollform's counterclaim for infringement of the Ettore patent, Weinar said that patent was invalid for wrong inventors, anticipation, obviousness, incomplete specification, and indefinite claims, and was unenforceable because of misuse. He denied infringement.

Rollform included in its answers what it designated as counterclaims for invalidity of each of Weinar's three patents. It did not specifically seek a declaratory judgment of invalidity.

The district court consolidated Weinar's complaints on February 9, 1982.

Witnesses at a nine day trial were Weinar, Hauss, Adams, Krass and Ettore. Judkins and Sowinski testified by deposition.

Weinar described the making of his inventions, the patents, development of his advertising, Rollform's infringement, his discussions with Adams, his damages and lost profits, the prosecution of his applications, the relationship of Weinar and Gypsum, Gypsum's exclusive license, and unfair competition.

Hauss appeared as a patent law expert and employee of Gypsum. He testified on the patents, on infringement, on the scope of Weinar's claims, on validity and scope of the Ettore claims, on the relation between Weinar and Gypsum, on damages, and on unfair competition.

Adams testified on his work in development of the Rollform fasteners, discussions with Weinar, Rollform's acquisition of the Ettore patent, and the organization and business operations of Rollform.

As an expert, Krass testified on the scope of the claims in issue, infringement, and validity of the patents.

Ettore testified on the design and development of the fasteners disclosed in the Ettore patent and in his earlier U.S. Patent 3,228,164.

Judkins was deposed on the design and development of the Judkins fastener and the background of his patent.

Sowinski was deposed on his evaluation of the Weinar and Judkins fasteners at Gypsum.

The court gave comprehensive and unchallenged instructions on the law to the jury. At one point in its deliberations, the jury requested and received clarification of the instructions on "late-claiming" and double-patenting.

The court employed a verdict form that required the jury to determine with respect to each patent whether it was "valid" or "invalid" and "infringed" or "not...

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