758 F.2d 613 (Fed. Cir. 1985), 84-853, Shatterproof Glass Corp. v. Libbey-Owens Ford Co.

Docket Nº:Appeal Nos. 84-853, 84-883.
Citation:758 F.2d 613
Party Name:225 U.S.P.Q. 634 SHATTERPROOF GLASS CORPORATION, Appellee/Cross-Appellant, v. LIBBEY-OWENS FORD COMPANY and Leybold-Heraeus GmbH, Appellants/Cross-Appellees.
Case Date:March 29, 1985
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

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758 F.2d 613 (Fed. Cir. 1985)

225 U.S.P.Q. 634





Appeal Nos. 84-853, 84-883.

United States Court of Appeals, Federal Circuit

March 29, 1985

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John E. Lynch, Felfe & Lynch, New York City (argued), Alfred H. Hemingway, Jr. of Felfe & Lynch, New York City (on the brief), for appellants/cross-appellees.

William J. Schramm, John E. Nemazi, Burton, Parker, & Schramm, P.C. Mount Clements, Mich., for appellee/cross-appellant.

Before SMITH, Circuit Judge, COWEN, Senior Circuit Judge, and NEWMAN, Circuit Judge.

PAULINE NEWMAN, Circuit Judge.

Libbey-Owens Ford Company and Leybold-Heraeus GmbH appeal from denials of their motions for judgment notwithstanding the verdict (n.o.v.) and for a new trial, and from other rulings related to the issue. The United States District Court for the Eastern District of North Carolina, Judge W. Earl Britt presiding, entered judgment in favor of Shatterproof Glass Corporation on jury verdicts that claims 1, 8, 10, and 11 of U.S. Patent No. 3,904,506 (the Apparatus patent) and claims 1, 3, 4, and 8 of U.S. Patent No. 3,925,182 (the Method patent) are valid and are infringed by operation of a Libbey-Owens Ford manufacturing plant located in Clinton, North Carolina. The jury also found that Leybold-Heraeus' provision of equipment to that plant constituted inducement to infringe or contributory infringement of the claims. The jury assessed damages in the amount of $2,826,793, and upon motion the court granted Shatterproof $464,000 in prejudgment interest. The court denied Shatterproof's request for injunction and granted Libbey-Owens Ford a compulsory license to permit future practice under the Apparatus and Method patents at a royalty rate of 5%, from which rate appellants appeal.

Shatterproof cross-appeals from the denial of its requests for treble damages and for attorney fees.

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The patents at issue relate to "sputter coating" of glass sheets. The technique of sputter coating has long been known in scientific principle: in essence, a solid piece of metal which will form the coating serves as cathode in a vacuum chamber containing the substrate to be coated; an inert gas such as argon is ionized in the chamber, whereby it bombards the metal cathode and knocks off charged metal atoms which deposit to form a film on the substrate.

The two patents in suit describe and claim a multi-step method and apparatus which, according to the record, provided a commercially feasible way of continuously coating large glass sheets such as architectural panels, to form a uniform metallic film of controlled thickness, free of unacceptable defects such as pinholes and irregularities.

Not all of the patent claims were asserted in this action. Of asserted Apparatus patent claims 1, 8, 10, and 11, claim 11 describes some of the multiple components, with respect particularly to the coating chamber:

11. Apparatus for continuous production of sputter-coated glass sheets and the like, which comprises:

a. a coating chamber having entry and exit openings,

b. a platen having a horizontal upper surface for supporting a sheet to be coated in a horizontal position,

c. conveyor means for supporting the platen and sheet in a horizontally disposed position and for passing them into the coating chamber through the entry opening and discharging them through the exit opening,

d. means for sealing the entry and exit openings of the coating chamber when the platen and sheet are supported therein,

e. means connected to the coating chamber for controlling the pressure therein,

f. sputter-coating means mounted in the upper portion of said chamber for depositing a continuous film of a selected coating material on the upper surface of the sheet as it moves through said chamber, and

g. means actuated in response to movement of the platen for selectively opening and then closing the means for sealing the entry and exit openings of the coating chamber.

Apparatus patent claims 1, 8, and 10 variously include additional components, such as entrance and discharge chambers in line with the coating chamber and independent control means for the chambers; means to maintain an inert gas atmosphere in the coating chamber; sealing means at the entry and exit ends of the entrance and discharge chambers with means to open and close in timed relation to the platen movement; heating means and glow discharge means in the coating chamber; control means responsive to platen movement through the coating chamber; a rectangular cathode to which a sheet of coating material is secured; and means for circulating a coolant through a chamber provided for the cathode.

Method patent claims 1, 3, 4, and 8 were asserted. The broadest of these is claim 1:

1. A method for the production of sputter-coated glass sheets which comprises:

a. freely supporting a glass sheet to be coated in a horizontal position on the upper substantially continuous surface of a support platen,

b. freely supporting said platen and glass sheet horizontally upon a conveyor means,

c. conveying the platen and sheet horizontally into a coating chamber,

d. maintaining a predetermined pressure in said coating chamber,

e. sputter-coating a continuous film of a selected coating material on the upper surface of said sheet when supported in the coating chamber, and

f. removing the platen and coated sheet from said chamber.

Method claims 3, 4, and 8 further describe, inter alia, sputter-coating with a plurality

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of cathodes connected to individual power sources and with the power levels independently controlled by movement of the platen; the use of three successive chambers; sealing the coating chamber from adjacent chambers; maintaining an inert gas atmosphere; sputter coating the glass sheet while it is moving; and using movement of the platen to establish communication between the coating chamber and adjacent chambers while maintaining the pressure in the coating chamber.

Both patents were based on a common application filed on September 25, 1973, which was a continuation-in-part of an application filed on November 13, 1972, which continued an application filed on September 8, 1970. The three named inventors, D.C. Carmichael, D.L. Chambers, and C.T. Wan, were employees of Battelle Memorial Institute, a contract research institute retained by Shatterproof, a glass manufacturer, for the purpose of developing a process for coating glass with thin metallic films.

Shatterproof sued Libbey-Owens Ford on November 17, 1981, alleging infringement of the Apparatus and Method patents at the plant in Clinton, North Carolina (the Clinton Coater). Shatterproof later amended its complaint to include Leybold-Heraeus GmbH (LH) and Leybold-Heraeus Vacuum Systems, Inc. (LHVS) as defendants; the amended complaint was eventually dismissed as to LHVS. (We shall refer to the appellants collectively as LOF, except when necessary to distinguish between them.) Both sides requested a jury trial.

The complaint was further amended, by stipulation, to add the count of infringement of Shatterproof's U.S. Patent No. 3,826,728 (the Coating patent). Before trial, after a series of motions and orders, the district court granted Shatterproof's motion to dismiss with prejudice as to the Coating patent. LOF agreed to the dismissal, and now requests attorney fees with respect to the Coating patent.

The jury trial occupied three weeks. The jury returned verdicts that each of the asserted claims of the Method and Apparatus patents were valid and infringed and awarded Shatterproof $2,826,793 in damages.


1. Whether the district court erred in denying LOF's motion for judgment notwithstanding the verdict.

2. Whether the district court abused its discretion in denying LOF's motion for a new trial.

3. Whether the district court erred in denying LOF's motions concerning the amount of damages and the license royalty.

4. Whether the district court abused its discretion in denying Shatterproof's requests for treble damages and attorney fees, and in denying LOF's request for attorney fees relating to the Coating patent.

Patent Validity

LOF challenges the jury's holding that the claims in suit of the Apparatus and Method patents are valid, and argues on appeal that both patents are invalid under 35 U.S.C. Sec. 102 and Sec. 103; that both patents are invalid due to violation of the "on sale" provision of 35 U.S.C. Sec. 102(b); that both patents are invalid for failure to name the correct inventors; and that both patents are invalid for claim indefiniteness in violation of 35 U.S.C. Sec. 112. Errors are assigned to the jury instructions and to the trial judge's management of pre-trial and trial procedures, pertinent to the asserted invalidity of the patents.

In deciding a duly filed motion for judgment n.o.v. upon a jury's determination that a patent is valid (i.e. has not been proven invalid), the district court must determine, without substituting its views for those of the jury when resolving conflicts in the evidence, whether in light of the evidence reasonable persons could have found the facts necessary to support the jury's verdict, or whether the facts properly found can in law support the verdict. Weinar v. Rollform Inc., 744 F.2d 797, 805, 223 USPQ 369, 373 (Fed.Cir.1984).

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In reviewing a decision denying a motion for judgment n.o.v. we do not approach the issues as if there had been no trial. We review the...

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