797 F.2d 1564 (Fed. Cir. 1986), 85-2573, Glaros v. H.H. Robertson Co.

Docket Nº:Appeal Nos. 85-2573, 85-2641.
Citation:797 F.2d 1564
Party Name:230 U.S.P.Q. 393 Emanuel M. GLAROS, Appellant/Cross-Appellee, v. H.H. ROBERTSON COMPANY, Appellee/Cross-Appellant.
Case Date:July 22, 1986
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

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797 F.2d 1564 (Fed. Cir. 1986)

230 U.S.P.Q. 393

Emanuel M. GLAROS, Appellant/Cross-Appellee,


H.H. ROBERTSON COMPANY, Appellee/Cross-Appellant.

Appeal Nos. 85-2573, 85-2641.

United States Court of Appeals, Federal Circuit

July 22, 1986

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[Copyrighted Material Omitted]

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George P. McAndrews (argued), of Allegretti, Newitt, Witcoff & McAndrews, Ltd., Chicago, Ill., for appellant/cross-appellee. With him on brief was L. Michael Jarvis and William J. Harte, of Chicago, Ill.

Arland T. Stein (argued), of Reed, Smith, Shaw & McClay, Pittsburgh, Pa., for appellee/cross-appellant. With him on brief were Frederick H. Colen, James G. Uber and Michael H. Ginsberg, Pittsburgh, Pa.

Before MARKEY, Chief Judge, RICH and SMITH, Circuit Judges.

MARKEY, Chief Judge.

Consolidated appeals from a judgment of the United States District Court for the Northern District of Illinois.

In No. 85-2573, Emanuel M. Glaros (Glaros) appeals from the grant of partial summary judgment to H.H. Robertson Company (Robertson), holding claims 1 and 3 of Glaros' patent 1 invalid for obviousness. Glaros v. H.H. Robertson Company and Inryco, Inc., 2 600 F.Supp. 342, 224 USPQ 1037 (N.D.Ill.1984).

In No. 85-2641, Robertson appeals from the judgment entered on a jury verdict that claim 2 of Glaros' patent is not invalid and was willfully infringed, and from the denial of Robertson's motions for JNOV and for a new trial. Glaros v. H.H. Robertson, 615 F.Supp. 186, 227 USPQ 448 (N.D.Ill.1985). Robertson also asks this court to reverse

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the district court's refusal to grant it summary judgment holding Claim 2 invalid.

We affirm.


(a) Summary Judgment on Claims 1 and 3

On May 7, 1979, Glaros sued Robertson for infringement of claims 1, 2, and 3 of his '844 patent on a prefabricated structural panel. Robertson moved for summary judgment, alleging that the claimed inventions were anticipated or would have been obvious. The then-assigned judge denied the motion. After extensive discovery, Robertson renewed the motion before Judge Hart, to whom the case had been reassigned, alleging obviousness and relying largely on the deposition testimony of Glaros' expert, Dr. Larry D. Luttrell (Luttrell).

On November 14, 1984, Judge Hart, having explained in a thorough and carefully crafted opinion the reasons for doing so, granted partial summary judgment, declaring claims 1 and 3 invalid for obviousness, and reserving the validity of claim 2 for trial.

Judge Hart followed carefully the decisional guidelines set forth by the Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 693, 15 L.Ed.2d 545, 148 USPQ 459, 467 (1966), and in eleven of this court's opinions following and applying those guidelines. He adhered also to the need for determining the presence or absence of genuine issues of material fact, to the requirement that Glaros be given the benefit of inferences, and to the statute, 35 U.S.C. Sec. 282, requiring that each claim be separately considered. The court determined that Robertson had established the absence of factual dispute on the relationship of the prior art to the inventions set forth in claims 1 and 3, but had not established absence of factual disputes on the relationship of that prior art to the invention set forth in claim 2. 3

(b) The Trial

At a pretrial conference, Robertson moved for exclusion of Luttrell as a witness, on the ground that he was not skilled in the art and thus not an expert. Glaros acceded to the motion and the court excluded Luttrell.

On March 13, 1985, after a two-week trial, the jury returned its verdict in the form of answers to interrogatories, saying that claim 2 was not invalid and was willfully infringed by Robertson. Robertson's motions for JNOV and for new trial were denied. The court accompanied its denial of the motion for JNOV with a complete review of the jury's findings, the evidence, and Robertson's contentions, again in light of the guidelines in Graham and in twelve of this court's opinions, including a number involving review of jury verdicts in response to motions for JNOV under Fed.R.Civ.P. 50(b). The court found without merit the argument that a new trial was required. Having then gone on to enter its own findings and conclusions, 4 the court enjoined further infringement and reserved the questions of damages, costs, and attorney fees until the accounting.

(c) The Appeals

The details of this fortunately unique litigation are set forth in the trial court's opinions reported as above indicated. We deal on these appeals with only the facts relating to our resolution of the issues presented.

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The proceedings below and these appeals would play better in a tragicomic theatre of the bizarre. Trial counsel succeeded in creating a muddled procedural puddle in the trial court, where the parties effectively engaged in two legal contests, each prevailing in one and losing in the other. Each has then tried on appeal, in briefs containing mischaracterizations of the law and the events below, to use the victory in one as a means of converting the loss to victory in the other.

Before the trial court, Robertson first asserted the lack of qualifications of Glaros' expert, then, as above indicated, relied on that expert to support summary judgment, then moved to exclude that expert from the trial for lack of qualifications, and Glaros, having designated that same person as an expert, acceded to his own expert's exclusion.

Disregarding the differences between a partial summary judgment proceeding and a trial, Robertson says on appeal that the former established "law of the case" in the latter and Glaros says the latter requires reopening of the former and should be the "law of the case" in the reopened former. Robertson says the trial should be totally disregarded and the summary judgment modified to include invalidity of claim 2. Neither side can bring itself to fully recognize or abide by the statutory command, 35 U.S.C. Sec. 282, that claims must be separately and independently considered. The law is not a sport where winning has been called everything, and neither a trial nor an appeal should be only an exercise in gamesmanship. 5


(1) Whether the district court erred in granting Robertson partial summary judgment holding claims 1 and 3 invalid.

(2) Whether the district court erred in denying Robertson's motion for JNOV holding claim 2 invalid.

(3) Whether the district court abused its discretion in denying Robertson's motion for a new trial.

(4) Whether this court may entertain Robertson's argument that the district court should have granted it summary judgment holding claim 2 invalid.

(5) Whether either party is entitled to costs and attorney fees incurred on this appeal.

Appeal No. 85-2573

(1) The Partial Summary Judgment

Glaros contends that because: (a) his expert Luttrell, whose testimony was substantially relied on in the grant of summary judgment, was later excluded from the trial; and (b), the Pimsner patent was later found (Glaros says) not "relevant" by the jury, the trial court should now be instructed to vacate its partial summary judgment and set for trial the validity and infringement of claims 1 and 3.

One appealing the grant of summary judgment, including a partial summary judgment, must show that the district court erred in determining that, on "the pleadings and the evidence before it," there was no genuine issue of material fact, and that the movant was entitled to judgment as a matter of law. See SRI International v. Matsushita Electric Corp. of America, 775 F.2d 1107, 1116, 227 USPQ 577, 581-82 (Fed.Cir.1985) (in banc ); Martin v. Barber, 755 F.2d 1564, 1566, 225 USPQ 233 (Fed.Cir.1985).

In granting partial summary judgment, the trial court indicated that Glaros had submitted no evidence that a genuine issue of material fact existed in relation to the obviousness of claims 1 and 3. To succeed on appeal, Glaros must show that

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he did submit such evidence before summary judgment was granted.

Luttrell was Glaros' expert. Robertson's earlier objections must now be seen as having been subsumed in Robertson's reliance on Luttrell's testimony in support of its second motion for summary judgment. Thus, at the time summary judgment was granted, there was no genuine issue of material fact as to Luttrell's expertise. 6 Hence Glaros' reliance on Luttrell's subsequent change of status is unavailing. That Glaros joined in effecting that change is of interest only for its demonstration of Glaros' poor grace in attempting now to rely on his own failed strategy. See Litton Industrial Products, Inc. v. Solid State Systems Corp., 755 F.2d 158, 163, 225 USPQ 34, 37 (Fed.Cir.1985).

Glaros' notion that he can undo the grant of summary judgment against him by thereafter agreeing that his expert was not qualified is grotesque. To give losers of partial summary judgment adjudications that weapon would gravely diminish the usefulness of partial summary judgments in expediting litigation.

Before us, Glaros avers that "[t]here was a factual dispute as to the relevancy of the prior Pimsner patent" because "[b]oth Judge Hart and the jury, after more than two weeks at trial were convinced as to the nonrelevancy of the Pimsner patent." The argument self-destructs on the rocks of chronology. Glaros attempts to give a retroactive effect to the jury verdict, using it in an effort to create a genuine issue of material fact at the time the court was considering Robertson's motion for summary judgment. That Glaros cannot do. The time at which he was required to establish existence of a genuine issue of material fact was long past when the trial began.

Further, Glaros misstates the record. The jury determined that Pimsner was not "more pertinent to claim 2" than the art cited by the examiner. (Emphasis added.) The jury did not find that Pimsner was "not relevant."...

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