839 F.2d 1556 (Fed. Cir. 1988), 86-767, Allen Organ Co. v. Kimball Intern., Inc.

Docket Nº:86-767, 86-789.
Citation:839 F.2d 1556
Party Name:5 U.S.P.Q.2d 1769 ALLEN ORGAN COMPANY, Appellant, Cross-Appellee, v. KIMBALL INTERNATIONAL, INC., Macmillan, Inc., and Conn Keyboards, Inc., Appellees, Cross-Appellants.
Case Date:February 12, 1988
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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Page 1556

839 F.2d 1556 (Fed. Cir. 1988)

5 U.S.P.Q.2d 1769

ALLEN ORGAN COMPANY, Appellant, Cross-Appellee,

v.

KIMBALL INTERNATIONAL, INC., Macmillan, Inc., and Conn

Keyboards, Inc., Appellees, Cross-Appellants.

Nos. 86-767, 86-789.

United States Court of Appeals, Federal Circuit

February 12, 1988

Page 1557

Alfred P. Ewert, of Morgan, Finnegan, Pine, Foley & Lee, New York City, argued for appellant, cross-appellee. Of counsel were David H. Pfeffer, J. Robert Dailey, and John R. Schiffhauer, of Morgan, Finnegan, Pine, Foley & Lee, and Sanford J. Piltch, Allentown, Pa.

Albert L. Jeffers and John Hoffman, of Jeffers, Irish & Hoffman, Ft. Wayne, Ind., argued for appellee, cross-appellants.

Before MARKEY, Chief Judge, BENNETT, Senior Circuit Judge, and NEWMAN, Circuit Judge.

PAULINE NEWMAN, Circuit Judge.

Allen Organ Company appeals the judgment of the United States District Court for the Northern District of Illinois, 1 holding after a jury trial that the claims at issue of Watson U.S. Patent No. 3,610,799 (the '799 patent) and Deutsch U.S. Patent No. 3,610,806 (the '806 patent), owned by Allen Organ, are invalid. The issue of infringement was not tried. Kimball International, Inc., Macmillan, Inc., and Conn Keyboards, Inc. (collectively Kimball), defendants in the consolidated trial, cross-appeal the judgment that Allen Organ had not committed inequitable conduct in prosecuting the '799 patent before the United States Patent and Trademark Office. We affirm.

The Patented Inventions

The '799 and '806 patents deal with organs that electronically reproduce the notes and voices of a pipe organ.

The Watson '799 patent, entitled "Multiplexing System For Selection Of Notes And Voices In An Electronic Musical Instrument", describes a keyboard instrument having tone generators that are multiplexed with note and voice assignment information. Depression of a key elicits a tone that is controlled as to its waveshape and amplification by a tone generator. To resolve the complex problems of the number of tone generators and the circuitry necessary for the twelve musically related frequencies for each octave, according to the Watson '799 patent every key of the organ keyboard is scanned in cyclic sequence, and the actuation of a key or keys is entered as information in parallel digital format showing the order and combination

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of keys actuated. The parallel format is continuously converted to serial format, comprising pulses in appropriate time slots, preassigned to corresponding keys, of a time division multiplexed signal.

The Deutsch '806 patent, entitled "Adaptive Sustain System For Digital Electronic Organ", relates to a sustain feature for electronic organs such as that described by Watson. The '806 patent describes and claims a means whereby selected sounds fade gradually, rather than abruptly, after the organ key is released, thus mimicking the sound of a true pipe organ. The principal object of the Deutsch patent is to

provide means for varying the length of decay of a note sounded in an electronic digital organ ... in accordance with the number of tone generators available for capture by digital data in the multiplexed signal containing the note information.

The claimed inventions of both the '799 and '806 patents were asserted to be embodied in the defendants' electronic organs.

The '799 Patent

By agreement the issues of patent validity and enforceability were tried first, bifurcated from the issue of infringement. The jury trial on validity and enforceability took four weeks.

(a) The Jury Verdicts

The parties agreed upon the jury instructions and interrogatories before they were submitted to the jury, with certain objections, as will be discussed. The jury answered twenty-one pages of interrogatories, consisting of thirteen questions almost all of which had multiple parts.

Kimball's defense included the presentation of evidence relating to two electronic organs built by electronics buffs Coe Wescott and Lee Bauscher, and one custom keyboard coupler incorporated in an electronic organ called the Klann/Conn organ. Interrogatories 1-3, grouped under the heading "Prior Invention", were directed to these organs. Responding to these questions, the jury found that these three multiplexed organs were built prior to the date of invention of the Watson '799 patent, and that none had been abandoned.

The jury also found that the subject matter of eight of the twenty-four asserted claims of the '799 patent was found in the Bauscher organ, the subject matter of thirteen of the twenty-four claims was found in the Wescott organ, and the subject matter of eighteen of the twenty-four claims was found in the Klann/Conn organ.

The subject matter of five of the '799 claims, i.e., claims 4, 22, 23, 32, and 33, was not found in any of the Bauscher, the Wescott, or the Klann/Conn organs. These five claims included limitations related to percussive sounds, and were referred to at trial as the "percussive claims".

The jury also found that the Wescott, Bauscher and Klann/Conn organs were publicly known or used prior to the date of invention of the '799 patent. In response to questions under the heading "Public Use and On Sale" the jury found that the Wescott, the Bauscher, and the Klann/Conn organs were in public use, and the Wescott organ was on sale, before the '799 patent's critical bar date of October 30, 1968.

Answering interrogatories 5(a), (b), (c), and (d), under the heading "Public Use and On Sale", the jury found that "the subject matter of the claims of the Watson '799 patent was present" in an organ built at North American Rockwell Corporation, where Watson and Deutsch were employed. This organ was called the "demonstrator" at trial. The jury found that the demonstrator was in public use and on sale before the '799 patent's critical bar date of October 30, 1968. This four-part interrogatory did not inquire as to specific claims, a matter emphasized as error by Allen Organ.

Under the heading "Anticipation" were interrogatories 10 and 11 on both anticipation and obviousness. In response to part of interrogatory 10 the jury found that of the three '799 patent claims numbered 12, 19, and 20, the "entire subject matter" of claim 19 was found in Pearson U.S. Patent No. 2,989,885 and in Davis U.S. Patent No. 2,601,265. Interrogatory 10 also included questions about Klann U.S. Patent No. 3,614,287, which the jury found disclosed

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the subject matter of certain claims of the '799 patent but was filed too late to serve as a reference.

Interrogatory 11(a) asked whether the subject matter of twenty-four listed claims of the '799 patent "would have been obvious to a person having ordinary skill in the art pertaining to the subject matter of the Watson '799 patent at the time the invention was made". The jury answered "Yes" as to claims 1 and 19, and "No" as to the other twenty-two claims.

(b) The District Court's Judgment

Upon receiving the jury's answers, the court asked counsel for both sides together to "determine what it means as to the further progress of the case". After "digesting" the answers, counsel for Kimball told the court, in the absence of the jury:

Your Honor, if you look at 5-A through 5-D, that shows the demonstrator on sale and all the claims of the patent that were present in the demonstrator. That is a conclusive finding for the '799 patent.

Counsel for Allen Organ responded:

If that is interpreted to mean all of the claims including--the jury consistently found that the percussive claims [claims 4, 22, 23, 32 and 33] were not invalid. This [5-A through 5-D] is the only interrogatory which did not cover the claims individually.

The court asked "How many other claims of the '799 are out on the basis of other findings?". Counsel for both sides agreed that all the other '799 claims were "out" based on other findings, but that the five percussive claims were not based only on the answers to interrogatories 5(a) through 5(d), which did not ask the jury for claim-by-claim answers but referred to "the subject matter of the ['799] claims".

The court then proposed to try the infringement issue, which the parties estimated would require three or four days. The court stated that

the purpose of bifurcation of the Allen v. Kimball case was in part to avoid an unnecessary infringement trial in the event the jury should find the patents invalid.

* * *

* * *

[W]hat prompts this whole inquiry on my part is that the jury has found the patents to be invalid on very narrow grounds which could be upset by the Court of Appeals....

When the jury returned to the courtroom, the court said "[t]he effect of your findings combined is to render both patents invalid, as I am sure you understand." The record does not show a reaction by either counsel to that statement at that time. The jury was not dismissed, pending the infringement trial.

Two days thereafter Allen Organ filed a "motion for interpretation" by the court of the jury's answers, explained as "for the purpose of determining the claims to be put forward for proving infringement". Allen Organ pointed to certain asserted inconsistencies in the jury's answers, on the basis of which Allen Organ argued that in addition to the five percussive claims, the other claims should be included in the infringement trial. The trial court then estimated that the infringement trial would require two weeks. The court denied the motion for interpretation, and stated that infringement would not be tried and that the jury would be discharged.

Allen Organ did not, in its motion for interpretation or at argument thereon, ask the court for recourse to the jury as to any purported inconsistency. None of those purported inconsistencies is now...

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