946 F.2d 850 (Fed. Cir. 1991), 91-1062, Biodex Corp. v. Loredan Biomedical, Inc.

Docket Nº:91-1062.
Citation:946 F.2d 850
Party Name:20 U.S.P.Q.2d 1252 BIODEX CORPORATION, Plaintiff-Appellant, v. LOREDAN BIOMEDICAL, INC., Defendant-Appellee.
Case Date:October 03, 1991
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

Page 850

946 F.2d 850 (Fed. Cir. 1991)

20 U.S.P.Q.2d 1252

BIODEX CORPORATION, Plaintiff-Appellant,


LOREDAN BIOMEDICAL, INC., Defendant-Appellee.

No. 91-1062.

United States Court of Appeals, Federal Circuit

October 3, 1991

Page 851

Peter T. Cobrin, Cobrin, Feingertz & Gittes, New York City, argued, for plaintiff-appellant. With him on the brief was, Marvin S. Gittes. Also on the brief was, Malcolm B. Wittenberg, Crosby, Heafey, Roach & May, Oakland, Cal., of counsel.

Matthew D. Powers, Orrick, Herrington & Sutcliffe, San Francisco, Cal., argued, for defendant-appellee. With him on the brief were, William L. Riley, Angela Ziegenhorn and Kathryn Doi, of counsel.

Before RICH, MICHEL, and CLEVENGER, Circuit Judges.

CLEVENGER, Circuit Judge.

Biodex Corporation ("Biodex") appeals the judgment of the U.S. District Court for the Eastern District of California entered on a jury verdict that found U.S. Patent

Page 852

No. 4,691,694 ("694 patent") invalid and U.S. Patent No. 4,628,910 ("910 patent") not infringed by devices manufactured by defendants, Loredan Biomedical, Inc., and its chief executive, Malcolm Bond (collectively, "Loredan"). Biodex Corp. v. Loredan Biomedical, Inc., Civ-S-87-1132 (E.D.Ca. Oct. 2, 1990). We affirm.


Biodex is the assignee of both patents in suit which claim certain muscle exercise and rehabilitation devices. The 910 patent issued December 16, 1986. After notice of allowance, Biodex had filed a continuation-in-part application on September 15, 1986, which later matured into the 694 patent upon issuance on September 9, 1987. Biodex filed suit asserting that devices manufactured by Loredan infringed various claims of the patents.

At trial before a jury, Loredan contended, inter alia, that the 694 patent was invalid under 35 U.S.C. § 102(b) because the subject matter of the claimed invention had been offered for sale in the spring and summer of 1985, more than one year before the filing date. Biodex argued that the invention claimed in the 694 patent had not been satisfactorily tested so as to be safe for human use until after the critical date of September 15, 1985, and, therefore, could not have been on sale. On the 910 patent, Loredan argued that two terms in the asserted claims, written in means-plus-function language, did not read on the alleged devices because the corresponding structures found in the Loredan devices were not equivalent to the structures disclosed in the specification. Loredan contended that the inventor had expressly conceded this fact before the U.S. Patent and Trademark Office ("PTO"). Biodex responded, first, that the jury need only consider the plain language of the terms in question which read on the Loredan devices; second, that Loredan misconstrued the inventor's concession during prosecution; and, third, that the structures in the accused devices were equivalents.

In its appellate briefs, Biodex recognizes that resolution of these issues required the jury to decide questions of fact. For instance, in its opening brief, Biodex contests that "the jury verdict of noninfringement of the '910 patent was supported by substantial evidence." In its reply brief, Biodex argues that the special verdict of invalidity of the 694 patent was not "supported by the evidence." We read both references to evidentiary support to concede that the verdicts were based upon factual determinations made by the jury. In any event, while we agree with Biodex's initial contention that an ultimate conclusion as to an on-sale bar is a question of law, Barmag Barmer Maschinenfabrik AG v. Murata Mach., Ltd., 731 F.2d 831, 837, 221 USPQ 561, 565-66 (Fed.Cir.1984), the inquiry does not end there, as noted by Loredan. The many factors that enter into the "totality of the circumstances" underlying the legal conclusion of an on-sale bar involve exploration and resolution of questions of fact. Manville Sales Corp. v. Paramount Sys., 917 F.2d 544, 549, 16 USPQ2d 1587, 1591 (Fed.Cir.1990); U.S. Envtl. Prods., Inc. v. Westall, 911 F.2d 713, 716, 15 USPQ2d 1898, 1901 (Fed.Cir.1990); Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 622-23, 225 USPQ 634, 639-40 (Fed.Cir.), cert. dismissed, 474 U.S. 976, 106 S.Ct. 340, 88 L.Ed.2d 326 (1985); Western Marine Elec., Inc. v. Furuno Elec. Co., 764 F.2d 840, 845, 226 USPQ 334, 337-38 (Fed.Cir.1985). Both parties agree that an operable physical embodiment of the invention was not in existence before the critical date. Therefore, the only question for the jury to resolve on the contested validity issue, which the parties treated as the determinative factor underlying validity, was whether the subject matter of the 694 patent was sufficiently tested by the spring and summer of 1985 so that the invention could be on sale. Evidence was provided that some testing had been undertaken prior to the critical date and the only disputed issue, then, was the adequacy of that testing, which is a question of fact. Cf. UMC Elec. Co. v. United States, 816 F.2d 647, 657, 2 USPQ2d 1465, 1472 (Fed.Cir.1987), cert. denied, 484 U.S. 1025, 108 S.Ct. 748, 98 L.Ed.2d 761 (1988). Similarly, "whether an

Page 853

accused device is a section 112 equivalent of the described embodiment is a question of fact." Durango Assoc., Inc. v. Reflange, Inc., 843 F.2d 1349, 1357, 6 USPQ2d 1290, 1295 (Fed.Cir.1988) (note omitted).

As permitted by Fed.R.Civ.P. 51, both parties requested and submitted various jury instructions. The district court, however, drafted its own instructions. Preserving its plain language argument, Biodex objected to the instructions on identifying equivalent structures to a claimed means expressed in functional language and on using the doctrine of prosecution history estoppel in determining the scope of protection under the doctrine of equivalents. Biodex contended that literal claim construction should be no different for a claim drafted under 35 U.S.C. § 112 p 6 because the statute makes no "distinction" whether a claim uses "means-plus-function" language or not. Biodex requested but did not receive an additional instruction on application of the doctrine of prosecution history estoppel, which read, in pertinent part:

However, you should note that the doctrine of prosecution history estoppel has no applicability whatsoever if the plain language of the claims reads on an accused device for then infringement exists.

At the conclusion of testimony, Biodex orally moved for a directed verdict. Review of a transcript of that motion does not reveal a specific allegation that Loredan's evidence in support of the contested validity or infringement issues was insufficient although judgment was requested on those issues as a matter of law. The district court never ruled upon the motion. The case was submitted to the jury with multiple special verdicts forms. In the verdicts, the jury found that all the asserted claims of the 694 patent were proved invalid and that none of the claims of the 910 patent were infringed by Loredan. The district court entered judgment on the jury verdicts. Biodex made no post-verdict motions either by renewing its motion for a directed verdict, moving for a new trial, or by moving for judgment non obstante veredicto ("JNOV").


On appeal, Biodex contends that the failure to give the requested jury instruction was prejudicial error. Furthermore, Biodex contends that neither special verdict, of invalidity of the one patent nor of non-infringement of the other, was supported by substantial evidence. Loredan answers that the suggested jury instruction, while perhaps technically accurate, was misleading in the context of its defense that "means-plus-function" language must be carefully construed. Nor, Loredan contends, were the jury instructions, read in their entirety, incorrect, unclear, or less than comprehensive. On the special verdicts, Loredan argues that, while there was sufficient evidentiary support, Biodex did not preserve the issues for appellate review by filing a post-verdict motion in the district court.


We must first determine the standard of review to be applied to the issues before us and whether we should apply regional circuit law or our own. There is no dispute among the circuits, nor in our own jurisprudence, that a judgment should be altered "because of a mistake in jury instructions only if the error was prejudicial" and that we must "look to the entire jury charge ... to determine whether the instructions fairly stated the legal principles to be applied by the jury." 1 Under

Page 854

this standard, jury instructions must be both legally correct and sufficiently comprehensive to address factual issues for which there is disputed evidence of record. A party has no vested right in its own carefully couched form of words in an instruction, because "the court is not required to give instructions in the language and form requested." Oliveras v. U.S. Lines Co., 318 F.2d 890, 892 (2d Cir.1963); see also 5A J. Moore & J. Lucas, Moore's Federal Practice p 51.06, at 51-45 (2d ed. 1991). Therefore, Biodex has a two-fold task. Biodex must both prove the jury instructions read in their entirety were incorrect or incomplete as given and then demonstrate that the suggested instruction could have cured the error.


The extent to which we may review the special verdicts is not so readily apparent. Quite clearly, the only available remedy upon finding error in a judgment entered on a jury verdict where there has been no motion for JNOV is limited to a remand for a new trial. 2 Whatever the remedy, however, we must first respond to the contention of Loredan and determine whether there is any limitation on our review for error in these circumstances, i.e., whether and to what degree a jury verdict on a factual issue is reviewable on appeal. When...

To continue reading