991 F.2d 812 (Fed. Cir. 1993), 92-1173, Matter of Burke, Inc.

• Citation: 991 F.2d 812
• Party Name: In re BURKE, INC., PERSONAL MOBILITY VEHICLE PATENT LITIGATION. BURKE, INC., Plaintiff-Appellant, v. EVEREST & JENNINGS, INC., Defendant/Cross-Appellant, and Invacare Corp., Defendant-Appellee. BURKE, INC., Plaintiff-Appellee, v. EVEREST & JENNINGS, INC., Defendant-Appellant, and Invacare Corp., Defendant-Appellant.
• Case Date: March 31, 1993
• Court: United States Courts of Appeals, U.S. Court of Appeals — Federal Circuit

Page 812

991 F.2d 812 (Fed. Cir. 1993)

In re BURKE, INC., PERSONAL MOBILITY VEHICLE PATENT LITIGATION.

BURKE, INC., Plaintiff-Appellant,

v.

EVEREST & JENNINGS, INC., Defendant/Cross-Appellant,

and

Invacare Corp., Defendant-Appellee.

BURKE, INC., Plaintiff-Appellee,

v.

EVEREST & JENNINGS, INC., Defendant-Appellant,

and

Invacare Corp., Defendant-Appellant.

Nos. 92-1173, 92-1174 and 92-1301.

United States Court of Appeals, Federal Circuit

March 31, 1993

Editorial Note:

This opinion appears in the Federal reporter in a table titled "Table of Decisions Without Reported Opinions". (See FI CTAF Rule 47.6 regarding use of unpublished opinions)

29 U.S.P.Q.2d 1393

C.D.Cal, 786 F.Supp. 1537.

VACATED AND REMANDED.

Before ARCHER, MICHEL and RADER, Circuit Judges.

ARCHER, Circuit Judge.

Burke, Inc. appeals from the judgment of the United States District Court for the Central District of California (MDL Docket No. 809-JSL), entered November 29, 1991, on an order directing a verdict that claim 1 of U.S. Patent 4,560,739 is invalid and not infringed by Everest & Jennings, Inc. (E & J) and Invacare Corp. We vacate the judgment and remand for trial. ¹

DISCUSSION

U.S. Patent No. 4,560,739, which issued to Kramer (the Kramer patent), is directed to a personal mobility vehicle, a small, electrically powered three-wheel device, commonly referred to as a scooter, that gives mobility to handicapped or elderly persons. Burke, assignee of the Kramer patent, sued E & J and Invacare alleging that E & J's "Carrette" and Invacare's "Tri-Rolls" products infringed claim 1 of the Kramer patent.

At the close of Burke's case in chief, E & J and Invacare moved for a directed verdict that claim 1 is invalid for indefiniteness and not infringed. ² The court granted the motion, and this appeal followed. ³

I.

We review de novo the question whether E & J and Invacare were entitled to a directed verdict. See Arachnid, Inc. v. Merit Indus., Inc., 939 F.2d 1574, 1577, 19 USPQ2d 1513, 1516 (Fed.Cir.1991). In order to decide whether E & J and Invacare were so entitled, we, as was required of the district court,

must determine whether there exists evidence of record upon which a jury might properly [return] a verdict in [Burke's] favor when the correct legal standard is applied. If there is not, [E & J and Invacare were] entitled to have the question removed from the jury and decided as a matter of law.

Jamesbury Corp. v. Litton Indus. Prods., Inc., 756 F.2d 1556, 1560, 225 USPQ 253, 257 (Fed.Cir.1985). In making this determination, this court will reverse a decision on an issue of law if the decision was incorrect as a matter of law. See Read Corp. v. Portec, Inc., 970 F.2d 816, 821, 23 USPQ2d 1426, 1431 (Fed.Cir.1992); Heisig v. United States, 719 F.2d 1153, 1158 (Fed.Cir.1983). As to factual matters, the district court in the first instance, and this court on appeal, must determine as a matter of law whether E & J and Invacare have demonstrated a lack of substantial evidence which could support a verdict in favor of Burke. See Read Corp., 970 F.2d at 821, 23 USPQ2d at 1431. In directing a verdict, the court was required to view all the fact evidence in a light most favorable to the nonmovant. It could not determine the credibility of witnesses or choose between conflicting fact evidence, and it was required to draw all reasonable inferences in favor of the nonmovant. See Railroad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506, 1513, 220 USPQ 929, 936 (Fed.Cir.1984). The ultimate question in this case is whether E & J and Invacare have demonstrated that, at this particular stage of the litigation, they are entitled to judgment as a matter of law.

II.

The district court directed a verdict that claim 1 is invalid for indefiniteness under 35 U.S.C. § 112, para. 2 (1988), holding that the term "removably connecting" in paragraph 1(b)(6) of claim 1 failed to "particularly point out and distinctly claim" Kramer's invention. ⁴

Indefiniteness is a question of law, Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576, 1 USPQ2d 1081, 1088 (Fed.Cir.1986), which must be proved by the party asserting it by clear and convincing evidence, see Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1375, 231 USPQ 81, 87 (Fed.Cir.1986). A claim is indefinite where those skilled in the art would not understand what is claimed when reading the claim language in light of the specification and prosecution history. See Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 1218, 18 USPQ2d 1016, 1030 (Fed.Cir.1991); Texas Instruments Inc. v. United States Int'l Trade Comm'n, 871 F.2d 1054, 1063, 10 USPQ2d 1257, 1263-64 (Fed.Cir.1989); Orthokinetics, Inc., 806 F.2d at 1576, 1 USPQ2d at 1088.

Burke asserted that one of ordinary skill in the art would understand the term "removably connecting" to mean separable without the need for tools. The district court rejected this argument on the basis that "nothing in the dictionary definition of the word [removably], or in common usage, or anywhere in the patent" supports a conclusion that the claim means connecting in such a way as to be separable without the need for a tool. ⁵

Contrary to the district court's statement, the patent specification shows that a purpose of the patented vehicle is to enable users with limited dexterity to easily separate the vehicle's various modular components. The specification describes a bayonet locking pin used to separate the drive unit from the floor pan. The specification also discloses other connections allowing the connected components to be readily separated: plugs and sockets are used to undo electrical connections; a lever is used to release the seat; and a handle or strap is used to lift the battery from the floor pan. "The patent law does not require that all possible [connections] be listed in the patent, let alone that they be listed in the claims." Orthokinetics, Inc., 806 F.2d at 1576, 1 USPQ2d at 1088. We therefore disagree with the district court that the patent fails as a matter of law to adequately disclose a definite meaning for the term "removably connecting."

Further, during Burke's case in chief Kramer testified that a person of ordinary skill in the art would understand "removably connecting" to mean a connection that is separable without the use of tools. This testimony was corroborated by Invacare's own expert, Hymie Pogir, whose deposition reflects that he had no problem understanding a distinction between a tools and no-tools connection. In spite of this evidence, the district court viewed the "ordinary meaning and usage" of "removably" as designating a removable component connected to a stationary component that can be separated from the stationary component leaving both components intact, i.e., not designating a removable component that is connected to a stationary component by way of a third component. Assuming that this "ordinary meaning" has record support that it represents an understanding of those of ordinary skill in the art, it is only one part of the evidence. On motion for directed verdict, the district court erred as a matter of law in favoring this evidence, and disregarding that which supported Burke's position.

On appeal, E & J and Invacare do not seriously argue that the district court was correct in holding that "removably...