Amsted Industries Inc. v. Buckeye Steel Castings Co.

• Decision Date: 18 April 1994
• Docket Number: Nos. 93-1333,93-1359,s. 93-1333
• Parties: AMSTED INDUSTRIES INCORPORATED, Plaintiff/Cross-Appellant, v. BUCKEYE STEEL CASTINGS COMPANY, Defendant-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 178

24 F.3d 178

30 U.S.P.Q.2d 1462

AMSTED INDUSTRIES INCORPORATED, Plaintiff/Cross-Appellant, v. BUCKEYE STEEL CASTINGS COMPANY, Defendant-Appellant.

Nos. 93-1333, 93-1359.

United States Court of Appeals, Federal Circuit.

April 18, 1994.

Rehearing and Suggestion for Rehearing En Banc Denied and Declined

May 24, 1994.

Rolf O. Stadheim, Law Offices of Rolf O. Stadheim, Ltd., Chicago, IL, argued for plaintiff/cross-appellant. With him on the brief was Joseph A. Grear.

Edward W. Remus, Allegretti & Witcoff, Ltd., Chicago, IL, argued for defendant-appellant. With him on the brief were Robert M. Ward and Thomas A. Fairhall. Also on the brief was Ellen A. Efros, Vorys, Sater, Seymour & Pease, Washington, DC.

Before PLAGER, LOURIE, and RADER, Circuit Judges.

LOURIE, Circuit Judge.

Buckeye Steel Castings Company appeals from a final judgment of the United States District Court for the Northern District of Illinois entered in favor of Amsted Industries Incorporated pursuant to jury verdicts that Buckeye willfully infringed Amsted's U.S. Patent 3,664,269 and that Amsted is entitled to damages in the amount of $1,497,232, Amsted Indus. Inc. v. Buckeye Steel Castings Co., No. 91 C 1179 (N.D.Ill. Jan. 21, 1993). Buckeye also appeals from the district court's order granting Amsted's motion for enhanced damages and attorney fees. Amsted cross-appeals on the amount of damages. The district court denied the parties' motions for judgment as a matter of law (JMOL) on the issues of willful infringement and damages. We affirm on the issues of willful infringement, enhanced damages, and attorney fees, and vacate and remand on the issue of damages.

BACKGROUND

The '269 patent, which issued in the name of Stanley H. Fillion as inventor on May 23, 1972 and was assigned to Dresser Industries, is entitled "Combined Body Bolster Center Filler and Center Plate for Railway Cars" and claims a particular center plate in combination with several other components to form a railroad car underframe structure. The center plate component is the basis of the present dispute. Dresser made and sold the component center plate under the name "Low Profile" until 1985, at which time it sold the '269 patent and the Low Profile trademark to Amsted. Amsted thereafter began making and selling the Low Profile plate to rail car builders for assembly into the patented combination.

Buckeye also was in the business of manufacturing center plates for sale to rail car builders. Buckeye was aware of the '269 patent as early as 1976. After numerous attempts to design around the center plate component and a request for a license under the patent which Dresser denied, Buckeye copied the Low Profile center plate despite counsel's advice that in doing so, Buckeye would likely infringe the '269 patent.

Amsted brought suit against Buckeye on February 25, 1991 for contributory infringement, alleging that Buckeye's infringement was willful. Buckeye denied infringement and asserted that the patent was invalid.

The case was tried to a jury, which returned special verdicts that Buckeye infringed the '269 patent, that Buckeye's infringement was willful, and that the patent was not invalid. The jury further found that Buckeye was liable for damages in the amount of $1,497,232 to compensate for Amsted's lost profits from January 10, 1986, the date that Amsted allegedly notified Buckeye of its infringement pursuant to 35 U.S.C. Sec. 287(a) (1988).

The parties filed various post-trial motions. Buckeye moved for JMOL or a new trial on the issues of willful infringement and damages. Amsted moved for enhanced damages, attorney fees, and for JMOL that its damages were not limited under section 287(a). The district court declined to set aside the jury's verdict of willful infringement, granted Amsted's motion for enhanced damages and attorney fees, ruled that Amsted's damage recovery was limited under section 287(a), and held that the jury properly determined the date on which Amsted notified Buckeye of its infringement pursuant to that provision.

On appeal, Buckeye does not challenge the jury's findings that the '269 patent was infringed and is not invalid. Buckeye only appeals the determinations of willful infringement, enhanced damages, attorney fees, and notice under section 287(a). Amsted cross-appeals from the district court's ruling that its damages are limited under section 287(a).

DISCUSSION

A. Willful Infringement

The jury found that Buckeye's infringement was willful. In denying Buckeye's motion for JMOL, the district court concluded that "[t]he record provides a more than sufficient evidentiary basis for a reasonable jury to find that Buckeye deliberately or recklessly disregarded Amsted's patent rights." Slip op. at 19. Buckeye argues that that determination was in error.

In finding that Buckeye's infringement was willful, the jury was required to find by clear and convincing evidence in view of the totality of the circumstances that Buckeye acted in disregard of the '269 patent and lacked a reasonable basis for believing it had a right to do what it did. See American Medical Sys., Inc. v. Medical Eng. Corp., 6 F.3d 1523, 1530, 28 USPQ2d 1321, 1324 (Fed.Cir.1993) ("AMS "). The issue before us is whether that finding was supported by substantial evidence. See Braun, Inc. v. Dynamics Corp. of America, 975 F.2d 815, 823, 24 USPQ2d 1121, 1127 (Fed.Cir.1992). Under this standard, we review the evidence in the light most favorable to Amsted, the non-moving party, drawing all reasonable inferences in Amsted's favor, to determine whether reasonable persons could have reached the jury's verdict. Quaker City Gear Works, Inc. v. Skil Corp., 747 F.2d 1446, 1454-55, 223 USPQ 1161, 1166-67 (Fed.Cir.1984), cert. denied, 471 U.S. 1136, 105 S.Ct. 2676, 86 L.Ed.2d 694 (1985). We will disturb the district court's decision not to overturn the jury's verdict "only if the evidence so conclusively favors [Buckeye, the moving party,] that reasonable jurors could not arrive at a contrary verdict." Tol-O-Matic, Inc. v. Proma Produkt-Und Mktg., 945 F.2d 1546, 1549, 20 USPQ2d 1332, 1335 (Fed.Cir.1991).

Buckeye argues that it copied the patented invention only after forming a good faith belief that the patent was invalid. As evidence of its good faith, Buckeye relies on the testimony of Jack Downes, Buckeye's engineering director, that he made the decision to copy the '269 center plate after forming a good faith belief that the patent was invalid. Buckeye also relies on written opinions it received from its outside counsel, Charles Pigott. Buckeye maintains that in view of Downes' testimony and the written opinions on which Downes claimed to have relied, no reasonable jury could have found that Buckeye's infringement was willful.

"It is well settled that a potential infringer having actual notice of another's patent rights has an affirmative duty of due care. That affirmative duty will normally entail the obtaining of competent legal advice before engaging in any potentially infringing activity or continuing such activity." Spindelfabrik Suessen-Schurr, Stahlecker & Grill GmbH v. Schubert & Salzer Maschinenfabrik Aktiengesellschaft, 829 F.2d 1075, 1084 Downes testified that one of the Pigott opinions on which he relied was dated October 13, 1976. That opinion, however, clearly was not directed to validity, but to infringement, Pigott stating that he "[did] not intend to discuss [the] question [of validity] in any detail." Pigott also testified at trial that the 1976 opinion was "preliminary" and "just an off-the-cuff kind of thing," and that he did not intend for it to be a final opinion on which Buckeye would rely, although in 1980, Pigott knew of a validity opinion prepared by another attorney that had "apparently" concluded that the '269 patent was invalid over the prior art.

4 USPQ2d 1044, 1051 (Fed.Cir.1987), cert. denied, 484 U.S. 1063, 108 S.Ct. 1022, 98 L.Ed.2d 987 (1988). However, "that an opinion of counsel was obtained does not 'always and alone' dictate a finding that the infringement was not willful." Id. at 1084 n. 13, 4 USPQ2d at 1051 n. 13 (citation omitted). What matters is the nature of that opinion and what effect it had on an infringer's actions. See Minnesota Mining & Mfg., Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1581, 24 USPQ2d 1321, 1340 (Fed.Cir.1992).

Downes also testified that he relied on additional opinions by Pigott. The record reveals that the first opinion purporting to address validity was written in 1982. That letter was a response to a letter from Downes expressing Buckeye's interest in "a direct copy of the Dresser Center Plate" and specifically requesting Pigott to render a validity opinion. Pigott commissioned a validity search, after which Pigott wrote the 1982 letter in which he set forth "a few general views on validity" and stated that "the patent is probably invalid" for obviousness. Nevertheless, Pigott explicitly suggested that Downes or another Buckeye individual review his comments and the prior art patents generated by the search and report back to him whether there was disagreement with any of Pigott's statements or whether there was "any possibility for avoiding infringement." Pigott stated that he would provide Buckeye with additional information, inter alia, on the chances of invalidating the patent after Buckeye reported back to him.

We find no indication that Buckeye ever responded to Pigott's request. In fact, the next item of correspondence, dated August 24, 1984, expressed Buckeye's decision to copy the patented invention. Pigott responded on September 13, 1984, by stating only that, based on his review of the patent and his 1982 letter, "it is my rather strong opinion that the '269 patent is invalid...." Soon thereafter, Pigott advised Downes that Buckeye's proposed center plate would likely be found to infringe the '269 patent. The record further reveals that as late as March 2, 1989, Pigott...