Associated Equipment Corp. v. Authorized Motor Parts Corp., s. 92-1184

• Decision Date: 06 April 1993
• Docket Number: 92-1346 and 92-1453,Nos. 92-1184,s. 92-1184
• Citation: 996 F.2d 317
• Parties: NOTICE: Federal Circuit Local Rule 47.8(b) states that opinions and orders which are designated as not citable as precedent shall not be employed or cited as precedent. This does not preclude assertion of issues of claim preclusion, issue preclusion, judicial estoppel, law of the case or the like based on a decision of the Court rendered in a nonprecedential opinion or order. ASSOCIATED EQUIPMENT CORPORATION, Plaintiff-Appellee, v. AUTHORIZED MOTOR PARTS CORPORATION, d/b/a Napa Distribution Center, Blackhawk Automotive Inc. and Genuine Parts Company, Defendants-Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

Page 317

996 F.2d 317

27 U.S.P.Q.2d 1784

NOTICE: Federal Circuit Local Rule 47.8(b) states that opinions and orders which are designated as not citable as precedent shall not be employed or cited as precedent. This does not preclude assertion of issues of claim preclusion, issue preclusion, judicial estoppel, law of the case or the like based on a decision of the Court rendered in a nonprecedential opinion or order.

ASSOCIATED EQUIPMENT CORPORATION, Plaintiff-Appellee, v. AUTHORIZED MOTOR PARTS CORPORATION, d/b/a Napa Distribution

Center, Blackhawk Automotive Inc. and Genuine

Parts Company, Defendants-Appellants.

Nos. 92-1184, 92-1346 and 92-1453.

United States Court of Appeals, Federal Circuit.

April 6, 1993.

Before ARCHER and MICHEL, Circuit Judges, and CARRIGAN, District Judge. ^*

DECISION

MICHEL, Circuit Judge.

Blackhawk Automotive Inc. and its customers Authorized Motor Parts Corporation and Genuine Parts Company (herein collectively Blackhawk) appeal from the April 21, 1992 final, amended judgment, entered upon a jury verdict, of the United States District Court for the Eastern District of Missouri in Civil Action No. 90-1346-C(7), finding Blackhawk liable for infringement of U.S. Patent No. 4,554,574 and awarding Associated Equipment Corporation (Associated) damages with pre- and post-judgment interest. We vacate and remand for a new trial.

DISCUSSION

Blackhawk argues on appeal that the district court abused its discretion by not allowing Blackhawk's expert to testify on the issues of claim interpretation and infringement or, in the alternative, that the district court erred by not instructing the jury, as a matter of law, as to the meaning of the relevant claim language. On the particular facts of this case, we agree.

Blackhawk objected to the district court submitting the question of claim interpretation to the jury at the time the jury instructions were being finalized at trial and proposed its own specific instruction on claim interpretation. See Corrected Joint Appendix of Appellant and Appellee (J.A.) at 1144-45. The district judge overruled the objection and refused the instruction. See Trial Transcript, Jury Instruction Conference at 164. Blackhawk also raised the issue in its post-verdict motions and again on appeal, although on appeal the jury instruction issue was raised secondarily to that of the district court's exclusion of Blackhawk's expert's testimony. Thus, the issue was raised in a timely manner and is therefore properly before us on appeal.

Claim interpretation is a question of law, ordinarily to be determined by the trial court. Winans v. Denmead, 56 U.S. (15 How.) 330, 338 (1853); Read Corp. v. Portec, Inc., 970 F.2d 816, 822, 23 USPQ2d 1426, 1432 (Fed.Cir.1992); Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 721, 223 USPQ 1264, 1274 (Fed.Cir.1984). When a claim's language is ambiguous or its meaning disputed, the court determines the scope of a claim in light of the language of all of the claims, the specification, the prosecution history, and the prior art. SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1118, 227 USPQ 577, 583 (Fed.Cir.1985) (in banc). In addition, although claim interpretation is ultimately a question of law to be decided by the district judge, Senmed, Inc. v. Richard-Allan Medical Indus., 888 F.2d 815, 818, 12 USPQ2d 1508, 1511 (Fed.Cir.1989) (maintaining that after the jury answers the legal question of claim interpretation, the district court must decide the meaning as a matter of law on a JNOV motion), the district court may admit expert testimony on the meaning of the claims to aid interpretation. Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., 887 F.2d 1070, 1073, 12 USPQ2d 1539, 1542 (Fed.Cir.1989) (stating that expert testimony was helpful when the patent and incomplete prosecution history were not decisive on the claim's meaning); Snellman v. Ricoh Co., Ltd., 862 F.2d 283, 287, 8 USPQ2d 1996, 2000 (Fed.Cir.1988) (using expert testimony to help explain technical terms), cert. denied, 491 U.S. 910 (1989); Moeller v. Ionetics, Inc., 794 F.2d 653, 657, 229 USPQ 992, 995 (Fed.Cir.1986) (holding that it was an abuse of discretion for the district court to have excluded expert testimony on the disputed claim language); Palumbo v. Don-Joy Co., 762 F.2d 969, 975, 226 USPQ 5, 8-9 (Fed.Cir.1985) (stating that expert testimony would be helpful to ascertain how one of ordinary skill in the art would interpret the claim language).

A dispute over the claim meaning itself does not create a fact question. Johnston v. IVAC Corp., 885 F.2d 1574, 1579-80, 12 USPQ2d 1382, 1385-86 (Fed.Cir.1989) (explaining and limiting prior case law regarding disputes over claim language); Howes v. Medical Components, Inc., 814 F.2d 638, 643, 2 USPQ2d 1271, 1273 (Fed.Cir.1987). However, "[a] disputed issue of fact may, of course, arise in connection with interpretation of a term in a claim if there is a genuine evidentiary conflict created by the underlying probative evidence pertinent to the claim's interpretation." Johnston, 885 F.2d at 1579, 12 USPQ2d at 1386 (emphasis added) (citing Moeller, 794 F.2d at 657, 229 USPQ at 994); cf. McGill Inc. v. John Zink Co., 736 F.2d 666, 675, 221 USPQ 944, 950 (Fed.Cir.) (admitting expert testimony as "evidence of construction of the claims as they would be construed by those skilled in the art."), cert. denied, 469 U.S. 1037 (1984). Such factual questions may arise when "complex scientific principles are involved or expert testimony is needed to explain a disputed term." Howes, 814 F.2d at 643, 2 USPQ2d at 1273.

In a jury trial, it is the jury's province to find the facts. Thus, in cases where factual disputes underlie the ultimate legal question of claim interpretation, the issue of claim interpretation must be submitted to the jury for its decision once it finds the underlying facts. Structural Rubber, 749 F.2d at 721 n. 14, 223 USPQ at 1275 n. 14 (citing McGill, 736 F.2d at 672, 221 USPQ at 948); cf. Moeller, 794 F.2d at 657, 229 USPQ at 995 ("[U]nderlying fact disputes may arise pertaining to extrinsic evidence that might preclude summary judgment treatment of claim construction.").

Determining whether a patent infringement occurred requires a two-step inquiry--first, the claims must be interpreted to determine their proper scope; then, those interpretations must be applied to the accused device to determine whether it infringes the claimed invention. Senmed, 888 F.2d at 818, 12 USPQ2d at 1511; Moeller, 794 F.2d at 656, 229 USPQ at 994; Envirotech Corp. v. Al George, Inc., 730 F.2d 753, 758, 221 USPQ 473, 477 (Fed.Cir.1984). This sequence is important because claim construction "is necessary to define the metes and bounds of the protection afforded by the claims." Palumbo, 762 F.2d at 974, 226 USPQ at 8. Thus, in order to ensure the infringement inquiry is applied only to that which was properly reserved to the patentee, "[i]t is only after the claims have been construed without reference to the accused device that the claims, as so construed, are applied to the accused device to determine infringement." SRI, 775 F.2d at 1118, 227 USPQ at 583 (emphasis in original).

As the above discussion shows, however, at the start of the claim interpretation stage, the district court must make a preliminary inquiry--it should first decide whether or not there is a factual dispute underlying the interpretation of the claim. Cf. Structural Rubber, 749 F.2d at 721, 223 USPQ at 1274 ("[B]efore submitting the [legal] issue of obviousness to the jury, the court must consider whether there is an underlying factual dispute on this issue."). Under either situation, the court must give proper instructions to the jury regarding claim interpretation, although the instructions will differ depending on which situation is present. See id. at 720, 223 USPQ at 1274 ("The key to the performance of the respective roles of judge and jury in resolution of legal issues are the court's instructions.").

If the court concludes that there is no factual dispute, the court must determine the meaning of the relevant claim language and instruct the jury as to what the claims mean. Coupe v. Royer, 155 U.S. 565, 579-80 (1895) ("Our conclusion ..., therefore, is, that the question of infringement ... should be submitted to the jury, with proper instructions as to the nature and scope of the plaintiffs' patent as hereinbefore defined, and as to the character of the defendants' machine."); Read, 970 F.2d at 822 & n. 3, 223 USPQ at 1432 & n. 3 (citing conflicting prior panel decisions of this court and endorsing the earlier precedent that holds that the court must instruct the jury as to the meaning of the claims).

If, on the other hand, the court determines that there is a factual question underlying the claim interpretation, in submitting the claim interpretation question to the jury, the court must provide the jury with proper instructions as to the method of answering the legal question and the answer's ultimate impact on the jury's findings on infringement. See Palumbo, 762 F.2d at 974, 226 USPQ at 8 (submission of the legal issue of claim interpretation to the jury requires "appropriate instruction"); cf. Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1547, 220 USPQ 193, 198 (Fed.Cir.1983) ("Submission of the obviousness question to the jury should also be accompanied by appropriate instructions on the law.") (citing Fed.R.Civ.P. 51). Such instructions would of course provide that the jury perform the claim construction prior to making any ultimate findings of fact as to infringement. The instructions would also include, inter alia, an explanation of the process of reasoning the jury should apply to the evidence to determine the meaning of the claim language, the possible alternative meanings of the claim that were advanced by the parties, and specific guidelines on how the jury's fact-findings on infringement should be affected by...