Callicrate v. Wadsworth Mfg., Inc.

• Decision Date: 31 October 2005
• Docket Number: No. 04-1598.,No. 04-1597.,04-1597.,04-1598.
• Citation: 427 F.3d 1361
• Parties: Michael P. CALLICRATE, Plaintiff-Appellant, v. WADSWORTH MANUFACTURING, INC., Defendant-Cross Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1361

427 F.3d 1361

Michael P. CALLICRATE, Plaintiff-Appellant, v. WADSWORTH MANUFACTURING, INC., Defendant-Cross Appellant.

No. 04-1597.

No. 04-1598.

United States Court of Appeals, Federal Circuit.

October 31, 2005.

COPYRIGHT MATERIAL OMITTED

Robert R. Brunelli, Sheridan Ross, P.C., of Denver, Colorado, argued for plaintiff-appellant. With him on the brief was Benjamin B. Lieb.

Frank J. Dykas, Dykas, Shaver & Nipper, LLP, of Boise, Idaho, argued for defendant-cross appellant. Of counsel were Derek H. Maughan and Stephen M. Nipper.

Before NEWMAN, RADER, and PROST, Circuit Judges.

RADER, Circuit Judge.

Callicrate is the owner of several patents on methods and apparatuses for castrating large animals (like cattle), including U.S. Patent No. 5,236,434 (the '434 patent); U.S. Patent No. 5,997,553 (the '553 patent); and U.S. Patent No. 5,681,329 (the '329 patent). Callicrate initiated suit against Wadsworth Manufacturing, Inc. (Wadsworth) on two of these patents in the United States District Court for the District of Montana, asserting that Wadsworth's EZE No. 2 and No. 3 castration tools (or use thereof) infringed claims 7, 11, 18, 19, 22, 25, 27, and 30 of the '329 patent and claims 11-13, 16, and 18 of the '553 patent. After a jury trial on the merits, the jury found all of the asserted claims anticipated, obvious, and not infringed. The district court denied Callicrate's Judgment as a Matter of Law (JMOL) motions on infringement and validity. Callicrate v. Wadsworth Mfg., CV 00-185-M-DWM (D.Mont. Aug. 5, 2004) (Post Trial Order). Because the district court improperly found that the '553 and '329 patents were not entitled to priority back to the '434 patent, this court reverses the jury verdict of anticipation and obviousness over an intervening patent. Because substantial evidence does not support the jury verdict of no infringement, this court also reverses that verdict and remands for a trial on damages.

I.

Wadsworth and Callicrate are competitors in the manufacture and sale of castration tools. These tools operate by tensively securing ligature material around an animal's scrotum, thereby preventing blood from flowing to the testicles. With time, the ligated testicles atrophy and fall from the animal. Wadsworth introduced its first "EZE" castration tool, the EZE No. 1, in 1986. The EZE No. 1 is described in U.S. Patent No. 4,691,704 (the '704 patent). Figure 1 depicts an embodiment of this invention:

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The EZE No. 1 can be characterized as a "caulking gun-type" device because its trigger mechanism moves tightening rod 46 in a manner similar to a caulking gun. See '704 patent, col. 5, ll. 13-17. This caulking gun-type tightening mechanism also appears in the EZE No. 2 and EZE No. 3 devices, the accused products in this case.

After Wadsworth began selling the EZE No. 1, Callicrate identified a number of problems with the device and developed the improved device disclosed in Callicrate's '434 patent. For instance, Callicrate faulted the "caulking gun-type" tightening mechanism. As explained in the '434 patent:

[T]he process of tightening the loop through successive pulls on the trigger mechanism [as disclosed in the '704 patent] is time consuming and the animal must therefore be restrained for a longer period of time. In addition, the tension which can be imparted to the band, and the tightness of the loop, are limited by the hand strength of the user. Moreover, relatively large frictional and abrasive forces are exerted on the band where the band is attached to the tightening rod, thereby increasing the likelihood of damage to the elastomeric material causing breakage before the desired tension is achieved. Additionally, due to the design of the ligature tool, an operator is limited in the extent a band can be tightened. Once an operator has fully retracted the tightening rod, the loop's tightness cannot be increased.

'434 patent, col. 1, l. 62-col. 2, l. 9. To overcome these problems, Callicrate invented a winding assembly 14 that performs essentially the same function as Wadsworth's caulking gun-type tightening mechanism but in a different manner. See '434 patent, col. 3, ll. 66-68. Figure 1 shows an embodiment of this invention:

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The winding assembly 14 is the only tightening / pulling mechanism claimed in the '434 patent. Presumably, Callicrate did not assert the '434 patent against Wadsworth's EZE line of products because they do not include such an assembly.

Unlike the '434 patent, however, Callicrate's later '553 and '329 patents claim tools with a "means for pulling" that encompasses both caulking gun-type tightening mechanisms as well as winding assembly mechanisms. Callicrate v. Wadsworth Mfg., 217 F.Supp.2d 1101, 1109 (D.Mont.2002) (Claim Construction Order) (noting that Wadsworth conceded the claimed "pulling means" covers a winding spool mechanism and a caulking gun-type mechanism). Claims 11, 14 and 16 of the '553 patent are representative:

11. A tool for ligating a body part, comprising:

an elongated tool body having a forward end and a rearward end, said rearward end having a handle and said forward end having a means for receiving elastomeric ligature material;

means for pulling said ligature material towards said rearward end of said tool body, said means for pulling interconnected to said tool body; and

a lever pivotally mounted on said tool body for deforming a grommet positioned in said means for receiving.

....

14. The tool of claim 11, wherein said means for pulling comprises a means for winding ligature material, said winding means adjustable to regulate the amount of force communicated by the rotation of said winding means to regulate the tension of said ligature material.

....

16. The tool as set forth in claim 11 wherein said means for pulling comprises a caulking gun-type device.

'553 patent, col. 24, ll. 11-21, 28-32, 38-39 (emphases added). Faced with this broader claim language in the '553 and '329 patents, Wadsworth admitted its EZE No. 2 and No. 3 castration tools (or use thereof), with their caulking gun-type tightening mechanism, satisfy every element of the asserted claims. Callicrate v. Wadsworth Mfg., CV-00-185-M-DWM, slip op. at 6-8 (D.Mont. Nov. 20, 2003) (Final Pre-Trial Order).

Despite this admission, Wadsworth argued at trial that its EZE No. 2 and No. 3 castration tools do not infringe the asserted apparatus claims because their components are not connected in the particular manner recited in the claims. Wadsworth further argued that use of its EZE No. 2 and No. 3 castration tools does not infringe the asserted method claims because a user does not perform all of the claimed steps. The jury ultimately agreed with Wadsworth, finding none of the asserted claims infringed by the sale or use of the EZE No. 2 or No. 3 castration tools.

Wadsworth also argued that the '553 and '329 patents are invalid as anticipated or obvious in view of Wadsworth's U.S. Patent No. 5,425,736 (the '736 patent) and the EZE No. 2 device disclosed therein. Wadsworth, however, filed the '736 patent after Callicrate's '434 patent, from which both the '329 and '553 patents claim priority. Thus, the '736 patent would not constitute prior art against the '329 and '553 patents if their claims of priority back to the '434 patent is valid. On their face, these priority claims seem valid because the '329 patent is a continuation in part of U.S. Patent No. 5,403,325, which is a continuation in part of the '434 patent. The '553 patent, in turn, is a divisional of U.S. Patent No. 5,483,095, which is a continuation in part of the '329 patent.

While admitting the relationship of the '553 and '329 patents to the '434 patent, Wadsworth argued that those patents are not entitled to priority back to the '434 patent because the '434 patent does not satisfy 35 U.S.C. § 112, ¶ 1 with respect to the caulking gun-type tightening mechanism. The district court agreed:

Callicrate's failure to include the caulking gun mechanism anywhere in the application for the '434 patent other than the Background section, coupled with the disparaging nature of the remarks therein, demonstrates that the '434 patent does not disclose the use of the caulking gun. This conclusion is further supported by the limiting definition of the winding means in claim 5 and the efforts to distinguish the caulking gun mechanism in the prosecution history. Though none of the cases cited by the parties is directly on point, under the facts the case law supports a finding that the Callicrate '329 and '553 patents cannot claim priority from the filing date of the Callicrate '434 patent with respect to the caulking gun mechanism. The ... '736 patent is thus prior art to the '329 and '553 patents with respect to the caulking feature.

Callicrate v. Wadsworth Mfg., CV 00-185-M-DWM, slip op. at 13-14 (D.Mont. Dec. 3, 2003) (Summary Judgment Order). Based on this reasoning, the district court instructed the jury that the '736 patent is prior art to the '553 and '329 patents. The jury then found those patents anticipated by and obvious in view of the '736 patent.

II.

This court reviews the grant or denial of a motion for JMOL "under the law of the regional circuit where the appeal from the district court normally would lie." Riverwood Int'l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1352 (Fed.Cir.2003). The United States Court of Appeals for the Ninth Circuit reviews a district court's order granting JMOL without deference. See Vollrath Co. v. Sammi Corp., 9 F.3d 1455, 1460 (9th Cir.1993). JMOL requires that "the evidence, construed in the light most favorable to the non-moving party, permits only one reasonable conclusion, and that conclusion is contrary to the jury's." Pavao v. Pagay, 307 F.3d 915, 918 (9th Cir.2002). The Ninth Circuit upholds any jury verdict supported by substantial...