Concept Design Electronics and Mfg., Inc. v. Duplitronics, Inc.
| Decision Date | 17 January 1995 |
| Docket Number | No. 94-1264,94-1264 |
| Citation | 52 F.3d 342 |
| Parties | NOTICE: Federal Circuit Local Rule 47.6(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issue preclusion, judicial estoppel, law of the case or the like based on a decision of the Court rendered in a nonprecedential opinion or order. CONCEPT DESIGN ELECTRONICS AND MANUFACTURING, INC., Plaintiff/Counterclaim Defendant-Appellee, v. DUPLITRONICS, INC., Defendant/Counterclaim Plaintiff-Appellant. |
| Court | U.S. Court of Appeals — Federal Circuit |
Before MAYER, MICHEL and SCHALL, Circuit Judges.
Duplitronics, Inc. appeals the March 3, 1994 order of the District Court for the Western District of North Carolina denying its motion for judgment as a matter of law, or alternatively, for a new trial, filed after a bifurcated jury trial involving two separate juries. Docket Nos. C-C-91-169-P and C-C-90-368-P. In the first phase of that litigation, the jury found that two patents assigned to and asserted by Duplitronics were unenforceable, invalid and not infringed by Concept Design Electronics and Manufacturing, Inc. In the second phase, another jury found that Duplitronics had violated North Carolina unfair competition laws by asserting its patents in bad faith. Because we conclude the district court did not abuse its discretion by entering judgment that Duplitronics' patents are unenforceable for inequitable conduct, and because the jury verdicts on validity, infringement and unfair competition are supported by substantial evidence, making the judgments entered thereon lawful, we affirm.
In November 1990, Concept Design filed a declaratory judgment action to declare invalid and unenforceable U.S. Patent 4,410,917 (the Newdoll patent), assigned to Duplitronics. Duplitronics filed a counterclaim alleging infringement of that patent. Concept Design then requested that the Patent and Trademark Office (PTO) reexamine the Newdoll patent in light of newly discovered prior art. The case was stayed pending a decision by the PTO which allowed several of the original claims as well as other claims submitted in the re-examination as amended or new claims.
U.S. Patent 5,021,893 (the Scheffler patent), assigned to Duplitronics, issued in June 1991. Concept Design immediately filed a declaratory judgment action to declare that patent invalid and unenforceable. Duplitronics filed a counterclaim alleging infringement of the Scheffler patent. The suits involving the Newdoll and Scheffler patents were consolidated. Both patents in suit relate to apparatus and methods for commercially duplicating audio cassette tapes.
A jury trial was held in March 1993 in which the jury decided all issues for Concept Design, finding that Duplitronics' Newdoll and Scheffler patents were invalid, unenforceable and not infringed. Duplitronics moved for judgment as a matter of law (JMOL) or, alternatively, a new trial, pursuant to Federal Rule of Civil Procedure 50(b). The district court denied that motion.
A second jury trial was held in November 1993 on Concept Design's claim that Duplitronics had violated North Carolina unfair competition laws and to determine damages, if any, to Concept Design. This phase of the litigation had been bifurcated from the first at Duplitronics' request. Concept Design presented two theories of unfair competition at trial: 1) Duplitronics' alleged fraud on the PTO during prosecution of the Scheffler patent and the re-examination proceeding concerning the Newdoll patent; and 2) Duplitronics' enforcement of the two patents, allegedly done with no reasonable belief that the patents were infringed. The jury found for Concept Design on the theory that Duplitronics had asserted the Scheffler and Newdoll patents in bad faith and awarded $300,000 in damages, which the district court trebled. After the district court entered a final judgment on both phases of the litigation, including a judgment that the two patents were unenforceable for inequitable conduct, Duplitronics' filed a JMOL motion which the court denied. Duplitronics appeals that denial here.
Duplitronics argues that the second jury effectively acquitted it of inequitable conduct. The jury of the first trial was asked to determine whether the patents were "unenforceable" based on either of two separate grounds, misuse or inequitable conduct. Jury instructions were provided on both theories. According to Duplitronics, the first jury found only "unenforceability" which could have been based on misuse rather than inequitable conduct. Duplitronics further asserts that, because the first jury verdict was ambiguous, it does not establish the law of the case regarding inequitable conduct. As the final step in its argument, Duplitronics maintains that the second jury acquitted Duplitronics of inequitable conduct by unambiguously finding that Duplitronics had not been shown to have committed fraud on the PTO.
Duplitronics is correct that the March special interrogatory asked the jury to decide only whether the Newdoll and Scheffler patents were "unenforceable." It is also true that the March jury was instructed that a patent is rendered unenforceable by either inequitable conduct or misuse. Moreover, the partial judgment entered by the district court on April 19, 1993, following the first phase of the litigation, decreed only that the patents were "unenforceable." Thus, we agree there was some ambiguity regarding the grounds on which the first jury rested its verdict of "unenforceability."
However, the district court entered its final...
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Concept Design Electronics and Mfg., Inc. v. Duplitronics, Inc.
...affirmed the judgment of the district court in a non-precedential decision. Concept Design Elecs. and Mfg., Inc. v. Duplitronics, Inc., 52 F.3d 342 (table), 34 USPQ2d 1789 (Fed.Cir.1995) (the "January 17 Decision"). In our January 17 opinion we reviewed and affirmed the jury's verdicts of i......