Dual Mfg. & Engineering, Inc. v. Burris Industries, Inc.

• Decision Date: 03 December 1979
• Docket Number: No. 79-1136,79-1136
• Citation: 205 USPQ 1157,619 F.2d 660
• Parties: DUAL MANUFACTURING & ENGINEERING, INC., and the Berkline Corporation, Plaintiffs-Appellees, v. BURRIS INDUSTRIES, INC., Defendant-Appellant. LEGGETT & PLATT, INCORPORATED, Plaintiff-Appellant, v. DUAL MANUFACTURING & ENGINEERING, INC., Defendant-Appellee. . Reheard En Banc
• Court: U.S. Court of Appeals — Seventh Circuit

Page 660

619 F.2d 660

205 U.S.P.Q. 1157

DUAL MANUFACTURING & ENGINEERING, INC., and the Berkline

Corporation, Plaintiffs-Appellees, v. BURRIS INDUSTRIES, INC., Defendant-Appellant.

LEGGETT & PLATT, INCORPORATED, Plaintiff-Appellant, v. DUAL MANUFACTURING & ENGINEERING, INC., Defendant-Appellee.

No. 79-1136.

United States Court of Appeals Seventh Circuit.

Reheard En Banc Dec. 3, 1979.

Decided April 22, 1980.

Herbert C. Brinkman, Cincinnati, Ohio, for defendant-appellant.

John E. Angle, Kirkland & Ellis, Chicago, Ill., for plaintiffs-appellees.

Before FAIRCHILD, Chief Judge, SWYGERT, CUMMINGS, PELL, SPRECHER, TONE, BAUER, WOOD and CUDAHY, Circuit Judges.

PELL, Circuit Judge.

These are consolidated appeals from two judgments entered in consolidated patent infringement cases tried to a jury. The jury found both patents in suit to be valid and infringed. The patents related to chairs which could be reclined without striking a nearby wall. The judgment of the district court was affirmed by a divided panel of this court on July 20, 1979, on the basis that the jury's verdict was not against the manifest weight of the evidence. The dissenting opinion took the position that obviousness was a question of law, that the evidence demonstrated the patents were obvious under the prior art, that the patents should have been found invalid by the district court, and that the judgment contrary thereto should have been reversed by this court. Dual Manufacturing & Engineering, Inc. v. Burris Industries, Inc., 202 USPQ 708 (7th Cir. 1979).

By way of more specific background, we note the following. The original suit was brought by the Berkline Corporation and its subsidiary Dual Manufacturing & Engineering, Inc. (collectively, the appellees) alleging that the Wall Hugger chair manufactured by Burris Industries, Inc. (Burris) infringed two Re patents: Reissue Patent No. 28,210 and Reissue Patent No. 29,483. ¹ Thereafter the predecessor in interest of Leggett & Platt, Inc. (together with Burris, collectively referred to as the appellants), which manufactures parts used in the Wall Hugger chair, brought an action seeking a declaratory judgment that the patents owned by Berkline were invalid. The second case, originally commenced in the district court for the District of Massachusetts, was transferred to the Northern District of Illinois after Dual had counterclaimed, charging infringement of both patents. The two cases thus involved the same issues with the parties reversed.

According to Berkline, Frank Re, the inventor, discerned in 1969 the problem of developing a chair that would "recline and wall" and after testing a great many models the "Wallaway" chair was developed. The essential design principle embodied in this chair was that the seat was placed on a rolling base with a linkage attaching the backrest to the base. Then as the chair occupant leaned back the seat would roll forward on the base and the back would be pulled into a reclining position by the linkage without the back touching a nearby wall. The Burris Wall Hugger chair is also designed to recline even though placed close to a wall.

Although we will leave the matter for a more thorough discussion later herein, initially we note that at least at the time of the en banc rehearing there was no serious dispute that determination of the question of obviousness under patent law is a question of law. Pederson v. Stewart-Warner Corp., 536 F.2d 1179, 1180 (7th Cir. 1976), cert. denied, 429 U.S. 985, 97 S.Ct. 505, 50 L.Ed.2d 597, and cases cited therein. The appellees, however, on the en banc rehearing have taken the position that even though it be acknowledged that obviousness is a question of law, this does not compel the conclusion that a reviewing court is free to substitute its determination on obviousness for that of the jury, "when, as here, appellants agreed to submit the question of obviousness to the jury with instructions from the trial judge that appellants could concede were proper." The appellees point out that as a matter of fact the instruction on obviousness was drafted and submitted by the appellants and given as tendered with some slight modification.

Because the jury was instructed on the elements bearing on the issue of obviousness and because some attention was directed to that matter during oral argument on the en banc rehearing, we turn first to whether or not the appellants are now precluded from contending as a matter of law that the inventions encompassed in the patents in issue were invalid because of obviousness.

We do not understand the appellees to be arguing that the appellants are bound by a waiver in the strict legal sense of that term, although they nevertheless find support for their position in the fact that the appellants did not object to submitting the issue of obviousness to the jury. The appellants, on the other hand, admit that the jury was instructed on the issue of obviousness and no objection was lodged against the instruction as required by Rule 51, Fed.R.Civ.P. They do say, however, that because the district court had declined to take the case from the jury they had no choice except to see that the jury was properly instructed on the elements of obviousness, and that they had no objection to the form of the instruction insofar as it related to those elements. They also say, as they must, that they are not seeking reversal on the ground of erroneous instructions.

As the factual background for consideration of this initial issue the record demonstrates the following. At the conclusion of the appellants' evidence, the appellees moved for a directed verdict. The oral motion which was briefly argued to the trial court and was quickly denied, raised a number of issues not involved in the present appeal. It also raised the question of the validity of the patent for noncompliance, inter alia, with the provisions of 35 U.S.C. § 103, the statutory basis for nonobviousness precluding a patent. ² Because at the time the initial motion for directed verdict was presented the appellants had not yet presented any evidence and had only had the opportunity to cross-examine the appellees' witnesses, we may safely assume without reading the some thirteen volumes of transcript developed to that point, that it would have been inappropriate to have directed a verdict. At the conclusion of all the evidence, the appellants again moved for a directed verdict, arguing "that the only reasonable conclusion that can be drawn from the evidence in this case is that at the time that Re made his chair, it would have been obvious to someone skilled in the art." Their argument, although not extended, pointed out reference to a much older Hendrickson chair and that the patents in issue were merely a combination of old elements and that they were "a pure cut-and-paste job." Specifically they pointed out to the court that the recliner chair was old and when this was put with the old slide and link the previous functions were merely combined. Again the court promptly overruled the motion for a directed verdict.

Thereafter the appellants in due course filed their motion for a judgment notwithstanding the verdict. In their brief supporting this motion the movants specifically directed the attention of the trial court to Pederson and other cases to the effect that obviousness is a question of law and that judgment n. o. v. was proper in a jury-tried case where the patent in suit was directed to an obvious combination of old elements. The brief then extensively set forth an analysis of the evidence with particular regard to that which was shown by the prior art. ³ This motion was also denied.

Under the circumstances just set forth we hold that the question of obviousness is preserved for review by this court. This issue was presented in Coca Cola Bottling Co. of Black Hills v. Hubbard, 203 F.2d 859 (8th Cir. 1953). In that case the plaintiff asserted that because no exceptions were taken to the instructions of the trial court, those instructions became the law of the case for determining the sufficiency of the evidence to support the verdict in judgment. The court rejected this contention, expressly overruling earlier cases to the contrary, and stated the following:

It is true, of course, that an appellant may not challenge on review the correctness of instructions to which he took no exceptions or only a general exception. Rule 51 of the Federal Rules of Civil Procedure, 28 U.S.C.A.; Palmer v. Hoffman, 318 U.S. 109, 119, 63 S.Ct. 477, 483, 87 L.Ed. 645 and cases cited; Palmer v. Miller, 8 Cir., 145 F.2d 926, 930. In that sense, and in that sense only, it may be said that the instructions to which no exceptions are taken become the law of the case for determining whether the instructions are subject to review on appeal. See Union Pacific Railroad Co. v. Denver-Chicago Trucking Co., Inc., 8 Cir., 202 F.2d 31, 37-38. But in determining whether a trial court has erred in denying a motion for a directed verdict made at the close of the evidence, it is the applicable law which is controlling, and not what the trial court announces the law to be in his instructions. This Court must ascertain for itself what the applicable law is, whether the instructions were excepted to or not. A proper motion for a directed verdict and its denial will always preserve for review the question whether under the law truly applicable to the case there was an adequate evidentiary basis for the submission of the case to the jury.

203 F.2d at 862. See also Johnson v. United States, 434 F.2d 340, 343 (8th Cir. 1970) (citing Coca Cola with approval); Gorsalitz v. Olin Mathieson Chemical Corporation, 429 F.2d 1033, 1040 (5th Cir. 1970), cert. denied, 407 U.S. 921, 92 S.Ct. 2463, 32 L.Ed.2d 807 (1972) (holding that the question was preserved for review by the motion for a directed verdict).

In 9 Wright & Miller, Federal Practice and Procedure: Civil P 2558 at 670-71 (1971), the...