Duro-Last, Inc. v. Custom Seal, Inc.
| Decision Date | 28 February 2003 |
| Docket Number | No. 02-1262.,No. 02-1218.,02-1218.,02-1262. |
| Citation | 321 F.3d 1098 |
| Parties | DURO-LAST, INC., Plaintiff-Cross Appellant, v. CUSTOM SEAL, INC., Defendant-Appellant. |
| Court | U.S. Court of Appeals — Federal Circuit |
Richard W. Hoffmann, Warn, Burgess & Hoffmann, PC, of Auburn Hills, MI, argued for plaintiff-cross appellant. Of counsel on the brief was Andrew M. Grove, Reising, Ethington, Barnes, Kisselle, Learman & McCulloch, PC, of Troy, MI.
Jeffrey S. Standley, Standley & Gilcrest LLP, of Dublin, OH, argued for defendant-appellant. Of counsel on the brief was James L. Kwak.
Before MICHEL, Circuit Judge, PLAGER, Senior Circuit Judge, and LOURIE, Circuit Judge.
This case requires us to decide whether, under nascent Federal Circuit law, the plaintiff's pre-verdict motion for judgment as a matter of law (JMOL) was sufficiently specific with regard to the defense of obviousness to support the trial judge's grant of the post-verdict JMOL in plaintiff's favor.
Duro-Last, Inc. sued Custom Seal, Inc. for infringement of U.S. Patent Nos. 4,652,321 and 4,872,296. A jury found that Custom Seal infringed both patents, but, in response to Custom Seal's invalidity defense, found both patents invalid for obviousness. With regard to Custom Seal's defense of inequitable conduct, the jury found in special verdicts that Duro-Last failed to disclose material prior art to the United States Patent and Trademark Office (PTO) during prosecution of the '296 patent and intended to mislead or deceive the PTO.
The district court, however, granted Duro-Last's motion for JMOL that the patents were not invalid for obviousness. The district court also held that, regardless of the jury's findings, Duro-Last did not commit inequitable conduct during prosecution of the '296 patent. Judgment was rendered in Duro-Last's favor; Custom Seal timely appeals.
Because Duro-Last did not properly raise the obviousness issue in a JMOL motion before the cause was submitted to the jury, the district court's subsequent review of the jury's findings of fact underlying its obviousness determination in response to the later JMOL motion was improper; the district court's grant of JMOL cannot be sustained. We reverse the grant of JMOL, and reinstate the jury verdict that the patents are invalid for obviousness and the district court's initial judgment thereon. We affirm the district court's judgment that there was no inequitable conduct.
The two patents at issue in this case relate to roofing products used to cover roof protrusions such as vent pipes and air-conditioning units. The products are made of pieces of a flexible, thermoplastic material heat-welded together to form a water-tight seal around the protrusions. The '321 patent discloses a cylindrical enclosure, referred to as a `stack' or `stack flashing,' that fits around a vent pipe. The '296 patent discloses a corner piece that covers the corner of an air-conditioning unit or similar protrusion.
The stack described in the '321 patent comprises two pieces, an open-ended tube and a base piece, welded together, as illustrated in Figure 3 of the patent:
NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE
Claim 14, the only claim at issue in the '321 patent, reads (emphasis added to highlight the relevant claim limitations):
14. A roof vent pipe enclosure for uniting with flexible, roof covering synthetic plastic membranes comprising:
a. a generally cylindrical, open ended tube of a flexible fabric material which has a thermoplastic surface and is heat weldable, the one end of said tube being radially deformed to provide an axially tapering surface of increasing diameter;
b. a flexible base piece of like thermoplastic heat weldable material with an opening therein of a diameter to accommodate the base of the vent pipe, the marginal edge section of material surrounding said base piece opening being deformed generally in an axially tapered direction to form an axially tapered surface, and arranged so that it is in lapped engagement with said tapering surface of the tube; and
c. an annular weld created by melting the material of the tube and base pieces in lapped engagement under pressure, clamping them together, to secure them in watertight relationship.
The corner piece described in the '296 patent comprises two segments, a first generally rectangular segment with a slit formed partway through the middle of one side, and a second segment with a triangular corner, the sides of which are welded to the rectangular segment along the edges of the slit. Figure 1 of the '296 patent illustrates how the corner piece is installed on a roof protrusion. The sides of the second segment (20) are welded to the edges of the slit in the first segment (19a-d):
NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE
Claim 1, the only claim at issue in the '296 patent, reads (emphasis again added to highlight the relevant claim limitations):
1. A corner piece for the integrated enclosure provided on a single-ply, thermoplastic, polymer-coated, fabric for roof membranes to cover large vertical structures projecting vertically from the roof which have vertical walls forming corners; the corner piece comprising
a first generally rectangular membrane segment, a side being part-way split interjacent its ends and
a second membrane segment with a triangularly-shaped corner portion conformed to loop shape and having its marginal edges overlying portions of the first segment contiguous to the split and being welded thereto in a continuous weld seam, the said triangularly-shaped corner portion having edges extending relative to one another from a radiused corner portion at an angle slightly less than 90.
Duro-Last filed a patent infringement suit against Custom Seal, alleging that roof vent pipe enclosures and corner pieces manufactured and sold by Custom Seal infringed the '321 and '296 patents, respectively. The case was tried before a jury in February 1999. At the close of evidence Duro-Last moved for judgment as a matter of law under Rule 50 of the Federal Rules of Civil Procedure, which was denied.
The jury found that Custom Seal infringed both patents under the doctrine of equivalents. The jury further found that neither patent was commercially used or sold or offered for sale more than one year before its date of invention, but the jury did find both patents invalid for obviousness. Finally, the jury answered special interrogatories concerning the factual questions underlying the issue of inequitable conduct. The jury found that Duro-Last failed to inform the PTO of material prior art during prosecution of the '296 patent and did so with intent to mislead or deceive the PTO. The jury, however, found that Duro-Last did not fail to disclose material prior art during prosecution of the '321 patent.
After the district court entered judgment on the jury verdict, Duro-Last filed a motion for JMOL that the patents were not invalid for obviousness. Custom Seal objected to the motion on the ground that the issue had not been properly raised in a JMOL motion at the close of evidence, as required by Rule 50. The district court disagreed with Custom Seal, stating that obviousness was a component of the timely JMOL motions made by Duro-Last before the case was submitted to the jury. On the merits, regarding the '321 patent the district court found that the prior art did not teach an "annular weld on a tapering surface created by melting the flexible fabric material of the tube and base pieces in lapped engagement." With respect to the '296 patent, the district court found that the prior art did not show a segment "conformed to loop shape" when welded to another segment or a segment with a "radiused corner portion." Accordingly, the district court granted JMOL in Duro-Last's favor, holding that Custom Seal had failed to prove obviousness of either patent.
In a separate decision, the district court addressed the issue of inequitable conduct during prosecution of the '296 patent. The only theory Custom Seal pursued in its post-trial brief in support of its inequitable conduct defense related to the activity of Monte Sharp, a former Duro-Last contractor who had developed techniques for making corner pieces. The court agreed with Duro-Last that this theory was not properly before the court because Custom Seal did not adequately plead this theory in its answer or the joint final pre-trial order. The district court went on to hold that even if the issue had been before the court, Custom Seal had failed to prove inequitable conduct. While the jury had found that Duro-Last withheld material prior art with an intent to deceive, the district court concluded that the prior art was "only marginally material" and there was "little or no intent to deceive." On this basis, the court determined that a judgment finding inequitable conduct was not warranted.
Custom Seal appeals the district court's decision granting Duro-Last's motion for JMOL that both patents are not invalid for obviousness. Custom Seal argues that Duro-Last did not properly raise the obviousness issue in a pre-verdict JMOL motion, or, alternatively, that substantial evidence supported the jury verdict of obviousness. Custom Seal also appeals the district court's decision that Duro-Last did not commit inequitable conduct during prosecution of the '296 patent, and the jury verdict of infringement of the '296 patent under the doctrine of equivalents. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
The first issue before us is whether Duro-Last's pre-verdict JMOL motion, made at the close of evidence, raised the obviousness issue with enough specificity to meet the requirements of Rule 50. Rule 50(a) of the Federal Rules of Civil Procedure states that a JMOL motion made before submission of the case to the jury "shall...
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