Exxon Chemical Patents, Inc. v. Lubrizol Corp.

• Decision Date: 04 March 1998
• Docket Number: No. 97-1021,97-1021
• Parties: EXXON CHEMICAL PATENTS, INC., Exxon Corporation and Exxon Research & Engineering Company, Plaintiffs-Appellants, v. THE LUBRIZOL CORPORATION, Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1475

137 F.3d 1475

45 U.S.P.Q.2d 1865

EXXON CHEMICAL PATENTS, INC., Exxon Corporation and Exxon Research & Engineering Company, Plaintiffs-Appellants, v. THE LUBRIZOL CORPORATION, Defendant-Appellee.

No. 97-1021.

United States Court of Appeals Federal Circuit.

March 4, 1998.

Rehearing Denied; Suggestion for Rehearing In Banc

Declined April 28, 1998. ^*

E. Edward Bruce, Covington & Burling, Washington, DC, argued for plaintiffs-appellants. With him on the brief was Thomas L. Cubbage, III. Of counsel was Paul J. Berman.

Timothy B. Dyk, Jones, Day, Reavis, & Pogue, of Washington, DC, argued for defendant-appellee. With him on the brief was Kenneth R. Adamo. Also on the brief were S. Leslie Misrock, Pennie & Edmonds, New York City, and Stanton T. Lawrence, III, Washington, DC.

Before PLAGER, CLEVENGER, and BRYSON, Circuit Judges.

BRYSON, Circuit Judge.

Exxon Chemical Patents, Inc., Exxon Corporation, and Exxon Research & Engineering Co. (collectively "Exxon") appeal from the district court's denial of their motion for a new trial in a patent infringement action that Exxon brought against The Lubrizol Corporation. Exxon filed the motion for a new trial on infringement under the doctrine of equivalents after this court reversed an earlier jury verdict in Exxon's favor on literal infringement. See Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 35 USPQ2d 1801 (Fed.Cir.1995), cert. denied, 518 U.S. 1020, 116 S.Ct. 2554, 135 L.Ed.2d 1073 (1996). The district judge interpreted our mandate on the prior appeal as prohibiting him from granting a new trial, and he therefore denied Exxon's motion. Because our prior opinion was confined to the issue of literal infringement, we hold that the mandate did not deprive the district court of the power to grant Exxon's motion for a new trial on infringement under the doctrine of equivalents. We therefore vacate the denial of Exxon's motion for a new trial and remand to the district court for further consideration of that motion.

I

This appeal is another chapter in a lengthy and expensive patent litigation between Exxon and Lubrizol. Exxon is the owner of U.S. Patent No. 4,867,890, which is directed to a lubricant for automobile engines. Exxon filed suit against Lubrizol for patent infringement on the day the patent issued, September 19, 1989. Following extensive discovery and a ten-day trial, the jury returned a verdict in Exxon's favor. The jury verdict addressed only literal infringement. Exxon had deleted its proposed jury instruction on infringement under the doctrine of equivalents following the decision of the district judge to adopt Exxon's proposed claim construction. After the district court denied Lubrizol's motion for judgment as a matter of law, Lubrizol appealed to this court.

On appeal, this court rejected the claim construction proposed by Exxon and adopted a construction based on the one proposed by Lubrizol. See Exxon Chem. Patents, Inc., 64 F.3d at 1557-58, 35 USPQ2d at 1804-05. The court held that under the correct claim interpretation no reasonable jury could have found that Lubrizol's products literally infringed Exxon's patent. Accordingly, the court reversed the judgment of the district court. 64 F.3d at 1560, 35 USPQ2d at 1806. Judge Nies dissented from the decision as to the proper claim construction and from the decision to reverse the judgment without remanding the case for a new trial. 64 F.3d at 1563-70, 35 USPQ2d at 1808-14 (Nies, J., dissenting).

The majority and dissenting opinions briefly addressed the question whether Exxon should be granted a new trial on infringement under the doctrine of equivalents. Judge Nies argued that Exxon was entitled to a new trial in light of the new claim construction adopted by the panel. See 64 F.3d at 1570, 35 USPQ2d at 1814 (Nies, J., dissenting). The majority responded in a footnote, stating that the "question of whether Exxon is now entitled to a jury trial on infringement under the doctrine of equivalents" had not been briefed or argued, and that the panel therefore "express[ed] no view on that question." 64 F.3d at 1555 n. 1, 35 USPQ2d at 1802 n. 1.

Exxon petitioned for rehearing. Although Exxon's petition was devoted to arguing the merits of its preferred claim construction, Exxon also requested, "out of an abundance of caution," that the panel clarify its opinion regarding Exxon's right to move for a new trial on doctrine-of-equivalents infringement. Exxon's petition was denied without the requested clarification.

Exxon subsequently filed a motion in the district court for a new trial on infringement under the doctrine of equivalents. The district judge denied the motion in a one-page order, stating that the court's decision left him with "no authority to grant a new trial." Exxon now appeals from that order, arguing that although our reversal of the jury verdict foreclosed any further proceedings relating to literal infringement, our mandate did not preclude the district court from entertaining a motion for a new trial on the issue of infringement under the doctrine of equivalents.

II

A

This court's opinion in the prior appeal construed the claims of the patent and analyzed the issue of literal infringement. At the conclusion of the analysis of those issues, the court reversed the jury verdict and held that Lubrizol was "entitled to a judgment of noninfringement as a matter of law." The court further stated that its reversal was "without remand for a second trial."

Those statements in the court's opinion referred only to the issue of literal infringement. Any suggestion that the court meant to address the issue of infringement under the doctrine of equivalents is put to rest by the first footnote of the opinion, in which the court explained that the judgment under review was "limited to literal infringement." 64 F.3d at 1555 n. 1, 35 USPQ2d at 1802 n. 1. As to whether Exxon would be entitled to a new trial on infringement under the doctrine of equivalents, the court noted that the issue was not briefed or argued and that the panel therefore "express[ed] no view on that question." In light of that statement, it is clear that this court's mandate was not intended to address the question whether Exxon would be entitled to a new trial under the doctrine of equivalents. Under the general rule that an appellate mandate governs only that which was actually decided, the district court was therefore free to consider Exxon's motion for a new trial. See Biggins v. Hazen Paper Co., 111 F.3d 205, 209 (1st Cir.), cert. denied, --- U.S. ----, 118 S.Ct. 373, 139 L.Ed.2d 290 (1997); Exxon Corp. v. United States, 931 F.2d 874, 877-78 (Fed.Cir.1991).

Even without the express disclaimer in the court's opinion, it would be incorrect to conclude that the court's mandate encompassed an issue that was not presented to the court. Although in some cases issues not explicitly addressed by an appellate court may nonetheless be decided by necessary implication, see 18 James Wm. Moore, Moore's Federal Practice § 134.23 (3d ed.1997), this is not one of those cases. This court's opinion dealt only with the issues of claim construction and literal infringement. Resolution of those two issues did not require consideration of the doctrine of equivalents.

Our recent decision in Laitram Corp. v. NEC Corp., 115 F.3d 947, 42 USPQ2d 1897 (Fed.Cir.1997), is instructive here. After Laitram won a jury verdict in a patent infringement suit, NEC filed motions for judgment as a matter of law (JMOL) on the issues of infringement, willfulness, and claim identicality. 115 F.3d at 949, 42 USPQ2d at 1899. The district court granted the motion on infringement and denied the other two JMOL motions as moot. On appeal, this court reversed the JMOL order and remanded "with instructions to reinstate the jury verdict." Laitram Corp. v. NEC Corp., 62 F.3d 1388, 1395, 36 USPQ2d 1206, 1211 (Fed.Cir.1995). On remand, the district court assumed that the mandate required it to reinstate the entire jury verdict and that NEC's outstanding JMOL motions must have been decided by implication. The district court therefore denied NEC's Rule 60(b) motion for relief from judgment. On appeal from that decision, this court reversed, finding that the mandate from the earlier opinion covered only the infringement issue. Laitram Corp., 115 F.3d at 951-53, 42 USPQ2d at 1900-02. Because each of the JMOL motions presented alternative grounds for overturning the verdict in Laitram's favor, the court held that NEC was entitled to a ruling on the merits of those grounds in the district court after the original judgment was overturned.

Although this case involves an appeal from the denial of a JMOL motion, the same principle is applicable: in determining that Lubrizol did not literally infringe Exxon's patent, this court did not dispose of Exxon's doctrine-of-equivalents infringement claim; in fact, the court made clear that it was not addressing that issue. The mandate therefore cannot be interpreted as resolving the doctrine-of-equivalents claim, and for that reason the mandate does not foreclose the district court from addressing it.

B

Contrary to Lubrizol's suggestion, Exxon cannot be charged with having abandoned its doctrine-of-equivalents theory of liability by not submitting it to the jury or raising it on the previous appeal. Once the district judge construed the claim language in Exxon's favor, the doctrine-of-equivalents issue in the case became moot. Exxon could not realistically be expected to request alternative jury instructions asking for an advisory verdict on whether the patent would be infringed under the doctrine of equivalents on Lubrizol's proposed claim construction. Nor could Exxon, as appellee, have been expected to defend the judgment in its favor on the basis of a theory of liability that was never given to the jury. See Laitram Corp., 115 F.3d at 954, 42 USPQ2d at 1902-03. The question whether there could be...