Flex-Rest, LLC v. Steelcase, Inc.

• Decision Date: 13 July 2006
• Docket Number: No. 05-1367.,No. 05-1354.,05-1354.,05-1367.
• Parties: FLEX-REST, LLC, Plaintiff-Appellant, v. STEELCASE, INC., Defendant-Cross Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

455 F.3d 1351

FLEX-REST, LLC, Plaintiff-Appellant, v. STEELCASE, INC., Defendant-Cross Appellant.

No. 05-1354.

No. 05-1367.

United States Court of Appeals, Federal Circuit.

July 13, 2006.

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COPYRIGHT MATERIAL OMITTED

Edmund J. Sease, McKee, Voorhees & Sease, P.L.C., of Des Moines, Iowa, argued for plaintiff-appellant. With him on the brief were Jeffrey D. Harty, Robert A. Hodgson, and John D. Goodhue.

George Pazuniak, Connolly Bove Lodge & Hutz LLP, of Wilmington, Delaware, argued for defendant-cross appellant.

Before BRYSON, LINN, and PROST, Circuit Judges.

LINN, Circuit Judge.

Flex-Rest, LLC appeals from a final judgment following a jury verdict finding U.S. Patent No. 5,709,489 ('489 patent) invalid for anticipation and obviousness and from a grant of summary judgment finding that Steelcase, Inc. did not infringe U.S. Patent No. 5,961,231 ('231 patent). Flex-Rest, LLC v. Steelcase, Inc., No. 1:02-CV-537 (W.D.Mich. Nov. 10, 2003); Flex-Rest, LLC v. Steelcase, Inc., No. 1:02-CV-537 (W.D.Mich. Mar. 11, 2004). Steelcase cross-appeals the district court's order denying Steelcase's motion for a determination of inequitable conduct in procuring the '489 patent. Flex-Rest, LLC v. Steelcase, Inc., No. 1:02-CV-537 (W.D.Mich. Mar. 23, 2005) ("Inequitable Conduct Decision"). Because we discern no error in these decisions, we affirm.

I. BACKGROUND

Flex-Rest owns the '489 and '231 patents, which relate to computer keyboard positioning systems. The '489 patent involves a clamping system that allows adjustment of the keyboard to a negative tilt position, with the palm rest adjusted above the plane of the keys. The '231 patent involves a tray system that positions the keyboard in a similar negative tilt position. A view of this system is shown in Figure 7 of the '489 patent, reproduced below:

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

On April 17, 2002, Flex-Rest filed suit against Steelcase, Office Details, Inc., and Office Concepts, Inc. asserting infringement of both patents. Steelcase stipulated that it was liable for Office Details, and the case was bifurcated against Office Concepts. The claims against Office Details and Office Concepts were therefore dismissed, and the case proceeded against Steelcase alone.

The claim terms at issue in this appeal were construed in a Memorandum Opinion and Order of November 10, 2003 following a hearing on claim construction. At issue in the '489 patent was a limitation related to keyboard position as highlighted in claim 1 below:

1. A device for mounting a keyboard to a base and for positioning the keyboard in a backward tilted position ..., the device comprises:

* * *

(b) a clamp engaged with said bracket said clamp being engagable with a keyboard such that the keyboard may be oriented in a backward tilted position defined by the rear end of the keyboard being disposed below the front end of the keyboard, to prevent the keyboard from falling off when the keyboard is orientated in said backward tilted position; ...

'489 patent, col. 4, ll. 41-54. The district court construed this language to mean that "the support device permits the bottom of a keyboard to be tilted backward (i.e., at any angle of less than 0 degrees)." At issue in the '231 patent was the "sidewall" limitation highlighted in claim 1 below:

1. A device for mounting a keyboard to a base and for positioning the keyboard in a backward tilted position ..., the device comprising:

* * *

(c) a support tray comprising:

a support surface and

a keyboard stop member comprising a stop wall, said support surface comprising a front portion, a rear portion, a first sidewall, and a second sidewall, such that said stop wall extends from said first side wall to said second side wall and wherein said stop wall is disposed in said rear portion of said support surface, ...

'231 patent, col. 9, ll. 38-54. The district court construed "sidewall" to mean "a structure projecting or extending upward, i.e., above the plane of the support surface, from either side of the support tray." Finding that Steelcase's products did not possess sidewalls that projected or extended upward, the district court granted Steelcase's motion for partial summary judgment of non-infringement of the '231 patent.

After a hearing on various pretrial motions, the district court granted Steelcase's motion in limine to exclude certain portions of testimony by Dr. John C. Rosecrance, Flex-Rest's designated expert. Specifically, Dr. Rosecrance was allowed to testify to his field of expertise, ergonomics, but was precluded from testifying as an expert regarding designs of keyboard support systems and the prior art at the time of the invention.

As trial began on the '489 patent, Steelcase stipulated that its accused devices infringed. In turn, Flex-Rest stipulated that Steelcase's KBS device was conceived and reduced to practice before Flex-Rest's invention was conceived in November 1990, and that the KBS device taught each limitation of the asserted claims. Thus, the primary issue for trial was whether the KBS device anticipated the '489 patent under 35 U.S.C. § 102(g) or qualified as prior art for obviousness purposes.

With respect to the KBS device, Flex-Rest requested that the jury be instructed that in order to constitute prior art under section 102(g), the prior inventor could not have suppressed or concealed the invention. The district court found that there was not sufficient evidence to support such an instruction and denied Flex-Rest's request.

During deliberations, the jury requested clarification regarding what is considered "public" and "prior art." The district court defined "public" as "information not restricted by confidentiality." As to "prior art," the court responded:

In answer to your question, anything made or built in the United States by another person before the date of the claimed invention can be prior art for purposes of `obviousness' even if it is not publically [sic] available before the date of the claimed invention.... Keep in mind that you should consider what I have just written, together with all the other instructions that I gave you earlier. All the instructions are important, and you should consider them as a whole.

The jury returned a verdict for Steelcase, finding the '489 patent invalid under both 35 U.S.C. § 102(g) and 35 U.S.C. § 103. Flex-Rest did not make a motion for judgment as a matter of law (JMOL) or move for a new trial.

After entering judgment for Steelcase, the district court considered Steelcase's motion for a determination of inequitable conduct in procuring the '489 patent. Steelcase argued that Flex-Rest received — but failed to disclose to the U.S. Patent and Trademark Office (the Patent Office) — a letter and photographs from a competitor that constituted prior art material to patentability. Steelcase also argued that Flex-Rest failed to disclose the KBS device to the Patent Office, and that Flex-Rest's patent counsel made a false declaration in his petition to make special because he did not investigate the photographs or the KBS device in his search of the prior art. The court concluded that Steelcase failed to show clear and convincing evidence of an intent to deceive and therefore denied the motion.

On appeal, Flex-Rest challenges the district court's jury instructions, the court's ruling limiting Dr. Rosecrance's expert testimony, and the court's claim construction of disputed terms in the '489 and '231 patents. On cross-appeal, Steelcase challenges the district court's finding that clear and convincing evidence did not demonstrate inequitable conduct in procuring the '489 patent. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

II. DISCUSSION

A. Standard of Review

"Notwithstanding the absence of a motion for JMOL, a party may still challenge a jury verdict by establishing that the judge committed legal error" in instructing the jury. Advanced Display Sys. v. Kent State Univ., 212 F.3d 1272, 1281 (Fed.Cir.2000) (citing Biodex Corp. v. Loredan Biomedical, Inc., 946 F.2d 850, 854 (Fed.Cir.1991)). We apply the law of the regional circuit, here the Sixth Circuit, in reviewing generally whether jury instructions are erroneous. Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1359 (Fed.Cir.2004). Accordingly, we look to the entire jury charge to determine whether the jury instructions provided sufficient guidance on the legal principles, and we alter judgment only if the error was prejudicial. Bagherzadeh v. Roeser, 825 F.2d 1000, 1003 (6th Cir.1987); see also Biodex, 946 F.2d at 853. Importantly, "[u]nder this standard, jury instructions must be both legally correct and sufficiently comprehensive to address factual issues for which there is disputed evidence of record." Biodex, 946 F.2d at 854 (emphasis added). Suppression or concealment is a legal question, supported by underlying facts. See Fujikawa v. Wattanasin, 93 F.3d 1559, 1567 (Fed.Cir.1996) ("Suppression or concealment of the invention is a question of law which we review de novo.")

A district court's decision to preclude expert testimony is an evidentiary issue that is reviewed for an abuse of discretion. Gen. Elec. Co. v. Joiner, 522 U.S. 136, 141-43, 118 S.Ct. 512, 139 L.Ed.2d 508 (1997) ("[A]buse of discretion is the proper standard of review of a district court's evidentiary rulings.").

This court reviews the district court's grant of summary judgment of non-infringement de novo. Hilgraeve Corp. v. McAfee Assocs., Inc., 224 F.3d 1349, 1352 (Fed.Cir.2000). Summary judgment is proper only if there are no genuine issues of material fact and the movant is entitled to judgment as a matter of law. See Fed. R.Civ.P. 56(c); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Claim construction is an issue of law, see Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, ...