Gardco Mfg., Inc. v. Herst Lighting Co.
| Decision Date | 08 June 1987 |
| Docket Number | 86-1607,Nos. 86-1264,s. 86-1264 |
| Citation | 2 U.S.P.Q.2d 2015,820 F.2d 1209 |
| Parties | , 2 U.S.P.Q.2d 2015 GARDCO MANUFACTURING, INC., Appellee/Cross-Appellant, v. HERST LIGHTING CO., d/b/a Peerless Electric Company, Douglas J. Herst and Peter Y.Y. Ngai, Appellants/Cross-Appellees. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
Jack L. Slobodin, Cartwright, Suckerman & Slobodin, Inc., San Francisco, Cal., argued, for appellants/cross-appellees. With him on the brief, was Donald L. Beeson, Beilock, Collins & Beeson, Oakland, Cal., of counsel.
Charles E. Townsend, Jr., Townsend & Townsend, San Francisco, Cal., argued, for appellee/cross-appellant. With him on the brief, was Guy W. Chambers.
Before MARKEY, Chief Judge, RICH and NIES, Circuit Judges.
Appeal and cross-appeal from a judgment of the United States District Court for the Northern District of California, No. C 84-7748 SW (N.D.Cal. Apr. 11, 1986) (Williams, J.), U.S. Patent No. 4,390,930 (the '930 patent) unenforceable because the patent applicants were guilty of inequitable conduct before the United States Patent and Trademark Office (PTO) and refusing to find this case "exceptional" under 35 U.S.C. Sec. 285. We affirm.
On April 15, 1981, Douglas J. Herst (Herst) and Peter Y.Y. Ngai (Ngai) filed application Serial No. 254,462 which resulted in the issuance of the '930 patent on June 28, 1983. That patent, entitled "Indirect Lighting Fixture with Improved Light Control", was assigned to Herst Lighting Co. d/b/a Peerless Electric Company (Peerless). Having been accused of infringing the '930 patent, Gardco Manufacturing, Inc. (Gardco) filed a complaint on December 7, 1984 seeking a declaration that the '930 patent is invalid, unenforceable, and not infringed, and an award of attorney fees. Peerless answered the complaint, counterclaimed for infringement, and demanded a jury trial pursuant to Fed.R.Civ.P. 38(b).
In response to a motion filed by Gardco, the district court separated for trial without a jury the issue of inequitable conduct and for a trial with a jury, if necessary, the issues of infringement and validity. Fed.R.Civ.P. 42(b). After a six-day nonjury trial of the inequitable conduct issue only, the district court held that Peerless was guilty of inequitable conduct before the PTO and declared the '930 patent unenforceable. In a July 7, 1986 order, the district court denied Gardco's motion for attorney fees under 35 U.S.C. Sec. 285.
The '930 patent relates to a long, linear, indirect lighting fixture mounted above eye level and having tubular fluorescent lamps secured within an elongated housing and a reflector and side lenses which direct and refract most of the light above the horizontal plane of the fixture. The light which is directed below the horizontal plane is substantially controlled by the relative placement of the lens and lamps and is great enough for one to perceive the light source but small enough to avoid discomfort caused by glare. Claim 1, the broadest claim, reads:
said light source being vertically elevated within said housing relative to the side walls thereof a sufficient distance to permit a small portion of light emanating reflector means in said housing beneath said light source for reflecting light therefrom generally upwardly so as to increase the amount of light directed out of said fixture.
from the light source to be directed below said horizontal plane by said side lens means, and
The district court's inequitable conduct conclusion was based on Peerless' failure to disclose to the PTO the public use of Peerless' own light fixtures constituting prior art during prosecution of the patent application. The first was an indirect lighting fixture built and sold by Peerless in 1977, depicted in Peerless' 1977 catalog, and designated the "1977 fixture". The second fixture, designated the "PCT fixture", was built and sold by Peerless in 1979 and was the subject of Peerless' application for patent Serial No. 046,970 filed June 8, 1979.
In a seven-page unpublished memorandum, the district court found that Gardco proved by clear and convincing evidence that the two undisclosed fixtures would have been "highly material" to a patent examiner's determination. The district court noted that Herst testified that claim 1 read on both undisclosed fixtures, except for the limitation "avoid excessive brightness." However, the district court found that all three fixtures combat the problem of excessive brightness in very similar ways.
Concerning Peerless' intent to withhold the undisclosed art from the PTO, the district court found that Peerless' failure to recognize the materiality of that art was "clearly unreasonable under the circumstances." The district court found that Peerless did not satisfactorily explain why the patent disclosed in Figure 6 a lensless fixture and described that fixture as "conventional", while Peerless failed to disclose its more relevant fixtures that did have lenses. Noting correspondence between Ngai and Donald Beeson, the patent attorney who prosecuted the application resulting in the '930 patent, and the comparison in that correspondence of the brightness in the PCT and patented fixtures, the district court found that Ngai and Beeson were fully aware of the similarities between the claimed and undisclosed fixtures. The court found that a reasonable person in Peerless' position should have known of the materiality of the withheld prior uses and that the evidence was strongly suggestive that Peerless was actually aware that the undisclosed fixtures were at least possibly material. To have ignored that possibility, per the court, "was at least grossly negligent."
Weighing Gardco's proof that the undisclosed art was highly material and that Herst and Ngai should have known of its materiality, the court concluded that they acted inequitably toward the PTO and declared the '930 patent unenforceable. Concluding that Gardco had not proved that the applicants had intentionally misled the PTO, the district court held the case not exceptional and denied Gardco's motion for attorney fees.
On appeal before this court, Peerless objects to the district court's separation order under Rule 42(b), saying it was thereby improperly denied a jury trial on the issue of inequitable conduct. Peerless also challenges the district court's inequitable conduct conclusion. Gardco cross-appeals from the district court's denial of its motion for attorney fees.
(1) Whether the district court abused its discretion in separating the inequitable conduct issue for a nonjury trial held before a jury trial on validity and infringement.
(2) Whether the district court correctly held the '930 patent unenforceable because of inequitable conduct.
(3) Whether the district court clearly erred in finding this case not exceptional under section 285.
Rule 42(b) of the Federal Rules of Civil Procedure provides:
The court, in furtherance of convenience or to avoid prejudice, or when separate trials will be conducive to expedition The Seventh Amendment to the Constitution states:
and economy, may order a separate trial of any claim, cross-claim, counterclaim, or third-party claim, or of any separate issue or of any number of claims, cross-claims, counterclaims, third-party claims, or issues, always preserving inviolate the right of trial by jury as declared by the Seventh Amendment to the Constitution or as given by a statute of the United States. [Emphasis added.]
In Suits at common law, where the value in controversy shall exceed twenty dollars, the right of trial by jury shall be preserved, and no fact tried by a jury shall be otherwise re-examined in any Court of the United States, than according to the rules of the common law.
The question of whether a patentee is entitled to have the issue of inequitable conduct tried in the jury trial which it has demanded on its counterclaim for infringement is one of first impression in this court. The question is two-fold: (1) whether a separate nonjury trial may be properly ordered at all; and, if so, (2) whether a separate nonjury trial may precede the jury trial to which appellants would be entitled on the legal issues of validity and infringement. The question clearly implicates the jurisprudential responsibilities of this court in a field within its exclusive jurisdiction, i.e., patent law, and thus we are not bound by decisions of the regional circuit courts. See In re Innotron Diagnostics, 800 F.2d 1077, 1084, 231 USPQ 178, 183 (Fed.Cir.1986). In J.P. Stevens & Co. v. Lex Tex Ltd., 747 F.2d 1553, 223 USPQ 1089 (Fed.Cir.1984), cert. denied, --- U.S. ----, 106 S.Ct. 73, 88 L.Ed.2d 60 (1985), the inequitable conduct and infringement/validity issues were separately tried but the present question was not before this court. The parties here have cited no case which squarely addresses the precise question presented.
The Seventh Amendment preserves to...
To continue reading
Request your trial
-
Hunter Douglas, Inc. v. Comfortex Corp., 98-CV-0479(LEK/DNH).
...1986). "[A] district court has broad discretion in separating issues and claims for trial...." Gardco Manufacturing, Inc. v. Herst Lighting Co., 820 F.2d 1209, 1212 (Fed.Cir.1987). The claims presented by both Hunter Douglas and Comfortex form the matrix of this Court's analysis. Hunter Dou......
-
Total Containment, Inc. v. Environ Products, Inc.
...fees should only be made in exceptional cases in which it would be grossly unjust not to award attorney fees. Gardco Mfg., Inc. v. Herst Lighting Co., 820 F.2d 1209 (Fed.Cir.1987). In this case the defendant presented an inequitable conduct defense that was supported by neither law nor fact......
-
Leviton Mfg. Co., Inc. v. Shanghai Meihao Elec.
...at 1373. A finding of validity may not shield a patentee from unenforceability due to inequitable conduct. Gardco Mfg., Inc. v. Herst Lighting Co., 820 F.2d 1209, 1213 (Fed.Cir.1987) ("a patent may be valid and yet be rendered unenforceable for misuse or inequitable Leviton objects to Judge......
-
Duhn Oil Tool, Inc. v. Cooper Cameron Corp.
...for damages. E.g., Tegal Corp. v. Tokyo Electron Am., Inc., 257 F.3d 1331, 1339 (Fed.Cir.2001) (discussing Gardco Mfg., Inc. v. Herst Lighting Co., 820 F.2d 1209, 1212 (Fed.Cir.1987) and Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996)).2 For purpo......
-
Intellectual Property Antitrust Issues in Litigation
...findings of fact in patent trial may be reviewed on appeal in the absence of any postverdict motion); Gardco Mfg. v. Herst Lighting Co., 820 F.2d 1209, 1212 (Fed. Cir. 1987) (holding the question of whether Rule 42(b) separation of inequitable conduct issue for a nonjury trial held before a......
-
Table of cases
...208 G Ga.-Pac. Corp. v. United States Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970), 131, 199, 200 Gardco Mfg. v. Herst Lighting Co., 820 F.2d 1209 (Fed. Cir. 1987), 333 Gen-Probe, Inc. v. Amoco Corp., 926 F. Supp. 948 (S.D. Cal. 1996), 250, 258 Genentech, Inc. v. Eli Lilly & Co., 998 F.......
-
Chapter §20.06 Attorney Fees in Exceptional Cases
...S.C. Johnson & Son, Inc. v. Carter–Wallace, Inc., 781 F.2d 198, 201 (Fed.Cir.1986); see also Gardco Mfg., Inc. v. Herst Lighting Co., 820 F.2d 1209, 1215 (Fed.Cir.1987) ("After the district court determines that a case is exceptional, there remains in every case its freedom to exercise its ......
-
Bifurcation and Consolidation Issues for Patent and Antitrust Claims
...separating issues and claims for trial as part of its wide discretion in trial management’”) (quoting Gardco Mfg. v. Herst Lighting Co., 820 F.2d 1209, 1212 (Fed. Cir. 1987)). 9. See, e.g. , United States v. Alcan Aluminum Corp., 990 F.2d 711, 720 (2d Cir. 1993) (bifurcating liability from ......