Goodwall Const. Co. v. Beers Const. Co.

• Decision Date: 12 April 1993
• Docket Number: No. 92-1338,92-1338
• Citation: 26 USPQ2d 1420,991 F.2d 751
• Parties: GOODWALL CONSTRUCTION COMPANY and Howard P. Gooden, Plaintiffs-Appellees, v. BEERS CONSTRUCTION COMPANY, Defendant-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 751

991 F.2d 751

26 U.S.P.Q.2d 1420

GOODWALL CONSTRUCTION COMPANY and Howard P. Gooden Plaintiffs-Appellees, v. BEERS CONSTRUCTION COMPANY, Defendant-Appellant.

No. 92-1338.

United States Court of Appeals Federal Circuit.

April 12, 1993.

Rehearing Denied; Suggestion for Rehearing In Banc Declined

June 28, 1993.

Ned L. Conley, Conley, Rose & Tayon, Houston, TX, argued for plaintiffs-appellees. With him on the brief was William E. Shull.

William H. Boice, Kilpatrick & Cody, of Atlanta, GA, argued for defendant-appellant. With him on the brief were John S. Pratt, Christopher P. Bussett and Dean W. Russell.

Before MAYER, RADER, and SCHALL, Circuit Judges.

RADER, Circuit Judge.

Goodwall Construction Company and Howard P. Gooden sued Beers Construction Company for infringement of U.S. Patent No. 4,149,513, "Method of Texturing Concrete with Deep Texture Hammer," reissued as U.S. Reissue Patent No. 32,292. A jury found that Beers willfully infringed claims one through five of the reissue patent.

The United States District Court for the Northern District of Georgia denied Beers' motion to hold the patent unenforceable and denied Beers' renewed motion for judgment after trial ¹ or a new trial on the issues of literal infringement, willfulness, and lost profits. In addition, the district court trebled the jury's damage award, awarded Goodwall attorney fees and costs, and granted Goodwall's motion for judgment after trial on the issue of infringement under the doctrine of equivalents. The district court also granted in part Beers' motion for a review of the taxing of costs. Goodwall Constr. Co. v. Beers Constr. Co., No. 1:79-CV-1774-JOF, 1992 WL 503246 (N.D.Ga. Apr. 2, 1992). Because the record supports either the literal or the doctrine of equivalents infringement finding, this court affirms. This court, however, remands for a re-calculation of post-judgment interest.

BACKGROUND

The reissue patent describes a method for texturing concrete surfaces. The patented process creates a rough, three-dimensional texture which substantially enhances the appearance of exposed concrete surfaces on buildings. The patented process prescribes securing a blunt-ended rod to a pneumatically-powered hammer. The hammer operator then securely forces the hammer-rod assembly against the concrete surface. As the hammer-rod assembly moves in alternate strokes across the concrete, it roughens the surface to create an aesthetic appearance.

Claims one through five of the reissue patent are identical to claims one through five of the original patent. Claim one states:

1. A method for texturing a concrete surface comprising the steps of:

A. securing a blunt-tipped moil point rod to a pneumatically-powered riveter;

B. placing the blunt tip of the blunt-tipped rod against the concrete surface to be textured;

C. applying pressure to the riveter such that the blunt tip of the blunt-tipped rod is securely forced against the concrete surface;

D. activating the riveter; and

E. after activating the riveter moving the blunt tip rod in alternate strokes across the concrete surface while retaining pressure; and

F. removing the blunt tip from contact with the surface before the blunt tip gouges the surface, whereby the concrete surface is substantially roughened.

Claims two through five are dependent claims including all steps of claim one.

In September 1977, Beers' project manager for the Southern Bell Headquarters construction project and Beers' general superintendent met with Mr. Gooden, the inventor of the patented process. They examined several examples of concrete textured according to the patented process. Mr. Gooden demonstrated his texturing method to them.

On September 22, 1977, Mr. Gooden traveled to Atlanta and textured several sample panels for Beers. On September 27, 1977, Mr. Gooden sent Beers a written quotation for $1.28 million to texture the Southern Bell Headquarters building. In his proposal, Mr. Gooden informed Beers that his "process is a patent applied method developed by Goodwall." Beers did not accept Mr. Gooden's bid, but rather decided to do the job itself. Beers informed Mr. Gooden that it had selected another texture.

In February 1979, Mr. Gooden observed texturing of the Southern Bell project. Mr. Gooden observed Beers was using his method to produce a heavy texture.

In 1979, Goodwall filed this patent infringement suit against Beers under 28 U.S.C. § 1338. ² In November 1991, after a three week trial, a jury found that Beers willfully infringed claims one through five of the reissue patent, based upon a finding of literal infringement. The jury also awarded Goodwall lost profits. The jury did not reach the question of infringement under the doctrine of equivalents.

On post-trial motions, the district court denied Beers' motions to hold the patent unenforceable, for judgment after trial, and for a new trial. Thus, the district court upheld the jury's literal infringement finding. Recognizing the possibility of reversal on literal infringement in a case which had been under way for more than a decade, the district court also found that the tripartite test of Graver Tank & Manufacturing Co. v. Linde Air Products Co., 339 U.S. 605, 608, 70 S.Ct. 854, 856, 94 L.Ed. 1097 (1950), had been satisfied and that recognized limitations thereto (prior art, prosecution history estoppel) would not apply. Hence, even if the claims in this case were not literally infringed, the trial court granted Goodwall's motion for judgment after trial on infringement under the doctrine of equivalents. Thus, in the interest of judicial economy and conservation of the parties' resources in this case, the district court ensured that the record on appeal presented both the jury's finding of literal infringement and the alternative finding of infringement under the doctrine of equivalents.

DISCUSSION

This case is highly fact-specific and evidence-oriented. Therefore, Beers faces a difficult burden in attempting to persuade this court to reverse a jury verdict involving questions of fact. In re Hayes Microcomputer Prods., Inc. Patent Litig., 982 F.2d 1527, 1532, 25 USPQ2d 1241, 1244 (Fed.Cir.1992).

On appeal of a judgment entered on a verdict, after denial of a renewed motion for judgment after trial, Beers

must show that the jury's findings, presumed or express, are not supported by substantial evidence, or, if they were, that the legal conclusion(s) implied from the jury's verdict cannot in law be supported by those findings.

Id. (citing Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 893, 221 USPQ 669, 673 (Fed.Cir.), cert. denied, 469 U.S. 857, 105 S.Ct. 187, 83 L.Ed.2d 120 (1984)). Fact findings reviewed under the substantial evidence standard require affirmance by this court unless Beers shows that no reasonable juror could have reached such a result. In re Hayes, 982 F.2d at 1532-33 (citing Perkin-Elmer, 732 F.2d at 893; Railroad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506, 1512-13, 220

USPQ 929, 936 (Fed.Cir.), cert. denied, 469 U.S. 871, 105 S.Ct. 220, 83 L.Ed.2d 150 (1984)).

Jury Instruction

During closing argument, Goodwall's attorney addressed evidence that concrete texturing processes before the reissue patent may have used some kind of secure force to hold the riveter against the surface:

The mere fact that the amount of force had been used before, that's not--the hammer had been used before, too, so had a flat pointed bit been used before. Nobody said those were new. The thing that was new was putting them together and that's what we patented, and that's what Beers did.

Beers viewed this statement as inconsistent with Goodwall's position before the Patent and Trademark Office that the prior art's "firm" pressure differed from "securely forced" pressure. Therefore, Beers requested the trial court to issue a curative instruction advising the jury that Goodwall admitted the invalidity of its reissued patent. In addition, Beers requested the court to hold the patent unenforceable due to inequitable conduct.

In denying Beers' motions, the district court held that the parties' consent order foreclosed Beers from raising this validity issue. See supra note 2. In addition, the court determined that Goodwall's purported admission did not alter the patentability of the reissue patent's combination of process steps:

At the time the patent was reissued, the process was not obvious. That was the finding of the PTO and the court, and nothing in plaintiffs' closing arguments changes these findings.

Goodwall, No. 1:79-CV-1774-JOF, slip op. at 25. Therefore, the district court denied Beers' motions.

To obtain a remand for faulty jury instructions, Beers must prove (1) that the jury instructions, when read in their entirety, were incorrect, and (2) that its alternative instructions could have cured the error. Biodex Corp. v. Loredan Biomedical, Inc., 946 F.2d 850, 854, 20 USPQ2d 1252, 1255 (Fed.Cir.1991), cert. denied, --- U.S. ----, 112 S.Ct. 2957, 119 L.Ed.2d 579 (1992). Beers did not show that the district court's instructions were wrong.

The district court found that Goodwall did not change positions on the meaning of the "securely forced" limitation. The court also found that Goodwall's closing argument did not affect the validity or enforceability of its reissued patent. Because unaware of any use of pressure in the prior art, for instance, Goodwall did not intentionally withhold information from the PTO--a prerequisite of inequitable conduct. Kingsdown Medical Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 872, 9 USPQ2d 1384, 1389, (Fed.Cir.1988), cert. denied, 490 U.S. 1067, 109 S.Ct. 2068, 104 L.Ed.2d 633 (1989). This court agrees with the trial court's findings.

Because Goodwall's closing argument did not affect the validity or enforceability of its patent, the district court had no obligation to issue a curative instruction. Moreover the parties' consent order clearly and unambiguously foreclosed...