Koito Mfg. Co., Ltd. v. Turn-Key-Tech, LLC, No. 03-1565.

CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit
Writing for the CourtGajarsa
Citation381 F.3d 1142
PartiesKOITO MANUFACTURING CO., LTD. and North American Lighting, Inc., Plaintiffs-Cross Appellants, v. TURN-KEY-TECH, LLC and Jens Ole Sorensen, Defendants-Appellants.
Decision Date23 August 2004
Docket NumberNo. 03-1565.,No. 03-1603.
381 F.3d 1142
KOITO MANUFACTURING CO., LTD. and North American Lighting, Inc., Plaintiffs-Cross Appellants,
v.
TURN-KEY-TECH, LLC and Jens Ole Sorensen, Defendants-Appellants.
No. 03-1565.
No. 03-1603.
United States Court of Appeals, Federal Circuit.
DECIDED: August 23, 2004.
Rehearing and Rehearing En Banc Denied October 27, 2004.

Appeal from the United States District Court for the Southern District of California, Marilyn L. Huff, Chief Judge.

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COPYRIGHT MATERIAL OMITTED

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William H. Mandir, Sughrue Mion, PLLC, of Washington, DC, argued for plaintiffs-cross appellants. With him on the brief were Frank L. Bernstein, Steven M. Gruskin, John F. Rabena, and Carl J. Pellegrini.

Boris Zelkind, Zelkind & Shackelford LLP, of San Diego, CA, argued for defendants-appellants. With him on the brief was Patricia A. Shackelford. Of counsel on the brief was David R. Fairbairn, Kinney & Lange, P.A., of Minneapolis, MN.

Before BRYSON, GAJARSA, and DYK, Circuit Judges.

GAJARSA, Circuit Judge.


Turn-Key-Tech, LLC and Jens Ole Sorenson ("Turn-Key") appeal from the denial of their motions for a new trial and a judgment as a matter of law ("JMOL") by the United States District Court for the Southern District of California with respect to a jury's findings (1) that Claims 1, 3, 12, 13, 15, 18, 21, 30-33, and 36 of Turn-Key's U.S. Patent No. 5,045,268 (the " '268 patent") are invalid as anticipated and obvious and (2) that the '268 patent is not infringed by taillights produced by Koito Manufacturing Co., Ltd. and North American Lighting, Inc. (collectively "Koito").

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Koito Mfg. Co. v. Turn-Key-Tech, LLC, No. 02-CV-0372H, 2003 WL 22218326 (S.D.Cal. July 16, 2003). In its decision, the district court partially granted Turn-Key's motion for a JMOL by overturning the jury's finding that all 38 claims of the '268 patent are invalid for lack of enablement, failure of the written description, and a certificate of correction adding new matter. Koito cross-appeals the district court's grant of a JMOL on these other grounds for invalidity.

We affirm the district court's grant of Turn-Key's JMOL and agree that Koito failed to fulfill its burden of showing that the '268 patent is invalid for lack of enablement, failure of written description, and the addition of new matter. We also affirm the district court's denial of Turn-Key's new trial motion and JMOL with respect to the jury's verdict of noninfringement. However, we vacate the district court's denial of Turn-Key's JMOL motion with respect to anticipation and obviousness, which the district court justified solely by reference to Japanese Unexamined Application No. 148,082 ("JP '082"). Because Koito merely entered the JP '082 reference into evidence and provided no specific testimony relating to it whatsoever, we hold that Koito did not present substantial evidence with respect to JP '082 to support the jury's finding of anticipation and obviousness. On remand, the trial court should evaluate the other evidence proffered by Koito to determine whether the jury's verdicts of anticipation and obviousness were adequately supported.

I. BACKGROUND

A. The '268 Patent

The '268 patent teaches a method of strengthening injection-molded plastics by cross-laminating layers of plastics. '268 patent, col. 1, ll. 5-10. Injection molding involves injecting liquid plastic into a mold cavity. The walls of the mold cavity define the final shape of the product. The liquid plastic cools and solidifies in the mold cavity and can then be ejected.

Injection molding technology can be used for the manufacture of a variety of plastic goods, including cups, cassette tapes, and, in the case of Koito's products, car taillights. The '268 patent takes advantage of the fact that, when a plastic is injected into a mold, the liquid plastic can be made to have a direction of flow consistent with how the plastic entered the mold cavity. The strength of a plastic that contains such a "flow direction" varies—the plastic is stronger across the flow than with the flow. This quality is analogous to that of wood, which is stronger across the grain than with the grain. To increase the strength of plastic that contains a flow direction, the '268 patent discloses the use of two different flow directions that overlap, i.e., cross-lamination.

The '268 patent has two independent claims that are at issue, Claims 1 and 21:

1. A method of injection molding a plastic product, with a cross-laminated section that includes a first plastic layer and a second plastic layer, in a mold system comprising a first mold cavity with a first-layer-defining-mold-cavity-section and a second mold cavity with a second-layer-defining-mold-cavity-section with a second-cavity-section-wall, the method comprising the steps of:

(a) injecting a quantity of first plastic into the first mold cavity so that the first plastic follows in the first-layer-defining-mold-cavity-section in a first predetermined general direction,

(b) solidifying at least partly the flowed first plastic in the first-layer-defining-mold-cavity-section

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to thereby form said first plastic layer having a first-direction-flow-record,

(c) adjusting the mold system to thereby provide the second mold cavity with the second-cavity-section-wall including said first plastic layer,

(d) injecting a quantity of second plastic into the second mold cavity so that the second plastic flows in the second-layer-defining-mold-cavity-section in a second predetermined general direction, whereby the second plastic in the second-layer-defining-mold-cavity-section fuses with said first plastic layer,

(e) solidifying the flowed second plastic in the second-layer-defining-mold-cavity-section to thereby form said second plastic layer, so that the second plastic layer has a second-direction-flow-record which is positively different from said first-direction-flow-record, to thereby form said plastic product with said cross-laminated section that includes both the first plastic layer and the second plastic layer, and

(f) adjusting the mold system to thereby eject the product,

wherein the first mold cavity comprises a first-cavity-flow-channel which is located adjacent the first-layer-defining-mold-cavity-section, with a flow channel being defined as a portion of a mold cavity which is significantly thicker and wider than the adjacent mold cavity thickness for the purpose of directing the flow of injected plastic, and wherein step (a) comprises the step of:

(g) directing the first plastic into the first-layer-defining-mold-cavity-section via the first-cavity-flow-channel, so that the first plastic flows in the first-cavity-flow-channel in a direction which is positively different from said first predetermined general direction.

'7268 patent, col. 8, ll. 11-61 (emphasis added).

Independent Claim 21 is identical to Claim 1 except for steps (f) and (g):

(f) adjusting the mold system to thereby eject the product,

wherein the second mold cavity comprises a second-cavity-flow-channel which is located adjacent said second-layer-defining-mold-cavity-section, with a flow channel being defined as a portion of a mold cavity which is significantly thicker and wider than the adjacent mold cavity thickness for the purpose of directing the flow of injected plastic, and wherein step (d) comprises the step of:

(g) directing second plastic into the second-layer-defining-mold-cavity-section via the second-cavity-flow-channel, so that the second plastic flows in the second-cavity-flow-channel in a direction which is positively different from said second predetermined general direction.

Id. at col. 10, ll. 53-68; col. 11, ll. 1-35. Claim 21 thus requires a flow channel in the second mold cavity to redirect the flow of the plastic, rather than in the first mold cavity.

Figures 1 and 2 below help to illustrate the method claimed in the '268 patent. Mold system 7 includes two complementary mold sections, labeled 8 and 9. Mold cavity 1 is the space between these mold sections, and includes a flow channel 6 that is wider and deeper than the adjacent cavity 2. Because of the dimensions of the flow channel 6, the plastic passes easily through the flow channel and then changes

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direction in a predictable way when it encounters resistance by entering into the rest of the narrower cavity. The liquid plastic therefore flows into the layer-defining-mold-cavity-section 2 in a predetermined direction and produces a plastic layer 13 that has a direction of flow.

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

Once the plastic has solidified in the first mold system, the mold system is changed. Mold section 8 is removed, and mold section 9 and the first plastic layer 13 are put into contact with mold section 11. This forms a new mold system 10, which has a new mold cavity 3 that is then filled. Plastic is injected and flows into the layer-defining-mold-cavity-section 4 in a predetermined second direction that is different than the direction of flow used for the first plastic layer. As the second plastic layer solidifies, it fuses with the first plastic layer and thereby forms a cross-laminate.

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

B. Litigation

Koito manufactures taillights for several Japanese automakers. A taillight consists of three main components: a lens, a housing, and a lamp. At issue in this case are the lenses produced by Koito, which are made using injection molding techniques.

In February 2002, Koito brought a declaratory judgment action against Turn-Key requesting that the '268 patent be declared invalid, unenforceable, and not infringed by Koito's lenses. At the time it filed its declaratory judgment action, Koito alleged that Turn-Key had accused Koito of infringement and already filed suit against some of Koito's customers.1 Koito set forth a number of grounds for declaring the '268 patent invalid, including:...

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  • Card-Monroe Corp. v. Tuftco Corp., Case No. 1:14–cv–292
    • United States
    • United States District Courts. 6th Circuit. Eastern District of Tennessee
    • September 1, 2017
    ...element and explaining how each claim element is disclosed in the prior art reference"); Koito Mfg. Co., Ltd. v. Turn–Key–Tech, LLC , 381 F.3d 1142, 1152 (Fed. Cir. 2004) (holding that where an alleged infringer failed to articulate how a prior art reference anticipates the patent, it has n......
  • Versata Software, Inc. v. Internet Brands, Inc., Civil Action No. 2:08–cv–313–WCB.
    • United States
    • United States District Courts. 5th Circuit. United States District Court of Eastern District Texas
    • October 9, 2012
    ...“is a factual determination that is reviewed for substantial evidence when decided by a jury.” Koito Mfg. Co. v. Turn–Key–Tech, LLC, 381 F.3d 1142, 1149 (Fed.Cir.2004). The Court “must presume that the jury resolved any underlying factual dispute in favor of the verdict winner and leave suc......
  • Lighting Ballast Control, LLC v. Philips Electronics North America Corp., Civil Action No. 7:09–CV–29–O.
    • United States
    • United States District Courts. 5th Circuit. United States District Courts. 5th Circuit. Northern District of Texas
    • August 26, 2011
    ...is a factual determination that is reviewed for substantial evidence when decided by a jury.” Koito Mfg. Co. v. Turn–Key–Tech, LLC, 381 F.3d 1142, 1149 (Fed.Cir.2004). The Court may grant judgment notwithstanding a jury verdict of anticipation “only if the jury's factual findings are not su......
  • Volterra Semiconductor Corp. v. Primarion, Inc., Case No. C–08–05129 JCS.
    • United States
    • United States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Northern District of California
    • May 4, 2011
    ...that which is already known to and available to one of ordinary skill in the art,” Koito Mfg. Co., Ltd. v. Turn–Key Tech, LLC, 381 F.3d 1142, 1156 (Fed.Cir.2004), Plaintiff cites to the testimony of Defendants' expert that Dr. Fair understood both what connections were being claimed and how......
  • Request a trial to view additional results
161 cases
  • Card-Monroe Corp. v. Tuftco Corp., Case No. 1:14–cv–292
    • United States
    • United States District Courts. 6th Circuit. Eastern District of Tennessee
    • September 1, 2017
    ...element and explaining how each claim element is disclosed in the prior art reference"); Koito Mfg. Co., Ltd. v. Turn–Key–Tech, LLC , 381 F.3d 1142, 1152 (Fed. Cir. 2004) (holding that where an alleged infringer failed to articulate how a prior art reference anticipates the patent, it has n......
  • Versata Software, Inc. v. Internet Brands, Inc., Civil Action No. 2:08–cv–313–WCB.
    • United States
    • United States District Courts. 5th Circuit. United States District Court of Eastern District Texas
    • October 9, 2012
    ...“is a factual determination that is reviewed for substantial evidence when decided by a jury.” Koito Mfg. Co. v. Turn–Key–Tech, LLC, 381 F.3d 1142, 1149 (Fed.Cir.2004). The Court “must presume that the jury resolved any underlying factual dispute in favor of the verdict winner and leave suc......
  • Lighting Ballast Control, LLC v. Philips Electronics North America Corp., Civil Action No. 7:09–CV–29–O.
    • United States
    • United States District Courts. 5th Circuit. United States District Courts. 5th Circuit. Northern District of Texas
    • August 26, 2011
    ...is a factual determination that is reviewed for substantial evidence when decided by a jury.” Koito Mfg. Co. v. Turn–Key–Tech, LLC, 381 F.3d 1142, 1149 (Fed.Cir.2004). The Court may grant judgment notwithstanding a jury verdict of anticipation “only if the jury's factual findings are not su......
  • Volterra Semiconductor Corp. v. Primarion, Inc., Case No. C–08–05129 JCS.
    • United States
    • United States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Northern District of California
    • May 4, 2011
    ...that which is already known to and available to one of ordinary skill in the art,” Koito Mfg. Co., Ltd. v. Turn–Key Tech, LLC, 381 F.3d 1142, 1156 (Fed.Cir.2004), Plaintiff cites to the testimony of Defendants' expert that Dr. Fair understood both what connections were being claimed and how......
  • Request a trial to view additional results

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