Krippelz v. Ford Motor Co.

• Decision Date: 12 March 2012
• Docket Number: No. 2011–1103.,2011–1103.
• Citation: 101 U.S.P.Q.2d 1438,667 F.3d 1261
• Parties: Jacob KRIPPELZ, Sr., Plaintiff–Appellee, v. FORD MOTOR COMPANY, Defendant–Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

101 U.S.P.Q.2d 1438

667 F.3d 1261

Jacob KRIPPELZ, Sr., Plaintiff–Appellee,

v.FORD MOTOR COMPANY, Defendant–Appellant.

No. 2011–1103.

United States Court of Appeals, Federal Circuit.

Jan. 27, 2012.Rehearing Denied March 12, 2012.

Mark E. Ferguson, Bartlit Beck Herman Palenchar & Scott, LLP, of Chicago, IL, argued for plaintiff-appellee. With him on the brief were Adam K. Mortara, Hamilton H. Hill and Martha M. Pacold. Of counsel on the brief were James D. Ryndak, Mark K. Suri and Eric H. Weimers, Ryndak & Suri, LLP, of Chicago, IL.

Constantine L. Trela, Jr., Sidley Austin, LLP, of Chicago, IL, argued for defendant-appellant. With him on the brief was Linda R. Friedlieb. Of counsel on the brief was Gene C. Schaerr, Winston & Strawn, LLP, of Washington, DC. Of counsel was Thomas A. Lewry, Brooks Kushman P.C., of Southfield, MI.

Before NEWMAN, PROST, and O'MALLEY, Circuit Judges.

PROST, Circuit Judge.

This is a patent infringement case. Defendant Ford Motor Company (“Ford”) appeals a $56 million judgment against it. Ford argues that the district court made a series of errors in both its infringement and validity analyses, as well as in its award of enhanced damages for willful infringement. Because the district court erred in holding that the patent-in-suit could be found novel over the prior art, we reverse as to validity, vacate the other rulings, and remand for entry of judgment of non-liability.

I

This case's lengthy history began in February 1989, when Jacob Krippelz, Sr., now deceased, filed for a patent on a vehicle-mounted lamp.¹ Mr. Krippelz titled the resulting patent “Emergency Light.” U.S. Patent No. 5,017,903 (“'903 patent”) at [54]. It described a lamp attached to the side view mirror of an automobile and shining downward:

Image 1 (3.46" X 1.53") Available for Offline Print

Id. fig.1. As described by Mr. Krippelz, the lamp was for use in inclement weather like rain or fog. Its light would reflect off water, dust, or other airborne particles so as to be visible to other drivers, but not interfere with either their vision or that of the person driving the car. See generally id. col. 1.

Mr. Krippelz's patent issued in 1991. He says he sent a copy of it to Ford shortly thereafter, but that Ford was not interested in taking a license. For a period of years, nothing happened.

Then, in 1997, Ford began offering a new option on its Explorer and other model automobiles, which we will refer to as a “puddle light.” The puddle light was a lamp, attached to the vehicle's side view mirror, that shone light generally downward. Ford's puddle light was equipped with a lens that diffused the light in such a way as to illuminate the vehicle's side.

Mr. Krippelz viewed the puddle light as infringing, and in 1998 he sued. Complaint, Krippelz v. Ford Motor Co., No. 98–CV–2361 [hereinafter Krippelz ] (N.D.Ill. Apr. 16, 1998), ECF No. 1. The case revolved around claim 2 of the '903 patent, which reads:

2. An emergency warning light for an automotive vehicle having a window on one side thereof, comprising in combination

a housing mounted in a fixed, substantially unadjustable position on said vehicle adjacent to said window,

said housing having an opening in the bottom thereof,

a source of light mounted within said housing for directing a conical beam of light downwardly through said opening along said side of said vehicle below said window so as to be visible from in front of and behind said vehicle, and

said opening and said source of light being positioned to prevent said beam of light from directly impinging on said side of said vehicle.

'903 patent col. 3 l. 19–col. 4 l. 3.

About a year after filing the complaint, Mr. Krippelz asked the Patent and Trademark Office (“PTO”) to reexamine the '903 patent. An Information Disclosure Statement accompanying the request acknowledged the ongoing litigation, noted that Ford had raised invalidity as a defense, and attached “all the references Ford has identified to the Requestor during the litigation.” See Info. Disclosure Stmt. (Aug. 30, 1999), at 2, '903 Reexam. File Hist., J.A. 12516, 12517. The PTO instituted reexamination proceedings and subsequently confirmed the validity of all the '903 patent's claims over the submitted prior art. See generally Reexam. Certificate, U.S. Patent No. 5,017,903 C1 (issued Aug. 13, 2002). As part of the reexamination process, new claims were also added to the '903 patent, which Mr. Krippelz states were subsequently asserted against Ford in separate litigation. Those claims are not part of this appeal.

Over the next several years, the district court handled a number of summary judgment and claim construction issues which we will not recount except to state that there was much dispute about the appropriate manner in which to analyze Ford's puddle lights for infringement. For our purposes, we note that in 2008 Mr. Krippelz moved for summary judgment of infringement, which the court granted from the bench.² Tr. of Nov. 21, 2008 Proceedings, at 12:11–17, J.A. 114, 125.

Infringement having been summarily addressed, the case proceeded to trial on validity and damages. Ford argued that claim 2 was anticipated, or at least rendered obvious, by French Patent No. 1,031,294 (trans.) (published June 22, 1953), J.A. 13430, to DuBois [hereinafter DuBois]. DuBois, which did not appear in the '903 patent prosecution history, taught a “system of lamps and optical devices” for illuminating the pavement next to a vehicle. The idea was to give other drivers a clear view of the vehicle's side and the adjacent area so that they could know if there was enough room to pass. DuBois, J.A. 13431. Ford argued that DuBois taught all the limitations of claim 2. Mr. Krippelz presented opinion testimony from an expert that DuBois failed to teach two limitations, namely a “conical beam of light” and a lamp located “adjacent” to the vehicle window.

The jury returned its verdict for Mr. Krippelz. It found the '903 patent valid over DuBois, and awarded $23 million in damages for Ford's infringement. Jury Verdict, Krippelz (N.D.Ill.Dec. 12, 2008), ECF No. 429. Following a bench trial on willfulness, the court found Ford's infringement willful and awarded Mr. Krippelz a further $11.7 million in prejudgment interest and another $21 million in enhanced damages. See Krippelz, 670 F.Supp.2d 806 (N.D.Ill.2009) (concerning willfulness); Krippelz, 670 F.Supp.2d 815 (N.D.Ill.2009) (concerning damages); Krippelz, 675 F.Supp.2d 881 (N.D.Ill.2009) (making fact findings and conclusions of law).

Ford moved for judgment of invalidity as a matter of law; its motion was denied. Krippelz, 750 F.Supp.2d 938 (N.D.Ill.2010) [hereinafter JMOL Op.]. Ford timely appealed. This court has jurisdiction under 28 U.S.C. § 1295(a)(1).

II

We hold that the district court committed reversible error in denying JMOL of invalidity by anticipation over DuBois, and so reverse. This court reviews denial of a motion for JMOL under the law of the pertinent regional circuit, here the Seventh. Seachange Int'l, Inc. v. C–COR Inc., 413 F.3d 1361, 1367–68 (Fed.Cir.2005). In that circuit, an appellate court's inquiry into the denial of a JMOL motion is “limited to the question whether the evidence presented, combined with all reasonable inferences permissibly drawn therefrom, is sufficient to support the verdict when viewed in the light most favorable to the party against whom the motion is directed.” Campbell v. Miller, 499 F.3d 711, 716 (7th Cir.2007) (internal quotation marks omitted). Such review is de novo. Waters v. City of Chicago, 580 F.3d 575, 580 (7th Cir.2009). Reversal is warranted only if no reasonable juror could have found for the nonmoving party. Id. To show that a patent claim is invalid as anticipated, the accused infringer must show by clear and convincing evidence that a single prior art reference discloses each and every element of a claimed invention. Silicon Graphics, Inc. v. ATI Techs., Inc., 607 F.3d 784, 796 (Fed.Cir.2010).

In this case, the district court supported its denial of JMOL with two potential grounds on which a jury could find for Mr. Krippelz. First, the court held that a reasonable jury could find that DuBois failed to teach the required “conical beam of light.” Second, the court held that a reasonable jury could find that DuBois lacked the required lamp “adjacent to the window.” See JMOL Op., 750 F.Supp.2d at 943–46. We reject both grounds as unsupported by the evidence.

A

We turn first to the “conical beam of light.” The trial court construed this term to mean “a beam of light that diverges,” and it construed “beam of light” to mean “light that both is directed and has a defined sweep range.” Id. at 944. We see no error in these constructions, and the parties do not contest them per se. However, the district court made further statements concerning the interpretation of these terms that require a detailed look at the '903 patent's intrinsic evidence. See Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed.Cir.2005) (en banc).

When instructing the jury, the district court stated that proving the presence of “directed” light—which was a prerequisite to showing a “conical beam of light”—required proof that “the filament of the light bulb is at or near the focal point of an optical reflector.” Trial Tr. 961:16–18, J.A. 9597. It further told the jury that “parabolic and elliptical reflectors are types of optical reflectors.” Id. at 961:18–19, J.A. 9597. These statements correctly interpreted claim 2's requirements.³

The '903 specification is a single page in length. Its most substantive discussion concerning the “conical beam of light” comes in its disclosure of a preferred embodiment:

As best shown in Fig. 4, a source of light in the form of a light bulb 20 is mounted in the rearview mirror assembly 14 directly behind a mirror 22 which faces towards the rear of the vehicle. A circular opening 24 is provided in the bottom of the housing 25, and the light source 20, which is...