Lisle Corp. v. A.J. Mfg. Co.
| Decision Date | 11 February 2005 |
| Docket Number | No. 04-1275.,No. 04-1346.,04-1275.,04-1346. |
| Citation | 398 F.3d 1306 |
| Parties | LISLE CORPORATION, Plaintiff-Appellee, v. A.J. MANUFACTURING COMPANY, Defendant-Appellant. |
| Court | U.S. Court of Appeals — Federal Circuit |
Jon O. Nelson, Banner & Witcoff, Ltd., of Chicago, Illinois, argued for plaintiff-appellee. With him on the brief were Matthew P. Becker and Phoebe K. Phillips.
Jonathan A. Harris, Wildman, Harrold, Allen & Dixon, of Chicago, Illinois, argued for defendant-appellant. With him on the brief was John S. Letchinger.
Before LOURIE, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and BRYSON, Circuit Judge.
A.J. Manufacturing Company ("A.J.") appeals from the decision of the United States District Court for the Northern District of Illinois granting summary judgment of infringement of United States Patent 5,287,776 ("the ' 776 patent") in favor of Lisle Corporation ("Lisle") and denying A.J.'s motion for summary judgment of invalidity for indefiniteness and "impossibility." Lisle Corp. v. A.J. Mfg. Co., 289 F.Supp.2d 1048 (N.D.Ill.2003) ("Summary Judgment"). A.J. also appeals from the district court's decision denying A.J.'s motion for judgment as a matter of law ("JMOL") after a jury found the '776 patent was not shown to be invalid for public use. We affirm.
The patent in this appeal relates to an inner tie rod tool. As shown below in figure 1, most automobiles today are equipped with a rack and pinion steering control system. '776 patent, col. 1, II. 10-11. A component of the rack and pinion steering control system is the inner tie rods (16, 18). As the patent explains, "[s]ervicing of such a rack and pinion steering system often requires removal and replacement of the tie rods." Id. at col. 1, II. 17-19. Due to the location of the tie rods and the variety of nut shapes holding the tie rods in place, removal of that component can be tedious with prior art tools.
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The patented invention alleviates the need for automobile mechanics to completely dismantle steering control systems and keep multiple prior art tie rod tools for various inner tie rod designs. Id. at col. 1, II. 36-40. Figure 7, shown below, illustrates the main features of the patented tool. The tool is composed of two distinct parts, a wrench disc (54) and a hollow tube (40). The wrench disc is C-shaped with arms for engaging the nut (56, 58) and tabs for securing the disc onto the hollow tube (60, 62). The hollow tube, which houses the tie rod to be removed, has an opening on one end for a ratchet wrench (41), two slots (43) where the tabs of the wrench disc fit, and a retainer ring (44) to secure the disc in place. The patented tool works by placing the wrench disc over the socket of the inner tie rod (shown in figure 7 below in hatched lines) and then encasing the tie rod inside the hollow body of the tool. The user of the tool can readily engage or disengage the wrench disc from the body of the tool by rotating the retainer ring from an open position to a closed position and vice versa. Moreover, the patented tool accomplishes its objective of replacing multiple prior art tie rod tools by allowing a single tie rod tool to utilize wrench discs of varying dimensions and shapes.
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Lisle and A.J., the parties to this dispute, are manufacturers and competitors in the field of automotive tools. Lisle owns the '776 patent, and on October 1 2002, Lisle filed suit accusing A.J. of infringing the patent by manufacturing and selling its YA3000A tool. In its Answer, A.J. denied infringing the patent and asserted that the patent was invalid.
The YA3000A, shown below, is similar to the device of figure 7 of the '776 patent.1 A noticeable difference between figure 7 and the YA3000A is that figure 7 has a separately-affixed rotatable ring (44) with L-shaped openings (50, 52) and two slots (43), whereas the accused tool has two longitudinal sections spaced 180 degrees apart that open up to wider circumferential sections to form non-rotatable T-shaped openings.
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As with figure 7, the YA3000A operates by having the user first place the wrench disc over the inner tie rod socket and then encase the inner tie rod with the hollow body of the tool. Unlike figure 7, the wrench disc and the hollow body of the YA3000A are securely engaged to one another by having the tabs of the wrench disc pass through the longitudinal sections into the circumferential sections and then rotating the tool.2
On June 19, 2003, after ordering the parties to submit their proposed construction of the claims at issue, the district court issued an opinion construing claim 1 of the '776 patent.3 Lisle Corp. v. A.J. Mfg. Co., No. 02 C 7024 (N.D. Ill. June 19, 2003). In that opinion, the court construed the claim limitation "retainer" to mean "any of various devices used for holding something." Id., slip op. at 8.
On October 31, 2003, prompted by A.J.'s motion for reconsideration and the parties' respective motions for summary judgment of infringement and noninfringement, the district court issued an opinion modifying its earlier construction of the claim limitation "said retainer being detachably cooperative with the tabs to rotate the disk and a tie rod engaged therewith." The court had difficulty with the apparent inconsistency caused by the juxtaposition of the words "detachably" and "cooperative," but ultimately construed that limitation to mean that "[r]otation of the retainer can result in separation or disengagement or it can result in rotation of the disc and a tie rod that is interlocked with the disc." Summary Judgment, 289 F.Supp.2d at 1061. The court also granted summary judgment in favor of Lisle that the YA3000A infringed the '776 patent. Finally, the court denied A.J.'s motion for summary judgment of invalidity for indefiniteness or "impossibility."
Subsequently, a jury trial was held on the single issue of whether the '776 patent was invalid on the ground of public use under 35 U.S.C. § 102(b). On February 12, 2004, the jury found the '776 patent was not shown to be invalid on the ground of public use. The district court denied A.J.'s motion for JMOL of invalidity of the '776 patent after the jury rendered its verdict.
A.J. timely appealed to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
We review a district court's grant of summary judgment de novo, reapplying the same standard used by the district court. Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1315 (Fed.Cir.1998). Summary judgment is appropriate if there is no genuine issue as to any material fact and that the moving party is entitled to JMOL. Fed.R.Civ.P. 56(c). "The evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn in his favor." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
When a party moves for JMOL in a case tried to a jury, we review de novo the district court's decision by reapplying the JMOL standard. Markman v. Westview Instruments, Inc., 52 F.3d 967, 975 (Fed.Cir.1995) (en banc); Medcom Holding Co. v. Baxter Travenol Labs., Inc., 106 F.3d 1388, 1402 (7th Cir.1997). We also review the legal standards that the jury applied in reaching its verdict to determine whether they were correct as a matter of law. Markman, 52 F.3d at 975; Medcom, 106 F.3d at 1402. When a legal issue is submitted to a jury without an objection, we treat the jury's verdict on the legal issue as a resolution of all genuinely disputed underlying factual issues in favor of the verdict winner. Mendenhall v. Cedarapids, Inc., 5 F.3d 1557, 1562 n. 3 (Fed.Cir.1993); Medcom, 106 F.3d at 1402. The jury's resolution of all factual disputes is reviewed for substantial evidence. Markman, 52 F.3d at 975; Mojica v. Gannett Co., Inc., 7 F.3d 552, 561 (7th Cir.1993).
Infringement of a utility patent requires a two-step analysis. "First, the court determines the scope and meaning of the patent claims asserted ... [and secondly,] the properly construed claims are compared to the allegedly infringing device." Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed.Cir.1998) (en banc) (citations omitted). Step one, claim construction, is a question of law, Markman, 52 F.3d at 970-71, that we review de novo, Cybor, 138 F.3d at 1456. Step two, comparison of the claims to the accused device, requires a determination that every claim limitation or its equivalent be found in the accused device. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997). That determination is a question of fact. Bai v. L & L Wings Inc., 160 F.3d 1350, 1353 (Fed.Cir.1998).
A patent is presumed to be valid. 35 U.S.C. § 282 (2000). Nonetheless, a patent can be found invalid if "the invention was in ... public use ... in this country more than one year prior to the date of the application for patent in the United States." 35 U.S.C. § 102(b). Experimental use negates patent invalidity for public use; when proved, it may show that particular acts do not constitute a public use within the meaning of § 102. Baxter Int'l, Inc. v. Cobe Labs., Inc., 88 F.3d 1054, 1059 (Fed.Cir.1996). Although the determination of whether a patent is invalid for public use is a question of law that we review de novo, the disputed facts found to support that determination are reviewed for substantial evidence. Minn. Mining & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1301 (Fed.Cir.2002).
On appeal, A.J. challenges the district court's summary judgment of infringement of the '776 patent, arguing mainly that the court erred in its construction of the claim limitations "retainer" and "said retainer...
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