Lough v. Brunswick Corp.
| Decision Date | 12 June 1996 |
| Docket Number | 95-1302,95-1314,Nos. 95-1266,s. 95-1266 |
| Citation | 39 USPQ2d 1100,86 F.3d 1113 |
| Parties | Steven G. LOUGH, Plaintiff-Appellee, v. BRUNSWICK CORPORATION, d/b/a Mercury Marine, Defendant-Appellant. |
| Court | U.S. Court of Appeals — Federal Circuit |
George H. Solveson, Andrus, Sceales, Starke & Sawall, Milwaukee, Wisconsin, argued, for defendant-appellant. With him on the brief, was Edward R. Williams, Jr.
Richard R. Garland, Dickinson & Gibbons, P.A., Sarasota, Florida, argued, for plaintiff-appellee. With him on the brief, were Arnold B. Silverman, and Kirk D. Houser, Eckert Seamans Cherin & Mellott, Pittsburgh, Pennsylvania. Also on the brief, was Ward E. Dahlgren, Dickinson & Gibbons, P.A. Of counsel, was George K. Stacey, Eckert Seamans Cherin & Mellott.
Before PLAGER, LOURIE, and CLEVENGER, Circuit Judges.
Opinion for the court filed by Circuit Judge LOURIE. Dissenting opinion filed by Circuit Judge PLAGER. Additional remarks filed by Circuit Judge LOURIE, with whom Circuit Judge CLEVENGER joins.
Brunswick Corporation, d/b/a Mercury Marine, appeals from the final judgment of the United States District Court for the Middle District of Florida in which the court denied Brunswick's Motion for Judgment as a Matter of Law and its Motion for New Trial after a jury verdict of infringement of U.S. Patent 4,848,775, owned by the inventor Steven G. Lough. 1 Because the court erred in denying Brunswick's Motion for Judgment as a Matter of Law, we reverse in part and vacate in part.
Stern drives are marine propulsion devices for boats in which the engine is located inside the boat and is coupled to an outdrive, which includes a propeller located outside the boat ("inboard/outboard boat"). A typical stern drive arrangement is illustrated below. 2
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The outdrive is housed in a drive shaft housing (20), which includes an aluminum bell housing (22). A propeller (28) is located at the lower end of the outdrive and is driven by the engine through a system of shafts (18, 24, and 26). The stern drive (10) includes a shifting system for placing the outdrive in forward, reverse, or neutral gear. As part of the shifting system, a gear shift shaft assembly (34) extends between a shift lever, which is connected through a gear shift cable to user controls for throttle and gear selection, and a clutch (42), which controls forward and reverse gears (44 and 46). At the upper and lower ends of the gear shift shaft assembly (34), an upper seal assembly and a lower seal assembly prevent sea water and exhaust from causing corrosion by passing through the bell housing apertures provided for the shift shaft assembly (34). The lower seal assembly protects the gear controls at the lower end of the shift shaft (34), and the upper seal assembly protects the gear shift cable and user controls.
In 1986, Steven G. Lough worked as a repairman for a boat dealership in Sarasota, Florida. While repairing Brunswick inboard/outboard boats, he noticed that the upper seal assembly in the stern drives often failed due to corrosion. A typical upper seal assembly from a Brunswick motor is shown below.
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The upper seal assembly comprises a brass bushing (D) and an annular seal (E). The brass bushing (D) is forced into a bell housing aperture (C). An annular seal (E) is installed below the brass bushing (D) and is in direct contact with the aluminum bell housing (B).
Lough determined that the corrosion in the upper seal assembly occurred due to contact between the annular seal (E) and the bell housing aperture (C). He designed a new upper seal assembly that isolated the annular seal (E) from the aluminum bell housing (B) in order to prevent such corrosion.
After some trial and error with his grandfather's metal lathe, he made six usable prototypes in the spring of 1986. He installed one prototype in his own boat at home. Three months later, he gave a second prototype to a friend who installed it in his boat. He also installed prototypes in the boat of the owner of the marina where he worked and in the boat of a marina customer. He gave the remaining prototypes to longtime friends who were employees at another marina in Sarasota. Lough did not charge anyone for the prototypes. For over a year following the installation of these prototypes, Lough neither asked for nor received any comments about the operability of the prototypes. During this time, Lough did not attempt to sell any seal assemblies.
On June 6, 1988, Lough filed a patent application entitled "Liquid Seal for Marine Stern Drive Gear Shift Shafts," which issued as the '775 patent on July 18, 1989. Figure 4 of the patent illustrates the preferred embodiment of the invention and is shown below.
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Claim 1, with reference letters and numbers to figure 4 added, is representative of the claims at issue:
1. A liquid seal structured to provide a watertight barrier between adjacent the upper end of an elongated gear shift shaft [A] in a marine stern drive system and an aperture [C] in the stern drive bell housing [B], the aperture [C] located between the exhaust passageway and the parallel adjacent gimbal passageway of the bell housing [B], the aperture for receiving the upper end of the gear shift shaft [A] installed therethrough, said liquid seal comprising:
a rigid bushing having coaxial upper and lower portions ;
said upper portion having a first outer surface structured to be sealably urged into the bell housing aperture [C] to form a watertight junction therebetween and thusly positioning said lower portion against the top surface of the exhaust passageway;
said upper portion also having a longitudinal shift shaft aperture generally concentric with and extending along the length of said upper portion structured to supportively receive the upper end of the gear shift shaft [A] for supportive rotation therein;
said lower portion having a second outer surface radially larger than said first outer surface and positioned in the exhaust passageway and a generally concentric seal cavity continuous with, and larger than, said shift shaft aperture extending along the length of said lower portion ;
at least one annular seal structured to have its outer surface sealably urged into said seal cavity to form a watertight junction therebetween and to have its inner surface coaxial with said second outer surface and sealably mate against the cylindrical surface of the upper end of the gear shift shaft [A].
After learning of Lough's invention, Brunswick designed its own improved upper seal
assembly. This upper seal assembly is shown below:
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In addition to a bushing with an upper and lower portion, Brunswick's upper seal assembly included its own patented gap technology. 3 This gap spaced the upper portion of the bushing from the shift shaft to alleviate crushing that might otherwise occur due to corrosion between the bushing and the bell housing. Brunswick incorporated its new upper seal assembly in its "Alpha One" inboard/outboard boat. In addition, it sold this seal assembly as a replacement part under its "Quicksilver" line of replacement parts.
Lough sued Brunswick on June 12, 1993, alleging infringement of the '775 patent. Brunswick counterclaimed for a declaratory judgment of patent noninfringement, invalidity, and/or unenforceability. A jury found that Brunswick failed to prove that Lough's invention was in public use before the critical date on June 6, 1987, one year prior to the filing date of the '775 patent. The jury also found that Brunswick infringed claims 1-4 of the '775 patent, both literally and under the doctrine of equivalents. Based on its infringement finding, the jury awarded Lough $1,500,000 in lost profits. After trial, Brunswick filed a Motion for Judgment as a Matter of Law in which it argued, inter alia, that the claimed invention was invalid because it had been in public use before the critical date. Brunswick also filed a Motion for New Trial on damages. The court denied Brunswick's motions without any comment. Lough v. Brunswick Corp., No. 92-799-CIV-T-21A (M.D.Fla. Feb. 13, 1995). Brunswick appeals.
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, 34 USPQ2d 1321, 1326 (Fed.Cir.1995) (in banc), aff'd on other grounds, --- U.S. ----, 116 S.Ct. 1384, 134 L.Ed.2d 577, 38 USPQ2d 1461 (1996). Judgment as a matter of law against a winning party is appropriate when that "party has been fully heard on an issue and there is no legally sufficient evidentiary basis for a reasonable jury to find for that party on that issue...." Fed.R.Civ.P. 50(a)(1). 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. Id. 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, 28 USPQ2d 1081, 1085 n. 3 (Fed.Cir.1993), cert. denied, 511 U.S. 1031, 114 S.Ct. 1540, 128 L.Ed.2d 192 (1994). We review the jury's resolution of all factual disputes for substantial evidence. Markman, 52 F.3d at 975, 34 USPQ2d at 1326.
Brunswick challenges, inter alia, the court's denial of its motion for JMOL on the issue of public use. Brunswick argues that the district court erred in denying its motion for JMOL because the uses of Lough's prototypes prior to the critical date were not experimental. Brunswick asserts that Lough did not control the...
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