Lummus Industries, Inc. v. D.M. & E. Corp.
| Decision Date | 23 November 1988 |
| Docket Number | Nos. 86-1462,86-1507,s. 86-1462 |
| Citation | 8 USPQ2d 1983,862 F.2d 267 |
| Parties | LUMMUS INDUSTRIES, INC., Appellee/Cross-Appellant, v. D.M. & E. CORPORATION, and Machine Development Corporation, Appellants/Cross-Appellees. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
V. Bryan Medlock, Jr., Richards, Harris, Medlock & Andrews, Dallas, Tex., argued for appellee/cross-appellant. With him on the brief was Charles S. Cotropia.
Daniel F. McConnell, Charlotte, N.C., argued for appellants/cross-appellees.
Before NIES and NEWMAN, Circuit Judges, and RE, Chief Judge. *
D.M. & E. Corporation (DM & E) and Machine Development Corporation (MDC) appeal the judgment of the United States District Court for the Western District of North Carolina, Lummus Industries, Inc. v. D.M. & E. Corp., No. SH-C-84-344 , holding that appellants had contributorily infringed claims 13 and 22 of United States Patent No. 3,485,120 (the '120 patent) owned by Lummus Industries, Inc., and awarding $152,591 in damages. Lummus appeals the court's denial of prejudgment interest. We affirm the judgment, vacate the denial, and remand.
The claims of the '120 patent, invention of Garland B. Keith entitled "Method and Apparatus for Cutting Elongated Material", are for an apparatus and method of cutting continuous filament textile fiber bundles (tow) into uniform, short lengths (staple). The desired length of the staple varies with the intended use of the fiber. Apparatus claim 13 and method claim 22 are at issue. Claim 13 is representative:
13. Apparatus for cutting continuous, filamentary material into staple fibers comprising:
(a) a cutting assembly including a plurality of knife edges aligned in parallel relationship and spacedly secured to a mounting member at radial distances from a point on said mounting member, said radial distances being in every instance less than the distance from said point to the periphery of said mounting member;
(b) said mounting member including a disc spaced from a ring between which said knife edges extend thereby forming a reel with said knife edges along the periphery of the bottom thereof;
(c) roller means spacedly mounted adjacent said knife edge and adjustable toward and away from said point on said mounting member whereby variable thicknesses of filamentary material can be introduced between said roller means and said cutting assembly and forced through the spaces between said knife edges thereby severing said filamentary material into lengths of controlled dimensions.
The cutting assembly here at issue is set forth in claim clauses (a) and (b). The distance between the knife edges on the cutting assembly (sometimes called a cutter reel or, simply, reel) determines the length of the staple. When it is desired to change the length of the staple, the cutting assembly is changed to a different reel having differently spaced knife edges.
MDC manufactures and DM & E sells cutter reels designed to fit the apparatus of the '120 patent. It was admitted that the reels are not suited for any other use. MDC and DM & E also provide "repair" services for cutter reels. Those activities that were agreed to be repair, such as repair or replacement of damaged or worn knife blades, were not included in the charged infringement.
The case was tried to a jury, and special verdicts were returned. DM & E and MDC assign error to the jury verdict of infringement, challenging the jury instructions and the verdict form. Appellants also assign error to the court's holding, based on jury findings, that inequitable conduct had not been proved.
The issue of infringement turned on whether installation and use of the accused reels was "reconstruction" of the patented apparatus, and thus an infringement of the '120 claims, or merely permissible repair.
DM & E and MDC assert that the jury instruction describing the difference between repair and reconstruction was insufficient, and did not instruct the jury on the "precise factual issue to be resolved". The jury instruction included the following:
The Court instructs you that the purchaser of a patented machine which includes a number of components not separately covered by the patent has a right to repair the machine but does not have the right to reconstruct the machine.
Repair of the machine is permissible when one component of the patented machine wears out prior to the entire machine wearing out. In this situation replacement of that worn out component is permitted and does not constitute infringement of the patent on the machine. However the replacement of a component which is not worn out with an accessory component which is a material part of the invention constitutes patent infringement, because it is reconstruction of the patented machine.
The jury was instructed that it must decide on all the evidence whether "this is a repair or a reconstruction":
The Court instructs you that you should consider all the evidence presented by the parties as to the useful life of the cutter and the reels, the relative cost, and all other evidence offered on that subject in an effort to determine whether or not this is a repair or a reconstruction.
Lummus asserts that DM & E and MDC did not raise at the appropriate time the objections they now raise on appeal. Fed.R.Civ.P. 51 requires that all objections to jury instructions be made "before the jury retires to consider its verdict, stating distinctly the matter objected to and the grounds of the objection." Timely objection enables the trial judge to correct any error before the jury begins its deliberations. An objection not made before the district court is not normally considered on appeal, in the interest of the integrity of the jury system and the efficiency of trial and appellate procedures.
Rule 51 is not unique to patent cases, and thus we review its application in accordance with local practice. Panduit Corp. v. All States Plastic Mfg. Co., 744 F.2d 1564, 1573-75, 223 USPQ 465, 470-71 (Fed.Cir.1984). The Fourth Circuit holds generally that failure to object to a jury instruction before the jury retires amounts to waiver of the objection. See, e.g., Gray v. Giant Wholesale Corp., 758 F.2d 1000, 1003 (4th Cir.1985). The Fourth Circuit has also held that jury instructions not objected to may be reviewed on appeal if necessary to correct fundamental error of law or prevent a miscarriage of justice. Havee v. Belk, 775 F.2d 1209, 1220 (4th Cir.1985); Klein v. Sears Roebuck & Co., 773 F.2d 1421, 1426 (4th Cir.1985).
DM & E and MDC state that "objections to the instructions" were made, off the record, before the jury retired, and that the district court delayed receiving formal objections until after the jury retired. We accept this premise, for the record shows that DM & E and MDC placed on the record, at the court's invitation, the following objection:
My understanding of the instruction that was given to the jury was that if the defendants had made a new reel, that was a reconstruction. My objection to that is that the instruction should have been that if the purchasers of Lummus machines in mounting a reel in the machine reconstructed that machine then that would have been found to be an infringement.
DM & E and MDC now object that the instruction on repair/reconstruction should have included the question of "whether the nature of the reels is such that their repeated replacement is, and is expected to be, necessary to maintain the usefulness of the apparatus as a whole during its anticipated useful life." With the most benevolent reading of the objection actually raised, we do not see how it encompasses this question.
Reviewing the instructions on the standards set by the Fourth Circuit, the newly asserted objection to the jury instruction does not raise an issue of fundamental legal error. The instructions as given are a correct statement of law. Further, the point now raised by appellants was argued to the jury at trial. There is no basis for concluding that the judge and/or the jury were confused or misled as to the applicable law.
Appellate courts should be slow to impute to juries a disregard of their duties, and to trial courts a want of diligence or perspicacity in appraising the jury's conduct.
DM & E and MDC also object, for the first time, to the following portion of the instruction on the difference between permissible repair and impermissible reconstruction:
Now the plaintiff contends, as I pointed out to you, that this is the heart of the invention and that to make the reel, manufacture it and to sell it new violates the very heart of the patent. The defendants say and contend that it's repair, that they bought the overall machine, and that this is only a part and that to make [it] new and to replace it is nothing more than repair.
Now you must determine from this evidence which of these contentions is correct.
DM & E and MDC argue that this instruction misinformed the jury that manufacture and sale of the reel cannot be "repair" if the component is a sufficiently important element of the combination. Lummus points out that this part of the instruction merely summarizes the contentions of the parties, and that no objection was raised before the district court. Preceding this part of the instruction, the court told the jury:
The plaintiff contends that the defendants have manufactured and sold many of the reels which constitute the very heart of the patented machine, that the reel mechanism is a material part of the invention ... which is the subject of the plaintiff's patent.
....
Now, on the other hand, the defendants contend that the purchaser of the cutter machine has a right under the law to repair and replace parts of the machine as they wear out and that the conduct described by the evidence here is nothing more than the...
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