National Presto Industries, Inc. v. West Bend Co., s. 94-1109

• Decision Date: 12 February 1996
• Docket Number: 94-1126,Nos. 94-1109,s. 94-1109
• Citation: 76 F.3d 1185,37 USPQ2d 1685
• Parties: , 37 U.S.P.Q.2d 1685 NATIONAL PRESTO INDUSTRIES, INC., Plaintiff-Appellant, v. The WEST BEND COMPANY, Defendant/Cross-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1185

76 F.3d 1185

64 USLW 2580, 37 U.S.P.Q.2d 1685

NATIONAL PRESTO INDUSTRIES, INC., Plaintiff-Appellant, v. The WEST BEND COMPANY, Defendant/Cross-Appellant.

Nos. 94-1109, 94-1126.

United States Court of Appeals, Federal Circuit.

Feb. 12, 1996.

James G. Hunter, Jr., Latham & Watkins, Chicago, Illinois, argued, for plaintiff-appellant. With him on the brief were David S. Foster and Michael J. Faris.

John F. Flannery, Fitch, Even, Tabin & Flannery, Chicago, Illinois, argued, for defendant/cross-appellant. With him on the brief was Robert J. Fox.

Before NEWMAN, LOURIE, and RADER, Circuit Judges.

Opinion for the court filed by Circuit Judge NEWMAN. Circuit Judge LOURIE joins the opinion, except that he only concurs in the result of Part II.

PAULINE NEWMAN, Circuit Judge.

National Presto Industries and The West Bend Company each appeals from the judgment of the United States District Court for the Western District of Wisconsin, ¹ concerning Presto's United States Patent No. 5,089,286 (the '286 patent) for a device that cuts vegetables into spiral curls.

The issues of patent validity and inducement to infringe were decided by summary judgment, and the issues of infringement, willfulness of infringement, and damages were tried to a jury. The district court enhanced the jury's damages award by one half, and denied Presto's request for attorney fees. On appeal by each side of the aspects that were decided adversely to it, we affirm the judgment in all respects.

I PATENT VALIDITY

On West Bend's motion for summary judgment on the issue of validity, the district court granted judgment in favor of Presto, holding that the '286 patent was not invalid. This summary judgment in favor of the non-moving party is challenged by West Bend, both as to the merits of the decision and with respect to the procedure.

The trial court has authority to dispose of issues summarily when the requirements of Rule 56 are met, provided that the adversely affected party has an adequate opportunity to respond and the summary procedure does not deny due and fair process. In Celotex Corp. v. Catrett, 477 U.S. 317, 326, 106 S.Ct. 2548, 2554, 91 L.Ed.2d 265 (1986), the Court remarked that "district courts are widely acknowledged to possess the power to enter summary judgment sua sponte, so long as the losing party was on notice that she had to come forward with all of her evidence." See Sawyer v. United States, 831 F.2d 755, 759 (7th Cir.1987) (the movant must have opportunity to respond to the non-movant's position before summary judgment may be granted in favor of the non-movant); Horn v. City of Chicago, 860 F.2d 700, 703-04 n. 6 (7th Cir.1988) (a sua sponte summary judgment should not be granted when it takes the affected party by surprise); Choudhry v. Jenkins, 559 F.2d 1085, 1088-89 (7th Cir.1977). ²

West Bend in its motion cited two Japanese publications that West Bend stated were closer prior art than the references cited by the patent examiner in granting the '286 patent. Presto in its opposition discussed the relevant prior art including the references that were cited by the examiner. The parties did not dispute the facts of the scope and content of the prior art, the differences between the claimed invention and the prior art, and the level of ordinary skill in the field of the invention. West Bend's motion brought forth extensive materials and argument by both sides on the issue of validity, and West Bend had full opportunity to respond and did respond to Presto's position that the '286 patent was not invalid.

West Bend states that it did not raise all of the grounds of invalidity that it might have raised, particularly with respect to validity based on 35 U.S.C. § 112. Presto responds that West Bend presented the affidavit of its patent expert that he had thoroughly studied the Presto patent and its prosecution history, and that during the entire summary judgment proceeding neither West Bend nor its patent expert mentioned the existence of any basis for challenging validity other than under 35 U.S.C. § 103. Moreover, in its opposition to Presto's motion in limine to preclude West Bend from presenting invalidity defenses at trial, West Bend made only passing mention and did not proffer any evidence in support of a § 112 invalidity defense. We have not been shown reversible error in the district court's procedure, in view of West Bend's motion, the record, and the entirety of the proceedings directed to the issue of validity.

West Bend points to the district court's recognition that the meaning of certain claim terms, such as the word "frame" and the phrase "configured for reception," were in dispute. West Bend argues that these disputed meanings raise questions of material fact with respect to the issue of validity, thus precluding the grant of summary judgment. However, West Bend did not show that the disputed aspects of the meanings of the challenged terms were material to the issue of validity, and we do not discern an issue of conflicting claim interpretations with respect to the determinations of validity and of infringement. In deciding a motion for summary judgment of invalidity the burden of proof must be considered. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 254, 106 S.Ct. 2505, 2513, 91 L.Ed.2d 202 (1986) (heightened standard of clear and convincing evidence, which would be party's burden at trial, is to be considered when evaluating sufficiency of evidence on motion for summary judgment). Appellate review is on the same basis. Taking cognizance of the requirement that patent invalidity must be proved by clear and convincing evidence, we affirm the summary judgment that the '286 patent is not invalid.

II INFRINGEMENT

Infringement, literal and by equivalency, was tried to the jury. The jury found by special verdicts that there was not literal infringement, but that there was infringement under the doctrine of equivalents and that the infringement was willful. The district court entered judgment on these verdicts, and both parties appeal.

Claim 1, the principal claim in suit, is as follows:

1. A vegetable cutter, comprising:

a frame having an open end and defining a retention compartment,

a container defining a retention chamber which is configured for reception within the retention compartment,

a means for rotating a vegetable retained within the retention compartment,

a blade assembly operably coupled to the container for slicing a vegetable retained within the retention compartment as the vegetable is rotated by the rotating means,

wherein the sliced vegetable passes into the retention chamber defined by the container.

The district court had denied West Bend's motion for summary judgment of noninfringement, stating that "the dispute between the experts as to an underlying fact--how a person skilled in the art would understand In Markman v. Westview Instruments, Inc., 52 F.3d 967, 34 USPQ2d 1321 (Fed.Cir.) (en banc ), cert. granted, --- U.S. ----, 116 S.Ct. 40, 132 L.Ed.2d 921 (1995), the court held that the meaning of a term used in a patent claim is a question of law for the court, not a question of fact for the jury, and on appeal is decided de novo when there is a disputed question requiring interpretation of claim terms. We have therefore undertaken to construe de novo the disputed claim terms. Then, based on our interpretation of the claim terms, we have reviewed the jury verdict to ascertain whether there was substantial evidence whereby a reasonable jury could have reached the verdict that was reached. Laitram Corp. v. NEC Corp., 62 F.3d 1388, 1395, 36 USPQ2d 1206, 1211 (Fed.Cir.1995).

the term 'configured for reception'--precludes a binding determination by this court." National Presto, 28 USPQ2d at 1056, 1993 WL 151345.

A. LITERAL INFRINGEMENT

On cross-appeal of the jury's verdict that there was not literal infringement, Presto asks us to find literal infringement as a matter of law, based on our interpretation of the disputed claim terms. Presto states that when the claim is correctly construed, it reads on the West Bend device. West Bend responds that its food slicer does not have a "frame," a "retention compartment," and a container "configured for reception," if these terms are given West Bend's proposed meaning.

The district court had stated, in denying summary judgment on the issue of infringement, that these questions can not be decided solely on review of the patent specification and the prosecution history. In Markman the court held that issues of claim interpretation are matters of law, and that expert testimony is limited to aiding the court in understanding the technology. However, we have been greatly aided in understanding these terms in the context in which they are used by consideration of the testimony of the expert witnesses and the resolution by the trier of fact of conflicts in the evidence. For example, West Bend's expert witness testified that, as used in the '286 patent and as understood in light of the West Bend device, the prosecution history, and the prior art, the "frame" in the '286 patent is the outer container that supports both the inner container and the vegetable being cut, and that in the West Bend device the inner container provides the support. In contrast, Presto's expert witness testified that in the West Bend device the outer container is the "frame" and supports the inner container, and that this construction is within the scope of the Presto claim.

There was also conflicting testimony concerning the meaning of a "container ... configured for reception": West Bend's witness testified that the West Bend "frame" is not a container capable of "retention," and Presto's witness testified to the contrary interpretation, both sides explaining their reasoning. There was also conflicting testimony concerning whether the "open end" of claim 1 is correctly interpreted to include the West Bend device. West Bend pointed out that Presto amended ...