New Idea Farm Equipment Corp. v. Sperry Corp.

• Decision Date: 12 October 1990
• Docket Number: No. 87-1216,87-1216
• Citation: 916 F.2d 1561,16 USPQ2d 1424
• Parties: NEW IDEA FARM EQUIPMENT CORPORATION, Plaintiff-Appellant, v. SPERRY CORPORATION and New Holland, Inc., Defendants-Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1561

916 F.2d 1561

16 U.S.P.Q.2d 1424

NEW IDEA FARM EQUIPMENT CORPORATION, Plaintiff-Appellant, v. SPERRY CORPORATION and New Holland, Inc., Defendants-Appellees.

No. 87-1216.

United States Court of Appeals Federal Circuit.

Oct. 12, 1990.

Raymond M. Mehler, Lockwood, Alex, Fitzgibbon & Cummings, Chicago, Ill., argued, for plaintiff-appellant. With him on the brief were Daniel R. Pastirik, David Lesht and John L. Alex.

Berton Scott Sheppard, Leydig, Voit & Mayer, Chicago, Ill., argued, for defendants-appellees. With him on the brief was John B. Conklin, Leydig, Voit & Mayer of Chicago. Frank J. Daily and Michael L. Zaleski, Quarles & Brady, of Madison, Wis., of counsel.

Before MARKEY ^* and LOURIE, Circuit Judges, and BROWN, ^** District Judge.

LOURIE, Circuit Judge.

New Idea Farm Equipment Corporation (New Idea) appeals from a judgment entered by the United States District Court for the Northern District of Illinois, No. 84-C-10665, January 28, 1987, holding Sperry Corporation and New Holland, Inc. (collectively, Sperry) not liable for infringement of U.S. Patents 3,868,811 ('811) and 4,018,036 ('036), owned by New Idea. The case was tried to a jury, which returned a special verdict under Rule 49(a), Fed.R.Civ.P., on which a judgment of invalidity under 35 U.S.C. Sec. 102(a) and 102(g) was based. We affirm.

I BACKGROUND

A. Development of the Inventions and the Prior Art

New Idea and Sperry manufacture and sell harvesters, windrowers and mower conditioners for the farm industry. ¹ In the late 1960's and early 1970's, International Harvester (IH) and Hesston Corporation (Hesston), both farm equipment manufacturers, were active in developing a tractor-drawn mower conditioner that would operate "outboard" of the tractor to avoid the tractor's running over the crop. In developing this harvester, the companies also wanted to have a machine that would have flexibility of movement and efficient cutting patterns, similar to self-propelled harvesters but less expensive.

In 1968 and 1969, Hesston performed a study to begin developing a tractor-drawn harvester which utilized a tongue arched over the header to pull the harvester. Merle Burkhart, Hesston's engineer who continued the study, envisioned an arched tongue attached to the frame of the harvester in several locations, including the center. It was not until the fall of 1972 that Hesston, under the direction of Burkhart, finally built and operated a harvester utilizing an arched tongue attached to the center of the harvester frame that embodied the inventions claimed in the patents in suit. During this development period, on October 21, 1971, Burkhart filed an application for a patent on a pull-type hydraulically-powered forage harvester having a tongue arched over the header and pivoted on the rear frame, adjacent to one side (referred to by the parties as a "side-pivot" harvester). This machine is illustrated by Figs. 1 and 2 of U.S. Patent 3,832,837 ('837), reproduced below.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

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A prototype of this machine was being field tested by Hesston near Phoenix, Arizona, on May 8, 1972. George Cicci and Guy Tufts, employees of IH, saw and inspected the machine and its operation during the field test and conceived the idea of putting the arched tongue in the middle of the harvester so that the harvester could be operated fully outboard on both sides of the tractor. On that spring day in Arizona, Cicci and Tufts made a sketch of their invention. Application for a patent on the invention was eventually filed on April 20, 1973, from which two patents issued (the '811 and '036 patents). ² These patents were later purchased from IH by a predecessor of New Idea.

The Cicci '811 patent covers a harvester which utilizes an arched tongue, i.e., an elongated beam, attached on both ends pivotally to hitch the harvester to the tractor, so that the harvester can be moved to operate on either side of the tractor. The '036 patent covers a method of harvesting adjacent rows of standing crops by using the harvester. This harvester and its operation are illustrated in Figs. 1 and 2 of the '811 patent, reproduced below.

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The '811 patent contains seven claims; claim 1 is the broadest:

1. A crop harvester adapted to be pulled by a tractor having wheels on either side comprising:

a frame;

a pair of ground wheels supporting said frame;

harvesting apparatus forwardly mounted on said frame and adapted to receive and harvest crops;

an arched hitching tongue having one end pivotally mounted to said frame about an axis located proximate to the transverse center of said frame, a distal end adapted for pivotal connection to a tractor hitch, and an intermediate portion capable of passing over said harvesting control means connecting said frame to said tongue to determine the relative angular position thereof to selectively permit placement of said harvester on either side of said tractor.

apparatus, said harvesting apparatus remaining in a forward orientation, said tongue being of sufficient length to permit said harvester to be operated with said harvesting apparatus outboard of said tractor wheels on either side thereof and substantially perpendicular to the path of travel; and

The fundamental difference between the structure disclosed in the Burkhart '837 patent and that claimed in Cicci's '811 patent is the location of the pivot attachment to the frame of the harvester. As indicated above, Cicci's '036 patent is directed to the method of operating the harvester fully outboard of either side of the tractor.

B. District Court Proceedings

On December 13, 1984, New Idea sued Sperry, alleging infringement of the '811 and '036 patents. Sperry defended on grounds of patent invalidity under 35 U.S.C. Sec. 102(a) and (g). ³ At the close of this portion of the trial, the jury deliberated and returned a verdict in the form of answers to six special verdict interrogatories on anticipation:

1. Do you find that Hesston was first to conceive the invention?

ANSWER: Yes.

2. Do you find that Hesston reduced the invention to practice prior to April 20, 1973?

ANSWER: Yes.

3. Do you find that Hesston's arched tongue, center-pivot machine was known to anyone besides Hesston employees prior to April 20, 1973?

ANSWER: Yes.

4. Do you find that Hesston's arched tongue, center-pivot machine was used by anyone besides Hesston employees prior to April 20, 1973?

ANSWER: Yes.

5. Do you find that Hesston did not abandon the invention after it reduced the invention to practice?

ANSWER: Yes.

6. Do you find that International Harvester did not use reasonable diligence in filing its patent application with the United States Patent Office?

ANSWER: No.

Based on the jury's answers, the judge concluded that all of the claims of the '811 and '036 patents were invalid as anticipated under Sections 102(a) and 102(g), and entered judgment accordingly. New Idea's post-trial motions for JNOV and new trial were denied.

II DISCUSSION

The issue before us is whether the district court erred in denying New Idea's motions for JNOV and new trial. When considering a motion for JNOV a district court must consider all the evidence, drawing all reasonable inferences in a light most favorable to the nonmoving party, without determining credibility or substituting its choice for that of the jury in deciding between conflicting evidence. The moving party is entitled to a JNOV only when the district court is convinced on the record before the jury that reasonable persons could not have reached a verdict for the nonmoving party. Railroad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506, 1513, 220 USPQ 929, 936 (Fed.Cir.), cert. denied, 469 U.S. 871, 105 S.Ct. 220, 83 L.Ed.2d 150 (1984). As an alternative to JNOV, a court in its discretion may grant a motion for a new trial if prejudicial error occurred, or if the verdict is against the weight of the evidence. Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 626, 225 USPQ 634, 643 (Fed.Cir.1985).

To achieve reversal of the district court's denial of the motion for JNOV, New Idea

must convince this court that the jury's findings are not supported by substantial evidence, or that those findings cannot support the legal conclusions drawn by the jury or the judge. See Senmed, Inc. v. Richard-Allan Medical Indus., 888 F.2d 815, 817, 12 USPQ2d 1508, 1510 (Fed.Cir.1989). The district court's denial of the motion for a new trial will be reversed only if the trial judge abused his discretion. Shatterproof Glass Corp., 758 F.2d at 626, 225 USPQ at 643.

A. Section 102(g)

Section 102(g) provides that a person is entitled to a patent unless "before the applicant's invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it." New Idea argued in its motion for a directed verdict and in its motion for JNOV that the prior invention of another cannot be used to invalidate a patent in an infringement action.

While more commonly applied to interferences, section 102(g) is indeed applicable to prior invention situations other than in the context of an interference. See E.I. Du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 7 USPQ2d 1129 (Fed.Cir.), cert. denied, 488 U.S. 986, 109 S.Ct. 542, 102 L.Ed.2d 572 (1988). Thus, the dates of Burkhart's conception and reduction to practice are relevant in determining whether his inventive activity was prior to and therefore invalidates Cicci's patent under section 102(g). The jury, in special verdict one, found that Hesston, i.e., Burkhart ⁴, was first to conceive the invention claimed by Cicci. New Idea challenges Burkhart's conception by arguing that special verdict one is not supported by substantial evidence and that the testimony of Burkhart was not corroborated. The record shows that Hesston performed a study in 1968 and 1969...