Perkin-Elmer Corp. v. Computervision Corp.

Decision Date06 April 1984
Docket NumberNo. 83-1195,PERKIN-ELMER,83-1195
Citation732 F.2d 888,221 USPQ 669
PartiesTheCORPORATION, a corporation of New York, Appellee, v. COMPUTERVISION CORPORATION, a corporation of Delaware, Appellant. Appeal
CourtU.S. Court of Appeals — Federal Circuit

Richard J. Birch, Boston, Mass., argued for appellant. With him on brief was James H. Mitchell, Boston, Mass.

Robert M. Taylor, Jr., Los Angeles, Cal., argued for appellee. With him on brief were David B. Murphy, Thomas F. Smegal, Jr., and Robert J. Bennett, Los Angeles, Cal.

Before MARKEY, Chief Judge, and DAVIS, BALDWIN, KASHIWA and BENNETT, Circuit Judges.

MARKEY, Chief Judge.

Appeal from a judgment of the District Court for the Northern District of California holding valid and infringed claims 1 through 5, 7 and 8 of U.S. Patent No. 3,748,015 ('015 patent), issued to Abe Offner, and claims 1 through 8 of U.S. Patent No. 3,821,763 ('763 patent), issued to Robert M. Scott. Both patents were assigned to The Perkin-Elmer Corporation (Perkin-Elmer). We affirm.

BACKGROUND

Perkin-Elmer's "Micralign" was the first commercially successful projection printer for use in manufacturing semiconductor integrated circuits. A projection printer uses optics to trace a circuit design onto a silicon wafer. Because a high degree of accuracy is demanded, the central component of a projection printer is its optical system. The optical structure in Perkin-Elmer's "Micralign" is disclosed in the '015 and '763 patents.

Computervision Corporation (Computervision) sells a projection printer known as the "Cobilt CA-3000" (CA-3000), which is similar to the Micralign.

A PROCEDURAL MORASS

In late 1977, Perkin-Elmer sued Computervision for infringement of the patents. Computervision counterclaimed for a declaratory judgment that the patents were invalid and not infringed.

Over Computervision's objection, Perkin-Elmer's demand for a jury trial was honored. The jury trial lasted nine days with each party introducing extensive testimony of numerous experts. Fourteen witnesses appeared before the jury and twelve depositions were read into the record. One hundred and forty documents and physical exhibits were introduced in evidence.

After receiving unchallenged instructions on the issues it was to decide, the jury deliberated and returned a general verdict that claims 1-8 of each patent were valid, not obtained by fraud, and not infringed. No special verdicts under Rule 49(a) and no interrogatories under Rule 49(b) had been sought. Computervision had not objected to the form of verdict submitted to the jury. The district court denied Perkin-Elmer's motions for a judgment of infringement notwithstanding the verdict ("JNOV") and for a new trial and entered a judgment of noninfringement. Perkin-Elmer's request for entry of judgment on the validity verdict was denied and, according to counsel for Computervision, Computervision accepted that denial. The refusal to enter judgment on the jury's validity verdict, the reasons for which are not known, served as a foundation of a procedural morass.

Perkin-Elmer appealed the non-infringement judgment, and the district court's refusal to enter a judgment of patent validity, to the Court of Appeals for the Ninth Circuit (Ninth Circuit). Though the judgment was entered only on the noninfringement verdict, and was viewed by the Ninth Circuit as not final, that court elected to entertain the appeal because "[t]he district court here obviously was not trying to avoid adjudication on the issue of patent validity". Perkin-Elmer Corp. v. Computervision Corp., 680 F.2d 669, 216 USPQ 760 (1982).

The Ninth Circuit held that Perkin-Elmer's motion for JNOV should have been granted, said nothing on the merits of the refusal to enter judgment on validity, and reversed and remanded the case for further proceedings. The Court denied a petition for rehearing and declined a suggestion for rehearing in banc. 1

At a hearing on remand, Perkin-Elmer informed the district court of Sarkisian v. Winn-Proof Corp., 688 F.2d 647 (9th Cir.1982), cert. den., Carsonite International Corp. v. Carson Manufacturing Co., --- U.S. ----, 103 S.Ct. 1499, 75 L.Ed.2d 930 (1983), which had been decided a week before and which had articulated special guidelines for use in jury trials of patent suits. The district court deferred entering judgment pending consideration of Sarkisian, ordered briefs, and set for oral argument the matter of entering a judgment on the jury's verdict that the patents were valid.

At argument, the court stated that the findings of the jury supported a conclusion of non-obviousness, that there was considerable evidence supporting those findings, and that non-obviousness was clear as a matter of law. The court also noted that a patent is presumed valid, that the burden of persuasion remains with the party asserting invalidity, and that Computervision did not satisfy that burden. In accordance with the Ninth Circuit's mandate and in full compliance with Sarkisian, the district court determined that the patents were valid and infringed and granted Perkin-Elmer's motion for entry of judgment so stating.

The district court denied these Computervision motions: for JNOV on validity; for a new trial, based on an alleged denial of jury trial on a fact issue underlying the determination of nonobviousness; and to vacate the judgment, grant a new trial, and reopen discovery, all based on alleged fraudulent conduct of Perkin-Elmer during trial and appeal to the Ninth Circuit.

Computervision appeals the judgment, asserting error in denial of all its motions except that to reopen discovery. Further, Computervision seeks review and reversal of the Ninth Circuit's decision, accompanied by reinstatement of the original jury verdict of noninfringement.

ISSUES

(1) Whether the district court erred in denying Computervision's motion for JNOV on validity.

(2) Whether the district court abused its discretion in denying Computervision's motion for new trial based on absence of a jury trial of a fact issue underlying the determination of nonobviousness.

(3) Whether the decision of the Ninth Circuit should be reviewed.

(4) Whether the district court abused its discretion in denying Computervision's motions for new trial and to vacate the judgment

based on allegations of fraudulent conduct.

OPINION
A. Denial of the Motion for JNOV on Validity
1. Standard of Review

When a party moves for JNOV, the trial court must consider all the evidence in a light most favorable to the non-mover, must draw reasonable inferences favorable to the non-mover, must not determine credibility of witnesses, and must not substitute its choice for that of the jury between conflicting elements in the evidence. Railroad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506, 1512, 220 USPQ 929, 936 (Fed.Cir.1984); Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1546, 220 USPQ 193, 197 (Fed.Cir.1983). Following those guidelines, the court determines whether the evidence so viewed constitutes "substantial evidence" in support of the jury's findings and, if so, whether those findings can support the legal conclusions necessarily drawn by the jury in accord with its instructions enroute to its verdict. Railroad Dynamics, Inc., supra, 727 F.2d at 1512, 220 USPQ at 936. "Substantial" evidence is such relevant evidence from the record taken as a whole as might be accepted by a reasonable mind as adequate to support the finding under review. Loyce E. Hayes v. Department of the Navy, 727 F.2d 1535 at 1537 (Fed.Cir.1984); SSIH Equipment S.A. v. USITC, 718 F.2d 365, 371 n. 10, 218 USPQ 678, 684 n. 10 (Fed.Cir.1983). In sum, only when the court is convinced upon the record before the jury that reasonable persons could not have reached a verdict for the non-mover, should it grant the motion for JNOV. Railroad Dynamics, Inc., supra, 727 F.2d at 1512, 220 USPQ at 936.

In its review, the district court must not lose sight of the presumption of validity. Id., 727 F.2d at 1512-13, 220 USPQ at 934-35. Where, as here, there is a verdict of validity, the question is not whether the patentee had introduced sufficiently substantial evidence to support the verdict, but whether the challenger's evidence so met the burden imposed by 35 U.S.C. Sec. 282 (" [t]he burden of establishing invalidity of a patent or any claim shall rest on the party asserting such invalidity") that reasonable jurors could not have concluded that the challenger failed to overcome that burden. Id.

To facilitate review on a motion for JNOV and on appeal, it is preferred that a jury be provided with special interrogatories designed to reveal more clearly the findings it made. Absent such interrogatories, the law presumes the existence of findings necessary to support the verdict the jury reached. Id., 727 F.2d at 1516, 220 USPQ at 939. Accord, Velo-Bind, Inc. v. Minn. Mining & Mfg. Co., 647 F.2d 965, 971, 211 USPQ 926, 932 (9th Cir.1981); Control Components, Inc. v. Valtek, Inc., 609 F.2d 763, 767, 204 USPQ 785, 788-89 (5th Cir.), cert. den. 449 U.S. 1022, 101 S.Ct. 589, 66 L.Ed.2d 484 (1980); Tights, Inc. v. Acme-McCrary Corp., 541 F.2d 1047, 1061, 191 USPQ 305, 314 (4th Cir.), cert. den. 429 U.S. 980, 97 S.Ct. 493, 50 L.Ed.2d 589 (1976); White v. Mar-Bel, Inc., 509 F.2d 287, 290, 185 USPQ 129, 131 (5th Cir.1975); Panther Pumps & Equipment Co., Inc. v. Hydrocraft, Inc., 468 F.2d 225, 228, 175 USPQ 577, 579 (7th Cir.1972), cert. den. 411 U.S. 965, 93 S.Ct. 2143, 36 L.Ed.2d 685 (1973). The particular findings the jury must make before it can reach a verdict are controlled by the court's instructions to the jury. Railroad Dynamics, Inc., supra, 727 F.2d at 1516, 220 USPQ at 939.

On appeal from denial of a motion for JNOV, appellant must show that the jury's findings, presumed or express, are not supported by substantial evidence or, if they were, that the legal conclusion(s) implied from the jury's verdict cannot in law be supported by those findings. Id...

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