Richardson-Vicks Inc. v. Upjohn Co.

• Decision Date: 26 September 1997
• Docket Number: Nos. 96-1214,RICHARDSON-VICKS,96-1237,s. 96-1214
• Citation: 44 USPQ2d 1181,122 F.3d 1476
• Parties: INC., Plaintiff-Appellant, v. The UPJOHN COMPANY, Defendant/Cross-Appellant, and McNeil-PPC, Inc. and Johnson & Johnson, Defendants-Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1476

122 F.3d 1476

44 U.S.P.Q.2d 1181

RICHARDSON-VICKS INC., Plaintiff-Appellant, v. The UPJOHN COMPANY, Defendant/Cross-Appellant and McNeil-PPC, Inc. and Johnson & Johnson, Defendants-Appellees.

Nos. 96-1214, 96-1237.

United States Court of Appeals Federal Circuit.

Sept. 26, 1997.

Rehearing Denied; Suggestion for Rehearing In Banc Declined

Nov. 21, 1997. ^*

John F. Sweeney, Morgan & Finnegan, L.L.P., New York City, argued, for plaintiff-appellant. With him on the brief were Richard C. Komson and John T. Gallagher.

Roy E. Hofer, Brinks Hofer Gilson & Lione, Chicago, IL, argued, for defendant/cross-appellant. With him on the brief were Thomas J. Filarski, Timothy Q. Delaney, and G. Peter Nichols. Of counsel on the brief were William G. Jameson and Raymond G. Arner, Pharmacia & Upjohn, Inc., Kalamazoo, MI.

Harry J. Roper, Roper & Quigg, Chicago, IL, argued, for defendants-appellees. With him on the brief were Raymond N. Nimrod and Aaron A. Barlow.

Before ARCHER, Chief Judge, MICHEL and PLAGER, Circuit Judges.

PLAGER, Circuit Judge.

In this case, a jury found the patent on a popular cough and cold formula not invalid for obviousness and not unenforceable. Subsequently, the trial judge overturned the jury verdict. Plaintiff appeals the trial judge's action. Because the trial judge acted within the scope of her authority in granting judgment as a matter of law ("JMOL"), and on all the facts of record reached the correct conclusion of invalidity for obviousness, the judgment is affirmed.

I. Background

Plaintiff Richardson-Vicks Inc. ("RVI") is the assignee of Reexamination Certificate B1 4,552,899 ("the '899 patent"). The patent is addressed to an over-the-counter ("OTC") medicine that combines, in various ratios, two well-known ingredients, the analgesic ibuprofen and the decongestant pseudoephedrine. The combination is sold for the relief of cough, cold, and flu symptoms.

Claims 36, 37, 47, and 48 were asserted at trial. Claim 36 is a composition-of-matter claim which recites a 1.5:1 to 8:1 dose ratio range of ibuprofen to pseudoephedrine. Claim 37, also a composition-of-matter claim, which depends from claim 36, requires 200 mg of ibuprofen and 30 mg of pseudoephedrine. Claims 47 and 48 are method-of-use claims which correspond, respectively, to claims 36 and 37. The claims each require that the ibuprofen and pseudoephedrine be present in a "combinatory immixture," which the trial judge understood to mean in a single unit dosage, such as a single tablet or capsule.

Defendants market OTC medicines--Motrin IB Sinus TM and Sine-Aid IB Sinus TM-- which contain the same ingredients in similar ratios. At the close of evidence, the trial court pursuant to Federal Rule of Civil Procedure 50 found as a matter of law that defendants' accused products infringed the asserted claims of the '899 patent. That finding is not at issue, so the only questions on appeal relate to the validity and enforceability of the patent.

The original patent application was filed on April 9, 1984 and the patent issued on November 12, 1985. In 1990, RVI requested reexamination of the patent in light of certain Japanese publications. Independently, McNeil-PPC, Inc. ("McNeil"), which is owned by Johnson & Johnson, requested reexamination, citing additional prior art not considered by the examiner in issuing the original patent. Both requests were granted by the United States Patent and Trademark Office ("PTO") on the ground that, as required by statute, each raised "a substantial new question of patentability." See 35 U.S.C. § 303 (1994). Subsequently the two reexaminations were merged into a single reexamination proceeding pursuant to 37 C.F.R. § 1.565(c). A reexamination certificate was ultimately issued on October 20, 1992.

In 1993 RVI filed a complaint in the United States District Court of Delaware, charging Upjohn, McNeil, and Johnson & Johnson (collectively "defendants") with infringement of claims 36-37 and 47-48 of the '899 patent. Defendants denied liability and counterclaimed for a declaratory judgment that the patent is invalid, not infringed, and that intervening rights bar recovery.

Defendants later moved for summary judgment that the asserted claims are invalid due to prior invention of a third party, that the claims are invalid because they are anticipated or obvious, and that the claims are unenforceable because of patent misuse, arguing that RVI had impermissibly expanded the physical and temporal scope of the '899 patent with anti-competitive effect. The trial court denied all of these motions.

The case proceeded to trial. As noted above, the trial judge granted RVI's motion for judgment of infringement as a matter of law. The questions of validity and enforceability, however, were left to the jury. By verdict rendered May 10, 1995, the jury found, inter alia, that the defendants had failed to prove that the claims were invalid for obviousness or prior invention, or that RVI had impermissibly broadened the scope of the '899 patent so as to constitute patent misuse. The jury then awarded RVI a reasonable royalty of seven percent of the infringing sales.

Following the adverse verdict, defendants renewed their motion for JMOL under Fed.R.Civ.P. 50(b) or, in the alternative, for a new trial under Fed.R.Civ.P. 59. The trial court concluded that there was "no legally sufficient evidentiary basis for a reasonable jury to have found for plaintiff on the issues of obviousness and prior invention." Accordingly, the judge granted the defendants' renewed motion for JMOL on both counts. In the alternative, the court conditionally granted the defendants' motion for a new trial on the issue of obviousness should its judgment be overturned on appeal, but denied the motion for a new trial on the issue of prior invention. The trial court also awarded defendants intervening rights in the event that the JMOL was overturned on appeal. In view of our upholding on the ground of obviousness the trial court's judgment of invalidity, we need not address any of the other questions raised by the appeal.

II. Discussion

A. Standard of Review

RVI states the general rule that, in reviewing a jury's verdict on a motion for JMOL, the question before the trial court is whether the jury verdict is supported by substantial evidence. That of course refers to whether the factual findings of the jury, expressed or implied in the verdict, are supported by substantial evidence in the record. RVI argues that on appeal of the grant of JMOL, the appellate court applies the same standard anew, without deference to the trial court's judgment in the matter, citing Orthokinetics Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1 USPQ2d 1081 (Fed.Cir.1986), so that its burden in this case is only to show that the jury verdicts are supported by substantial evidence. Brief for Plaintiff at 31.

The difficulty with RVI's position is that, although the argument has merit when the issue is purely one of fact, it does not follow when the issue involves a question of law. It is black letter law that the ultimate question of obviousness is a question of law. See Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 693-94, 15 L.Ed.2d 545, 148 USPQ 459, 467 (1966) (citing Great A. & P. Tea Co. v. Supermarket Equip. Co., 340 U.S. 147, 155, 71 S.Ct. 127, 131-32, 95 L.Ed. 162, 87 USPQ 303, 309 (1950)); In re Donaldson Co., 16 F.3d 1189, 1192, 29 USPQ2d 1845, 1848 (Fed.Cir.1994) (in banc ); Texas Instruments Inc. v. United States Int'l Trade Comm'n, 988 F.2d 1165, 1178, 26 USPQ2d 1018, 1028 (Fed.Cir.1993). And we review that legal question without deference to the trial court. See Gardner v. TEC Sys., Inc., 725 F.2d 1338, 1344, 220 USPQ 777, 782 (Fed.Cir.1984) (district court's conclusion on obviousness "is one of law and subject to full and independent review in this court").

At the same time, it is well understood that there are factual issues underlying the ultimate obviousness decision. See Graham, 383 U.S. at 17-18, 86 S.Ct. at 694, 148 USPQ at 467. These so-called Graham factors include: (1) the scope and content of the prior art; (2) the differences between the claimed invention and the prior art; (3) the level of ordinary skill in the art; and (4) certain secondary considerations. Id. That an obviousness determination stands upon the relevant facts of the case does not convert the ultimate conclusion of obviousness from one of law into one of fact.

In analyzing the correctness of a JMOL overturning a jury verdict, we must consider the facts before the trial court, and then determine whether the trial court's ultimate judgment on obviousness is correct as a matter of law. Determining the facts and how they bore on the jury's view of the case is made considerably more problematic when, as in the case before us, the only information we have about the jury's views are contained in a general verdict. ¹

Nevertheless, in re-creating the facts as they may have been found by the jury, and in applying the Graham factors to the case, we assess the record evidence in the light most favorable to the verdict winner, in this case RVI, Newell Co. v. Kenney Mfg. Co., 864 F.2d 757, 765, 9 USPQ2d 1417, 1423 (Fed.Cir.1988) ("Judges must accept the factual findings, presumed from a favorable jury verdict, which are supported under the substantial evidence/reasonable juror standard."), though this does not mean that we are free to abdicate our role as the ultimate decision maker on the question of obviousness. That decision remains within our province. See Structural Rubber Prod. Co. v. Park Rubber Co., 749 F.2d 707, 718-19, 223 USPQ 1264, 1273 (Fed.Cir.1984) "it is the duty of the appellate court to be satisfied that the law has been correctly applied to the facts regardless of whether the facts were determined by judge or jury").

B. Obviousness

Claim 36, which is representative of the other independent claim, reads:

A pharmaceutical composition of matter for...