Schering Corp. v. Precision-Cosmet Co., Inc.

• Decision Date: 02 July 1985
• Docket Number: Civ. A. No. 83-829-WKS.
• Citation: 614 F. Supp. 1368
• Parties: SCHERING CORPORATION, Plaintiff, v. PRECISION-COSMET CO., INC., Defendant.
• Court: U.S. District Court — District of Delaware

614 F. Supp. 1368

SCHERING CORPORATION, Plaintiff, v. PRECISION-COSMET CO., INC., Defendant.

Civ. A. No. 83-829-WKS.

United States District Court, D. Delaware.

July 2, 1985.

COPYRIGHT MATERIAL OMITTED

Bruce M. Stargatt, Richard H. Morse, Young, Conaway, Stargatt & Taylor, Wilmington, Del., John O. Tramontine, Eric C. Woglom, Jesse J. Jenner, Richard M. Barnes, Douglas J. Gilbert, Fish & Neave, New York City, N.Y., for plaintiff.

Paul E. Crawford, Connolly, Bove, Lodge & Hutz, Wilmington, Del., John D. Gould, Douglas J. Williams, Mark J. DiPietro, Merchant, Gould, Smith, Edell, Welter & Schmidt, Minneapolis, Minn., for defendant.

OPINION

STAPLETON, Circuit Judge:¹

This is a patent infringement action brought by plaintiff Schering Corporation against defendant Precision-Cosmet Co., Inc. ("P-C"). On March 11, 1985, a jury returned a general verdict for Schering in the amount of $1,263,482, along with answers to a number of interrogatories. Currently before the Court are motions by both parties. P-C has moved for Judgment Notwithstanding the Verdict ("JNOV") and, in the alternative, for a new trial. Schering has moved for an award of prejudgment interest, increased damages, and reasonable attorney's fees.

I. MOTION FOR JNOV

The moving party is entitled to a JNOV when the Court is convinced:

(1) that reasonable persons could not in light of ... the evidence have found the facts necessary to support the jury's verdict; or (2) that the facts properly found cannot in law support that verdict. If, on the other hand, the court is convinced that reasonable persons could have found in light of ... the evidence the facts necessary to support in law the jury's verdict, denial of the motion for JNOV is required.

Weinar v. Rollform, Inc., 744 F.2d 797, 805 (Fed.Cir.1984) (citing Connell v. Sears, Roebuck & Co., 722 F.2d 1542 (Fed.Cir. 1983)).

The Federal Circuit has also set forth guidelines that a court must follow in considering a motion for JNOV. Under these guidelines, a court must:

(1) consider all the evidence; (2) in a light most favorable to the non-mover; (3) drawing reasonable inferences favorable to the non-mover; (4) without determining credibility of witnesses, and (5) without substituting its choice for that of the jury between conflicting elements in the evidence.

Connell v. Sears, 722 F.2d at 1546. Further, where as here the issue raised is validity, "the true question is whether defendant, which bore the burden, 35 U.S.C. § 282, submitted such evidence as would preclude a reasonable jury from reaching a verdict of validity." Weinar v. Rollform, 744 F.2d at 805. In this regard, it is well to note that the question presented by a motion for JNOV is not whether the district court would have found the invention obvious as though there had been no trial before a jury. Id. Rather, the question is whether the jury's verdict that the Schering patent is valid (i.e. has not been proved invalid) is supported by substantial evidence. Id. (citing Bio-Rad Laboratories, Inc. v. Nicolet Instrument Corp., 739 F.2d 604 (Fed.Cir.1984)).

Notwithstanding these principles, P-C argues that the trial court may review the issue of validity de novo. In so doing, P-C relies upon the Federal Circuit's recent statement in E.W.P. Corp. v. Reliance Universal, Inc., 755 F.2d 898, 905 (Fed.Cir. 1985), that validity "is a question of law and that question is freely reviewable by this court." E.W.P. Corp., however, was not tried before a jury. In Connell v. Sears, the court explained that though obviousness is indeed a question of law, it is an issue that may properly be submitted to a jury, in the same manner that other legal questions, such as negligence, are regularly submitted to juries in personal injury cases. 722 F.2d at 1547; Railroad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506, 1514-15 (Fed.Cir.1984). Thus, though P-C is clearly correct that obviousness is a question of law, it is equally clear that when faced with a motion for JNOV concerning a verdict of validity, consideration of that motion by the trial court is limited by the standard of review and guidelines set forth in Connell v. Sears and Weinar v. Rollform.

A. The Obviousness Issue

The parties agree, for purposes of the motion for JNOV and a new trial, that the claimed invention is a gas permeable hard contact lens made principally of tertiary butyl styrene ("TBS"). P-C contends that such an invention would have been obvious to one with ordinary skill in the art in light of seven items of prior art, only one of which was before the Patent Examiner: (1) the Fatt article (DX-212AG); (2) Larke & Tighe U.K. Patent No. 1,394,056 (DX-212M); (3) Gaiser U.S. Patent No. 2,674,743 (DX-212B); (4) the Salame article (DX-212H); (5) Lundberg U.S. Patent No. 4,057,598 (DX-212C); (6) the Dow brochures (DX-212AH, DX-212AI), and (7) Larke U.K. Patent No. 1,395,501 (DX-212N).

Defendants contend that the above prior art paved a clear path to the inventor's decision to substitute the higher alkyl styrenes, including TBS, in a hard contact lens formulation, in order to provide improved gas permeability.

I conclude, however, that there is substantial evidence in the record supporting the conclusion that the subject matter of the invention of the Schering patent taken as a whole would not have been obvious at the time the invention was made to a person of ordinary skill in the art.

A principal contention made by P-C with respect to the question of obviousness is that the high gas permeability of a TBS lens would be predicted in 1977 on the theory that the addition of bulkier side groups to a polymer creates a more "open structure" (lower density) for the passage of oxygen. P-C presented the testimony of Dr. Salame for purposes of explicating this theory. Both of Schering's experts, however, expressly opined that the higher permeability of TBS would not have been predictable and provided reasons for their opinions. Dr. Hoehn expressly stated that the permeability of TBS was not predictable. (Tr. 1620). He explained that, contrary to Dr. Salame's theory, permeability of a material is not a property of the polymer; it is instead a property of the article made from the polymer. (Tr. 1618). According to Dr. Hoehn, predicting permeability with any degree of success depends on whether one has studied the article made from the polymer. Id.

Dr. Fatt testified that he would not be able to predict increased permeability of a polymer merely on the basis that bulkier side groups were added. (Tr. 343). Dr. Fatt opined that gas permeability was predicted upon two components — the speed at which the molecule traveled through the plastic and the solubility of the gas in the plastic — and that these components could offset one another with the result that addition of a bulkier group would not necessarily lead to increased permeability. (Tr. 343). He also indicated that the lower density of a polymer did not always lead to increased permeability. (Tr. 342).

Dr. Fatt further testified that the increased permeability of ethyl, isopropyl and tertiary butyl styrene over stryene and methyl styrene was unexpected. (Tr. 270-71). Mr. Deichert of Bausch & Lomb also acknowledged that the permeability of TBS was "surprising and unexpected". (Tr. 1093).

P-C contends that the Larke & Tighe patent (DX-212M) teaches one skilled in the art that the addition of bulkier side groups, by providing more open space, will improve oxygen permeability. P-C's reference here is not to any teaching concerning the compositions claimed in the Schering patent but, rather, to the following language of the Larke & Tighe patent:

Although the invention is not limited to any particular theory, it is believed that the bulky side groups attached to the polymer chain disrupt the chain symmetry and regularity of the polymer giving a more open structure having increased gas permeability.

Given the contrary testimony of Dr. Fatt and Dr. Hoehn as to the understanding of those working in the art at the relevant time, the jury was not bound to conclude that the artisan of ordinary skill would take this theoretical speculation at face value. Testimony to the contrary by Drs. Hoehn and Fatt represented substantial evidence that increased permeability was not predictable.

Dr. Fatt further testified that the use of TBS in a hard contact lens would not have been obvious to him from the Lundberg patent (DX-212C). He explained that the patent disclosed TBS as one of 25 to 30 monomers for the hydrophobic block of a copolymer and that one of the 25 possible uses for the copolymer was a soft, not hard, contact lens. He indicated that there was no mention of gas permeability in Lundberg. (Tr. 279-293). He explained that out of the many possible combinations of uses with different monomers, disclosed by Lundberg, it would not have been obvious to pick out the use of TBS in a soft lens, let alone in a hard one. (Tr. 292).

As to the Gaiser patent (DX-212B), Dr. Fatt indicated that neither TBS nor any other alkyl styrene claimed in the Schering patent is mentioned in Gaiser. (Tr. 297). Moreover, both Drs. Fatt and Salame testified that the substituted styrenes referred to by Gaiser constituted a class of more than one hundred compounds. (Fatt Tr. 297-98; Salame Tr. 1271-72). Most significantly, Fatt testified that Gaiser did not mention anything with respect to the improved gas permeability that resulted from the use of certain substituted styrenes. (Tr. 297).

While Dr. Salame testified that the increased permeability of TBS would have been obvious, the jury was entitled to reject his testimony if they did not find it credible. And it is not the province of this Court to weigh the credibility of Salame's testimony against the testimonies of Hoehn and Fatt. Connell v. Sears, 722 F.2d at 1546-47.

The question here is whether P-C, in light of its burden to prove invalidity by clear and convincing evidence, submitted such evidence as would...