Sjolund v. Musland

• Decision Date: 01 June 1988
• Docket Number: No. 87-1496,87-1496
• Citation: 847 F.2d 1573,6 USPQ2d 2020
• Parties: Roger SJOLUND, Plaintiff-Appellee, v. Peter K. MUSLAND, Norsol, Inc., and Wink Corporation, Defendants-Appellants. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 1573

847 F.2d 1573

6 U.S.P.Q.2d 2020

Roger SJOLUND, Plaintiff-Appellee, v. Peter K. MUSLAND, Norsol, Inc., and Wink Corporation,

Defendants-Appellants.

Appeal No. 87-1496.

United States Court of Appeals, Federal Circuit.

June 1, 1988.

Thomas Cline, Seattle, Wash., for plaintiff-appellee.

Michael W. Bocianowski, Christensen, O'Connor, Johnson & Kindness, Seattle, Wash., for defendants-appellants.

Before RICH and SMITH, Circuit Judges, and NICHOLS, Senior Circuit Judge.

RICH, Circuit Judge.

This appeal is from the District Court for the Western District of Washington. This suit for patent infringement was tried to a jury and, by agreement of the parties, presided over by a magistrate. Defendants Peter K. Musland, Norsol, Inc., and Wink Corporation appeal from the judgment entered on the jury's verdict, holding them liable for infringing Roger Sjolund's (Sjolund) U.S. Patent No. 4,221,071 ('071) on an improved crab trap, awarding damages, and enjoining defendants from further acts of infringement. We reverse the judgment because we conclude that the magistrate erred in denying defendants' motion for judgment notwithstanding the verdict (JNOV) that the claims in suit are invalid for obviousness under 35 U.S.C. Sec. 103.

BACKGROUND

The Claimed Invention

The '071 patent defines three improvements on a conventional king crab trap. The first improvement is intended to prevent crabs from escaping a trap once having entered it. Crab fisherman found that as a trap became crowded with crabs piled one on top of the other, many crabs were able to leave the trap by crawling up a side face of the entrance tunnel to the upper surface of the tunnel, and from there out through the entrance frame and out the tunnel to the ocean floor. Sjolund's solution to this problem was to add triangular baffles in the upper corners of the trap, extending from the upper surfaces of the entrance tunnels to the top face of the trap, to prevent crabs from crawling from the side faces of an entrance tunnel onto its upper surface. Claim 1 defines this improvement and is in Jepson form. The lengthy preamble describes a conventional crab trap and then the body of the claim defines the improvement, which comprises

a pair of baffles mounted between opposite edges of said entrance frame and spaced apart locations on said lateral face to block said escape route thereby preventing crabs from escaping from said trap.

It is clear from the preamble that the "lateral face" is one of the faces which defines the mouth of an entrance tunnel. We note that the claim is drafted in terms of a trap having an "entrance frame" and "a pair of baffles." It reads equally well on traps in actual use, which typically have two entrance frames and two pairs of baffles. The parties variously refer to the baffles as "anti-escape baffles" and "tanner fences."

Crab traps are often used to trap crab species of different sizes, and the second improvement of the '071 patent is designed to facilitate the conversion of the trap from one species to another. The patent specification states that king and tanner crabs are the most heavily fished species in Alaskan waters, and that of the two, the tanner crab is substantially the smaller. Thus, the tanner crab may escape easily through the large mesh in the escapement panel of the standard trap. To convert the trap to tanner crab fishing, panels of a smaller mesh size are secured over the escapement panel. Thus, claim 16 reads (paragraphing ours):

16. In a crab trap of the type having an outline of a right rectangular prism formed by four lateral faces of netting extending between a pair of bases covered by netting to form an enclosure, the mesh of the netting covering said bases and all but one [of] said lateral faces being of a first size and the mesh of the netting covering the remaining lateral Appropriately enough, the parties refer to these net panels as "tanner panels."

face being of a second, substantially larger size, the improvement comprising a plurality of net panels having a mesh of said first size, said panels being releasably secured to each other and to said enclosure across said remaining lateral face so that said trap may be easily converted from a trap for one species of crab to a trap for a different species of crab.

The third improvement of the '071 patent permits the entrance frame opening of the trap to be partially closed when the trap is used for tanner crab fishing. This is accomplished through the use of a long rectangular board or panel placed parallel to the entrance frame opening and pivotable about one of its long edges, so that in at least one position the board partially blocks the entrance opening. This feature is found, for example, in dependent claim 13 (paragraphing ours):

13. The crab trap of claim 1 further including means for varying the width of the entrance opening formed by said entrance frame, comprising

a generally elongated panel having one of its longitudinal edges pivotally secured to said trap about an elongated edge of said entrance frame such that said panel may be pivoted toward said entrance frame to a partially closed position or away from said entrance frame to a full open position.

The parties variously refer to the "elongated panel" of claim 13 as a "tanner board" or a "lattice board."

Sjolund asserted infringement of claims 7-10, 13, and 16-19. As set forth immediately above, the subject matter of dependent claim 13 is the combination of a conventional crab trap with anti-escape baffles and a tanner board. Claims 7-10 omit the tanner board, but add the element of a plurality of tanner panels, in various stages of refinement. Thus, the subject matter of these claims is the combination of a crab trap with anti-escape baffles and a plurality of tanner panels. Claim 16 is an independent claim to a conventional trap in combination with a plurality of tanner panels. Claims 17-19 depend from claim 16 and add the same refinements to the tanner panel arrangement as are found in claims 8-10.

The Jury Instruction and "Special Verdict" on Obviousness

^*

The jury was asked to decide the question of obviousness. The magistrate instructed the jury as follows:

Defendants claim that plaintiff's patent is invalid for the reason that the inventions contained in the patent were "obvious." An invention is obvious if the differences between it and the prior art are such that the invention as a whole would have been obvious at the time it was made to a person having ordinary skill in the art to which the invention pertains. Defendants must prove obviousness by clear and convincing evidence.

These factors have primary relevance to the issue of obviousness:

1. The scope and content of the prior art. The "prior art" includes inventions already in existence and publicly known.

2. The differences between the prior art and the claims of the plaintiff's patent.

3. The ordinary skill level of a person in the art of the claimed invention.

These factors have secondary relevance to the issue of obviousness: the commercial success of the invention; the existence of a long-felt need that was met by the invention; the length of time during which the problem, if any, solved by the invention remained unsolved; and After being instructed on the law, the jury responded to the following question on obviousness:

the failure of others who attempted to solve the problem addressed by the invention.

OBVIOUSNESS

2. Have defendants proved, by clear and convincing evidence, that the inventions described in the following claims of the patent were "obvious"?

Answer YES or NO with regard to each claim.

ANSWER:

Claim 7 NO Claim 16 NO

Claim 8 NO Claim 17 NO

Claim 9 NO Claim 18 NO

Claim 10 NO Claim 19 NO

Claim 13 NO

If your answer to this question is "yes" as to one or more claims of the patent, you need not answer any of the other questions as to such claims.

As indicated with regard to each claim in suit, the jury responded that defendants had not carried their burden of proving obviousness.

Motion for JNOV

The jury's responses to all of the questions on the special verdict form were favorable to Sjolund, and a judgment was entered in his favor on July 1, 1987. On July 14, defendants filed their motion for JNOV on the ground, inter alia, that the claims in suit were invalid for obviousness. The motion was denied that same day without opinion.

Standard of Review

The standard to be applied in reviewing a denial of a motion for JNOV is a common procedural question not specifically provided for in any statute or rule. Since our decision in Panduit Corp. v. All States Plastics Mfg. Co., 744 F.2d 1564, 223 USPQ 465 (Fed.Cir.1984) (per curiam ), our practice has been to apply the discernable law of the forum to procedural issues not unique to patent law. Thus, we look to the decisions of the Court of Appeals for the Ninth Circuit to identify our standard of review.

That standard is expressed in Peterson v. Kennedy, 771 F.2d 1244 (9th Cir.1985), cert. denied, 475 U.S. 1122, 106 S.Ct. 1642, 90 L.Ed.2d 187 (1986). The court explained:

We review the propriety of a JNOV under the same standard that is applied by the district court. A JNOV is proper when the evidence permits only one reasonable conclusion as to the verdict. We view the evidence in the light most favorable to the non-moving party and draw all reasonable inferences in favor of that party. A JNOV is improper if reasonable minds could differ over the verdict.

Peterson v. Kennedy, 771 F.2d at 1252 (citations omitted); see also Venegas v. Wagner, 831 F.2d 1514, 1517 (9th Cir.1987); Rinker v. County of Napa, 831 F.2d 829, 831 (9th Cir.1987). Denial of a JNOV is inappropriate and must be reversed when it is clear that the evidence and its inferences cannot reasonably support judgment in favor of the opposing party. Pierce v. Southern Pacific Transportation Co., 823 F.2d 1366, 1369 (9th Cir.1987); Transgo, Inc. v. Ajac Transmission Parts Corp.,...