Structural Rubber Products Co. v. Park Rubber Co.

• Decision Date: 09 November 1984
• Docket Number: No. 83-1326,83-1326
• Citation: 223 USPQ 1264,749 F.2d 707
• Parties: STRUCTURAL RUBBER PRODUCTS COMPANY, Appellant, v. PARK RUBBER COMPANY and International Metals and Machines, Inc., Appellees. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 707

749 F.2d 707

223 U.S.P.Q. 1264

STRUCTURAL RUBBER PRODUCTS COMPANY, Appellant, v. PARK RUBBER COMPANY and International Metals and Machines Inc., Appellees.

Appeal No. 83-1326.

United States Court of Appeals Federal Circuit.

Nov. 9, 1984.

William M. Wesley, Chicago, Ill., argued for appellant. With him on brief was Gregory B. Beggs, Chicago, Ill., of counsel.

James J. Flynn, Chicago, Ill., argued for appellees. With him on brief were James T. Fitzgibbon, Angelo J. Bufalino and Mary Jane Chapman, Chicago, Ill., of counsel.

Before DAVIS, SMITH and NIES, Circuit Judges.

NIES, Circuit Judge.

Structural Rubber Products Co. appeals from the judgment of the United States District Court for the Northern District of Illinois entered September 30, 1983, holding Park Rubber Company and International Metals and Machines, Inc., (collectively, Park) not liable for infringement of U.S. Patent Nos. 3,843,051 and 4,117,977, owned by appellant. The district court's judgment is based on invalidity of the patents for lack of novelty (35 U.S.C. Sec. 102) in accordance with an answer given by a jury within a special verdict.

In answer to other specific questions, the jury found that Park infringed both patents and that neither the '051 nor '977 invention would have been obvious (35 U.S.C. Sec. 103). With respect to '977, the jury further found that the invention had not been "on sale" or described in a printed publication more than one year before the patent application was filed and that there was no "misrepresentation" to the Patent Office.

Structural argues that the district court erred in failing to grant its motion for judgment notwithstanding the verdict because there was no evidence to support the lack of novelty defense with respect to either patent. Park argues that the judgment should be upheld because of each of the defenses it asserted at trial, including lack of novelty and those which were rejected by the jury. Park also argues that the district court held that the inventions would have been obvious, thereby rejecting the jury's negative answers on this issue.

Since we conclude: (1) that the district court erred in denying Structural's motion; (2) that no final decisions were made on the remaining issues; and (3) that other legal errors appear from the record, we vacate the judgment and remand for a partial new trial.

I. The Patents in Suit

The two patents in suit are directed to highway railroad crossings having a moisture-proof traffic surface designed primarily to prevent the degradation of track subgrade. The crossing is formed by a number of rectangular tubes aligned in the direction of the train track, which are covered by a resilient waterproof lamina. The inventor named in the two patents in suit is Jacob Whitlock, an officer and principal shareholder of Structural. The first of the two patents, U.S. Patent No. 3,843,051, issued October 23, 1974, discloses a crossing formed of a middle section, which fits between the two rails, and two side sections, which run from the outer side of each rail to the main roadway. To insure a water-tight seal between the rails and the crossing, the center section is oversized and must be bowed for insertion, thereby providing a compression fit as shown below:

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

The side portions (not illustrated above) are firmly anchored to the railroad ties at their outermost edge to prevent lateral movement and form a tight seal against the rail. To extend the crossing portions end-to-end down the track, an overlapping splicer piece is disclosed and claimed in the patent.

Claim 9, used during trial as representative of the invention, is reproduced below:

CLAIM 9, UNITED STATES PATENT NO. 3,843,051

In a highway railway crossing having a pair of spaced substantially parallel rails secured to and supported by a plurality of transversely extending ties subtending said rails, a pair of elongated composite members arranged in abutting end-to-end relation and positionable between the rails and overlying a plurality of the rail supporting ties,

each composite member comprising a one-piece upper lamina of resilient moisture-proof material having recessed, compressible elongated side edges for resilient sealing engagement with web portions of the rails, a plurality of elongated reinforcing elements arranged in laterally spaced substantially parallel relation and affixed to the underside of the upper lamina,

corresponding reinforcing elements of the pair of composite members being arranged in axially aligned relation,

a joint formed between the abutting composite members being aligned with a given tie, and

splicer means interconnecting the corresponding reinforcing elements, the splicer means for each pair of aligned reinforcing elements extending longitudinally of the elements a substantial distance in opposite directions from the joint.

The underscored portions are significant to our decision.

The second patent, U.S. Patent No. 4,117,977, issued October 3, 1978, discloses an improvement on the invention of the '051 patent. To facilitate the manufacture and installation of the crossing, the center section is divided into two halves. As shown below, an overlapping tongue-in-groove structure is present at the center joint to prevent any potential leakage:

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

The halves of the center section are oversized so that a compression seal is created at the junction of the halves, and between the outer edges of the halves and the rails. Representative claim 14, used at trial, is reproduced below:

CLAIM 14, UNITED STATES PATENT NO. 4,117,977

In a highway crossing for a railroad wherein each of a pair of rails has a base section and a head section interconnected by a web section and wherein a plurality of spaced substantially parallel ties extend transversely of the rails and are secured thereto in subtending supporting relation, the combination comprising:

at least one pair of elongated laterally-resilient gage section units adapted to be arranged in side-by-side relation intermediate the rails, said units having corresponding elongated inner faces in abutting relation, at least one of said faces being of resilient material and the combined width of the adjacent units, prior to assembly, being slightly greater than the spacing between the web sections of said rails so as to provide, upon assembly, a resilient compressive fit between said units which forms an elongated substantially moisture-proof joint therebetween, each unit having

an elongated outer face adapted to be disposed adjacent the web section of a rail and in substantial engagement therewith and an inner face provided with projecting segments constructed unitary with the gage section unit that interfit in an elongated tongue-in-groove relationship with corresponding segments of the adjacent unit of said pair,

each gage section unit including a resilient moisture-proof upper lamina and reinforcing means affixed to said lamina,

the exposed surface of said lamina intermediate the outer and inner surface of a unit being adapted to define a plane substantially coplanar with the upper surfaces of said rail head sections.

Again, underscoring has been added to point out the elements of the claim which are principally in issue.

The Trial

The case was tried before a jury on patent, unfair competition and common law fraud counts. Structural charged Park, inter alia, with infringement of Claims 5, 9 and 11 of the '051 patent and Claims 1, 7, 8 and 10-15 of the '977 patent. ¹ Park defended principally on the ground of non-infringement, but also asserted invalidity of the patents under Sec. 102 (lack of novelty) and under 35 U.S.C. Sec. 103 (obviousness). With respect to '051, Park relied on the prior art considered by the patent examiner during prosecution and, in addition, two patents not cited during prosecution, U.S. Patent No. 2,828,079 to Rennels and U.S. Patent No. 1,191,561 to Burns. With respect to '977, Park's arguments were based primarily on the '051 patent, which is prior art to '977. Park also sought to prove that the '977 invention was invalid because of asserted "on sale" and "printed publication" defenses under 35 U.S.C. Sec. 102(b), and because of alleged misrepresentation during prosecution of '977 before the Patent and Trademark Office (PTO). The two last mentioned defenses concern an advertisement for a grade crossing by Structural in Railway Track and Structures, a national trade magazine, published in May 1975, more than one year prior to the filing date of the '977 application, which Structural did not bring to the attention of the PTO.

The several patent issues, which were presented to the jury in the form of questions, were the following:

Questions on Patent Claims

                                                         '051 Patent    '977 Patent
                                                        -------------  -------------
                                                         Yes     No     Yes     No
                                                        ------  -----  ------  -----
                Has the Plaintiff established by a
                preponderance of the evidence
                (1) that the Defendants infringed
                    the patent?                           X              X
                (2) that the Defendants are
                    guilty of willful infringement
                    of the patent?                                X              X
                If you find infringement, then
                you must consider the Defendants'
                defenses of patent invalidity
                and the following questions
                should be anwered
                Have the Defendants established
                by clear and convincing evidence
                (1) that the claimed invention
                    had been "on sale" more than
                    one year before the patent
                    application was filed                N/A     N/A             X
                (2) that the claimed invention
                    was described in a printed
                    publication more than one
                    year before the patent application
                    was filed                            N/A     N/A

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