Vieau v. Japax, Inc.
| Decision Date | 16 June 1987 |
| Docket Number | No. 86-773,86-773 |
| Citation | 823 F.2d 1510,3 USPQ2d 1094 |
| Parties | Richard R. VIEAU and Robert A. Vieau, Plaintiffs/Appellants, v. JAPAX, INC., Japax Scientific Corporation, and Textron, Inc., Defendants/Cross- Appellants. Appeal/774. |
| Court | U.S. Court of Appeals — Federal Circuit |
Anthony S. Zummer, McWilliams, Mann, Zummer & Sweeney, Chicago, Ill., argued, for plaintiffs/appellants. With him on the brief was Dennis M. McWilliams. Also on the brief was Hugh J. McGuire, Fisher & McGuire, of Troy, Mich.
Basil J. Lewris, Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, D.C., argued, for defendants/cross-appellants. With him on the brief were Kenneth E. Payne and Bruce C. Zotter.
Before BALDWIN * and BENNETT, Senior Circuit Judges, and ARCHER, Circuit Judge.
Richard R. Vieau and Robert A. Vieau (Vieau) sued Japax, Inc., Japax Scientific Corporation, and Textron, Inc. (Japax) in the United States District Court for the Eastern District of Michigan, Southern Division, for infringement of United States Patent No. 4,243,864 (Vieau patent). Following a jury verdict on the issues of validity and infringement in favor of Vieau, the court granted a motion by Japax for judgment notwithstanding the verdict (JNOV), finding the patent invalid for failure to disclose best mode, or, if not invalid, not infringed. On appeals by both parties, we affirm-in-part and vacate-in-part.
The Vieau patent bears the title "Multiple Wire Electrode Feed Mechanism for Electroerosion Machine." It relates to the process of electrical discharge machining (EDM), the cutting of metal by use of an electric spark. Typically, an electrode is placed about two-thousandths or three-thousandths of an inch from a workpiece, and a dielectric liquid, such as oil or water, is circulated between them. An electric charge is applied to both the electrode and the workpiece so that a spark jumps between them. When the spark leaves the electrode and strikes the workpiece, a bit of metal sputters off the workpiece and is carried away by the liquid. A little of the electrode is also burned away at the same time. One way to keep a fresh electrode surface near the workpiece is to use a wire that moves past the workpiece as the latter is being cut. The burned place on the wire is carried away and the wire next to the workpiece is always fresh. The workpiece itself is mounted on a table that moves to control the shape of the cut.
The Vieau patent claims a machine that allows multiple identical cuts to be made in a workpiece or multiple workpieces to be cut identically. The Vieau patent discloses use of several supply spools of wire. The wires are routed through a tension assembly, a cutting guide assembly, a take-up assembly, and ultimately wound onto a single take-up spool.
The claims in issue at trial were claims 1, 3, and 5, quoted below:
1. In an electroerosion machine which cuts a metal by means of electrical discharge between an electrically conductive wire and metal, said machine having a frame, a table for carrying metal movably mounted on the frame, a head mounted on the frame, and an electrical system connected to the electrically conductive wire and the metal, the improvement comprising; a plurality of supply spools of electrically conductive wire, each of said supply spools having a wire continuously removed therefrom, a tension assembly receiving a wire from each of the supply spools, a cutting guide assembly receiving each of said wires and holding the wires parallel to each other adjacent to the metal while there is electrical discharge between each of the wires and the metal, and a take-up assembly receiving the wires from the cutting guide assembly.
3. In an electroerosion machine of the character described as defined in claim 1 wherein, the cutting guide assembly includes; a plurality of input guides spaced from each other and being equal in number to the number of wires, each of said input guides receiving one of said wires, a discharge guide support pivotally mounted on the head, and a plurality of discharge guides equal in number to the number of wires mounted on the discharge guide support, said discharge guide support being pivotally positionable to align each discharge support with its respective input guide to receive a respective wire from the input guide and hold the wire parallel to the other wires between their respective input and discharge guides.
5. In an electroerosion machine of the character described as defined in claim 1 wherein, the cutting guide assembly includes; a plurality of input guides spaced from each other and being equal in number to the number of wires, each of said input guides receiving one of said wires, and a plurality of discharge guides equal in number to the number of wires, each of said discharge guides being positioned relative to a respective input guide to receive the wire from the input guide and hold the wire parallel to the other wires between their respective input and discharge guides.
The two accused machines (the LM-30-5 and the LM-40-3) are multiwire electroerosion devices developed and manufactured in Japan and imported into the United States. The LM-30-5 and the LM-40-3 have capacity for five and three wires, respectively. Japax concedes that, for the purposes of this infringement analysis, the accused devices are identical to each other since they differ only in the number of wires utilized.
In response to Vieau's complaint for patent infringement each of the three named defendants filed an answer containing several affirmative defenses, and in addition filed a declaratory judgment counterclaim asserting invalidity and noninfringement. The trial was bifurcated. After the evidence was presented, the judge submitted 53, consecutively-numbered "Special Questions" to the jury together with 14 additional "Verdict" questions. The 53 special questions were interrogatories primarily on issues of fact, most of which were necessary to support the answers to the general verdict questions. Through its answers to the latter, the jury rendered verdicts on the issues of anticipation, obviousness, best mode, enforceability, and infringement of each of the three litigated claims with respect to the two allegedly infringing machines. 1 The jury concluded in its answers to the verdict questions that Japax did not establish invalidity by clear and convincing evidence and did not prove the Vieau patent unenforceable, and that Vieau had shown infringement of claims 1 and 5 by a preponderance of the evidence.
Following the district court's entry of partial judgment in favor of Vieau, Japax moved for a JNOV or in the alternative for a new trial on the issues of anticipation, obviousness, best mode, unenforceability, and infringement. Before ruling on the JNOV motion, the second phase of the trial took place after which the district court directed a verdict for Japax on the issues of damages and willful infringement. Following the directed verdict, the court granted the pending JNOV motion by Japax with respect to the issues of infringement and validity, finding the patent invalid for failure to disclose best mode, or, if not invalid, not infringed.
Vieau appeals the judgments in both phases of the trial. Vieau contends on appeal that the grant of JNOV with respect to best mode and infringement by both Japax devices was error. Vieau contends that the district court also erred in not allowing it to present testimony on the issue of its damages and in directing a verdict for Japax finding no damages and no willful infringement. Finally, Vieau contends that the district court erred in its decision to grant JNOV on infringement in the first phase of the trial by relying on a letter that was not introduced until the second phase of the trial. Japax cross-appeals, arguing that the district court's failure to grant JNOV on the obviousness issue 2 was error and that Vieau's appeal is so frivolous as to entitle it to double costs and attorney fees.
Our disposition of this appeal requires the resolution of the following questions:
1. Did the district court err by entering JNOV on the issue of infringement?
2. Did the district court err by referring to a letter not in evidence during the infringement trial when explaining its decision to grant a JNOV on the issue of infringement? We answer each question in the negative. Because we affirm on noninfringement, we need not address any issues relating to validity, damages, and willful infringement. We deny Japax's request for double costs and attorney fees.
As a preliminary matter, we briefly address the form of the district court's submission of interrogatories and verdict questions to the jury in this case. As noted in Railroad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506, 1515, 220 USPQ 929, 938 (Fed.Cir.1984), See American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1361, 220 USPQ 763, 771 (Fed.Cir.1984) ().
The submitted special questions and verdict questions employed in this case were designed to comply with Fed.R.Civ.P. 49(b) in accordance with this court's suggestions in Railroad Dynamics, 727 F.2d at 1517, 220 USPQ at 939 and Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1547, 220 USPQ 193, 197 (Fed.Cir.1983). The trial court and both parties treated the questions as doing exactly that. The district court's decision to fashion multiple general verdict questions to conform to the multiple claims and devices at issue in the present case was not an abuse of discretion. See ...
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