Wahpeton Canvas Co., Inc. v. Frontier, Inc.

• Decision Date: 20 March 1989
• Docket Number: Nos. 88-1305,88-1332 and 88-1333,s. 88-1305
• Citation: 870 F.2d 1546,10 USPQ2d 1201
• Parties: WAHPETON CANVAS COMPANY, INC., Plaintiff-Appellant, v. FRONTIER, INC., Defendant/Cross-Appellant, Steven C. Schmeichel and Charles M. Schmeichel d/b/a Agri Cover, Defendants/Cross-Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1546

870 F.2d 1546

10 U.S.P.Q.2d 1201

WAHPETON CANVAS COMPANY, INC., Plaintiff-Appellant, v.FRONTIER, INC., Defendant/Cross-AppellantSteven C. Schmeichel and Charles M. Schmeichel d/b/a Agri Cover, Defendants/Cross-Appellants.

Nos. 88-1305, 88-1332 and 88-1333.

United States Court of Appeals Federal Circuit.

March 20, 1989.

Rehearing Denied May 18, 1989.

Suggestion for Rehearing In Banc Denied June 9, 1989.

Clarence J. Fleming, Jones, Day, Reavis & Pogue, Chicago, Ill., argued for plaintiff-appellant.With him on the brief was Lester J. Savit.Also on the brief were John D. Kelly and Harlan G. Fuglesten, Vogel, Brantner, Kelly, Knutson, Weir & Bye, Ltd., Fargo, N.D.

Douglas J. Williams, Merchant, Gould, Smith, Edell, Welter & Schmidt, P.A., Minneapolis, Minn., argued for defendants/cross-appellants.With him on the brief was Robert W. Gutenkauf.Also on the brief was Russell M. Maring, of Fargo, N.D. Richard O. Bartz, Burd, Bartz & Gutenkauf, of Minneapolis, Minn., argued for defendants/cross-appellants.With him on the brief was Ronald H. McLean, Serkland, Lundberg, Erickson, Marcil & McLean, Fargo, N.D. R. Carl Moy, of Merchant, Gould, Smith, Edell, Welter & Schmidt, P.A., of Minneapolis, Minn., entered an appearance for defendants/cross-appellants.

Before MARKEY, Chief Judge, SMITH and BISSELL, Circuit Judges.

MARKEY, Chief Judge.

Wahpeton Canvas Company(Wahpeton) appeals from a judgment of the United States District Court for the District of North Dakota that Frontier, Inc.(Frontier), and Steven C. Schmeichel and Charles M. Schmeichel, d/b/a Agri Cover (Agri Cover), did not infringe Wahpeton's U.S. PatentNo. Re. 31,746('746).Frontier cross-appeals a judgment entered on directed verdict on its counterclaims.Agri Cover filed a "cross-appeal" to challenge a ruling that certain evidence was inadmissible.We affirm in part, vacate in part, and remand.

BACKGROUND

Introduction

On April 20, 1982 Wahpeton sued Frontier for infringement of U.S. PatentNo. 4,302,043('043).Frontier counterclaimed for unfair competition, attempted monopolization, and price discrimination.Facing issues of inventorship and validity, Wahpeton applied for reissue of the '043 patent on September 9, 1982.On October 4, 1983 Wahpeton sued Agri Cover for infringement of the '043 patent.The suits were consolidated on March 13, 1984.The reissue application became United States PatentNo. Re. 31,746('746) on November 27, 1984.The '746 patent was then substituted for the '043 patent in the infringement suit.

The Proceedings

Liability was tried to a jury required to return a special verdict under Rule 49(a), Fed.R.Civ.P. Trial began on August 10, 1987.The jury was asked to check "yes" or "no" alongside a series of questions, including a series of questions on infringement that gave just the claim number and did not identify the claim as "independent" or "dependent".On August 25th the jury returned answers to some questions and not to others.The jury's responses were: (1) Agri Cover had not infringed [independent] claims 1 or 11; (2) Agri Cover had not infringed [dependent] claims 2-4, 6, 9, 10, 12, 13, 16-19, 22-25, or 27-31; (3) it could not answer on whether Agri Cover had infringed [independent] claims 14 or 21; (4) it could not answer on whether Agri Cover had infringed [dependent] claims 7, 15, 20, 26, or 32; (5) Frontier had not infringed [independent] claims 1, 11, or 14; (6) Frontier had not infringed [dependent] claims 2-4, 6-10, 12, 13, 15-20, 22-25, or 27-32; (7) it could not answer on whether Frontier infringed claim 21; (8) the '746 patent was not inequitably procured; ¹(9) claims 1-4 6-13 and 15-32 were not invalid; and (10) it could not answer on whether claim 14 was not invalid.

On July 6, 1987, the district court had ordered a separate trial on Frontier's counterclaims.That trial began on August 25, 1988, immediately following the infringement trial.Frontier closed its case on August 27th and the district court directed a verdict in favor of Wahpeton.

On September 3, 1987 Wahpeton moved "under Rules 50(b)"andRule 59, Fed.R.Civ.P. though there were no answers to some questions to which its motions were directed, and for new trial.Recast for clarity, Wahpeton's motions were: (1) for judgment notwithstanding the verdict (JNOV) that Agri Cover and Frontier infringed all the claims the jury found non-infringed; (2) for judgment that Agri Cover infringed claims 7, 14, 15, 20, 21, 26, and 32 on which the jury did not decide; and (3) for judgment that Frontier infringed claim 21 on which the jury did not decide.

On September 9, 1987 Agri Cover moved "under Rule 50(b)"--actually for judgment--that it had not infringed the claims on which the jury did not decide.On September 14, 1987 Frontier moved "under Rule 50(b)"--actually for judgment--that it had not infringed claim 21.

In a February 8, 1988 telephone conference lasting 10 minutes, the district court said: (1) it found no infringement of claim 21 by Frontier because Frontier "went back to the old-fashioned hooks, which didn't look good on the truck"; (2) it found no infringement by Agri Cover of claims 7, 14, 15, 20, 21, 26, or 32 because "the jury reached a sufficient number of findings of no infringement to lead the court to the judgment and view" that there was no infringement of the claims on which the jury did not answer; (3) that the latter judgment accepted and was consistent with the findings of the jury to the extent made; and (4) Wahpeton "had a valid and enforceable patent."The district court characterized both accused devices as "inferior" to Wahpeton's cover.²

In an "ORDER ON POST-TRIAL MOTIONS" of February 11, 1988, the district court, without explanation, denied Wahpeton's motions and granted those of Agri Cover and Frontier.

On February 16, 1988, the district court entered this judgment:

IT IS ORDERED AND ADJUDGED pursuant to the Special Verdict filed August 25, 1987, all claims in plaintiff's U.S. PatentNo. RE 31,746 are determined to be valid and enforceable; defendantFrontier, Inc.'s Roll-Tight roll-up tarp system does not infringe claims 1-4, 6-20, 22-25, and 27-31 of plaintiff's '746 patent; and defendantsSteven C. Schmeichel and Charles M. Schmeichel's FASLOC roll-up tarp system does not infringe claims 1-4, 6, 9-13, 16-19, 22-25, and 27-31 of plaintiff's '746 patent.

IT IS FURTHER ORDERED pursuant to the Court's Order on Post Trial Motions filed February 11, 1988, that defendantFrontier, Inc.'s Roll-Tight roll-up tarp system does not infringe claim 21 of plaintiff's '746 patent; and defendantsSteven C. Schmeichel and Charles M. Schmeichel's FASLOC roll-up tarp system does not infringe claims 7, 14, 15, 20, 21, 26 and 32 of plaintiff's '746 patent.

* * *

* * *

IT IS FURTHER ORDERED directed verdict be entered against the defendantFrontier, Inc. on its counterclaim against plaintiff.

The Claimed And Accused Devices

The claimed device (Appendix, figure 1) and the accused devices of Agri Cover ³ and Frontier ⁴ are roll-up truck box covers.One side edge of the cover is attached to a longitudinal upper edge of the truck box and the other side, or free, edge of the cover is associated with a roll tube.A universal joint connects the roll tube to a crank turnable from the ground to roll and unroll the cover.An important element is a latching means, to secure the cover in place.Securing the crank locks the cover in place.An elastic tensioning cord keeps the cover taut.

The latching means disclosed in the '746 patent is a plate mounted along and angularly depending from the entire upper edge of the truck box opposite that to which the cover is attached.Latching is accomplished by turning the crank counterclockwise to unroll the cover over the truck box and plate until the roll tube dangles below the plate, then continuing to turn the crank counterclockwise and rerolling the tube in the same direction to reroll the cover onto the tube and thus to draw the tube upwardly until it securely engages the underside of the plate and is wedged between the plate and the truck wall.(Appendix, figures 2, 3).

Agri Cover's device uses straps and hooks.The free edge of the cover is not attached directly to the roll tube; straps are interposed instead between the cover and the roll tube.Latching is accomplished by unrolling the cover until the roll tube dangles on its straps below the hooks, and then continuing to turn the roll tube in the same direction to roll the straps onto the roll tube, thus drawing the tube upwardly until it engages within the hooks.(Appendix, figure 4).

Frontier's device employs an additional bar, hooks, and straps.The free edge of the cover is attached to a roll tube, but also attached to the roll tube are straps that are in turn attached to the additional bar.Latching is accomplished by unrolling the cover and continuing to roll the tube in the same direction to reroll the cover on the roll tube, the straps thus drawing the additional bar upwardly until it engages within the hooks.(Appendix, figures 5, 6).

The '746 Patent Claims and Disputed Limitations

There are 32 claims in the '746 patent, 19 having been added by reissue.All but claims 5 and 8 were asserted against Agri Cover.All but claims 5, 26, and 32 were asserted against Frontier.All claims are drawn to apparatus and none is drawn to method steps, e.g. reverse rolling.

The '746 patent has only four independent claims.The infringement dispute centered on three claim limitations (the disputed limitations): (1) the connection between the roll tube and cover, (2) the latching means, and (3) the wedging relationship between the roll tube and latching means.Those disputed limitations are emphasized in the following reproductions of the four independent claims.

1.A cover assembly for an elongated body having an elongated opening, comprising:

a flexible covering material having a longitudinal dimension approximately equal...